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, 2, 4-7, 11-15, 17, 20, and 23-29 of H. Ahmed et al., US 17/501,742 (Oct. 14, 2021) are pending. Claims 23-29 drawn to non-elected Group (II) are withdrawn from consideration pursuant to 37 CFR 1.142(b) as not directed to the elected invention. Claims 1, 2, 4-7, 11-15, 17, and 20 are under examination on the merits and are rejected.
Election/Restrictions
Pursuant to the restriction requirement, Applicant elected Group I, (now pending claims 1, 2, 4-7, 11-15, 17, and 20), drawn to a method of preparing a metal organic framework (MOF) with an acoustically-driven microfluidic platform, without traverse, in the reply filed on July 31, 2024. Claims 23-29 drawn to non-elected Group (II) are withdrawn from consideration pursuant to 37 CFR 1.142(b). The restriction requirement is maintained as FINAL
Pursuant to the election of species requirement, Applicant elected, without traverse, Applicant elected HKUST-1 (copper(Il)-benzene-1,3,5-tricarboxylate) as single disclosed species metal organic framework, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Claims 1, 2, 4-9, 11-15, 17, 20 read on the elected species. The elected species HKUST-1was searched in the context of the claimed method and determined to be anticipated under § 102 by C. Xu et al., 20 CrystEngComm, 7275-7280 (2018) (“Xu”). The search was not further extended to other MOFs. The provisional election of species requirement is given effect and no claims are withdrawn as not reading on the elected species. MPEP § 803.02(III)(A).
Effective Filing Date
The priority document AU 2019901294 (Apr. 15, 2018) has been reviewed and supports the examined claims 1, 2, 4-9, 11-15, 17, 20. As such, examined claims 1, 2, 4-9, 11-15, 17, 20 are entitled to an effective filing date of April 15, 2018.
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. A particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. MPEP § 2111.01(II) (citing Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004).
Here, claim interpretation incorporates that of the previous Office action, updated where applicable in view of Applicant’s amendments and argument.
Identification of Key Claim 1 Terms
Examination of claim 1 requires an understanding/interpretation the key terms that are bold-italic below:
Claim 1. A method of preparing a Metal Organic Framework (MOF) with an acoustically-driven microfluidic platform, the method comprising:
providing an acoustic microfluidic platform comprising
a piezoelectric substrate having a working surface configured to accommodate a liquid and
at least one interdigitated transducer (IDT),
the working surface having a central axis, and
the at least one IDT being configured to transmit acoustic irradiation along a direction that is parallel and off-axis relative to the central axis,
depositing a liquid comprising MOF precursors the working surface, the MOF precursors comprising a metal ion and an organic ligand,
applying an electric potential to the at least one IDT, resulting in the transmission of the acoustic irradiation as asymmetrical waves along the direction that is parallel and off-axis relative to the central axis of the working surface, thereby inducing azimuthal recirculation of the liquid, which causes formation of the MOF within the liquid, and
isolating the MOF.
A key concept highlighted in the specification is propagation of acoustic waves asymmetrically across the piezoelectric substrate’s surface relative to the liquid.
The acoustic microfluidic platform comprises at least one off-centre IDT [interdigital transducers] to induce, when the device is in use, recirculatory flow in the liquid.
In some embodiments, the device comprises two or more opposing IDTs, wherein the IDTs are off-centre relative to the working surface. In those instances, the two or more opposing IDTs are off off-centre relative to the liquid, when the device is in use.
The off-centre IDT(s) advantageously generate asymmetric acoustic waves, including asymmetric surface, bulk or hybrid acoustic wave irradiation relative to the working surface, such that recirculatory flow can be generated in a liquid comprising MOF precursors located in the working surface.
Specification at page 4, lines 21-29 (emphasis added).
In other words, the device described herein comprises at least one IDT, which is positioned off-centre relative to a working surface designed to accommodate a liquid comprising MOF precursors, to generate, when in use, off-centre acoustic waves such that only a portion of the liquid comprising MOF precursors is exposed to the irradiation.
In some embodiments, the device includes at least two opposing IDTs off-centre relative to a centre axis which is aligned with a working surface designed to accommodate a liquid comprising MOF precursors. An example of such embodiments is shown in Figure l(a).
Specification at page 8, line 30 – page 9, line 6 (emphasis added).
Interpretation of “off-axis” and “central axis”
Claim 1 recites “off-axis” and “central axis” in the following context:
Claim 1 . . . the at least one IDT being configured to transmit acoustic irradiation along a direction that is parallel and off-axis relative to the central axis . . .
Where “applying an electric potential to the at least one IDT, resulting in the transmission of the acoustic irradiation as asymmetrical waves along the direction that is parallel and off-axis relative to the central axis”.
