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 1-14 of S. II. Han, et al. US 18/285,177 (09/29/2023) are pending, and under Restriction and Election requirement. Claims 11-14 are withdrawn directed to non-elected Group II. Claims 1-10 are under examination on merits and are rejected.
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
WHEN CLAIMS ARE DIRECTED TO MULTIPLE CATEGORIES OF INVENTIONS
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
National Stage Restriction
Restriction is required under 35 U.S.C. 121 and 372. This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
(I). Claims 1-10 drawn a method for preparing a bimetal-organic framework;
(II). Claims 11-14 drawn a bimetal-organic framework comprising: zinc; and at least one metal selected from a group of magnesium, manganese, and copper, wherein the bimetal-organic framework adsorbs carbon dioxide.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a
single invention to which the claims must be restricted.
Lack of Unity of Invention
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
No Shared Technical Feature
There is no shared technical feature between Group (I) and Group (II) because the bimetal-organic framework according to Group (II) can differ from the product formed by the method according to Group (I), for example, they can have different ligands.
Joint Inventors
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Potential Rejoinder
The examiner has required restriction between product and process claims. Where applicant elects claims directed to the product, and all product claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product are found allowable, an otherwise proper restriction requirement between product claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Reply and Traversal
Applicant is advised that the reply to this requirement to be complete must include (i) an election of invention from among Groups (I)-(II); and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
Election over the Phone
Pursuant to the restriction requirement, Applicant elected Group I (claims 1-10), without traverse, during the phone interview held on 02/12/2026. Claims 11-14 drawn to non-elected Group (II) are withdrawn from consideration pursuant to 37 CFR 1.142(b).
Applicant is required to confirm the above elections in the reply response to this Office action.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in KR on 06/14/2022. Applicant has filed a certified copy of the KR10-2022-0072311 application as required by 37 CFR 1.55 on September 29, 2023.
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.
(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.
Claims 1-10 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by R. Gaikwad, et al., 111 Journal of Industrial and Engineering Chemistry 346-355 (Published on 04/22/2022) (“Gaikwad”).
Note: Gaikwad is qualified as a prior art because the presumed effective filling date of the instant application is 09/29/2023 because an English language translation of the certified copy of the KR10-2022-0072311 is not filed.
Gaikwad teaches a method for preparing bimetal-organic frameworks UTSA-16 (Zn, Mg), (Zn, Mn), and (Zn, Cu) as follows:
Synthesis of UTSA-16 (Zn, Mg), (Zn, Mn), and (Zn, Cu)
UTSA-16 (Zn, Mg) was synthesized using a doping technique by microwave irradiation (Fig. 1). Zn (CH3COO)2•2H2O (1.5365 g, 7 mmol), C6H8O7 •H2O1 (1.47 g, 7 mmol), and KOH (1.17 g, 21 mmol) were dissolved in 35 ml of the H2O:C2H5OH = 1:1 v/v solvent. Then, a desired amount of (CH3COO)2Mg•4H2O (1–3 mmol) was added to the mixture and transferred to a microwave reactor. The mixture was sealed with a Teflon cap and heated at 90 ºC and 300 W of microwave irradiation for 4 h in a microwave oven (Discover SP, CEM, USA). The formed precipitate was washed twice with diethyl ether, then thrice with methanol, and finally soaked in methanol for three days for solvent exchange. Soaking in methanol was repeated thrice per day. Finally, the formed MOF was separated by centrifugation at 5000 rpm and dried in vacuum for 2 h, followed by heating at 90 C for 6 h in vacuum to remove excess solvent. For the synthesis of bimetallic MOFs, different amounts of magnesium acetate tetrahydrate (1, 2, and 3 mmol) were added separately to produce UTSA-16 (Zn, Mg)-(7:1), UTSA-16 (Zn, Mg) (7:2), and UTSA-16 (Zn, Mg)-(7:3), respectively. A similar method was used for the synthesis of UTSA-16 (Zn, Mn) and UTSA-16 (Zn, Cu) with manganese (II) acetate tetrahydrate and copper acetate dehydrate, respectively. The resulting bimetallic MOF formed was UTSA-16 (Zn, X)-(Zn wt%: Metal wt%) (X: Mg, Mn, Cu).
Gaikwad at page 347, right col. Synthesis of UTSA-16 (Zn, Mg), (Zn, Mn), and (Zn, Cu)
Emphasis added.
The Gaikwad method for preparing bimetal-organic framework UTSA-16 (Zn, Mg) comprises:
(i). preparing a first mixture by mixing a first metal precursor including zinc that is Zn (CH3COO)2•2H2O, a coordination compound of organic acid that is citric acid (C6H8O7H2O) , and a substance including a counterion of the coordination compound that is KOH in a solvent that is ethanol;
(ii). preparing a second mixture by mixing a second metal precursor that is (CH3COO)2Mg•4H2O in the first mixture; and
(iii). irradiating microwave to the second mixture at 90 ºC and 300 W of microwave irradiation for 4 h.
