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 December 10, 2025 have been fully considered but they are not persuasive. Applicant has amended independent claim 1 to recite determining a change in an aqueous sample prior to, and after introduction of the metal organic framework wherein the volume of the aqueous sample does not change. Applicant has also argued that the combination of Hinterholzinger et al., in view of He et al., cited in the previous Office Action does not meet the claim limitations. The Examiner respectfully disagrees.
With respect to the amended limitation, the Examiner contends that the amendment is indefinite and represents new matter introduced into the claims. Applicant has pointed to paragraphs 0018, 0019, 0020, 0024, 0025, 0031, 0032, and 0034 as showing support for the amendment. However, after reviewing the cited paragraphs, the Examiner contends that the amendment represents new matter as 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. Paragraph 0020 of the instant specification states that error may occur with respect to the volume of a colorimetric dye in a black and a sample vial in bleaching applications, but does not explicitly teach determining a change in the same volume of an aqueous sample prior to and after addition of a metal organic framework. Additionally, the Examiner notes that neither the instant claims, nor the cited prior art are directed to bleaching applications, and therefore does not view the teachings of paragraph 0020 as having support for the amended limitations. None of the other paragraphs cited by Applicant teach the amended limitation, thus the Examiner contends that the instant claims comprise new matter. Additionally, the Examiner contends that amended claim 1 is indefinite as the Examiner is unable to determine if the phrase “the same volume” references the aqueous sample alone, or the combination of the aqueous sample and the metal organic framework. The Examiner notes that the metal organic framework is formed in a reactive solution prior to being introduced into the aqueous sample. As such, introducing the metal organic framework into the aqueous sample would necessarily change the volume of the overall solution. In light of this view, the Examiner contends that claim 1 is indefinite as it is unclear if “the same volume” references the aqueous solution alone, or the combination of the aqueous solution and the metal organic framework.
With respect to the prior art, Applicant has argued that the combination of references cited in the previous Office Action does not meet the limitations of the instant claims. Specifically, Applicant has argued that reference to Hinterholzinger et al., do not teach alternative metals for the metal organic framework, and therefore does not meet the claim limitations. Applicant has also argued that reference to He et al., teach utilizing a zirconium metal organic framework with a mechanical barrier membrane, and therefore does not provide a suitable combination that arrives at the limitations of the instant claims. As detailed in the previous Office Action, reference to Hinterholzinger et al., teach a method of fluoride detection comprising generating a metal organic framework by forming a metal organic framework impregnated with FITC, and measuring fluoride concentration based on a change in a sample wherein the change is based on dissolution of the metal organic framework. The Examiner acknowledges that reference to Hinterholzinger et al., do not teach zirconium as the metal, and relies on reference to He et al., who teach a zirconium metal organic framework for fluoride removal wherein zirconium is incorporated into the metal organic framework. He et al., teach that zirconium metal organic frameworks exhibit a higher adsorption capacity compared to most fluoride adsorbents, and are highly effective for removal of fluoride thereby providing sufficient motivation to combine the references. The Examiner also notes that the instant claims do not preclude utilizing a membrane, or any other structure along with the metal organic framework, thus Applicant’s arguments with respect to the membrane of He et al., are not persuasive. 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 not in condition for allowance as they are taught by the combination of references cited below.
Claim Interpretation
Content of Specification
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).
The claimed invention is defined by the positively claimed steps, the process steps listed on separate indented lines listed in the body of the claim after the transitional phrase, “comprising”.
For claim 1, the Examiner notes that the phrase “the same volume” may reasonably be interpreted as lacking antecedent basis as the claim does not previously recite a volume. However, because “the same volume” references a solution, the Examiner contends that the solution would inherently have a volume, thus the claim has not been rejected as lacking antecedent basis for the phrase in question. The Examiner requests Applicant amend the claim to avoid any potential violations of 35 U.S.C. 112(b).
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 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 an aqueous sample wherein “the change is determined from the same 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 changed 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, 0019, 0020, 0024, 0025, 0031, 0032, and 0034 as showing support for the amendment. However, after reviewing the cited paragraphs, the Examiner contends that the amendment represents new matter as 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. Paragraph 0020 of the instant specification states that error may occur with respect to the volume of a colorimetric dye in a black and a sample vial in bleaching applications, but does not explicitly teach determining a change in the same volume of an aqueous sample prior to and after addition of a metal organic framework. Additionally, the Examiner notes that neither the instant claims, nor the cited prior art are directed to bleaching applications, and therefore does not view the teachings of paragraph 0020 as having support for the amended limitations. None of the other paragraphs cited by Applicant teach the amended limitation, thus the Examiner contends that the instant claims comprise new matter.
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 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 “and the change is determined 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. If Applicant’s intent is to claim the volume of the aqueous sample alone staying the same, the claim should be amended to clarify which volume is not changed throughout the measuring process. For the purposes of examination, the Examiner will interpret the claim as the volume of the aqueous solution alone remaining the same.
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 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hinterholzinger et al., (Scientific Reports 3, 2562) in view of He et al., Journal of Colloid and Interface Science, Vol 484, December 15, 2016, 162-172).
Regarding claims 1 and 7-9, 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 of NH2-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 of NH2-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 of NH2-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.
He et al., teach a zirconium metal-organic framework for fluoride removal wherein zirconium is incorporated into a metal-organic framework (Abstract, Synthesis of Zr-MOFs membrane and Zr-MOFs adsorbent). He et al., teach that Zr-MOFs exhibit a higher adsorption capacity compared to most fluoride adsorbents, and therefore are highly effective for removal of fluoride from drinking water (Conclusions).
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 higher adsorption capacity compared to other fluoride adsorbents for removal of fluoride from drinking water as taught by He 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 3, Hinterholzinger et al., do not teach zirconium as the metal.
He et al., teach a zirconium metal-organic framework for fluoride removal wherein zirconium is incorporated into a metal-organic framework (Abstract, Synthesis of Zr-MOFs membrane and Zr-MOFs adsorbent). He et al., teach that Zr-MOFs exhibit a higher adsorption capacity compared to most fluoride adsorbents, and therefore are highly effective for removal of fluoride from drinking water (Conclusions).
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 higher adsorption capacity compared to other fluoride adsorbents for removal of fluoride from drinking water as taught by He et al.
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).
Regarding claim 10, Hinterholzinger et al., teach the photoreactive species not being immobilized (figure 1).
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 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