DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendments, filed 4/9/2026, have been fully considered and reviewed by the examiner. The examiner notes the amendment to claims, the cancellation of claims 2-10, 12, 24-29 and 31-41 and the addition of new claims 42-52. Claims 1, 11, 13-21, 30 and 42-52 are pending in the instant application. Claims 42-52 are withdrawn from consideration based on the below analysis.
Election/Restrictions
Newly submitted claims 42-52 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claims 1, 11, 13-21 and 30 are directed towards method claims and the product claims of 42-52 can be made by another materially different process, such as without forming the polymer salt composite. Additionally, as shown below the instant claims lack unity of invention, as the common technical feature is taught by the cited prior art and therefore the common technical feature is not a specifical technical features as required for unity of invention.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 42-52 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should 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. In either instance, 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 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Arguments
Applicant’s arguments, filed 4/9/2026, have been fully considered and reviewed by the examiner. Applicant’s arguments relative to the claim objection of claim 19 is noted and such has been withdrawn. In view of the amendment to claims, the examiner has withdrawn the 35 USC 112(b) rejections. The remaining arguments are deemed unpersuasive for the following reasons.
Applicant’s arguments related to CN 700 related to MOF-free porous materials are noted, but unpersuasive as the examiner cannot locate this quoted material in the supplied machine translation. Supplied herein is a screen shot that illustrate that the MOF porous material includes a metal, or metal salt group such as metal carbonate.
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Here, Applicant’s arguments with respect to Usman and Li are noted, but unpersuasive as the totality of reference suggest the oxalate is the metal salt utilized for the formation of the MOF and while the examiner notes the combination of CN 700 or Qin with Usman fails to disclose the converted MOF comprises metal oxalate or carbonate, the claims as drafted are a result of the conversion process and therefore by converting the metal salt polymer composite that includes a metal carbonate/metal oxalate, the prior art must necessarily have the same result, that is the porous MOF composite structure comprises a metal oxalate or a metal carbonate, unless the applicant is using additional process steps, components or process conditions that are neither claimed nor disclosed as being required to achieve the results of the conversion, i.e. the porous MOF composite structure comprises a metal oxalate or a metal carbonate.
Applicant’s remaining arguments are not persuasive as either not supported by factual evidence and thus deemed are mere attorney speculation or they are not commensurate in scope with the broadly drafted claims.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1, 11, 13-21 and 30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 requires the porous MOF composite structure comprises a metal oxalate or a metal carbonate; however, the examiner can not locate such a requirement in the originally filed disclosure. Specifically, the applicant’s cited support for this requirement, e.g. originally filed claim 10 and 12, appears to provide that the porous metal salt polymer composite (prior to converting to the porous MOF composite structure) includes a metal oxalate or a metal carbonate; however, the examiner can not locate sufficient disclosure that the final porous MOF composite structure will include the metal salt as now claimed. See e.g. Example 4 and Example 5 of application’s specification related to converting the zinc oxalate CALF-20-PTFE (Example 4 discloses synthesis of CALF-20 from zinc oxalate “synthesis process (e.g. conversion) of the zinc oxalate to CALF-20 is performed in-situ”, see 0093, Example 5 discloses the conversion of zinc carbonate to zinc oxalate to CALF-20.) There is no disclosure that the final MOF after conversion includes the metal carbonate or metal oxalate utilized to form the MOF.
Claim 21 is rejected as claim 1 requires metal carbonate and metal oxalate and the specification does not disclose all the claimed MOFs can include the listed MOFs.
Dependent claims do not cure the deficiencies of the claims from which they depend and are similarly rejected.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
Claim(s) 1, 14-17, 21, 30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 109195700 A, hereinafter CN 700.
Claim 1: CN 700 discloses a method, comprising: converting a porous metal salt polymer composite structure to a porous metal-organic framework (MOF) composite structure (abstract stating “phase inversion hole-containing polymer comprises a precursor material by the method of this invention for forming and formed in situ of the MOF.“) CN 700 discloses including a metal carbonate (“ Particularly suitable second nano-particles selected from the group consisting of metal carbonate and metal halide group”).