The specification does not define “off-axis” or even mention this term. The specification, while reciting “central axis” (i.e., as “centre axis”) several time, does not specifically define this term with respect to a reference axis. For example, the specification teaches that:
As used herein, the term "off-centre" and variations thereof refers to displacement along a centre point or axis. In particular, the term "off-centre" when used in respect ofIDTs, refers to where one or more IDTs is displaced from a centre axis, especially a centre axis which is aligned with a working surface designed to accommodate a liquid comprising MOF precursors.
Specification at page 8, lines 25-30.
The claim 1 term “central axis” is interpreted based on its plain meaning as an axis that runs directly through (as either a x-axis or y-axis), in a parallel fashion, the center of the “working substrate” (whatever its dimensions), where the dimensions of the “working substrate” are undefined.
The claim 1 term “off-axis relative to the central axis” is interpreted based on its plain meaning as not along the “central axis”. Thus, per the following claim 1 limitation:
Claim 1 . . . the at least one IDT being configured to transmit acoustic irradiation along a direction that is parallel and off-axis relative to the central axis . . .
the at least one IDT is positioned such that its propagated asymmetric waves do not propagate along the central axis. This interpretation is consistent with Applicant’s argument in the Reply. See Reply at page 10.
Interpretation of “piezoelectric substrate”
Claim 1 requires involvement of a “a piezoelectric substrate having a working surface” as a limitation. With respect to the claim 1 term “piezoelectric substrate”, the specification teaches:
The piezoelectric substrate for use in the invention may be made of any piezoelectric material that is capable of generating acoustic waves in response to an applied electrical input.
Specification at page 11, lines 10-11 (emphasis added). The specification provides specific examples of piezoelectric substrates, such as LiNbO3. Specification at page 11, lines 10-19. The specification, however, does not explicitly define the term “piezoelectric substrate”. The art, teaches that working principle of piezoelectric materials is that a potential difference (an electric dipole moment) is created in piezoelectric materials when a compressive or tensile force is applied, which is called a positive piezoelectric effect. H. Wei et al., 6 Journal of Materials Chemistry C, 12446-12467 (2018) (“Wei”), (see page 12446); M. de Jong et al., Scientific Data, 1-7 (2015) (see page 1); J. Tichy et al., Piezoelectric Materials, Chapter 7 in, Fundamentals of Piezoelectric Sensors, 119-185 (2010). Conversely, if an electric field is applied to the piezoelectric material, a mechanical stress is produced, which is called an inverse piezoelectric effect. Wei at page 12446.
In view of the foregoing, the claim 1 term “piezoelectric substrate” is broadly and reasonably interpreted, consistently with the specification as any material in which a potential difference (an electric dipole moment) is created when a compressive or tensile force is applied.
Applicant’s Argument Respecting Interpretation of “piezoelectric substrate”
With respect to the above interpretation of “piezoelectric substrate”, which is the same as the previous Office action, Applicant argues that while the claims are interpreted in light of the specification, ‘it is important not to import into a claim limitations that are not part of the claim’. Reply at page 9 (citing MPEP § 2111). The Reply states that “Applicant declines to adopt any interpretation or characterization of the claims in the Office Action that is inconsistent with a broadest reasonable interpretation in light of the specification and figures, according to statute, regulation, and applicable case law”. Reply at page 9.
In response, the Reply’s wording is chosen such that Applicant has not directly argued that the above interpretation of “piezoelectric substrate” is incorrect. In the absence of direct argument and lack of a specification definition, the above interpretation of “piezoelectric substrate” (based on its art-known meaning) stands.
Interpretation of the Claim 1 “asymmetrical waves”
Claim 1 as amended recites:
Claim 1 . . . applying an electric potential to the at least one IDT, resulting in the transmission of the acoustic irradiation as asymmetrical waves along the direction that is parallel and off-axis relative to the central axis of the working surface, thereby inducing azimuthal recirculation of the liquid, which causes formation of the MOF within the liquid . . .
The term “acoustic irradiation” under its plain meaning is the propagation of sound waves. Specification at page 5, lines 5-10.
One meaning of claim 1 term “asymmetrical waves” is understood with reference to specification working Example 1. Specification working Example 1 teaches an acoustomicrofluidic device as shown in Figure 1(a) consists of a piezoelectric substrate which an off-centered pair of 300 nm thick straight aluminum interdigitated transducers (IDTs) are patterned. Specification at page 21, lines 10-16. Specification working Example 1 teaches:
A 10 μl drop of this solution [i.e., MOF precursor solution] was then carefully pipetted onto the middle of the device such that one- half of the drop was subjected to the SAW irradiation in one direction from one IDT and the other half was subjected to the SAW irradiation from the opposite direction from the other IDT. Due to this asymmetry, an azimuthal microcentrifugation flow is generated within the drop (Figure l(a)).
