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 .
Election/Restrictions
Applicant’s election of Group II, claims 5-6 in the reply filed on 8/10/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-4 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/10/26.
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites the limitation "said metal" in line 1. The examiner is unclear as to what “said metal” is it referring to. Specifically, it is not clear whether “said metal” refers to the metal of the metal-carbon framework recited in the preamble, the metal of the metal salt, the metal of the metal-containing coordination polymer, or the metal nodes. Clarification is needed.
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 5-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dinca et al. (US 2017/0073364).
Regarding claim 5, Dinca discloses a porous [0008] Ni3(HITP)2 as a metal-containing coordination polymer [0088], wherein it is subjected to heating [0090].
Regarding the limitation “formed by… and heating…”, 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, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). Nevertheless, Dinca discloses the method as claimed (Fig. 2, [0088], [0090]).
Although Dinca fails to explicitly disclose that the metal nodes are reduced in the coordination polymer after heating, it is the examiner's position that the reference to Dinca teaches the same structure, composition, as well heating as claimed and therefore, would be expected to inherently satisfy the claimed reduced metal nodes therein.
It has been held that where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the burden of proof is shifted to applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC § 102 or on prima facie obviousness under 35 USC § 103, jointly or alternatively. In re Best, Bolton, and Shaw, 195 USPQ 430. (CCPA 1977).
Thereby, Dinca discloses the material as claimed absence of evidence to the contrary.
Regarding claim 6, Dinca discloses the metal as claimed ([0088], [0090], claim 13).
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.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Dinca et al. (US 2017/0073364) in view of Bavykina et al. (Metal−Organic Frameworks in Heterogeneous Catalysis: Recent Progress, New Trends, and Future Perspectives).
Regarding claim 5, Dinca discloses a porous [0008] Ni3(HITP)2 as a metal-containing coordination polymer [0088], wherein it is subjected to heating [0090].
Regarding the limitation “formed by… and heating…”, 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, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). Nevertheless, Dinca discloses the nominal method as claimed (Fig. 2, [0088], [0090]).
Although Dinca discloses the polymer and heating thereof, Dinca fails to explicitly disclose that the metal nodes are reduced in the coordination polymer after heating.
Bavykina discloses metal nanoparticles or nanostructures into MOFs (3. MOFs AS SUPPORTS FOR METAL NANOPARTICLES). Bavykina discloses that MNPs are important for catalytic sites as they produce synergist effect between MOF and MNPs and a large number of industrial processes rely on the use of metal nanoparticles. Bavykina discloses the material is obtained via thermal decomposition (Section 3) or pyrolysis (Section 4 and pg. 8495).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that Dinca’s material includes a structure of metal nanoparticles or nanostructures into MOFs, thereby corresponds to the claimed reducing metal nodes therein, as suggested by Bavykina, in order to obtain enhance synergist effect as well as obtaining an improve thermocatalytic activity (Abstract).
Regarding claim 6, Dinca discloses the metal as claimed ([0088], [0090], claim 13).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
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