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 .
DETAILED ACTION
Claims 1-20 of A. Singh et al., US 18/042,169 (Aug. 24, 2021) are pending. Claims 1-17 are objectionable. Claims 9 and 17 are rejected. Claims 18-20 are allowed.
Election/Restrictions
Applicant elected Group (VI), claims 18-20, drawn to drawn to an automated apparatus for producing diazomethane of Formula I (CH2N2), by way of the Supplemental Reply filed on February 27, 2026. Claims 1-17, to non-elected inventions of Groups (I) to (V), are withdrawn from consideration pursuant to 37 CFR 1.142(b). The restriction/election requirement is maintained as FINAL.
Rejoinder
Claim 18 is directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(B), claims 1-17, directed to the process of using the allowable apparatus of claim 18, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on December 31, 2025 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or non-statutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Withdrawal Objections to the Specification
Objection to the specification on a first grounds that the specification’s statement of “BRIEF DESCRIPTION OF THE DRAWINGS” does not correspond to the referenced Figures is withdrawn. MPEP § 608.01(f). Applicant filed a substitute specification (along with a purported marked-up version) by way of preliminary amendment on February 17, 2023. The substitute specification adequately corresponds to the referenced Figures.
Objection to the specification on a second grounds that the specification further improperly discusses and/or improperly references figures in multiple portions is withdrawn. As noted above, Applicant filed a substitute specification (along with a purported marked-up version) by way of preliminary amendment on February 17, 2023. The substitute specification adequately discusses and/or references figures.
Withdrawal Rejections 35 U.S.C. 112(b)
Rejection of claim 20 pursuant to 35 U.S.C. 112(b), as indefinite because the recitation of “the continuous flow micro-separator has a residence time” is unclear within the claim’s context is withdrawn in view of Applicant’s amendment.
Rejection of claim 19 pursuant to 35 U.S.C. 112(b), as indefinite because the structure of the “continuous flow micro-separator” is unclear with respect to the recited “long-serpentine tunnel sandwiched in a polytetrafluoroethylene (PTFE)-hydrophobic membrane” is withdrawn in view of Applicant’s amendment cancelling this language.
Maintained Objections to the Specification
As noted above, pursuant to MPEP § 608.01(q) (Rule 1.125), Applicant filed a substituted specification (along with a marked-up version) by way of preliminary amendment on February 17, 2023. 1
However, the marked-up version of February 17, 2023 does not identify all the changes made to the original specification as required. MPEP § 608.01(q). For example, in but one instance the original specification (filed Feb. 17, 2023) (i.e., WO 2022/044038) recites:
Figure 6 represents powder XRD analysis of the pristine HKUST and one-hour diazo-methane treated HKUST.
See, original specification at page 5, lines 16-17
However, the corresponding portion of the marked-up, amended specification (filed Feb. 17, 2023) recites:
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See, marked-up, amended specification at page 5, [0034]. As can be seen, the marked-up, amended specification does not show the full scope of changes made to [0034]. There are numerous other instances where changes to the original specification are not shown in the marked-up specification. For this reason, Applicant is required to submit a new substitute specification along with a conforming marked-up version showing all changes relative to the original specification. MPEP § 608.01(q).
Claim Objections
Improper Claim Numbering
Dependent claims 1-17 are objected to because they improperly numerically precede their independent base claim 18. Claims 1-17 reference claim 18 and are therefore dependent upon claim 18.
Dependent claims should be numbered after respective independent claims. That is, a series of singular dependent claims is permissible in which a dependent claim refers to a preceding claim which, in turn, refers to another preceding claim. MPEP § 608.01(n)(IV).
This objection can be obviated, for example, by cancelling claims 1-17 and adding them as new claims 21-38.
Rejections 35 U.S.C. 112(b)
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.
Pursuant to 35 U.S.C. 112, the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention. MPEP § 2173.05(a).
Rejection of Claim 9, Improper Preferences
Claim 9 is rejected pursuant to 35 U.S.C. 112(b), as indefinite because the parenthetical (as bolded below) is exemplary claim language and thus renders claim scope unclear. MPEP § 2173.05(d). Claim 9 recites:
9. The process as claimed in claim 1, wherein the organic solvent is diethyl ether, methanol and said temperature maintained in said reaction vessel of room temperature (20-30° C).
