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 1-37 of K. Mirica et al., US 18/286,796 (Apr. 12, 2022) are pending. Claims 1-14 and 26-33, drawn to the non-elected inventions of Groups (I) and (V), are withdrawn from consideration pursuant to 37 CFR 1.142(b). Claims 15-25 and 34-37 are under examination on the merits. Claims 15-25 and 34-37 are rejected.
Election/Restrictions
In the Reply filed on February 18, 2026, Applicant elected Group (IV), Claims 15-25 drawn a method of detecting an analyte in a sample, without traverse. In view of guidance regarding restriction by way of linking claims, the restriction among groups (I)-(III) is reconsidered and withdrawn. The PCT rules do not specify how claims must be restricted once unity of invention is broken, as the present case. International Preliminary Examination Under Chapter II Of The PCT, Chapter 10, Unity of Invention, (July 1, 2020). Restriction under US practice permits use of linking claims among claims that are otherwise properly divisible. MPEP § 809.03. However, the restriction among Groups (I)-(III) is reconsidered and withdrawn, in the interest of efficient prosecution, because all claims of these groups are dependent upon claim 1.
In view of the rejoinder, the groups of inventions are now as follows:
Group (I) Claims 1-14 drawn to a composition comprising: a metal-organic framework, wherein the metal-organic framework comprises a plurality of metals and a plurality of ligands coordinated with the plurality of metals, wherein the plurality of metals comprise bismuth;
Group (II) Rejoined with Group (I);
Group (III) Rejoined with Group (I);
Group (IV) Claims 15-25 drawn a method of detecting an analyte in a sample; and
Group (V) Claims 26-33 drawn a method of shielding an object from radiation.
Claims 1-14 and 26-33, drawn to the non-elected inventions of Groups (I) and (V), are withdrawn from consideration pursuant to 37 CFR 1.142(b).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 63/174,854 (Apr. 14, 2021).
Claims 15-25 are not entitled to the filing date of US 63/174,854 (Apr. 14, 2021) because this priority document at least does not support the negative claim 15 recitation of “that are not part of carboxyl groups” within the claim 15 recitation of:
Claim 15 . . . wherein the plurality of ligands comprise a plurality of hydroxy moieties that are not part of carboxyl groups . . .
which limitation is also present in each of dependent claims 16-25. This limitation is not literally recited in US 63/174,854. 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). A lack of literal basis in the specification for a negative limitation may not be sufficient to establish a prima facie case for lack of descriptive support. MPEP § 2173.05(i) (citing Ex parte Parks, 30 USPQ2d 1234, 1236 (Bd. Pat. App. & Inter. 1993))1. Rather, as with positive limitations, the disclosure must only 'reasonably convey to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.' ... While silence will not generally suffice to support a negative claim limitation, there may be circumstances in which it can be established that a skilled artisan would understand a negative limitation to necessarily be present in a disclosure. MPEP § 2173.05(i).2
Here, the Examiner can find no disclosure in US 63/174,854 that would convey to one of skill that the negative claim 15 recitation of “that are not part of carboxyl groups” is necessarily present in its disclosure. Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4, 83 USPQ2d 1373, 1376, n.4 (Fed. Cir. 2007)
The effective filing date of claims 15-25 is therefore the non-provisional filing date April 12, 2022.
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.
35 U.S.C. § 102(a)(1) over A. Aykanat et al., 13 ACS Applied Materials & Interfaces, 60306-60318 (Dec. 13, 2021) (“Aykanat”)
Prior Art Effect of Aykanat
Aykanat is effective prior art under 35 USC § 102(a)(1) because Aykanat’s publication date of December 13, 2021 is before the instant effective filing date of April 12, 2022 and Aykanat names common and some additional inventors. MPEP § 717(I)/(III). The instant application’s effective filing date is less than one year before Aykanat’s publication date. 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).
The § 102 Rejection
Claims 15-18 and 20-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by A. Aykanat et al., 13 ACS Applied Materials & Interfaces, 60306-60318 (Dec. 13, 2021) (“Aykanat”).
Aykanat discloses the bismuth MOF termed Bi(HHTP) according the following scheme of Figure S4.
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Aykanat at page S5 (see Figure S4).
Bi(HHTP) meets the structural limitations of the claim 15 metal organic framework (MOF) including the claim 1 proviso “that are not part of carboxyl groups”.
15 . . . a metal-organic framework,
wherein the metal-organic framework comprises a plurality of metals and a plurality of ligands coordinated with the plurality of metals,
wherein the plurality of metals comprise bismuth,
wherein the plurality of ligands comprise a plurality of hydroxy moieties that are not part of carboxyl groups,
wherein at least some of the hydroxy moieties are coordinated with bismuth to form Bi-O bonds, and
wherein the metal-organic framework is in the form of a conductive and interconnected network; and
This is the same Bi(HHTP) disclosed in the instant specification. Specification at page 24, [00121]. That is, specification Example 1.2 teaches that hydrothermal synthesis that combined Bi(OAc)3 and HHTP to produce Bi(HHTP) (a conductive MOF). Specification at page 24, [00121]. Specification Fig. 2B depicts a partial structure of Bi(HHTP), which is the same as the above Aykanat MOF. See specification Fig. 2B.
