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 .
Status of the Claims
Claims 1, 3-8, 10-12, 15-21, and 23-25 are currently pending.
Claim 25 is new.
Claims 1, 3, 4, 6, 7, 15-17, and 19-21 are currently amended.
Claim 22 is currently cancelled.
Claims 2, 9, 13, and 14 were previously cancelled.
Response to Amendments
Applicant’s amendments filed 16 February 2026 are acknowledged.
Claim Objections
Applicant’s amendment to claim 1 and cancellation of claim 22 are sufficient to overcome the objections of the claims. Claim 1 has been amended for clarity to include the comma. The objections are withdrawn.
Claim Rejections - 35 USC § 112
Applicant’s amendments to claims 6, 7, 16, and 21 are sufficient to overcome the rejection of claims 6, 7, 16, and 21 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 6, 7, and 16 have been amended to correct the antecedent basis issues. Claim 21 has been amended for clarity identifying the first, second, and third quantity of solvent. The rejections are withdrawn.
Claim Rejections - 35 USC § 102
Applicant’s amendments to claim 1 adding the one or more sources of metal are separate from the one or more sources of niobium and one or more sources of fluorine not taught by Xili is sufficient to overcome the rejection of claims 1, 8, 10-12, and 23 under 35 U.S.C. 102(a)(1) as being anticipated by Xili et al. (CN114534441, published 27 May 2022, see machine translation, hereinafter Xili). The rejection is withdrawn.
Claim Rejections - 35 USC § 103
Applicant’s amendment to claim 1 adding the one or more sources of metal are separate from the one or more sources of niobium and one or more sources of fluorine not taught by Xili is sufficient to overcome the rejection of claim 24 under 35 U.S.C. 103 as being unpatentable over Xili et al. (CN114534441, published 27 May 2022, see machine translation, hereinafter Xili) in view of Qiwei et al. (CN111298771, published 19 June 2020, see machine translation, hereinafter Qiwei). The rejection is withdrawn.
Applicant’s amendments to claims 1 and 3 adding a fluorinated pillar, precursors in a solvent, one or more sources of niobium, one or more sources of fluorine comprise one or more compounds, and the one or more sources of metal are separate from the one or more sources of niobium and one or more sources of fluorine taught by Qiwei in differing embodiments are not sufficient to overcome the rejection of claims 1, 3, 5, 8, 10-12, and 23 under 35 U.S.C. 103 as being unpatentable over Qiwei et al. (CN111298771, published 19 June 2020, see machine translation, hereinafter Qiwei). The rejection is maintained; however, due to the amendments to claims 1 and 3 and the addition of new claim 25, modified ground(s) of rejection is/are provided below.
Applicant’s amendments to claims 1, 3, and 4 adding a fluorinated pillar, precursors in a solvent, one or more sources of niobium, one or more sources of fluorine comprise one or more compounds, and the one or more sources of metal are separate from the one or more sources of niobium and one or more sources of fluorine taught by Eddaoudi are not sufficient to overcome the rejection of claims 1, 3-8, 10-12, 15-21, and 23 under 35 U.S.C. 103 as being unpatentable over Eddaoudi et al. (US20200353441, hereinafter Eddaoudi) in view of Ming et al. (“A green synthetic route to K2NbF7:Mn4+ red phosphor for the application in warm white LED devices”, 26 October 2018, Optical Materials, Vol. 86, Pgs. 352-359, hereinafter Ming). The rejection is maintained; however, due to the amendments to claims 1, 3, and 4 and the addition of new claim 25, modified ground(s) of rejection is/are provided below.
Response to Arguments
Applicant’s arguments filed 16 February 2026 have been fully considered but they are moot or not persuasive.
Applicant’s argue that Xili, Qiwei, Eddaoudi, and Ming do not disclose the limitations as recited in amended claims 1, 3, and 4. These arguments have been considered but are either moot or not persuasive for the reasons set forth in the modified grounds of rejection below and the response to arguments below.
