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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/06/2026 has been entered.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Darunte et al. (“Monolith-Supported Amine-Functionalized Mg2(dobpdc) Adsorbents for CO2 Capture”, 2017) (Darunte) in view of Yoshitome et al. (JP 2011248815 A) (Yoshitome) and Woo Ram Lee et al. (“Diamine-Functionalization of a Metal–Organic Framework Adsorbent for Superb Carbon Dioxide Adsorption and Desorption Properties”, 2018) (Woo Lee).
Regarding claim 1, Darunte teaches a carbon dioxide adsorbent (Darunte, Title; Abstract), comprising an amine-functionalized metal organic framework supported on a structured monolith contactor wash-coated with α-alumina (i.e., aluminum oxide) (Darunte, Abstract) (i.e., a carbon dioxide adsorbent comprising amine-functionalized metal-organic framework (MOF)/alumina composite). Darunte further teaches MOF comprises pores (Darunte, p. 17045, Col. 2, Paragraph 4) and the alumina anchors the Mg2(dobpdc) MOF on the monolith (Darunte, p. 17045, Col. 2, Paragraph 2) (i.e., an amine-functionalized porous MOF and aluminum oxide bound to the metal ions of the amine-functionalize porous MOF; wherein the porous metal-organic framework is M2(dobpdc)).
However, Darunte does not explicitly teach (a) wherein the surface of the composite is coated with a hydrophobic silane and wherein the hydrophobic silane is octadecyl(trimethoxy)silane; (b) wherein the amine is N-ethylethylenediamine; or (c) wherein the hydrophobic silane is coated in an amount corresponding to a weight ratio of 3:1 to 4:1 to the composite when a reaction time between the hydrophobic silane and the composite is 72 hours, or the hydrophobic silane is coated in an amount corresponding to a weight ratio of 5:1 to the composite when the reaction time between the hydrophobic silane and the composite is 48 hours.
With respect to the differences (a) and (c), Yoshitome teaches a hydrophobic adsorbent obtained by attaching hydrophobic metal oxide particles subjected to surface modification with a silicon compound to the porous body (Yoshitome, Abstract), wherein the surface of the porous body is hydrophobized (i.e., coated) (Yoshitome, p. 1, Technical-Field). Yoshitome further teaches the silicon compounds are indicated by a formula (1) to the porous body. The formula (1) is R-Si(CH)(-X), wherein R indicates a 1-18C alkyl group, a 2-4C alkenyl group, a 2-3C alkynyl group or a 6-8C aryl group, X indicates a 1-3C alkoxy group, C indicates a carbon atom, H indicates a hydrogen atom, Si indicates a silicon atom and n indicates 0-2 (Yoshitome, Abstract); and the formula specifically includes N-octadecyltrimethoxysilane (Yoshitome, p. 3, line 3), and wherein the metal oxide particles may include alumina (Yoshitome, p. 3, Paragraph 4). Yoshitome further teaches the porous body is not particularly limited as long as it has a large number of fine pores (Yoshitome, p. 4, Paragraph 7).
Additionally, Yoshitome teaches the amount of silicon compound relative to the metal oxide particles is preferably 0.01 to 10.0 mmol relative to 1 g of the metal oxide particles (Yoshitome, p. 3, last paragraph), and wherein in Example 1, n-octadecyltrimethoxysilane is added in an amount of 8 mmol or 3 g (i.e., molecular weight is 375 g/mol, 0.008 mol x 375 g/mol = 3 g) (Yoshitome, p. 6, Production Example 1). Therefore, the weight ratio of hydrophobic silane coating to the composite is 3:1, which falls within the claimed range.
As Yoshitome expressly teaches, the hydrophobic metal oxide particles surface-modified with a silicon compound attached to the porous body provides a useful hydrophobic adsorbent capable of maintaining adsorbing performance without closing pores of a porous body, having excellent repeated desorbing performance and exhibiting excellent adsorbing performance in a highly humid condition (Yoshitome, Abstract).
Yoshitome is analogous art as it is drawn to porous adsorbents comprising alumina bound to a porous body (Yoshitome, Abstract; p. 3, Paragraph 4).
