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 .
Specification
The disclosure is objected to because of the following informalities:
The specification does not contain a section for the brief description of drawings. Applicant is required to provide a brief description of all figures. See MPEP 608.01(f).
Appropriate correction is required.
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 1-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 recites multiple instances of a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim recites multiple instances of the broad recitation “C1-C20 alkyl groups”, and the claim also recites multiple instances “preferably C2-C10” which is the narrower statement of the range/limitation (e.g. line 6 of claim 1). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. This issue can be corrected by deleting each instance of “preferably C2-C10.”
The preamble of claim 1 recites an “anthradithiophene terpolymer” but claim 1 does not require that sulfur atoms be present in general formula (I). It is unclear if an anthradithiophene group is required in the terpolymer because the preamble describes the polymer as an anthradithiophene terpolymer, but general formula (I) encompasses species that do no comprise anthradithiophene groups (e.g. X are oxygen atoms).
It is noted that because claims 2-4 ultimately or directly depend from claim 1, they are rejected along with claim 1 because they incorporate all of the limitations of claim 1, including those that are indefinite.
Claim 2 recites additional instances of a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation. The claim recites multiple instances of the broad recitation “C1-C20 alkyl groups”, and the claim also recites multiple instances “preferably C2-C10” which is the narrower statement of the range/limitation. The claim further recites the broad recitation “3 to 14 carbon atoms”, and the claim also recites multiple instances “preferably from 4 to 6 carbon atoms” which is the narrower statement of the range/limitation (third to last line). The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 2 further recites “heteroatoms such as oxygen, sulfur, nitrogen, silicon, phosphorus, selenium” (last 2 lines). The phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 2 recites “said group A” in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 2 depends from claim 1, but claim 1 does not recite a group A. This issue can be corrected by deleting “said group.”
Claim 3 recites additional instances of a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation. The claim recites the broad recitation “C1-C20 alkyl groups”, and the claim also recites multiple instances “preferably are a 2-ethylhexyl group” which is the narrower statement of the range/limitation (lines 5-6). The claim further recites the broad recitation “a linear or branched C1-C30 alkyl group”, and the claim also recites multiple instances “preferably are a 2-octyldodecyloxy group” which is the narrower statement of the range/limitation (lines 9-10). In addition, the claim recites the broad recitation “C1-C20 alkyl groups”, and the claim also recites multiple instances “preferably is an octyl” which is the narrower statement of the range/limitation (line 13). The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 3 further recites “B”, “Q1”, “Q2”, “R9”, “R10”, and “R8” in (lines 11-15). There is insufficient antecedent basis for this limitation in the claims. Claim 3 depends from claim 1 but claim 1 does not recite B, Q1, Q2, R8, R9, or R10.
Claim 4 recites “a photovoltaic device (or solar device) such as a photovoltaic cell (or solar cell), a photovoltaic module (or solar module)” (lines 1-2). The phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Objections
Claims 1-4 are objected to because of the following informalities:
Claims 1-2 contain multiple instances of “equal or different.” Claim 3 contains multiple instances of “equal to each other.” The examiner suggests adopting more conventional “same” language because the term “equal” is typically used for comparing quantities, sizes, degrees, or values.
Claims 1 and 2 contain multiple instances of “they are” (e.g. 8th to last line of claim 1). For the utmost clarity, the examiner suggests replacing each instance of “they are” with the name of the variable that is being limited.
Claims 1-3 contain multiple instances of lists that do not include the word “or” or “and” before the last alternative (e.g. the description of Q in claim 1). Lists should include the word “or” or “and” prior to the last alternative.
The examiner suggests amending the claims 1-3 to use more conventional language. An example of suitable language is demonstrated below for the definition of “Q” in claim 1. The suggested language utilizes conventional same/different language and conventional Markush language. The language further provides the utmost clarity that “linear or branched” limits the C1-C20 alkyl group while distinguishing Q and R1 alternatives.
“each Q is the same or different and represents a nitrogen atom or a C-R1 group wherein R1 is selected from the group consisting of a hydrogen atom, a linear or branched C1-C20 alkyl group, an optionally substituted cycloalkyl group, an optionally substituted aryl group, and an optionally substituted heteroaryl group;”
Claim 4 contains the limitation “a photovoltaic device (or solar device) such as a photovoltaic cell (or solar cell), a photovoltaic module (or solar module)”. The examiner suggests removing the terms in parentheses because they are redundant and do not help clarify the claims.
In claim 4, line 4, “general formula” should read “general formula (I).”
Appropriate correction is required.
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 1 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bianchi (WO-2019/175367-A1, cite no. 2 on 9/7/2023 IDS).
Regarding claim 1, Bianchi discloses polymers having a structure according to general formula (X), as shown below (page 26):
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where Z are mutually identical or different and represent a sulfur atom, an oxygen atom, or a selenium atom (page 9, lines 12-13); Y are mutually identical or different and represent a sulfur atom, an oxygen atom, or a selenium atom (page 9, lines 14-15); R2 are mutually identical or different and represent a hydrogen atom or a linear or branched C1-C20 alkyl group (page 10, line 12-13); A represents an electron-acceptor group, and n is 1-500 (page 26). The definition of R1 includes all of the claimed Z groups (page 9, line 15 through page 10, line 11).
