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 § 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.
Claim(s) 1-6, 9-10, 14-20 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Choi et al (US 20170062726 A1).
Choi discloses a compound
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This reads on the claimed Chemical Formula 1 wherein p=1 and R1 and R2 are octyl groups, i.e. the compound does not fall within the first proviso at the end of claim 1 . Regarding claims 5-6, 9 and 6, the generic formula in Choi discloses:
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wherein R21 and R22 (corresponding to claimed R1 and R2) include hydrogen, halogen, C1 to C10 alkyl group, or are linked to form a spiro structure with a fluorene ring [clm 1] and wherein R11-R14 include in addition to the exemplified cyano groups (electron accepting, n-type semiconductor), halogen groups that are electron donating, p-type semiconductor [clm 1, 0083-0084]. The compound is used in a photoelectric device includes a first electrode and a second electrode facing each other, and an active layer between the first electrode and the second electrode, as well as a charge auxiliary layer [0047, 0143] and the device includes an image sensor [claim 29]. The compound may selectively absorb light up to 750 nm, i.e. near infrared light [0118].
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.
Claim(s) 1-10 and 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grassler et al (WO 2016124694 A1).
Grassler discloses light absorber compound for optoelectronic devices having an active layer between electrode and counter electrode [abstract, claims, p28, figures 1-2] compounds within the claimed scope but also fall within the second proviso wherein p is 1 and both R1 and R2 are simultaneously hydrogen or a methyl group:
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However, the ordinarily skilled artisan would understand that homologues of the hydrogen and methyl groups that have slightly longer alkyl groups, i.e. ethyl, propyl, butyl and so on, would have overlapping or indistinguishable properties, and any differences would be predictable, i.e. increased hydrophobicity. It would have been obvious to one having ordinary skill in the art before the effective filing date of Applicant’s invention to have used the claimed compounds having longer alkyl chains on the central fluorene group because Grassler discloses a homologue thereof and the ordinary skilled artisan would expect homologues to have similar if not indistinguishable properties to the disclosed compounds.
Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978).
Grassler discloses that the compounds absorb light in the near infrared spectral range
Claim(s) 1-10 and 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grassler et al (WO 2016124694 A1) in view of Choi et al (US 20170062726 A1).
Grassler, discussed above, discloses the claimed compounds and photoelectric devices but wherein they fall within one of the claimed provisos because R1 and R2 in the claimed Chemical Formula 1 are either both hydrogen or both methyl:
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Choi, discussed above, discloses similar light absorbing compounds:
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wherein R21 and R22 (corresponding to claimed R1 and R2) include hydrogen, halogen, C1 to C10 alkyl group, or are linked to form a spiro structure with a fluorene ring [clm 1].
So Choi teaches that at the claimed R1 and R2 groups, the hydrogen and methyl (C1 alkyl) groups are functionally equivalent to halogen, C2-C10 alkyl groups and a spirofluorene group.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used the halogen and longer alkyl groups of the claims in the composition of Grassler because Choi teaches that the claimed groups and the hydrogen/methyl groups of Grassler are functionally equivalent and it is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose, see MPEP § 2144.06; In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958). An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
Allowable Subject Matter
Claims 11-13 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.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art includes Choi et al (US 20170062726 A1) which discloses a compound
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However, this does includes only compounds of Chemical Formula 1 that include p=1, not the claimed p=2.
WO 2018162447 discloses compounds of the Chemical Formula 1 wherein p=2:
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[p118]. However, this falls within the last proviso of the claims, wherein p=2 and X and Y are both the same electron acceptors. WO 2018162447 only discloses the cyano group electron acceptors as terminal groups in the generic formula:
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While one could imagine replacing the cyano CN groups with other electron acceptors, the structure disclosed above is one amongst a myriad of examples, the rest of which contain very different structures to the claimed Chemical Formula 1 with p=2, for instance:
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. So it would require excessive hindsight on the part of the office to pick a single example of WO 2018162447 and modify the explicit generic teachings therein to include a different electron accepting group or an electron donating group.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL M DOLLINGER whose telephone number is (571)270-5464. The examiner can normally be reached 10am-6:30pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MICHAEL M. DOLLINGER
Primary Examiner
Art Unit 1766
/MICHAEL M DOLLINGER/ Primary Examiner, Art Unit 1766
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