Applicant’s arguments throughout the remarks filed on 16 February 2026 with respect to Xili have been considered but are moot because the new ground of rejection does not rely on the teachings of Xili applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to applications arguments throughout the remarks filed on 16 February 2026 that the claimed methods are drawn to “a method for making the fluorinated pillar (MaNbF(6-n)On)(ligand)2”, with an emphasis on the references starting with “sourced or elsewhere-synthesized” fluorinated pillars, such as the CuNbOF5 of Xili, the NiNbOF5 of Qiwei, and the K2NbF7 of Ming, in order to integrate the ligands “under the disclosed conditions, including room temperature and absence of hydrofluoric acid”. The instant specification also starts with fluorinated pillars sourced or elsewhere-synthesized, such as K2NbF7 and NiNbOF5 as sources of NbF7, see Examples 1-4; Claims 16-20; Paras. [0033];[0038]. The instant specification drawn to the K2NbF7 and NiNbOF5 pillars sourced or elsewhere-synthesized does not contain enabling information as to the synthesis of K2NbF7 and NiNbOF5 with “no more than about 2 mass percent of hydrofluoric acid”, as argued regarding Xili on page 11 of the remarks. The instant specification Para. [0029] states “hydrofluoric acid is not required as a source of fluorine in the process herein” and Para. [0010] states “reacting occurs in the presence of 0-1 mass percent hydrofluoric acid. In certain embodiments, reacting occurs in the absence of hydrofluoric acid”. The instant specification states source 108 is fluorine and source 106 is niobium, see Para. [0030]; Fig. 1, please note the instant specification appears to switch the identification of sources 104, 106, and 108 throughout, see the objection to the Specification below. The instant specification only states “hydrofluoric acid is not required as a source of fluorine in the process herein”, see Paras. [0030];[0033]-[0034]. The instant specification does not appear to provide specific information regarding the specific separate source of fluorine in the synthesis.
Page 11 of the remarks state the CuNbOF5 of Xili is conventionally synthesized with hydrofluoric acid and Page 17 of the remarks state with regard to the K2NbF7 of Ming, “[a] person having ordinary skill in the art would appreciate that the pillar K2NbF7 is made as taught in 2.2.1 of the reference. In the section 2.2.2 relied upon in the Office Action, the “as-prepared” K2NbF7 is used, which was prepared using KHF2, known to decompose and release hydrofluoric acid”.
Therefore, if K2NbF7 or CuNbOF5 will decompose in the prior art to release hydrofluoric acid, and a product and it’s properties are inseparable, see MPEP 2112.01; then the K2NbF7 fluorine and niobium source instantly claimed will also decompose to release hydrofluoric acid. As a result, Applicant’s arguments suggest the claimed limitations of no more than about 2 mass percent of hydrofluoric acid in the reaction lacks adequate written description of a full, clear, concise, and exact specific fluorine source that provides no more than about 2 mass percent of hydrofluoric acid in the reaction, see MPEP 2161; and, lacks adequate enablement describing how to make the specifically claimed fluorine niobium complex NbF7 source that provides no more than about 2 mass percent of hydrofluoric acid in the reaction, see MPEP 2164.
For the reasons indicated above, applicant’s above arguments are not persuasive.
In the spirit of compact prosecution and the broadest reasonable interpretation of the claim language, the “fluorinated pillar” is herein interpreted to be formed by “[a] reaction mixture comprising one or more sources of a metal Ma, niobium, fluorine and ligand in a solvent”, see instant Abstract, where the fluorine source comprises less than 2 mass percent hydrofluoric acid, see instant specification Para. [0032]. The fluorine sources that satisfy the less than 2 mass percent hydrofluoric acid in the synthesis are interpreted to be fluorine sources and niobium sources comprising niobium fluorocomplexes, see instant application Claims 16-20; Paras. [0011]-[0013];[0033];[0038].
In response to applications arguments on pages 11-12 of the remarks filed on 16 February 2026, that Qiwei only teaches interfacial diffusion synthesis; therefore, there is no reason to combine Qiwei with another references. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art, see In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981) and MPEP 2145.
