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 .
DETAILED ACTION
Claims 1-20 are pending.
Priority
This application claims the following priority:
PNG
media_image1.png
78
653
media_image1.png
Greyscale
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 7B-7I.
The drawings are further objected to because in each of the structures depicted in Figure 1, solid black circles overlay individual carbon atoms in different phenyl rings, and it is unclear if these solid black circles are merely depicting the ring carbons or if they are depicting some type of property of the compound or the carbon atom.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112(b)
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.
Claim 4 is 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.
-Claim 4 recites the limitations "accord to Formula Ia each of R3a-e and R4a-e " in lines 2-3 and “according to Formula Ib each of R5a-d and R6a-d” in line 6. There is insufficient antecedent basis for these limitations in the claim.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2, 9-12, and 16 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
-Claims 2 and 16 depend from claim 1, wherein claim 1 defines R2 as a triphenylamine. However, the compound of Formula Ia in claim 2, and the first 9 species recited in claim 16 depict a diphenylamine at R2.
As such, the compound of Formula Ia in claim 2 and the first 9 species in claim 16 broaden the scope of instant Formula I in claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 112(a)-Written Description
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-8, and 17-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See MPEP 2163.
Claim 1 is directed toward an anodically-coloring electrochromic molecule having a structure according in instant Formula 1:
PNG
media_image2.png
305
597
media_image2.png
Greyscale
.
Claims 17-20 further define these compounds functionally:
PNG
media_image3.png
409
644
media_image3.png
Greyscale
However, the instant specification provides zero examples of compounds of instant Formula I wherein R2 is a triphenylamine.
In Figures 1A-D, the instant specification exemplifies 10 compounds of Formula I, seven of which are a diphenyl amine at R2 substituted with methoxy, -SCH3, or CN, and three of which are a carbazole at R2 substituted with methoxy, -CN or - SCH3. See also Example 1 on pgs. 44-45 of the instant specification. The compounds of instant Formula 1A-D encompass the following structures:
PNG
media_image4.png
821
591
media_image4.png
Greyscale
Figures 5A-5D show absorbance spectra of:
PNG
media_image5.png
345
632
media_image5.png
Greyscale
as Fe(OTf)3 is titrated into each sample to induce radical cation formation ([0016)]).
Figures 6A-6F show the color of radical cations generated for chromophores of the compounds of Figure 1.
Figures 10A-10E show color generation by forming the cation radicals at 125 µM concentration in dichloromethane using a Fe(OTf)3 titrated dopant ([0021]) of the following compounds:
PNG
media_image5.png
345
632
media_image5.png
Greyscale
.
As such, the species disclosed in the specification as anodically-coloring electrochromic molecules and more so, those with the functional and intended use limitations of instant claims 17-20, are very limited in scope when compared to the expansive scope of the compounds in instant Formula I.
Thus, there is a vast scope in the claims that has no representation at all or homology to the disclosed species, in relation to anodically-coloring electrochromic activity. The disclosure does not adequately reflect the structural diversity of the claimed genus in reference to anodically-coloring electrochromic activity that is representative of the full variety or scope of the genus. In addition, there is no establishment of a reasonable structure-function correlation in the disclosure or prior art that clearly imparts this anodically-coloring electrochromic activity.
The prior art does not teach the instantly claimed compounds.
Christiansen (New Design Paradigm for Color Control in Anodically Coloring Electrochromic Molecules, published 2019, IDS of 08/01/2024) teaches structurally similar anodically coloring electrochromic compounds that are colorless in the neutral state and oxidize to colored species, and teaches these anodically coloring electrochromics compounds as having the following structures:
PNG
media_image6.png
128
346
media_image6.png
Greyscale
(pg. 3859),
PNG
media_image7.png
307
677
media_image7.png
Greyscale
(pg. 3861).
Thus, Christiansen teaches four structurally similar, but distinct compounds that impart this anodically-coloring electrochromic activity.
In view of the teachings of the specification and the prior art, it is not possible to determine a core structure of Formula (I), wherein R2 is a triphenylamine, that impart the anodically-coloring electrochromic activity and the functional limitations of claims 17-20.
For these reasons, claims 1, 3-8, and 17-20 are broader than what the specification supports and are not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, had possession of the claimed invention.
Free of the Prior Art
Claims 1-20 are free of the prior art.
Claims 13-15 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 closest prior art is KR 10-2014-0082569 (published 2014, PTO-892) which teaches compounds such as:
PNG
media_image8.png
187
185
media_image8.png
Greyscale
(pg. 6)
However, ‘569 does not teach a triphenylamine at R2 of instant Formula I, or teach -SCH3 attached to the thiophene ring of instant Formula I, and ‘569 does not teach a -SCH3 attached to the thiophene ring or the preferred R3a-e or R4a-4e groups of instant Formula Ia in claim 2, which are distinct features of the instantly claimed compounds.
Conclusion
No claims are allowed.
Claims 1-12 and 16-20 are rejected.
Claims 13-15 are objected to.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN WELLS whose telephone number is (571)272-7316. The examiner can normally be reached M-F 7:00-4:30.
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, James (Jim) Alstrum-Acevedo can be reached on 571-272-5548. 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.
/LAUREN WELLS/Examiner, Art Unit 1622
Prosecution Insights