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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/2/26 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3-8, 18-20, and 29-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bazer-Bachi et al. (WO 2014/135783) (English machine translation for citation) [IDS 5/24/22] in view of Stein et al. (US 2010/0126344), when taken with Bazer-Bachi, D.; Assié, L.; Lecocq, V.; Harbuzaru, B.; Falk, V. Powder Technol. 2014, 255, 52. [IDS 5/24/22].
Regarding claims 1, 3-8 and 29-30: Bazer-Bachi et al. (WO ‘783) discloses organic-inorganic materials containing a polymeric binder [abstract], wherein Example 3 [Ex. 3; 0082-0093; Table 2, Ex. 3] prepares a composition containing 8.25 wt% polyvinylpyrrolidone (PVP) and 91.75 wt% ZIF-8 (Zn2+/2-methyl imidazole). The composition was extruded into a rod [Ex. 3; 0082-0093; Table 2, Ex. 3].
Bazer-Bachi et al. (WO ‘783) does not disclose a polyvinyl ester as the binder. However Stein et al. (US ‘344) discloses metal organic frameworks [abstract; 0186-0195] comprising polymeric binders [0084-0109] such as polyvinyl acetate [0093; 0107; 0109; 0126], polyvinyl pyrrolidone [0126], polyvinyl alcohol, and partially hydrolyzed polyvinyl acetate [0126]. Bazer-Bachi et al. (WO ‘783) and Stein et al. (US ‘344) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of compositions containing metal organic frameworks and polymeric binders. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined polyvinyl acetate, polyvinyl alcohol, and/or partially hydrolyzed polyvinyl acetate, as taught by Stein et al. (US ‘344) in the invention of Bazer-Bachi et al. (WO ‘783), and would have been motivated to do so since Stein et al. (US ‘344) suggests polyvinyl pyrrolidone, polyvinyl acetate, polyvinyl alcohol, and/or partially hydrolyzed polyvinyl acetate as equivalent polymeric binders [0084; 0126] [see also MPEP 2144.06].
The claimed effects and physical properties, i.e. a bulk crush strength of about 6 lb-force or greater [instant claim 1], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Bazer-Bachi et al. (Powder Technol. 2014, 255, 52) provides evidence for ZIF-8 as Zn2+/2-methyl imidazole [§2.1]
Regarding claims 18-20: Bazer-Bachi et al. (WO ‘783) discloses the basic claimed composition [as set forth above with respect to claim 1].
The claimed effects and physical properties, i.e. a comparative BET surface area of from about 70% to about 100% [instant claim 18]; a porosity of from about 70% to about 100% of the metal-organic framework material [instant claim 19]; a pore size of from about 2 Å to about 25 Å [instant claim 20], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Response to Arguments
Applicant's arguments filed 2/2/26 have been fully considered but they are not persuasive. The rejection of claims based upon Bazer-Bachi et al. (WO 2014/135783) and Stein et al. (US 2010/0126344) is maintained.
Bazer-Bachi et al. (WO 2014/135783) (English machine translation for citation) was relied on for disclosing organic-inorganic materials containing a polymeric binder [abstract], wherein Example 3 [Ex. 3; 0082-0093; Table 2, Ex. 3] prepares a composition containing 8.25 wt% polyvinylpyrrolidone (PVP) and 91.75 wt% ZIF-8 (Zn2+/2-methyl imidazole). The composition was extruded into a rod [Ex. 3; 0082-0093; Table 2, Ex. 3].
Stein et al. (US 2010/0126344) was relied on for disclosing metal organic frameworks [abstract; 0186-0195] comprising polymeric binders [0084-0109] such as polyvinyl acetate [0093; 0107; 0109; 0126], polyvinyl pyrrolidone [0126], polyvinyl alcohol, and partially hydrolyzed polyvinyl acetate [0126].
While Table 4 {i.e. polyvinyl acetate (PVAc) and polyvinyl alcohol (PVA)} appears to provide unexpected results over Tables 1-2 {i.e. PVP or Methocel (hydroxypropyl methyl cellulose)}, however, the examples in Table 4 represent specific compositions and are not commensurate in scope with the breadth of compositions included in claim 1. It is unclear if the combination and the specific amounts of polyvinyl acetate and polyvinyl alcohol provide the unexpected results, or if any amount of polyvinyl acetate and polyvinyl alcohol yield comparable results. Additionally, the specific polyvinyl ester (polyvinyl acetate) is of narrower scope than the broad genus of polyvinyl ester listed in claim 1.
As the data in Table 4 was obtained from compositions of narrower scope of claim 1, it is not possible for the examiner to conclude the data from Table 4 represents unexpected results over the prior art of record [see also MPEP 716.01(c), 716.02(d), 2145; In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972)].
Additionally, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) [see MPEP 716.02(d)]. See also In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972).
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) [See MPEP 716.02(d)].
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767