In light of the motivation of modifying the surface of the alumina with n-octadecyltrimethoxysilane in a weight ratio of 3:1 with the composite as disclosed by Yoshitome, it therefore would have been obvious to one of ordinary skill in the art to modify the carbon dioxide adsorbent of Darunte by modifying the surface of the alumina and thereby coating the adsorbent in n-octadecyltrimethoxysilane in order to provide a useful hydrophobic adsorbent capable of maintaining adsorbing performance without closing pores of a porous body, having excellent repeated desorbing performance and exhibiting excellent adsorbing performance in a highly humid condition, and thereby arrive at the claimed invention.
Given that Darunte in view of Yoshitome discloses the carbon dioxide adsorbent that overlaps the presently claimed carbon dioxide adsorbent, including n-octadecyltrimethoxysilane that corresponds to n-octadecyltrimethoxysilane of the present claims, it therefore would be obvious to one of ordinary skill in the art, to use the n-octadecyltrimethoxysilane, which is both disclosed by Darunte in view of Yoshitome and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
With respect to the difference (b), Woo Lee teaches diamine-functionalization of a metal-organic framework adsorbent for carbon dioxide adsorption (Woo Lee, Abstract). Woo Lee specifically teaches the diamines include N-ethylethylenediamine (een) (Woo Lee, Abstract).
As Woo Lee expressly teaches, the essential properties of working capacity, desorption temperature, desorption characteristics, and initial adsorption rate can be tuned by changing the diamine structure (Woo Lee, p. 1705, Conclusions). And further expressly teaches among the metal-organic framework adsorbents, results from the adsorption performances, kinetics, and stabilities suggest that 1-een (i.e., N-ethylethylenediamine) is a promising candidate as a solid sorbent for CO2 capture (Woo Lee, p. 1706, Conclusions).
Woo Lee is analogous art as it is drawn to carbon dioxide adsorbents comprising an amine-functionalized metal-organic framework (Woo Lee, Abstract).
In light of the motivation of functionalizing the MOF with N-ethylethylenediamine as disclosed by Woo Lee, it therefore would have been obvious to one of ordinary skill in the art to modify the MOF of Darunte by functionalizing it with N-ethylethylenediamine in order to tune the desorption temperature, desorption characteristics, initial adsorption rate, and have superior adsorption performance, kinetics, and stabilities, and thereby arrive at the claimed invention.
Further, although Darunte, in view of Yoshitome and Woo Lee, does not explicitly teach the reaction time between the hydrophobic silane and the composite is 72 hours as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Darunte, in view of Yoshitome and Woo Lee, meets the requirements of the claimed product, Darunte, in view of Yoshitome and Woo Lee, clearly meets the requirements of the present claim.
Claims 8 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kizzie et al. (“Effect of Humidity on the Performance of Microporous Coordination Polymers as Adsorbents for CO2 Capture”, 2011) (Kizzie), in view of Choi et al. (“Modification of the Mg/DOBDC MOF with Amines to Enhance CO2 Adsorption from Ultradilute Gases”, 2012) (Choi) and Yoshitome.
Regarding claim 8, Kizzie teaches CO2-capture performance of microporous coordination polymers of the M/DOBDC series, where M = Ni and dobdc is 2,5-dioxido-1,4-benzenedicarboxylate (Kizzie, Abstract).
However, Kizzie does not explicitly teach (a) an amine-functionalized MOF, wherein the amine is ethylene diamine or 1-methylehtylene diamine; (b) an alumina composite, wherein aluminum oxide is bound to the metal ions of the amine-functionalized porous MOF; or (c) wherein the surface of the composite is coated with a hydrophobic silane.
With respect to the difference (a), Choi teaches modification of Mg/DOBDC MOF with amines (Choi, Title; Abstract). Choi specifically teaches modifying the MOF with ethylene diamine (Choi, Abstract).
As Choi expressly teaches, the simple modification with ethylene diamine substantially improved its CO2 adsorption properties at low CO2 partial pressures. The modified MOF had both improved CO2 adsorption capacity at ultradilute CO2 partial pressures and increased stability/regenerability, being cycled four times with identical adsorption capacities (Choi, p. 1139, Col. 1, last paragraph).
Choi is analogous art as it is drawn to CO2 adsorption catalysts using the dobdc MOF (Choi, Abstract).
