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 1-29 of H. Kawashima et al., US 18/835,842 (Feb. 9, 2023) are pending. Claims 1-20 and 23-27, drawn to non-elected Groups (I) and (III)-(V) are withdrawn from consideration pursuant to 37 CFR 1.142(b). Claims 21-22 and 28-29 are under examination on the merits and are rejected.
Request for Continued Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 11, 2026 has been entered.
Election/Restrictions
Pursuant to the restriction requirement, Applicant elected Group (II), Claims 21-22, drawn to a heterocyclic compound, without traverse, in the reply filed on June 17, 2025. New claims 28 and 29 are added to the invention of elected Group (II). Claims 1-20 and 23-27, drawn to non-elected Groups (I) and (III)-(V) are maintained as withdrawn from consideration pursuant to 37 CFR 1.142(b). The restriction requirement maintained as FINAL.
Withdrawal Objections to the Specification
Objection to the specification because numerous chemical drawings (and/or chemical drawing labels) are too faint/garbled to discern and/or are not likely to transpose in publication is withdrawn in view of Applicant’s filing of a clear substitute specification.
Withdrawal Claim Rejections 35 U.S.C. 112(a) -- New Matter
Rejection of claims 21 and 22 under 35 U.S.C. 112(a) as failing to comply with the written description requirement on the grounds of new matter is withdrawn in view of Applicant’s amendments.
Withdrawal Claim Rejections - 35 USC § 102 (AIA )
Rejection of claims 21 and 22 under 35 U.S.C. 102(a)(1) as being anticipated by S. Pyo et al., KR 20130117726 (2013) (“Pyo”) is withdrawn in view of Applicant’s amendment.
Clam Objections
Claim 28 is objected to on the grounds that the recitation of “formula (301)” in the first line appears to be a typographical error and should recite “formula (302)”.
Rejections 35 U.S.C. 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.
Pursuant to 35 U.S.C. 112, the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention. MPEP § 2173.05(a).
Claims 28 and 29 – Lack of Antecedent Basis for Certain Recited Claim Variables
Claims 28 and 29 are rejected pursuant to 35 U.S.C. 112(b), as indefinite because claim 28 recites chemical-structure variable definitions that have no antecedent basis in the drawn chemical structure 302 or elsewhere in the claim 28.
Claim 28 recites the following variable definitions and provisos:
Claim 28 . . . X301 denotes an optionally substituted monocyclic, or condensed aromatic hydrocarbon group with 3 to 26 carbon atoms,
an optionally substituted monocyclic, or condensed heteroaromatic group with 3 to 26 carbon atoms,
an optionally substituted cyclic aliphatic hydrocarbon group with 3 to 18 carbon atoms,
an optionally substituted cyclic heteroaliphatic hydrocarbon group with 3 to 18 carbon atoms, or O;
. . .
in the formula (301), when L301 is NR301, and R301 is an optionally substituted monocyclic, or condensed aromatic hydrocarbon group with 6 to 26 carbon atoms,
then L301 is each independently substituted with a fluorine atom or a moiety with 1 or more carbon atoms containing 3 or more fluorine atoms;
in the formula (301), when X301 is a p-phenylene group and nn is 1,
then the p-phenylene group is substituted with a fluorine atom or a substituent with 1 or more carbon atoms optionally containing 3 or more fluorine atoms; and
in the formula (301), X301 does not have a cyano group, a linear vinylene group, a ketone group, a thioketone group or a selenium atom.
However, the drawn chemical formula (302) does not have a variable X301 and nowhere in the claim is formula (301) drawn out. As such, it is unclear to one of ordinary skill what variable X301 and formula (301) is referenced in the above cited claim 28 portions. As discussed in the MPEP a lack of clarity could arise where a claim refers to "said lever" or "the lever," where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference. MPEP § 2173.05(e). It may be that the above-cited claim 28 text is an inadvertent carryover in drafting new claim 28 using the claim 21 text as a base. If this is the case, the rejection can be overcome by deleting the above cited text from claim 28.
Dependent claim 29 does not cure the issue.
Claim Rejections - 35 USC § 102 (AIA )
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
35 U.S.C. § 102(a)(1) over J. Je et al., KR 20100094415 (2010) (“Je”)
Claim 21 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by J. Je et al., KR 20100094415 (2010) (“Je”). Je discloses the following compound 38, which meets the claim 21 formula 301 chemical structure variables as indicated below. See Je at page 7 (compound 38); see also, CAS Abstract and Indexed Compound, J. Je et al., KR 2010094415 (2010) (CAS No. 1245721-89-4).
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where
kk is one
nn is two
ii is one
each mm is one
hh is zero, and
jj is zero.
Claim 21 is therefore anticipated.
35 U.S.C. § 102(a)(1) over CAS Abstract of RN 331753-96-9 (2001)
Claims 21 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Abstract of RN 331753-96-9 (2001). This electronic reference printout discloses that compound registry number (RN) 331753-96-9 was entered into the CAS Registry data base on April 18, 2001, Chemical Library, Supplier: AsInEx. This reference disclosed the following compound RN 331753-96-9, which meets the claim 21 formula 301 chemical structure variables as indicated below.
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Where, kk is one, nn is one
ii is one
each mm is one
hh is one, and
each jj is one.
The limitations of dependent claim 22 are clearly met where a311 is zero and a312 is one.
Subject Matter Free of the Art of Record
Claims 28 and 29 are free of the art of record. The closest art of record is K. Kimura, JP 2003335754 (2003) (“Kimura”).
Kimura discloses a compound useful as a material for various kinds of electronic devices, especially a light-emitting element and to provide the light- emitting element having excellent luminescent properties, preservation durability. Kimura at page 29 of 43.
Kimura discloses the following example compound H-11 which meets the limitations of claim 28, compound (302), as follows:
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Kimura at page 14.
Kimura’s compound does not meet the following bolded text of claim 28:
Claim 28 . . . Rf301 each independently denotes a moiety with 2 or more carbon atoms containing 3 or more fluorine atoms, with the ratio of the number of fluorine atoms to the number of carbon atoms is 50% or more . . .
An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that it would have similar (useful) properties to a prior art compound.1 MPEP § 2144.09.
Here, claim 28 is not obvious in view of Kimura compound H-11 because neither Kimura nor secondary art motivates one of ordinary skill to substitute additional fluorine atoms in compound H-11 so as to meet the claim 28 limitation of “ratio of the number of fluorine atoms to the number of carbon atoms is 50% or more”.
Conclusion
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 In the chemical arts, a "lead compound" obviousness analysis is often applied; the “lead compound” analysis requiring initial motivation to select a prior art compound and thereafter still further motivation to make the specific structural modifications thereto so as to arrive at a claimed compound. See MPEP § 2143(B) (discussing “lead compound cases” in Examples 9-11 with respect to pharmaceutical applications).
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