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 D. Shetty et al., US 18/243,310 (Sep. 7, 2023) are pending. Claims 12-20, to the non-elected invention of Group (II), are withdrawn from consideration pursuant to 37 CFR 1.142(b). Claims 1-11 are under examination on the merits and are rejected.
Election/Restrictions
In the Reply filed on February 18, 2026, Applicant elected Group (I), without traverse, claims 1-11, drawn to two-dimensional/ three-dimensional conjugated salicylaldehydate metal organic framework (2D/3D-c-SA MOF) composition. Claims 12-20, to the non-elected invention of Group (II), are withdrawn from consideration pursuant to 37 CFR 1.142(b). The restriction/election requirement is made FINAL.
Effective Filing Date
The effective filing date of a claimed invention is determined on a claim-by-claim basis. MPEP § 2152.01. The instant application claims priority to US 63/404,293 (Sep. 7, 2022).
Independent claim 1, and its dependents 2-11, are not supported pursuant to § 112 by US 63/404,293 (Sep. 7, 2022), as filed. Priority application US 63/404,293 (Sep. 7, 2022) at least does not provide literal support the claim 1 limitations of “one or more metal ions” and “C3 symmetric aldehyde organic linker”, which are also required limitations of dependent claims 2-11. Ipsis verbis disclosure is not necessary to satisfy the written description requirement; if a skilled artisan would have understood the inventor to be in possession of the claimed invention at the time of filing, even if every nuance of the claims is not explicitly described in the specification, then the adequate description requirement is met. MPEP § 2163(II)(A)(3)(a).
Here, US 63/404,293 teaches that 1,3,5-triformylphloroglucinol as an organic linker to construct 2D-c-MOFs. US 63/404,293 at page 7 of 14; Id. at Abstract (referencing Figure 1). However, no other C3 symmetrical aldehydes (other than 1,3,5-triformylphloroglucinol) are disclosed in US 63/404,293. Further, the only metal ions taught by 63/404,293 are copper and nickel. US 63/404,293 at page 1 of 14, col. 1.
The single disclosed species 1,3,5-triformylphloroglucinol (Tp) of 63/404,293, does not support the much broader claim term “C3 symmetric aldehyde organic linker” (as this term is discussed in the § 112(b) rejection below) that is present in each of claims 1-11. MPEP § 2163(II)(A)(3)(a). Further, the only metal ions taught by 63/404,293 are copper and nickel, which does not support the claim 1 limitation of “one or more metal ions” or the metals listed in claim 3. As such, the effective filing date of claim 1-11 is the non-provisional filing date of September 7, 2023.
Claim Objections
Parentheticals
Claim 1 and dependent claims 2-11 are objected to for recitation of the parenthetical “(2D/3D-c-SA MOF)” in claim 1. It appears to the Examiner, based on the specification teachings, that the parenthetical phrase is merely a synonym for the adjacent term. However, this parenthetical is at best superfluous. Better form is to amend by removing the parenthetical to avoid confusion as to whether Applicant improperly intends preferences within the claim, or the possibility that the parenthetical could be interpreted to have a different, broader or narrower meaning than the referenced term. See MPEP § 2173.05(d).
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).
The Metal Organic Framework Structure of Claim 1 Is Unclear
Claims 1-11 are rejected pursuant to 35 U.S.C. 112(b), as indefinite because the structural meaning of “C3 symmetric aldehyde organic linker” in the context of the preamble recitation of “conjugated salicylaldehydate metal organic framework” is unclear. Claim 1 recites as follows:
1. A two-dimensional/ three-dimensional conjugated salicylaldehydate metal organic framework (2D/3D-c-SA MOF) composition, the MOF composition comprising:
one or more metal ions and one or more ligands;
wherein the ligand is C3 symmetric aldehyde organic linker.
First, 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); specification at page 1, [0002].
