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 1-11 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.
Amended claim 1 is rejected as being vague and indefinite when it recites “R1 to R8 are each independently hydrogen, deuterium, or a substituted or unsubstituted C6-60 aryl, wherein any one of R1 to Ra is a substituted or unsubstituted phenyl, and at least one of the rest is deuterium” (emphasis added); the scope of the protection sought is not clear. 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, amended claim 1 recites the broad recitation ”R1 to R8 are each independently hydrogen, deuterium, or a substituted or unsubstituted C6-60 aryl,”, and the claim also recites “wherein any one of R1 to Ra is a substituted or unsubstituted phenyl, and at least one of the rest is deuterium” which is the narrower statement of the range/limitation (assuming arguendo that applicants’ intended to refer to “R1 to R8” in lieu of the recited “R1 to Ra”. 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. Claim 1 fails to particularly point out and distinctly claim the substituents R1 to R8 in the claimed compound of formula 1, i.e., R1 to R8 are each independently hydrogen, deuterium, or a substituted or unsubstituted C6-60 aryl, with the proviso that at least one of R1 to R8 is a substituted or unsubstituted phenyl, and at least one of the rest of R1 to R8 is deuterium.
Amended claim 1 is rejected as being vague and indefinite when it recites “wherein any one of R1 to Ra is a substituted or unsubstituted phenyl, and at least one of the rest is deuterium” (emphasis added); the scope of the protection sought is not clear, as there is insufficient antecedent basis for a substituent Ra in the claimed compound of formula 1. Claim 1 fails to particularly point out and distinctly claim the substituents in the claimed compound of formula 1.
Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant’s disclosure: U.S. Patent Application Publication No. 2025/0160202, which is the pre-grant publication corresponding to the present application, and the following, each of which teaches the compound of the present formula I, but are precluded from being applicable prior art because of their publication dates, i.e., Chinese Patent No. CN
118894844 A, and Chinese Patent No. CN 119081684 A.
Allowable Subject Matter
Claims 1 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 2-11 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Geraldina Visconti whose telephone number is (571)272-1334. The examiner can normally be reached Monday-Friday, 8:00am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony J Zimmer can be reached at (571)270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GERALDINA VISCONTI
Primary Examiner
Art Unit 1737
/GERALDINA VISCONTI/Primary Examiner, Art Unit 1737
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