Aykanat teaches construction of a sensing device by drop casting 10 μL of a Bi(HHTP) suspension (1−2 mg/mL in H2O) onto five devices containing interdigitated 10 μm gap gold electrodes, which generated devices with resistances in ∼30 MΩ range. Aykanat at page 60311, col. 2; see also Aykanat at page S34. Aykanat teaches that the devices were dried and wired to a potentiostat that applied 1.0 V voltage at room temperature. Id. The devices were then enclosed in a Teflon chamber with gas inlet/outlet ports connected to mass flow controllers delivering target concentrations of gases from premixed tanks (tanks of 10 000 ppm of NH3 in N2 and 10 000 ppm of NO in N2). Id. The five devices at a time were exposed to each gas at different concentrations (5−1000 ppm) of the chosen analyte at a N2 flow rate of 0.5 L/min and then purged with dry N2 to examine Bi(HHTP)’s recovery. Id. Aykanat teaches that for volatile organic compound (VOC) sensing, gas generator was used to produce vapors of the analyte (EtOH, MeOH, acetone, or iPrOH), which was diluted in N2 (4 L/min) to the desired concentration. Id. Aykanat teaches that NH3 and NO were sensed by the Bi(HHTP) device based on a plot of concentration vs normalized change in conductance. Aykanat at page 60312, Fig. 5. Aykanat teaches that EtOH, MeOH, acetone, or iPrOH were sensed by the Bi(HHTP) in a similar manner. Aykanat at page 60312, Fig. 6. Aykanat teaches that Bi(HHTP) exhibited a decrease in conductivity to the reducing gas (NH3) and an increase in conductivity to the oxidizing gas NO (Figure 5). Aykanat at lines bridging pages 60312-60313. Aykanat teaches that Bi(HHTP) devices exhibited unique chemiresistive responses toward VOCs that changed in the direction of normalized conductance depending on the analyte (Figure 6),where both MeOH and acetone displayed an increase in normalized conductance (−ΔG/Go) upon exposure, while EtOH and iPrOH demonstrated a decrease in normalized conductance (−ΔG/Go) upon exposure to specific concentrations of the analyte, and all exposures to the VOCs were observed to be reversible. Aykanat at page 60313, col. 1. Aykanat thus teaches the remaining portions of claim 15:
15 . . . detecting the presence or absence of the analyte from the sample,
wherein the detecting comprises: detecting a change in a property of the sensor, and correlating the change in the property to the presence or absence of the analyte.
and meets each and every limitation of claim 15.
The limitations of 16 are met because Aykanat teaches “the change in the property of the sensor comprises a change in normalized conductance over time (ΔG/Go). Aykanat at page 60313, col. 1.
The limitations of 17 are met because Aykanat clearly teaches “comparing the properties of the sensor to properties of the sensor in response to association with known analytes”. For example, Aykanat teaches that NH3 and NO were sensed by the Bi(HHTP) device based on a plot of concentration vs normalized change in conductance. Aykanat at page 60312, Fig. 5.
The limitations of claim 18 are clearly met.
The limitations of claim 20 and 22 are met because Aykanat teaches the association is reversible. For example, Aykanat states that “[a]ll exposures to the VOCs were observed to be reversible”. Aykanat at page 60313, col. 1. Respecting claim 22, if the exposure is reversible, the analyte is necessarily released from the MOF Bi(HHTP).
The limitations of claim 21 are met because the in order sense the analyte, it must be to some extent “captured” by the MOF Bi(HHTP) as employed by Aykanat.
21. The method of claim 20, wherein the association also results in the capture of the analyte by the sensor.
The specification does not define “capture” or define the extent of the claim 20 “reversible association” required between the MOF and the analyte to meet the meaning of “capture”. MOFs are porous where an analyte is incorporated in to the pores in a host-guest fashion. R. Stoltz et al., 32 Chemistry of Materials, 7639-7652 (2020) (“Stoltz”); Specification at page 6, [0026]. The broadest reasonable interpretation of “capture”, consistent with the specification, is some degree of association between the analyte and MOF permitting detection of the analyte.3 MPEP § 2111.
The limitations of claim 23 are clearly met by Aykanat’s MOF Bi(HHTP), wherein Aykanat’s HHTP meets the claim 23 formula HXTP under the alternative of 2,3,5,6,10,11-hexahydroxytriphenylene (HHTP).
The limitations of claims 24 and 25 are met because Aykanat teaches that Bi(HHTP) exhibits two distinct structures upon hydration and dehydration of the pores within the
network, Bi(HHTP)-α and Bi(HHTP)-β, respectively. Aykanat at page 60307, Figure 1.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under AIA 35 U.S.C. 103(a) 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 34 and 35 are rejected under AIA 35 U.S.C. 103 as being unpatentable over A. Aykanat et al., 13 ACS Applied Materials & Interfaces, 60306-60318 (Dec. 13, 2021) (“Aykanat”) in view of K. Mirica et al., US 2018/0306740 (2018) (“Mirica”).
A. Aykanat et al., 13 ACS Applied Materials & Interfaces, 60306-60318 (Dec. 13, 2021) (“Aykanat”)
Aykanat is discussed in detail above in the § 102 rejection. Aykanat discloses the bismuth MOF termed Bi(HHTP) according the following scheme of Figure S4.
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Aykanat at page S5 (see Figure S4).
Bi(HHTP) meets the structural limitations of the claim 15 metal organic framework (MOF) including the claim 1 proviso “that are not part of carboxyl groups”.
15 . . . a metal-organic framework,
wherein the metal-organic framework comprises a plurality of metals and a plurality of ligands coordinated with the plurality of metals,
wherein the plurality of metals comprise bismuth,
wherein the plurality of ligands comprise a plurality of hydroxy moieties that are not part of carboxyl groups,
wherein at least some of the hydroxy moieties are coordinated with bismuth to form Bi-O bonds, and
wherein the metal-organic framework is in the form of a conductive and interconnected network; and
This is the same Bi(HHTP) disclosed in the instant specification. Specification at page 24, [00121]. That is, specification Example 1.2 teaches that hydrothermal synthesis that combined Bi(OAc)3 and HHTP to produce Bi(HHTP) (a conductive MOF). Specification at page 24, [00121]. Specification Fig. 2B depicts a partial structure of Bi(HHTP), which is the same as the above Aykanat MOF. See specification Fig. 2B.