In light of the motivation of modifying the dobdc MOF with ethylene diamine as disclosed by Choi, it therefore would have been obvious to one of ordinary skill in the art to modify the MOF of Kizzie by functionalizing with ethylene diamine in order to improve its CO2 adsorption properties at low CO2 partial pressures, and thereby arrive at the claimed invention.
With respect to the differences (b) and (c), Yoshitome teaches a hydrophobic adsorbent obtained by attaching hydrophobic metal oxide particles subjected to surface modification with a silicon compound to the porous body (Yoshitome, Abstract), wherein the surface of the porous body is hydrophobized (i.e., coated) (Yoshitome, p. 1, Technical-Field) and wherein the hydrophobic metal oxide particles are formed by surface modification with a silicon compound (Yoshitome, p. 3, Paragraph 10) which is indicated by a formula (1), which is R-Si(CH)(-X), wherein R indicates a 1-18C alkyl group, a 2-4C alkenyl group, a 2-3C alkynyl group, or a 6-8C aryl group, X indicates a 1-3C alkoxy group, C indicates a carbon atom, H indicates a hydrogen atom, Si indicates a silicon atom and n indicates 0-2 (Yoshitome, Abstract) (i.e., hydrophobic silane). Yoshitome further teaches wherein the metal oxide particles may include alumina (Yoshitome, p. 3, Paragraph 4) and the porous body is not particularly limited as long as it has a large number of fine pores (Yoshitome, p. 4, Paragraph 7).
As Yoshitome expressly teaches, the hydrophobic metal oxide particles surface-modified with a silicon compound attached to the porous body provides a useful hydrophobic adsorbent capable of maintaining adsorbing performance without closing pores of a porous body, having excellent repeated desorbing performance and exhibiting excellent adsorbing performance in a highly humid condition (Yoshitome, Abstract).
Yoshitome is analogous art as it is drawn to porous adsorbents comprising alumina bound to a porous body (Yoshitome, Abstract; p. 3, Paragraph 4).
In light of the motivation of attaching a hydrophobized alumina surface-modified with a silicon compound of Formula 1 as disclosed by Yoshitome, it therefore would have been obvious to one of ordinary skill in the art to modify the carbon dioxide adsorbent of Kizzie by attaching hydrophobic metal oxide particles subjected to surface modification with a silicon compound of Formula 1 of Yoshitome and thereby coating the MOF of Kizzie with the hydrophobic silane, in order to provide a useful hydrophobic adsorbent capable of maintaining adsorbing performance without closing pores of a porous body, having excellent repeated desorbing performance and exhibiting excellent adsorbing performance in a highly humid condition, and thereby arrive at the claimed invention.
Given that that Kizzie, in view of Yoshitome, discloses the carbon dioxide adsorbent that overlaps the presently claimed carbon dioxide adsorbent, including alumina bound to the porous body, i.e., MOF of Kizzie, it therefore would be obvious to one of ordinary skill in the art, to use the alumina, which is both disclosed by Kizzie, in view of Yoshitome, and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Regarding claims 11 and 12, Kizzie, in view of Choi and Yoshitome, teaches the carbon dioxide adsorbent according to claim 8, wherein the silicon compound is indicated by a formula (1), which is R-Si(CH)(-X), wherein R indicates a 1-18C alkyl group, a 2-4C alkenyl group, a 2-3C alkynyl group, or a 6-8C aryl group, X indicates a 1-3C alkoxy group, C indicates a carbon atom, H indicates a hydrogen atom, Si indicates a silicon atom and n indicates 0-2 (Yoshitome, Abstract) and corresponds to Formula 3 and Formulae 4 to 9. Lee, in view of Yoshitome, specifically teaches examples of silicon compounds of Formula 1 include hexyltrimethoxysilane (i.e., corresponds to Formula 4), n-octyltrimethoxysilane (i.e., corresponds to Formula 5), and n-dodecyltrimethoxysilane (i.e., corresponds to Formula 7) (Yoshitome, p. 2, Last Paragraph; p. 3, Paragraph 1).
Regarding claim 13, Kizzie, in view of Choi and Yoshitome, teaches the carbon dioxide adsorbent according to claim 8, wherein the amount of silicon compound relative to the metal oxide particles is preferably 0.01 to 10.0 mmol relative to 1 g of the metal oxide particles (Yoshitome, p. 3, last paragraph), and wherein in Example 1, n-octadecyltrimethoxysilane (i.e., hydrophobic silane) is added in an amount of 8 mmol or 3 g (i.e., molecular weight is 375 g/mol, 0.008 mol x 375 g/mol = 3 g) (Yoshitome, p. 6, Production Example 1). Therefore, the weight ratio of hydrophobic silane coating to the composite is 3:1, which falls within the claimed range.