In this case, Qiwei teaches “(2) The organic ligand solution is dropped onto the metal ion-inorganic fluorine-containing anion solution, and the metal-anion-organic framework material is prepared by interfacial diffusion; or the organic ligand solution and the metal ion-inorganic fluorine-containing anion solution are directly mixed, and the metal-anion-organic framework material is prepared by solvothermal method; or the organic ligand solution and the metal ion-inorganic fluorine containing anion solution are directly mixed and stirred at room temperature to prepare the metal-anion-organic framework material”, see Para. [0034]. Therefore, Qiwei teaches multiple synthesis methods including liquid dropping.
An “obvious to try” rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, see MPEP 2145 X.B. Since Qiwei teaches a variety of methods to prepare a fluorine containing MOF, including solution dropping, the prior art contains “detailed enabling methodology, a suggestion to modify the prior art to produce the claimed invention, and evidence suggesting the modification would be successful”, see MPEP 2145 X.B.; therefore, it would have been obvious for one of ordinary skill in the art at the time the invention was made to try differing synthesis methods with the solution dropping of Qiwei to prepare a fluorine containing MOF.
For the reasons indicated above, applicant’s above arguments are not persuasive.
New and Modified Rejections Based on Amendments to the Claims in the reply filed on 16 February 2026
Specification
35 U.S.C. 112(a) requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a). Examples of some unclear, inexact or verbose terms used in the specification are:
Para. [0029] of the specification states “a source 104 of Ma, a source 106 of niobium” and “a source 108 of fluorine”; while, Para. [0033] states “source 108 of niobium” and “the nickel source 106”. It is unclear as to which numerical identifier is the Ma source, the fluorine source, and the niobium source.
Claim Interpretation
As stated above, in the spirit of compact prosecution and the broadest reasonable interpretation of the claim language, the “fluorinated pillar” is herein interpreted to be formed by “[a] reaction mixture comprising one or more sources of a metal Ma, niobium, fluorine and ligand in a solvent”, see instant Abstract, where the fluorine source comprises less than 2 mass percent hydrofluoric acid, see instant specification Para. [0032]. The fluorine sources that satisfy the less than 2 mass percent hydrofluoric acid in the synthesis are interpreted to be fluorine sources and niobium sources comprising niobium fluorocomplexes, see instant application Claims 16-20; Paras. [0011]-[0013];[0033];[0038].
In the Spirit of Compact Prosecution
Throughout prosecution the examiner has attempted to identify all objections and clarity issues amongst the claims, applicant is advised that some objections and clarity issues may still remain. Going forward, the examiner respectfully requests applicant to perform a detailed review of the claims regarding clarity, grammar, antecedent basis, word spacing, and spelling issues.
For clarity between the new, modified, and previous rejections, the specific new and modified rejections below are in italics.
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.
The factual inquiries 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.
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.
Claims 1, 3, 5, 8, 10-12, and 23 stand rejected in modified form and claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Qiwei et al. (CN111298771, published 19 June 2020, see machine translation, hereinafter Qiwei).
Qiwei is in the known prior art field of “[a] layered fluorine-containing metal-organic framework material for adsorption and separation of acetylene and ethylene, with the general structural formula ML<sub>2</sub>A, wherein M is a metal ion, L is a zigzag organic ligand, and A is an inorganic fluorine-containing anion”, see Paras. [0011]-[0017], synthesized by a variety of methods, including where the “organic ligand solution is dropped onto the metal ion-inorganic fluorine-containing anion solution”, see Para. [0034].
