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 .
Response to Amendment
Applicant Remarks and Claims, filed on 1/22/26, have been entered in the above-identified application.
Any rejections made in the previous action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 (i.e., changing from AIA to pre-AIA ) 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, 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 1-5 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Van Der Boom et al (US 2020/0303135 A1).
Regarding claims 1-5, and 8, Van Der Boom teaches supercapacitors comprising substrates having an amphiphobic surface coating, the surface coating comprising a Metal-Organic Framework (MOF) film (e.g., metal ion-coordinated organic complex layer) wherein: (i) a first surface of the MOF film is bonded to the substrate; (ii) a second surface of the MOF film is an outer surface, functionalized with a plurality of surface functionalization groups; wherein the MOF film comprises a MOF, the MOF having: metal ions selected from ions of Zr, Al, Fe, Cr and Ti; the MOF film having an average thickness in the range 50-500 nm (para 23-24, 34, 52, 57-82, 181, 280).
Van Der Boom suggests multivalent linker groups that would have allowed one of ordinary skill in the art at the time of invention to at once envisage or would have rendered obvious to one of ordinary skill in the art at the time of invention species meeting the limitations of the multivalent linker groups of the instant claims; or Van Der Boom would have rendered obvious to one of ordinary skill in the art at the time of invention species meeting the limitations of the multivalent linker groups of the instant claims, e.g., 6-membered heteroaryl with one nitrogen atom, m (i.e., n) = 0-6, A is an aryl group (i.e., phenyl); and use of hydroxyl groups as a linker (para 34, 57-82, 375).
In addition, Van Der Boom would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention the use of, alone or in combination, surface functionalization groups are covalently bonded to the second surface of the MOF film, e.g., “the metal-organic complex comprises at least one functional group, said functional group capable of binding to said metal linker;” and are independently selected from C1-40 alkyl groups optionally substituted with halo; C5-20 carboaryl groups optionally substituted with C1-16 alkyl and/or halo; C5-20 cycloalkyl groups optionally substituted with C1-6 alkyl and/or halo; silyl-C1-40 alkyl groups optionally substituted with halo; and wherein the surface functionalization groups are silyl-C6-24 alkyl (para 34, 52, 57-82, 375).
Regarding the limitation “the surface coating having an optical transmission of greater than 75% to light having a wavelength in the range 400-700 nm;” Van Der Boom teaches parameters such as the metal ion in the organic complex, the ligand of the complex, and the choice of the electrolyte may affect the transmittance; so it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the metal ion in the organic complex, the ligand of the complex, and the choice of the electrolyte to optimize the optical transmission of the surface coating per the required wavelength.
Van Der Boom teaches the MOF film having an average thickness in the range 50-500 nm (para 181). This range substantially overlaps that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Van Der Boom, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Regard the limitation “amphiphobic” Van Der Boom would have rendered obvious to one of ordinary skill in the art at the time of invention the coating of claim which appears to be the minimum structure and composition necessary to be considered amphiphobic (see instant specification page 2, line 25 – page 3, line 12), so the coating of Van Der Boom is deemed to be amphiphobic. As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art.
Regarding claim 11, Van Der Boom teaches the use of 2 to 80 layers. In addition, it would have been obvious to one of ordinary skill in the art at the time of the invention to duplicate the MOF layers of Van Der Boom as modified by Dinca to optimize the physical or mechanical properties (e.g., strength, impact and erosion resistance, etc) of the overall MOF coating. Furthermore, duplication of parts is prima facie obvious (MPEP § 2144.04 VI B).
Regarding claim 12, Van Der Boom teaches the substrate may be glass (i.e., a clear optical component) (para 23).
Claim 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Van Der Boom as applied to claim 1 above, and further in view of Zhao et al (WO 2017/223046 A1).
Van Der Boom the substrate having an amphiphobic surface coating of claim 1. Van Der Boom further teaches the use of its coatings or material in sensors and army/military/space applications (para 3-4).
Van Der Boom fails to suggest wherein the multivalent linker groups are selected from: 2,5-dihydroxy-1,4- benzenedicarboxylic acid, 2,5-diamino-1,4-benzenedicarboxylic acid, 2,2'-dihydroxy- 4,4'-biphenyldicarboxylic acid, 3,3'-dihydroxy-4,4'-biphenyldicarboxylic acid, 2,2'-diamino- 4,4'-biphenyldicarboxylic acid, 3,3'-amino-4,4'-biphenyldicarboxylic acid, 2,2"-dihydroxy-p- terphenyl-4,4"-dicarboxylic acid, 2,2"-diamino-p-terphenyl-4,4"-dicarboxylic acid, 3,3"- dihydroxy-p-terphenyl-4,4"-dicarboxylic acid, 3,3"-diamino-p-terphenyl-4,4"-dicarboxylic acid, and 2',5'-dihydroxy-[1,1':4',1"]-terphenyl-4,4"-dicarboxylic acid; and wherein the MOF is selected from: Zr(UiO-66-OH) [that is, Zr4+ with 2,5-dihydroxy-1,4-benzenedicarboxylic acid linker], Zr(UiO-66-NH2) [that is, Zr4+ with 2,5-diamino-1,4-benzenedicarboxylic acid linker], Zr(UiO-67-OH) [that is, Zr4+ with 3,3'-dihydroxy-4,4'-biphenyldicarboxylic acid linker], Zr(UiO-67- NH2) [that is, Zr4+ with 3,3'-amino-4,4'-biphenyldicarboxylic acid linker], Zr(UiO-68-OH) [that is, Zr4+ with 3,3"-dihydroxy-p-terphenyl-4,4"-dicarboxylic acid linker], and Zr(UiO-68- NH2) [that is, Zr4+ with 3,3"-diamino-p-terphenyl-4,4"-dicarboxylic acid linker].
