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 1-6, 8, 11-16 of D. Shetty et al., US 18/243,310 (Sep. 7, 2023) are pending. Claims 1, 2, 4, 6, 8, 11, 12, 13, and 16 are in condition for allowance. Claims 3, 5, 14 and 15 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 Claims 12-20, to the non-elected invention of Group (II), are maintained as withdrawn from consideration pursuant to 37 CFR 1.142(b). The restriction/election requirement is maintained as FINAL.
Rejoinder
Claim 1 directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(B), the claims of Group (II) (pending claims 12-16), directed to the process of making the allowable product of claim 1, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on February 18 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Withdrawal Claim Objections
Claim objections are withdrawn in view of Applicant’s amendments.
Withdrawal Rejections 35 U.S.C. 112(b)
In the previous Office action, claims 1-11 were rejected pursuant to 35 U.S.C. 112(b), as indefinite because the structural meaning of the claim 1 “C3 symmetric aldehyde organic linker” in the context of the claim 1 preamble recitation of “conjugated salicylaldehydate metal organic framework” is unclear.
The thrust of the rejection was that previous dependent claim 2 lends confusion to the meaning of the claim 1 term “C3 symmetric aldehyde organic linkers” because it provided an inference to one of skill that each of Ht, Tfpa, Tta, and Pg are intended as “C3 symmetric aldehyde organic linkers”. However, the ligand 2-hyroxytriformylbenzene (Ht) does not have C3 symmetry and phloroglucinol (Pg) is not an “aldehyde”. Further, 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.
The rejection is withdrawn in view of the amendments to claims 1 and 2. These amendments clearly exclude disclosed ligands Ht, Tfpa, Tta, and Pg from the amended claim 1 genus of “C3 symmetric salicylaldehyde organic linker comprising a phenyl group substituted with adjacent aldehyde (–HC=O) and hydroxyl (–OH) groups”, and the meaning of this genus is now clear to one of skill.
Withdrawal Claim Rejections 35 U.S.C. 112(a) – Written Description
Rejection of claims 4-6, 8 and 11 under 35 U.S.C. 112(a) as failing to comply with the written description requirement is withdrawn in view of Applicant’s amendments. Claim 1 now recites a clear, well-defined genus of “conjugated salicylaldehydate metal organic frameworks” “where the ligand is a C3 symmetric salicylaldehyde organic linker comprising a phenyl group substituted with adjacent aldehyde (–HC=O) and hydroxyl (–OH) groups, wherein the metal ion is coordinated to the organic linker through bonding to the adjacent aldehyde and hydroxyl groups of the phenyl group”. A prima facie case that the specification and/or prior art does not disclose sufficient species of “conjugated salicylaldehydate metal organic frameworks” and/or organic-linker functional relationships permitting one of skill to deny possession of the claim 4-6, 8 and 11 subgenera cannot be made. For example, the Examiner can provide no evidence that the claim 4-6, 8 and 11 functional recitations do not occur through the full genus scope.
Withdrawal Non-Statutory Double Patenting Rejections
Rejection of claims 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 is withdrawn in view of Applicant’s filing of a terminal disclaimer.
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).
Claims 1, 2, 4, 6, 8, 11, 12, 13, 16 Are Supported by US 63/404,293 (Sep. 7, 2022)
Claims 1, 2, 4, 6, 8, 11, 12, 13, 16 are supported by US 63/404,293 (Sep. 7, 2022), per the analysis below.
Claim 1, as amended, recites as follows:
Claim 1 A two-dimensional/three-dimensional conjugated salicylaldehydate metal organic framework composition, the metal organic framework comprising:
one or more metal ions and one or more ligands; wherein the ligand is a C3 symmetric salicylaldehyde organic linker comprising a phenyl group substituted with adjacent aldehyde (–HC=O) and hydroxyl (–OH) groups, wherein the metal ion is coordinated to the organic linker through bonding to the adjacent aldehyde and hydroxyl groups of the phenyl group.
Claim 1 as amended is supported by 63/404,293, at least in view of the following text:
Keeping all these in perspective, we introduce a novel class of 2D-c-MOFs from 1, 3, 5-triformylphloroglucinol (Tp) as a C3 symmetric organic building block where alternative formyl and hydroxyl (salicylaldehydate) groups contribute to the metal coordination sphere (Figure 1).
. . .
Our findings suggest that the aldehyde (H-C=O) and ortho-positioned hydroxyl (-OH) functional groups coordinatively interact with metal ions (Cu2+ and Ni2+) and form semicrystalline 2D-c-MOFs
US 63/404,293 at page 1, col. 2, referencing Figure 1 at page 2 (emphasis added). Note that Figure 1 recites “metal ions” generically. It noted that this is not literal support. However, 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, one of skill would concede possession of the claim 1 genus of “C3 symmetric salicylaldehyde” and genus of “metal ions” in view of 63/404,293’s language reciting “metal ions” generically (Fig. 1) and stressing the functional relationship between the ortho-positioned hydroxyl (-OH) and aldehyde (H-C=O) in the C3 symmetric organic salicylaldehyde.
Claim 2 is clearly supported by 63/404,293.
The further functional recitations of claims 4, 6, 8 and 11 are supported by US 63/404,293. See, US 63/404,293 at page 11, last paragraph (claim 4); Id. at Abstract and at page 2, col. 1 (claims 6 and 8); Id. at page13 (claim 11).
Claims 12 and 16 are supported by US 63/404,293 at page 2, col. 1, last paragraph.
Claim 13 is clearly supported by US 63/404,293.
In view of the foregoing, the effective filing date of claims 1, 2, 4, 6, 8, 11, 12, 13, 16 is the provisional application’s filing date of September 7, 2022.
Claims 3, 5, 14, and 15 Are Not Supported by US 63/404,293 (Sep. 7, 2022)
The scope of the claim 3 and 14 metals is clearly not supported by US 63/404,293. The only metal ions taught by 63/404,293 are copper and nickel, which does not support the metals listed in claim 3.
No support for the claim 5 limitation of “porous with a pore size in the range of 0.7 to 1.5 nm and an interlayer distance in the range of 0.25 to 0.35 nm” can be found in US 63/404,293. MPEP § 2163(II)(A) (citing Hyatt v. Dudas, 492 F.3d 1365, 1371, 83 USPQ2d 1373, 1376-1377 (Fed. Cir. 2007)).
No support for the claim 15 limitation of “wherein the heating is done at a temperature in the range of 75 °C - 95°C for 5-24 hours” can be found in 63/404,293. MPEP § 2163(II)(A).
In view of the foregoing, the effective filing date of claims 3, 5, 14 and 15 is the non-provisional filing date of September 7, 2023.
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 3, 5, 14 and 15 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 3, 5, 14 and 15 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) as instantly disclosed.
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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 every limitation of claim 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 5 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).
Each and every element of claims 14 and 15 (where the metal ion is copper) is clearly met by Mohammed at page S4 (“S-2: Synthetic procedures”), as this section is reproduced directly above.
Subject Matter Free of the Art of Record
Claims 1, 2, 4, 6, 8, 11, 12, 13, 16 are free of the art of record. 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
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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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
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