DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicant's election with traverse of Group I, and species below, in the reply filed on December 22, 2025 is acknowledged. The traversal is on the ground(s) that Groups I and II should be considered one invention because both compound and polymer have the same crosslinkable Z. This is not found persuasive because the products are distinct for the reasons provided in the restriction requirement. The products have structural features that have materially different design. Nonetheless, when the products of the elected Group I become allowable, Examiner may consider rejoining the products of Group II that incorporate the structural features of the allowable Group I.
The requirement is still deemed proper and is therefore made FINAL.
3. Examination followed guidelines provided by MPEP 803.02. The elected species appeared to be novel and nonobvious over the prior art. Therefore the search was extended. Prior art was found that anticipates the Markush claims with respect to a nonelected species. Therefore, the Markush claims were rejected and claims to nonelected species were withdrawn from further consideration. The claims were searched to the extent of the elected species and the nonelected species shown below.
Status of Claims
4. Claims 1-24 are pending. Claims 1-3 are elected and read on the elected species. Claim 1 is independent. All elected claims are rejected.
Information Disclosure Statement
5. The information disclosure statement (IDS) submitted on April 14, 2023 is in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The IDS was considered. A signed copy of form 1449 is enclosed herewith.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
6. Claim 3 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claim refers to “
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64
528
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30
242
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. It is unclear how a dotted line can represent a single bond between the 9,9’-spirobifluorene core. Variable Z is not connected to the 9,9’-spirobifluorene core directly because X connects Z to the core. Appropriate clarification and correction are requested.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
7. Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2012003485. The reference has a publication date of 2012 which antedates the present claims having a filing date of 2023.
The reference teaches compounds such as
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272
320
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which corresponds to the claims in the following manner: X=phenyl/phenyl substituted with alkyl; a=1; b=0; Z=C2 alkenyl.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUN JAE YOO whose telephone number is (571)272-9074. The examiner can normally be reached Mon-Fri 8-5.
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/SUN JAE YOO/Primary Examiner, Art Unit 1621
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