Qiwei teaches the claims 1, 3, 5, 8, 10-12, 23, and 25 limitations of a synthesis method for synthesizing a layered fluorine-containing metal-organic framework (MOF) material by in the first step dissolving “the metal ion inorganic salt and the inorganic fluorine-containing anionic compound in an organic solvent, deionized water or a mixture of deionized water and organic solvent according to the specified ratio to obtain a metal ion-inorganic fluorine-containing anionic solution”, see Paras. [0032]-[0035]; Abstract, where the “inorganic fluorine-containing anion” is NbOF52-, see Paras. [0017];[0021], the metal ion is Ni2+, see Paras. [0012];[0019], the salt is “nitrate, chloride, acetate, carbonate, sulfate, perchlorate, and tetrafluoroborate of the metal ion”, see Para. [0036], and “the organic solvent is at least one selected from methanol, ethanol, N,Ndimethylformamide, N,N-dimethylacetamide, N-methylpyrrolidone, acetonitrile, acetone, chloroform, dichloromethane, dimethyl sulfoxide, ethylene glycol, and glycerol”, see Para. [0037], meeting:
The separate source of nickel as the metal in instant application claim 1 and in instant application claim 3;
The source of niobium in instant application claim 1 and in instant application claim 3;
The source of fluorine in combination with the niobium in instant application claim 1 and in instant application claim 3;
The nickel nitrate and nickel chloride in instant application claim 5;
The solvent comprises water, ethanol, or methanol in instant application claim 8 and in instant application claim 25;
In the second step dissolving “the organic ligand in an organic solvent or a mixture of deionized water and organic solvent according to the specified ratio to obtain an organic ligand solution”, see Para. [0033]. Then in a third step, the “organic ligand solution is dropped onto the metal ion-inorganic fluorine-containing anion solution, and the metal-anion-organic framework material is prepared by interfacial diffusion; or the organic ligand solution and the metal ion-inorganic fluorine-containing anion solution are directly mixed, and the metal-anion-organic framework material is prepared by solvothermal method; or the organic ligand solution and the metal ion-inorganic fluorine-containing anion solution are directly mixed and stirred at room temperature to prepare the metal-anion-organic framework material”, see Para. [0034], where the reaction temperature is from 10-120 ◦C or 60-90 ◦C, see Para. [0039]. Then in the fourth step the “obtained metal-anion-organic framework material is filtered, washed and dried to obtain the layered fluorine-containing metal-organic framework material” as a solid, see Para. [0035], where the MOF is NiNbOF5(ligand/4,4'-dipyridylsulfone)2, see Abstract, Paras. [0039];[0132], where Ma is the Group 10 element Ni and n is 1. Qiwei makes no mention of the addition of hydrofluoric acid; therefore, the synthesis is performed with 0% added hydrofluoric acid, meeting:
The method of producing a fluorinated pillar MOF of the instantly claimed formula by a mixture of precursors in a solvent in instant application claim 1 and in instant application claim 3;
Within the range of hydrofluoric acid in instant application claim 1, in instant application claim 3, in instant application claim 10, and instant application claim 11;
Within the temperature range in instant application claim 1, in instant application claim 3, and in instant application claim 12; and,
The solvent based synthetic procedure in instant application claim 23.
Qiwei does not specifically teach the above limitations in one express single embodiment or Example.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified Qiwei to rearrange and combine differing synthesis embodiments throughout with a reasonable predictability of success for the purpose of efficiently preparing an adsorbent with the optimal separation abilities at room temperature, see Qiwei, Abstract; Paras. [0004]-[0007].
By applying “routine optimization” and “predictable results” to select the optimal mixture of embodiments, one of ordinary skill in the art would have been motivated to make these modifications because Qiwei provides a finite number of identified, predictable solutions. A person of ordinary skill in the art has good reason to prepare a MOF by pursuing the known options within their technical grasp for the benefit of efficiently preparing an adsorbent with the optimal separation abilities at room temperature, see Qiwei, Abstract; Paras. [0004]-[0007] and MPEP 2141.
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying Qiwei to select the desired metal ion inorganic salt, inorganic fluorine-containing anionic compound, niobium containing compound, organic solvent, and organic ligand as taught by Qiwei with a reasonable predictability of success for the purpose of preparing an MOF adsorbent with the optimal separation abilities at room temperature, see Qiwei, Abstract; Paras. [0004]-[0007]; and MPEP 2143 I. B-D.