Claims 14 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Milner et al. (“Overcoming double-step CO2 adsorption and minimizing water co-adsorption in bulky diamine appended variants of Mg2(dobpdc)”) (Milner), in view of Yoshitome.
Regarding claim 14, Milner teaches diamine appended Mg2(dotpdc), wherein dotpdc is 4,4”-dioxido-[1,1’:4’,1”-terphenyl]-3,3”-dicarboxylate) (Milner, Abstract).
However, Milner does not explicitly teach (a) an alumina composite, wherein aluminum oxide is bound to the metal ions of the amine-functionalized porous MOF; (b) wherein the surface of the composite is coated with a hydrophobic silane; or (c) wherein the amine is 1-methylethylenediamine, or 1,1-dimethylethylenediamine.
With respect to the differences (a) and (b), Yoshitome teaches a hydrophobic adsorbent obtained by attaching hydrophobic metal oxide particles subjected to surface modification with a silicon compound to the porous body (Yoshitome, Abstract), wherein the surface of the porous body is hydrophobized (i.e., coated) (Yoshitome, p. 1, Technical-Field) and wherein the hydrophobic metal oxide particles are formed by surface modification with a silicon compound (Yoshitome, p. 3, Paragraph 10) which is indicated by a formula (1), which is R-Si(CH)(-X), wherein R indicates a 1-18C alkyl group, a 2-4C alkenyl group, a 2-3C alkynyl group, or a 6-8C aryl group, X indicates a 1-3C alkoxy group, C indicates a carbon atom, H indicates a hydrogen atom, Si indicates a silicon atom and n indicates 0-2 (Yoshitome, Abstract) (i.e., hydrophobic silane). Yoshitome further teaches wherein the metal oxide particles may include alumina (Yoshitome, p. 3, Paragraph 4) and the porous body is not particularly limited as long as it has a large number of fine pores (Yoshitome, p. 4, Paragraph 7).
As Yoshitome expressly teaches, the hydrophobic metal oxide particles surface-modified with a silicon compound attached to the porous body provides a useful hydrophobic adsorbent capable of maintaining adsorbing performance without closing pores of a porous body, having excellent repeated desorbing performance and exhibiting excellent adsorbing performance in a highly humid condition (Yoshitome, Abstract).
Yoshitome is analogous art as it is drawn to porous adsorbents comprising alumina bound to a porous body (Yoshitome, Abstract; p. 3, Paragraph 4).
In light of the motivation of attaching a hydrophobized alumina surface-modified with a silicon compound of Formula 1 as disclosed by Yoshitome, it therefore would have been obvious to one of ordinary skill in the art to modify the carbon dioxide adsorbent of Milner by attaching hydrophobic metal oxide particles subjected to surface modification with a silicon compound of Formula 1 of Yoshitome and thereby coating the MOF of Milner with the hydrophobic silane, in order to provide a useful hydrophobic adsorbent capable of maintaining adsorbing performance without closing pores of a porous body, having excellent repeated desorbing performance and exhibiting excellent adsorbing performance in a highly humid condition, and thereby arrive at the claimed invention.
Given that that Milner, in view of Yoshitome, discloses the carbon dioxide adsorbent that overlaps the presently claimed carbon dioxide adsorbent, including alumina bound to the porous body, i.e., MOF of Milner, it therefore would be obvious to one of ordinary skill in the art, to use the alumina, which is both disclosed by Milner, in view of Yoshitome, and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
With respect to the difference (c), Woo Lee teaches diamine-functionalization of a metal-organic framework adsorbent for carbon dioxide adsorption (Woo Lee, Abstract). Woo Lee specifically teaches the diamines include methylethylenediamine (Woo Lee, p. 1696, Col. 1, Paragraph 1).
As Woo Lee expressly teaches, the existence of bulky substituents on the diamines improves the framework stability upon exposure to O2, SO2, and water vapor, relevant to real flue-gas conditions (Woo Lee, Abstract), and wherein the essential properties of working capacity, desorption temperature, desorption characteristics, and initial adsorption rate can be tuned by changing the diamine structure (Woo Lee, p. 1705, Conclusions).