Aykanat teaches construction of a sensing device by drop casting 10 μL of a Bi(HHTP) suspension (1−2 mg/mL in H2O) onto five devices containing interdigitated 10 μm gap gold electrodes, which generated devices with resistances in ∼30 MΩ range. Aykanat at page 60311, col. 2; see also Aykanat at page S34.
Aykanat teaches that NH3 and NO were sensed by the Bi(HHTP) device based on a plot of concentration vs normalized change in conductance. Aykanat at page 60312, Fig. 5. Aykanat teaches that EtOH, MeOH, acetone, or iPrOH were sensed by the Bi(HHTP) in a similar manner. Aykanat at page 60312, Fig. 6. Aykanat teaches that Bi(HHTP) exhibited a decrease in conductivity to the reducing gas (NH3) and an increase in conductivity to the oxidizing gas NO (Figure 5). Aykanat at lines bridging pages 60312-60313
Differences between Aykanat and Claims 34 and 35
Aykanat does not teach, per claim 34, “wherein the metal-organic framework is associated with a textile”.
K. Mirica et al., US 2018/0306740 (2018) (“Mirica”)
Mirica teaches a textile component with a plurality of fibers; and metal-organic frameworks (MOFs) associated with the fibers of the textile component in the form of a conductive network. Mirica at page 1, [0004].
Per instant claim 15, Mirica teaches methods of sensing an analyte in a sample by exposing the sample to the MOF-comprising conductive textile, where the presence or absence of the analyte from the sample is detected by detecting a change in a property of the conductive textile and correlating the change in the property to the presence or absence of the analyte. Mirica at page 4, [0067].
Mirica teaches that the MOF’s associated organic ligand can be HHTP, which has the following structure:
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.
Mirica at page 1, [0016]. HHTP comprises a plurality of hydroxy groups and is the same ligand employed in the instant specification for Bi(HHTP). See, specification at page 24, [00121].
Mirica teaches working examples with nickel-based MOFs Ni3HITP2 and Ni3HHTP2. Mirica at page 13, [0181].
Mirica teaches bismuth, generally, as a potential metal for the metal organic framework (MOF).
[0080] The metal-organic frameworks of the present disclosure can also include various types of metals. For instance, in some embodiments, the metals include, without limitation, transition metals, iron, nickel, copper, cobalt, zinc, manganese, platinum, palladium, gold, bismuth, and combinations thereof.
Mirica at page 6, [0080].
Mirica teaches assembly of MOFs on fabrics (SOFT swatches) by adding solid molecular precursors (organic ligand and metallic node) directly to a vial containing the fabric swatch (one swatch per vial), and added water such that all reagents and textiles were fully dampened (0.033M with respect to triphenylene ligand). Mirica at page 11, [0161].
Mirica teaches use of the SOFT swatches, associated with Ni3HHTP2, in detecting analytes (NO and H2S) by placing in a custom Teflon enclosure equipped with spring-loaded gold pins (serving as electrodes and immobilizing textile swatches) and gas inlet and outlet ports (FIG. 4A). Mirica at page 12, [0176]. Mirica teaches that Constant voltage was applied across the electrodes using a portable potentiostat (1.0 V) nad current was monitored across the exposure (through saturation) and recovery (10 minute) cycles of analyte dosing. Mirica at page 13, [0176]. Mirica teaches that the SOFT devices exhibited dosimetric responses to NO and H2S. Mirica at page 13, [0177].
Claims 34 and 35 Are Obvious over Aykanat in view of Mirica
Claim 34 is obvious over Aykanat in view of Mirica because one of ordinary skill seeking to detect NO is motivated to replace Mirica’s Ni3HHTP2 in Mirica’s fabric swatch with Aykanat’s Bi(HHTP) and thereafter detect NO by applying a constant voltage was applied across the electrodes using a potentiostat and detecting a change in resistance and correlating the change in resistance to to the presence or absence of the NO. One of ordinary skill is so motivated because Aykanat teaches that Bi(HHTP) is effective (in the same manner as Ni3HHTP2) in detecting NO.
The further limitations of claim 35 are met by the cited art combination for the same reasons discussed above in the § 102 rejection for claim 21.
Claim Rejections - 35 USC § 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.
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. 4 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 (see i)(B) above), 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 (see i)(C) above). MPEP § 2163(II)(A)3(a)(ii) (citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406). A “sufficient description . . . requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010). For genus claims using functional language, the written description "must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus." Ariad, 598 F.3d at 1349.
The § 112(a) rejection
Claims 15-22 and 34-37 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement because neither the art of record nor the application as filed disclose either a sufficient or representative number of metal-organic framework (MOF) species (per claim 15):
15 . . . a metal-organic framework,
wherein the metal-organic framework comprises a plurality of metals and a plurality of ligands coordinated with the plurality of metals,
wherein the plurality of metals comprise bismuth,
wherein the plurality of ligands comprise a plurality of hydroxy moieties that are not part of carboxyl groups,
wherein at least some of the hydroxy moieties are coordinated with bismuth to form Bi-O bonds, and
wherein the metal-organic framework is in the form of a conductive and interconnected network; and
that perform the function of detecting (per claim 15)
15 . . . detecting the presence or absence of the analyte from the sample, wherein the detecting comprises: detecting a change in a property of the sensor, and correlating the change in the property to the presence or absence of the analyte.
sufficient to show Applicant was in possession of the claimed genus of MOFs. Further, neither the specification nor the art of record discloses a structure-function correlation between the claimed MOF and the analyte such that one of skill can recognize which organic ligands and metals react so as form the required porous and conductive MOFs for practice of claim 15 method (outside of the single disclosed species) that functionally perform so as undergo a change in the property to the presence or absence of the analyte. As such one of skill would not recognize that Applicant was in possession of the full scope of claimed method as of the effective filing date.
Dependent claims 16-22 and 34-37 recite no further structure limiting the claim 15 MOF and are similarly rejected under the above § 112(a) rationale.