As a preliminary issue, the claim 1 preamble term “conjugated salicylaldehydate metal organic framework (2D/3D-c-SA MOF)” is interpreted as a limitation because, as discussed in more detail below, the specification emphasizes the criticality of the “salicylaldehydate” function in forming the claimed MOFs. MPEP § 2111.02, see specification at page 7, [0038] (“The reversible coordination of salicylaldehydate functional pocket with the metal centers allowed the construction of porous and crystalline SA-MOFs.”); see also, Id. at page 23, [0075]. The specification does not specifically define the preamble term/limitation “conjugated salicylaldehydate metal organic framework”. This term is broadly and reasonably interpreted based on the plain meaning of salicylaldehyde:
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and consistently with the specification, as an MOF where the metal is coordinated to the organic ligands though bonding to adjacent, phenyl-ring aldehyde and hydroxyl groups as shown in specification Fig. 10B for iron.
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Specification Fig. 10B.
The specification also does not specifically define “C3 symmetric aldehyde organic linker”. The plain meaning of C3 symmetry (with respect to a molecule) is a molecule that appears identical after being rotated by 120 ° around a central axis. And the meaning of “aldehyde” is clear. With regard to the meaning of “C3 symmetric aldehyde organic linker”, the specification teaches that:
[0046] Step 101 comprises adding (101) one or more organic ligand to one or more metal ion. The organic linkers comprise C3 symmetric aldehyde organic linkers.
Some examples of organic linkers or ligands include, but are not limited to 1,3,5-triformylphloroglucinol (Tp), 2-hydroxytriformylbenzene (Ht), tris(4-formylphenyl)amine (Tfpa), 1,3,5-triazine-2,4,6-triyl)tribenzaldehyde (Tta), phloroglucinol (Pg). Any extendable linker with symmetric salicylaldehyde units may be used.
Specification at page 10, [0046] (emphasis added). The structures of the ligands recited in above specification paragraph [0046] are given below:
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The issue of indefiniteness arises because: (1) phloroglucinol (Pg) is not an “aldehyde”, as required by the claim 1 term “C3 symmetric aldehyde organic linker”; (2) the ligand 2-hyroxytriformylbenzene (Ht) does not have C3 symmetry; and (3) both of tris(4-formylphenyl)amine (Tfpa) and 1,3,5-triazine-2,4,6-triyl)tribenzaldehyde (Tta) lack a salicylaldehyde-function (i.e., both of adjacent aldehyde and hydroxy groups), which the specification teaches is required to meet the “salicylaldehydate” MOF of the claim 1 preamble. Further, as discussed in more detail below, the specification appears to exclude ligands Ht, Tfpa, Tta, and Pg as not suitable for MOF formation (at least with the metals tested in the specification).
Specification working Example 1 entitled “EXAMPLE 1: Synthesis of 2D/3D-c-SA MOF” teaches copper-based MOF synthesis with ligand Tp and attempted MOF synthesis with ligands Pg, Ht, Tfpa, and Tta. Specification at pages 14-15, [0056]-[0061]. The specification also teaches synthesis of nickel based Tp-Ni; specification at page 17, [0064] (part of Example 1); and iron-based Tp-Fe. Specification at pages 18-19 (Example 3).
The specification discusses XRD and FTIR analysis of the synthesized MOFs, where it appears that the Tp-ligand provided good MOF structural data. Specification at page 20, [0068]. However, the specification teaches (see footnote 1) that the other ligands (i.e., Ht, Tfpa, Tta, and Pg) gave poorer structural characteristics (do not form MOFs) because they did not have the symmetric ortho -OH and -HC=O groups (i.e., “salicylaldehydate”). Specification at page 21, [0069]-[0070].
In this regard, the specification states the following (at least with respect to copper, the only metal tested on the referenced ligands Ht, Tfpa, Tta, and Pg):
[0071] The PXRD and FTIR profiles of these as-synthesized organic core and metal mixture [for ligands Ht, Tfpa, Tta, and Pg]1 did not show any indication of the formation of ordered crystalline frameworks. Taking together these functional groups-controlled experiments prove the significant role of symmetric ortho -OH and -HC=O groups in forming stable MOFs.
