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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/22/2026 has been entered.
DETAILED ACTION
Claims 1, 4-12 of D. Asari, et al, US 17/610,160 (11/10/2021) are pending and are under examination on merits.
Election/Restrictions
The Restriction Requirement mailed on 01/03/2025 assigned claim 1 as a linking claim in multiple groups. After reconsideration of the guidance form the MPEP, Restriction Requirement mailed on 01/03/2025 is withdrawn and claims 1, 4-12 to be fully examined on merits.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because the Table 1 at page 12 of the specification filed on 02/27/2026 is not clear enough to be recognized.
Claim Interpretation
Examination requires claim terms first be construed in terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim See MPEP § 2111. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01. It is also appropriate to look to how the claim term is used in the prior art, which includes prior art patents, published applications, trade publications, and dictionaries. MPEP § 2111.01 (III).
Interpretation of the Claim Term “Poor Solvent”
The specification defines the term of “poor solvent” as:
Here, the term "poor solvent" for an object means that the solubility in a solvent of the object is 1g/50mL (=20g/L) or less at 25°C and at atmospheric pressure.
Specification at page 5, line 3-4. Therefore, the term of “poor solvent” is interpreted as defined by the specification.
Interpretation of the Claim Term “a Centrifugal Force and a Shear Force”
The specification does not provide specific definition for the terms “centrifugal force” or “shear force”. The specification discusses these terms as follows:
[0012] Some aspects of the present invention are as described below.
[1] A method for producing a Metal-Organic Framework, comprising: simultaneously and continuously applying a centrifugal force and a shear force to a formulation containing a metal ion donor, a multidentate ligand, and a solvent.
. . . .
[6] The method according to any one of [1] to [5], wherein the centrifugal force is generated by stirring the formulation by rotating a rotary blade within a reaction vessel, and the shear force is generated by contact between the formulation and an inner wall of the reaction vessel due to the stirring, or by contact between particles constituting the formulation due to the stirring.
Specification at page 6, line 12-30. Thus, the specification recognizes that “centrifugal force” and “shear force” can be generated by simple agitation of a reaction mixture, such that there is some degree of rotation of the reaction mixture.
The prior art teaches that centrifugal force is an outward force on a mass when it is rotated. See V. Wowk, Sound & Vibration 13 (2015) (“Wowk”).
Therefore, the term of “a centrifugal force” is broadly and reasonably interpreted and consistent with the specification as any outward force formed when a mass is rotated in any manner .
The prior art teaches that shear force is a force determined from a free-body diagram, which acts tangentially to a surface which may be a real external surface or a defined surface within a material. See Oxford Dictionary of Mechanical Engineering(1 ed) (2013).
Therefore, the term of “shear force” is broadly and reasonably interpreted and consistent with the specification as any force caused by one object contact another object in any manner.
Interpretation of the Claim Term “thin film swirl mixing method”
Claim 7 recites the claim term of “thin film swirl mixing method” as follows:
7. The method according to claim 1, wherein the centrifugal force and the shear force are applied to the formulation by a thin film swirl mixing method.
The specification does not provide specific definition for the term of “thin film swirl mixing method”. The closest information disclosed by the specification as:
[0033] One example of such a method is the thin film swirl mixing method developed by Primix Corporation. In this method, by using a thin film swirling high-speed mixer, centrifugal force and shear force can be simultaneously and continuously applied to the introduced substance. As a result, in the conventional use example, particles and droplets are dispersed and/or atomized. Specific device configurations are disclosed, for example, in JPA2007-125454.
Specification at page 6, [0033], emphasis added.
It should be noted that “a thin film swirl mixing method” is not an art recognized term. Therefore, according to its plain meaning and consistent with the specification of the instant application, the claim term of “thin film swirl mixing method” is broadly and reasonably interpreted as a method of mixing wherein the material being mixed forms a thin-film by way of a centrifugal force or swirling.
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.
Maintained 35 USC § 103 over Kim and Majano
Claims 1, 6-8 are rejected under 35 U.S.C. 103 over J. Kim, et al. 161 Microporous and mesoporous materials 48-55 (2012)(“Kim”) in view of G. Majano, et al, 25(7) Advanced Materials 1052-1057 (2013) (Majano). Note: the rejection is modified according to Applicant’s argument.
