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
Status of 18/737,742
Claims 1-20 are currently pending.
Priority
Instant application 18/737,742, filed 6/7/2024, claims priority as follows:
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The provisional application does not contain support for Formulae (I), (II), (V), (VI), (VII), and (VIII), but does contain support for Formulae (III) and (IV). Claims 1-12 and 16-20 recite the limitations of Formulae (I), (II), (V), (VI), (VII), and (VIII), which are not supported by the provisional application, and are thus granted the effective filing date of 6/7/2024. Additional claims 13-15 are granted the effective filing date of 6/15/2023.
Information Disclosure Statement
All references from the IDS submitted on 8/15/2024 have been considered unless marked with a strikethrough.
Objection to the Abstract
The abstract of the disclosure is objected to for insufficient length, as it is less than 50 words. The abstract should generally be within the range of 50 to 150 words in length, and chemical abstracts in particular should provide the structure of the compound of a formula thereof in addition to methods of use. See MPEP § 608.01. Appropriate correction is required.
Objection to Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because Figures 1 and 2 are not able to be interpreted as they are pixelated and illegible. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Election/Restriction
Applicant’s election of the following species:
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In the reply filed 7/21/2026, without traverse, is acknowledged.
Examination will begin with the elected species. In accordance with MPEP § 803.02, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will be extended. If prior art is then found that anticipates or renders obvious the non- elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be examined again. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. In the event prior art is found during further examination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final.
The elected species was searched and prior art was identified. See the 103 rejection below. During the search, an additional species was identified under the same variables of Formula (I). See the 102 rejection of the expanded species below. The full scope of the claims has not yet been searched in accordance with Markush search practice. Claims 1-6, 8, 10-11, and 16-20 read on the elected and expanded species. Claims 7, 9, and 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species and/or group, there being no allowable generic or linking claim.
Claim Rejections – Improper Markush
Claims 1-6, 8, 10-11, and 16-20 are rejected on the basis that they contain 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 groupings of Formulae (I) and (II) are improper because the alternatives defined by the Markush groupings do not share both a single structural similarity and a common use for the following reasons: The Markush groups A, L, D, D1, D2, and D3 contain variables that can be independently selected from various monocyclic and polycyclic saturated and unsaturated carbon and hetero-based rings, and any divalent linker that can be covalently bonded to the A and D variables of the genera. From this definition, the compounds share no common core. A skilled artisan would recognize the variation in ring size atom selection, and functional group selection can lead to variations in chemical properties including vital organic optoelectronic properties necessary for devices such as organic photovoltaic cells. They do not belong to the same recognized physical or chemical class or to the same art-recognized class.
The instant disclosure claims the compounds are useful for optoelectronic devices; however, no data supporting this has been provided. Thus, no structure/function relationship between the varying ring sizes, atom substitution, or functional group substitution can be established. In this case, the claims are so expansive that a common utility cannot be expected.
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.
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.
Claims 1-6, 8, 10-11, and 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gasparini (Gasparini, N. Nature Reviews Materials, 2019, 4(4) 229-242., cited in the IDS of 8/15/2024). This rejection applies to the expanded species.
The reference Gasparini discloses roles of components in ternary organic solar cells, including components such as acceptor materials (title, abstract), and specifically discloses the compound ITIC (Figure 2):
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ITIC maps to a compound of instant Formula (I):
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When A is
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, Ar1 is an aromatic ring, R is hydrogen, L is divalent linker covalently bonded to terminal ring D’ and to A, and D represents a linear ring system of 11 rings D’, where each ring D’ is a monocyclic ring, and four of the rings are substituted with R, where R is alkyl.
The Examiner notes there are many additional interpretations of how ITIC maps to instant Formula (I) not stated herein.
Further, the compound ITIC maps to a compound of instant Formula II:
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When A is
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, Ar1 is an aromatic ring, R is hydrogen, L is divalent linker covalently bonded to A and the D ring series, n is 2, D3 is a thiophene, m is 1, D2 is cyclopentadiene substituted with two instances of R, where R is an arylalkyl, and D1 is a monocyclic ring. Similar to above, there are many additional interpretations of how ITIC maps to instant Formula II not stated herein.
Further, Gasparini also discloses that ITIC is present in organic photovoltaic cells in ternary formulations (Table 1). Thus, Gasparini anticipates claims 1-6, 8, 10-11, and 16-20.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6, 8, 10-11, and 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gasparini (Gasparini, N. Nature Reviews Materials, 2019, 4(4) 229-242., cited in the IDS of 8/15/2024) in further view of Jilani (Jilani, F. et. al. Computational and Theoretical Chemistry., 2020, 1187, 112916.) This rejection applies to the elected species.
Determining the scope and contents of the prior art
The reference Gasparini teaches as disclosed above, and at least those teachings are incorporated herein. The compound ITIC:
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solely differs from the elected species by the lack of the linking alkyne, circled in blue, between the thiophene of the core and the alkene attached to the indanone:
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The reference Jilani teaches non-fullerene acceptors for organic solar cells, and specifically teaches this deficiency by compound M1 (Page 2, Figure 1):
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Which contains the alkyne attached to an alkene indanone moiety and the core of the non-fullerene acceptor.
Ascertaining the differences between the prior art and the claims at issue
The reference Gasparini fails to teach the alkyne moiety in between the alkene indanone and the thiophene core of the elected species.
The reference Jilani fails to teach the thiophene core of the elected species.
Resolving the level of ordinary skill in the pertinent art
The level of ordinary skill in the art is represented by an artisan who has sufficient background in the development of materials for optoelectronic applications. An artisan possesses the technical knowledge necessary to make adjustments to the materials to enhance their effectiveness. Said artisan has also reviewed the problems in the art as regards to use of said materials for optoelectronic applications and understands the solutions that are widely known in the art.
Considering objective evidence present in the application indicating obviousness or nonobviousness
Applying KSR prong (A), it would have been prima facie obvious to combine the teachings of Gasparini and Jilani to insert an alkyne in between the alkene indanone and core of the molecule ITIC because the compounds of Gasparini and Jilani are known for the same function, and thus the resulting compound would be expected to have similar properties. A skilled artisan would be motivated before the effective filing date to make this combination in an effort to identify additional optoelectronic materials, and would have reasonably predicted success in light of the teachings of Gasparini and Jilani.
Conclusion
Claims 1-6, 8, 10-11, and 16-20 are rejected. Claims 7, 9, and 12-15 are withdrawn.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kendall Heitmeier whose telephone number is (703)756-1555. The examiner can normally be reached Monday-Friday 8:30AM-5:00PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.N.H./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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