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
This office action is in response to applicant’s communication filed on 8/18/26.
Claims 1-20 are pending in this application.
Applicant's election of Group 2, claims 13-20, without traverse in the reply filed on 8/18/26 is acknowledged.
Claims 1-12 are withdrawn from consideration being drawn to the non-elected invention.
Applicant’s election of the following compound 18 is acknowledged herewith:
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Claims 13-20 read on applicant's elected species.
However, applicant's elected species has been found free of the prior art.
Thus the new species to be examined is the following compound:
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Claims 13-20 read on the elected species or the new species. The search has not been extended to determine the patentability of the other species encompassed by the claims.
As a result, claims 13-20 are being examined in this Office Action. Claims 1-12 are withdrawn.
Priority
The applicant claims benefit as follows:
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Objections
Claims 18 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and if rewritten to overcome the rejection under 35 U.S.C. 112(b) set forth in this Office action.
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.
Claims 13-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 13 is indefinite because the claim recites that "Formula 1 comprises a structure in which any hydrogen atoms are substituted with deuterium atoms."
However, it is unclear whether deuterium is required. It is also unclear how many hydrogen atoms must be deuterium. The phrase "any hydrogen atoms" could mean one, some, or all of the hydrogen atoms.
Also, claim 20 depends on claim 13. However, most of the compounds have no deuterium. Thus, the claim language is inconsistent with claim 20 and the metes and bounds of claim 13 are unclear.
Claims 14-20 are rejected because they depend on claim 13 and do not cure this deficiency.
For purposes of examination, the phrase is interpreted to mean that any hydrogen atom in Formula 1 may optionally be substituted with deuterium. Appropriate correction is required.
Claim Rejections – 35 USC 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of the AIA 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 13-17 and 19 are rejected under AIA 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Park et al. (WO 2022131546, pub date 6/23/2022) (US 20240023432 is being used herein as the English language equivalent).
Park et al. teaches the following compound 325. (paragraph [0082], page 71, compound 325):
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This compound reads on applicant's compound of Formula 1, when:
e = 2 (which give a 3,5-diphenylphenyl substituent),
R5 = H,
Ar = unsubstituted phenyl,
L = phenylene,
m = 1,
R2 = R4 = H
R1 and R3 are combined with each other to form a ring (the central ring of the triphenylene)
Two adjacent R1 groups are combined to form a ring (the fused benzofuran ring)
Note that applicant defines an "adjacent group" to include a substituent sterically positioned at the nearest position. Applicant also defines the ring formed as a hydrocarbon ring or heterocycle, which may be aromatic and polycyclic. (Applicant’s PGPub: US 20240224793, paragraphs [0059]-[0060])
Park et al. further teaches that the hydrogen atoms of the compound may be deuterium, with a deuterium content of 0 to 100%. (paragraphs [0043]-[0051])
With regard to claim 14, compound 325 reads on Formula 2-2, since Ar (phenyl) is bonded to the nitrogen through a phenylene group.
With regard to claim 15, Ar is an unsubstituted phenyl group.
With regard to claims 16-17, these claims further define Formula A and Formula B. However, they do not exclude Ar as an unsubstituted phenyl group, as recited in claim 15.
With regard to claim 19, R5 is hydrogen.
Therefore these claims are fully met.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Cho Sawyer whose telephone number is (571) 270 1690. The examiner can normally be reached on Monday-Friday 9 AM - 6 PM PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Renee Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-274-1690.
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/JENNIFER C SAWYER/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