J. Kim, et al. 161 Microporous and mesoporous materials 48-55 (2012)(“Kim”)
Kim teaches that metal organic framework, Cu3(BTC)2 was prepared by ethanol reflux method comprising H3BTC (1,3,5-benzenetricarboxylic acid) as the ligand with a concentration of 1.01 M, and Cu salt/H3BTC mole ratio of 9:5 has excellent textural properties (>1700 m2/g) in yield in the range of 40–76% − depending on the stirring rate − after 24 h synthesis. Kim at Abstract, line 1-4, emphasis added.
Per the experimental section, Kim teaches that the Cu salt used by Kim is copper (II) nitrate hydrate. Kim at page 49, 2.1, 2.1. Synthesis of Cu3(BTC)2 by ethanol reflux.
Thus, Kim teaches a method preparation of metal organic framework Cu3(BTC)2 from a mixture of 1,3,5-benzenetricarboxylic acid, copper (II) nitrate hydrate and ethanol; wherein the concentration of 1,3,5-benzenetricarboxylic acid, copper (II) nitrate hydrate is 1.01 M, 1.82 M respectively. Therefore, the weight ratio between ethanol (1 ml × 0.789 g/ml = 0.789 g) which is a solvent and the total amount of copper (II) nitrate hydrate ( 1 ml ×1.82 mmol/ml x 187 mg/mmol=340 mg) which is a metal ion donor and 1,3,5-benzenetricarboxylic acid (1 ml ×1.01 mmol/ml x 210 mg/mmol=212 mg) which is a multidentate ligand is 143% [789÷(212+340=1.43]; which anticipated the claim 1 limitation of:
an amount of the solvent is in a range of 100% to 1000% by weight based on a total amount of the metal ion donor and the multidentate ligand.
Per table 1, Kim teaches that the synthesis of MOF Cu3(BTC)2 is conducted at a condition of stirring with a rpm 150-300.
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Kim at page 50, right col. Table 1.
Thus, the Kim method also meets the claim 1 limitation of:
reacting a metal ion donor and a multidentate ligand in a solvent to obtain the Metal-Organic Framework by simultaneously and continuously applying a centrifugal force and a shear force to a formulation containing the metal ion donor, the multidentate ligand, and the solvent
because stirring with a stirring bar provides a simultaneously and continuously applying a centrifugal force and a shear force to the retraction mixture per claim interpretation above.
Per table 1, Kim also teaches that the textural properties of the formed Cu3(BTC)2 is increased with the increasing of the stirring rate, for example, the SBET is 1250 m2/g, 1481 m2/g and 1737 m2/g when the reaction mixture is stirred at 150 RPM, 200RPM and 300 RPM respectively. Kim at page 50, right col. Table 1.
Difference between Kim and Claims 1, 6-8
The Kim method differs from the instant claim 1 in that:
(i). ethanol is not a poor solvent for at least one of 1,3,5-benzenetricarboxylic acid and copper (II) nitrate hydrate;
(ii). Kim does not teach the reaction mixture is mixed at a linear velocity of 10 to 50 m/s.
G. Majano, et al, 25(7) Advanced Materials 1052-1057 (2013) (Majano)
Majano teaches a method for scalable conversion of copper (II) hydroxide into MOF Cu3(BTC)2 which also named as HKUST-1. Majano at title, emphasis added.
Majano teaches that:
Excluding the last example, the rest of the work on Cu-based (and several other) MOFs has been carried out using soluble metal salts such as nitrates. The latter are oxidizers and may constitute a safety hazard in industrial use. Other soluble precursors such as acetates are cost-wise prohibitive. An appealing alternative, from safety and economic standpoints, is copper(II) hydroxide. The conversion of Cu(OH)2 into HKUST-1 would be desirable, as the resulting process expressed as a simple acid-base reaction: 3 Cu(OH)2 + 2 H3btc → Cu3btc2 + 6 H2O, is waste-free and sets aside issues concerning by-product anions such as Cl− and NO3−. Chlorides tend to increase corrosion levels in the mixture while nitrates require special attention in high volumes due to the exothermic nature of MOF synthesis. Additionally, one should bear in mind that salt removal in waste water is costly. Despite all these considerations, in laboratory practice the insoluble nature of Cu(OH)2 has kept it far from its utilization as a precursor for the MOF synthesis. Upon closer examination, despite its insoluble character, its structure is relatively flexible as put in evidence by intercalation of organics akin to clay-based chemistry, which can be also applied to other layered metal hydroxides. [ 21 ] As described by Jaggi and Oswald,[22] Cu(OH)2 consists of chains of distorted octahedra organized as corrugated layers. The Cu-Cu distance between layers lies in the range of 2.95–3.34 Å, which would be ideal for diffusion of linker molecules and subsequent rearrangement into HKUST-1 with Cu-Cu distances of 2.63 Å.