GUIDANCE IN THE ART AND SPECIFICATION
The instant application and claims are directed to the art of conductive MOFs and their application in chemosensing. As discussed below, the fields conductive MOFs and their application in chemosensing are nascent and unpredictable arts.
Guidance in the Specification
Independent claim 15 is directed to a method detecting an analyte in a sample, where the core feature is the conductive metal organic framework (MOF), as structurally defined by claim 15:
Claim 15 . . . wherein the metal-organic framework comprises5 a plurality of metals and a plurality of ligands coordinated with the plurality of metals wherein the plurality of metals comprise bismuth, wherein the plurality of ligands comprise a plurality of hydroxy moieties that are not part of carboxyl groups . . .
wherein the metal-organic framework is in the form of a conductive and interconnected network . . .
As well known in the art, metal–organic frameworks (MOFs) are porous, crystalline hybrid compounds where metal nodes are linked into infinite arrays through multitopic ligands. C. Pettinari et al., 66 Polymer International, 731-744 (2016).
The specification teaches that the metal-organic frameworks can include various types of metals, including bismuth, and may contain additional metals such as, without limitation, divalent metals, transition metals, iron, nickel, copper, cobalt, zinc, manganese, platinum, palladium, gold, chromium, magnesium, tin, and combinations thereof. Specification at page 8, [0040]-[0041].
The specification teaches that the organic ligand of the metal organic framework is not particularly limited.
[0044] The metal-organic frameworks of the present disclosure can include various types of ligands. For instance, in some embodiments, the plurality of ligands can include, without limitation, organic ligands, hexatopic ligands, aromatic ligands, phthalocyanine-based ligands, metallophthalocyaline-based ligands, naphthalocyanine-based ligands, polydentate ligands, bidentate ligands, tridentate ligands, triphenylene-based ligands, triphenylene derivatives, hexahydroxytriphenylene-based organic linkers, hexaiminotriphenlyene-based organic linkers, hexahydroxybenzene-type ligands, hexahydroxytrinaphthalene ligands, thiol-based ligands, hydroxy-based ligands, and combinations thereof.
Specification at page 9, [0044]. However, it is noted that claim 15 requires that “the plurality of ligands comprise a plurality of hydroxy moieties that are not part of carboxyl groups”. See footnote 5 for interpretation of this limitation. The specification discloses only three ligand species, i.e., HHTP, HITP, HTTP. Specification at page 9, [0046]. These ligands are known in the art to have the following structures.
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However, only HHTP has the required “plurality of hydroxy moieties that are not part of carboxyl groups”. See footnote 5.
The specification body (i.e., the portion other than the working examples), as discussed above, provides general guidance. Specification at pages 1-18. The specification working examples are consulted for more specific guidance. Specification Example 1 discloses design, synthesis, characterization, and performance of a semiconductive crystalline coordination network (metal organic framework, MOF) Bi(HHTP), synthesized using 2,3,6,7,10,11-hexahydroxytriphenylene (HHTP) ligands, interconnected with bismuth ions, towards chemiresistive gas sensing. Specification at page 19, [00111]. The HHTP ligand of the Bi(HHTP) MOF has the following structure.
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Specification Examples 1.2 teaches that hydrothermal synthesis that combined Bi(OAc)3 and HHTP to produce Bi(HHTP) (a conductive MOF). Specification at page 24, [00121]. Specification Fig. 2B depicts a partial structure of Bi(HHTP). Specification Fig. 2B. Specification Example 1.8 teaches that Bi(HHTP) showed a bulk conductivity of 5.3 x 10-3 S•cm-1. Specification at page 29, [00139].
Specification’s Example Construction of the Bi(HHTP) Sensing Device
Specification Example 1-9 teaches construction of a sensing device by drop casting 10 μL of a Bi(HHTP) suspension (1-2 mg/mL in H2O) onto five devices containing interdigitated 10 μm gap gold electrodes, which generated devices with resistances in ~30 MΩ range. Specification at page 31, [00143]. The devices were then wired to a potentiostat that applied 1.0 V voltage at room temperature. Id. The devices were then enclosed connected to mass flow controllers delivering target concentrations of gases (tanks of 10,000 ppm of NH3 in N2, and 10,000 ppm of NO in N2). Id. Generally, five devices at a time were exposed to one-minute saturations at different concentrations (5-1000 ppm) of the chosen analyte at a N2 flow rate of 0.5 L/min and then purged with dry N2 for 5 minutes to examine Bi(HHTP) recovery. Id. For volatile organic compound (VOC) sensing, a gas generator produced analyte vapors (ethanol, methanol, acetone, or isopropanol), which was diluted in N2 (4 L/min) to the desired concentration. Specification at page 31, [00144].
Specification’s Example Use of the Bi(HHTP) Sensing Device
Specification Example 1.10 teaches that Bi(HHTP) devices exhibited a decrease in conductivity to the reducing gas (NH3) and an increase in conductivity to the oxidizing gas NO. Specification at page 31 [00146]. Specification Example 1.10 teaches that Bi(HHTP) devices exhibit unique chemiresistive responses toward volatile organic compounds (VOCs) (ethanol, methanol, acetone, or isopropanol) that change in direction of normalized conductance depending on the analyte. Specification at page 32 [00147].
In summary, the specification thus teaches only one species of conductive MOF, i.e., Bi(HHTP), that meets the claim 15 limitations of:
Claim 15 . . . wherein the metal-organic framework comprises a plurality of metals and a plurality of ligands coordinated with the plurality of metals
wherein the plurality of metals comprise bismuth,
wherein the plurality of ligands comprise a plurality of hydroxy moieties that are not part of carboxyl groups . . .
wherein the metal-organic framework is in the form of a conductive and interconnected network . . .
Guidance in the Art
The prior art teaches that chemosensing employing conductive MOFs is a nascent and unpredictable art.
