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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/29/2025 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.
Claims 1-2 are 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) n 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).
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 selected from the compounds represented by Formulae 4 to 9, (b) wherein the hydrophobic silane is coated in an amount corresponding to a weight ratio of 3:1 to 5:1 to the composite, or (c) wherein the amine is represented by Formula 1 or the amine is ethylenediamine, 1-methylethylenediamine, or N-ethylethylenediamine.
With respect to the difference (a), 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) (i.e., corresponds to Formulae 4 through 9); and the formula specifically includes 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), 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).
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 the silicon compounds 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 Darunte by modifying the surface of the alumina and thereby coating the adsorbent in silicon compounds of Formula 1 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 Formula 1 of Yoshitome that corresponds to Formulae 4 to 9 of the present claims, it therefore would be obvious to one of ordinary skill in the art, to use the compounds of Formulae 4 to 9, 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), Yoshitome teaches the hydrophobic metal oxide particles are formed by subjecting the metal oxide particles to surface modification with a silicon compound (Yoshitome, p. 3, Paragraph 10) followed by the addition of these metal oxides to the porous body to form an 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).
Although there are no disclosures on the amounts of hydrophobic silane to weight of the composite being 3:1 to 5:1 as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of silicon compound (i.e., hydrophobic silane) surface-modifying the metal oxide particles which then modify the porous body, including over the amounts presently claimed, in order to result in a sufficiently hydrophobized porous body 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.
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 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 Durante 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.
Regarding claim 2, Darunte, in view of Yoshitome and Woo Lee, teaches the carbon dioxide adsorbent according to claim 1, wherein the metal organic framework is M2(dobpdc) (M = Mg and Mn) (Darunte, Abstract).
Claims 8 and 11-13, are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (“Enhancement of CO2 binding and mechanical properties upon diamine functionalization of M2(dobpdc) metal-organic framework”, 2018) (Lee) in view of Yoshitome and Woo Lee.
Regarding claim 8, Lee teaches a diamine-appended metal-organic framework exemplified by compounds of the type mmen-M2(dobpdc) (mmen = N,N’-dimethylethylenediamine; M = Fe, Co, Zn and dobpdc = 4,4’-dioxidobiphenyl-3,3’-dicarboxylate) as adsorbents with significant potential for carbon capture due to their high working capacities and strong selectivity for CO2 (Lee, Abstract) (i.e., a carbon dioxide adsorbent comprising an amine-functionalized metal-organic framework; wherein the porous metal organic framework is M2(dobpdc) and dobpdc = 4,4’-dioxidobiphenyl-3,3’-dicarboxylate).
However, Lee does not explicitly teach (a) wherein the composite comprises alumina, specifically aluminum oxide 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 represented by Formula 1 or the amine is ethylenediamine, 1-methylethylenediamine, or N-ethylethylenediamine.
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 Lee 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 Lee 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 Lee, 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 Lee, it therefore would be obvious to one of ordinary skill in the art, to use the alumina, which is both disclosed by Lee, 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 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 Lee 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.
Regarding claims 11 and 12, Lee, in view of Yoshitome and Woo Lee, 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, Lee, in view of Yoshitome, teaches the carbon dioxide adsorbent according to claim 8, wherein the hydrophobic metal oxide particles are formed by subjecting the metal oxide particles to surface modification with a silicon compound (Yoshitome, p. 3, Paragraph 10) followed by the addition of these hydrophobic metal oxides to the porous body to form an 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).
Although there are no disclosures on the amounts of hydrophobic silane to weight of the composite being 3:1 to 5:1 as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of silicon compound (i.e., hydrophobic silane) surface-modifying the metal oxide particles which then modify the porous body, including over the amounts presently claimed, in order to result in a sufficiently hydrophobized porous body 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.
Claims 14 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (“Modification of the Mg/DOBDC MOF with Amines to Enhance CO2 Adsorption from Ultradilute Gases”, 2012) (Choi) in view of Yoshitome and Woo Lee.
Regarding claim 14, Choi teaches an MOF Mg/DOBDC functionalized with ethylene diamine for CO2 adsorption (Choi, Abstract), and wherein Mg/DOBDC is magnesium dioxybenzenedicarboxylate which is a MOF built of Mg(II) ions linked by 2,5-dioxido-1,4-benzenedicarboxylate (DOBDC) ligands (Choi, p. 1136, Col. 2, lines 3-5) (i.e., a carbon dioxide adsorbent comprising an amine-functionalized metal-organic framework; wherein the porous metal-organic framework is M2(dobdc) where M is Mg and dobdc is 2,5-dioxido-1,4-benzenedicarboxylate).
However, Choi does not explicitly teach (a) wherein the composite comprises alumina, specifically aluminum oxide 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 represented by Formula 1 or the amine is 1-methylethylenediamine, 1,1-dimethylethylenediamine, or N-ethylethylenediamine.
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 Choi 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 Choi 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.
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 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 Choi 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 stability, and thereby arrive at the claimed invention.
