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 1-5, 10-15, 19 and 20 of I. Kidd et al., US 17/453,644 (Nov. 4, 2021) are pending. Claims 14 and 15 to non-elected Group (II) are withdrawn. Claims 1-5, 10-13, 19, and 20 are under examination on the merits and are rejected.
Election/Restrictions
Applicant previously elected Group I (now claims 1-5, 10-13, 19, and 20), with traverse in the Reply to Restriction Requirement filed on December 13, 2022. Claims 14-18 to the non-elected invention of Group (II) are maintained as withdrawn from consideration pursuant to 37 CFR 1.142(b). The Restriction is maintained as FINAL.
Claim Interpretation
Examination requires claim terms first be construed in terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim. See MPEP § 2111. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01. It is also appropriate to look to how the claim term is used in the prior art, which includes prior art patents, published applications, trade publications, and dictionaries. MPEP § 2111.01 (III). Claim interpretation respecting the claimed “binder” is updated below in view of Applicant’s amendment, which deletes the term “water soluble cellulose derivative”.
Interpretation of Claim 1 Term “adhesion loss factor”
Claim 1 requires that “an adhesion loss factor (ALF) of the functional layer is not greater than 7%”. The specification defines adhesion loss factor as follows:
[0030] As used herein, the adhesive strength of the functional layer to the substrate is expressed as the adhesion loss factor (ALF). As also in more detail described in the examples, the ALF is defined as the percentage of weight loss of the functional layer on a stainless-steel substrate measured according to a modified ASTM E8 testing method.
Specification at page 4, [0030] (emphasis added). Protocol ASTM E8 does not provide any mention of “adhesion loss factor” or how to calculate such a value. See attached ASTM Designation E8/E8M-16 (2016) (which is the most recent update of ASTM E8 having a publication date before the instant application’s filing date). Furthermore, a search of ASTM Compass website (https://compass.astm.org/) failed to identify any ASTM method regarding “adhesion loss factor”. Still further, “adhesion loss factor” is not a term of art. Searches conducted did not reveal a single prior art document (other than the current application) reciting the term “adhesion loss factor”. As such, the only guidance as to the meaning of “adhesion loss factor” is the current specification.
Claim 1 sets forth the method for calculating the “adhesion loss factor (ALF)” as follows:
Claim 1 . . . wherein determining the adhesion loss factor of the functional layer comprises:
applying the functional layer as a coating on a 325 mesh stainless steel test stripe via dip coating, drying the coating to form a functional layer coating,
clamping the test stripe vertically between 10 kN grips, and
subjecting the coated test stripe to a pull rate of 5 mm/minute at a temperature of 25 °C until failure, which failure is indicated by a drop of a load of 80% or greater from a maximum load,
the adhesion loss factor (ALF) expressing a percent weight loss of the functional layer coating, with ALF [% loss] (weight of test stripe after failure / weight of test stripe before subjection to pull rate) x 100%,
wherein the stainless steel test stripe has a dimension of 4 x 1 inches and a thickness of 86 microns;
and the functional layer coating on the stainless steel test stripe has a thickness between 100 μm to 200 μm. . .
The specification working example demonstrates the claim 1 calculation of the “adhesion loss factor (ALF)” (which procedure is based on the ASTM E8 protocol) using an Instron 5900 series instrument. Specification at pages 26-27, [00210]-[00214]; see also, Instron 5900, Premier Testing Systems (2018).
The “adhesion loss factor (ALF)” is thus understood as the clamping of the metal organic framework-coated stainless steel test stripe between claw grips and pulling it apart until failure (drop of a load of 80% or greater from a maximum load), whereby a certain weight off the metal organic framework coating falls off the test stripe and a certain weight remains on the test stripe. Then, per claim 1, the ALF% is calculated by plugging the coated substrate’s weight before and after testing in the following equation.
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See, specification at page 27, [0213].
The specification teaches that this test gives a measure of the adhesive strength of the metal organic framework functional layer to the substrate. Specification at page 4, [0030].
It is important to note that although the claim 1 adhesion loss factor is calculated with respect to a 325 mesh stainless steel stripe, the substrate of claim 1 can be any material.
Interpretation of “metal organic framework”
Claim 1 recites “wherein the functional layer comprises a metal organic framework”. The term “metal organic framework” or MOF
In the art, metal–organic frameworks (MOFs) or porous coordination polymers (PCPs) are crystalline materials possessing highly ordered structures consisting of networks formed by single metal ions or metal clusters connected by multidentate organic groups acting as linkers; a main MOF feature is porosity. C. Pettinari et al., 66 Polymer International, 731-744 (2016) (page 731, col. 1); see also, Z. Yin et al., 378 Coordination Chemistry Reviews, 500-512 (2019) (page 501, col. 1); L. Heinke et al., 31 Advanced Materials, 1-12 (2019) (page 1, col. 1 “Metal–organic frameworks (MOFs) are highly porous, crystalline coordination polymers”); J. Liu et al., 46 Chem. Soc. Rev., 5730-5770 (2017) (page 5731, col. 1).
Consistent with the art-known meaning, the specification provides the following definition:
[0018] As used herein, the term "metal organic frameworks" (MOFs) relates to any compound forming a network of metal ions with coordinated organic ligands.
Specification at page 2, [0018]. It is noted that the term “metal organic framework” is very broad. As discussed in Z. Bao et al., 9 Energy and Environmental Science, 3612-3641 (2016) (see Bao at page 3634, col. 2) (“MOFs possess a higher degree of tailorability because of the almost infinite number of possible metal–ligand combinations”); See also J. Liu et al., 46 Chem. Soc. Rev., 5730-5770 (2017) (page 5752, col. 1, “the number of possible MOFs is virtually infinite”).
Interpretation of the Claim 1 Term “binder”
Claim 1 recites “binder” in the following context:
Claim 1 . . . wherein the functional layer comprises a metal organic framework and a binder . . .
wherein the binder includes1 an organic cross-linked polymer which is a reaction product of a water-soluble polymer and a water-insoluble polymer, the water-soluble polymer including carboxymethyl cellulose or a salt thereof and the water-insoluble polymer including a self-crosslinking polyacrylate.
The term “metal organic framework” is interpreted in previous Office actions.
Based on the plain claim language, the term “organic cross-linked polymer” is a product-by-process limitation2. That is, the reaction product a water-soluble polymer including/comprising carboxymethyl cellulose or a salt thereof and a water-insoluble polymer including/comprising a self-crosslinking polyacrylate; schematically summarized as follows:
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Specification working Example 4 teaches only two binder systems falling within claim 1 (i.e., Table 3 entries S5 and S6, where the MOF is CAU-10, with a D50 size of 4.98 microns, and a D90 size of 7.7 microns) that provide, per claim 1, “an adhesion loss factor (ALF) of the functional layer is not greater than 7%”:
(S5) Binder system 1: Rhoplex GL618 (self-crosslinking acrylic material)3 and carboxymethylcellulose (water soluble polymer); and
(S6) Binder system 2: Maincote 5045 (styrene acrylic self-crosslinking water-insoluble polymer)4 crosslinked with carboxymethylcellulose (water soluble polymer).
