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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 10 is objected to because of the following informalities: comprising should be further comprising. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: sharping should be shaping. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 6-7 and 10 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 6-7 are vague and indefinite because of the recitation of “Reference Example 4” and “Reference Example 3”, respectively. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Claim 10 recites the limitation "comprising an acrylic acid polymer, based on the total weight of the molding" in line 2. It is unclear what based on the total weight of the molding corresponds to, therefore claim 10 is indefinite.
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.
Claim(s) 1-2 and 4-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Leung et al. (US 2012/0016066) [IDS 1/30/23].
Regarding claims 1-2, 4-5 and 8-9: Leung et al. (US ‘066) discloses polymers comprising metal-organic frameworks (MOFs) for the production of films [abstract], wherein Example 2 [Ex. 2; 0187] prepares a suspension by mixing 10g of Ecoflex (polyester prepared by the condensation of adipic acid/terephthalic acid and 1,4-butanediol [0014; 0020; 0119]) (10% solution) with 1 wt% of the MOF of Ex. 1. The suspension was spread on a glass plate and a film was formed by evaporation of solvent (corresponding to 99 wt% polyester and 1 wt% MOF [0079]) [Ex. 2; 0187]. Leung et al. (US ‘066) discloses the MOF of Ex. 1 (Magnesium-formate) [Ex. 1; 0183-0186] was prepared from 38.5 mmol Mg(NO3)2·6H2O and 106.5 mmol formic acid [Ex. 1; 0183-0186].
Regarding claims 6-7: Leung et al. (US ‘066) discloses the basic claimed molding [as set forth above with respect to claim 1].
The claimed effects and physical properties, i.e. the metal-organic framework has in a temperature programmed desorption of ammonia in a temperature range of from 100 to 500 °C an ammonia adsorption of equal to or smaller than 2.0 mmol/g, wherein the temperature programmed desorption of ammonia is determined according to Reference Example 4 [instant claim 6]; the metal-organic framework has a water adsorption in a range of from 0.1 to 70 weight-% when exposed to a relative humidity of 85%, wherein the water adsorption is determined according to Reference Example 3 [instant claim 7], would inherently 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].
Claim(s) 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Leung et al. (US 2012/0016066) as applied to claim 1 above, when taken with Rood, J. A.; Noll, B. C.; Henderson, K. W. Inorg. Chem. 2006, 45, 5521.
Regarding claim 3: Leung et al. (US ‘066) discloses the basic claimed molding [as set forth above with respect to claim 1]; wherein Leung et al. (US ‘066) discloses the MOF (magnesium-formate) contains ~ 18 wt% Mg [Ex. 1; 0183-0186]
Rood et al. (Inorg. Chem. 2006, 45, 5521) provides evidence for ~ 18 wt% Mg in magnesium-formate MOF [§ Synthesis of [Mg3(O2CH)6⸧DMF]].
Claim(s) 12-14 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Leung et al. (US 2012/0016066) [IDS 1/30/23].
Regarding claims 12, 14 and 16: Leung et al. (US ‘066) discloses polymers comprising metal-organic frameworks (MOFs) for the production of films [abstract], wherein Example 2 [Ex. 2; 0187] prepares a suspension by mixing 10g of Ecoflex (polyester prepared by the condensation of adipic acid/terephthalic acid and 1,4-butanediol [0014; 0020; 0119]) (10% solution) with 1 wt% of the MOF of Ex. 1. The suspension was spread on a glass plate and a film was formed by evaporation of solvent (corresponding to 99 wt% polyester and 1 wt% MOF [0079]) [Ex. 2; 0187].
Regarding claim 13: Leung et al. (US ‘066) discloses the MOF of Ex. 1 (Magnesium-formate) [Ex. 1; 0183-0186] was prepared from 38.5 mmol Mg(NO3)2·6H2O, 106.5 mmol formic acid, and 2.19 mol DMF. The resulting solution was reacted at 125 oC and the resulting MOF crystals were filtered off and washed [Ex. 1; 0183-0186].
