DETAILED ACTION
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 .
Response to Arguments
Applicant's arguments filed 3/9/26 have been fully considered but they are not persuasive. The rejections are maintained.
Applicant’s primary assertion is directed to the combination of Wessels with either Yoon, Zhang, or Chen. Applicant contends that a prima facie case of obviousness has not been set forth. The Office does not concur. Yoon, Zhang, and Chen are all analogous art to Wessels, teach the element lacking in Wessels, and provide motivation for one ordinary skill to make the necessary modification.
Applicant asserts in paragraph 3 on page 5 of the Remarks that “Nothing in Wessells suggests substitution of the TMCC cathode material for any reason” and paragraph 2, page 6 that TMCC and the MOFs have fundamentally different structures. The Office does not concur. TMCC and MOFs—as taught in the prior art of record—are both extended, porous crystalline networks that offer high internal surface areas, porous architectures, and significant chemical stability. The motivation to modify Wessels need not come from Wessels for a prima facie case of obviousness. The secondary references provide the motivation to make a substitution in Wessells for improvement—which they all do.
Applicant asserts in paragraph 2 on page 6 that Wessells disclose 3d geometry superior to 2d MOFs of Yoon, Zhang, and Chen. Again, applicant's arguments are against the references individually and one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Yoon, Zhang, and Chen provide the motivation for the substitution. There is nothing fundamentally superior of 3d architecture to 2d architecture since it would depend on many other variables as well.
In paragraph 3 of page 6, the Applicant asserts that TMCC of Wessells is fundamentally different chemistry than the MOFs of Yoon, Zhang, and Chen. The rejection is one of substitution. Yoon, Zhang, and Chen teach how their MOFs would function.
Applicant’s last argument—found in pages 6-7—takes the position that there is no reasonable expectation for success. MPEP 2143.02 is directed to this matter. It is true that obviousness requires a reasonable expectation of success. But the prior art can provide this basis. Yoon, Zhang, and Chen are all journal articles that convey and elaborate the mechanisms by which their chemistry is effective and successful. The secondary teaching of the MOFs is not simply an allusion but provides motivation. Applicants may present evidence showing there was no reasonable expectation of success but no such evidence is presented.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Wessells (US 2014/0308544 A1) in view of Yoon “Synthesis of Bimetallic Conductive 2D Metal–Organic Framework (CoxNiy-CAT) and Its Mass Production: Enhanced Electrochemical Oxygen Reduction Activity”.
Regarding claims 1-6 and 13, Wessells discloses a secondary battery apparatus comprising: a cathode, an anode, and an electrolyte (paragraph 81). Wessells discloses that the cathode comprises a class of material known in the art as an MOF—a metal organic framework—which functions an open framework for intercalation (paragraph 56). Wessells discloses MOFs that include carbon ends of cyanide branching ligands and copper octahedrally nitrogen-coordinated (paragraph 87). Wessells discloses that the electrolyte is aqueous with divalent cations in the form of Mg2+, Ca2+, Zn2+, and Al3+ (paragraph 56). Wessells discloses the use of MOFs but not the particular MOF recited. Yoon—in an invention for the benefits of MOFs in electrochemical applications—discloses the use of Cu3HHTP2 (Introduction) which is the claimed formula when X is O. Yoon discloses that Cu3HHTP2 is an MOF effective at electrochemical reduction with high performance (Introduction). It would have been obvious to one having ordinary skill in the art at the time of invention to utilize alternative, known MOFs in the battery structure of Wessells for the advantages disclosed in Yoon.
Regarding claim 11, Wessells discloses binders (paragraph 113) and conductive material and current collectors (paragraph 128).
Regarding claim 12, the battery of Wessells inherently requires a separator.
Regarding claim 14, Wessells discloses zinc as a counter electrode (paragraph 92).
Regarding claim 21, something which is old does not become patentable upon the discovery of a new property. See MPEP 2112 I. Claiming the properties for material of Wessells and is not grounds for patentability.
Claims 1-3, 7, 8, and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Wessells (US 2014/0308544 A1) in view of Zhang “First-principles design of bifunctional oxygen reduction and evolution catalysts through bimetallic centers in metal–organic frameworks”.
Regarding claims 1-3, 7, 8, and 13, Wessells discloses a secondary battery apparatus comprising: a cathode, an anode, and an electrolyte (paragraph 81). Wessells discloses that the cathode comprises a class of material known in the art as an MOF—a metal organic framework—which functions an open framework for intercalation (paragraph 56). Wessells discloses MOFs that include carbon ends of cyanide branching ligands and copper octahedrally nitrogen-coordinated (paragraph 87). Wessells discloses that the electrolyte is aqueous with divalent cations in the form of Mg2+, Ca2+, Zn2+, and Al3+ (paragraph 56). Wessells discloses the use of MOFs but not the particular MOF recited. Zhang —in an invention for the benefits of MOFs in electrochemical applications—discloses the use of Pt3THT2 (Introduction) which is the claimed formula when X is S. Zhang discloses that Pt3THT2 is an MOF effective at electrochemical reduction with high efficiency (Introduction). It would have been obvious to one having ordinary skill in the art at the time of invention to utilize alternative, known MOFs in the battery structure of Wessells for the advantages disclosed in Zhang.
Regarding claim 11, Wessells discloses binders (paragraph 113) and conductive material and current collectors (paragraph 128).
Regarding claim 12, the battery of Wessells inherently requires a separator.
Regarding claim 14, Wessells discloses zinc as a counter electrode (paragraph 92).
Regarding claim 21, something which is old does not become patentable upon the discovery of a new property. See MPEP 2112 I. Claiming the properties for material of Wessells and is not grounds for patentability.
Claims 1-3 and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Wessells (US 2014/0308544 A1) in view of Chen “DFT study of the two dimensional metal–organic frameworks X3(HITP)2 as the cathode electrocatalysts for fuel cell”.
Regarding claims 1-3, 9, 10, and 13, Wessells discloses a secondary battery apparatus comprising: a cathode, an anode, and an electrolyte (paragraph 81). Wessells discloses that the cathode comprises a class of material known in the art as an MOF—a metal organic framework—which functions an open framework for intercalation (paragraph 56). Wessells discloses MOFs that include carbon ends of cyanide branching ligands and copper octahedrally nitrogen-coordinated (paragraph 87). Wessells discloses that the electrolyte is aqueous with divalent cations in the form of Mg2+, Ca2+, Zn2+, and Al3+ (paragraph 56). Wessells discloses the use of MOFs but not the particular MOF recited. Chen—in an invention for the benefits of MOFs in electrochemical applications—discloses the use of Ni3HITP2 (see Abstract) which is the claimed formula when X is NH. Chen discloses that Ni3HITP2 is an MOF effective at electrochemical reduction with high activity (Introduction). It would have been obvious to one having ordinary skill in the art at the time of invention to utilize alternative, known MOFs in the battery structure of Wessells for the advantages disclosed in Chen.
Regarding claim 11, Wessells discloses binders (paragraph 113) and conductive material and current collectors (paragraph 128).
Regarding claim 12, the battery of Wessells inherently requires a separator.
Regarding claim 14, Wessells discloses zinc as a counter electrode (paragraph 92).
Regarding claim 21, something which is old does not become patentable upon the discovery of a new property. See MPEP 2112 I. Claiming the properties for material of Wessells and is not grounds for patentability.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IMRAN AKRAM whose telephone number is (571)270-3241. The examiner can normally be reached M-F 9a-5p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Basia Ridley can be reached at 571-272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IMRAN AKRAM/Primary Examiner, Art Unit 1725
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