Specification at page 22, lines 10-15. Thus, in the context of specification working Example 1, “asymmetrical waves” are generated by a pair opposing off-center IDTs such that one half of the MOF precursor solution drop is subjected to SAW irradiation from one off-center IDT and the other drop half is subject to SAW irradiation from the opposing off-center IDT. Due to this asymmetry (i.e. the asymmetry of the opposing off-center IDTs), specification Example 1 teaches that an azimuthal microcentrifugation flow is generated within the MOF precursor solution drop. However, claim 1 does not require two IDTs, rather claim 1 requires only a single IDT.
A second meaning (i.e., the plain meaning) of the claim 1 term “asymmetrical waves” is simply that the waves are by definition asymmetrical by virtue of (per claim 1) “transmission of the acoustic irradiation . . . along the direction that is parallel and off-axis relative to the central axis of the working surface”.
It is noted that the specification does not specifically define the claim 1 term “azimuthal liquid recirculation of the liquid”; rather the specification points to the directional arrows in Fig. 1C, which indicate a “microcentrifugation flow”. Specification at page 19, lines 21-28. In claim 1’s context, “azimuthal liquid circulation” is broadly and reasonably interpreted consistently with both the specification and the art as where upon practice of claim 1 by depositing a liquid comprising MOF precursors (e.g., a sessile drop) upon the piezoelectric substrate and applying acoustic irradiation, an inward radial force is generated, irrespective of any axis or other point of reference. The specification teaches that (at least with respect to a pair of IDTs positioned off-center with respect to the MOF precursor solution drop, per Example 1) this causes a flow, which forms a concentrated solute region. Specification at page 19, lines 13-20 (reproduced below):
Figure 1(c) details the acoustically driven assembly of MOF in accordance with an embodiment of the methods disclosed herein, wherein under Rayleigh SAW excitation (8), microcentrifugation flow (9) is induced which drives fast turbulent convective transport of the solute molecules to the contact line, whose oscillation smears out the ring of crystals (10), leading to homogeneous deposition of successive stacks of solute monolayers within this highly concentrated region. Aided by the evanescent electric field from the SAW, this results in vertical-oriented stacking of the monolayers, culminating in a large, highly-ordered superlattice MOF structure (11).
Specification at page 19, lines 13-20 (emphasis added).
For a discussion of “azimuthal liquid circulation”, see H. Li et al., 9 Biomed Microdevices, 647-648 (2007) (see particularly, page 647, col. 1); H. Alghane et al., 109 Journal of Applied Physics, 1-8 (2011); R. Raghavan et al., 8 Microfluid Nanofluid, 73-84 (2010) (see page 75, Fig. 2).1
Applicant’s Argument
The Reply Takes issue with the previous Office action’s (and above) use of the term "inward radial force":
As an initial matter, the Office Action includes characterizations of the claims with which Applicant does not necessarily agree. For example, the Office Action refers to generation of an "inward radial force" in the context of azimuthal recirculation and microcentrifugation. Office Action at pages 7, 14. Applicant's specification does not refer to an "inward radial force".
. . .
It is unclear what the Office Action's description of an "inward radial force" means.
Reply at page 8.
In response, the specification does not specifically define “azimuthal liquid recirculation of the liquid”, thus the previous and above interpretations look to how the claim term is used in the prior art. MPEP 2111.01(III).
Reference H. Li et al., 9 Biomed Microdevices, 647-648 (2007) (“Li”) (as cited in the previous Office action) specifically states that:
A rapid particle concentration method in a sessile droplet has been developed using asymmetric surface acoustic wave (SAW) propagation on a substrate upon which the droplet is placed. Due to the asymmetry in the SAW propagation, azimuthal bulk liquid recirculation (acoustic streaming) is generated. Once the local particle concentration is sufficiently high within a particular streamline of the acoustic streaming convective flow, shear-induced migration gives rise to an inward radial force that concentrates the particles at the centre of the droplet.
Li at page 647, col. 1 (emphasis added); see also Li at page 655, col. 2. Further, the specification points to the directional arrows in Fig. 1C, which indicate an inward radial force. Specification at page 19, lines 21-28. In sum, the term "inward radial force" is appropriate in the context of this claim interpretation in view of its use in the art with respect “azimuthal liquid recirculation” and its apparent use in the specification.
Examiner Summary of the Claim 1 Operating Principle
Here, Applicant’s claims are directed to use surface acoustic waves running alone a piezoelectric substrate through a droplet comprising MOF precursors (i.e., a metal ion and an organic ligand) to concentrate the MOF precursors to a certain volume within the droplet (i.e., by the resulting “azimuthal liquid recirculation”), thereby result in an MOF with a highly-ordered superlattice. Specification at paragraph bridging pages 9-10. 2
The working principle of claim 1 is summarized in the specification as follows:
The application of acoustic irradiation to the liquid comprising MOF precursors "to induce azimuthal liquid recirculation" inherently requires that the piezoelectric substrate is operated to generate and propagate acoustic waves asymmetrically across the substrate relative to the liquid. By "acoustic wave" is meant herein a mechanical vibration front that propagates elastically from one point of a medium to other points of the medium without giving the medium as a whole any permanent displacement. The transmission of these asymmetrical waves into the liquid comprising MOF precursors placed on the piezoelectric substrate results in an internal micro-centrifugal flow within the liquid, which in turn facilitates volumetric mixing of the precursors facilitating MOF formation.