Bianchi exemplifies the structure shown below (example 6 on page 40):
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This polymer is conjugated and each repeating unit has an anthradithiophene residue (leftmost residue) and two other kinds of residues (indicated with dashed and solid arrows). Bianchi’s polymer therefore reads on a conjugated anthradithiophene terpolymer. In comparison to instant general formula (I), Bianchi’s polymer corresponds to each Q is a C-R1 groups where R1 is a hydrogen atom, each W is a hydrogen atom, each W1 is a branched C8 alkyl group, each X is a sulfur atom, each Y is an oxygen atom, and each Z is -O-R4 where R4 is a branched C20 alkyl group. Taking l and m as 1, every other residue indicated in the box above correspond to instant A and reads on A represents an electron-acceptor group.
The polymer has a weight average molecular weight of 41,356 Dalton (page 41, line 21). Each repeating unit has a molecular weight of about 1,393 g/mol (939+766-2*156=1,393). This corresponds to approximately 30 repeating units (41,356/1,393 =29.68). Taking l and m as 1, Bianchi’s polymer corresponds to n is about 15 (30/2=15).
Regarding claim 4, Bianchi discloses the conjugated anthradithiophene terpolymer of claim 1 having general formula (I). Bianchi further discloses a photovoltaic cell comprising the polymer (Example 8 on page 43-45). A solar cell reads on a photovoltaic device. The device is prepared on an ITO coated glass substrate (page 42, lines 8-9), reading on a rigid support.
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.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Bianchi (WO-2019/175367-A1, cite no. 2 on 9/7/2023 IDS) as applied to claim 1 above, and further in view of Jung (Jung et. al., High-performance polymer solar cells based on terpolymer composed of one donor and two acceptors processed with non-halogenated solvent, Organic Electronics, 2020, 86, 105929).
Bianchi teaches the conjugated anthradithiophene terpolymer of claim 1.
Bianchi does not anticipate “A” is selected from the groups in instant Table 1.
However, Bianchi teaches that polymers can be obtained using at least one “X4-A-X4” compound where X4 is a halogen atom and A has the meaning reported in Bianchi’s Table 1 (page 29, lines 6-18). The “X4-A-X4” compound produces the “A” residues in Bianchi’s polymers. One of ordinary skill would immediately envisage using two “X4-A-X4” compounds because Bianchi teaches using at least one “X4-A-X4” compound. The “A” electron-acceptor groups can be selected from Bianchi’s Table 1 (page 27). Bianchi’s Table 1 and claim 2’s Table 1 are shown below and annotated with numbers to indicate the claimed “A” groups taught by Bianchi.
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In Table 1, B1 (instant B) represents a sulfur atom, an oxygen atom, a selenium atom, or a NR16 group (instant R11) wherein R16 is a hydrogen atom or a linear or branched C1-C30 alkyl group (last two lines of page 27- page 28, line 1). Q1 (instant Q1 and Q2) are mutually identical or different and represent a nitrogen atom, a sulfur atom, an oxygen atom, a selenium atom or a C-R16 group (instant R12) wherein R16 is a hydrogen atom or a linear or branched C1-C30 alkyl group (page 28, lines 2-4). R13 reads on instant R8 and is defined in the same way (page 28, lines 5-12). R14 and R15 read on instant R9 and R10 and are defined in the same way (page 28, lines 13 through page 29, line 5). The “A” group labeled as “a” in Bianchi’s Table 1 corresponds to the instant
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residue in the “l” repeating units.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any two “X4-A-X4” compounds taught by Binachi because Bianchi teaches that at least one compound can be used. In particular, it would have been obvious to selected a combination of 1,3-dibromo-5, 7-bis(2-ethylhexyl)benzo[1,2-c:4,5-c]dithiophene-4,8-dione (corresponding to the exemplified
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residues) and any other A group taught by Bianchi. Bianchi therefore teaches a conjugated anthradithiophene terpolymer where A is selected from any group in instant Table 1 except
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,
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,
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, and
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(claim 2).
Bianchi is silent as to the molar ratio between “X4-A-X4” compounds when more than one compound is used.
However, one of ordinary skill would immediately envisage a 50/50 mixture, resulting in “l” and “m” are 1.
In addition, prior to the effective filing date 25-75 mol% of each “X4-A-X4” compound was known as a suitable range for producing conjugated terpolymers for photovoltaic applications, as taught by Jung. Jung teaches that terpolymers consisting of three monomers with one electron donor unit and two electron acceptor units are promising p-type polymers used in polymer solar cells because the incorporation of the third monomer into a copolymer backbone provides synergistic effects on physical properties such as absorption ability, charge transport, and photovoltaic performance (Jung, abstract). Jung further teaches that the random arrangement enhances solubility in non-halogenated solvents by reducing the degree of regularity in the polymer backbone (Jung, page 2, top of column 1). Jung produces the PBDTBD polymers shown in the figure below (Ref, page 4, figure 1).