Specification at pages 25-27 (see Table 3, Entries S5 and S6). The structures of self- Rhoplex GL618 and Maincote 5045 are not disclosed in the specification and searches conducted did not identify references that disclosed the structures of either of Rhoplex GL618 or Maincote 5045. See footnotes 3 and 4.
Interpretation of Carboxymethyl cellulose
Carboxymethyl cellulose (CMC) is a water-soluble derivative of cellulose, where some hydroxyl hydrogens in cellulose infrastructure are replaced by carboxymethyl groups (i.e., –CH2COO). T. Heinze et al, 266 Die Angewandte Makromolekulare Chemie, 37-45 (1999); S. Rahman et al., 13 Polymers, 1-48 (2021).
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Heinze at page 39, Fig. 1.
Interpretation of “polyacrylate”
Claim 1 recites “polyacrylate” in the following context:
Claim 1 . . . wherein the binder includes an organic cross-linked polymer which is a reaction product of a water-soluble polymer and a water-insoluble polymer, the water-soluble polymer including a water-soluble cellulose derivative and the water-insoluble polymer including a polyacrylate.
The specification discusses “polyacrylate” as follows:
[0026] . . . As used herein, the term polyacrylate includes5 substituted and non-substituted polyacrylates, for example, a polymethacrylate.
Specification at page 3, [0026].
In view of the specification (and Applicant’s most recent argument), the term “polyacrylate” is broadly and reasonably interpreted as the following Markush genus:
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where R is any chemical group and n represents the number of polymeric repeating units.
Interpretation of “self-crosslinking polyacrylate”
The specification does not define “self-crosslinking polyacrylate”. As noted above, the only specification description of “self-crosslinking polyacrylate” are the two of working Example 4 (i.e., Rhoplex GL618 and Maincote 5045), where the structure is not disclosed. See footnotes 3 and 4. Reference Parvate teaches that with self-crosslinking polyacrylates, crosslinking takes place between two mutual functional groups of polymer chains and subsequently polymer is crosslinked into a three-dimensional article or coating, where the crosslinking reaction is triggered either by evaporation of water on drying or by a drastic decrease in pH of film. S. Parvate et al., Journal of Dispersion Science and Technology 1-18 (2018) (page 2, col. 2); see Parvate at Figure 4 ((b) Self-condensation of methylol group). For example, Pi teaches that prior crosslinkable monomers, such as N-methylol acrylamide (NMA) and glycidyl methacrylate are often used to copolymerize with acrylate monomers and form self-crosslinkable acrylate polymer. P. Pi et al., 81 Progress in Organic Coatings, 66-71 (2015) (page 66, col. 1). Pi teaches a low-temperature self-crosslinkable acrylic emulsion was synthesized by semi-continuous emulsion-polymerization technology using methyl methacrylate (MMA), butyl acrylate (BA), acrylic acid (AA) and diacetone acrylamide (DAAM) as monomers and adipic dihydrazide (ADH) as crosslinker. Pi at Abstract.
Applicant’s Argument
Applicant disagrees that the monomer-unit for a water-soluble cellulose shown on page 8 properly describes a water-soluble cellulose derivative. Office action dated May 2, 2025. Applicant argues that it is not correct that R can be "H or any chemical group" to make cellulose water-soluble; that in order to make the cellulose water-soluble, R must contain very specific functional groups, it cannot be "any chemical group." To make cellulose water soluble, typically carboxyl groups or alkyl-ether groups are introduced on the position of the OH-groups; for example. sodium carboxymethyl cellulose (NaCMC), methyl-cellulose (MC), hydroxypropylmethylcellulose (HPMC), and hydroxyethyl cellulose (HEC), wherein the functional groups are responsible for making the cellulose-derivative water-soluble.
In response, during patent examination, the pending claims must be given their broadest reasonable interpretation consistent with the specification. MPEP § 2111. Here, the specification gives no definition for the previous claim 1 recitation of “water-soluble cellulose derivative”.6 The previous Office action broadly and reasonably interpreted “water-soluble cellulose derivative” based on plain meaning of “cellulose”, “water soluble”, and “derivative”, to mean cellulose (which is water insoluble) that has been chemically modified by replacing one or more of the hydroxyl group hydrogens with a non-hydrogen group and/or lowering the chain length n whereby the resulting species is water soluble (at least to some extent). Thus, the previous interpretation already requires water solubility, regardless of variable R’s identity. The claim term “water-soluble cellulose derivative” cannot be narrowly interpreted to account for specific R group identities because claims must be given their broadest reasonable interpretation consistent with the specification. MPEP § 2111.
Applicant argues that regarding the term polyacrylate, Applicant argues that in the structure shown on page 9 of the previous Office action, that variable "R" may be also H, and the three Rs shown in the structure may differ from each other.
In response, since R is stated to be any chemical group, the previous Office action’s interpretation already permits that variable "R" may be also H, and the three Rs shown in the structure may differ from each other.
Applicant further argues that the previous Office action interpretation that "R is any chemical group," is not correct, because R must be selected such that the polyacrylate is not water-soluble, since polyacrylates can be also water soluble.
In response, the previous Office action’s interpretation applies only to “polyacrylate” not to water insoluble polyacrylate. Second, the plain language of the relevant portion of previous claim 1, as bolded below:
Previous claim 1 . . . wherein the binder includes an organic cross-linked polymer which is a reaction product of a water-soluble polymer and a water-insoluble polymer, the water-soluble polymer including a water-soluble cellulose derivative and the water-insoluble polymer including a polyacrylate.
clearly does not require a water-insoluble polyacrylate, in view of the open-ended language “including”. Rather previous claim 1 requires a water insoluble polymer that includes a polyacrylate.
Applicant further argues that R substitutions are much more common on the other C atom, which substitution is not shown in the structure presented of the previous Office action. Applicant further disagrees with the Office action’s polyacrylate structural depiction statement that “n is two or more” because it reads on a dimer, which is not a polymer.
In response, Applicant’s argument is reasonable and the term “polyacrylate” is broadly and reasonably interpreted as set forth above
Withdrawal Claim Rejections - 35 USC § 112(a) (Scope of Enablement)
Rejection of Claims 1-5, 10-13, 19, 20 and 22 are rejected under 35 U.S.C. 112(a) as non-enabled is withdrawn in view of Applicant’s amendments.
New Claim Rejections 35 U.S.C. 112(a) -- New Matter
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.