Majano at page 1052, left col. paragraph 3, line 1 to right col. paragraph 3, emphasis added.
Obvious Rationale of Claims 1, 6-8
It would have been prima facie obvious for one of ordinary skill in the art to arrive at the instantly claimed invention based on the teachings from Kim and Majano with a reasonable expectation of success before the effective filing date of the claimed invention.
One of ordinary skill in the art seeking Cu3(BTC)2 is motivated to modify the Kim method by replacing copper (II) nitrate hydrate with Cu(OH)2 that is insoluble because Majano teaches that:
(i). copper (II) nitrate may constitute a safety hazard in industrial use;
(ii). The conversion of Cu(OH)2 into Cu3(BTC)2 would be desirable, as the resulting process expressed as a simple acid-base reaction: 3 Cu(OH)2 + 2 H3btc → Cu3btc2 + 6 H2O, is waste-free and sets aside issues concerning by-product anions;
(iii).The structure of Cu(OH)2 is ideal for diffusion of linker molecules and subsequent rearrangement into Cu3(BTC)2
The Rationale supporting the modification is simple substitution of one known element for another to obtain predictable results. MPEP 2143. I (B).
One of ordinary skill in the art seeking Cu3(BTC)2 having larger surface area is also motivated to further modify the proposed method by mixing the reaction mixture with a high-speed mixer. One of ordinary skill in the art has a motivation to do so with a reasonable expectation of success because Kim teaches the surface area of the formed Cu3(BTC)2 particles is increased with increasing of the stirring rate, for example, the SBET is 1250 m2/g, 1481 m2/g and 1737 m2/g when the reaction mixture is stirred at 150 RPM, 200RPM and 300 RPM respectively. Kim at page 50, right col. Table 1.
Regarding the claimed linear velocity, the specification does not provide any evidence to show the claimed linear velocity is critical, rather, the specification discloses:
[0048] Further, the above production can be carried out, for example, by mixing the formulation at a linear velocity in the range of 1 to 100m/s, preferably at a linear velocity of 10 to 50m/s.
Specification at page 9, [0048], line 1-3, emphasis added.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). One of ordinary skill in the art to develop workable or optimum ranges for result-effective parameters, where Applicant can rebut a prima facie case of obviousness by showing the criticality (unexpected result) of the range. MPEP § 2144.05. Herein, Kim teaches one of ordinary skill in the art that stirring speed is one of result-effective parameters, therefore, one of ordinary skill in the art has a motivation to optimize the stirring rate(which affects linear velocity of the mixture being stirred 1)to make the stirred reaction mixture has a linear velocity falling within the claimed ranges. Thus, the proposed method meets each and every limitation of claims 1 and 6, claims 1 and 6 are obvious.
Claim 7 is obvious because the centrifugal force and the shear force applied to the reaction mixture is by a thin film swirl mixing method in the proposed method because a thin film of the reaction mixture is formed within the reactor while being stirred with a high speed overhead stirrer.
Claim 8 is obvious because Cu3(BTC)2 is a porous coordination polymer.
Applicant’s Argument and Declaration
Applicant submitted the Declaration of inventor Daisuke Asari filed under 37 C.F.R. §1.132 on 06/22/2026. The declaration states that three stirring conditions have been tested with a stirrer of 50 mm at 300 rpm, an impeller of 200 mm at 300rpm, and a stirrer of 50mm at 120rpm respectively; and the three stirred formulation has a linear velocity of 0.8 m/s, 3.1 m/s and 3. m/s respectively.
Applicant first argues on the ground that:
In order to apply the linear velocity to as high as 10 m/s in the hypothetical Kim-Majano combination, the rotation speed must be multiplied. However, neither Kim nor Majano provides any suggestion to employ such a high rotational speed. Furthermore, as suggested by [Condition 3], if the agitation conditions during the reaction were to exceed those in the replication studies, problems such as breakage of the glass vessel or overflow of the contents would easily occur; therefore, this cannot be considered a matter of routine design choice. Increasing the rotation speed in the Kim/Majano setup to reach 10 m/s would inevitably cause glass vessel breakage or content overflow. Thus, the cited references inherently teach away from employing such high-speed rotation. That is, one ordinary skill would not dare to apply the conditions of "a linear velocity of 10 to 50m/s" even when assuming they consider modifying Kim in view of Majano.