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Jung demonstrates that the ratio of DTffBT and BDD segments can be adjusted to control the optical, electrochemical, morphological, and molecular properties of the resulting polymers (Jung, col. 2, paragraph 3). Jung’s BDD monomers correspond to Bianchi’s
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residues. Jung’s terpolymers use 25%, 50%, or 75% BDD (see figure above). Jung found that HOMO and LUMO energy levels could be fine-tuned by the ratio of BDD and DTffBT (Jung, page 4, col. 2, paragraph 1 and Table 2). Based on Jung’s disclosure, one of ordinary skill would have known that terpolymers comprising one electron donor unit and two electron acceptor units are useful for tuning the properties of conjugated polymers. One would have also known that the molar ratio between the two electron acceptor units can be used to fine-tune physical properties, such as the HOMO and LUMO energy levels and that 25-75 mol% of each electron acceptor unit is a suitable range.
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have used each “X4-A-X4” compound in an amount of 25-75 mol% of the “X4-A-X4” compounds as taught by Jung in order to control the optical, electrochemical, morphological, and molecular properties of the terpolymer. An amount of 25-75 mol% corresponds to a range of l is 1-3 and m is 3-1.
The anthradithiophene group of Bianchi’s polymer reads on that of claim 3. Specifically, Q represents a C-R1 group wherein R1 is a hydrogen atom, each W is a hydrogen atom, each W1 is a branched C8 alkyl group (2-ethylhexyl), each X is a sulfur atom, each Y is an oxygen atom, and each Z is -O-R4 where R4 is a branched C20 alkyl group (octyldodecyloxy). Bianchi further teaches “A” electron-acceptor groups where B (Bianchi B1) can be a sulfur atom and R8 (Bianchi R13) is preferably a C2-C10 alkyl group.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,476,422 B2 (reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 is anticipated by reference claim 8.
Reference claim 8 depends from reference claim 7 and teaches a polymer having the following formula (col. 37, lines 41-59):
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wherein Z is defined the same as instant X (col. 37, lines 61-62), Y reads on instant Y is an oxygen atom or selenium atom (col. 37, lines 63-64), R1 reads on all of the instant Z groups (col. 37, line65 through col. 38, line 22), and R2 reads on W are equal or different and represent a hydrogen atom or linear or branched C1-C20 alkyl groups (col. 38, lines 23-32). The subscript n is an integer of 10-500 (col. 38, line 43).
A can be
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(col. 40, lines 1-15) where B1 reads on each X is the same or different and is a sulfur, oxygen, or selenium atom (col. 41, lines 13-16), Q1 reads on Q is nitrogen atom or a C-R1 group where R1 is hydrogen (col. 41, lines 17-21), and R13 reads on W and W1 are equal or different and represent a hydrogen atom or linear or branched C1-C20 alkyl groups (col. 41, lines 22-38). Every other A group corresponds to the instant A residue.
The reference polymer reads on the claimed conjugated anthradithiophene terpolymer where A is an electron-acceptor group. Taking l and m as 1, reference claim 8’s n corresponds to instant n is 5-250 (10/2=5 and 500/2=250).
Reference claim 8 does not anticipate the claimed n.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any “n” in the range of 5-250 because reference claim 8 teaches this range. A range of 5-250 overlaps with the claimed range of 10-500. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Claims 1 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,058,926 B2 (reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 4 are obvious over reference claim 7.
Reference claim 7 depends from reference claim 1 and teaches a polymeric photovoltaic cell with a support layer made of a rigid or flexible material (claim 4) (col. 23, lines 52-55). The photovoltaic cell comprises a photoactive organic polymer (col. 22, lines 10-11). The polymer has the following structure (col. 22, lines 15-34):
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wherein Z is defined the same as instant X (col. 22, lines 36-37), Y is defined the same as instant Y (col. 22, lines 38-39), R1 is defined the same as instant Z except the species where instant R1 is -R6-OR7 or R-S- thiol groups (col. 22, lines 40-53), R2 reads on W are equal or different and represent a hydrogen atom or linear or branched C1-C20 alkyl groups (col. 22, lines 54-62), R3 reads on W1 are equal or different and represent a hydrogen atom or linear or branched C1-C20 alkyl groups (col. 22, line 63 through col. 23, line 4), and Q is defined the same as instant Q (col. 23, lines 5-7). The subscript n is an integer of 10-500 (col. 23, line 8).
The reference polymer reads on the claimed conjugated anthradithiophene terpolymer (claim 1) where A is
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. This reads on A is an electron-acceptor group. Taking l and m as 1, reference claim 7’s “n” therefore corresponds to instant n is 5-250 (10/2=5 and 500/2=250).
Reference claim 7 does not anticipate the claimed n.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any “n” in the range of 5-250 because reference claim 7 teaches this range. A range of 5-250 overlaps with the claimed range of 10-500. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDRA DESTEFANO whose telephone number is (703)756-1404. The examiner can normally be reached Monday-Friday 9-5.
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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