Amendments narrowing the claims by introducing elements or limitations which are not supported by the as-filed disclosure is a violation of the written description requirement of 35 U.S.C. 112(a). MPEP § 2163.05(II); See, e.g., In re Ruschig, 379 F.2d 990, 995, 154 USPQ 118, 123 (CCPA 1967); Fujikawa v. Wattanasin, 93 F.3d 1559, 1571, 39 USPQ2d 1895, 1905 (Fed. Cir. 1996).
35 U.S.C. 112(a) Rejection of Claim 1
Claims 1-5, 10-13, 19, and 20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description one the grounds that the application as filed does not support the following claim 1 bolded recitation of “self-crosslinking polyacrylate”:
Claim 1 . . . wherein the binder includes an organic cross-linked polymer which is a reaction product of a water-soluble polymer and a water-insoluble polymer, the water-soluble polymer including carboxymethyl cellulose or a salt thereof and the water-insoluble polymer including a self-crosslinking polyacrylate.
With respect to the claimed “the water-insoluble polymer”, the specification recites the broader genus of polyacrylate, for example:
[0026] . . . Non-limiting examples of a water-insoluble polymer can be a polyacrylate, a polystyrene, a polyurethane, an epoxide polymer, a polyimide, a polyamide, a polyester, or any combination or copolymer thereof. As used herein, the term polyacrylate includes substituted and non-substituted polyacrylates, for example, a polymethacrylate.
Specification at page 3, [0026]. But the specification contains no literal recitation of the subgenus of “self-crosslinking polyacrylates”. However, ipsis verbis disclosure is not necessary to satisfy the written description requirement; if a skilled artisan would have understood the inventor to be in possession of the claimed invention at the time of filing, even if every nuance of the claims is not explicitly described in the specification, then the adequate description requirement is met. MPEP § 2163(II)(A)(3)(a) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114 (Fed. Cir. 1991).
Applying the above analysis, the most relevant (and only) specification disclosure relevant to the polyacrylate subgenus of “self-crosslinking polyacrylate” is working Example 4, which recites two species of “self-crosslinking polyacrylates” as follows:7
[00204] The different types of polymers used as a binder were grouped into Polymer 1 (water-insoluble polymers) and Polymer 2 (water-soluble polymers): As Polymer 1 were selected
Rhoplex GL-618, a water-insoluble polymer self-crosslinking acrylic material,
Maincote 5045, a styrene acrylic self-crosslinking water-insoluble polymer,
and SILRES* MP SOE, a silicon binder with phenyl groups.
Specification at page 25, [00204] (emphasis added).
However, as noted in Claim Interpretation above, the structures/identities of Rhoplex GL618 and Maincote 5045 are not disclosed and cannot be determined by Examiner. See footnotes 3 and 4. The specification does not provide any other disclosure or species relevant to “self-crosslinking polyacrylates”.
The specification disclosure of only two species of self-crosslinking polyacrylates (i.e., Rhoplex GL618 and Maincote 5045), where the cross-linkable functional group is not disclosed or apparent cannot provide written description support for a subsequent amendment to support the full genus of “self-crosslinking polyacrylates”. The genus/species relationship in the context of the written description requirement of 35 U.S.C. § 112(a) is evaluated here using a blaze mark analysis because Applicant has amended claim 1 to insert the subgenus of self-crosslinking polyacrylates that was not literally described in the application as filed. MPEP § 2163.05(II); see also, e.g., Biogen Int'l GmbH v. Mylan Pharm. Inc., 28 F.4th 1194, 1199 (Fed. Cir. 2022) (discussing circumstances in which to apply a blaze mark analysis versus a representative number of species analysis); see also MPEP § 2163.05(I)(B) (representative species analysis); MPEP § 2163.05(II) (Ruschig blaze mark analysis). See Claim Interpretation above respecting the meaning and breadth of “self-crosslinking polyacrylates”.
Maintained Claim Rejections 35 U.S.C. 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.
For an originally filed claim (or here a claim supported by the application as filed), 35 U.S.C. 112(a) requires that the specification shall contain a written description of the invention demonstrate that the inventor was in possession of the invention that is claimed.8 MPEP § 2163(I); MPEP § 2163(II)(A)(3)(a). Possession may be shown by disclosure of drawings or structural chemical formulas that show that the invention was complete. MPEP § 2163(I).
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus. MPEP § 2163(II)(A)(3)(a)(ii). A "representative number of species" means that the species which are adequately described are representative of the entire genus. MPEP § 2163(II)(A)(3)(a)(ii). Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. MPEP § 2163(II)(A)(3)(a)(ii) (citing AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014).
The written description requirement may also be satisfied through disclosure of function and minimal structure when there is a well-established correlation between structure and function. MPEP § 2163(II)(A)(3)(a)(i). In contrast, without such a correlation, the capability to recognize or understand the structure from the mere recitation of function and minimal structure is highly unlikely. MPEP § 2163(II)(A)(3)(a)(i) (citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406). In sum, a “sufficient description . . . requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010). For genus claims using functional language, the written description "must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus." Ariad, 598 F.3d at 1349.
The § 112(a) rejection
Claims 1-5, 10-13, 19, and 20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement because the application as filed does disclose either sufficient species, where a species is the combination of (1), (2) and (3):
(1) any binder that includes an organic cross-linked polymer which is a reaction product of “a water-soluble polymer and a water-insoluble polymer”:
(a) “the water-soluble polymer including carboxymethyl cellulose or a salt thereof”, and
(b) “the water-insoluble polymer including a self-crosslinking polyacrylate”;
(2) any “substrate”; and
(3) any “metal organic framework” (MOF).
or a structure-function correlation between these three species such that one of skill can recognize which species combinations meet the claim 1 functional recitation of:
per claim 1 “an adhesion loss factor (ALF) of the functional layer is not greater than 7%”
Claim Breadth
Claim breath is relevant to the instant § 112(a) written description rejection. The written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention. MPEP § 2163(II)(A)(3)(a)(ii) (citing Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th 1330, 1337, 2021 USPQ2d 893 (Fed. Cir. 2021)).
As discussed above in Claim Interpretation, the term “metal organic framework” is broad. Per Z. Bao et al., 9 Energy and Environmental Science, 3612-3641 (2016) (see Bao at page 3634, col. 2) (“MOFs possess a higher degree of tailorability because of the almost infinite number of possible metal–ligand combinations”); See also J. Liu et al., 46 Chem. Soc. Rev., 5730-5770 (2017) (page 5752, col. 1, “the number of possible MOFs is virtually infinite”). Noting the vastness of the term “metal organic framework”, M. Sadiq et al., US 2022/0134307 (2022) teaches that:
[0063] . . . With over 50,000 different MOFs available, there are a wide range of MOF that can be selected based on compliant or complementary chemistry, pore size, surface area, void fraction, open metal sites, ligand functionality and many other characteristics.
Sadiq-2 at page 5, [0063].