Room temperature in the art of chemistry generally means about 20 °C to about 25 °C. See e.g., Hawley's Condensed Chemical Dictionary, page 1201 (16th ed., 2016, R.J. Larrañaga ed.).
This claim 9 recitation of “room temperature (20-30° C)”, in this context, improperly provide for preferences and thereby renders confusion over the intended scope of claim 9. See, MPEP § 2173.05(d).
Rejection of Claim 17 –Trade Names/Trademarks
Claim 17 is rejected pursuant to 35 U.S.C. 112(b), as indefinite for recitation of “Diazo-M-pen” and “Diazo-M-cube”.
17. The process as claimed in claim 1, wherein the automated apparatus is a Diazo-M-pen for laboratory scale production and utilization of diazomethane or a Diazo-M-cube for industrial scale production, utilization and quenching of diazomethane.
These appear to be specific embodiments disclosed in the specification (although the specification uses the different terms “Diazo-pen” and “Diazo-cube”). See, Specification at page13-14 (Example 1) (Diazo-pen); Id at pages 23-24 (Example 25) (Diazo-cube). However, because it is not clear what specifics of the description are to be imported into claim 17 with respect to the terms “Diazo-pen” and “Diazo-cube”, there is confusion over the intended scope of claim 17. See, MPEP § 2173.05(d).
Furthermore, claim 17 is indefinite because the terms “Diazo-M-pen” and “Diazo-M-cube” appear to be trade names and/or trademarks. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b). See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name.
Subject Matter Free of the Art of Record
Claim 18 is free of the art of record. Claims 1-17 and 19-20, which are all dependent upon claim 18, are also free of the art of record. The art of record does not teach (§ 102) or suggest (§ 103) the claim 18 limitation of “a solid MOF quencher configured to degrade unused diazomethane” as highlighted below:
18. An automated apparatus for producing diazomethane of Formula 1 (CH2N2), the automated apparatus comprising:
a pump configured to pump a stock solution of N-methyl-N-nitroso amine in an organic solvent and an aqueous inorganic base;
a capillary micro reactor configured to form diazomethane from a reaction of the N-methyl-N-nitroso amine in the organic solvent with the aqueous inorganic base;
a continuous flow micro-separator configured to separate an aqueous layer and an organic layer, wherein the organic layer comprises 0.1-0.4 M diazomethane; and
a solid MOF quencher configured to degrade unused diazomethane.
As well-known in the art, metal–organic frameworks (MOFs) are crystalline porous materials possessing highly ordered structures consisting of networks formed by single metal ions or metal clusters connected by multidentate organic groups acting as linkers; a main MOF feature is porosity. C. Pettinari et al., 66 Polymer International, 731-744 (2016) (page 731, col. 1); see also, J. Liu et al., 46 Chem. Soc. Rev., 5730-5770 (2017).
No prior art was found in searches that teaches or motivates one of ordinary skill to degrade, adsorb or otherwise remove diazomethane with a metal organic framework (MOF). The closest art is discussed below.
The Invention of Claim 18
The specification discloses a diazomethane generator and a process for producing diazomethane that comprises a solid phase quencher. Specification at page 1, [0002]; Id. at Fig. 1.
Referring to specification Fig. 1 specification Example 1 teaches operation of the Diazo-pen. Specification at page 13, [0070]. Here, N-methyl-N-nitroso amine (i.e., formula 2) in MEOH:DEE and base of formula 3 (KOH) are introduced into a capillary microreactor with a T-mixer using syringe pumps, thereby producing the diazomethane. Id. The aqueous waste layer and diazomethane-containing diethyl ether (DEE) layer are separated using a modified micro-separator as disclosed in V. Sthalam et al., 23 Organic Process Research Development, 1892-1899 (2019) (“Sthalam”).2 Id. The Diazo-Pen then outflows the generated diazomethane/DEE (free of aqueous) for the desired reaction. Id. Specification Example 1 employs no MOF as claimed in claim 18.