Furthermore, an “obvious to try” rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, see MPEP 2145 X.B. Since Qiwei teaches an MOF prepared from the desired metal ion inorganic salt, inorganic fluorine-containing anionic compound, niobium containing compound, organic solvent, and organic ligand, the prior art contains “detailed enabling methodology, a suggestion to modify the prior art to produce the claimed invention, and evidence suggesting the modification would be successful”, see MPEP 2145 X.B.; therefore, it would have been obvious for one of ordinary skill in the art at the time the invention was made to try the differing metal ion inorganic salts, inorganic fluorine-containing anionic compounds, niobium containing compounds, organic solvents, organic ligands, temperatures, and synthesize methods to produce a fluorinated pillared MOF with the optimal properties.
Selection of a known material, such as a fluorine, niobium, and nickel source, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
Claim 24 is newly rejected under 35 U.S.C. 103 as being unpatentable over Qiwei et al. (CN111298771, published 19 June 2020, see machine translation, hereinafter Qiwei), as applied to claims 1, 3, 5, 8, 10-12, 23, and 25 in the 35 USC 103 rejection above, in view of Friscic (“New opportunities for materials synthesis using mechanochemistry”, published 18 June 2010, Journal of Materials Chemistry, Vol. 20, Pgs. 7599-7605).
Qiwei is in the known prior art field of “[a] layered fluorine-containing metal-organic framework material for adsorption and separation of acetylene and ethylene, with the general structural formula ML<sub>2</sub>A, wherein M is a metal ion, L is a zigzag organic ligand, and A is an inorganic fluorine-containing anion”, see Paras. [0011]-[0017, synthesized by a variety of methods, including where the “organic ligand solution is dropped onto the metal ion-inorganic fluorine-containing anion solution”, see Para. [0034].
Qiwei does not specifically teach the limitations of instant application claim 24.
Friscic is in the known prior art field of “liquid-assisted grinding (LAG) or ion-and liquid-assisted grinding (ILAG)” in the “one-pot assembly of ‘‘soft’’ metal organic and organic materials, and the rapid room-temperature synthesis of porous metal organic frameworks directly from a metal oxide”, see Abstract, and is applied to teach the same.
Regarding the limitations of instant application claim 24, Friscic teaches “liquid-assisted grinding (LAG, also known as solvent-drop grinding) uses catalytic amounts of a liquid phase to accelerate mechanochemical reactions” in the synthesis of halogens, such as fluorine, metal, and ligand containing metal organic frameworks (MOFs), see Pg. 7600, Col. 1; Pg. 7600, Col. 3-Pg. 7601, Col. 2; Pg. 7602-7603, meeting the solvent-drop grinding synthesis in instant application claim 24.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the MOF synthesis of Qiwei to use the solvent-drop grinding MOF synthesis as taught by Friscic with a reasonable predictability of success for the purpose of efficiently producing MOFs “by allowing the use of simpler reactants, faster reactions at room temperature with quantitative yields” without “using large amounts of high-boiling organic solvents and exposing reactants to high temperatures and pressures for several days or weeks”, see Friscic, Pg. 7599-7600, Introduction; Pg. 7604, Conclusion.
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the MOF synthesis of Qiwei by applying the known technique of the solvent-drop grinding MOF synthesis as taught by Friscic with a reasonable predictability of success for the purpose of efficiently producing MOFs “by allowing the use of simpler reactants, faster reactions at room temperature with quantitative yields” without “using large amounts of high-boiling organic solvents and exposing reactants to high temperatures and pressures for several days or weeks”, see Friscic, Pg. 7599-7600, Introduction; Pg. 7604, Conclusion; and MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Qiwei and Friscic both teach the synthesis of fluorine MOFs using a solution drop method, a person of ordinary skill in the art has good reason to modify Qiwei by relying upon Friscic before the effective filing date of the claimed invention for knowledge generally available within the MOF synthesis art, see MPEP 2143 B & G and 2141, for the benefit of efficiently producing MOFs “by allowing the use of simpler reactants, faster reactions at room temperature with quantitative yields” without “using large amounts of high-boiling organic solvents and exposing reactants to high temperatures and pressures for several days or weeks”, see Friscic, Pg. 7599-7600, Introduction; Pg. 7604, Conclusion; and, MPEP 2141 and 2143 I. B-D.