While the examiner notes CN 700 fails to disclose the converted MOF comprises metal carbonate, the claims as drafted are a result of the conversion process and therefore by converting the metal salt polymer composite that includes a metal carbonate/metal oxalate, the prior art must necessarily have the same result, that is the porous MOF composite structure comprises a metal oxalate or a metal carbonate, unless the applicant is using additional process steps, components or process conditions that are neither claimed nor disclosed as being required to achieve the results of the conversion, i.e. the porous MOF composite structure comprises a metal oxalate or a metal carbonate
Claim 14-15: CN 700 discloses a film (“film preparation”, “particularly the composite material film”, “ the composite material is in the form of a film, typically is a self-supporting film”)
Claim 16-17: CN 700 discloses conversion including both a vapor treatment and liquid treatment process (“(c) ZIF-8 growth film sealing step: the film containing ZnO (3) 18 ml 1 solution (including 132, 7gMeOH, 57 g DMAc;, 15.6 g 2-methyl imidazole, 8.6 g sodium formate), incubating 10 min at 120 degrees centigrade, then cleaning for three times for more than 5 in MeOH.“)
Claim 21: CN 700 discloses e.g. ZIF-7, ZIF-8, etc. (“ ZIF-7, ZIF-8, ZIF-20, ZIF-21, ZIF-22, ZIF-23, ZIF-69, ZIF-90, SIM-1, MIL-47, MIL-53, MOF-5, MIL-96, MIL-89, MIL-101 and HKUST-1”).
Claim 30: CN 700 discloses forming the porous metal salt polymer composite structure (see e.g. film preparation).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 700 as applied above and further in view of US Patent Application Publication 20210187475 by Usman et al.
CN 700 or Qin discloses all that is taught above and discloses ZnO; however, fails to disclose the claimed zinc oxalate. However, Usman, also in the art of forming a ZIF MOF, including a mixed ZIF/polymer, and discloses forming the ZIF using zinc oxalate (0096) and thus using such would have been obvious as a known material for the formation of ZIF MOFs. A predictable use of prior art elements according to their established functions to achieve a predictable result is prima facie obvious. See KSR Int’l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 700 and further in view of US Patent Application Publication 20210046445 by Li et al.
CN 700 discloses all that is taught above and discloses metal carbonates and ZnO for the formation of the ZIF-8; however, fails to explicitly disclose the claimed metal carbonates. However, Li, also in the art of forming MOFs from metal salt precursors discloses the precursor can be e.g. zinc oxide or zinc carbonate (0056 stating “The precursor of the metal organic framework particles may consist or may include cobalt chloride, cobalt acetate, cobalt hydroxide, cobalt oxide, cobalt sulfate, cobalt carbonate, cobalt nitrate hexahydrate, zinc chloride, zinc acetate, zinc hydroxide, zinc oxide, zinc sulfate, zinc carbonate, or zinc nitrate hexahydrate”, 0058 regarding ZIF-8). Therefore taking the references collectively and all that is known to one of ordinary skill in the art, it would have been obvious to have modified CN 700 or Qin to utilize the known precursors for MOF formation, including zinc carbonate with a reasonable expectation of predictable results. Additionally, discloses ZnO and zinc carbonate are known to be alternatives when forming MOFs and using a known precursor alternative would have been obvious. The claim would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Claim(s) 1, 11, 14-18, 20, 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Qin et al. (Deep-Permeation Nanocomposite structure of ZIF-8 inside porous Poly(tetrafluoroethylene) by flow synergistic synthesis) in view of US Patent Application Publication 20210187475 by Usman et al.
Claim 1, 11: Qin discloses a method, comprising: converting a porous metal salt polymer composite structure to a porous metal-organic framework (MOF) composite structure (abstract). Qin explicitly discloses ZnO (Figure 1)
Qin discloses all that is taught above and discloses ZnO; however, fails to disclose the claimed zinc oxalate. However, Usman, also in the art of forming a ZIF MOF, including a mixed ZIF/polymer, and discloses forming the ZIF using zinc oxalate (0096) and thus using such would have been obvious as a known material for the formation of ZIF MOFs. A predictable use of prior art elements according to their established functions to achieve a predictable result is prima facie obvious. See KSR Int’l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
Claim 14-15: Qin discloses a what can reasonably be considered a film, a module or a tape (“Figure 1”)
Claim 16-17: Qin discloses conversion including both a vapor treatment and liquid treatment process (abstract, preparation, see e.g. washing, vapor treatment)
Claim 18, 20: Qin discloses PTFE (abstract). Qin discloses ZnO/PTFE composite (Figure 1, abstract).