Woo Lee is analogous art as it is drawn to carbon dioxide adsorbents comprising an amine-functionalized metal-organic framework (Woo Lee, Abstract).
In light of the motivation of functionalizing the MOF with methylethylenediamine as disclosed by Woo Lee, it therefore would have been obvious to one of ordinary skill in the art to modify the MOF of Darunte by functionalizing it with methylethylenediamine in order to improve the framework stability upon exposure to O2, SO2, and water vapor, and to tune the desorption temperature, desorption characteristics, initial adsorption rate, and have superior adsorption performance, kinetics, and stabilities, and thereby arrive at the claimed invention.
Regarding claims 17 and 18, Milner, in view of Yoshitome and Woo Lee, teaches the carbon dioxide adsorbent of claim 14, wherein the silicon compound is indicated by a formula (1), which is R-Si(CH)(-X), wherein R indicates a 1-18C alkyl group, a 2-4C alkenyl group, a 2-3C alkynyl group, or a 6-8C aryl group, X indicates a 1-3C alkoxy group, C indicates a carbon atom, H indicates a hydrogen atom, Si indicates a silicon atom and n indicates 0-2 (Yoshitome, Abstract) and corresponds to Formula 3 and Formulae 4 to 9. Lee, in view of Yoshitome, specifically teaches examples of silicon compounds of Formula 1 include hexyltrimethoxysilane (i.e., corresponds to Formula 4), n-octyltrimethoxysilane (i.e., corresponds to Formula 5), and n-dodecyltrimethoxysilane (i.e., corresponds to Formula 7) (Yoshitome, p. 2, Last Paragraph; p. 3, Paragraph 1).
Regarding claim 19, Milner, in view of Yoshitome and Woo Lee, teaches the carbon dioxide adsorbent of claim 14, wherein the amount of silicon compound relative to the metal oxide particles is preferably 0.01 to 10.0 mmol relative to 1 g of the metal oxide particles (Yoshitome, p. 3, last paragraph), and wherein in Example 1, n-octadecyltrimethoxysilane (i.e., hydrophobic silane) is added in an amount of 8 mmol or 3 g (i.e., molecular weight is 375 g/mol, 0.008 mol x 375 g/mol = 3 g) (Yoshitome, p. 6, Production Example 1). Therefore, the weight ratio of hydrophobic silane coating to the composite is 3:1, which falls within the claimed range.
Response to Arguments
Applicant primarily argues:
“No Motivation to Combine - Fundamentally Incompatible Structures, Process sequences, and End-uses (In re Lee; In re Clay)
The claimed invention requires a specific integrated particulate composite formed by (i) ball-milling Mg2(dobpdc) powder with alumina sol and spray-drying to create spherical particles, in which Al2O3 is bound to the metal ions of the MOF, (ii) amine-functionalizing that composite with N-ethylethylenediamine, and (iii) coating the surface of the pre-formed amine- functionalized composite with octadecyl(trimethoxy)silane at the precise weight ratio in the specific reaction time. See e.g., page 10, line 19-page 11, line 14 of the instant specification and Figs. 1-2. This architecture is expressly designed to deliver mechanical strength and water stability in a real fluidized-bed process. See e.g., page 14, line 28-page 15, line 3 of the instant specification.
In contrast,
i) Darunte teaches a cordierite monolith wash-coated with a-alumina + hydrothermal film
growth of Mg2(dobpdc) for a fixed-bed structured contactor. See e.g., Darunte, page
17045;
ii) Yoshitome teaches modifying separate alumina particles with silane first, then
attaching those pre-hydrophobized particles to a generic porous body, i.e., the exact
reverse order compared to the claimed invention. See e.g., Yoshitome, Abstract, page
3; and
iii) Woo Lee grafts een onto bare Mg2(dobpdc) with no alumina and no silane.
Therefore, one having ordinary skill in the art would have no motivation to destroy Darunte's monolith, reverse Yoshitome's pre-silanization sequence, or combine these
teachings for fluidized-bed use. In re Lee, 277 F.3d 1338, 1343 (Fed. Cir. 2002) (examiner must articulate a reason with rational underpinning; mere possibility of combination is insufficient); In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992) (no motivation to combine references from "disparate" fields or with incompatible structures).