Paragraph 2 at page 8 in the Remark filed on 06/22/2026.
These arguments have been fully considered but not persuasive for the following reasons:
(i). as mentioned in the 103 rejection that Kim teaches that the textural properties of the formed Cu3(BTC)2 is increased with increasing of the stirring rate, for example, the SBET is 1250 m2/g, 1481 m2/g and 1737 m2/g when the reaction mixture is stirred at 150 RPM, 200RPM and 300 RPM respectively. Kim at page 50, right col. Table 1. Therefore, one of ordinary skill in the art seeking Cu3(BTC)2 having larger surface area is motivated to conduct the reaction with a high speed stirrer such as an overhead stirrer;
(ii).linear velocity of a formulation is calculated by V=
π
DN,wherein D is the diameter of impeller and N is rotational speed of the impeller; therefore, both stirring speed and diameter of a impeller are key factors of the linear velocity of a being stirred formulation. While none of the stirred formulations in the filed declaration has a linear velocity of 10 m/s, however, when the impeller of the declaration Condition 2 speeds at 1200 rpm, the linear velocity of the being stirred formulation would be 12.4 m/s.
Which indicated that claimed linear velocity can be reached through optimization of the stirring speed and this can be further proved by the independent claim 6 and 10. Therefore, the declaration does not have enough weight to overcome the 103 rejection and the arguments are not persuasive.
Applicant further argues on the ground that attempting high-speed rotation (10-50 m/s) in a conventional stirrer/impeller setup would be even more dangerous and impossible. Paragraph 3 at page 8 in the Remark filed on 06/22/2026. This argument is not persuasive because preparation of Cu3(BTC)2 through vigorous mixing (such as 1200 rpm or overhead stirrer) of copper precursor with ligand is known in the prior art [See J. Huo, et al, 1 J. Mater. Chem. A, 1522 (2013)(“Huo”), which is cited in the 103 rejection below].
Applicant’s Argument Regarding Unexpected Results
Applicant also argues unexpected results that is the reaction time of the claimed method is 15 mins, which is significant less than 12-27 hours in the prior art method. Paragraph 4 at page 8 in the Remark filed on 06/22/2026
Relevant Sections of the MPEP
A greater than expected result and evidence of unobvious or unexpected advantageous properties are evidentiary factors pertinent to the legal conclusion of obviousness of the claims at issue. MPEP § 716.02(a)(I)/(II). However, the burden is on Applicant to establish that the evidence relied upon demonstrates that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. MPEP § 716.02(b). Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. MPEP § 716.02(b)(III).
Furthermore, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support; that is, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. MPEP § 716.02(d). The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. MPEP § 716.02(d)(I).
Proffered in the Specification
While the specification provides the working examples 1-38 of the claimed centrifugal shear synthesis and comparative examples of solvothermal synthesis in the Table 1 and the Table 2 respectively. Specification at page 12-12, Table 1 and Table 2. However, only the Examples 1-6 and the comparative Example A1 are conducted with the same metal donor, the same ligand in the same solvent, which are summarized by Examiner as indicated below:
Example
Metal ion donor
Multidentate ligand
Solvent
Amount of solvent wt%
Reaction temperature
Reaction time
1
Cu(OH)2
8.8 g
BTC
12.6 g
EtOH
42.8 g
200%
25ºC
15 mins
2
Cu(OH)2
13.2
BTC
18.9 g
EtOH
32.1 g
100%
25ºC
15 mins
3
Cu(OH)2
6.6 g
BTC
9.5 g
EtOH
46.3 g
300%
25ºC
15 mins
4
Cu(OH)2
2.9 g
BTC
4.2 g
EtOH
71 g
1000%
25ºC
15 mins
5
Cu(OH)2
8.8 g
BTC
12.6 g
EtOH
42.8 g
200%
25ºC
15 mins
6
Cu(OH)2
8.8 g
BTC
12.6 g
EtOH
42.8 g
200%
25ºC
15 mins
Comparative Example A1
Cu(OH)2
1.1 g
BTC
1.6 g
EtOH
42.8 g
1585%
100ºC
1080 mins
The Proffered Results Do Not Overcome the § 103 Rejection Because the Unexpected Results Is Not Commensurate with Claim Scope
While the reaction time of examples 1-6 (15 mins) is much less than that of the comparative A1 (1080 mins), however, results asserted do not overcome the § 103 rejection because they are not commensurate with claim scope.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support; that is, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. MPEP § 716.02(d) Herein, only one species of metal ion donor, multidentate ligand and solvent are compared, clearly, it cannot commensurate the whole scope of claim 1 which claims very broad solvent, metal ion donor and multidentate ligand.