Li teaches that although the vast majority of MOFs are insulating because of the lack of low-energy charge transport pathways or free charge carriers, various strategies have been developed to construct appropriate nanostructures that can achieve high electrical conductivity of MOFs. C. Li et al., 13 Nanoscale, 485-509 (2020) (see page 486, col. 1) (“Li”). Li teaches that poor orbital overlap between metal ions and organic ligands generally make MOFs insulated. Li at page 494, col. 1. Li teaches that only a few MOFs have shown good conductivity so far. Li at page 505, col. 1. Li teaches that in particular, integrating conductive MOFs into devices requires high-quality films, and there is a need to better understand the film growth process and develop more controllable methods for film growth. Li at page 505, lines bridging cols. 1-2. Li teaches that Campbell et al. reported a device fabricated using a conductive 2D Cu3(HITP)2 MOF as a reversible sensor for ammonia vapour detection at the sub-ppm level with high linearity; however, the isostructural Ni3(HITP)2 showed unobservable response to ammonia, illustrating the importance of metal centres in the functional properties of MOFs, like sensing different gases. Li at lines bridging pages 500-501 (citing M. Campbell et al., 137 Journal of the American Chemical Society, 13780-13783 (2015)).6
Li-2 teaches that the electrical conductivity of crystalline MOFs is a highly demanding property, where the main challenge lies in the balance of porosity and conductivity, which needs a judicious choice of metal clusters and ligands. P. Li et al, 58 Israel Journal of Chemistry, 1010-1018 (2018) (“Li-2”) (see Abstract). Li-2 teaches that only a
handful of conductive MOFs exhibit good conductivity. Li-2 at page 1017, col. 1. Li-2 teaches that it is difficult to maintain conductive and porosity at the same time. Li-2 at page 1010, col. 1. Of course, MOF porosity is required for the instantly claimed method of detecting an analyte in a sample.
Hendon teaches that besides potential swing adsorption, the development of electrically conductive MOFs provides avenues to other novel technologies including sensors. C. Hendon et al., 3 ACS Central Science, 554-563 (2017) (“Hendon”) (see page 557, col. 1). With respect to conductive metal-organic frameworks, Hendon teaches that “electrically conductive porous materials are markedly rare”. Hendon at page 556, col. 2. With respect to conductive metal-organic frameworks, Hendon further teaches that although examples aiming for energy level matching between metals and ligands are known, especially in the context of using thiolated ligands, the promotion of band-type conductivity marks a grand challenge for contemporary metal-organic framework chemistry. Hendon at page 557, col. 2.
Per the specification and instant claim 19, the claim 15 “analyte” may be ionizing radiation (X-rays or UV rays). Specification at page 15, [0082]. Wang teaches that application of MOFs toward radiation detection is quite scarce and direct radiation detection materials have never been reported for MOFs, which may partially due to the lagging development of the semiconductive MOFs. Y. Wang et al., 141 Journal of the American Chemical Society (2019) (“Wang”) (Wang at page 8030, col. 2; see also Abstract). Wang purports the first investigation on the detection of X-ray photons by a terbium-based semiconductive MOF, [(CH3)2NH2]Tb2L3(DMF)2(H2O)2(HCOO) (SCU-12, L = C6Cl2O42−). Wang at page 8030, col. 2. Wang teaches that the lanthanide-based semiconductive MOF (SCU-12) can effectively convert X-ray photons to electrical current signals under continuous hard X-ray radiation. Wang at Abstract.
In order to sense the analyte, claim 15 requires that the analyte be “associated” with the MOF. In an embodiment, the instant specification teaches that “associated” with respect to the interaction between the MOF and analyte, is its “capture” by the MOF.
[0089] In some embodiments, the association also results in the capture of the analyte by the sensor. As such, in some embodiments, the methods of the present disclosure may be utilized to simultaneously detect and capture analytes from various samples.
Specification at page 16, [0089] (emphasis added). Instant claim 21 recites the concept of analyte capture: “wherein the association also results in the capture of the analyte by the sensor”. L. Mendecki et al., Journal of the American Chemical Society, 17229-17232 (2017) (“Mendecki”) teaches significant unpredictability of electrochemical capture of alkenes by conductive metal-organic frameworks. Mendecki teaches that MOF’s comprising the organic ligand HTTP (i.e., M3HTTP2, where M is cobalt, copper or nickel) resulted ethylene capture; however, the same devices fabricated with the conductive metal organic framework M3HHTP2 did not produce observable ethylene capture. Mendecki at page 17231, col. 1, 2nd to last paragraph.
Mendecki teaches that these findings confirm the essential role of metal bis(dithiolene) complex in the electrochemically driven capture. Id.
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Thus, Mendecki specifically teaches that the electrochemical capture of alkenes by conductive metal-organic frameworks is unpredictable.
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 claim 15 limitation of
Claim 15 . . . wherein the metal-organic framework comprises a plurality of metals and a plurality of ligands coordinated with the plurality of metals wherein the plurality of metals comprise bismuth, wherein the plurality of ligands comprise a plurality of hydroxy moieties that are not part of carboxyl groups . . .
wherein the metal-organic framework is in the form of a conductive and interconnected network . . .
is extremely broad as it facially encompasses the metals of the periodic table and any organic ligand. As discussed in Z. Bao et al., 9 Energy and Environmental Science, 3612-3641 (2016) (see Bao at page 3634, col. 2) (“MOFs possess a higher degree of tailorability because of the almost infinite number of possible metal–ligand combinations”); See also J. Liu et al., 46 Chem. Soc. Rev., 5730-5770 (2017) (page 5752, col. 1, “the number of possible MOFs is virtually infinite”).