Zhao would suggested or otherwise have rendered obvious to one of ordinary skill in the art at the time of invention metal organic frameworks comprising with a 2,5-diaminoterephthalic acid (i.e., 2,5-diamino-1,4-benzenedicarboxylic acid) linker and Zr(UiO-66-NH2) (i.e., Zr(UiO-66-NH2) [that is, Zr4+ with 2,5-diamino-1,4-benzenedicarboxylic acid linker]) (page 15, line 25 – page 16, line 3) for use in military applications and sensors (abstract, page 53, lines 1-5).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to substitute the metal organic frameworks and linkers of Zhao for the metal organic frameworks and linkers of Van Der Boom, since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II); and since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Claim 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Van Der Boom as applied to claim 1 above, and further in view of Dinca et al (US 2021/0398752 A9).
Van Der Boom the substrate having an amphiphobic surface coating of claim 1.
Van Der Boom fails to suggest wherein the MOF has an average pore size of less than 3nm; and wherein the root mean square roughness of the coating layer is in the range 50-150 nm.
Dinca teaches supercapacitors comprising covalently bonded metal-organic frameworks comprising ligands (i.e., multivalent linker groups), metal ions (e.g., iron ions), alkyl or cycloalkyl functional groups (i.e., an outer surface, functionalized with a plurality of surface functionalization groups), silyl-C6-24 alkyl groups, phenyls and biphenyls (abstract, para 5-9, 81, 86, 102-115, 169-178). Dinca further teaches the metal-organic framework may include one or more structural features into which ions can readily intercalate and/or be absorbed, such as pores having a size into which ions can readily be absorbed and/or spaces between two-dimensional sheets therein having a size into which ions can readily intercalate (para 80); wherein the plurality of pores has an average pore size of less than or equal to 3 nm (para 126).
Therefore, it would have been obvious, per the teachings of Dinca, to use pores having a size of less than 3 nm in the amphiphobic surface coating of Van Der Boom, so the coating has a pore size into which ions can readily be absorbed and/or spaces between two-dimensional sheets therein having a size into which ions can readily intercalate. Furthermore, it would have been obvious to one of ordinary skill in the art at the time of the invention to adjust the size of the pores at the surface of the film (and therein the root mean square roughness at the surface of the film) to optimize the ability of ions to be absorbed or readily intercalate.
Response to Arguments
Applicant's arguments filed 1/22/26 have been fully considered but they are not persuasive.
Applicant contends the multivalent linker groups of the present claims are distinct from those as disclosed in Van Der Boom. This is not persuasive.
Van Der Boom suggests multivalent linker groups that would have allowed one of ordinary skill in the art at the time of invention to at once envisage or would have rendered obvious to one of ordinary skill in the art at the time of invention species meeting the limitations of the multivalent linker groups of the instant claims; or Van Der Boom would have rendered obvious to one of ordinary skill in the art at the time of invention species meeting the limitations of the multivalent linker groups of the instant claims, e.g., 6-membered heteroaryl with one nitrogen atom, m (i.e., n) = 0-6, A is an aryl group (i.e., phenyl); and use of hydroxyl groups as a linker (para 34, 57-82, 375).
Regard the limitation “amphiphobic” Van Der Boom would have rendered obvious to one of ordinary skill in the art at the time of invention the coating of claim which appears to be the minimum structure and composition necessary to be considered amphiphobic (see instant specification page 2, line 25 – page 3, line 12), so the coating of Van Der Boom is deemed to be amphiphobic. As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art.
In addition, Van Der Boom would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention the use of, alone or in combination, surface functionalization groups are covalently bonded to the second surface of the MOF film, e.g., “the metal-organic complex comprises at least one functional group, said functional group capable of binding to said metal linker;” and are independently selected from C1-40 alkyl groups optionally substituted with halo; C5-20 carboaryl groups optionally substituted with C1-16 alkyl and/or halo; C5-20 cycloalkyl groups optionally substituted with C1-6 alkyl and/or halo; silyl-C1-40 alkyl groups optionally substituted with halo; and wherein the surface functionalization groups are silyl-C6-24 alkyl (para 34, 52, 57-82, 375).
Regarding the additional polypyridyl molecules, nothing in the instant claim language appears to forbid the use of additional linker molecules. The transitional term "comprising" is inclusive or open-ended and does not exclude additional, unrecited elements or method steps (MPEP § 2111.03). In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., directly bonded) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, M. Veronica Ewald can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783