DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 27, and 30 have been amended. Claims 1-26 are cancelled. Claims 27-49 are pending in the instant application. Claims 46-49 remain withdrawn. Claims 27-45 are under examination on the merits.
Response to Amendment
The Amendment by Applicants’ representative Mr. Lawrence E. Carter on 10/29/2025 has been entered.
Response to Arguments/Amendments
Claim rejection under 35 U.S.C.§102(a)(1)
Applicant amended claim 1 by further limiting “wherein the metal-organic framework powder is between about 10 wt.% to about 90 wt.% of the suspension”. Applicant amendment overcomes the rejection because the cited Ramos-Fenandez et al. does not teach the added limitation. The rejection is hereby withdrawn.
Claim rejection under 35 U.S.C.§103(a)
Applicant amended claim 1 by further limiting “wherein the metal-organic framework powder is between about 10 wt.% to about 90 wt.% of the suspension”. In addition, Applicant argued that the mixture in claim 27 requires the presence of existing MOF particles suspended in ethanol, while Rezaei (section 2.2, page 1346) discloses that during ISDC (in-situ dip coating), the support structure is NOT dipped in a mixture that contains suspended MOF. Instead, in Rezaei, a support structure is dip coated into a solution that contains the linker for forming the MOF and the metal for forming the MOF. There is no description or suggestion in Rezaei that MOF particles are present in the solution prior to introducing the substrate. The other cited references cannot cure the above defects in Rezaei plus Ramos- Fernandez because the Kharul '294 reference is not directed to using suspensions of MOF particles, and the Caskey NPL does not appear to be related to MOF supported on a monolith. Applicant’s amendment and argument have been fully considered, and are sufficient to overcome the rejection. The rejection is hereby withdrawn.
The following rejections are necessitated by the amendment filed 10/29/2025:
Claim Rejections - 35 USC § 112 (new)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 27-45 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Specifically, amended claim 27 contains the added term “the metal-organic framework powder”. However, this term lacks antecedent base because claim 27 is drawn to a method of making a metal-organic framework composite comprising the steps of: mixing a metal-organic framework, not “a metal-organic framework powder”. The term “metal-organic framework powder” is not the same one as “metal-organic framework”, but seems to be a further limitation of “metal-organic framework”. Therefore, claim 27 is indefinite. Claims 28-45 depending on claim 27 are rejected, accordingly.
To overcome the rejection, the term “metal-organic framework” should be replaced with “metal-organic framework powder”.
Claim Rejections - 35 USC § 102 (new)
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 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.
Claims 27, and 33-34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN106807330A (” the `330 publication”) to wang et al., published on June 9, 2017.
Applicant’s claim 27 is drawn to a method of making a metal-organic framework composite comprising the steps of: mixing a metal-organic framework with a liquid to produce a suspension, wherein the liquid is ethanol and wherein the metal-organic framework powder is between about 10 wt.% to about 90 wt.% of the suspension; and applying the suspension to a monolith by dip-coating, wash-coating, or solvothermal deposition to produce a metal-organic framework composite having at least one metal-organic framework coating layer deposited on the monolith.
Applicant’s claim 33 is drawn to the method of claim 27, wherein the monolith is selected from the group of ceramic, metal, polymeric substrate and/or cellulosic fiber.
Applicant’s claim 34 is drawn to the method of claim 33, wherein the monolith is ceramic.
Example 3 of the `330 publication [0041-0042, English translation] discloses a method of making a metal-organic framework adsorbent Al-DDC (i.e., metal-organic framework composite) comprising the steps of: mixing 100g of adsorbent powder with 200 mL of ethanol as a solvent under stirring for 0.5 h to for a mixed slurry. Add 50g of epoxy resin adhesive to the mixed slurry and stirred for 2 h to form a uniform coating slurry. The weight proportion of the components in the slurry is adsorbent powder 28.6 wt%, ethanol solvent 57.1 wt%, and adhesive 14.3 wt%. Zirconia fiber cloth (i.e., ceramic monolith foam, see Zirconia Fiber (ZrO2 Ceramic Fiber) Supplier _ Stanford Advanced Materials_downloaded 11142025) was selected as the substrate, and the slurry was uniformed coated on the substrate surface by mechanical spraying (a common method for applying a wash-coating), with a coating thickness of 150 um. The coated substrate is allowed to dry naturally at room temperature for 0.5 h, and then rolled into a cylindrical, integrally structured adsorbent material. Because the method of claim 27 is defined by an open-ended transition “comprising”, the method does not exclude additional adhesive in the mixed slurry. Therefore, the `330 publication anticipates claims 27, and 33-34.
Alternatively, claims 27-45 are rejected under 35 U.S.C. 103 as following:
Claim Rejections - 35 USC § 103 (revised)
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 27-45 are rejected under 35 U.S.C. 103 as being unpatentable over the `330 publication in view of Rezaei et al., Chemical Engineering Journal, (2017), v.313, p.1346-1353, Ramos-Fenandez et al., Applied Catalysis A: General, (2011), v.391, p.261-267, US2015/367,294 (“the `294 publication”) to Kharul et al., and Wikipedia “Solid sorbents for carbon capture_Notable adsorbents [16] Caskey et al., J. Am. Chem. Soc. 2008, 130, 10870-10871”.