Specification at page 21, [0071] (emphasis added). The specification further teaches that the critical role of salicylaldehyde functional groups to coordinate with Fe3+ cations and form a 3D network was investigated using two different C3 linkers (i.e., Tfb (1,3, 5-triformylbenzene and phloroglucinol (Pg) (neither of which comprises adjacent aldehyde-hydroxy groups). Specification at page 23, [0075]. The specification teaches poor MOF forming results (at least with iron) with respect to Tfb and Pg and states that this experiment “suggested the significant role of ortho-positioned aldehyde and hydroxyl groups in holding the Fe3+ ions in an ordered arrangement. Specification at page 23, [0075].
In sum, the specification teaches one of skill that the only disclosed ligand that gave suitable MOF structural characteristics (i.e. crystallinity) was 1,3,5-triformylphloroglucinol (Tp).
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Further, as discussed above, the specification emphasizes the critical role of salicylaldehyde functional group.
In view of the foregoing, one reasonable interpretation, consistent with the plain claim language and the specification, is that claim 1 requires a fully conjugated 2D or 3D metal organic framework (MOF), where the organic ligand: (1) has C3 symmetry; (2) comprises at least one phenyl group substituted with adjacent aldehyde and hydroxy groups; and (3) the metal is coordinated to the C3 symmetrical organic ligand though bonding to adjacent, phenyl-ring aldehyde and phenyl-ring hydroxyl groups (i.e., salicylaldehydate-metal bonding), for example, as shown in specification Fig. 10B. This interpretation excludes disclosed ligands Ht, Tfpa, Tta, and Pg.
The § 112(b) issue arises because, even though the working examples indicate each of that Ht, Tfpa, Tta, and Pg are not suitable for MOF formation, and each of these ligands also does not facially appear to meet the plain meaning of “C3 symmetric aldehyde organic linker”, still the specification body (specification at page 10, [0046], reproduced above) and dependent claim 2 provide an inference to one of skill that each of Ht, Tfpa, Tta, and Pg is intended as “C3 symmetric aldehyde organic linker”.
In view of the application’s contradictory teachings, one of ordinary skill does not know the structural meaning of, per claim 1, a “C3 symmetric aldehyde organic linker” or what “two-dimensional/ three-dimensional conjugated salicylaldehydate metal organic frameworks” fall within the scope of claim 1. MPEP § 2173. Claim 1 is therefore indefinite and dependent claims 3-11 do not cure the issue.
Respecting claim 2, as discussed above, the specification working examples make clear that the first claim 2 recited ligand (1,3,5-triformylphloroglucinol (Tp)) is a “C3 symmetric aldehyde organic linker” of the invention. Claim 2 is indefinite because, by virtue of its dependency to claim 1, it provides an inference to one of skill that the other recited ligands Ht, Tfpa, Tta, and Pg should also be interpreted as, per claim 1, “C3 symmetric aldehyde organic linkers” that form “salicylaldehydate” MOFs. But, as discussed above, such inference is contrary to the plain claim language and the specification working examples. The specification body also provides this dubious inference. Specification at page 10, [0046]. It is duly noted that claim 2 uses the open-ended transitional phrase “comprising”, which typically has the effect of not excluding additional, unrecited elements. MPEP § 2111.03(I). However, considering the totality, it is not clear to one of skill whether the claim 2 ligands “2-hydroxytriformylbenzene (Ht), tris(4-formylphenyl)amine (Tfpa), 1,3,5-triazine-2,4,6-triyl)tribenzaldehyde(Tta), phloroglucinol (Pg)” are intended as C3 symmetric aldehyde organic linkers” themselves or, alternatively, each must be further substituted with hydroxy and/or formyl groups such that both C3 symmetry is present and the ligands also comprise the adjacent aldehyde and hydroxy groups that the specification teaches is critical for salicylaldehydate-metal bonding.
