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 .
DETAILED ACTION
Claims 1-12 and 15-21 of S. Kim et al., US 18/240,207 (May 27, 2021) are pending. Claims 1-12, 15-18 and 20 are rejected. Claim 21 is in condition for allowance.
Withdrawal Rejections 35 U.S.C. 112(b)
Rejection of claim 7 under 35 U.S.C. 112(b) as indefinite is withdrawn in view of Applicant’s amendment and comment.
Withdrawal Claim Rejections 35 U.S.C. 112(a) – Written Description
Rejection of claim 4 under 35 U.S.C. 112(a) as failing to comply with the written description is withdrawn in view of Applicant’s amendment.
Withdrawal Rejections 35 U.S.C. §§ 102/103
Rejection of claims under 35 U.S.C. §§ 102/103 is withdrawn in view of Applicant’s amendments.
Rejections 35 U.S.C. 112(b)
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.
Pursuant to 35 U.S.C. 112(b), the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). A claim is indefinite when it contains words or phrases whose meaning is unclear. MPEP § 2173.05(e) (citing In re Packard, 751 F.3d 1307, 1314, 110 USPQ2d 1785, 1789 (Fed. Cir. 2014)).
Unclear Chemical Structure Language – Claims 1 and 9
Claims 1-12, 15-18 and 20 are rejected under 35 U.S.C. 112(b) as indefinite because the chemical structure of a “a benzodifurantetraonylene group”, as recited in independent claims 1 and 9 is unclear.
Claims 1 and 9 recited the following alternatives for variables L1 and L2:
Claims 1 and 9 . . . L1 and L2 are each independently
a thiophenylene group,
a 4,6-dimethylene-5,6-dihydro-4H-cyclopentathiophenylene group,
a benzofuranylene group,
a benzothiophenylene group,
a thienofuranylene group,
a thienothiophenylene group,
a thienofurandionylene group,
a thienothiophenedionylene group,
a thienothiophenedioxydylene group,
a benzodifurantetraonylene group, or
a naphthyridinylene group . . .
The specification does assign chemical structures to these chemical names. Further, these groups are not named using standard International Union of Pure and Applied Chemistry (IUPAC) nomenclature and cannot be structurally translated using chemical name-to-structure software available to the Office.
However, these groups are broadly and reasonably interpreted based the plain meaning of the chemical language used in combination with specification example compound structures (see specification at page 20, [00111]) as the following groups:
PNG
media_image1.png
200
400
media_image1.png
Greyscale
Note that regiomeric forms of the above-drawn structure are encompassed, as long as the structure is still encompassed by the chemical name. For example, while only one naphthyridinylene ring is drawn by the Examiner above, naphthyridinylene is interpreted as a genus where each of the nitrogen atoms can have any location in its respective ring.
In any case, claim 1 and 9 are indefinite because no chemical structure can be derived from the chemical name “a benzodifurantetraonylene group”, using either chemical software or the plain meaning of the chemical language. Further the specification does not appear to have any chemical structures comprising this group. As such, one of skill does not know the claim scope.
Dependent claims 2-8, 10-12, 15-18 and 20 do not cure the issue.
Claim Rejections - 35 USC § 102 (AIA )
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
§ 102(a)(1) Rejection over U. Salzner, 10 Journal of Chemical Theory and Computation, 4921-4937 (2014) (“Salzner”)
Claims 9, 12, and 15-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U. Salzner, 10 Journal of Chemical Theory and Computation, 4921-4937 (2014) (“Salzner”). Salzner discloses 4-dicyanomethylene-4H-cyclopenta[2,1-b;3,4-b′]dithiophene. See, Salzner at Abstract. This compound is indexed by CAS as the following structure.
PNG
media_image2.png
200
400
media_image2.png
Greyscale
See CAS Abstract and Indexed Compound, U. Salzner, 10 Journal of Chemical Theory and Computation, 4921-4937 (2014).
