1Notice 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
This office action is in response to applicant’s communication filed on 9/26/24.
Claims 1-21 are pending in this application and are being examined in this Office Action. Claims 17-21 have been withdrawn. Thus claims 1-16 are being examined in this office action. The 112 rejection has been withdrawn in response to applicant’s claim amendment filed 1/22/26.
Claim Rejections – 35 USC 103
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 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 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 of this title, 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 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Abney et al. (US 20220048929, pub date Feb. 17, 2022).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Abney et al. teaches a method for forming a metal organic framework (MOF), a dynamic porous material with open metal sites, in which ligands append to theses open metal sites in the MOF. The MOF is initially functionalized with amines ligands, exemplified by the amine, N,N’-dimethylethylenediamine (mmen) (b.p. 120 degree C) in Example 5, by combining the initial MOF with the amine ligand. Abney et al. then teaches soaking this amine functionalized MOF in water (b.p. 100 degree C), methanol (b.p. 64.7 degree C) or ethanol (b.p. 78.23 degree C) which act as coordinating solvents, which remove 97.75% to 99.5% of the amine mmen ligand, and replaces the amine mmen ligand with the coordinating solvent, exemplified as water, methanol or ethanol. This would then give approximately 0.5 to 2.25% coordination of the amine mmen ligand and 97.75% to 99.5% coordination of the coordinating solvent (water, methanol or ethanol) to the open metal sites in the MOF. Abney et al. teaches that these ligands can be dynamically attached and detached, or appended and re-appended, to the open metal sites in the MOF. This appending or re-appending of the ligand to the MOF can be performed in solution or instead in the vapor phase. Furthermore, the open metal sites in the MOF can contain the following metals, Mg, Ca, V, Mn, Cr, Fe, Co, Ni, Cu and Zn. The linkers used in the MOF can include 4,4’-dioxidobiphenyl-3,3’-dicarboxylate, which bind the open metal sites. The protonated form of this linker is 4,4’-dioxidobiphenyl-3,3’-dicarboxylic acid. (paragraphs 3, 6, 50, 69, 74, 77-78, 83, 92, 102, 110 and 113-114; examples and claims)
The synthesis of the functionalized MOF is performed at elevated temperatures, from room temperature to 250 degree C, and at ambient pressure, which is 101,325 pascals. Furthermore, the pressure can be reduced in order for the ligands to form in the vapor-phase without solvent. (paragraphs 11, 58-60)
Abney et al. teaches removal of the solvent at lower temperatures, 100 degree C, to give a crystalline solid to obtain powder x-ray diffraction data. The solvent is also filtered and/or centrifuged from the MOF. (paragraph 11, 61, 71-72, 105, 116; example 4; claim 4)
Abney et al. teaches the removal of one or more of the ligands from the MOF can be done with the solvents, water, methanol or ethanol, by soaking the MOF in solvent from 10 min to 18 hour, while allowing for process flexibility and optimization. (paragraph 77 and 121)
The amine, exemplified as N,N’-dimethylethylenediamine (mmen) (b.p. 120 degree C), would be considered the “functionalizing agent”.
The coordinating solvents, such as water (b.p. 100 degree C), methanol (b.p. 64.7 degree C) or ethanol (b.p. 78.23 degree C), would be considered the “labile ligand”.
Abney et al. also teaches in Example 4, that other amines, such as spermine (b.p. 150.1 degree C) and triethylenetetramine (b.p. 266.6 degree C) can be functionalized on the MOF by vaporizing the amine with the MOF.
With regard to applicant’s limitation for preparing the base porous material, since patentability is based on the process for making the functionalized porous material, rather than the process of making the base porous material, applicant’s limitations in claim 16 for the process of making the base porous material has no patentable weight. If applicant believes the process of making the base porous material has patentable weight, a new restriction would be in order. Thus, since the structure of the base porous material is the same, applicant’s limitations in claim 16 drawn to the process of making the base porous material has no patentable weight.
Additionally, Abney et al. teaches the preparation of a MOF (applicant’s base porous material) by reaction of a linker (applicant’s organic bridging ligand) and metal salt, in a solvent, such as dimethylformamide (DMF) or methanol, with additional soaking in the solvent (which is also applicant’s labile ligand). (paragraphs 58-66, especially paragraphs 61-64)
Abney et al. teaches preparing a metal-organic framework system by appending the ligand to the metal-organic framework system at 100° C. for removal of entrained solvent. Abney et al. teaches “In another method of amine appending, the entire apparatus was placed in an oven and heated to the appropriate temperature to vaporize the amine.” (paragraph 18, 108, Example 4)
Abney et al. teaches “Traditional synthesis for making metal-organic frameworks involve complete dissolution of solids in solvent forming a reaction solution that then enhances metal-organic framework growth at elevated temperatures. Often the prerequisite of such synthesis is a large volume of solvent required for reagent dissolution.” (paragraph 58)
Thus Abney et al. teaches the equivalency of either a solution (liquid) or vapor phase reaction for appending or re-appending the ligand to the metal-organic framework. As shown in Abney et al. examples, the metal-organic framework can be appended in solution or in the gas phase. Furthermore, Abney et al. shows in Figure 2, the powder x-ray diffraction patterns of samples of the metal organic framework system of Example 1, which were treated in solvents as well as in the gas or vapor phase. (paragraph 101)
Note that an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
Abney et al. teaches a solvent based traditional synthesis for appending or re-appending the ligand to the metal-organic framework, which is incorporated by reference, that gives a yield of 2.7 grams of metal-organic framework per liter of reaction solution (paragraph 60-62)
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
Abney et al. is deficient in the sense that it does not teach mixing the initial MOF (applicant’s base porous material) with both the coordinating solvent (applicant’s labile ligand) and the amine (applicant’s functionalizing agent) to form a slurry of functionalized MOF (applicant’s functionalized porous material). Instead, Abney et al. exemplifies first adding the amine (applicant’s functionalizing agent) to the MOF, then adding the coordinating solvent (applicant’s labile ligand), to produce a functionalized MOF (applicant’s functionalized porous material).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
However, it would be prima facie obvious to one of ordinary skill in the art at the time of the invention, to form an amine functionalized MOF slurry by adding at the same time both the coordinating solvent (applicant’s labile ligand) and the amine (applicant’s functionalizing agent) to form a slurry of functionalized MOF (applicant’s functionalized porous material), because the order of addition for the process steps is prima facie obvious in the absence of new or unexpected results. See MPEP 2144.04 IV. C.
