ETAILED 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 § 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 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 and 2 recites “general formula (A)…” However, the claims also recites “[Chemical Formula 1].” It is unclear if “[Chemical Formula 1]” is the same as “formula (A).”
Claims 3-12 are dependent claims which fail to alleviate the issues above.
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 1-8, and 12, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 19/515,434 (App. No. 19/515,434).
Although the claims at issue are not identical, they are not patentably distinct from each other because App. No. 19/515,434 teaches each and every component and reads upon the claims in an anticipatory manner.
Regarding claims 1-8, and 12, App. No. 19/515,434 teaches a composition comprising a polythiophene having a structural unit of formula (A)
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157
189
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, wherein L is
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132
247
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, (Claims 1-15), which meets the identical claimed formula and thus, one skilled in the art would have a reasonable expectation for the compound to have the claimed absorbance ratio properties of the claimed invention because Applicant further teaches the same polythiophene will have the claimed absorbance ratio properties. (See examples of specification). See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 (i.e., changing from AIA to pre-AIA ) 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 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) 1-8 and 12, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2018-048322 A to Hirao et al. (hereinafter Hirao).
Regarding claims 1-8, and 12, Hirao teaches a conductive polymer having the formula
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143
137
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, wherein L is –(CH2)n-, wherein n is 0-12, and M1 and M2 is hydrogens or C1-15 alkyl groups (para 11). Specifically, Hirao teaches the polythiophene is obtained by polymerizing a monomer compound with ferric chloride (i.e. oxidizing agent), to form a precipitated solid which is filtered off and dried to give the polythiophene product having the formula
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137
138
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or
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146
133
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(para 132-137 and 144-146), which meets the claimed polythiophene. Hirao further teaches the above polythiophene is used to form a conductive coating by mixing the polythiophene in a solution/dispersion, applied on a substrate and dried, (para 120-122) and used in a solar cell. (para 1).
Regarding the absorbance ratio properties, one skilled in the art would have a reasonable expectation for the polythiophene of Hirao to have the claimed absorbance ratio properties of the claimed invention because Hirao teaches a substantially identical polythiophene to the claimed invention such as a polythiophene with the formula
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146
133
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and Applicant further teaches the same formula in Example 2 (polythiophene compound 2), will have an absorbance ratio of 2.4. See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Claim(s) 1-12, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2020-105500 A to Amaya et al. (hereinafter Amaya).
Regarding claims 1-12, Amaya teaches a conductive polymer having the formula
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138
142
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, wherein L is –(CH2)n-, wherein n is 0-12, and M1 and M2 is hydrogens or C1-15 alkyl groups, and R1A is hydrogen (See abstract and para 10-11). Specifically, Amaya teaches the polythiophene is obtained by polymerizing a monomer compound with ferric p-toluenesulfonate (i.e. oxidizing agent), (para 176), and purified with a chelate compound having a plurality of phosphonic acid groups (-P(=O)(OH)2), (para 150-151), which meets the process cited in claims 9-11). The above polythiophene product has formula
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146
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(para 193-194), which meets the claimed polythiophene. Amaya further teaches the above polythiophene is used to form a conductive coating by mixing the polythiophene in a solution/dispersion, applied on a substrate and dried, (para 163-165) and used in a solar cell. (para 1).
Regarding the absorbance ratio properties, one skilled in the art would have a reasonable expectation for the polythiophene of Amaya to have the claimed absorbance ratio properties of the claimed invention because Amaya teaches a substantially identical polythiophene to the claimed invention such as a polythiophene with the formula
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146
133
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and Applicant further teaches the same formula in Example 2 (polythiophene compound 2), will have an absorbance ratio of 2.4. See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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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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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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