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 .
Current Status of 18 / 025660
Claims 1-20 filed 2023 March 10 are examined on the merits.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2025 March 28 was submitted in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-20 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. The term “cake-like” is an exemplary term [see MPEP 2173.05(d)(E)] in which the metes and bounds are not clearly set forth. YANG (Dalton Transactions, 2020, 49, 10052-10057, electronic supplementary information table 1 and figures S1-S8) describes MIL-125 which has the following properties: an external surface area of 165 m2/g; an SBET of 1181 m2/g; and three-layered cake structure (table 1; figure S1; see 35 U.S.C. 102 rejection). Applicants do not provide a definition of what “cake-like” means. Figure 2 shows an SEM image of a crystal.
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 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang (Dalton Transactions, 2020, 49, 10052-10057, electronic supplementary information table 1 and figures S1-S8). Yang describes MIL-125 which has the following properties: an external surface area of 165 m2/g; an SBET of 1181 m2/g; and layered cake like structure (table 1; figure S1).
PNG
media_image1.png
588
728
media_image1.png
Greyscale
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McNAMARA (ACS Applied Materials and Interfaces, 2015, 7, 5338-5346, supporting information pages S1-S15). Yang describes meso MIL-125 which has an external surface area of 190 m2/g (page 5339, figure 1 and section 2.4); page 5340, section 2.7; page 5341, table 1; page 5342, column 2, paragraph 1).
PNG
media_image2.png
236
780
media_image2.png
Greyscale
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived 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(a) 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 1 and 3 are rejected under 35 U.S.C. 103(a) as being unpatentable over WANG (CN 111430640, published 2020 July 17).
Determining the scope and contents of the prior art
Wang describes MIL-125 which has the following properties: it is disc-shaped; its XRPD, figure 2, has similar peaks to figure 1 of the examined application at 5, 1014-15, 17, 18, and 20 2Θ; and a specific surface area of the micropores is 1386 m2/g (figure 3) (page 1/4 of original document; page 7 of machine translation).
PNG
media_image3.png
400
680
media_image3.png
Greyscale
PNG
media_image4.png
420
538
media_image4.png
Greyscale
Ascertaining the differences between the prior art and the claims at issue
Wang does not explicitly state the external specific surface area of the MIL-125 prepared.
Resolving the level of ordinary skill in the pertinent art
Those of relative skill in the art are those with level of skill of the authors of the references cited to support the examiner’s position (MD’s, PhD’s, or those with advanced degrees and the requisite experience in preparation of compounds of the elected group).
Considering objective evidence present in the application indicating obviousness or nonobviousness
In re Best, Bolton, and Shaw (195 USPQ 430, 562 F2d 1252) states the following:
“Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 U.S.C. 102, on "prima facie obviousness" under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same and in fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.”
When Wang is combined with Best, the MIL-125 produced has the same shape and an XRPD patter with the same characteristic peaks. Additionally the shape is the same as claimed as well as the specific surface area of claim 3. Based on these three common features, the MIL-125 prepared by Wang would be expected to have an external specific surface area of 160-220 m2/g because the other properties are substantially identical.
PNG
media_image5.png
354
498
media_image5.png
Greyscale
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a). From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
Allowable Subject Matter
Claims 1-20 are not presently allowable.
The following is a statement of reasons for the indication of allowable subject matter:
Yang (Dalton Transactions, 2020, 49, 10052-10057) describes a process of preparing MIL-125 using titanium isopropoxide (page 10053, column 1, paragraph 4). Yang does not suggest than a titanium-ester polymer can be used in the synthesis. McNamara (ACS Applied Materials and Interfaces, 2015, 7, 5338-5346) describes a vapor-assisted crystallization of mesoporous MIL-125 using titanium isopropoxide (page 5339, section 2.4). McNamara does not suggest using a titanium-ester polymer as a titanium source.
Neither Yang or McNamara describe that MIL-125 prepared can be used in a process of epoxidising cyclohexene. Yang describes a process of desulfurization of 4,6-dimethyldibenzothiophene (abstract). McNamara describes a process of oxidizing dibenzothiophene (page 5343 column 2, last paragraph to page 5344, column 2, first paragraph).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOBLE E JARRELL whose telephone number is (571)272-9077. The examiner can normally be reached 9:00 AM to 5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NOBLE E JARRELL/Primary Examiner, Art Unit 1699