Claim Rejections - 35 USC § 102 (AIA )
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
§ 102(a)(1) Rejection over A. Mohammed et al., 59 Chem. Commun. 2608-2611 (Jan. 30, 2023) (“Mohammed”)
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by A. Mohammed et al., 59 Chem. Commun. 2608-2611 (Jan. 30, 2023) (“Mohammed”).
Prior Art Effect of Mohammed
As discussed above, the effective filing date of claims 1-11 is Sep. 7, 2023. Mohammed is effective prior art under 35 USC § 102(a)(1) because Mohammed’s publication date of Jan. 30, 2023 is before the instant effective filing date of Sep. 7, 2023 and Mohammed names additional inventors. MPEP § 717(I)/(III). However, the instant application’s effective filing date is less than one year before Mohammed’s publication date and Mohammed and the instant application have common inventors/authors. As such, Applicant may consider an exception under 35 U.S.C. 102(b)(1)(A) to overcome this rejection by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(1). MPEP § 717(I)/(III). Alternatively, Applicant may consider amending the claims such that they are fully supported by and entitled to the effective filing date of US 63/404,293 (Sep. 7, 2022).
Teachings of Mohammed
Mohammed teaches synthesis of the same Cu-Tp-I and Cu-Tp-II MOFs (where Tp is 1,3,5-triformylphloroglucinol).
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Mohammed’s synthesis is reproduced below
Synthesis of Cu-Tp-I: The Cu-Tp-I was synthesized through mechanochemical reactions using a mortar and pestle. The Tp linker (0.15 mmol) was directly added into the 1.5 equivalent of Cu(NO3)2.3H2O (0.225 mmol) and mechano-mixed thoroughly into a solid paste form. A drop of DI water (~50 μL) was added to the solid mixture for uniform mixing and subsequently heated the mixture at 90° C in a closed container for 5 hours. The resulting solid powder was washed with N, N-dimethylacetamide (DMA), tetrahydrofuran (THF), water, and acetone to obtain Cu-Tp-I as a green color powder.
Synthesis of Cu-Tp-II: The synthetic procedure was the same as above, except we used CuCl2.2H2O instead of Cu(NO3)2.3H2O.
Mohammed at page S4 (“S-2: Synthetic procedures”). This is the exact same procedure disclosed in the specification for preparation of the instantly disclosed and claimed Cu-Tp-I and Cu-Tp-II MOFs. Specification at page 14, [0056]-[0057]. As discussed in Claim Interpretation above, the only MOF species instantly disclosed as falling within claim 1 are Cu-Tp-I, Cu-Tp-II, Ni-Tp, and Fe-Tp MOFs.
Mohammed clearly meets each and every limitation of claims 1-3, where the metal is copper and the “C3 symmetric aldehyde organic linker” is 1,3,5-triformylphloroglucinol.
The further functional and physical limitations of claim 4-6 and 8-11 are prima facie met by Mohammed’s Cu-Tp-I and Cu-Tp-II MOFs because these are the same MOFs disclosed and claimed in the instant specification (prepared in the same way) and would therefore necessarily exhibit the claimed functional and physical characteristics. MPEP § 2112.01(I). Where the claimed and prior art products are identical or substantially identical in composition to a claimed composition, a prima facie case of either anticipation or obviousness has been established subject to Applicant’s rebuttal. MPEP § 2112.01(I) (citing In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971).
The limitations of claim 7 are met because Mohammed teaches synthesis of Cu-Tp-film, whereby a uniform green color film was observed on the copper foil surface after air-drying the foil for 24 hours. Mohammed at page S5 (“Synthesis of Cu-Tp-Film”). Mohammed teaches that the vertical image of the scissor-cut Cu-Tp-Film showed a clear distinction between the grown Cu-Tp and Cu foil with the thicknesses of about 25–30 μm and about 20 μm, respectively, which falls within the claim 7 range. Mohammed at page 2611, col. 1.
Claim Rejections 35 U.S.C. 112(a) – Written Description
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
For an originally filed claim, 35 U.S.C. 112(a) requires that the specification shall contain a written description of the invention demonstrate that the inventor was in possession of the invention that is claimed.2 MPEP § 2163(I); MPEP § 2163(II)(A)(3)(a). Possession may be shown by disclosure of drawings or structural chemical formulas that show that the invention was complete. MPEP § 2163(I).