New 35 USC § 103 over Kim and Majano
Claims 1, 4-12 are rejected under 35 U.S.C. 103 over J. Huo, et al, 1 J. Mater. Chem. A, 1522-15223 (2013)(“Huo”) evidence from the ThermoFisher(2012)(“Fisher”).
J. Huo, et al, 1 J. Mater. Chem. A, 1522 (2013)(“Huo”)
Huo teaches that MOF HKUST-1 (Cu3(BTC)2 has high surface area and narrow pore size distribution and has found many potential applications as a solid Lewis acid catalyst for gas storage/separation and chromatography stationary phases. Huo at page 15220, left col. paragraph 2, line 1-8.
Huo teaches a method for synthesis of HKUST-1 by vigorous mixing of a copper precursor solution with a suspension of H3BTC at room temperature (rt) using only water as the reaction medium. Huo at page 15220, right col. paragraph 2, line 1-3.
Huo teaches working example for his method with a large scale preparation as indicated below:
Large scale aqueous synthesis of HKUST-1
Typically, 1.2 L of water was added into a mixture of 252 g of H3BTC (1.2 mol) and 120 g Cu(OAc)2·H2O (0.6 mol) with strong stirring using an overhead stirrer for 1 h at room temperature. The product was collected by repeated sonication with ethanol and centrifugation (9000 rpm, 12 min) three times, and dried at 100 ºC under vacuum overnight. Yield = 74.6 %.
Huo at page 4-5 in the supplementary material.
The Huo method teaches to react of Cu(OAc)2 that is a metal ion donor with H3BTC that is a multidentate ligand in water that is a solvent by strong stirring using an overhead stirrer at room temperature; wherein, the amount of the water (1.2 kg) 322%% by weight based on a total amount of Cu(OAc)2·H2O (120 g) and the H3BTC (252 g).
The evidence from the Fisher indicates that the solubility of H3BTC in water is 2.6 g/L. Fisher at page 4/8, water solubility. Therefore, water is a poor solvent for H3BTC.
Difference between Huo and Claims 1, 4-12
The Huo method meets each and every limitations of claim 1 except Huo does not teach his reaction mixture has the claimed linear velocity.
Obviousness Rationales of Claims 1, 4-12
Regarding the claimed linear velocity, the specification does not provide any evidence to show the claimed linear velocity is critical, rather, the specification discloses:
[0048] Further, the above production can be carried out, for example, by mixing the formulation at a linear velocity in the range of 1 to 100m/s, preferably at a linear velocity of 10 to 50m/s.
Specification at page 9, [0048], line 1-3, emphasis added.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). One of ordinary skill in the art to develop workable or optimum ranges for result-effective parameters, where Applicant can rebut a prima facie case of obviousness by showing the criticality (unexpected result) of the range. MPEP § 2144.05. Herein, Huo teaches one of ordinary skill in the art that the reaction mixture needs to strongly stirring using an overhead stirrer, thus, one of ordinary skill in the art has a motivation to optimize the stirring rate of the overhead stirrer to make the stirred reaction mixture has a linear velocity falling within the claimed ranges; therefore, the Huo method meets each and every limitation of claims 1, 6 and 10 therefore, claims 1, 6 and 10 are obvious.
Claim 4 is obvious because the Huo method is conducted at room temperature.
Claims 5 and 9 are obvious because the Huo method is conducted open to air, therefore, nitrogen and oxygen is supplied to the reactor while the preparation is conducted.
Claims 7 and 11 are obvious because the centrifugal force and the shear force applied to the reaction mixture is by a thin film swirl mixing method in the Huo method as a thin film of the reaction mixture is formed within the reactor while being strong stirred with a high speed overhead stirrer.
Claims 8 and 12 are obvious because Cu3(BTC)2 is a porous coordination polymer.
Conclusion
No claims are allowed.
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 V=
π
DN,wherein V is linear velocity of a stirred mixture, D is the diameter of impeller and N is rotational speed of the impeller.
