Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicants’ amendments and remarks filed July 6, 2026, have been received and reviewed. Claims 9-11, 15 and 17-24 are now pending in this application.
Election/Restrictions
Claims 18-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 14, 2026.
The search has expanded to embrace the compound of formula (2-1) according to claim 1 wherein X1 represents formula (i), formula (ii) or formula (iii). Claims 9-11, 15 and 17 are under consideration to this extent. Subject matter wherein X1 represents formula (iv), i.e., -N(R6)- is withdrawn.
Improper Markush Rejection
Claims 9-11, 15 and 17 are again rejected under a judicially created doctrine as being drawn to an improper Markush group, that is, the claims lack unity of invention. The variable X1 is defined in such a way that it keeps changing the core of the compound that determines the classification. By changing the value of X1, patentably distinct and independent compounds are claimed. In order to have unity of invention the compounds must have “a community of chemical or physical characteristics” which justify their inclusion in a common group, and that such inclusion is not repugnant to principles of scientific classification” In re JONES (CCPA) 74 USPQ 149 (see footnote 2). The structural formula (2-1) does not have a significant structural feature that is shared by all of its alternatives which is inventive. The structure has only a fragment containing benzo-pyridine-benzo as common. This feature, in fact, the compounds which have X1 as carbon are known, and therefore, not inventive (see rejection below).
Limiting the claims to compounds wherein X1 is as defined in formula (i), (ii) or (iii) would overcome this rejection.
Claim Rejections - 35 USC § 112
Claims 9-11, 15 and 17 are 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.
i) The claims are now drawn to a solution comprising a compound of formula (2-1). It is unclear what the solvent is.
ii) The group “a monovalent organic group having 1 to 20 carbon atoms” is still indefinite. Applicants were unable to say what the metes and bounds of this group is. Does the group only have 1-20 carbon atoms or may other atoms be present. Also, could this be a ring, chain, saturated, unsaturated or aromatic? The structural makeup of this group is not known. A claim cannot be defined by novelty. Regarding group Y as “a group obtained by removing k hydrogen atoms form a group containing an aromatic hydrocarbon ring having 6 to 20 ring members,” Applicants need to say what the group containing an aromatic hydrocarbon looks like, how many rings may be present and what else may be present. It is unclear whether just an aryl is intended or what else is contained in this group. A clarification is required.
iii) The rejection of claim 15 remains. The metes and bounds of the composition is still unclear. The claims have been amended to indicate that “a content ratio of hydrogen atoms in the compound relative to all atoms constituting the compound is 5.5% by mass or less.” To understand the metes and bounds of the claim, one skilled in the art needs to calculate the hydrogen content of all of the thousands of compounds embraced by formula (2-1). This is undue amount of experimentation to understand the metes and bounds of a claim.
Copious amount of art was found.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hashimoto et al. (WO 2006035997). The claim reads on the compound depicted below.
RN 881911-99-5 CAPLUS
CN Pyridine, 2-(9,9-dimethyl-9H-fluoren-2-yl)-4-phenyl-6-(9,9,9',9'-
tetramethyl[2,2'-bi-9H-fluoren]-7-yl)- (CA INDEX NAME)
PNG
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385
726
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.
Claim 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seki et al. (JP 2007261969). The claim reads on numerous compounds depicted in pages 8-12.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUCK KIFLE whose telephone number is (571)272-0668. The examiner can normally be reached 8 AM - 6 PM, M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey H. Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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August 13, 2026
/BRUCK KIFLE/Primary Examiner, Art Unit 1624
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