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus. MPEP § 2163(II)(A)(3)(a)(ii). A "representative number of species" means that the species which are adequately described are representative of the entire genus. MPEP § 2163(II)(A)(3)(a)(ii). Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. MPEP § 2163(II)(A)(3)(a)(ii) (citing AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014).
The § 112(a) rejection
Claims 4-11 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement because the application as filed does not disclose either sufficient species of, per claim 1 “conjugated salicylaldehydate metal organic frameworks” and/or “C3 symmetric aldehyde organic linkers” and metals:
1. A two-dimensional/ three-dimensional conjugated salicylaldehydate metal organic framework (2D/3D-c-SA MOF) composition, the MOF composition comprising:
one or more metal ions and one or more ligands;
wherein the ligand is C3 symmetric aldehyde organic linker.
or a structure-function correlation, between the “C3 symmetric aldehyde organic linker” and its propensity to form an MOF per the functional and physical requirements of claim 4-11, such that one of skill can that Applicant was in possession of the full scope of claimed “conjugated salicylaldehydate metal organic frameworks”.
Claim Breadth
Claim breath is relevant to the instant § 112(a) written description rejection. The written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention. MPEP § 2163(II)(A)(3)(a)(ii) (citing Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th 1330, 1337, 2021 USPQ2d 893 (Fed. Cir. 2021)).
The number of potential MOFs falling with the scope of claim 1 is vast. Under an interpretation of claim 1 (see § 112(b) rejection above) as requiring a fully conjugated 2D or 3D metal organic framework (MOF), where the organic ligand has: (1) C3 symmetry; and (2) the metal is coordinated to the C3 symmetrical organic ligand though bonding to adjacent, phenyl-ring aldehyde and phenyl-ring hydroxyl groups (i.e., salicylaldehydate-metal bonding), for example, as shown in specification Fig. 10B, the number of “C3 symmetric aldehyde organic linkers” is numerous. For example, under this interpretation, numerous ligands that comprise hydroxy-aldehyde-substituted phenyl group moieties C3-symmetrially arranged around a structurally undefined core can be envisioned. Furthermore, claims 4-11 are directed to every metal on the periodic table.
Guidance in the Art and Specification
What is conventional or well known to one of ordinary skill in the art need not be disclosed in detail. MPEP § (II)(A)(3)(a). Thus, the state of and predictability in the art is a relevant consideration in determining compliance with § 112(a), written description. MPEP § (II)(A)(3)(a) (citing Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1085 (Fed. Cir. 2005) ("The ‘written description’ requirement must be applied in the context of the particular invention and the state of the knowledge…. As each field evolves, the balance also evolves between what is known and what is added by each inventive contribution”).
Predictability in the Art
The art of metal organic frameworks is complex and unpredictable. For example, Hendon teaches challenges respecting the vast number of possible topologies and compositions, synthetic challenges in the field of metal organic frameworks stem from understanding and controlling both structural and compositional complexity. C. Hendon et al., 3 ACS Central Science, 554-563 (2017) (“Hendon”) (see page 555, col. 1). Hendon states at Figure 1 “[c]omplexity of metal−organic frameworks arises from both structure and composition”. Hendon at page 555, Figure 1. Hendon states that achieving desired metal-organic framework structures unlike bridging oxide ligands found in zeolites, the chemical diversity of organic ligands in metal-organic frameworks added an extra level of electronic complexity arising from the orbital mixing at the metal−organic interface. Hendon at page 554, col. 2.