Referring to specification Fig. 11 the specification teaches operation of the claim 18 automated apparatus for producing diazomethane (Diazo-cube). Specification at pages 11-12, [0060]; Id. at pages 22-23, [00134] (Example 25). Here, diazomethane is generated in a manner similar to the Diazo-pen as summarized above to provide an aqueous and diethyl ether (DEE) layer, where the DEE layer comprises the generated diazomethane. Next, the aqueous and DEE continuous flow droplets were separated through a partially modified micro-separator (R2 in Fig. 11), micro-separator disclosed in V. Sthalam et al., 23 Organic Process Research Development, 1892-1899 (2019) (“Sthalam”) (see footnote 2). Specification at pages 11, [0060]. Next the out-flow solution from the micro-separator was connected with a recirculatory pump, and a solution of acid or phenol or alkyne or alkene or anhydride, or aldehyde was taken in a bottle and connected with the pump as described in Figure 11. Specification at page 11, [0060]. Here, the Examiner finds that the generated diazomethane and a reactant (a solution of acid or phenol or alkyne or alkene or anhydride or aldehyde) are pumped into reactor R3 (Fig. 11, perfluoroalkoxy (PFA) tubing) for the reaction with the generated diazomethane to occur.
Next the excess diazomethane in the outflowing reaction mixture was passed through the HKUST MOF filled catalyst cartridge to degrade the diazomethane. Specification at page 12, lines 1-3. Here, the Examiner finds that the HKUST MOF filled catalyst cartridge conveniently removes/degrades the diazomethane from the reaction mixture while also permitting the reaction product to flow through as a purified ether solution for isolation. See specification at page 23, [00132]; Id. at page 4, [0018]; Id. at page 11 (stating “[t]he next disclosure, to provide a wearable solid quencher for the diazomethane, HKUST MOF was coated over the cotton surface and exposed to the diazomethane gas. The color changed from blue to green indicating for the diazomethane absorption and degradation”).
The Closest Art of Record
The closest art of record is R. Maurya et al., Angewandte Chemi, International Edition, 5952-5955 (2011) (“Maurya”).
R. Maurya et al., Angewandte Chemi, International Edition, 5952-5955 (2011) (“Maurya”)
Maurya teaches that diazomethane, an extremely toxic, carcinogenic, odorless, and explosive yellow gas, is one of those most versatile reagents available to the organic chemists for the preparation of carbon–carbon and carbon–heteroatom bonds. Maurya at page 5952, col. 1.
With reference to Figure 1, Maurya teaches a poly(dimethylsiloxane) (PDMS) dual-channel microchemical system as shown in Figure 1. Maurya at page 5952, column 2.
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Maurya at page 5953, Figure 1. In operation, Maurya teaches that N-methyl-N-nitroso- p-toluenesulfonamide (Diazald) quickly reacts with KOH to generate diazomethane in the bottom channel, the generated diazomethane readily diffuses through the poly(dimethylsiloxane) (PDMS) membrane into the upper channel where it reacts with main reactant. The poly(dimethylsiloxane) (PDMS) membrane, which is extremely hydrophobic, prevents the diffusion of KOH, water, and potassium p-toluenesulfonate from the bottom channel to the upper channel. Maurya at page 5952, column 2. Maurya teaches that similarly, the organic reactants or the products from the reaction with diazomethane in the upper channel have little tendency to diffuse into the aqueous saline phase in the lower channel. Maurya at page 5952, column 2.
Maurya further teaches that additionally, since the outlet of the bottom channel is immersed in acetic acid, any diazomethane transported out along with waste is instantaneously quenched; thus, extremely toxic diazomethane can be handled with safety and efficiency in the dual-channel microreactors. Maurya at page 5954, column 1.
In Table S2, Maurya teaches optimization of reaction conditions for in-situ generation, separation, and reaction of diazomethane with benzoic acid in PVSZ coated dual-channel microreactor, where dimethylformamide is the solvent. Maurya page S8 (Table S2). Here, Maurya teaches that KOH and Diazald were injected into bottom channel at a flow rate of 4 μL/min, and benzoic acid into upper channel at a flow rate of 4 μL/min. Maurya page S8 (Table S2). In Table S2 Entry 6, the Diazald concentration ranged from 0.5 to 1.0 M and the KOH concentration ranges from was 0.5 M to 2 M, which concentrations were considered optimized because there was not clogging in the microreactor channels. Maurya page S8 (Table S2).