Determination of the scope and content of the prior art (MPEP §2141.01)
The `330 publication [0002, English translation] discloses a method for preparing a novel type of monolithic adsorption material for adsorption and separation. The `330 publication [0022] discloses the coating slurry comprises 20-50 wt% metal-organic framework powder, and 40-75 wt% solvent (e.g. ethanol). Example 3 of the `330 publication [0041-0042, English translation] discloses a method of making a metal-organic framework adsorbent Al-DDC (i.e., metal-organic framework composite) comprising the steps of: mixing 100g of adsorbent powder with 200 mL of ethanol as a solvent under stirring for 0.5 h to for a mixed slurry. Add 50g of epoxy resin adhesive to the mixed slurry and stirred for 2 h to form a uniform coating slurry. The weight proportion of the components in the slurry is adsorbent powder 28.6 wt%, ethanol solvent 57.1 wt%, and adhesive 14.3 wt%. Zirconia fiber cloth (i.e., ceramic monolith foam, see Zirconia Fiber (ZrO2 Ceramic Fiber) Supplier _ Stanford Advanced Materials_downloaded 11142025) was selected as the substrate, and the slurry was uniformed coated on the substrate surface by mechanical spraying (a common method for applying a wash-coating), with a coating thickness of 150 um. The coated substrate is allowed to dry naturally at room temperature for 0.5 h, and then rolled into a cylindrical, integrally structured adsorbent material.
Ascertainment of the difference between the prior art and the claims (MPEP §2141.02)
The differences between Applicant’s claim 27 and the `330 publication is that the prior art does not teach the produced suspension containing an adhesive.
Finding of prima facie obviousness--rational and motivation (MPEP §2142-2413)
However, Applicant’s claims 27 would have been obvious over the `330 publication because the method of claim 27 is defined by an open-ended transition “comprising”, the method does not exclude additional adhesive in the mixed slurry, and the step of “applying the suspension to a monolith” would have been obvious for the suspension optionally containing the adhesive disclosed in the `330 publication.
In terms of claim 28, both Rezaei et al. and Ramos-Fenandez et al. teach dip-coating metal-organic framework on the monolith. In addition, Rezaei et al. teaches MOF of USTA-16(Co)-powder has BET 746 m2/g, and pore diameter of 3.3 nm (see Table 2). Ramos-Fenandez et al. discloses dip coating method affords uniform coating of ~9 wt.% inside the monolith channels (see Abstract). Further in light of Applicant’s description of the coating and BET in paragraphs [0082-0083] of the present specification. Therefore, the BET of the dip-coating metal-organic framework on the monolith should be around 67.14 m2/g, which reads on the claimed BET range of about 5 m2/g to about 100 m2/g.
In terms of claims 29-30, both Rezaei et al. and Ramos-Fenandez et al. teach dip-coating metal-organic framework suspension on the monolith, and the suspension does not comprise an acid. In addition, Rezaei et al. teaches MOF of USTA-16(Co)-powder has BET 746 m2/g, and pore diameter of 3.3 nm (see Table 2). Ramos-Fenandez et al. discloses dip coating method affords uniform coating of ~9 wt.% inside the monolith channels (see Abstract).
In terms of claims 31-32, both Rezaei et al. and Ramos-Fenandez et al. teach dip-coating metal-organic framework on the monolith. In addition, the synthetic processes disclosed by Rezaei et al. and Ramos-Fenandez et al. would have rendered claims 31-32 obvious.
In terms of claims 33-34, Rezaei et al. discloses monolithic structures used in gas separation processes obtained by immobilizing different MOFs such as MOF-74 (Ni) and UTSA-16 (Co) on commercial cordierite monolith (600 cpsi). Cordierite monolith is a ceramic, and metal substrate.
In terms of claim 35, the `294 publication (claims 9-10) discloses a method for preparation of Metallic Organic Framework's (MOF)-polymer composite, wherein the polymers are PAN-17 and PSF, which are also polymers.
In terms of claims 36 and 38, wherein the metal-organic framework is HKUST-1, and the monolith comprises alumina, Ramos-Fenandez et al. discloses a method of synthesizing hierarchical structuring metal organic framework catalysts by immobilizing metal organic framework MIL-101(Cr) on a monolithic structure, and the monolith comprises α-alumina (see Procedure B, “2.5 MIL-101(Cr) coated monolith synthesis” at p.262), and coating HKUST-1 on α-alumina supports (see “Introduction”, left column at p.261). In addition, Rezaei et al. discloses monolithic structures used for carbon capture obtained by immobilizing different MOFs such as MOF-74 (Ni).
In terms of claim 37, Rezaei et al. discloses monolithic structures used for carbon capture obtained by immobilizing different MOFs such as MOF-74 (Ni) and UTSA-16 (Co) on commercial cordierite monolith (600 cpsi), wherein cordierite is a ceramic. Rezaei et al. teaches using MOF-74 (Ni), but not Mg-MOF-74. However, MOF-74 (Ni) is an analog of Mg-MOF-74, and are used for the same application, namely carbon capture. It is well-known that Mg-MOF-74 is also used for carbon capture according to Wikipedia “Solid sorbents for carbon capture_Notable adsorbents [16]: Caskey et al., J. Am. Chem. Soc. (2008), v.130, p.10870-10871”. Therefore, one ordinary skilled in the art would be motivated to using Mg-MOF-74 instead of MOF-74 (Ni) for the same application.
In terms of claims 39-45, the claims would have been obvious over the `330 publication, Rezaei et al., Ramos-Fenandez et al., and the `294 publication based on the analysis above.
Conclusions
Claims 27-45 are rejected.
Claims 46-49 are withdrawn.
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 extension fee 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 date of this final action.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
/YONG L CHU/Primary Examiner, Art Unit 1731