With respect to electrically conductive metal organic frameworks (as instantly claimed, per claims 10 and 11), Sun teaches that the low electrical conductivity is a direct consequence of how these materials are typically constructed: hard metal ions are connected by redox-inactive organic ligands that bind via hard oxygen or nitrogen atoms and therefore, the vast majority of metal-organic frameworks do not provide any low-energy pathway for charge transport, nor any free charge carriers, and behave as electrical insulators with conductivity lower than 10-10 Scm-1. L. Sun et al., 55 Angew. Chem. Int. Ed., 3566-3579 (2016) (see page 3566, col. 1). With respect to conductive metal-organic frameworks, Sun teaches that a unified, fundamental understanding of conductivity in metal-organic frameworks is still lacking in most cases, and significant experimental and theoretical future work will be needed to elucidate the mechanisms of charge transport in conductive metal-organic frameworks. Sun a page 3576, col. 2.
Guidance in the Specification
Specification working Example 1 entitled “EXAMPLE 1: Synthesis of 2D/3D-c-SA MOF” teaches copper-based MOF synthesis with ligands Tp, Pg, Ht, Tfpa, and Tta. Specification at pages 14-15, [0056]-[0061]. The specification also teaches synthesis of nickel based Tp-Ni; specification at page 17, [0064] (part of Example 1); and iron-based Tp-Fe. Specification at pages 18-19 (Example 3).
The specification discusses XRD and FTIR analysis of the synthesized MOFs, where it appears that the Tp-ligand provided good structural data. Specification at page 20, [0068]. However, the specification appears to teach (see footnote 1) that the other ligands (i.e., Ht, Tfpa, Tta, and Pg) gave poorer structural characteristics (do not form MOFs). Specification at page 21, [0069]-[0070]. In this regard, the specification states that (at least with respect to copper, the only metal tested on the referenced ligands):
[0071] The PXRD and FTIR profiles of these as-synthesized organic core and metal mixture [for ligands Ht, Tfpa, Tta, and Pg]3 did not show any indication of the formation of ordered crystalline frameworks. Taking together these functional groups-controlled experiments prove the significant role of symmetric ortho -OH and -HC=O groups in forming stable MOFs.
Specification at page 21, [0071] (emphasis added). The specification further teaches that the critical role of salicylaldehyde functional groups to coordinate with Fe3+ cations and form a 3D network was investigated using two different C3 linkers (i.e., Tfb (1,3, 5-triformylbenzene and phloroglucinol (Pg) (neither of which comprises adjacent aldehyde-hydroxy groups). Specification at page 23, [0075]. The specification teaches poor MOF forming results (at least with iron) with respect to these two ligands and states that this experiment “suggested the significant role of ortho-positioned aldehyde and hydroxyl groups in holding the Fe3+ ions in an ordered arrangement. Specification at page 23, [0075].
In sum, the specification teaches that the only disclosed ligand that gave suitable MOF structural characteristics (i.e. crystallinity) was 1,3,5-triformylphloroglucinol (Tp).
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Further specification teaches only a few species of “conjugated salicylaldehydate metal organic frameworks” all using the same “C3 symmetric aldehyde organic linker”; that is copper-based Cu-Tp-I and Cu-Tp-II; nickel based Tp-Ni; and iron-based Tp-Fe.
The art does not supplement the specification’s teachings. No art of record teaches MOFs formed using “C3 symmetric aldehyde organic linker” or a structure-function correlation, between the “C3 symmetric aldehyde organic linker” and its propensity to form an MOF per the functional and physical requirements of claim 4-11.
Original Claims 4-11 Lack Adequate Written Description Support
Original claims 4-11 lack adequate written description support because the application as filed does not disclose either sufficient species of, per claim 1 “conjugated salicylaldehydate metal organic frameworks” and/or “C3 symmetric aldehyde organic linkers” and metals:
1. A two-dimensional/ three-dimensional conjugated salicylaldehydate metal organic framework (2D/3D-c-SA MOF) composition, the MOF composition comprising:
one or more metal ions and one or more ligands;
wherein the ligand is C3 symmetric aldehyde organic linker.
or a structure-function correlation, between the “C3 symmetric aldehyde organic linker” and its propensity to form an MOF per the functional and physical requirements of claim 4-11, such that one of skill can that Applicant was in possession of the full scope of claimed “conjugated salicylaldehydate metal organic frameworks” of claims 4-11.