The claim term “substrate” is not limited and is thus very broad as it is broadly and reasonably interpreted to encompass any material. MPEP § 2111. The specification does not provide closed-ended definition but teaches that in embodiments the substate may be a polymeric material, a metal, metal alloy, or aceramic material (or a combination of these), which may be roughened. Specification at pages 10-11, [0070]-[0078]. Note that although claimed adhesion loss factor is calculated with respect to a 325 mesh stainless steel stripe, the claim 1 substrate itself can be any material.
As discussed in Claim Interpretation above, per the art, self-crosslinking polyacrylates at least comprises two mutual functional groups such that the polyacrylate may be crosslinked into a three-dimensional article or coating, where the crosslinking reaction is triggered either by evaporation of water on drying or by a drastic decrease in pH of film. S. Parvate et al., Journal of Dispersion Science and Technology 1-18 (2018) (page 2, col. 2); see Parvate at Figure 4 ((b) Self-condensation of methylol group). Clearly this a broad genus since the neither the claims nor the specification structurally defines or constrains the cross-linkable functional group.
Dependent claims 2-5, 10-13, 19, and 20 do not significantly limit claim breadth.
Predictability/Guidance in the Art
What is conventional or well known to one of ordinary skill in the art need not be disclosed in detail. MPEP § (II)(A)(3)(a). Thus, the state of and predictability in the art is a relevant consideration in determining compliance with § 112(a), written description. MPEP § (II)(A)(3)(a) (citing Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1085 (Fed. Cir. 2005) ("The ‘written description’ requirement must be applied in the context of the particular invention and the state of the knowledge…. As each field evolves, the balance also evolves between what is known and what is added by each inventive contribution”).
In one aspect, the claims are directed to employing the claim 1 metal organic framework (MOF) coated substrate as a desiccant (see claim 20), for example, to remove moisture from air. Specification at page 2, [0017].
A. Karmakar et al., 269 Applied Energy, 1-22 (2020) (“Karmakar”) teaches that MOFs have evolved to be one of the prime candidates for water adsorption-based applications due to their tailorable architectures and chemical tunability; however, since metal ions/clusters constitute the skeleton of MOFs, they are susceptible to hydrolysis in the presence of water. Karmakar at page 3, col. 2. Karmakar teaches that to facilitate a continuous contact between the metallic surface and the desiccant, the selection of appropriate binders is necessary. Karmakar at page 13, col. 2. And Karmakar teaches that while the primary role of the binder is to provide excellent binding strength, its selection process must consider several key factors including high heat transfer ability and limited influence on adsorption uptake and another challenge is that the molecules of the binders typically occupy the pores of the adsorbent, thereby significantly affecting the equilibrium uptake capacity of the adsorbent. Karmakar at page 13, col. 2. Karmakar teaches that the compatibility between MOFs and binders and the concentration of the binder in the desiccant must be chosen carefully to prevent the blockage of pores of MOFs; however, such comprehensive analyses between MOFs and binders are currently unavailable and must be carried out. Karmakar at page 19, col. 2.
Karmakar summarizes stating that for coating in a heat exchanger and subsequent use in heat transformation or water harvesting applications, the role of the binder is crucial while evaluating the performance of the MOFs. Karmakar at page 19, cols. 1-2. A suitable binder should enhance the adhesion, promote the heat transfer rates between MOF coating and the surface of metal fins, and have the least impact on the mass transfer process. Karmakar at page 19, col. 1.
In sum, Karmakar evidences substantial unpredictably in selection of the appropriate MOF binder (which must promote intraparticle adhesion as well as limit MOF pore clogging) as well choice of the appropriate MOF (which are subject to water hydrolysis) to be used in combination in water absorption applications.
Claim 1 further requires selection of the appropriate “the water-insoluble polymer including a self-crosslinking polyacrylate” (including molecular weight) that reacts with the “the water-soluble polymer including carboxymethyl cellulose or a salt thereof” so as to provide the claimed binder that will functionally find the MOF to provide the claimed adhesion loss factor.
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The art of chemical reactions is traditionally considered unpredictable. See, In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) (although this older case law). However, as discussed below, searches conducted during examination indicated that there is scarce art providing guidance as to cross linking reactions between cellulose derivatives and polyacrylates; and no prior art was identified providing guidance with respect to a correlation between the cross-linked product and its function as a MOF binder.
Only a single reference was identified in searches that teaches a cross-linking reaction between polyacrylate and carboxymethyl cellulose. B. Kumar et al., 77 Polymer Bulletin, 4555-4570 (2020) (“Kumar”). Kumar teaches that covalent cross-linking of poly(potassium 1-hydroxy acrylate) (PKHA) polymer and carboxymethyl cellulose (CMC) was carried out in the presence of DCC and DMAP catalyst via ester linkage bond formation without using any cross-linking agents to form the cross-linked polymer CMC/PKHA. Kumar at Abstract. Kumar however provides no information regarding the function of the obtained cross-linked polymer as an MOF binder.
Guidance in the Specification
Specification Guidance with Respect to Metal Organic Framework Selection
With regard to the required MOF, the specification body provide only general guidance. For example, the specification teaches that:
[0039] The MOFs contained in the functional layer of the body of the present disclosure are not limited to a specific type of MOFs. The selection of the MOFs may depend on the intended use of the body of the present disclosure. Non-limiting examples of MOFs can be networks containing metal or transition metal ions aluminum, copper, iron, zirconium, zinc, or beryllium and organic ligands, for example, monovalent, divalent, trivalent, or tetravalent organic ligands. Examples of commercial MOFs can be . . . [numerous examples of commercial MOFs listed]
Specification at page 5, [0039] (emphasis added). The specification lists a number of exemplary MOFs. Specification at page 5, [0039]. But the specification provides no guidance between the MOF properties and an intraparticle/substrate adhesion correlation with the claimed binder. In this regard, it is noted that the not only must a certain adhesion loss factor be obtained, but the binder must also function to adhere the MOF particles with each other and to the substrate such that a functioning coated substrate is obtained (e.g., the binder should only minimally block the MOF pores while providing suitable adhesion).
Specification Guidance with Respect to Binder Choice
With respect to the required “binder”, the specification provides only general guidance. For example, the specification discloses that the “first binder compound” can include a water-soluble polymer and the “second binder compound” can include a water-insoluble polymer. Specification at page 3, [0023]. The specification lists numerous examples of water-soluble and water-insoluble polymers that may be employed. Specification at page 3 et seq.
In this regard, the specification teaches that:
[0029] It has been surprisingly observed that coating composition containing certain combinations of binder compounds (herein called first binder compound and second binder compound), can form functional layers which may include MOFs and can have a high adhesive strength to the substrate.
