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 .
Status of the Claims
Claims 22 – 45 are pending and restricted.
Claims 22 – 42 are rejected.
Claims 43 – 45 are withdrawn.
Election/ Restrictions
Applicant’s election without traverse of Group II, claims 22 – 42, in the reply filed on December 29, 2025 is acknowledged. Applicant further specifically elected the compound ES201:
PNG
media_image1.png
410
537
media_image1.png
Greyscale
.
The compound reads on the structure of formula (I):
PNG
media_image2.png
368
406
media_image2.png
Greyscale
, wherein:
X is N,
R and one Rd form a condensed ring system consisting of seven rings,
The other Rd is H,
Both Rbs are each H,
Both Ras together form a C5 (cyclopentyl) ring system, each ring system is independently substituted with four C1 (methyl) alkyl groups.
Both Rcs together form a C5 (cyclopentyl) ring system, each ring system is independently substituted with four C1 (methyl) alkyl groups.
The compound reads on the structure of formula (I-31):
PNG
media_image3.png
316
270
media_image3.png
Greyscale
, wherein:
m is 3, each Re is combined with each other to form a condensed ring system consisting of six rings,
Rd is H,
Both Rbs are each H,
Both Ras together form a C5 (cyclopentyl) ring system, each ring system is independently substituted with four C1 (methyl) alkyl groups.
Both Rcs together form a C5 (cyclopentyl) ring system, each ring system is independently substituted with four C1 (methyl) alkyl groups.
Examination: Applicant’s elected species is found to be free of prior art. Examination of the Markush-type claim has been extended to the scope of formula (I), wherein:
X is CRb,
Each R, Ra, Rb and Rd is H,
One Rc is H, and the other is C1 (CH2) alkyl group, further wherein, the CH2 group is replaced with a substituted heteroaromatic ring.
Pursuant to Federal Register, Vol. 76, No. 27, dated February 9, 2011, page 7166 (middle column):
“Under principles of compact prosecution, the examiner should also require the applicant to elect a species or group of indistinct species for search and examination (i.e., an election of species). If the examiner does not find the species or group of indistinct species in the prior art, then the examiner should extend the search to those additional species that fall within the scope of a permissible Markush claim. In other words, the examiner should extend the search to the species that share a single structural similarity and a common use. The improper Markush claim should be examined for patentability over the prior art with respect to the elected species or group of indistinct species…within the scope of a proper Markush claim.”
Subject matter not embraced by the elected embodiment or the scope searched is therefore withdrawn from further consideration. Claims 43 – 45 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/ species, there being no allowable generic or linking claim.
Priority
PNG
media_image4.png
88
386
media_image4.png
Greyscale
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on June 6, 2023, October 9, 2024 and April 28, 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claims 22, 32 and 34 are objected to because of the following informalities:
Claim 22, page 5, lines 23-24: The limitation “R2 is the same… selected from the group consisting of… radical having 1 to 20 carbon atoms or an aromatic or heteroaromatic ring system…” (emphasis added) is grammatically incorrect because it does not recite proper Markush group language. In order to overcome the objection, Applicant may amend the limitation as follows: “R2 is the same… selected from the group consisting of… radical having 1 to 20 carbon atoms [[or]] and an aromatic or heteroaromatic ring system…”.
Claim 32, lines 1-6 of the claim: The limitation “R or Ar is the same… selected from phenyl, biphenyl… phenanthrene or triphenylene…” (emphasis added) is grammatically incorrect because it does not recite proper Markush group language. In order to overcome the objection, Applicant may amend the limitation as follows: “R or Ar is the same… selected from phenyl, biphenyl… phenanthrene [[or]] and triphenylene…”.
Claim 34, lines 1-3 of the claim: The limitation “Re and/or Rd radical represents, comprises, or forms together… selected from C(Ar’)3, C(R1)3, Si(Ar’)3, Si(R1)3, B(R1)2” is grammatically incorrect because it is missing proper conjunction in the Markush group language. In order to overcome the objection, Applicant may amend the limitation as follows: “Re and/or Rd radical represents, comprises, or forms together… selected from C(Ar’)3, C(R1)3, Si(Ar’)3, Si(R1)3, and B(R1)2”.
Appropriate correction is required.
Improper Markush Group Rejection
Claims 22 – 42 are rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of the compound of Formula (II) is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons:
Claim 22 is directed to a compound comprising at least one structure of the formula (I):
PNG
media_image2.png
368
406
media_image2.png
Greyscale
, wherein (for example):
PNG
media_image5.png
454
684
media_image5.png
Greyscale
PNG
media_image6.png
816
594
media_image6.png
Greyscale
The structures associated with each of the variables above in the formula (I) do not share a substantial feature to each other.