This is a significant departure from the conventional use of acoustically-driven microfluidic devices, in which the surface acoustic waves are induced to propagate symmetrically across the piezoelectric substrate. In those conventional systems, a liquid comprising MOF precursors deposited on the substrate would merely vibrate statically.
Specification at page 3, lines 15-27 (emphasis added).
As well known in the art, metal organic frameworks (MOFs) are a class of material formed from extended chains, sheets networks of metal ions interconnected by ligands; highly ordered three-dimensional framework structures comprising inorganic nodes interconnected by organic ligands. Specification at page 1, lines 19-23. The art teaches that MOFs have conventionally been synthesized through a variety of techniques, including hydrothermal, solvothermal, microwave, sonochemical, and electrochemical synthesis. N. Stock, et al., Synthesis of metal-organic frameworks (MOFs): Routes to various MOF topologies, morphologies, and composites, 112 Chemical Reviews, 933–969 (2012).
To assist in understanding the operating principle of claim 1 with respect to the “piezoelectric substrate”, reference D. Fall is cited here. Fall teaches that:
A SAW-IDT consists of two overlapping metal comb-shaped electrodes with interdigitated fingers and coverage length Wa (Fig. 1(a)), where a is finger width and b is spacing between two consecutive fingers. The electrodes are deposited on a piezoelectric substrate. Consequently, when a voltage U is applied between the two electrodes there is an accumulation of charges of which the signs alternate from one finger to the other thus creating an electric field between each pair of fingers. The combination of the piezoelectric effect of the substrate and the electric field generates expansions and compressions in the material thus creating movement. It is this movement that gives rise to surface waves perpendicular to the electrode fingers
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D. Fall et al., 273 Sensors and Actuators A, 303-310 (2018) (see, page 304, col. 2, reference Fig. 1) (emphasis added); see also, R. Raghavan e al., 8 Microfluid Nanofluid, 73-84 (2010) (see page 75, Fig. 2). In view of the foregoing, with respect to the operating principle of claim 1, the Examiner thus finds that in claim 1, an interdigital Transducer (IDT) (a pattern of interdigitated metal electrodes) is fabricated on the piezoelectric substrate. When an alternating voltage is applied to the IDT, the piezoelectric material deforms (due to the inverse piezoelectric effect discussed above), creating a surface acoustic wave (SAW) that propagates along the piezoelectric substrate's surface. Thus, Applicant claims the concept of applying acoustic irradiation across a piezoelectric substrate upon which a liquid comprising the MOF precursors is deposited, which facilitates concentration and volumetric mixing of the precursors (i.e., metal ion and organic ligand [Symbol font/0xAE] MOF) facilitating MOF formation (specification at page 3, lines 22-23). In this regard, the specification teaches that
By way of example, in one embodiment, Rayleigh SAW excitation may induce azimuthal flow driving turbulent convective transport of solute molecules in a liquid comprising MOF precursors located on the working surface of the piezoelectric substrate. This in tum leads to homogeneous deposition of successive stacks of solute monolayers within this highly concentrated region to form MOFs. Aided by the evanescent electric field from the SAW, this results in vertical-oriented stacking of the monolayers of the MOF, culminating in a 5 large, highly-ordered superlattice structure. Advantageously, the described method and device provide MOFs having a high degree of orientation, that is, they comprise highly-ordered superlattices.
Specification at paragraph bridging pages 9-10 (emphasis added).
In view of the above discussion and that of Claim Interpretation, claim 1 is schematically summarized by the Examiner below.
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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).
A claim may be rendered indefinite when a limitation of the claim is defined by reference to an object and the relationship between the limitation and the object is not sufficiently defined. MPEP § 2173.05(a)(II). That is, where the elements of a claim have two or more plausible constructions such that the examiner cannot readily ascertain positional relationship of the elements, the claim may be rendered indefinite. MPEP § 2173.05(a)(II).
Unclear Device Structure and Claim Term “asymmetrical waves”
Claims 1, 2, 4-7, 11-15, 17, and 20 are rejected under 35 U.S.C. 112(b) as indefinite because the relative structure of the claim 1 “acoustic microfluidic platform” is unclear in view of the fact that transmission of “asymmetrical waves” is required. Claim 1 requires the following steps of “depositing a liquid comprising MOF precursors on the working surface” and “applying an electric potential to the at least one IDT”.
