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 .
Information Disclosure Statement
The information disclosure statements (IDSs) submitted are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Claim Objections
Claims 1 and 22 are objected to because of the following informalities:
Claim 1, line 8 appears to be missing a comma between “1-3 1-2”.
Appropriate correction is required.
Claim 22 appears to be missing from the claim set.
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.
Claims 6, 7, 16, and 21 are rejected 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.
Claim 6 recites the limitation “niobium source” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation “ligand source” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitations “source” in line 2. There is insufficient antecedent basis for these limitations in the claim.
Claim 21 recites the limitations “a second quantity of solvent water” and “a third quantity of water”. These limitations are unclear. The claims do not identify a first quantity of water or a first quality of solvent water.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 8, 10-12, and 23 are rejected 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).
Xili discloses the claims 1, 8, 10-12, and 23 limitations of an ionic hybrid ultramicroporous material with a responsive function as an adsorbent, see Abstract, made by the process of dissolving 1 mmol CuNbOF5 in 10 mL of ethylene glycol, and dissolving 1.5 mmol of the ligand 4,4’-azobipyridine in 10 mL of methanol, then mixing the two solutions, and stirring for 24 hours at room temperature to obtain NbOFFIVE-14-Cu-I aka (CuNbOF5)(ligand/4,4’-azobipyridine)2, see Para. [n0048], Fig. 1, where Ma is the Group 11 element Cu, n is 1, and the temperature is a room temperature of approximately 20° C as defined in the instant specification Para. [0047]. The obtained NbOFFIVE-14-Cu-i material was packed into a 5 cm adsorption column to test the absorption characteristics of the material, see Para. [n0050]. In order to obtain and use the NbOFFIVE-14-Cu-I it is inherent that the solid NbOFFIVE-14-Cu-I is recovered, see MPEP 2112. Xili makes no mention of hydrofluoric acid; therefore, it is absent in the synthesis, meeting:
The limitations and within the ranges in instant application claim 1;
The specific methanol solvent in instant application claim 8;
Within the range of hydrofluoric acid in instant application claim 10 and instant application claim 11;
Within the temperature range in instant application claim 12; and,
The solvent based synthetic procedure in instant application claim 23.
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.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Xili et al. (CN114534441, published 27 May 2022, see machine translation, hereinafter Xili), as applied to claims 1, 8, 10-12, and 23 in the 35 U.S.C. 102(a)(1) rejection above, in view of Qiwei et al. (CN111298771, published 19 June 2020, see machine translation, hereinafter Qiwei).
Xili does not teach the instant application claim 24 limitation of reacting the reaction mixture comprises solvent-drop grinding.
Xili teaches the instant application claim 24 limitation of the ion-hybrid ultraporous material with responsive function described in this invention can
be synthesized by solid-phase grinding, see Para. [n0017], meeting the grinding limitation in instant application claim 24.
Qiwei relating to a solvothermal synthesis method for synthesizing a layered fluorine-containing metal-organic framework material, see Abstract, Paras. [0039];[0132], teaches the MOF is also synthesized by dropping the organic ligand solution onto the metal ion-inorganic fluorine-containing anion solution, and the metal-anion-organic framework material is prepared by interfacial diffusion, see Paras. [0032]-[0035], meeting the solvent-drop limitation 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 grinding method of Xili to synthesize the MOF also using the solvent drop method as taught by Qiwei 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].
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 Xili and Qiwei teach preparing 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 preparing an adsorbent with the optimal separation abilities at room temperature, see Qiwei, Abstract; Paras. [0004]-[0007] and MPEP 2141.
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, 5, 8, 10-12, and 23 are 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 teaches the claims 1, 3, 5, 8, 10-12, and 23 limitations of a solvothermal synthesis method for synthesizing a layered fluorine-containing metal-organic framework material by dissolving a source of Ni, Nb, and F of 0.5 mmol NiNbOF5 in DMF solution and dissolving a ligand source of 1 mmol 4,4'-dipyridylsulfone in anhydrous methanol, then mixing the two were reacting at 65 °C or 10–120 °C for 24 h to obtain crystals that are filtered, washed with methanol, and dried to obtain 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 hydrofluoric acid; therefore, it is absent in the synthesis, meeting:
The limitations in instant application claim 1 and in instant application claim 3;
The specific methanol solvent in instant application claim 8;
Within the range of hydrofluoric acid in instant application claim 10 and instant application claim 11;
Within the temperature range in instant application claim 12;
The solvent based synthetic procedure in instant application claim 23; and,
The synthesis also includes 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 Para. [0033], where the metals are sourced from nitrate, chloride, acetate, carbonate, sulfate, perchlorate, and tetrafluoroborate of the metal ion M, such as Ni, see Paras. [0012];[0036], meeting the specific nickel source in instant application claim 5.
Qiwei does not specifically teach the above limitations in one express embodiment.
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.
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.
Claims 1, 3-8, 10-12, 15-21, and 23 are rejected 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).
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, pillar Nb2O5, 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 and 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 in instant application claim 8;
The nickel, ligand, and MOF in instant application claim 17;
The nickel source, 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, fluorine and 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.
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 relates to niobium fluorocomplexes prepared without the use of dangerous and corrosive hydrofluoric acid (HF), see Abstract; Pg. 353, Col. 1-Col. 2, 2.2.2. Preparation of K2NbF7Mn4+, where the complex is prepared at room temperature from K2NbF7 used as a niobium source in H3PO4 metal, Mn, complexing acid, Pg. 353, Col. 1-Col. 2, 2.2.2. Preparation of K2NbF7Mn4+, instead of HF, 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-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-Col. 2, 2.2.2. Preparation of K2NbF7Mn4+ and MPEP 2141.
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.
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/YO/Examiner, Art Unit 1692
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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