Specification at page 4, [0029] (emphasis added). The specification discloses only one species of polyacrylate (i.e., polymethacrylate). Specification at page 3, [0026]. It is noted that the working examples discloses that the polyacrylates Rhoplex GL-618 and Maincote 5045 are effective to cross link with carboxymethyl cellulose, but it is unclear what the structure of these acrylates is. See footnotes 3 and 4 above.
The specification discloses that a cross-linking agent may be used, but does not provide any examples of cross-linking agent, reaction conditions etc., and the working Examples are limited to self-cross-linking acrylates, with limited experimental detail. Specification at page 3, [0022].
Specification Guidance with Respect to Substrate Choice
The specification teaches that the substrate may be polymeric. Specification at page 10, [0067]-[0069]. The specification also teaches that that the substate may be a polymeric material, a metal, metal alloy, or aceramic material (or a combination of these), which may be roughened. Specification at pages 10-11, [0070]-[0078]. But the specification provides no guidance between the substrate structure/properties and an adhesion correlation with the claimed binder and MOF. As noted above, not only must a certain adhesion loss factor be obtained, but the binder must also function to adhere the MOF particles with each other and to the substrate such that a functioning coated substrate is obtained.
Specification Guidance with Respect to “adhesion loss factor”
As discussed above in Claim Interpretation, the term “adhesion loss factor” is a term unique to the instant application. The term “adhesion loss factor” is not a term of art. Searches conducted did not reveal a single prior art document (other than the current application) reciting the term “adhesion loss factor” let alone this term in the context of adherence of an MOF composition to a substrate. As such, the only guidance as to the meaning of “adhesion loss factor” is the current specification. The only specification disclosure touching the relationship between the claimed MOFs, binders and substrates and the “adhesion loss factor” is working Example 4, which is limited to particular species of MOF, binder and substate. Specification at pages 25-27 (where the “adhesion loss factor” was determined according to the methods described at paragraphs [00210]-[00214]). In Example 4 the MOF is CAU-10, with a D50 size of 4.98 microns, and a D90 size of 7.7 microns and the substrate is 325 mesh stainless steel (T316L) substrate). Specification at pages 25-27.
Specification Working Examples
Specification Working example 4 (which is the only example directed to the claimed invention) provide some specific guidance, but are limited to a narrow number of particular species of MOF, binder and substate.
In Example 4, mixture of MOF CAU-10 (with a D50 size of 4.98 microns, and a D90 size of 7.7 microns), polymer 1 (in an amount of 3 and 6 wt% of coating composition.) and polymer 2 (in an amount of between 0.2 and 2 wt% of the coating composition) in water are mixed to form the coating suspension.9 Specification at pages 25-27. A coating of each mixture was applied on 325 mesh stainless steel (T316L) substrate stripes via dip coating, using a gravity meter, where the target thickness of the coatings was between 100 μm to 200 μm and dried in an over at 115 °C for five minutes. Specification at page 26, [00211]. Although not stated in the specification, a cross-linking reaction between the polymers (at least with respect to the Rhoplex GL618/CMC and Maincote 5045/CMC polymer combinations) is assumed by the Examiner to occur at some point in the process, either during mixing or drying. See footnotes 3 and 4 above. The adhesion loss factor was determined for each polymer/MOF on the stainless-steel substrate as discussed in Claim Interpretation above. Specification at page 27, [00212]. The results of Example 4 are summarized in specification Table 3.
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200
400
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Greyscale
Specification at page 26, [00208]. As seen from Table 3 above, only entries S5 and S6 fall within the claim 1 limitation of “an adhesion loss factor (ALF) of the functional layer is not greater than 7%”.
In summary, the specification teaches only two species of the claim 1 “functional layer”, both with the same MOF (CAU-10) and CMC (sodium carboxymethylcellulose) and two species of self-cross linking polyacrylates as summarized in the table below.
Table: Only Two Species of the Claimed “functional layer” Are Taught by The Specification Meeting the Claim 1 Adhesion Loss Factor Functional Limitation
Coating composition
Binder
(polymer 1)
Binder (polymer 2)
MOF
MOF particle size
S5
Rhoplex GL618
CMC
CAU-10
D50 4.98µ, and D90 7.7µ
S6
Maincote 5045
CMC
CAU-10
D50 4.98µ, and D90 7.7µ
On the other hand, working Example 4 demonstrates, at least to some degree, (based on the Table 3 entries that do not meet the claim 1 functional recitation) that whether a particular choice of MOF, binder and substrate meet the claim 1 functional recitation of “an adhesion loss factor (ALF) of the functional layer is not greater than 7%” is unpredictable.
The Claims Lack 112(a) Written Description Support
Claims 1-5, 10-13, 19, and 20 fail to comply with the written description requirement because the application as filed does disclose either sufficient species, where a species is the combination of (1), (2) and (3) as set forth above.
While the specification discloses examples of MOFs and binders in an individual capacity, it does not disclose which combinations (other than the Example 4 species of Rhoplex GL618/CMC and Maincote 5045/CMC combinations with substrate of 325 mesh stainless steel; and MOF CAU-10 ) of these will meet the claim 1 functional recitation of “an adhesion loss factor (ALF) of the functional layer is not greater than 7%”. Note that claim practice to meet the adhesion loss factor functional recitation is more complex than simple selection of an MOF and a binder because a single MOF (such as CAU-10 of working Example 4) encompasses the variables of particle size, shape, and as well as MOF amounts versus the binder amount(s) (where, still further, the specification teaches embodiments that may comprise multiple binders, such as the only two disclosed species of working Example 4). For example, the specification intimates that particle size, shape and amounts are factors. Specification at pages 5-6, [0040]; Id. at page 6, [0045]; Id. at page 7, [0048]. Further, the specification intimates a relationship between MOF particle size and thickness of the functional layer. Specification at page 6, [0042]. Sill further, the specification indicates that the MOF may be a composite. Specification at page 7, [0046]. Further still, the prior art does not supplement the instant lack of disclosure regarding the functional relationship between MOF, binder and adhesion loss factor. Based on searches conducted, no prior art discloses or provides guidance on “adhesion loss factor” in the context of the claims.
The art does not supplement the specification disclosure regarding suitable self-crosslinking polyacrylate species. As discussed above, Kumar teaches a cross-linking reaction between poly(potassium 1-hydroxy acrylate) (PKHA) (a polyacrylate) and a water-soluble cellulose derivative (i.e., carboxymethyl cellulose) to provide a cross-linked product. B. Kumar et al., 77 Polymer Bulletin, 4555-4570 (2020) (“Kumar”). Kumar however provides no information regarding the function of the obtained cross-linked polymer as an MOF binder. In sum, there is very little guidance in the specification or art as to what species of polyacrylate and cellulose derivatives provide reaction products suitable to adhere an MOF to substate such that a functioning coated substrate is obtained, let alone where “wherein an adhesion loss factor (ALF) of the functional layer is not greater than 7%”
In summary, the application as filed fails to disclose a sufficient number of species (where each species is the MOF + substrate + a binder) such that one of skill in the art can ‘visualize or recognize’ the genus members of “functional layer” that meet the claim 1 functional recitation of “an adhesion loss factor (ALF) of the functional layer is not greater than 7%” as this recitation is defined in claim 1. MPEP § 2163(II)(A)(3)(a)(i) (citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406).
