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 1-3 and 6-14 of S. II. Han, et al. US 18/285,177 (09/29/2023) are pending. Claims 11-14 are withdrawn directed to non-elected Group II. Claims 1-3 and 6-10 are under examination on merits and are rejected.
Election/Restrictions
Pursuant to the Restriction/Election Requirement, Applicant elected Group (I) (now claims 1-3 and 6-10), without traverse, during the phone interview held on 02/12/2026. Applicant confirmed the election and canceled claim 4-5 in the reply filed on 05/22/2026. Claims 11-14 drawn to non-elected Group (II) are withdrawn from consideration pursuant to 37 CFR 1.142(b). The Restriction Requirement is made as Final.
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, however, an English language translation of the certified copy of the KR10-2022-0072311 is not filed.
Maintained 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.
Rejection of claims 1-3 and 6-10 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”) is maintained for the same reason as given in the previous Office action and is repeated below.
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 the active steps recited in claim 1-3 and 6-10. The claimed concentrations of the first metal precursors and the second metal precursor, as well the claimed CO2/N2 adsorption selectivity of the claimed bimetal-organic frameworks are all 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 as well the CO2/N2 adsorption selectivity. 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)).
Applicant’s Argument
Applicant argues on the ground that Gaikwad is not qualified as a prior art because that the effective filing date of the present application is June 14, 2022, the filing date of KR 10-2022-0072311 which the present application claims priority to, the disclosure of Gaikwad was made 1 year or less before the effective filing date of the present application; and the declaration filed by Sang II Han on 05/22/2026 under 37 C.F.R § 1.130(a) establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. Page 5-6 in the Remarks filed on 05/22/2026, Response to the Rejection under 35 U.S.C. 102.
These arguments are not persuasive. Examiner agrees that the instant application claims the priority of KR 10-2022-0072311 filed on June 14, 2022, however, the filed certified copy of the KR 10-2022-0072311 is not published in English and an English language translation of the certified copy of the KR10-2022-0072311 is not filed. When it necessary to overcome the date of a reference relied upon by the examiner, an English language translation of the certified copy has to be filed. MPEP213.04. Herein, given no English language translation of the certified copy of the KR10-2022-0072311 has been filed, the effective filling date of the instant application is deemed as 09/29/2023, which is more than one year of the published date (04/22/2022) of Gaikwad relied upon by the examiner, therefore, the declaration filed on 05/22/2022 by Sang II Han cannot disqualify Gaikwad as an effective prior art under 102(a)(1).
Maintained 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.
Note: the rejection is modified according to Applicant’s argument.
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)2, 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. It need to be noted that the Han reaction mixture is exactly the same as the first mixture used to prepare the claimed bimetal-organic framework in the instant specification. Specification at page 12, [0066]-[0067], Preparation of the first mixture and page 13-14, [0068]-[0086]
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, emphasis added.
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 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, emphasis added.
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, emphasis added.
Zhao also teaches the UTSA-16 analogues comprises:
(i). from 0 to 80 mol%, preferably 50-75mol%, 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%, preferably 50-75mol%, of the total metal in the MOF is a second metal that is Zn.
Zhao at page 3, line 1-15, 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.
Zhao also teaches that the bi-metallic MOF may contain:
(a) 0 mol% of the first metal and 100 mol% of the second metal;
(b) 25 mol% of the first metal and 75 mol% of the second metal;
(c) 50 mol% of the first metal and 50 mol% of the second metal;
(d) 75 mol% of the first metal and 25 mol% of the second metal; and
(e) 80 mol% of the first metal and 20 mol% of the second metal,
where 100 mol% represents the total metal in the MOF.
Zhao at page 8, line 11-17.
Thus, Zhao fairly teaches one ordinary skill in the art that the concentrations of the first metal and the second metal are result-effective parameters.
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. 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.
Per general procedure for preparation of UTSA-16-Zn-x, Zhao teaches that the bi-metallic MOF can be prepared through replacing various amount of one metal with another metal while maintaining the overall stoichiometry of the metal precursor with respect to the ligand and KOH. Zhao at page 13, line 22-24.
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 to get a modified UTSA-16(Zn, Mn) comprising 25 mol% Mn, and 75 mol% of Zn.
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;
(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; and
(iii). Zhao teaches that UTSA-16 bi-metallic MOF can comprises 25 mol% of the first metal such as Mn and 75 mol% of the second metal such as Zn; whrein,100 mol% represents the total metal in the MOF.
Rationales supporting for election of the second metal as Mn 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, Mn) through modification the Han method by:
(i).preparing a first mixture of Zn(CH3COO)2·2H2O (5.25 mmol), C6H8O7·H2O (citric acid)(7 mmol), KOH (21 mmol) and water-ethanol to form a fist mixture,
(ii).preparing a second mixture by mixing a 1.75 mmol of Mn precursor such as Mn(CH3COO)2 into the first mixture obtained in the first step, wherein, the molar ratio between Zn and Mn/Cu is 3:1; and
(ii). irradiating microwave to the second mixture to form the proposed MOF comprising 25 mol% Mn, and 75 mol% of Zn; whrein,100 mol% represents the total metal in the MOF.
thus arrive at a method meeting each and every activate steps recited by claims 1-3 and 6-7. 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.
