DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment filed on 10/09/2025 has been entered. Claims 1, 3, 5-13 are pending in the application.
Response to Arguments
Applicant’s arguments with respect to claims 1-7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jo et al. ("Antibacterial activities of Cu-MOFs containing glutarates and bipyridyl ligands").
Regarding claim 1, Jo discloses crystalline nanoporous metal–organic frameworks (MOFs) are continuously attracting much attention in a wide range of applications such as storage of energy-related gases (H2 and CH4), CO2 capture/separation… (Pg. 8084 left column par. 1 meeting limitation “sorbent material”). Four three-dimensional (3D) Cu-MOFs formulated as [Cu2(Glu)2(μ-L)]·x(H2O) (Glu is glutarate, and L is bpy = 4,4’-bipyridine (abstract). Preparation of [Cu2(Glu)2(bpy)]·3H2O… after cooling to room temperature, turquoise block crystals were retrieved by filtration (Pg. 8091 left col. par. 2 meeting limitation “a sorbent pellet comprising a sorbent material; wherein the sorbent material is a metal-organic material comprising metal species and ligands; and wherein the ligands are selected from 4,4’-bipyridine…”).
Jo further discloses in Table 1 crystallographic data for MOFs 1-4 including density for MOF 1 as 1.660 Mg m-3 (Pg. 8085) which is equivalent to 1.660 g/cm3 which falls within the claimed range of at least 0.8 g/cm3.
Regarding claim 3, Jo discloses all the limitations in the claims as set forth above including wherein the metal species is copper.
Regarding claim 5, Jo discloses all the limitations in the claims as set forth above including wherein the sorbent material is of [Cu2(Glu)2(bpy)]·3H2O (Pg. 8091 left col. par. 2).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Jo et al. ("Antibacterial activities of Cu-MOFs containing glutarates and bipyridyl ligands") in view of Wilmer et al (WO 2013058845 A1).
Regarding claim 6, Jo discloses all the limitations in the claims as set forth above but is silent to “wherein the sorbent pellet comprises up to 10 wt.% of a binder”.
Wilmer discloses MOFs with an inorganic metal center block component and one or more organic linker/ligand block components ([0036]). Such compositions can include one or more MOF and a binder… for converting the MOF into a paste ([00155]). Such compositions can be processed to form a shaped body… such as pellets ([00155]). Such a composition can then be used as a means of storing gas, by exposing the composition to a gas and allowing the MOF of the composition to uptake gas ([00155]). The binder may have a concentration of from 0.1 to 20% by weight ([00156]).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In the instant case, the range taught by Wilmer (from 0.1 to 20% by weight) overlaps with the claimed range (up to 10 wt.%). Therefore, the range in Wilmer renders obvious the claimed range.
Thus, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art for the sorbent pellet to comprise up to 10 wt.% of a binder in the composition of Jo in order to be able to shape the MOF into a pellet as taught by Wilmer.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Jo et al. ("Antibacterial activities of Cu-MOFs containing glutarates and bipyridyl ligands"), in view of Schubert et al (US 20110011805 A1, cited in IDS 09/23/2022).
Jo discloses all the limitations in the claims as set forth above but is silent to “wherein a largest dimension of the sorbent pellet is from 0.5 mm to 10 cm”.
Schubert discloses the use of porous metal organic frameworks as desiccants ([0001]), where the metal organic framework is a shaped body ([0056]). Preferred forms are pellets… the shaped bodies preferably have an extension in at least one direction in space in the range from 0.2 mm to 30 mm ([0059]).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In the instant case, the range taught by Schubert (from 0.2 mm to 30 mm) overlaps with the claimed range (from 0.5 mm to 10 cm). Therefore, the range in Schubert renders obvious the claimed range.
Thus, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art for the largest dimension of the sorbent pellet to be from 0.5 mm to 10 cm in the composition of Jo in order for the sorbent pellet to have a preferred geometry for use as an absorbent as suggested by Schubert.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
/N.L.Q./Examiner, Art Unit 1738
/MICHAEL FORREST/Primary Examiner, Art Unit 1738