In sum, the claims recite very minimal structure for the “C3 symmetric aldehyde organic linker” and neither the art nor the specification shows a well-established correlation between the functions and/or physical requirements of claim 4-11. As stated above, the written description requirement may also be satisfied through disclosure of function and minimal structure when there is a well-established correlation between structure and function. MPEP § 2163(II)(A)(3)(a)(i). In contrast, without such a correlation, the capability to recognize or understand the structure from the mere recitation of function and minimal structure is highly unlikely. MPEP § 2163(II)(A)(3)(a)(i) (citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406).
Further, the specification does not disclose a representative number of species. The specification teaches one species of “C3 symmetric aldehyde organic linker” that gave suitable MOF structural characteristics (i.e. crystallinity); the following 1,3,5-triformylphloroglucinol (Tp).
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Further specification teaches only a few species of “conjugated salicylaldehydate metal organic frameworks” all using the same “C3 symmetric aldehyde organic linker”; that is copper-based Cu-Tp-I and Cu-Tp-II; nickel based Tp-Ni; and iron-based Tp-Fe. This species are clearly not representative of the full scope of “two-dimensional/ three-dimensional conjugated salicylaldehydate metal organic framework” as claimed. A "representative number of species" means that the species which are adequately described are representative of the entire genus. MPEP § 2163(II)(A)(3)(a)(ii). Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. MPEP § 2163(II)(A)(3)(a)(ii) (citing AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014).
The art does not supplement the specification’s teachings. No art of record teaches MOFs formed using “C3 symmetric aldehyde organic linker” or a structure-function correlation, between the “C3 symmetric aldehyde organic linker” and its propensity to form an MOF per the functional and physical requirements of claim 4-11.
Non-Statutory Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
Non-statutory Double Patenting Rejection over D. Shetty et al., US 19/261,490 (Jul. 7, 2021), published as US 2025/0336979 (2025)
Claims 1-6 and 8-11 are rejected on the ground of non-statutory double patenting as being unpatentable over conflicting claims 15 and 18 of D. Shetty et al., US 19/261,490 (Jul. 7, 2021), published as US 2025/0336979 (2025), which is a continuation of the instant application. Conflicting claims 15 and 18 recite:
Conflicting claim 15. A method for synthesis of a salicylaldehydate-based iron metal organic framework composition, the method comprising:
(a) mixing one or more metal salts and a salicylaldehydate metal organic framework (MOF) in a specified ratio, sufficient to form a mixture;
(b) conducting a milling process with the one or more metal salts, salicylaldehydate MOF, and milling balls, to reduce a particle size of the one or more metal salts and salicylaldehydate MOF sufficient to form a product; and
(c) heating the product, resulting in a heated product
Conflicting claim 18. The method of claim 15, wherein: the specified ratio is within a range of 1:0.1 to 1:5; and the salicylaldehydate MOF is a 1,3,5-triformyl-phloroglucinol (Tp)-based salicylaldehydate MOF.
The conflicting specification (at US-Pub page 8, [0094]) teaches that the Fe-Tp MOF of conflicting claim 18 is prepared by the same method and is the same Fe-Tp MOF taught by the instant specification. See, specification at page 18, [0066]. Note that a reference specification may be reviewed to construe the conflicting claims. MPEP § 804(II)(B)(1). Further, those portions of the specification which provide support for the conflicting claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application. MPEP § 804(II)(B)(1) (citing In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970)).4 In sum, the conflicting claim 18 ligand (1,3,5-triformylphloroglucinol (Tp)) is, per instant claim 1, a “C3 symmetric aldehyde organic linker” and the conflicting claim 18 iron-based, 1,3,5-triformyl-phloroglucinol (Tp)-based salicylaldehydate MOF is an anticipating species of the instantly claimed “two-dimensional/ three-dimensional conjugated salicylaldehydate metal organic framework (2D/3D-c-SA MOF) composition”.