Note that the claim 15 terms "comprises" and “comprise” are inclusive or open-ended and do not exclude any number or type of additional, unrecited metal atoms in addition to bismuth and do not exclude ligands that are not hydroxy substituted. MPEP § 2111.03(I). For example, claim 4 and the specification both recite HIPP and HTTP as alternative ligands for the claimed MOF, and these ligands do not have hydroxy substituents. Specification at page 9, [0046]. Thus, the claim 15 term “wherein the plurality of ligands comprise a plurality of hydroxy moieties” is interpreted consistently with the specification as requiring at least two ligand-substituted hydroxy groups within the entire structure of the claimed MOF. MPEP § 2111.
The claim 15 breadth is further very broad as directed to detection of any analyte.
Dependent claims 16-22 recite no further structure limiting the claim 15 MOF.
Claims 15-22 and 34-37 Lack Adequate Written Description Support
Original claims 15-22 and 34-37 lack adequate written description support because neither the art of record nor the application as filed disclose either a sufficient or representative number of metal-organic framework (MOF) species (per claim 15) that perform the function of detecting (per claim 15)
15 . . . detecting the presence or absence of the analyte from the sample, wherein the detecting comprises: detecting a change in a property of the sensor, and correlating the change in the property to the presence or absence of the analyte.
sufficient to show Applicant was in possession of the claimed genus of MOFs. Further, neither the specification nor the art of record discloses a structure-function correlation between the claimed MOF and the analyte such that one of skill can recognize which organic ligands and metals react so as form the required porous and conductive MOFs for practice of claim 15 method (outside of the single disclosed species) that functionally perform so as undergo a change in the property to the presence or absence of the analyte. As such one of skill would not recognize that Applicant was in possession of the full scope of claimed method as of the effective filing date.
Here, the specification teaches only one species of MOF that performs the claimed function; which is Bi(HHTP), where the HHTP ligand has the following structure:
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Specification at page 24, [00121]. Specification Fig. 2B depicts a partial structure of Bi(HHTP). Specification Fig. 2B. This single species is clearly not representative of the claim 15 genus of:
Claim 15 . . . wherein the metal-organic framework comprises a plurality of metals and a plurality of ligands coordinated with the plurality of metals
wherein the plurality of metals comprise bismuth,
wherein the plurality of ligands comprise a plurality of hydroxy moieties that are not part of carboxyl groups . . .
wherein the metal-organic framework is in the form of a conductive and interconnected network . . .
Here, claim 15 recites minimal structure regarding the claimed MOF. 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). Here, neither the specification nor the art teaches such a well-established structure-function correlation.
Dependent claims 16-22 and 34-37 recite no further structure limiting the claim 15 MOF and are similarly rejected under the above § 112(a) rationale.
Subject Matter Free of the Art of Record
Claims 19, 36, and 37 are free of the art of record. Claim 19 requires that the “analyte comprises one or more ionizing radiations”:
19. The method of claim 15, wherein the analyte comprises one or more ionizing radiations selected from the group consisting of X-rays, UV-rays, or combinations thereof.
Claims 36 and 37 require “dosimetric detection”.
36 The method of claim 15, wherein the detecting comprises dosimetric detection of the analyte.
37 The method of claim 36, wherein the dosimetric detection further comprises the capture of the analyte by the sensor.
Dosimetric detection is the detection of ionizing radiation. D. Menichelli et al., EP 2,878,976 (2015) (“Menichelli”) (see col. 1, [0002]); see also specification at 41, [00171].
The closest art of record is A. Aykanat et al., 13 ACS Applied Materials & Interfaces, 60306-60318 (Dec. 13, 2021). As discussed in the § 102 rejection, Aykanat teaches construction of a sensing device by drop casting 10 μL of a Bi(HHTP) suspension (1−2 mg/mL in H2O) onto five devices containing interdigitated 10 μm gap gold electrodes, which generated devices with resistances in ∼30 MΩ range. Aykanat at page 60311, col. 2; see also Aykanat at page S34. Aykanat teaches that the devices were dried and wired to a potentiostat that applied 1.0 V voltage at room temperature. Id. Aykanat teaches that the devices were then enclosed in a Teflon chamber with gas inlet/outlet ports connected to mass flow controllers delivering target concentrations of gases from premixed tanks (tanks of 10 000 ppm of NH3 in N2 and 10 000 ppm of NO in N2). Id. Aykanat teaches that VOCs EtOH, MeOH, acetone, or iPrOH were sensed by the Bi(HHTP) in a similar manner. Aykanat at page 60312, Fig. 6. Aykanat thus teaches each and every limitation of claim 15.
Differences between Aykanat and Claims 19, 36 and 37
Aykanat differs from claim 19 because Aykanat performs the Bi(HHTP) detecting experiments in an enclosed Teflon chamber. As such, the analyte cannot comprise either X-ray or UV rays as required by claim 19. And, respecting claims 36 and 37, there is no reason to employ “dosimetric detection” in the method of Aykanat.
Note that Aykanat makes no mention of employing the Bi(HHTP) devices to detect “ionizing radiations selected from the group consisting of X-rays, UV-rays, or combinations thereof”. However, also note that claim 19 recites the open-ended language “comprising”, and is therefore interpreted as permitting other analytes to be present and permits that such other analytes are the subject of the detection. MPEP § 2111.03(I). That is, the claim 19 recites no limitation requiring that it is the “ionizing radiation” itself that must be detected based on “detecting a change in a property of the sensor”; claim 19 only requires that the analyte comprise ionizing radiation.
Claims 19, 36, and 37 Are Not Obvious in view of Aykanat
Claim 19 is not obvious in view of Aykanat because neither Aykanat nor secondary art motivates one of ordinary skill to perform Aykanat’s analyte detecting experiments with the disclosed Bi(HHTP)-based sensor in a manner such that the analyte comprises X-ray or UV rays as required by claim 19.
Claims 36 and 37 not obvious in view of Aykanat because one of ordinary skill is not motivated to employ “dosimetric detection” (i.e., the detection is the detection of ionizing radiation) in the method of Aykanat.
