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 May 21, 2026 have been fully considered but they are not persuasive. Applicant has amended independent claim 1, and argued that the amendments have overcome the rejections under 35 U.S.C. 112(a), 112(b), and 35 U.S.C. 103. The Examiner respectfully disagrees.
With respect to the rejection under 35 U.S.C. 112(a), Applicant has pointed to paragraphs 0018-0022, and 0024 as showing support for “measuring a change in the aqueous sample from the same volume of the aqueous sample both prior to and after the introduction of the impregnated metal organic framework.” The Examiner has reviewed the cited paragraphs, and contends that the teachings within those paragraphs do not provide support for the amended limitation. The paragraphs cited by Applicant are largely directed to advantages the instantly claimed invention provide over the prior art; however, the cited paragraphs do not teach or imply measuring a change in a single aqueous sample having the same volume prior to and after introducing the metal organic framework. For these reasons, the rejection under 35 U.S.C. 112(a) as detailed in the previous Office Action are maintained. Also, the Examiner has included an additional rejection under 35 U.S.C. 112(a) to claim 21 as the specification does not provide support for a photoreactive species not being covalently bound to a metal organic framework. Paragraph 0035 of the instant specification does state that a dye may not be chemically immobilized in a metal organic framework, but the specification does not teach or suggest a dye that is not covalently bound to the metal organic framework. As such, claim 21 is rejected below as not having support for a dye not being covalently bound to a metal organic framework.
With respect to the rejection under 35 U.S.C. 112(b), the Examiner takes issue with the phrase “the same volume of the aqueous sample both prior to and after the introduction of the impregnated metalorganic framework.” The Examiner believes that Applicant’s intent is to recite a single sample in which an analyte component is measured; however, the volume of the sample cannot be the same after the metal organic framework is introduced into the sample. The Examiner contends that the rejection can be overcome by removing the term “volume” in the phrase in question.
With respect to the rejections under 35 U.S.C. 103, Applicant has amended independent claim 1 to recite degradation of the metal organic framework, and a photoreactive species selected and impregnated such that the initial aqueous sample does not exhibit significant absorbance or fluorescence at the measurement wavelength, and argued that the cited prior art does not teach the amended claim. In response, the Examiner points to reference to Hinterholzinger et al., who teach decomposition of a metal organic framework in the presence of fluoride ions (Introduction pages 1-2). Hinterholzinger et al., teach that decomposition of the metal organic framework releases FITC bound with the metal organic framework thereby generating a turn-on fluorescence signal (Introduction pages 1-2). As such, reference to Hinterholzinger et al., teach degradation of a metal organic framework and releasing a photoreactive species as recited in the claim. Hinterholzinger et al., also teach almost complete fluorescence quenching as a consequence of the photoreactive species being confined in the metal organic framework (Introduction pages 1-2). The Examiner contends that this teaching reads on the photoreactive species exhibiting no significant absorbance or fluorescence at a measurement wavelength as the photoreactive species of Hinterholzinger et al., will not exhibit fluorescence in the absence of fluoride ions. Given these teachings, the Examiner contends that the limitations of the instant claims are taught by the cited prior art, thus the rejection is maintained. With respect to reference to He et al., Applicant has argued that the reference teaches removal of fluoride with a mechanical barrier membrane wherein removal of fluoride is based on adsorption and not degradation of a metal organic framework. As detailed below, He et al., is cited for teaching zirconium metal organic frameworks are highly effective for removal of fluoride ions due to a higher adsorption capacity. Based on the teachings of He et al., one of ordinary skill in the art would understand that zirconium metal organic frameworks are advantageous for detecting fluoride compared to other detection methods, and would have been motivated to modify the teachings of Hinterholzinger et al., to include a metal organic framework comprising zirconium. As such, the Examiner is not persuaded by Applicant’s arguments regarding reference to He et al. Therefore, in light of the teachings of the prior art, and the arguments provided here, the Examiner contends that the limitations of the instant claims are taught by the combination of references cited below, thus the claims are not in condition for allowance.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-10 and 21-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicant has amended independent claim 1 to recite “measuring a change in the aqueous sample from the save volume of the aqueous sample both prior to and after the introduction of the impregnated metal organic framework.” This limitation represents new matter as the specification does not teach measuring a change wherein the volume of the aqueous sample is the same prior to and after introducing the metal organic framework. Applicant has pointed to paragraphs 0018-0022, and 0024 as showing support for the amendment. However, after reviewing the cited paragraphs, the Examiner contends that the specification does not recite a step in which a change is determined from the same volume of the aqueous sample prior to and after introduction of the metal organic framework. The paragraphs cited by Applicant are largely directed to advantages the instantly claimed invention provide over the prior art; however, the cited paragraphs do not teach or imply measuring a change in a single aqueous sample having the same volume prior to and after introducing the metal organic framework. Claims 2-10, 21, and 22 depend directly from claim 1 and also contain new matter.
