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 .
Claim Rejections - 35 USC § 102
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 14,15 and 17-20 rejected under 35 U.S.C. 102(a)(1) as being anticipated by the Baba article in European Journal of Organic Chemistry (2019).
Baba (experimental section page 2373) exemplifies reacting 10mg NiDPP in the presence of 150mg of FeCl3. A porphyrin polymer film is formed on glass and silicon substrates at 1300C. The resulting polymer contains applicant’s formula (I) structure with “M” being Ni(II) and “R” being phenyl (see reference fig 1).
The porosity and density of the porphyrin film is not reported.
However, the 1300C reaction temperature is believed to result in densities below 2g/cm3 (see applicant’s fig 3).
The 150mg FeCl3 supplies 150mg/162g/mol or 0.93mmol oxidant.
NiDPP is calculated to have a MW of ~509g/mol. The 10mg of NiDPP provides 10mg/509g/mol or 0.02mmol monomer.
The mol ratio of oxidant/monomer is therefore 0.93mmol/0.02mmol or 46. This is within applicant’s range (paragraph 30 of spec).
Applicant teaches (fig 6; paragraph 17) that reaction temperature and oxidant/monomer ratio are the critical variables that control porosity (and therefore density)
Given the reference follows applicant’s teaching in regards to oxidant/monomer mole ratio and temperature, it is believed that the reference inherently has the claimed porosity and density.
In regards to applicant’s dependent claims:
Presumably, the pore size of applicant’s claim 17 is met if applicant’s oxidant/monomer ratio is met.
NiDPP dimers are formed (page 2371) which meets applicant’s claim 18.
The film’s conductivity is as high as 4x10-2S/cm (page 2372) – meeting applicant’s claim 19.
Claims 14,15 and 17-20 rejected under 35 U.S.C. 102(a)(1) as being anticipated by the Baba article in European Journal of Organic Chemistry (2019).
Baba (experimental section page 2373) exemplifies reacting 10mg NiDPP in the presence of 250mg of CuCl2. A porphyrin polymer film is formed on glass and silicon substrates at 1300C. The resulting polymer contains applicant’s formula (I) structure with “M” being Ni(II) and “R” being phenyl (see reference fig 1).
The porosity and density of the porphyrin film is not reported.
However, the 1300C reaction temperature is believed to result in densities below 2g/cm3 (see applicant’s fig 3).
The 250mg CuCl2 supplies 250mg/134g/mol or 1.9mmol oxidant.
NiDPP is calculated to have a MW of ~509g/mol. The 10mg of NiDPP provides 10mg/509g/mol or 0.02mmol monomer.
The mol ratio of oxidant/monomer is therefore 1.9mmol/0.02mmol or 95. This is within applicant’s range (paragraph 30 of spec).
Applicant teaches (fig 6; paragraph 17) that reaction temperature and oxidant/monomer ratio are the critical variables that control porosity (and therefore density)
Given the reference follows applicant’s teaching in regards to oxidant/monomer mole ratio and temperature, it is believed that the reference inherently has the claimed porosity and density.
In regards to applicant’s dependent claims:
Presumably, the pore size of applicant’s claim 17 is met if applicant’s oxidant/monomer ratio is met.
NiDPP dimers are formed (page 2371) which meets applicant’s claim 18.
The film’s conductivity is as high as 4x10-2S/cm (page 2372) – meeting applicant’s claim 19.
Claim 16 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The Baba article in European Journal of Organic Chemistry (2019) is limited to Ni as the metal in the porphyrin.
Applicant's arguments filed 2/27/26 have been fully considered but they are not persuasive.
Applicant argues that the hydrogen production capacity is superior when the oxidant/porphyrin ratio (µmol/µmol/) is in a ~35-150 range as shown in fig 7.
This is not convincing. The Baba article exemplifies such oxidant/porphyrin ratios (mol/mol/).
Applicant argues that applicant’s specification should be interpreted as a 35-150 weight ratio of oxidant/porphyrin.
This is not convincing. Applicant’s paragraph 30 explicitly states “… the ratio (r) of the at least one oxidant molar quantity/at least one porphyrin monomer molar quantity is within a range of from 35-150.” Applicant’s fig 6 and 7 explicitly state the ratio is (µmol/µmol/). Even page 8 of applicant’s arguments includes “(µmol/µmol/)” with the graph. One of ordinary skill reading the original specification would not have assumed with any certainty that a weight ratio was intended. Applicant’s examples that calculate weight ratios could just as easily have been in error.
Secondly, even if the ratio was interpreted as a weight ratio, the Baba article includes an example with a Cu(ClO4)2 to NiDPP weight ratio of 300/10. This ratio of 30 borders on applicant’s preferred 35 minimum. Applicant’s showing regarding density and oxidant/porphyrin ratio (fig 6) is limited to copper porphyrins – not nickel porphyrins. The data of record is insufficient to conclude the Baba article’s example having a oxidant/porphyrin weight ratio of 30 fails to provide the required density and porosity.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 3/16/26