Further, the application as filed does not disclose a structure-function correlation between the MOF, binder and the “325 mesh stainless steel test stripe” (which test stripe as further recited in claim 1 is the material upon which the adhesion loss factor is determined) such that one of skill can recognize which combinations of MOF and binder can meet the claim 1 functional recitation of “an adhesion loss factor (ALF) of the functional layer is not greater than 7%”. Without such a correlation, the capability to recognize or understand the structure (of the MOF and binder) from the mere recitation of function and minimal structure is highly unlikely. MPEP § 2163(II)(A)(3)(a)(i) (citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406).
As discussed in detail above, Karmakar evidences substantial unpredictably in selection of the appropriate MOF binder (which must promote intraparticle adhesion as well as limit MOF pore clogging) as well choice of the appropriate MOF (which are subject to water hydrolysis) to be used in combination in water absorption applications.
The § 112(a) rejection is bolstered by working Example 4, which as discussed above, demonstrates (based on the Table 3 entries that do not meet the claim 1 functional recitation) that whether a particular choice of MOF + substrate + a binder which includes an organic cross-linked polymer meet the claim 1 functional recitation of “an adhesion loss factor (ALF) of the functional layer is not greater than 7%” is unpredictable.
Applicant’s Argument
Applicant argues that the application fails to disclose a sufficient number of species to cover the full scope of the claimed binder.
This argument is not persuasive for the following reasons. A "representative number of species" means that the species which are adequately described are representative of the entire genus. MPEP § 2163(II)(A)(3)(a)(ii). Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. MPEP § 2163(II)(A)(3)(a)(ii) (citing AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014).
Here there is substantial variation within the genera of self-crosslinking polyacrylates; substrates; and MOFs. But the specification only discloses the Example 4 self-crosslinking polyacrylate species of Rhoplex GL618/CMC and Maincote 5045/CMC in combinations with substrate of 325 mesh stainless steel; and MOF CAU-10) that meet the claim 1 functional recitation of “an adhesion loss factor (ALF) of the functional layer is not greater than 7%”.
In view of the substantial variation within the claimed genera, these species are clearly not representative of the full claim scope; particularly where the structural identity of the self-crosslinking polyacrylates Rhoplex GL618 and Maincote 5045 is not disclosed in the specification and does not appear to be disclosed in the art. See footnotes 3 and 4 above.
Subject Matter Free of the Art of Record
Claims 1-5, 10-13, 19, and 20 are free of the art of record. The closest prior art is discussed below.
M. Sadiq et al., WO 2020/113281 (2020) (“Sadiq”)
Sadiq teaches an adsorption apparatus that includes an adsorption element having a coating, preferably a thin (less than 200 μm) adsorptive composite coating formed from a selected MOF and at least one binder. Sadiq at page 3, [013]. Sadiq teaches that the use of an adsorptive composite coating advantageously enables the MOF to be coated on the surface of a large number of articles and materials which can be selected and appropriately configured for particular adsorption conditions in an adsorption apparatus. Sadiq at page 3, [013].
Sadiq teaches (with reference to Fig. 2) that the adsorptive composite coating 110 is applied to the planar sheet 110 in a coating process where a slurry is formed from a powder mixture of at least 10 wt% metal organic framework (solvent wt% basis); and at least one binder (a single binder or a mixture of different binders) in a solvent, which is then coated into the planar sheet 110 and dried using a heating technique to form the adsorptive composite coated element 100. Sadiq at page 45, [153]. Sadiq teaches that MIL-100 is a suitable MOF for use in the disclosed adsorptive coating. Sadiq at page 66, [223]. Sadiq teaches that an adsorptive composite coating that comprises or consists of at least 50 wt% metal organic framework and at least one binder. Sadiq at page 3, [012]. Sadiq teaches that the MOF:binder ratio within the adsorptive composite coating is preferably 7. 8: 1 to 200: 1. Sadiq at page 6, [024].
With respect to the bind, Sadiq teaches that:
Sadiq teaches that a variety of hydrophobic binders may be used in the adsorptive composite coating. The binder is selected to not block the pores of the MOF. In some embodiments, the binder is selected from at least one of a poly acrylate, a poly vinyl acetal, a polyurethane, rhodopol, poly (hydroxymethyl) siloxane (PMHS), siloxane-cellulose polymers and derivatives (including poly (hydroxymethyl) siloxane, cellulose methyl siloxane or cellulose amino methyl siloxane), methyl cellulose (MC), hydroxy propyl cellulose, hydroxyl methyl cellulose, ethylhydroxy ethylcellulose, carboxymethylcellulose, other cellulosic polymers, starches, other natural product gums, polyolefins, polyacrylates, polymethacrylates, polystyrenics, polyurethanes, polyacetals, polyethylene imine, polyvinylpyrrolidone, polyisobutene, polyimides, polysulfones, polycarbonates, polyvinyls (including poly (ethyl vinyl acetate), polyvinyl butryal and polyvinyl alcohol), polytetrahydrofuran, fluorinated polymers, polysiloxanes and other silicon-containing polymers, or an ionic polymer. The binder can be made of a single polymer or a blend of two or more polymers.
Sadiq at pages 7-8, [029].
Thus, Sadiq teaches that the binder used in the adsorptive composite coating can comprise a single binder or a mixture of two or more binders (binder components) to provide the required mechanical properties to the adsorptive composite coating. See also, Sadiq at page 6, [023].
Sadiq further teaches that metal-organic frameworks (MOFs) comprise the major adsorbent constituent of the adsorptive composite coating. Sadiq at page 13, [045]. Sadiq teaches that examples of metal organic frameworks that may be suitable for use in the present invention include those commonly known in the art. Sadiq at page 21, [060].
Sadiq teaches that the disclosed adsorptive composite coating can be coated on a variety of substrates. Sadiq at page 24, [071]. The substrate configuration is selected to match the adsorbate properties and adsorptive conditions in a particular adsorption apparatus. Sadiq at page 24, [071]. Sadiq teaches that the substrate may comprise a metal, ceramic or polymeric monolith. Sadiq at page 25, [075]. Sadiq teaches that the substrate can be electrically conductive, for example, PTC polymeric materials. Sadiq at page 25, [076]. Sadiq further teaches that in exemplary embodiments, the substrate of each adsorption element comprises a spiral rolled flexible sheet, preferably a tightly spiral rolled flexible sheet. Sadiq at pages 28-29, [086]. In this regard, Sadiq further teaches that the spiral rolled flexible sheet is rolled around a support element, preferably a cylindrical support element which can be a metal, for example aluminum or stainless steel. Sadiq at page 29, [086].