For example, in claim 28, the compound of formula (I) is selected from one structure of the formulae (I-1) to (I-30). Further, in atleast two R, Ra, Rb, Rc , Rd and Re, the following moieties having the structures of the formulae (Cy-1) to (Cy-10) as presented below (according to claim 29):
PNG
media_image7.png
535
748
media_image7.png
Greyscale
Further, in atleast two R, Ra, Rb, Rc , Rd and Re, the following moieties having the structures of the formulae (RA-1) to (RA-13) as presented below (according to claim 30):
PNG
media_image8.png
1053
712
media_image8.png
Greyscale
The compounds of formula (I) as claimed in claim 22 do not belong to the same art-recognized class or chemical class of compounds because there is no common core structure shared among all of the compounds that would enable them to be categorized the same. For example, in atleast two R, Ra, Rb, Rc , Rd and Re, the alternatives for “aromatic or heteroaromatic ring system which has 5 to 60 aromatic ring atoms” groups can be classified as phenylenes (e.g., CPC class C07C17), thiophenes (e.g., CPC C07D333 and C07D495), pyrrole (e.g., CPC C07D207 and C07D487), or as selenophenes (e.g., CPC C07D345 and C07D517). Further, the alternatives for “phenyl” and “5-6 membered heteroaryl” groups can also be classified in different CPC classes as noted above. Besides the condensed ring systems comprising five rings, there is no shared structure amongst all of the alternatives as claimed by the variables R, Ra, Rb, Rc , Rd and Re in the structures of formulae (I) (claim 22), (Cy-1) to (Cy-10) (claim 29) and (RA-1) to (RA-13) as presented below (claim 30). The compounds do not belong to the same recognized physical or chemical class or to the same art-recognized class and each compound would possess different physical and chemical properties in view of the functional and cyclic groups such that they would not be expected to have the necessary common use. Thus, the compounds of the Markush grouping cannot be considered to share a “single structural similarity” that is essential from which a common use flows.
In order to overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use. For example, the following is a proper Markush group of structure of formula (I):
X is N,
R and one Rd form a condensed ring system consisting of seven rings,
The other Rd is H,
Both Rbs are each H,
Both Ras together form a C5 (cyclopentyl) ring system, each ring system is independently substituted with four C1 (methyl) alkyl groups.
Both Rcs together form a C5 (cyclopentyl) ring system, each ring system is independently substituted with four C1 (methyl) alkyl groups.
The following is a proper Markush group of structure of formula (I-31):
PNG
media_image3.png
316
270
media_image3.png
Greyscale
, wherein:
m is 3, each Re is combined with each other to form a condensed ring system consisting of six rings,
Rd is H,
Both Rbs are each H,
Both Ras together form a C5 (cyclopentyl) ring system, each ring system is independently substituted with four C1 (methyl) alkyl groups.
Both Rcs together form a C5 (cyclopentyl) ring system, each ring system is independently substituted with four C1 (methyl) alkyl groups.
or a single grouping of patentably indistinct species such that the variables R, Ra, Rb, Rc , Rd and Re are conserved across all species of formula (I).
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.
Claims 22 – 23 and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jin et al. CN107686484 A (publ. February 13, 2018), evidenced by English translation of CN107686484 A, https://worldwide.espacenet.com/publicationDetails/biblio?CC=CN&NR= 107686484A&KC=A&FT=D&ND=3&date=20180213&DB=EPODOC&locale=en_EP, Retrieved on January 24, 2026.
Jin et al. teach compound 87. See, e.g., paragraph [0029], page 33, and claim 6. Compound 87 is presented below:
PNG
media_image9.png
620
468
media_image9.png
Greyscale
.
The prior art anticipates the present claims as presented below:
Claims 22 – 23, directed to a compound comprising at least one structure of the formula (I):
PNG
media_image2.png
368
406
media_image2.png
Greyscale
, wherein
X is CRb,
Each R, Ra, Rb and Rd is H,
One Rc is H, and the other is C1 (CH2) alkyl group, further wherein, the CH2 group is replaced with a substituted heteroaromatic ring.
Claim 28, directed to the compound comprising at least one structure of the formula (I-1):
PNG
media_image10.png
288
290
media_image10.png
Greyscale
, wherein:
Each Ra, Rb, Rd and Re is H,
One Rc is H, and the other is C1 (CH2) alkyl group, further wherein, the CH2 group is replaced with a substituted heteroaromatic ring.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sagar Patel whose telephone number is (571)272-1317. The examiner can normally be reached Monday - Friday: 9am to 5pm EST.
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, Amy L. Clark can be reached at (571) 272-1310. 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.
/Sagar Patel/Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626