The conflicting claim 18 “1,3,5-triformyl-phloroglucinol (Tp)-based salicylaldehydate MOF” (which is called Fe-Tp MOF by both the instant and conflicting specifications) meets each and every limitation of, an anticipates, instant claims 1-3, where the metal is iron and the “C3 symmetric aldehyde organic linker” is 1,3,5-triformylphloroglucinol.
The further functional and physical limitations of claim 4-6 and 8-11 are prima facie met by the conflicting claim 18 MOF because it is the same MOF disclosed and claimed in the instant specification (prepared in the same way) and would therefore necessarily exhibit (subject to Applicant’s rebuttal) the claimed functional and physical characteristics. MPEP § 2112.01(I). Where the claimed and prior art products are identical or substantially identical in composition to a claimed composition, a prima facie case of either anticipation or obviousness has been established subject to Applicant’s rebuttal. MPEP § 2112.01(I) (citing In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971).
Terminal Disclaimer
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Additional Art not Cited Against the Claims
Subject to the § 112 rejections and an updated search, if Applicant overcomes rejection of claims 1-11 under 35 U.S.C. 102(a)(1) as being anticipated by A. Mohammed et al., 59 Chem. Commun. 2608-2611 (Jan. 30, 2023) (“Mohammed”), the claims 1-11 are otherwise free of the art of record. In this case, the closest are of record is D. Reinhard et al., 30 Chemistry of Materials, 2781-2790 (2018) (“Reinhard”). Reinhard teaches that based on hexakissalicylaldehyde, a variety of three-dimensional isostructural porous MaSOFs with different metal ions (Zn2+, Ni2+, Cu2+, Pd2+, and Pt2+) are introduced. Reinhard teaches the hexakissalicylaldehyde ligand (1) for forming organic frameworks with metals.
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Reinhard at page 2782 (Scheme 1). Reinhard’s hexakissalicylaldehyde ligand (1) meets the claim 1 limitation of “wherein the ligand is C3 symmetric aldehyde organic linker”. Reinhard teaches synthesis of MaSOFs by reacting (1) with 1,2-diaminobenzene and a metal salt. Reinhard at page 2783, Scheme 2.
Reinhard differs from claim 1 because the ligand (1) reacts with the 1,2-diaminobenzene and a metal salt to give a metal-salphen organic framework, which does not meet the claim 1 preamble limitation of “conjugated salicylaldehydate metal organic framework”. Reinhard at page 2783, Scheme 2. That is, the salicylaldehyde function in Reinhard’s ligand (1) is lost upon reaction with 1,2-diaminobenzene. Id. Claim 1 and its dependents are not obvious in view of Reinhard, because neither Reinhard nor secondary art teaches the instantly disclosed concept that that adjacent formyl and hydroxyl groups (salicylaldehydate) contribute to a metal coordination sphere such that “conjugated salicylaldehydate metal organic frameworks” are formed. Specification at page 7, [0038]; see also specification Fig. 10B; Id. at page 23, [0075] (“The reversible coordination of salicylaldehydate functional pocket with the metal centers allowed the construction of porous and crystalline SA-MOFs.”). As such, one of ordinary skill is not motivated to react Reinhard’s hexakissalicylaldehyde ligand (1) with a metal salt in the absence of 1,2-diaminobenzene to form the claimed “conjugated salicylaldehydate metal organic framework”.
Conclusion
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 The Examiner infers here that specification paragraph [0071] is speaking to ligands Ht, Tfpa, Tta, and Pg.
2 While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, a question as to whether a specification provides an adequate written description may arise in the context of an original claim. MPEP § 2163.03 (V) (citing In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976)). An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. MPEP § 2163.03 (V) (citing Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) ("[e]ven if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed”).
3 The Examiner infers here that the specification is speaking to ligands Ht, Tfpa, Tta, and Pg , but this is not entirely clear.
4 The court in Vogel recognized ‘that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim,’ but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent or application which provides support for the claim. MPEP § 804(II)(B)(1). In this regard, it is also proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting context. MPEP § 804(II)(B)(1).
Prosecution Insights