Claim 1 . . . depositing a liquid comprising MOF precursors on the working surface, the MOF precursors comprising a metal ion and an organic ligand,
applying an electric potential to the at least one IDT,
resulting in the transmission of the acoustic irradiation as asymmetrical waves along the direction that is parallel and off-axis relative to the central axis of the working surface,
thereby inducing azimuthal recirculation of the liquid, which causes formation of the MOF within the liquid . . .
However, claim 1 does not specify where the “liquid comprising MOF precursors” is placed “on the working surface”. Under the broadest reasonable interpretation of claim 1, the liquid can be placed anywhere on the working surface as long as azimuthal recirculation is induced in the liquid. The issue is that claim 1 requires “transmission of the acoustic irradiation as asymmetrical waves”. As discussed in Claim Interpretation above, “asymmetrical waves” is subject to conflicting interpretations.
One interpretation is as follows. In the context of specification working Example 1, “asymmetrical waves” are generated by a pair opposing off-center IDTs such that one half of the MOF precursor solution drop is subjected to SAW irradiation from one off-center IDT and the other drop half is subject to SAW irradiation from the opposing off-center IDT. Due to this asymmetry (i.e. the asymmetry of the opposing off-center IDTs), specification Example 1 teaches that an azimuthal microcentrifugation flow is generated within the MOF precursor solution drop. Thus, under one reasonable interpretation, transmission of “asymmetrical waves” requires a pair of opposing off-center IDTs that expose different portions of the “liquid comprising MOF precursors”. And while the claims are interpreted in light of the specification, "it is important not to import into a claim limitations that are not part of the claim”. MPEP § 2111. However: (first) claim 1 does not require two opposing IDTs, rather claim 1 requires only a single IDT; and (second) claim 1 does not specify where the “liquid comprising MOF precursors” is placed “on the working surface”. With only one IDT required by claim 1 and no specific working surface location required the MOF liquid, it is not clear one of skill in the art how “asymmetrical waves” are transmitted consistent with working Example 1.
A second meaning (i.e., the plain meaning) of the claim 1 term “asymmetrical waves” is simply that the waves are by definition asymmetrical by virtue of (per claim 1) “transmission of the acoustic irradiation . . . along the direction that is parallel and off-axis relative to the central axis of the working surface”.
Here, claim 1 is indefinite because the elements of a claim (i.e., “asymmetrical waves”) have two or more plausible constructions such that the examiner cannot readily ascertain positional relationship of the elements. MPEP § 2173.05(a)(II).
Dependent claims 2, 4-7, 11-15, 17, and 20 do not cure the issue.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under AIA 35 U.S.C. 103(a) 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.
Claims 1, 2, 4-7, 11-13, 15, 17, and 20 and the elected species of HKUST-1 are rejected under AIA 35 U.S.C. 103 over Xu et al., 20 CrystEngComm, 7275-7280 (2018) (“Xu”).
Claim 14 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Xu et al., 20 CrystEngComm, 7275-7280 (2018) (“Xu”) as above, in view of G. Majano et al., 95 Helvetica Chimica Acta, 2278-2286 (2012).
C. Xu et al., 20 CrystEngComm, 7275-7280 (2018) (“Xu”)
Xu teaches a facile, rapid, and environmentally friendly technology that uses surface acoustic waves (SAWs) as an energy source to induce the synthesis of HKUST-1 crystals in a droplet. Xu at Abstract. Xu teaches that the device that produces SAWs consists of a piezoelectric substrate, interdigital transducers (IDTs) and electrodes patterned at each end, referencing Xu Fig. 1a. Xu at page 7276, col. 1 (Experimental). The is lithium niobate (LN) single crystal (1 mm thick). Id. Xu teaches that applying a sinusoidal oscillating electrical signal output to IDTs generates the SAWs. Id. at col. 2.
Xu Experimental HKUST-1 Preparation Using SAWs on a Piezoelectric Substrate
Xu teaches preparation HKUST-1 precursor solutions by mixing copper(II) nitrate trihydrate and benzene-1,3,5-tricarboxylic acid in a solution of N,N-dimethylformamide, ethanol and deionized water (1:1:1, v/v). Xu at page 7277, col. 1.
Xu teaches the following surface acoustic wave (SAW) generating device for MOF synthesis:
The device that produces SAWs consists of a piezoelectric substrate, interdigital transducers (IDTs) and electrodes patterned at each end (Fig. 1a). In this study, the piezoelectric substrate is a Y-cut 128° X-propagating lithium niobate (LN) single crystal (1 mm thick).
Two metallic layers (20 nm-thick Cr, 80 nm-thick Au) are fabricated on the LN substrate as IDTs (generally 20 pairs) and electrodes using standard photolithography. Applying a sinusoidal oscillating electrical signal output to IDTs can generate SAWs.
The signal is generated from an AC signal generator (Tektronix AFG3251C, USA) connected to a power amplifier (NF BA4850, Japan). All four electrodes (2 electrodes on each IDT) are connected to the RF output of the amplifier. The input power of SAWs is measured using a digital oscilloscope (Tektronix TDS3014B, USA) connected to the electrodes (as shown in Fig. 1b).