Abney et al. already teaches the addition of both the coordinating solvent (applicant’s labile ligand) and the amine (applicant’s functionalizing agent) to the MOF. Abney et al. also shows how both types of ligands, the coordinating solvent and the amine, bind to the open metal sites of the MOF.
Even though Abney et al. exemplifies 97.75% to 99.5% of the coordinating solvent (applicant’s labile ligand) is attached to the open metal sites in the MOF, rather than applicant’s requirement in claim 15 for less than 40 wt% of the labile ligand, it would be obvious to vary the amount of coordinating solvent attached to the MOF. This is because Abney et al. teaches that merely soaking the amine functionalized MOF in the coordinating solvent from 10 min to 18 hours, will replace the amine with coordinating solvent in the functionalized MOF. Furthermore, Abney et al. also teaches how this ligand replacement allows for process flexibility and optimization. Thus it would be reasonable to expect that lowering the amount of time the amine functionalized MOF is soaked in the coordinating solvent, would lower the percentage of coordinated solvent that replaces the coordinated amine in the functionalized MOF.
With regard to applicant’s limitation for a “slurry”, since the formation of a liquid-solid reaction solution or slurry is dependent on multiple factors, such as amounts of reagents and solvents, as well as the temperature of the reaction solution, it would be obvious to optimize these particular reaction conditions, in order to provide a reaction slurry. Optimizing the particular state of the reaction solution is a common optimization tool and not a patentable distinction, absent evidence of unexpected results. Furthermore, Abney et al. already teaches the equivalency of either a solution (liquid) or vapor phase reaction for appending or re-appending the ligand to the metal-organic framework.
Thus it is the position of the examiner that one of ordinary skill in the art, at the time of the invention, would through routine and normal experimentation optimize the order of addition, the reaction solution, the temperatures, the pressures, the molar ratio of the amine functionalizing agent and the percentage and weight ratio of labile solvent ligand, in the formation of amine functionalized MOFs, to allow for process flexibility. Because, the art teaches the same reactants, reagents and process steps as the applicant, the examiner asserts that the order of addition, the reaction solution, the temperatures, the pressures, the molar ratio of the amine functionalizing agent and the percentage and weight ratio of labile solvent ligand are art recognized result-effective variables. Thus it would be obvious in the optimization process to optimize the order of addition, the reaction solution, the temperatures, the pressures, the molar ratio of the amine functionalizing agent and the percentage and weight ratio of labile solvent ligand. Note also that the order of steps does not impart patentability. The applicant does not show any unusual and/or unexpected results for the limitations stated. Note that the prior art provides the same effect desired by the applicant, the formation of amine functionalized MOF, in which the amine functionalizing agent is coordinated to the open metal sites in the MOF.
Response to Arguments
Applicant’s arguments have been considered but are not persuasive for the following reasons:
The examiner acknowledges applicant’s argument that Abney et al. does not teach solvent mediated appending, but instead teaches gas phase methods. Additionally, applicant argues Abney et al. teaches away from solvent mediated appending.
The examiner does not agree with applicant’s arguments. The examiner argues that Abney et al. teaches the equivalency of solvent and vapor based appending or re-appending of the ligand to the metal-organic framework. Note that an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
Also, even though Abney et al. exemplifies vapor phase appending in their examples. Abney et al. also teaches traditional solvent based appending. Thus “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” (MPEP 2143.01, 2100-139, section 1) Also “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi,440 F.2d 442, 169 USPQ 423 (CCPA 1971). ‘A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.’ In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)” (MPEP 2124, 2100-58, section II) Thus the mere existence of some particularly preferred embodiments in Abney et al. not constitute a teaching away for traditional solvent based appending.
Conclusion
Claims 1-16 are rejected.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Cho Sawyer whose telephone number is (571) 270 1690. The examiner can normally be reached on Monday-Friday 9 AM - 6 PM PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Renee Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-274-1690.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Jennifer Cho Sawyer
Patent Examiner
Art Unit: 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
Prosecution Insights