The Claim 18 limitations that are Met by Maurya
Maurya teaches that the connections of the dual channel with syringes and product collector were made by PFA capillaries. Maurya at page 5953, col. 2. This meets the claim 18 limitation of:3
18 . . . a pump configured to pump a stock solution of N-methyl-N-nitroso amine in an organic solvent and an aqueous inorganic base . . .
Maurya’s lower microreactor channel meets the claim 18 limitation of:4
18 . . . a capillary micro reactor configured to form diazomethane from a reaction of the N-methyl-N-nitroso amine in the organic solvent with the aqueous inorganic base . . .
Maurya’s poly(dimethylsiloxane) (PDMS) membrane between the upper and lower microreactor channels meets the claim 18 limitation of:
18 . . . a continuous flow micro-separator configured to separate an aqueous layer and an organic layer . . .
because it functions within Maurya’s microreactor to separate the continuous flow of organic and aqueous layers and also permits diffusion of the generated diazomethane from the aqueous layer into the organic layer. In this manner, Maurya’s microreactor permits continuous production of a product of a reactant and the generated diazomethane.
Maurya’s microreactor meets the claim 18 limitation of “wherein the organic layer comprises 0.1-0.4 M diazomethane”, as underlined below:
Claim 18 . . . a continuous flow micro-separator configured to separate an aqueous layer and an organic layer, wherein the organic layer comprises 0.1-0.4 M diazomethane; and
for the following reasons. As discussed above, in operation of Maurya’s microreactor, in Table S2 Entry 6, the Diazald concentration ranged from 0.5 to 1.0 M and the KOH concentration ranges from was 0.5 M to 2 M, which concentrations were considered optimized because there was not clogging in the microreactor channels. Maurya page S8 (Table S2). The reaction between KOH and Diazald to give diazomethane is very fast.5 Thus, for example, Table S2, Entry 5, reaction of Diazald (0.375M) and KOH (1.5 M) and would thus certainly give a diazomethane concentration in the claimed range of 0.1 to 0.4 M.
Differences between Claim 18 and Maurya
Maurya’s microreactor differs from the claim 18 “automated apparatus for producing diazomethane of Formula 1 (CH2N2)” only in that it does not teach the claim 18 limitation of “a solid MOF quencher configured to degrade unused diazomethane”
Rather, Maurya teaches that the outlet of the bottom channel (the aqueous layer comprising residual diazomethane) is immersed in acetic acid, and any diazomethane transported out is instantaneously quenched; thus, extremely toxic diazomethane can be handled with safety and efficiency in the dual-channel microreactors. Maurya at page 5954, column 1.
Significantly, Maurya’s device is conceptually different from the operating principle of the claim 18 device. Maurya’s device degrades the waste diazomethane in the waste aqueous layer (with acetic acid). Thus, the Maurya product layer still may contain unreacted diazomethane that is not removed and must be dealt with in subsequent workup. In contrast, as discussed above, the specification teaches the final operation step of the claim 18 device is flowing the organic product containing layer through the “solid MOF quencher” thereby conveniently removing/degrading any unreacted diazomethane from the reaction mixture, while also permitting the reaction product to flow through as a purified solvent solution for isolation. Specification at pages 22-23, Item 8; Figure 11.
G. Tom et al., WO2019/060818 (2019) (“Tom”)
Tom teaches a method of adsorbing a highly reactive gas onto a metal-organic framework (MOF) including providing the highly reactive gas to the MOF. Tom at page 2, [0004]. Tom teaches that the gases can include: arsine (AsH3), stibine (SbH3), phosphine (PH3), borane (BH3), diborane (B2H6), halides, germane, digermane, silane, disilane, hydrazine or nitrogen trifluoride. Tom at page 4, [0017]. Tom does not teach diazomethane. And the purpose of Tom is not to destroy or remove the gas, but rather to increase its stability over the neat form while also storing for subsequent release and use in undegraded form. Tom at page 4, [0017], [0018]. Further Tom does not provide any guidance regarding MOF adsorption of gases from gaseous aqueous solutions or whether the disclosed MOFs would be effective for this purpose.