Xu at page 7276, cols. 1-2.
Xu teaches HKUST-1 synthesis by placing a droplet of a MOF precursor solution on the substrate of the above device and propagating SAWs therethrough, as follows:
Copper(III) nitrate trihydrate and benzene-1,3,5-tricarboxylic acid were added to a mixed solution of N,N-dimethylformamide, ethanol and deionized water (1 : 1 : 1, v/v).
One of the triplicates was processed by SAWs with different input powers (i.e., 5–20 V output power);
one was the control without SAWs under the same conditions (i.e., 0 V output power) and
the last was used for solvothermal synthesis.
The SAW device was placed on a hot plate and connected to the signal generator, power amplifier and oscilloscope in sequence. At this moment, a thermal infrared imaging camera began to record the temperature change of the SAW device. As shown in Fig. S1,† the temperature curve was recorded.
When the SAW device was heated to 75 °C, a 40 μL droplet of the reaction solution was quickly pipetted onto the LN substrate between IDTs (as shown in Fig. 1a).
Concurrently, the input power was supplied, and SAWs propagated along the surface of the substrate towards each other underneath the droplet, generating a standing wave. Finally, the waves changed their mode to leaky waves when they arrived at the boundary between the substrate and the droplet.
Meanwhile, the droplet was observed to vibrate vigorously. After the desired reaction time of typically 2–4 minutes, a blue powder was obtained.
The solvothermal synthesis of HKUST was conducted at 75 °C in an oven.
Xu at page 7277, col. 1. Xu teaches that by increasing the input power of SAWs (i.e., 5V, 10V, 15V, to 20V), evolution of HKUST-1 morphologies was observed: irregular, truncated octahedral, truncated cube, and cube and the average particle size was found to decrease simultaneously. Xu at page 7277, col. 2.
Note that In Xu, the liquid comprising the MOF precursors is positioned “such that only a portion of the liquid comprising MOF precursors is exposed to the irradiation” relative to the liquid drop. This is evidenced by either of H. Li et al., 9 Biomed Microdevices, 647-648 (2007) (“Li”) or H. Alghane et al., 109 Journal of Applied Physics, 1-8 (2011) (“Alghane”). Each of these references discloses a “acoustic microfluidic platform” comprising a droplet deposited on a piezoelectric substrate, in which an IDT is positioned off-center with respect to the drop (i.e., positioned on the bottom plane of the drop), where the IDT propagates acoustic radiation (SAWs) horizontally across the working surface in the same manner as claim 1 (but without MOF precursors in the liquid). See Li at page 649, Fig. 1(b); Alghane at page 2, Fig. 1. In each of these Figs. (particularly Li, Fig. 1(b), the acoustic radiation is shown to travel horizontally across the piezoelectric substrate plane, not engaging the full liquid drop, but only the bottom portion/plane of the liquid drop. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
Differences Between Xu and Claim 1
Xu differs from claim 1 only to the extent that Xu’s IDTs and MOF precursor liquid appear to be positioned in the center of the lithium niobate (LN) single crystal piezoelectric substrate (the working surface). Thus, simply shifting IDTs and MOF precursor liquid to a non-central point would meet the limitations of claim 1. As discussed in detail in Claim Interpretation above, the claim 1 term “off-axis relative to the central axis” is interpreted based on its plain meaning as not along the “central axis”, where the “central axis” is interpreted as an axis that runs directly through (as either a x-axis or y-axis), in a parallel fashion, the center of the “working substrate” (whatever its dimensions).
Thus, per the following claim 1 limitation:
Claim 1 . . . the at least one IDT being configured to transmit acoustic irradiation along a direction that is parallel and off-axis relative to the central axis . . .
the at least one IDT is positioned such that its propagated asymmetric waves do not propagate along the central axis. Here, however, the Xu IDT appears to be configured to transmit acoustic irradiation directly along the central axis.
In other words, Xu differs from claim 1 only to the extent that the liquid comprising MOF precursors appears (per Xu Fig.1) to be placed in the center of the working surface (where Xu’s “working surface” is the lithium niobate (LN) single crystal). Thus, Xu does not appear to meet the claim 1 limitation of “and off-axis relative to the central axis of the working surface”, as indicate by strikeout text below.