Furthermore, an “obvious to try” rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, see MPEP 2145 X.B. Since Qiwei and Friscic teach the synthesis of fluorine MOFs using a solution drop method, the prior art contains “detailed enabling methodology, a suggestion to modify the prior art to produce the claimed invention, and evidence suggesting the modification would be successful”, see MPEP 2145 X.B.; therefore, it would have been obvious for one of ordinary skill in the art at the time the invention was made to try solvent-drop grinding synthesis method of Friscic with the solution dropping of Qiwei to prepare a fluorine containing MOF.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”, see MPEP 2141.
Claims 1, 3-8, 10-12, 15-21, and 23 stand rejected in modified form and claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Eddaoudi et al. (US20200353441, published 12 November 2020, hereinafter Eddaoudi) in view of Ming et al. (“A green synthetic route to K2NbF7:Mn4+ red phosphor for the application in warm white LED devices”, published online 26 October 2018, Optical Materials, Vol. 86, Pgs. 352-359, hereinafter Ming).
Eddaoudi is in the known prior art field of the synthesis of “novel functionalized MOFs suitable for a myriad of applications, which exhibit high water vapor and H2S tolerance and stability over thousands of cycles”, where the use of these fluorinated MOFs reduce hazards and “eliminate the safety, efficiency, and environmental concerns associated with amine scrubbing techniques while providing high stability in the presence of water and H2S”, see Paras. [0002]-[0003];[0027];[0044].
Eddaoudi teaches the claims 1, 3-8, 15, 17, 19-21, and 23 limitations of NbOFFIVE-1-Ni MOF via a solvothermal reaction utilizing an acid solution of a mixture of node Ni(NO3)26H2O separate from pillar Nb2O5 and a fluorine source and pyrazine, and solvents, such as water and alcohols, see Paras. [0028]-[0029];[0044]-[0049], where after filtering and rinsing a solid MOF of NiNbF5O(pyrazine)2 is obtained, see Paras. [0044]-[0047], and the Ni2+ source can include one or more of nickel nitrate, hydrated nickel nitrate, nickel chloride, hydrated nickel chloride, nickel fluoride, hydrated nickel fluoride, nickel oxide, or hydrated nickel oxide, see Para. [0044], meeting:
The methods of mixing precursor solutions with the metal source solution separate from the niobium source solution and the fluorine source solution, and fluorinated pillar NiNbOF5(ligand)2 in instant application claim 1, in instant application claim 3, in instant application claim 4, and in instant application claim 15;
The specific nickel source in instant application claim 5;
The specific niobium oxide in instant application claim 6;
The specific ligand in instant application claim 7;
The specific solvent comprising water in instant application claim 8 and in instant application claim 25;
The nickel, pyrazine ligand, and MOF in instant application claim 17;
The nickel source, pyrazine ligand, and MOF in instant application claim 19;
The nickel, fluorine, and niobium source, ligand, and MOF in instant application claim 20;
The solvent based synthetic procedure in instant application claim 23;
The nickel, fluorine, and niobium source, ligand, and MOF in instant application claim 21; and,
In regard to the instant application claim 21 limitations of “the reaction mixture is formed by: …”, see MPEP 2113(I) stating “even 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) (citations omitted)”. Eddaoudi teaches a reaction mixture made by mixing a nickel, a fluorine, and a niobium source in a solvent, such as water, and adding a ligand, see Paras. [0028]-[0031];[0044]-[0047]; therefore, the process of making the reaction mixture is herein not given patentable weight, meeting the reaction mixture formation in instant application claim 21.
Eddaoudi does not teach:
The instant application claims 1, 3, and 4 limitations of the reaction mixture having from 0-2 mass percent hydrofluoric acid; reacting the reaction mixture at a temperature in the range of about room temperature or in the range of about 5-60°C;
The niobium fluorocomplex in instant application claims 16 and 17; and,
The limitations in instant application claims 10-12 and 18.