Differences between Sadiq and Claim 1
Sadiq differs from claim 1 in that, while this reference teaches that both of carboxymethyl cellulose and polyacrylate (as well as a blend of these two) are suitable binders for MOFs, Sadiq does not teach that the binder is a reaction product of carboxymethyl cellulose and polyacrylate, and thus does not teach the claim 1 limitation of:
Claim 1 . . . wherein the binder includes an organic cross-linked polymer which is a reaction product of a water-soluble polymer and a water-insoluble polymer, the water-soluble polymer including carboxymethyl cellulose or a salt thereof and the water-insoluble polymer including a self-crosslinking polyacrylate.
Sadiq further does not state one way or the other whether the claim 1 limitation of “wherein an adhesion loss factor (ALF) of the functional layer is not greater than 7%” is met by his disclosed binders/MOF combinations on a substrate.
L. Wengeler et al., US 2019/0185705 (2019) (“Wengeler”).
Wengeler teaches article comprising a substrate; a primer layer comprising a polyalkylenimine; and an active layer comprising a binder and a metal organic framework (MOF). Wengeler at page 2, [0019]. Wengeler teaches method for forming a metal organic framework (MOF) composite material on a substrate comprising coating the substrate with a primer layer comprising polyalkylenimine; and coating the primer layer with an active layer comprising a binder and a metal organic framework (MOF). Wengeler at page 2, [0029].
Wengeler teaches that a method of using a composite material to adsorb moisture comprising providing a device comprising a composite material, the composite material comprising: a primer layer comprising a polyalkylenimine; and an active layer comprising a binder and a metal organic framework (MOF), where the active layer forms a coating on the primer layer and the method further comprises adsorbing moisture from an environment onto composite material. Wengeler at page 3, [0034].
Wengeler teaches that it is important for the composite material to maintain adhesion to the substrate during an application, for example, a heat transfer application including repeated exposure of the article to temperature swing cycles and moisture. Wengeler at page 7, [0074].
Wengeler teaches that a method of using a composite material to adsorb moisture, including, providing a device having a composite material (as described above) and adsorbing moisture from an environment onto the composite material. Wengeler at page 8, [0082].
Wengeler teaches that the binder component of the active layer can be a water-based or solvent-based material, for example, the binder component can include one or more of a polyacrylamide, polyacrylate, polytetrafluoroethylene, polyvinylidene fluoride and a polyalkyleneimine (e.g., polyethylenimine). Wengeler at page 7, [0066].
Wengeler teaches that the active layer can be formed by dispersing a MOF in powder form within the binder. Wengeler at page 7, [0068].
Wengeler teaches that the substrate can include one or more material selected from a metal, polymer (including plastics), paper, glass, ceramics, woven fabric, non-woven fabric, fiber composite material and composite materials of any of the foregoing (e.g., polymer coated metal) and including aluminum, and stainless steel. Wengeler at page 7, [0073]. Wengeler teaches that the substrate can be a heat transfer element, for example, a chiller component, a heat pump component, a heating, ventilating and air conditioning (HVAC) component. Wengeler at page 7, [0073].
In a working example (EX2), Wengeler teaches that the metal organic framework (MOF) aluminum fumarate (Basolite A520; BASF SE) was prepared on a steel plate substrate using polyacrylate as a binder, where the steel plate substrate had been coated with a thin layer of polyethyleneimine (PEI). Wengeler at page 9, [0111]. Wengeler teaches that it was found that adhesion of the MOF coating to the steel substrate with PEI primer is very good with less than 1% removed material in a boiling water test. Wengeler at page 10, [0114].
Differences between Wengeler and Claim 1
Wengeler differs from claim 1 in that, while this reference emphasizes that is important for the composite material to maintain adhesion to the substrate during an application, Wengeler does not teach the claim 1 limitation of
Claim 1 . . . wherein the binder includes an organic cross-linked polymer which is a reaction product of a water-soluble polymer and a water-insoluble polymer, the water-soluble polymer including carboxymethyl cellulose or a salt thereof and the water-insoluble polymer including a self-crosslinking polyacrylate.
Wengeler further does not state one way or the other whether the claim 1 limitation of “wherein an adhesion loss factor (ALF) of the functional layer is not greater than 7%” is met by his disclosed binders/MOF combinations on a substrate.
B. Kumar et al., 77 Polymer Bulletin, 4555-4570 (2020) (“Kumar”)
Kumar teaches that covalent cross-linking of poly(potassium 1-hydroxy acrylate) (PKHA) polymer and carboxymethyl cellulose (CMC) was carried out in the presence of DCC and DMAP catalyst via ester linkage bond formation without using any cross-linking agents to form the cross-linked polymer CMC/PKHA. Kumar at Abstract. Kumar teaches that the covalently cross-linked CMC/PKHA depicts thermal stability up to 231 °C. Kumar at Abstract.
The cross-linking of poly(potassium 1-hydroxy acrylate) (PKHA) polymer and carboxymethyl cellulose (CMC) was conducted as follows:
firstly, CMC (500 mg) was dissolved in the mixture of distilled water and DMSO (1:1 volumetric ratio, 100 mL). The carboxylate group of CMC was activated by the presence of DCC (80 mg) and DMAP (30 mg), and the reaction mixture was magnetically stirred (constant rpm) at room temperature for overnight. After that, the PKHA (500 mg) solution was added dropwise in CMC solution at 60 °C and the reaction was continued for 6 h. Further, the reaction mixture was cooled up to room temperature, and then, it was precipitated by an excess of acetone. The cross-linked polymer was dried in vacuum oven at 60 °C for 24 h.
Kumar at page 4557.
The Claims are not Obvious Over the Cited Art
One of ordinary skill is motivated choose both of carboxymethyl cellulose and polyacrylate from among the polymers listed by Sadiq for use in the MOF coated substrates of either Sadiq or Wengeler. One or ordinary skill is so motivated in view of the gas or water absorption applications taught by Sadiq or Wengeler. However, one of ordinary skill is not motivated (per claim 1) to form a reaction product between the carboxymethyl cellulose and polyacrylate, where the reaction product will function as the MOF binder system. In this regard, neither Sadiq nor Wengeler teach reacting carboxymethyl cellulose and polyacrylate to provide a MOF binder.
It is true that Kumar teaches covalent cross-linking of poly(potassium 1-hydroxy acrylate) (PKHA) polymer and carboxymethyl cellulose (CMC) in the presence of DCC and DMAP catalyst via ester linkage bond formation without using any cross-linking agents to form the cross-linked polymer CMC/PKHA. Kumar at Abstract. Kumar teaches that the covalently cross-linked CMC/PKHA depicts thermal stability up to 231 °C. Kumar at Abstract.