The compound meets each and every limitation of claim 9 when X1 and X2 are S; T1 is *-(L1)b1-(R1)c1, where, L1 is a thiophenylene group, b1 is one, and R1 is H and c1 is one, or alternatively where c1 is zero; and T2 is *-(L2)b2-(R2)c2, where, L2 is a thiophenylene group, b2 is one, c2 is one and R2 is H, or alternatively where C2 is zero; Z1 and Z2 are both -C≡N. Also, this compound meets the claim 9 limitation:
Claim 9 . . . at least one selected from among Z1 and Z2 is selected from: a [Symbol font/0x70] electron-deficient nitrogen-containing ring, -F, -Cl, -Br, -I, -CF3, -OH, -NO2, and -CN . . .
Claim 9 is therefor anticipated.
The limitations of claim 12 and 15 are clearly met.
The limitations of claim 16 are met when c1and c2 are each zero, therefore there is no R1 or R2 group.
The limitations of claim 17 and 18 are clearly met, where Z1 and Z2 are both -C≡N.
Subject Matter Free of the Art of Record
Subject to the § 112(b) rejection, claims 1-8, 10, 11, and 19-21 are free of the art of record. The closest art of record is M. Shan et al., CN 109438469 A (2019) (“Shan”). Shan teaches the following four thiophene containing organic optoelectronic compounds for use as the emitting layer in organic electroluminescent devices.
PNG
media_image3.png
200
400
media_image3.png
Greyscale
Shan at page 17 of 24, [0020]. Shan teaches that these compounds are useful in organic electroluminescent devices that can be fabricated according to methods in the art. Shan at page 20 of 24, [0050].
Differences between Shan and Independent Claims 1, 9, and 21
Shan’s cited compounds differ in that they do not meet the claim 1 and 9 limitation of variables L1 and/or L2, where the Shan phenyl group linking the fused thiophene tricyclic core to the fused three-membered heterocyclic group corresponds to L1/L2.
Claims 1-8, 10, 11, and 19-21 Are Not Obvious over Shan
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities, which entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties. MPEP § 2144.09(I). In the chemical arts, a "lead compound" obviousness analysis is often applied; the “lead compound” analysis requiring initial motivation to select a prior art compound and thereafter still further motivation to make the specific structural modifications thereto so as to arrive at a claimed compound. See MPEP § 2143(B) (discussing “lead compound cases” in Examples 9-11 with respect to pharmaceutical applications).
Claims 1-8, 10, 11, and 19-21 are not obvious in view of Shan because neither Shan nor Shan in view of secondary are motivates one of ordinary skill to replace the subject phenyl group in the Shan compounds corresponding to instant claim variables L1 and/or L2 with a claimed variables L1 and/or L2 group:
Claims 1 and 9 . . . L1 and L2 are each independently
a thiophenylene group,
a 4,6-dimethylene-5,6-dihydro-4H-cyclopentathiophenylene group,
a benzofuranylene group,
a benzothiophenylene group,
a thienofuranylene group,
a thienothiophenylene group,
a thienofurandionylene group,
a thienothiophenedionylene group,
a thienothiophenedioxydylene group,
a benzodifurantetraonylene group, or
a naphthyridinylene group . . .
MPEP § 2144.09(I).
Note that U. Salzner, 10 Journal of Chemical Theory and Computation, 4921-4937 (2014) (“Salzner”), cited in the above § 102 rejection, does not teach a specific utility for the cited compound 4-dicyanomethylene-4H-cyclopenta[2,1-b;3,4-b′]dithiophene. If the prior art does not teach any specific or significant utility for the disclosed compounds, then the prior art is unlikely to render structurally similar claims prima facie obvious in the absence of any reason for one of ordinary skill in the art to make the reference compounds or any structurally related compounds. MPEP § 2144.09(VI) (citing In re Lalu, 747 F.2d 703, 223 USPQ 1257 (Fed. Cir. 1984); In re Stemniski, 444 F.2d 581, 170 USPQ 343 (CCPA 1971)); see also, In re Albrecht, 514 F.2d 1389, 1396, 185 USPQ 585, 590 (CCPA 1975).
Conclusion
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 ALEXANDER R PAGANO whose telephone number is (571)270-3764. The examiner can normally be reached 8:00 AM through 5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
Prosecution Insights