Additional Art Not Cited Against the Claims 15-18 and 20-25
Claims 15-18 and 20-25 have been fully searched. Subject to the 112(a)/(d) rejections, if Applicant overcomes the above § 102 rejection over A. Aykanat et al., 13 ACS Applied Materials & Interfaces, 60306-60318 (Dec. 13, 2021), for example by invoking a prior art exception, then claims 15-18 and 20-25 are otherwise free of the art of record.
In this case, the closest art of record is X. Xiang et al., 3 Engineered Science, 77-83 (2018) (“Xiang”). Xiang teaches a free-standing electrode composed of bismuth terephthalate metal-organic frameworks grown on carbon paper (BiMOF/CP) (CP stands for carbon paper). Xiang at Abstract. Xiang teaches that the BiMOF/CP was applied in the electrochemical detection of Cd2+ and Pb2+ in water. Xiang at Abstract.
Xiang teaches that the BiMOF/CP was synthesized where 0.3225 g Bi(NO3)3•5H2O was dissolved in 10 mL dimethylformamide (DMF), and 0.166 g terephthalic acid was dissolved in 7.5 ml DMF with magnetic stirring; then, the solution of Bi(NO3)3•5H2O was slowly added dropwise into the solution of terephthalic acid under stirring. Xiang at page 79, col. 1.
Xiang teaches that in electrochemical measurements, The BiMOF/CP was directly used as working electrode. Xiang at page 79, col. 2. Xiang teaches that the square wave anodic stripping voltammetry (SWASV) measurements were performed in a 50 mL beaker, containing 25 mL 0.1 M acetate buffer solution (pH 4.5) and known amounts of Cd2+ and Pb2+. Xiang at page 79, col. 2. Xiang teaches that BiMOF/CP showed well-defined peaks toward Cd2+ and Pb2+ detection, and the signal current increased with increasing Cd2+ and Pb2+ concentration from 8.5 to 34 μg/L. Xiang at page 81, col. 2.
Mapping of Xiang to Claim 15
As summarized above, Xiang clearly teaches the following claim 15 limitations:
15. A method of detecting an analyte in a sample, said method comprising:
associating the sample with a composition, wherein the composition is in the form of a sensor,
wherein the composition comprises a metal-organic framework
. . .
detecting the presence or absence of the analyte from the sample,
wherein the detecting comprises: detecting a change in a property of the sensor, and correlating the change in the property to the presence or absence of the analyte.
The terephthalic acid, employed as the MOF’s organic ligand by Xiang, has the following structure:
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Xiang teaches that the O 1s spectrum shows a peak at the binding energy of 530.8 eV (Figure 3c), suggesting the O is coordinated with Bi. Xiang at page 80, lines bridging cols. 1-2.
Xiang’s BiMOF/CP thus meets the following claim 15 limitations, not in strikeout text:
Claim 15 . . . wherein the plurality of ligands comprise
wherein at least some of the hydroxy moieties are coordinated with bismuth to form Bi-O bonds, and
Finally, Xiang’s BiMOF/CP meets the claim 15 limitation of:
Claim 15 . . . wherein the metal-organic framework is in the form of a conductive and interconnected network . . .
That is, Xiang’s BiMOF/CP “is in the form of a conductive and interconnected network” because carbon paper (CP) is conductive. Specification at page 10, [0053]. Further, Xiang teaches that BiMOF/CP functions as a free-standing electrode. Xiang at page 79, col. 2.
Still further, the specification does not define the term “conductive”. The plain meaning of “conductive”, in the invention’s context, is some degree of electrical conduction. The art teaches that the degree of metal-organic framework electrical conductivity depends upon their structure. G. Givaja et al., 41 Chemical Society Reviews, 115-147 (2012). However, most metal-organic frameworks generally exhibit at least some electrical conductivity. L. Sun et al., 55 Angew. Chem. Int. Ed., 3566-3579 (2016) (see page 3566, col. 1, “[p]orous MOFs usually exhibit very low electrical conductivity”). Thus, Xiang’s BiMOF within the BiMOF/CP electrode is itself “conductive”, at least to some degree.
Differences between Xiang and Claim 15
Xiang does not teach the claim 15 limitation of “hydroxy moieties that are not part of carboxyl groups”
15 . . . wherein the plurality of ligands comprise a plurality of hydroxy moieties that are not part of carboxyl groups . . .
A “carboxyl group” is by definition the group -COOH. In Xiang, starting terephthalic acid ligand, the hydroxyl groups are all part of a carboxyl group. Furthermore, it not clear that there are any free hydroxyl groups (non-bismuth complexed) in Xiang’s BiMOF/CP as synthesized from terephthalic acid. Instant claim 15 requires the presence of such free (non-metal complexed) hydroxyl groups
Claim 15 is not Obvious in view of Xiang
Claim 15 and its dependents are not obvious in view of Xiang because neither Xiang nor secondary art motivates one of ordinary skill to arrive at a bismuth-based metal organic framework, where (per claim 15) “wherein the plurality of ligands comprise a plurality of hydroxy moieties that are not part of carboxyl groups”. Such non-metal complexed hydroxyl groups are required by instant claim 15.
Claim 15 . . . wherein the metal-organic framework comprises. . . a plurality of ligands . . . wherein the plurality of ligands comprise a plurality of hydroxy moieties that are not part of carboxyl groups . . .
Note on Prior Art Reference K. Mirica et al., US 2018/0306740 (2018) (“Mirica”)
Mirica is cited in the Written Opinion of the corresponding PCT case. Mirica teaches a textile component with a plurality of fibers; and metal-organic frameworks (MOFs) associated with the fibers of the textile component in the form of a conductive network. Mirica at page 1, [0004].