Regarding claims 17 and 18, Choi, 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. Choi, 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, Choi, in view of Yoshitome and Woo Lee, teaches the carbon dioxide adsorbent according to claim 14, wherein the hydrophobic metal oxide particles are formed by subjecting the metal oxide particles to surface modification with a silicon compound (Yoshitome, p. 3, Paragraph 10) followed by the addition of these hydrophobic metal oxides to the porous body to form an 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).
Although there are no disclosures on the amounts of hydrophobic silane to weight of the composite being 3:1 to 5:1 as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of silicon compound (i.e., hydrophobic silane) surface-modifying the metal oxide particles which then modify the porous body, including over the amounts presently claimed, in order to result in a sufficiently hydrophobized porous body 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.
Response to Arguments
In response to applicant’s cancellation of claims 9, 10, and 11 and amendments to claims 14 and 17, the previous claim objections over claims 11, 14 and 17, and 112(d) rejections over claims 9 and 10 are withdrawn from the record. Further, in response to applicant filing a terminal disclaimer for copendig U.S. Application No. 17/916,272, the previous nonstatutory double patenting rejection is withdrawn from the record.
Applicant primarily argues:
“Applicant has amended claim 1 in the interest of expediting prosecution. Notably, dimethyl ethylene diamine has been deleted from the list of the amine. Applicant respectfully submits that Darunte fails to disclose or suggest "wherein the amine is represented by Formula 1, wherein R1 to R10 are each independently hydrogen or (CH2)m-CH3, n is an integer from 1 to 20, and each m is independently an integer from 0 to 20; or wherein the amine is ethylenediamine, 1-methylethylenediamine, or N-ethylethylenediamine," as recited in claim 1, and Yoshitome fails to cure the deficiencies of Darunte. Therefore, the suggested combination of Darunte and Yoshitome fails to disclose or suggest every claim feature.”
Remarks, p. 10-11
The examiner respectfully traverses as follows:
In response to the amendment regarding the amine is represented by Formula 1 or the amine is ethylenediamine, 1-methylethylenediamine, or N-ethylethylene diamine and based on applicant’s remarks filed on pages 10-11 regarding the 35 U.S.C. 103 rejection over Durante in view of Yoshitome it is agreed that Durante and Yoshitome, alone would not meet the present claims. However, the amendment necessitates a new set of rejection as set forth above using Durante in view of Yoshitome and Woo Lee.
Applicant further argues:
“Applicant has amended claim 8 in the interest of expediting prosecution. Notably, dimethyl ethylene diamine has been deleted from the list of the amine. Applicant respectfully submits that Lee fails to disclose or suggest "wherein the amine is represented by Formula 1, wherein R1 to R10 are each independently hydrogen or (CH2)m-CH3, n is an integer from 1 to 20, and each m is independently an integer from 0 to 20; or wherein the amine is ethylenediamine, 1-methylethylenediamine, or N-ethylethylenediamine," as recited in claim 8, and Yoshitome fails to cure the deficiencies of Lee. Therefore, the suggested combination of Lee and Yoshitome fails to disclose or suggest every claim feature.”
Remarks, p. 12
The examiner respectfully traverses as follows:
In response to the amendment regarding the amine is represented by Formula 1 or the amine is ethylenediamine, 1-methylethylenediamine, or N-ethylethylene diamine and based on applicant’s remarks filed on pages 10-11 regarding the 35 U.S.C. 103 rejection over Lee in view of Yoshitome it is agreed that Lee and Yoshitome, alone would not meet the present claims. However, the amendment necessitates a new set of rejection as set forth above using Lee in view of Yoshitome and Woo Lee.
Applicant further argues:
“Applicant has amended claim 14 in the interest of expediting prosecution. Notably, ethylene diamine has been deleted from the list of the amine. Applicant respectfully submits that Choi fails to disclose or suggest "wherein the amine is represented by Formula 1, wherein R1 to R10 are each independently hydrogen or (CH2)m-CH3, n is an integer from 1 to 20, and each m is independently an integer from 0 to 20; or wherein the amine is ethylenediamine, 1-methylethylenediamine, or N-ethylethylenediamine," as recited in claim 14, and Yoshitome fails to cure the deficiencies of Choi. Therefore, the suggested combination of Choi and Yoshitome fails to disclose or suggest every claim feature.”
Remarks, p. 14
The examiner respectfully traverses as follows:
In response to the amendment regarding the amine is represented by Formula 1 or the amine is the amine is ethylenediamine, 1-methylethylenediamine, or N-ethylethylenediamine and based on applicant’s remarks filed on pages 10-11 regarding the 35 U.S.C. 103 rejection over Choi in view of Yoshitome, it is agreed that Choi and Yoshitome, alone would not meet the present claims. However, the amendment necessitates a new set of rejection as set forth above using Choi in view of Yoshitome and Woo Lee.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Catriona Corallo whose telephone number is (571)272-8957. The examiner can normally be reached Monday-Friday, 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu Fung can be reached at (571)270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
Prosecution Insights