Ming is in the known prior art field of niobium fluorocomplexes prepared without the use of dangerous and corrosive hydrofluoric acid (HF) by using less hazardous solutions “considering safety and environmental concerns” to create “a novel HF-free synthetic approach” for the synthesis of “K2NbF7:Mn4+ phosphors using H3PO4 solution instead of the highly toxic HF solution”, see Abstract; Pgs. 352-353, 1. Introduction; Pg. 353, Col. 1-2.2.1. Preparation of K2NbF7 - Col. 2, 2.2.2. Preparation of K2NbF7Mn4+.
Regarding the limitations of instant application claims 1, 3, 4, 10-12, and 16-18, Ming teaches the complex K2NbF7 is prepared at room temperature from NbCl5 used as a niobium source and KHF2, instead of HF, is dropped slowing into the NbCl5 to create the K2NbF7 complex in a HF-free synthetic approach, then K2NbF7 used as a niobium source and fluorine source is added to an H3PO4 and magnesium metal mixture to create the K2NbF7:Mn4+ complex in a HF-free synthetic approach, see Pg. 353, Col. 1-2.2.1. Preparation of K2NbF7 - Col. 2, 2.2.2. Preparation of K2NbF7Mn4+, meeting:
Within the acid and temperature range in instant application claim 1, in instant application claim 3, in instant application claim 4, in instant application claim 10, and instant application claim 11;
Within the temperature range in instant application claim 12;
The niobium fluorocomplex, K2NbF7, in instant application claim 16, in instant application claim 17, and in instant application claim 18.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified Eddaoudi to choose a differing fluorine donor and acid to form the niobium fluorocomplex as taught by Ming with a reasonable predictability of success for the purpose of efficiently producing a niobium fluorocomplex including a metal in a green process that does not use harsh, hazardous, and toxic chemicals, such as HF, see Ming, Abstract; Pg. 353, Col. 1-2.2.1. Preparation of K2NbF7 - Col. 2, 2.2.2. Preparation of K2NbF7Mn4+.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since both Eddaoudi and Ming teach niobium fluorocomplexes including a metal, a person of ordinary skill in the art has good reason to synthesize an MOF by pursuing the known options within their technical grasp for the benefit of efficiently producing a niobium fluorocomplex including a metal in a green process that does not use harsh, hazardous, and toxic chemicals, such as HF, see Ming, Abstract; Pg. 353, Col. 1-2.2.1. Preparation of K2NbF7 - Col. 2, 2.2.2. Preparation of K2NbF7Mn4+; and MPEP 2141.
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the fluorine source of Eddaoudi to select a none HF fluorine source as taught by Ming with a reasonable predictability of success for the purpose of efficiently producing a niobium fluorocomplex including a metal in a green process that does not use harsh, hazardous, and toxic chemicals, such as HF, see Ming, Abstract; Pgs. 352-353, 1. Introduction; Pg. 353, Col. 1-2.2.1. Preparation of K2NbF7 - Col. 2, 2.2.2. Preparation of K2NbF7Mn4+; and MPEP 2143 I. B-D.
Furthermore, an “obvious to try” rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, see MPEP 2145 X.B. Since Eddaoudi is concerned with environmental safety and reducing hazards and Ming teaches alternatives to HF for environmental safety and reducing hazards in the syntheses of MOFs, the prior art contains “detailed enabling methodology, a suggestion to modify the prior art to produce the claimed invention, and evidence suggesting the modification would be successful”, see MPEP 2145 X.B.; therefore, it would have been obvious for one of ordinary skill in the art at the time the invention was made to try the alternatives to HF for environmental safety and reducing hazards in the syntheses of MOFs of Ming to produce the fluorinated pillared MOFs of Eddaoudi.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Selection of a known material, such as a non-toxic acid and fluorine donor, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as a non-toxic fluorine donor, “is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.05.
Conclusion
No claims are allowed.
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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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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