Which meets each and every limitations of claim 1-3 and 6-10; therefore, claims claim 1-3 and 6-10 are anticipated.
Claims 4-5 are anticipated because the Gaikwad method for is the exactly the same method as those of the Embodiment 1-3.See specification at page 12-13, [0065]-[0074]. The products formed with the same method would be the same products including the concentrations of the first and second metal precursors. Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). This is a procedural burden shifting. The requirement that the prior art necessarily teaches the alleged inherent (functional) element still remains. MPEP § 2112(IV). However, the burden is shifted to Applicant to demonstrate the alleged inherent element is not necessarily present in the cited prior art. Stated differently, when the examiner "has reason to believe" that the prior art reference inherently teaches the functional limitation, the burden shifts to the patent applicant to show that the functional limitation cannot be met by the prior art reference. MPEP 2112(V), see also, In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Chudik, 674 F. App'x 1011, 1012 (Fed. Cir. 2017) (both citing In re Swinehart, 439 F.2d 210, 212, 58 C.C.P.A. 1027 (C.C.P.A. 1971)).
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.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over S. Han, et al, 87, Journal of Industrial and Engineering Chemistry 250-263 (2020)(“Han”) in view of D. Zhao, et al, WO2021230811A1(2021)(“Zhao”).
S. Han, et al, 87, Journal of Industrial and Engineering Chemistry 250-263 (2020)(“Han”)
Han teaches a novel metal–organic framework (UTSA-16 (Zn) composed of zinc and citric acid by using microwave irradiation in KOH solution, with significantly improved stability in humid air and acid gases and better selectivity (CO2/N2) than the original Co-containing framework. Han at Abstract and at page 251, right col. Paragraph 2, line 1-3, emphasis added.
Han teaches that the UTSA-16 (Zn) was synthesized as follows:
Sample preparation
UTSA-16 (Zn) was synthesized by using a microwave irradiation power of 300 W at 90 °C for 1–6 h. Zn(CH3COO)2·2H2O (1.5365 g), C6H8O7·H2O (1.47 g), and KOH (1.17 g) were homogeneously mixed in 35 ml of solvent (H2O:C2H5OH = 1:1 (V/V)). The solution was transferred into a glass reactor and tightly closed by a Teflon cap, and then kept in a microwave oven (Discover SP, CEM, USA). After microwave irradiation with different times, the white-colored samples were obtained by using centrifugation process (FLETA 5, Hanil, Korea) and washed with ethyl ether two times, methanol three times, and then immersed in methanol for solvent exchange by replenishing three times per day for 2–3 days. The powder product was separated from the solvent via centrifugation at 5000 rpm, and dried under vacuum for 2 h, followed by removal of excess solvent from the powder produced by heating at 90 °C for 6 h under vacuum.
Han at page 251, right col. Experimental, Chemicals and Sample preparation, emphasis added.
Han teaches that an irradiation time of 4 h produced 4h-UTSA-16 with an outstanding CO2 adsorption capacity of 4.71 mmol/g at 298 K and 1 bar and with CO2/N2 selectivity of 118. The improvement in stability and CO2/N2 sorption selectivity of UTSA-16 (Zn) over the parent UTSA-16 (Co) was not compromised by decreases in CO2 uptake after exposure to humid air, SO2, and NO2 gases. Han at abstract.
Thus Han teaches a method for preparation of a MOF such as 4h-UTSA-16, comprising the step of:
(i). preparing a mixture by mixing a metal precursor that is Zn(CH3COO)2·2H2O, a coordination compound of organic acid that is citric acid, and a substance including a counterion of the coordination compound that is KOH in a solvent that is a mixture of water and ethanol; and
(ii). irradiating microwave to the mixture.
Difference Between Han and the Claims
Han differs from the instant claim 1 only in that Han does not teach a step of
preparing a second mixture by mixing a second metal precursor including at least one metal selected from a group of magnesium, manganese, and copper in the first mixture
and irradiating microwave to the second mixture;
however, Han teaches that modification of MOFs by doping metal ions have been used for improving the separation performance, and the applicability of this method has been shown by some researchers. For Example Jiao et al. reported that MM-MOF-74, in which different metal ions (Mg2+, Ni2+, and Co2+) had been incorporated, resulting in improvement in CO2 adsorption. Botas et al. modified MOF-5 with the addition of Co, showing a 17% increase in CO2 uptake over parent MOF-5. Han at page 251, left col. paragraph 2, line 1-7.
D. Zhao, et al, WO2021230811A1 (2021) (“Zhao”)
Zhao teaches that UTSA-16 is a highly promising MOF material for CO2 capture by adsorption due to the isotherm features, mechanism of adsorption, and stability. Zhao at page 1, line 27-28.
Zhao teaches that:
It has been surprising found that incorporating a secondary metal component provides UTSA-16 analogues with improved CO2 capture performance that can be formed under significantly milder conditions and in a shorter time.
Zhao at page 2, line 31-33.