Claim 1. A method of preparing a Metal Organic Framework (MOF) with an acoustically-driven microfluidic platform, the method comprising:
providing an acoustic microfluidic platform comprising
a piezoelectric substrate having a working surface configured to accommodate a liquid and
at least one interdigitated transducer (IDT),
the working surface having a central axis, and
the at least one IDT being configured to transmit acoustic irradiation along a direction that is parallel
depositing a liquid comprising MOF precursors on the working surface, the MOF precursors comprising a metal ion and an organic ligand,
applying an electric potential to the at least one IDT, resulting in the transmission of the acoustic irradiation as asymmetrical waves along the direction that is parallel
Obvious Rationale Claims 1, 2, 4-7, 11-13, 15, 17, and 20
Claim 1 is obvious because one of ordinary skill is motivated to simply shift the IDTs and MOF precursor liquid to a non-central point of the Xu’s working surface (where Xu’s “working surface” is the lithium niobate (LN) single crystal piezoelectric substrate) as a matter of design choice so as to meet every limitation of claim 1. See MPEP § 2144.04 (IV)(B) (citing In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), where the court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant). For example, one of ordinary skill may simply choose to pattern the IDTs in a non-central location on the piezoelectric substrate; for instance, for convenience in the case of an irregularly shaped piezoelectric substrate.
Claim 2 recites “wherein the MOF is at least a partially activated MOF”. The specification teaches that the term “activated” with respect to the claimed MOF means a lack of solvent/guest molecules within framework of the MOFs as prepared by the claimed method (for example lack of solvent within the MOF pores). Specification a page 2, lines 19-30. Here, Xu does not specifically comment on activation of the as formed HKUST-1. However, Xu teaches the same method claimed thus this limitation would be inherently met. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). Further the claim 2 term “partial activation” is broadly and reasonably interpreted to mean that only one cluster/unit of the extended MOF structure need have solvent excluded. Thus, this claim 2 limitation would necessarily be met based on statistical probability.
The limitations of claim 4, reciting “wherein the MOP comprises crystals which are substantially aligned along the same crystallographic plane” are met for the same reasons as claim 2. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
The limitations of claims 5 and 6 are clearly met by Xu, where Xu employs surface acoustic waves (SAWs), which are Rayleigh waves. Specification at page 5, line 7.
The limitations of claim 7 are clearly met because the Xu SAWs are traveling acoustic waves.
The limitations of claims 11 and 12 are met because Xu teaches a lithium niobate (LN) single crystal. Xu at page 7276, col. 1.
The limitations of claim 13 are met because Xu teaches an input voltages of 5V, 10V, 15V, and 20V, which are less than 40 Vrms as claimed. Xu at page 7277, col. 1.
The limitations of claims 15 and 20 are met because Xu is directed to synthesis of the instantly elected species HKUST-1, derived from copper(II) nitrate trihydrate and benzene-1,3,5-tricarboxylic acid (i.e., trimesic acid). Xu at page 7277, col. 1.
The limitations of claim 17 are met because Xu teaches that the claimed MOF (i.e., HKUST-1) is obtained in the form of a powder. Xu a page 7277, col. 1.
Obvious Rationale Claim 14
The only difference between claim 14 and Xu is that the cited Xu working example teaches a temperature of 75 °C which does not meet the claim 14 limitation of “below 50 ˚C”.
Claim 14 is obvious over Xu for the following reasons. One of ordinary skill motivated to explore and optimize Xu in view of Xu’s teaching that metal organic frameworks (MOFs), which are porous materials with excellent potential applications in water harvesting, crystallization matrices, catalysis, drug delivery and release, and energy storage and conversion, have attracted tremendous attention from researchers. Xu at page 7275, col. 1. Xu further teaches that HKUST-1 has been widely studied in the last two decades possibly because it is one of the prototypical MOFs and is easy to synthesize. Xu at page 7275.
Generally, differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. MPEP § 2144.05(II), citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The specification does not teach any criticality with respect to temperature of claim 1 in its current form (where only one IDT is required). For example, the specification teaches:
Further, the described methods are advantageously facile. In an embodiment, the described methods may be conducted at a temperature below about 50°C, preferably below about 40°C, more preferably below about 30 °C more preferably below about 25°C, more preferably below about 20°C. In particular, the described methods may be conducted at room temperature. In an embodiment, the described methods may be carried out at a temperature in the range of from 273°C to 200°C.
Specification at page 10, lines 10-15. Evidencing no criticality with respect to temperature. One of ordinary skill is motivated explore the method of Xu at lower temperatures (in view of the utility for HKUST-1 taught by Xu), for example, below 50 ˚C in the interest of reaction efficiency and economy under milder temperature conditions. MPEP § 2144.05(II). In this regard, Majano teaches the successful room temperature synthesis of HKUST-1 using precursor solutions more concentrated than in typical bulk syntheses. Majano at page 2279, see data in Table. One of ordinary skill is motivated in view of Majano’s room temperature HKUST-1 synthesis (at increased precursor concentrations) and Xu’s teaching that the increased input power of SAWs improves the efficiency and velocity of acoustic streaming; then, the kinetic effect of SAWs improves the concentration of solute and accelerates the reaction rate (Xu at page 7278, col. 1), to explore/practice/optimize Xu at lower temperatures, such as below 50 ˚C, per claim 14.