Therefore, Applicant respectfully submits that nothing in Darunte, Yoshitome, and Woo Lee suggests or hints at the claimed carbon dioxide adsorbent.”
Remarks, p. 8-9
The examiner respectfully traverses as follows:
Firstly, while applicant argues that Darunte, in view of Yoshitome and Woo Lee, does not teach the method of making the adsorbent as presently claimed, the examiner notes the claims are drawn to a product, not to a method of making. Therefore, as Darunte, in view of Yoshitome and Woo Lee, teaches the product that is substantially identical to the claimed product, Darunte, in view of Yoshitome and Woo Lee, meets the requirements of the present claim, absent evidence to the contrary.
Secondly, Yoshitome is only used as teaching reference in order to teach the surface of the composite is coated with a hydrophobic silane and wherein the hydrophobic silane is octadecyl(trimethoxy)silane and wherein the hydrophobic silane is coated in an amount corresponding to a weight ratio of 3:1; not to teach the method of coating or the method of attaching the silane coated alumina. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Thirdly, Woo Lee is only used as teaching reference in order to teach N-ethylethylenediamine (een) as the amine in Darunte, not the process of grafting the een onto the MOF. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Finally, while the applicant argues that the adsorbent is for fluidized bed use, the claims do not require the adsorbent to be for a fluidized bed. Further, even if the claims did recite “a carbon dioxide adsorbent for use in a fluidized bed”, this is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Darunte, in view of Yoshitome and Woo Lee, discloses the adsorbent as presently claimed, it is clear that the adsorbent of Darunte, in view of Yoshitome and Woo Lee, would be capable of performing the intended use, i.e., in a fluidized bed, as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Applicant further argues:
“Teaching Away and Lack of Reasonable Expectation of Success (In re Gurley; In re O'Farrell)
Yoshitome expressly teaches silanizing alumina particles first. See e.g., page 3, 10 of Yoshitome. This teaches away from applying silane after amine functionalization on a pre-formed MOF/alumina composite, as doing so would risk blocking open metal sites critical for CO2 capture (Spec., p. 7). In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) ("A reference may be said to teach away when a person of ordinary skill ... would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.").
Furthermore, there is no reasonable expectation of success in arriving at the claimed invention. In re O'Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988) (obviousness requires "a reasonable expectation of success" in combining/modifying the prior art). Darunte's film-on- monolith would be destroyed by Yoshitome's particle-attachment method, and Woo Lee provides no guidance on composites.”
Remarks, p. 9
The examiner respectfully traverses as follows:
Firstly, the examiner notes the claims are drawn to a product and not to a method of making. Therefore, whether Yoshitome teaches a different method of coating the hydrophobic silane on the composite than how the claimed composite is formed, as the final adsorbent of Durante, in view of Yoshitome and Woo Lee, is substantially identical to the claimed adsorbent, it meets the limitations of the present claims.
Secondly, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding how applying silane after amine functionalization on a pre-formed MOF/alumina composite would risk blocking open metal sites critical for CO2 capture must be supported by a declaration or affidavit. As set forth in MPEP 716.01(c), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
While the applicant points to page 7 of the specification for support, page 7 of the specification does not say anything about blocking open metal sites if the silane is applied after the amine functionalization, rather it states:
“The introduction of the high-density amino groups leads to a marked improvement in the enthalpy of adsorption through the interaction between the amino groups and the carbon atoms of CO2 molecules. This amine functionalization is achieved by grafting the amino groups onto the open metal sites of the porous metal-organic framework.”
Thirdly, Yoshitome is only used as teaching reference in order to teach the surface of the composite is coated with a hydrophobic silane and wherein the hydrophobic silane is octadecyl(trimethoxy)silane and wherein the hydrophobic silane is coated in an amount corresponding to a weight ratio of 3:1; not to teach the method of coating or the method of attaching the silane coated alumina. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Finally, as Durante, in view of Yoshitome and Woo Lee, teaches the adsorbents that are substantially identical to the claimed adsorbent, it is the examiner’s position that there is a reasonable expectation of success.