And combining Kumar with either of Sadiq or Wengeler provides each and every limitation of claim 1, where the cross-linked polymer CMC/PKHA serves as the MOF binder system. But neither the above-cited references nor secondary art provides motivation to combine Kumar with either of Sadiq or Wengeler in this manner. That is, the cited art does not teach a reasonable expectation of success that the Kumar cross-linked polymer CMC/PKHA can effectively adhere the MOF particles to a substrate, where the resulting MOF coated substrate would function in the intended gas or water absorption applications. MPEP § 2143.02. For example, there is no guidance in the art as to how to mix the MOF particles with Kumar’s cross-linked polymer CMC/PKHA. As mentioned above, Kumar teaches the cross-linking of poly(potassium 1-hydroxy acrylate) (PKHA) polymer and carboxymethyl cellulose (CMC) was conducted as follows:
firstly, CMC (500 mg) was dissolved in the mixture of distilled water and DMSO (1:1 volumetric ratio, 100 mL). The carboxylate group of CMC was activated by the presence of DCC (80 mg) and DMAP (30 mg), and the reaction mixture was magnetically stirred (constant rpm) at room temperature for overnight. After that, the PKHA (500 mg) solution was added dropwise in CMC solution at 60 °C and the reaction was continued for 6 h. Further, the reaction mixture was cooled up to room temperature, and then, it was precipitated by an excess of acetone. The cross-linked polymer was dried in vacuum oven at 60 °C for 24 h.
Kumar at page 4557. It could be postulated that one of ordinary skill could simply mix the MOF particles in the Kumar product polymer solution (before precipitation with acetone), dip a substrate in the MOF/polymer solution , and allow the dipped substate to dry thereby coating the MOF on the MOF substrate. However, it is unclear (a reasonable expectation of success is absent) whether Kumar’s cross-linked polymer CMC/PKHA would effectively adhere the MOF to the substrate in a similar manner taught by Sadiq for the unreacted carboxymethyl cellulose and polyacrylate. See e.g., A. Karmakar et al., 269 Applied Energy, 1-22 (2020) (see page 13, col. 2 “3.1.6. Choice of binders”, indicating unpredictability in whether binders will adhere an MOF to a substrate).
Potentially Allowable Subject Matter
Subject to an updated search and examination, the following claim amendments (where claim 1 amendments are indicated by underlined text) are proposed by the Examiner to overcome the outstanding § 112(a) enablement and written description rejections:
1. (proposed) A body comprising:
a substrate; and
a functional layer overlying at least a portion of a surface of the substrate,
wherein the functional layer comprises a metal organic framework and a binder, and
wherein an adhesion loss factor (ALF) of the functional layer is not greater than 7%, wherein determining the adhesion loss factor of the functional layer comprises: applying the functional layer as a coating on a 325 mesh stainless steel test stripe via dip coating, drying the coating to form a functional layer coating, clamping the test stripe vertically between 10 kN grips, and subjecting the coated test stripe to a pull rate of 5 mm/minute at a temperature of 25 °C until failure, which failure is indicated by a drop of a load of 80% or greater from a maximum load, the adhesion loss factor (ALF) expressing a percent weight loss of the functional layer coating, with ALF
wherein the binder comprises a reaction product of carboxymethyl cellulose or a salt thereof and polymethacrylate, [Rhoplex GL-618, or Maincote 5045]*
*Rhoplex GL-618, or Maincote 5045 are enabled/supported provided that Applicant can demonstrate that their meaning is well-known to one skilled in the relevant art and is satisfactorily defined in the literature as of the effective filing date, and preferably claim 1 employs an appropriate non-tradename claim term. MPEP § 608.01(v)(I); see also footnotes 5 and 6.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 The highlighted transitional terms “incudes” and "including", which is synonymous with "comprising" is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. MPEP § 2111.03(I).
2 Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. MPEP § 2113(I). The patentability of a product does not depend on its method of production. MPEP § 2113(I). If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP § 2113(I) (citing In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)).
3 The specification teaches that Rhoplex GL-618 is a water-insoluble polymer self-crosslinking acrylic material. Specification at page 25, [00204]. While specification working Example 4 does not so state, it is assumed that the Rhoplex GL-618 and carboxymethylcellulose crosslink under the conditions of working Example 4, and thus this binder system meets the claim 1 limitation of “wherein the binder includes an organic cross-linked polymer which is a reaction product of a water-soluble polymer and a water-insoluble polymer”. See Technical Data Sheet, RHOPLEX™ GL-618 (2010) (“RHOPLEX™ GL-618 is an all-acrylic polymer emulsion specifically designed for bonding wet laid glass and/or polyester fiber mats that can be used in roofing products such as built-up roofing (BUR),asphalt shingles and facer mats”). This reference does not disclose the structure of RHOPLEX™ GL-618. Searches conducted did not identify references that disclosed the structure of RHOPLEX™ GL-618.
4 The specification teaches that Maincote 5045 is a styrene acrylic self-crosslinking water-insoluble polymer. Specification at page 25, [00204]. While specification working Example 4 does not so state, it is assumed that the Maincote 5045 and carboxymethylcellulose crosslink under the conditions of working Example 4, and thus this binder system meets the claim 1 limitation of “wherein the binder includes an organic cross-linked polymer which is a reaction product of a water-soluble polymer and a water-insoluble polymer”. See, Safety Data Sheet, MAINCOTE™ 5045C Emulsion (2024). This reference does not disclose the structure of MAINCOTE™ 5045C. Searches conducted did not identify references that disclosed the structure of MAINCOTE™ 5045C.
5 See footnote 1.
6 As discussed in the previous Office action, the term derivative is used in the art of organic chemistry as generally to referring to a compound that that maintains the active core structure of the parent compound. See e.g., M. Smith et al., 5 Molecular BioSystems, 962-972 (2009); S. Mirozoeva et al. J. Med. Chem. 45, 563-566 (2002); A. Ondrus et al., Chem Commun., 4151-4165 (2009).
7 Applicant also cites working Example 4 as the supporting specification portion, stating in the Reply that support for the amendments can be found, for example, at Example 4, paragraphs [00204] and [00205] of the originally filed specification.
8 While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, a question as to whether a specification provides an adequate written description may arise in the context of an original claim. MPEP § 2163.03 (V) (citing In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976)). An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. MPEP § 2163.03 (V) (citing Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) ("[e]ven if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed”).
9 It is not clear what the structures of Rhoplex GL618/CMC or Maincote 5045/CMC are. See footnotes 5 and 6. The specification teaches that SILRES* MP 50E is a silicon binder with phenyl groups. Specification at page 25, [00204]. “PEI” appears to mean Lupasol PS, a water-soluble polyethyleneimine. Specification at page 25, [00205]. The specification teaches that CMC is CMC12M8P from Ashland, a water-soluble sodium carboxymethyl cellulose. Specification at page 25, [00205].