Claim 18 Is not Obvious Over Maurya
Claim 18 is not obvious over Maurya for the following reasons. One of ordinary skill is not motivated to replace Maurya’s acetic acid quencher with an MOF, to degrade the diazomethane in Maurya’s basic aqueous waste layer, because no art of record teaches that diazomethane (let alone diazomethane in basic aqueous solutions) can be adsorbed/degraded by MOFs. In fact, MOFs are known to be either degraded by water or, in the case of water-stable MOFs, adsorb water themselves. N. Burtch et al., 114 Chemical Reviews, 10575-10612 (2014). As such one of ordinary skill does not have a reasonable expectation that an MOF would destroy or adsorb the diazomethane comprised in the basic, aqueous Maurya waste stream. MPEP § 2143.02(I). One of ordinary skill is therefore not motivated to combine Maurya with Tom so as to arrive at the invention of claim 18 because, as discussed above, Tom does not provide any guidance regarding MOF adsorption of diazomethane, let alone diazomethane from basic aqueous solutions, or whether the disclosed MOFs would be effective for this purpose.
In any case, seeking to combine Maurya with MOF secondary art such as Tom is awkward. As discussed above, Maurya’s device is conceptually different from the claim 18 device’s operating principle because the specification teaches removal of an organic diazomethane-containing layer, where the aqueous layer has already been removed by way of a micro-separator. The art of record does not provide any teaching or guidance respecting removing/destroying diazomethane from an organic containing layer, let alone removing the diazomethane therefrom while at the same time permitting the product to flow through for isolation. Stated differently, there is no reason to make such a MOF combination with Maurya; reagents such as, acetic acid, work fine and the aqueous layer is simply waste.
Note on Claims 1-17
Method claims 1-17 are also non-obvious and free of the art of record by virtue of their dependency from claim 18. It is noted that claim 1 recites:
Claim 1 . . . iii. reacting the organic layer with
a carboxylic acid,
phenol,
an alkyne,
an anhydride,
a carboxyl metal organic framework (MOF), or
MOF coated cotton
to form a corresponding ester, a pyrazole, an ether, a diazo ketone, a stable carboxyl MOF or a stable MOF coated cotton fiber.
Thus, claim 1 permits the diazomethane to react with the MOF in the alternative. In other words, in practice of the claim 1 method, the generated diazomethane need not contact/react with the claim 18 MOF quencher. Nonetheless, the method of claim 1 (and its dependents) still incorporates the non-obvious apparatus of claim 18 and are therefore non-obvious themselves. Further there does not appear to be any § 112(b) issue with claim 1.
Conclusion
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 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.
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 MPEP § 608.01(q) (A marked-up copy of the substitute specification showing all the changes relative to the immediate prior version of the specification of record must also be submitted).
2 Sthalam discloses a microseparator comprising a polypropylene-coated polytetrafluoroethylene (PTFE) membrane sandwiched between two Teflon sheets with identical dimensions to fit the groove channels and coupled to each other by inserting metal pins through the holes at the film corners. Sthalam at page 1896, col. 1, referencing Figure 3. The Sthalam microseparator separates aqueous waste from the desired organic layer (allows permeation of the organic layer but not the aqueous). Sthalam at Figures 2-3.
3 N-methyl-N-nitroso amine (as recited in claim 18) is an equivalent of the Diazald reagent employed by Maurya. In this regard, H. Lehmann et al., 19 Green Chemistry, 1449-1453 (2017) (“Lehmann”) teaches that:
The commonly used precursors for the preparation of diazomethane are N-methyl-N-nitrosoamines, which are typically treated with an inorganic base in an organic solution. The commercially available starting materials include 1-methyl- 3-nitro-1-nitrosoguanidine (MNNG), N-methyl-N-nitrosourea (MNU) and N-methyl-N-nitroso-p-toluene sulfonamide (Diazald®).
Lehmann at page 1450, col. 2. Thus, Maurya’s syringe pump system configured to inject Diazald and aqueous KOH into the lower reaction channel of the microreactor is also (per claim 18) “a pump configured to pump a stock solution of N-methyl-N-nitroso amine in an organic solvent and an aqueous inorganic base”.
4 Here, the specification gives no guidance or restrictions regarding the meaning of “capillary” (dimensional or otherwise) within the claim 18 recitation of “capillary micro reactor”.
5 C. Yang et al., 98 Journal of the Taiwan Institute of Chemical Engineers, 94-98 (2019) (“For the reaction between Diazald and KOH, it is very fast and highly exothermic . . . with respect to Diazald”).