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
Claim(s) 1-2, 4-7 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al. (CN 108212123) [IDS 1/30/23]. An English machine translation used for citation.
Regarding claims 1-2, 4-5 and 11: Liu et al. (CN ‘123) discloses polyester films containing a metal organic framework (MOF) [abstract], wherein Example 1 [Ex. 1; 0011-0012] mixes a composition containing 95 parts polyethylene terephthalate, 5 parts Zn-MOF, 0.1 parts Irgafos 168, 2 parts stabilizer, and 0.5 parts calcium stearate. The resulting mixture was extruded and molded into a film [Ex. 1; 0011-0012].
Regarding claims 6-7: Liu et al. (CN ‘123) discloses the basic claimed molding [as set forth above with respect to claim 1].
The claimed effects and physical properties, i.e. the metal-organic framework has in a temperature programmed desorption of ammonia in a temperature range of from 100 to 500 °C an ammonia adsorption of equal to or smaller than 2.0 mmol/g, wherein the temperature programmed desorption of ammonia is determined according to Reference Example 4 [instant claim 6]; the metal-organic framework has a water adsorption in a range of from 0.1 to 70 weight-% when exposed to a relative humidity of 85%, wherein the water adsorption is determined according to Reference Example 3 [instant claim 7], would inherently 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].
Claim(s) 12-14 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al. (CN 108212123) [IDS 1/30/23]. An English machine translation used for citation.
Regarding claims 12-14 and 16: Liu et al. (CN ‘123) discloses a method of preparing polyester films containing a metal organic framework (MOF) [abstract], wherein Example 1 [Ex. 1; 0011-0012] mixes a composition containing 95 parts polyethylene terephthalate, 5 parts Zn-MOF, 0.1 parts Irgafos 168, 2 parts stabilizer, and 0.5 parts calcium stearate. The resulting mixture was extruded and molded into a film [Ex. 1; 0011-0012]. Liu et al. (CN ‘123) discloses Zn-MOF was prepared by reacting Zn(NO3)2·6H2O and terephthalic acid in DMF, adding triethylamine to precipitate the Zn-MOF, collecting the precipitate, washing and drying the precipitate to afford the Zn-MOF [0012].
Claim Rejections - 35 USC § 103
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) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Leung et al. (US 2012/0016066) as applied to claim 1 above.
Regarding claim 11: Leung et al. (US ‘066) discloses the basic claimed molding [as set forth above with respect to claim 1]; wherein Leung et al. (US ‘066) discloses the composition can contain additives [0111].
Leung et al. (US ‘066) does not specifically disclose Ex. 2 containing additives. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included additives based on the invention of Leung et al. (US ‘066), and would have been motivated to do so since Leung et al. (US ‘066) suggests that the composition can contain additives [0111]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Leung et al. (US 2012/0016066) as applied to claim 1 above, and further in view of Wengeler et al. (US 2019/0185705).
Regarding claim 10: Leung et al. (US ‘066) discloses the basic claimed molding [as set forth above with respect to claim 1]; wherein Leung et al. (US ‘066) discloses the composition can contain additives [0111].
Leung et al. (US ‘066) does not disclose an acrylic acid polymer. However, Wengeler et al. (US ‘705) discloses composite materials containing a MOF for forming into films [abstract; 0069], wherein the composite can contain polyacrylic acid as a binder [0066; 0089; Table 2]. Leung et al. (US ‘066) and Wengeler et al. (US ‘705) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of films containing MOFs. 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 polyacrylic acid, as taught by Wengeler et al. (US ‘705)in the invention of Leung et al. (US ‘066), and would have been motivated to do so since Wengeler et al. (US ‘705) suggests the composite film can contain polyacrylic acid as a binder [0066; 0089].
See attached form PTO-892.
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
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