Zhao also teaches the UTSA-16 analogues comprises:
(i). from 0 to 80 mol% of the total metal in the MOF is a first metal selected from one or more of the group consisting of Cr, Mn, Fe, Ni, Cu, and Co;
(ii). and from 20 to 100 mol% of the total metal in the MOF is a second metal selected from one or more of the group consisting of Cd, Mn, and Zn.
Zhao at page 3, line 1-7, emphasis added.
Zhao further emphasizes that the second metal is Zn. Zhao at page 3, line 9, emphasis added. Zhao teaches that:
(a) the first solvent is water and the second solvent is an alkyl alcohol (e.g. the alkyl alcohol is methanol, a propanol or, more particularly, ethanol); and/or
(b) the base is a metal hydroxide (e.g. the base is KOH); and/or
(c) the method is performed under ambient atmospheric conditions (e.g. standard pressure).
Zhao at page 4, line 28-32, emphasis added.
Zhao teaches that the second metal precursor is Zn(OAc)2 or a hydrate thereof (e.g. Zn(OAc)2•2H2O). Zhao at page 5, line 3-6, emphasis added.
It should be noted that the reagents taught by Zhao is very similar with those used by Han.
Thus, Zhao fairly teaches one ordinary skill that UTSA-16 analogues comprising Zinc and an additional metal elected selected from one or more of the group consisting of Cr, Mn, Fe, Ni, Cu, and Co would have an improved CO2 capture performance.
Obviousness Rationales of Claims 1-10
Obviousness of a claimed compound can also be supported where there is motivation to substitute particular chemical moieties in a prior art compound for others so as to arrive at a claimed compound. MPEP § 2143(I)(B). For example, in the pharmaceutical arts, the rational is stated as motivation to select a known compound and also motivation to structurally modify the selected compound in a particular way to achieve a claimed compound. MPEP § 2143(I)(B) (see for example, MPEP § 2143(I)(B) Example 9, citing Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 87 USPQ2d 1452 (Fed. Cir. 2008).
One of ordinary skill is motivated to select the Han 4h-UTSA-16(Zn) for further investigation because Han teaches that it has outstanding CO2 adsorption capacity and good CO2/N2 selectivity. Having selected the Han 4h-UTSA-16 (Zn), one of ordinary skill is motivated to modify it by doping a second metal ions such as Mn or Cu to get a modified UTSA-16(Zn, Mn/Cu).
One ordinary skill has a motivation to do so with a reasonable expectation of success because:
(i). Han teaches that modification of MOFs by doping metal ions have been used for improving the separation performance, and the applicability of this method has been shown by some researchers; and
(ii). Zhao teaches that UTSA-16 analogues comprising Zinc and an additional metal elected selected from one or more of the group consisting of Cr, Mn, Fe, Ni, Cu, and Co would have an improved CO2 capture performance.
Rationales supporting for election of the second metal as Mn or Cu is “obvious to try” given Zhao teaches a finite number metal ions can be used to dop. MPEP 2143. I. (E).
One ordinary skill is further motivated to prepare the proposed UTSA-16(Zn, Mu/Cu) through modification the Han method by including a step of:
preparing a second mixture by mixing a Mn or Cu precursor into the mixture of Zn(CH3COO)2·2H2O, C6H8O7·H2O (citric acid), KOH and water-ethanol to form a second mixture;
and irradiating microwave to the second mixture to form the proposed MOF; thus arrive at a method meeting each and every limitation of claims 1-3 and 6-7, therefore, claims 1-3 and 6-7 are obvious. One ordinary skill is motivated to do so with a reasonable expectation of success because Han teaches that analogues of UTSA-16 can be prepared through microwave irradiation.
Claims 4-5 are obvious because one ordinary skill is motivated to optimize the concentrations of the Zn(CH3COO)2·2H2O and/or the Mn or Cu precursor into the claimed ranges as Zhao teaches that the concentration of Zinc in the bimetal UTSA-16 is 20 to 100 mol% of the total metal in the MOF; and the concentration of Mn/ Cu in the bimetal UTSA-16 is 0 to 80 mol% of the total metal in the MOF respectively. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. MPEP § 2144.04(II)(A) (citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) ("[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”)). Herein, the instant application does not provide evidence to show the claimed ranges are critical to the claimed method.
Claims 8-10 are obvious because Han teaches that the microwave irradiation condition is microwave irradiation power of 300 W at 90 °C for 1–6 h. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05. Herein, claim 8 claimed 2-8 hours overlaps with the prior art 1-6 hours; claim 9 claimed 100-300W overlaps with the prior art 300W and claim 10 claimed 50-150°C is anticipated by the prior art 90 °C, therefore, claims 8-10 are obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK S. HOU whose telephone number is (571)272-1802. The examiner can normally be reached 6:30 am-2:30 pm Eastern on Monday to Friday.
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 Per Fig. 1, Gaikwad teaches that C6H8O7 •H2O is citric acid. See Gaikwad at page 348, Fig. 1.