DETAILED ACTION
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 .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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 1, 4, and 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kori et al. (US 2019/0067021) in view of Hayashida et al. (US 2014/0008626).
Considering Claims 1, 4, and 11: Kori et al. teaches a compound of the formula
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. Kori et al. further teaches that the central aromatic ring can be substituted (¶0028).
Kori et al. is silent towards the substituents on the central aromatic ring, i.e. X1 and X2. However, Hayashida et al. teaches a compound of the formula
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, where R1 can be a C1-20 alkyl group, C6-30 aryl group, or C3-30 heteroaryl group (¶0020, 22). Kori et al. and Hayashida et al. are analogous art as they are concerned with the same field of endeavor, namely indolocarbazole compounds. It would have been obvious to a person of ordinary skill in the art to have used the substituent of Hayashida et al. on the compound of Kori et al., and the motivation to do so would have been, as Hayashida et al. suggests, they are conventional substituents for the indolocarbazole compounds.
Considering Claims 12-14: Kori et al. teaches a composition comprising the compound, a ketone or aldehyde crosslinking agent and an acid catalyst/initiator (¶0116).
Considering Claim 15: Kori et al. teaches the composition of claim 12. The phrase “for an electronic component” is a statement of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Considering Claim 16: Kori et al. teaches the polymer product/cured product (¶0116).
Claims 21, 22, and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Kori et al. (US 2019/0067021) in view of Hayashida et al. (US 2014/0008626).
Considering Claims 21, 22, and 24: Kori et al. teaches a compound of the formula
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. Kori et al. further teaches that the central aromatic ring can be substituted (¶0028). Kori et al. teaches a crosslinking agent that can be an amine compound, epoxy compound or urea compound (¶0144).
Kori et al. is silent towards the substituents on the central aromatic ring, i.e. X1 and X2. However, Hayashida et al. teaches a compound of the formula
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, where R1 can be a C1-20 alkyl group, C6-30 aryl group, or C3-30 heteroaryl group (¶0020, 22). Kori et al. and Hayashida et al. are analogous art as they are concerned with the same field of endeavor, namely indolocarbazole compounds. It would have been obvious to a person of ordinary skill in the art to have used the substituent of Hayashida et al. on the compound of Kori et al., and the motivation to do so would have been, as Hayashida et al. suggests, they are conventional substituents for the indolocarbazole compounds.
Considering Claim 25: Kori et al. teaches the composition of claim 12. The phrase “for an electronic component” is a statement of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Considering Claim 26: Kori et al. teaches the polymer product/cured product (¶0116).
Claims 27, 28, and 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Kori et al. (US 2019/0067021) in view of Hayashida et al. (US 2014/0008626).
Considering Claims 27, 28, and 30: Kori et al. teaches a compound of the formula
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. Kori et al. further teaches that the central aromatic ring can be substituted (¶0028). Kori et al. teaches a photo acid or thermal acid generator (¶0141-42).
Kori et al. is silent towards the substituents on the central aromatic ring, i.e. X1 and X2. However, Hayashida et al. teaches a compound of the formula
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, where R1 can be a C1-20 alkyl group, C6-30 aryl group, or C3-30 heteroaryl group (¶0020, 22). Kori et al. and Hayashida et al. are analogous art as they are concerned with the same field of endeavor, namely indolocarbazole compounds. It would have been obvious to a person of ordinary skill in the art to have used the substituent of Hayashida et al. on the compound of Kori et al., and the motivation to do so would have been, as Hayashida et al. suggests, they are conventional substituents for the indolocarbazole compounds.
Considering Claim 31: Kori et al. teaches the composition of claim 12. The phrase “for an electronic component” is a statement of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Considering Claim 32: Kori et al. teaches the polymer product/cured product (¶0116).
Claims 33 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Kori et al. (US 2019/0067021) in view of Hayashida et al. (US 2014/0008626).
Considering Claims 33 and 34: Kori et al. teaches a compound of the formula
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. Kori et al. further teaches that the central aromatic ring can be substituted (¶0028). Kori et al. teaches a photo acid or thermal acid generator (¶0141-42).
Kori et al. is silent towards the substituents on the central aromatic ring, i.e. X1 and X2. However, Hayashida et al. teaches a compound of the formula
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, where R1 can be a C1-20 alkyl group, C6-30 aryl group, or C3-30 heteroaryl group (¶0020, 22). Kori et al. and Hayashida et al. are analogous art as they are concerned with the same field of endeavor, namely indolocarbazole compounds. It would have been obvious to a person of ordinary skill in the art to have used the substituent of Hayashida et al. on the compound of Kori et al., and the motivation to do so would have been, as Hayashida et al. suggests, they are conventional substituents for the indolocarbazole compounds.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7-10 of copending Application No. 18/577,499 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claims 1, 4, and 11: Claim 1 of application ‘499 teaches a compound of the formula I. Claim 4 teaches the reactive groups as being a carbon-carbon triple bond or phenolic hydroxyl group.
Considering Claims 12-16: Claims 7-10 or application ‘499 correspond to instant claims 12-16.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 33 and 34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/577,499 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claims 33 and 34: Claim 1 of application ‘499 teaches a compound of the formula I. Claim 4 teaches the reactive groups as being a carbon-carbon triple bond or phenolic hydroxyl group.
Allowable Subject Matter
Claims 23 and 29 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.
Considering Claim 23: The prior art of record does not teach or suggest the claimed structure, where the compound contains three or more reactive groups in the molecule. The closest prior art of record is Kori et al., discussed above. There is not suggestion in the art to add a third reactive group to the compound of Kori et al., which contains two reactive groups, absent impermissible hindsight. As such, the claim is non-obvious over the closest prior art of record.
Considering Claim 29: The prior art of record does not teach or suggest the claimed structure, where the compound contains three or more reactive groups in the molecule. The closest prior art of record is Kori et al., discussed above. There is not suggestion in the art to add a third reactive group to the compound of Kori et al., which contains two reactive groups, absent impermissible hindsight. As such, the claim is non-obvious over the closest prior art of record.
Response to Arguments
Applicant's arguments filed May 12, 2026 have been fully considered but they are not persuasive, because:
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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