Claim 21: Qin discloses ZIF-8 (abstract).
Claim 30: Qin discloses forming the porous metal salt polymer composite structure (see e.g. Figure 1.
Claim(s) 1, 13, 14-18, 20, 21, 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Qin as applied above and further in view of US Patent Application Publication 20210046445 by Li et al.
Claims 1, 13: Qin discloses all that is taught above and discloses metal carbonates and ZnO for the formation of the ZIF-8; however, fails to explicitly disclose the claimed metal carbonates. However, Li, also in the art of forming MOFs from metal salt precursors discloses the precursor can be e.g. zinc oxide or zinc carbonate (0056 stating “The precursor of the metal organic framework particles may consist or may include cobalt chloride, cobalt acetate, cobalt hydroxide, cobalt oxide, cobalt sulfate, cobalt carbonate, cobalt nitrate hexahydrate, zinc chloride, zinc acetate, zinc hydroxide, zinc oxide, zinc sulfate, zinc carbonate, or zinc nitrate hexahydrate”, 0058 regarding ZIF-8). Therefore taking the references collectively and all that is known to one of ordinary skill in the art, it would have been obvious to have modified CN 700 or Qin to utilize the known precursors for MOF formation, including zinc carbonate with a reasonable expectation of predictable results. Additionally, discloses ZnO and zinc carbonate are known to be alternatives when forming MOFs and using a known precursor alternative would have been obvious. The claim would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
While the examiner notes Qin fails to disclose the converted MOF comprises metal carbonate, the claims as drafted are a result of the conversion process and therefore by converting the metal salt polymer composite that includes a metal carbonate/metal oxalate, the prior art must necessarily have the same result, that is the porous MOF composite structure comprises a metal oxalate or a metal carbonate, unless the applicant is using additional process steps, components or process conditions that are neither claimed nor disclosed as being required to achieve the results of the conversion, i.e. the porous MOF composite structure comprises a metal oxalate or a metal carbonate
Claim 14-15: Qin discloses a what can reasonably be considered a film, a module or a tape (“Figure 1”)
Claim 16-17: Qin discloses conversion including both a vapor treatment and liquid treatment process (abstract, preparation, see e.g. washing, vapor treatment)
Claim 18, 20: Qin discloses PTFE (abstract). Qin discloses ZnO/PTFE composite (Figure 1, abstract).
Claim 21: Qin discloses ZIF-8 (abstract).
Claim 30: Qin discloses forming the porous metal salt polymer composite structure (see e.g. Figure 1.
Claim(s) 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 700 as applied above and further in view of WO 2014117225, hereinafter WO 225.
CN 700 generally discloses MOF polymer composites and discloses polymers include e.g. polyethersulfone; however, fails to discloses PTFE or ETFE/polylactic acid as claimed. However, WO 225, also in the art of MOF/polymer composites discloses the polymer can be e.g. polyethersulfone and can also be PTFE, ETFE, polyactic acid (“Such polymers include, but are not limited to, . . . fluoroplastics (such as PTFE, alongside with FEP, PFA, CTFE, ECTFE, ETFE), . . . polyethersulfone (PES), polysulfone polyethylenechlorinates (PEC), polyimide (PI), polylactic acid (PLA), polymethylpentene (PMP), polyphenylene oxide (PPO), polyphenylene sulfide (PPS), polyphthalamide (PPA), polypropylene (PP), polystyrene (PS), polysulfone (PSU) . . “
Therefore taking the references collectively, it would have been obvious to have modified CN 700 to include known polymers for MOF/polymer composites, including PTFE, ETFE, or polyactic acid, as such is taught as used for such purpose and CN 700 discloses using known polymers. Additionally, WO 225 discloses that PTFE, ETFE, polyactic acid are known alternative to polyethersulfone and thus using such known alternatives would have led to predictable results.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID P TUROCY/Primary Examiner, Art Unit 1718
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