Regarding the concentrations of precursors, the first metal precursor Zn(CH3COO)2 (5.25 mmol, 0.965g) and the second metal precursor Mn(CH3COO)2 (1.75 mmol, 0.303 g ) are included in the reaction mixture of the proposed method. Given the UTSA-16 (Zn) has a formula of C12H8KO14Zn33, the proposed UTSA-16 (Zn,Mn) would have a formula of C12H8KO14Zn2.25Mn0.75. The proposed method would produce 2.33 mmol of UTSA-16 (Zn,Mn) that is 1.34 g, wherein, the weight precent of included first metal precursor Zn(CH3COO)2 (0.965g) is 72 wt% (0.965/1.34) and the weight precent of included second metal precursor Mn(CH3COO)2 (0.303g) is 22.6%(0.303/1.34) according to 100% of the proposed MOF. Clearly, the weight precent 22.6% of included second metal precursor Mn(CH3COO)2 taught by prior art anticipates the claimed 10 wt % to 30 wt%. The weight precent 72% of included first metal precursor Zn(CH3COO)2 taught by prior merely close to the claimed 70 wt%. [a] prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. MPEP 2144.05. I.
With regards to the claimed CO2/N2 adsorption selectivity, Han teaches that the CO2/N2 adsorption selectivity of his UTSA-16(Zn) is 118. Han at abstract. Given both Han and Zhao teach the CO2/N2 adsorption selectivity of UTSA-16 can be improved by incorporating a secondary metal, therefore, there is a reasonable expectation that the CO2/N2 adsorption selectivity of the proposed UTSA-16(Zn, Mn) is more than 1184. 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. I. Herein, the claimed 120-150 lies inside the “more than 118” taught by prior art, therefore, a prima facie case of obviousness exists.
Overall, the claims 1-3 and 6-7 are obvious.
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.
Applicant’s Argument
Applicant argues on the ground that Zhao only generally teaches the first metal concentration is 0-80 mol% and silent on a specific formula for the composition comprising Mn or Cu, and one ordinary skill in the art can not know the wt% of Zhao’s first metal precursor. Page 8 in the Remarks filed on 05/22/2026, Response to the Rejection under 35 U.S.C. 103.
This argument has been fully considered but not persuasive because as mentioned in the rejection above that Zhao teaches that bi-metallic UTSA-16 may contain 25 mol% of the first metal such as Mn or Cu and 75 mol% of the second metal such as Zn. See Zhao at page 8, line 11-17.
Applicant also argues on the ground that one ordinary skill would not to optimize the concentrations of the first and second metal precursors. Paragraph 1-3 at page 9 in the Remarks filed on 05/22/2026.
This argument is not persuasive as mentioned in the rejection above that Zhao teaches one ordinary skill in the art the concentrations of the first metal and the second metal are result-effective parameters, therefore, one ordinary skill in the art is motivated to optimize the concentrations of the first and second metal precursors so that can maximize the CO2/N2 adsorption selectivity of the bimetallic UTSA-16.
Applicant’s Argument Regarding Unexpected Results
Applicant further argues on the ground that the CO2/N2 adsorption selectivity of the claimed bimetallic-organic framework is unexpected over Han and Zhao. Page 10-11 in the Remarks filed on 05/22/2026.
Relevant Sections of the MPEP
A greater than expected result and evidence of unobvious or unexpected advantageous properties are evidentiary factors pertinent to the legal conclusion of obviousness of the claims at issue. MPEP § 716.02(a)(I)/(II). However, the burden is on Applicant to establish that the evidence relied upon demonstrates that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. MPEP § 716.02(b). Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. MPEP § 716.02(b)(III).
Furthermore, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support; that is, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. MPEP § 716.02(d). The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. MPEP § 716.02(d)(I).
The Results Proffered in the Specification
The instant specification provides proffered compared result in the Table 3 as indicated below:
PNG
media_image1.png
328
706
media_image1.png
Greyscale
Specification at page 18, [0110], Table 3.
The Proffered Results Do Not Overcome the § 103 Rejection Because Applicant Has Not Met Its Burden of Demonstrating that the Proffered Result Is Unexpected
While the Table 3 in the specification indicates the CO2/N2 adsorption selectivity of the bimetal-organic frameworks made in the Examples 2, 5 and 8 is higher than that of the single metal-organic framework made in the comparative example 1, however, these differences are not unexpected because both Han and Zhao teach the CO2/N2 adsorption selectivity of UTSA-16 can be improved by incorporating a secondary metal, therefore, there is a reasonable expectation that the CO2/N2 adsorption selectivity of a bimetal UTSA-16 is higher than that of a single metal UTSA-16. Applicant has provided no explanation of how this difference is unexpected and unobvious and of both statistical and practical significance. MPEP § 716.02(b). Applicant has therefore not met its burden. MPEP § 716.02(b). The burden is on Applicant to establish that the evidence relied upon demonstrates that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. MPEP § 716.02(b).
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 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at (571)2705241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/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.
2 That is 7 mmol (1.5365/219.50)
3 See J. L. Woodliffe, et al. 12.6 Journal of Environmental Chemical Engineering , 114167 (2024)(“ Woodliffe”) at page 1, right col. the last sentence.
4 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 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)).
Prosecution Insights