Per instant claim 15, Mirica teaches methods of sensing an analyte in a sample by exposing the sample to the MOF-comprising conductive textile, where the presence or absence of the analyte from the sample is detected by detecting a change in a property of the conductive textile and correlating the change in the property to the presence or absence of the analyte. Mirica at page 4, [0067].
Mirica teaches that the MOF’s associated organic ligand can be HHTP, which has the following structure:
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Mirica at page 1, [0016]. HHTP comprises a plurality of hydroxy groups and is the same ligand employed in the instant specification for Bi(HHTP). See, specification at page 24, [00121]. Specification Fig. 2B depicts a partial structure of the instantly claimed Bi(HHTP). Specification Fig. 2B. Mirica teaches working examples with nickel-based MOFs Ni3HITP2 and Ni3HHTP2. Mirica at page 13, [0181].
Mirica teaches the following repeating structure for the MOF Ni3HHTP2, where X is oxygen:
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Mirica at page 17. Here, there are no claim 15 “hydroxy moieties”, because all hydroxy moieties are complexed with nickel.
Mirica does not teach MOF-working examples with metals other than nickel. However, Mirica teaches bismuth, generally, as a potential metal.
[0080] The metal-organic frameworks of the present disclosure can also include various types of metals. For instance, in some embodiments, the metals include, without limitation, transition metals, iron, nickel, copper, cobalt, zinc, manganese, platinum, palladium, gold, bismuth, and combinations thereof.
Mirica at page 6, [0080].
Differences between Mirica and Claim 15
Mirica teaches each and every limitation of claim 15, but does not put them together in a sing working embodiment.
Claim 15 Is Not Obvious in view of Mirica
Claim 15 and its dependents are not obvious because neither Mirica nor secondary art motivates one of ordinary skill to select bismuth from among Mirica’s listing of “transition metals, iron, nickel, copper, cobalt, zinc, manganese, platinum, palladium, gold, bismuth” for use with ligand HHTP so as to form a metal organic framework suitable for testing an analyte. Mirica’s single and general statement respecting bismuth is its only mention. Mirica provides no guidance respecting preparing an MOF comprising bismuth. What is more, Mirica provides no guidance as to prepare an MOF meeting the claim 15 limitation of:
Claim 15 . . . wherein the metal-organic framework comprises. . . a plurality of ligands . . . wherein the plurality of ligands comprise a plurality of hydroxy moieties that are not part of carboxyl groups . . .
As shown above in the repeating structure for Mirica’s Ni3HHTP2, where X is oxygen, there are no claim 15 “hydroxy moieties”, because all hydroxy moieties are complexed with nickel. See drawing at Mirica page 17. In contrast, the instant specification discloses Bi(HHTP) (which as noted in the the § 112(a) rejection is the only disclosed species), where there are free (non-metal complexed) hydroxyl groups that “that are not part of carboxyl groups”.
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Specification Fig. 2B (penciled circling added by the Examiner). Note that US 11,092,562, issuing from K. Mirica et al., US 2018/0306740 (2018) (“Mirica”), does not claim bismuth as an alternative metal.
Conclusion
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 In Parks, 30 USPQ2d 1234, the board found that the negatively claimed feature "in the absence of a catalyst" in a process claim was implicitly supported based on the examples that used high temperatures to perform the process, which would have called for a catalyst but no catalyst was used. Id. at 1236. In other words, the specification in Parks provided a basis where one could reason from the process steps that there was support for the "absence of a catalyst" feature.
2 In Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013 (Fed. Cir. 2022), the court held that “‘the hallmark of written description is disclosure.’” Id. at 1017. “Silence is generally not disclosure.” Novartis, 38 F.4th at 1017. Thus, for negative limitations, the specification must describe a reason to exclude the relevant element or feature. Id. at 1016. Alternatively, “it is possible that the written description requirement [for a negative limitation] may be satisfied when a skilled artisan would understand the specification as inherently disclosing the negative limitation.” Id. at 1017.
3 Note that no § 112(d) rejection is made of claim 21 respecting its further limitation of base claim 20. The claim 21 functional language “results in capture” appears to be of questionable significance as a further limitation of base claim 20, since a “capture” already appears to take place in the base claim 20 “reversible association”. However, “the requirements of 35 U.S.C. 112(d) are related to matters of form”. MPEP § 608.01(n)(III). Even though the instant claim 21 language does not substantively limit claim 20, it can still meet the formal requirements of 112(d). MPEP § 2103(I)(C).
4 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”).
5 The claim 15 terms "comprises" and “comprise” are inclusive or open-ended and do not exclude any number or type of additional, unrecited metal atoms and do not exclude ligands that are not hydroxy substituted. MPEP § 2111.03(I). For example, claim 4 and the specification both recite HIPP and HTTP as alternative ligands for the claimed MOF, and these ligands do not have hydroxy substituents. Specification at page 9, [0046]. Thus, the claim 15 term “wherein the plurality of ligands comprise a plurality of hydroxy moieties” is interpreted consistently with the specification as requiring at least two ligand-substituted hydroxy groups within the entire structure of the claimed MOF. MPEP § 2111.
6 Campbell teaches a fabrication of chemosensing device, in a manner similar to that of the instant specification and using the same organic ligand HHTP with copper and nickel as the metal node. That is, Campbell teaches the following formation of the following 2D MOFs Cu3(HHTP)2 (MOF 1), Cu3(HITP)2 (MOF 2), and Ni3(HITP)2 (MOF 3) on gold electrodes (“MOF sensor devices”):
For fabrication of the MOF sensor devices, suspensions of freshly prepared MOFs 1-3 in acetone (~1 mg/mL) were drop-casted onto interdigitated gold electrodes on a corundum substrate (CC1.W1, BVT Technologies) to give polycrystalline MOF films, which were dried under a flow of nitrogen gas. If needed, iterative drop casting was performed to give devices with resistance in the range of ~10-100 kΩ.
Campbell at page S2.
Prosecution Insights