Applicant further argues:
“Criticality of the Recited Ratio and Unexpected Results (In re Corkill; In re Soni)
As a general matter, "A greater than expected result is an evidentiary factor pertinent to the legal conclusion of obviousness... of the claims at issue." In re Corkill, 711 F.2d 1496, 226 USPQ 1005 (Fed. Cir. 1985). Rebuttal evidence and arguments can be presented in the specification, In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995).
…
Applicant has amended claim 1 to be commensurate in scope with the objective
evidence provided in the specification, in the interest of expediting prosecution. Claim 1, as amended, recites, in part, "wherein the porous metal-organic framework is Mg2(dobpdc) ... wherein the hydrophobic silane is coated in an amount corresponding to a weight ratio of 3:1 to 4:1 to the composite when a reaction time between the hydrophobic silane and the composite is 72 hours, or the hydrophobic silane is coated in an amount corresponding to a weight ratio of 5:1 to the composite when the reaction time between the hydrophobic silane and the composite is 48 hours."
For example, Fig. 1 shows ratios <3:1 produce no measurable contact angle even after 72 h, whereas the claimed range enables rapid, durable hydrophobicity (Figs. 1-2). The coated composite exhibits dramatically reduced water adsorption (Fig. 12), long-term structural stability in water (Fig. 13: uncoated collapses; coated remains crystalline), and retained CO2 capacity/cyclability (Figs. 8, 10-11) under humid flue-gas conditions.
These results are unexpected and commensurate in scope with the claims. In re
Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) ("When an applicant demonstrates substantially improved results ... and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary."); In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (unexpected results rebut prima facie obviousness).
Therefore, Applicant respectfully submits that Darunte, Yoshitome, and Woo Lee fail to establish a prima facie case of obviousness of claim 1.”
Remarks, p. 9-10
The examiner respectfully traverses as follows:
As Yoshitome teaches a coating with weight ratio of hydrophobic silane to the composite being 3:1 as disclosed above in item #9, it is clear that the adsorbent of Durante, in view of Yoshitome and Woo Lee, would exhibit the same results.
It is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Further, the recitation that the weight ratios are dependent on reaction time is a product by process limitation. As the adsorbent of Durante, in view of Yoshitome and Woo Lee, is substantially identical to the claimed adsorbent, including a weight ratio of hydrophobic silane to composite being 3:1, it meets the limitations of the present claims.
Applicant further argues:
“Applicant respectfully submits that Lee, Yoshitome, and Woo Lee are insufficient to establish a prima facie case of obviousness of claim 8 at least because Lee, Yoshitome, and Woo Lee fail to disclose or suggest every claimed feature.
Applicant has amended claim 8 in the interest of expediting prosecution. Claim 8, as amended, recites, in part, "wherein the porous metal-organic framework is selected from the group consisting of M2(dobpdc), M2(dobdc), M2(m-dobdc), M2(dondc), and M2(dotpdc) where M is Ti, V, Cr, Ni, or Cu."
Applicant respectfully submits that Lee, Yoshitome, and Woo Lee fail to disclose or
suggest at least the above features, when taken in the context of the claim as a whole as they must be.”
Remarks, p. 11
The examiner respectfully traverses as follows:
In view of applicant’s amendments, the examiner agrees Lee, in view of Yoshitome and Woo Lee, does not meet the present claims. A new set of rejection over Kizzie, in view of Choi and Yoshitome, is set forth above.
Applicant further argues:
“Applicant respectfully submits that Choi, Yoshitome, and Woo Lee are insufficient to
establish a prima facie case of obviousness of claim 14 at least because Choi, Yoshitome, and Woo Lee fail to disclose or suggest every claimed feature.
Applicant has amended claim 14 in the interest of expediting prosecution. Claim 14, as amended, recites, in part, "wherein the porous metal-organic framework is selected from the group consisting of M2(m-dobdc), M2(dondc), and M2(dotpdc)."
Applicant respectfully submits that Choi, Yoshitome, and Woo Lee fail to disclose or
suggest at least the above features, when taken in the context of the claim as a whole as they must be.”
Remarks, p. 12
The examiner respectfully traverses as follows:
In view of applicant’s amendments, the examiner agrees Choi, in view of Yoshitome and Woo Lee, does not meet the present claims. A new set of rejection over Milner in view of Yoshitome and Woo Lee is set forth above.
Conclusion
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