Applicant’s Arguments
Applicant’s arguments with respect to claim interpretation are addressed above.
With respect to Xu, Applicant argues that a person of ordinary skill would have understood the two symmetrically opposed IDTs of Xu to transmit SAWs along a direction that is parallel and co-axial relative to a central axis of a working surface of the substrate (coinciding with where the droplet is positioned). Reply at pages 9-10. Applicant argues that Xu does not teach:
Claim 1 . . . providing an acoustic microfluidic platform comprising a piezoelectric substrate having a working surface . . . and at least one interdigitated transducer (IDT), the working surface having a central axis, and the at least one IDT being configured to transmit acoustic irradiation along a direction that is parallel and off-axis relative to the central axis . . .
Reply at pages 9-10.
In response, as noted above, it is agreed that Xu does not teach this limitation because the Xu IDTs appear to be configured to transmit acoustic irradiation directly along the central axis. However, per the § 013 rejection above, simply shifting IDTs and MOF precursor liquid to a non-central point would meet the limitations of claim 1. As explained above, this is merely a matter of design choice and the claims are therefore obvious for the reasons given above.
Non-Statutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
Non-Statutory Double Patenting Rejection over L. Yeo et al., US 17/909,728 (Mar. 5, 2021), published as US 2024/0209002 (2024)
Claims 1, 2, 4-7, 11-15, 17, and 20 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over respective conflicting claim 1 of L. Yeo et al., US 17/909,728 (Mar. 5, 2021) (claim set filed on January 9, 2026), published as US 2024/0209002 (2024) or these conflicting claims in further view of C. Xu et al., 20 CrystEngComm, 7275-7280 (2018) (“Xu”). The rejection is provisional because the conflicting claims have not been patented.
Conflicting claims 1 and 5 as amended (on January 9, 2026) recite as follows:
Conflicting claim 1. (Currently Amended) A method of preparing a Metal Organic Framework (MOF), the method comprising:
depositing a liquid comprising MOF precursors on a surface of a piezoelectric substrate,
the MOF precursors comprising a metal ion and an organic ligand, and
applying an electrical input to the piezoelectric substrate
to induce propagation of travelling acoustic waves across the piezoelectric substrate, which in turn causes the liquid to form an acoustowetting film in a linear direction on the piezoelectric substrate, within which the MOF precipitates.
Conflicting claim 5. The method of claim 1, wherein the piezoelectric substrate comprises inter-digital transducers (IDTs) to generate the acoustic waves.
Conflicting claims 1 and 5 differ from instant claim 1 in that their combination does not teach the instant limitations indicated by strikeout text below:
Instant claim 1. A method of preparing a Metal Organic Framework (MOF) with an acoustically-driven microfluidic platform, the method comprising:
providing an acoustic microfluidic platform comprising
a piezoelectric substrate having a working surface configured to accommodate a liquid and
at least one interdigitated transducer (IDT),
the working surface having a central axis, and
the at least one IDT being configured to transmit acoustic irradiation along a direction
depositing a liquid comprising MOF precursors on the working surface, the MOF precursors comprising a metal ion and an organic ligand,
applying an electric potential to the at least one IDT, resulting in the transmission of the acoustic irradiation as asymmetrical waves along the direction
isolating the MOF.
Instant claim 1 is obvious over conflicting claims 1 and 5 or these claims in combination with Xu for the same reasons discussed above in the § 103 rejection above. That is, one of ordinary skill is motivated to simply position the IDTs and MOF precursor liquid to a non-central point of conflicting claim 1 piezoelectric substrate surface as a matter of design choice so as to meet every limitation of instant claim 1. See MPEP § 2144.04 (IV)(B) (citing In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). The further limitations of instant claims 2, 4-7, 11-15, 17, and 20 are obvious in further view of Xu for the same reasons given in the above § 103 rejection.
Terminal Disclaimer
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Conclusion
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 Alghane teaches that surface acoustic waves (SAWs) can be launched by applying an alternating frequency electric field to an interdigitated transducer (IDT) on the surface of a piezoelectric substrate as shown in Fig. 1. When a liquid droplet lies in the path of a SAW, the wave changes its mode to a leaky surface acoustic wave (LSAW) when it reaches the boundary between solid and liquid. This, in turn, establishes a longitudinal wave that propagates at a Rayleigh angle, [Symbol font/0x71]R, as depicted in Fig. 1.1 The attenuation of the LSAW due to viscous liquid loading transfers an acoustic force into the droplet, creating thereby a significant acoustic streaming in the liquid that facilitates mixing, stirring, vibrating, pumping, ejection, and atomization. These phenomena can be exploited to speed up biochemical reactions, minimize nonspecific bio-binding, and accelerate hybridization reactions in protein and DNA analysis. Alghane at page 1, col. 1.
2 Applicant’s results are published in Nature Communications. H. Ahmed et al., Nature Communications, 1-9 (May 23, 2019).