New claim 21 recites a photoreactive species being “physically impregnated and not covalently bound or chemically immobilized to the metal organic framework.” Paragraph 0035 of the instant specification provides support for the photoreactive species not being chemically immobilized, but does not support a photoreactive species not being covalently bound to the metal organic framework.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10, 21, and 22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
For claim 1, the phrase “measuring a change in the aqueous sample from the same volume of the aqueous sample both prior to and after the introduction of the impregnated metal organic framework” is unclear as the Examiner is unable to determine if “the same volume” references the aqueous sample alone, or the aqueous sample in combination with the impregnated metal organic framework. It appears that Applicant intends to state the volume of the aqueous solution alone not changing throughout the measuring process. However, the phrase "prior to and after the introduction of the impregnated metal organic framework" indicates that the volume of the solution has changed as the metal organic framework is formed in a reactive solution. The Examiner notes that it is not possible for the volume of the solution to stay the same if a volume of the reactive solution is added to the volume of the aqueous sample. The Examiner suggests Applicant amend the claim to remove the phrase “volume of the” to overcome the rejection under 35 U.S.C. 112(b). Claims 2-10, 21, and 22 depend directly or indirectly from claim 1 and are also indefinite.
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 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.
Claim(s) 1-10 and 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hinterholzinger et al., (Scientific Reports 3, 2562) in view of Zhao et al et al.,(Applied Surface Science 402, 2017, 129-135).
Regarding claims 1, 3, 7-10, 21, and 22 Hinterholzinger et al., teach a method of fluoride detection comprising generating a metal organic framework by combining in a reactive solution 2 aminoterephthalic acid (organic linker, Synthesis ofNH2-MIL-101(A1) and NH2-MIL-101(A1) FITC, page 5), aluminum chloride hexahydrate (metal salt, Synthesis of NH2-MIL-101(A1) and NH2-MIL-101(A1)-FITC, page 5), impregnating the metal organic framework with FITC (photoreactive species, Synthesis ofNH2-MIL-101(A1) and NH2-MIL-101(A1)-FITC, page 5), introducing the impregnated metal organic framework into an aqueous solution (Florescence titrations of NH2-MIL-101(A1)-FITC) and measuring fluoride concentration based on a change in the aqueous sample wherein the change is based on dissolution of the metal organic framework (Abstract, figure 1) with the release of FITC correlating to fluoride concentration (figure 4) without a change in the volume of the aqueous solution (Florescence titrations ofNH2 MIL-101(A1)-FITC). The Examiner notes that the claim is being read in light of the rejection under 35 U.S.C. 112(b) in which the limitations of claim 1 are unclear. Hinterholzinger et al., do not teach a metal comprising zirconium.
Zhao et al., teach a zirconium metal-organic framework for fluoride removal wherein fluorescein is incorporated into a metal-organic framework (Abstract, Characteristics of Materials, Section 3.1, page 130). Zhao et al., teach fluorescein being encapsulated by the metal organic framework (Characteristics of Materials, Section 3.1, page 131, left column, first paragraph) which reads on the photoreactive species being impregnated but not immobilized recited in claims 10 and 21. Additionally, Zhao et al., teach a colorimetric response that does not require bleaching of a pre-colored dye (Sensing Performance, Section 3.3, page 132). Zhao et al., teach that Zr-MOFs provides the advantage of a high selectivity and a fast response for detecting fluoride (Conclusions page 134).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Hinterholzinger et al., wherein zirconium is utilized as the metal in a metal-organic framework in order to provide a metal-organic framework with a high selectivity and a fast response when detecting fluoride as taught by Zhao et al.
Regarding claim 2, Hinterholzinger et al., teach measuring an amount of photoreactive species after introduction of the impregnated metal organic framework (Florescence titrations of NH2-MIL-101(A1)-FITC).
Regarding claim 4, Hinterholzinger et al., teach organic linkers identical to that of the instant claims (Synthesis of NH2-MIL-101(A1) and NH2-MIL-101(A1)-FITC, page 5).
Regarding claims 5 and 6, Hinterholzinger et al., teach FITC as the photoreactive species (Synthesis of NH2-MIL-101(A1) and NH2-MIL-101(A1)-FITC, page 5) wherein a change in fluorescence is measured (Florescence titrations of NH2-MIL-101(A1)-FITC).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DWAN A GERIDO whose telephone number is (571)270-3714. The examiner can normally be reached Mon-Fri 10-6.
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/DWAN A GERIDO/Examiner, Art Unit 1797 /LYLE ALEXANDER/Supervisory Patent Examiner, Art Unit 1797
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