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 .
Election/Restrictions
Applicant’s election without traverse of Group I and species of perfluorooctanoic acid (PFOA), Y3+, 1,3,5-tris(4- carboxyphenyl)-benzene (H3BTB), and N,N'-dimethylformamide (DMF) in the reply filed on November 14, 2025 is acknowledged.
Drawings
The drawings are objected to because of the following informalities:
FIGs 1, 2, 6, 42A, 43, 44, and 45 are object because the individual elements within the structure are not labeled. Without these labels, it is impossible to distinguish between different types of atoms or to clearly identify the connectivity of the framework. The stippling and shading patterns and heavy shading of dots also obscure the structural details of the molecule.
FIGs 4, 10, 11, 12, 37, and 38 are object because the stippling and shading patterns and heavy shading of dots obscure the structural details of the molecule.
FIGs 36 and 42A are object because the X-axis and Y-axis lack descriptive labels and units of measurement. Without these labels, the technical significance of the data points and the relationship between the variables cannot be understood, failing to provide a clear understanding of the claimed invention.
FIGs 14B, 15B, 27B, 28B, 31B, 32B, and 36 are object because the multiple plot lines are depicted as nearly identical solid lines that overlap significantly. It is impossible to distinguish one specific material’s performance from another. The applicant is required to provide a substitute sheet using different line types (e.g., dashed, dotted) or lead lines with reference numerals to clearly identify each curve.
Appropriate correction is required.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheets” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the proposed drawing and marked-up copy will result in the abandonment of the application.
Specification
The disclosure is objected to because of the following informalities:
The use of the terms Bruker®, TA Instrument Q™600, Zeiss® EVO®, Aztec®, PHI® VersaProbe II™, Bruker®, and Kapton® which are a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
The disclosure is objected to because of the following informalities:
In title, “MOLECUELS” should read “MOLECULES”.
In ¶ 64, “can formed” should read “can be formed”.
Appropriate correction is required.
Claim Objections
Claims 2, 3, 5, 7, and 9 are objected to because of the following informalities:
Applicant has elected, without traverse, species of PFOA as an organo-fluorine molecule, Y3+ as a rare earth (RE) metal ion, H3BTB as a ligand, and DMF as a solvent. However, the claims continues to recite other species that were not elected. Accordingly, the claims are not limited to the elected invention and must be amended to conform to the election.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 7 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 recites the limitation "the ligand" in line 1. There is insufficient antecedent basis for this limitation in the claim. It is suggested that claim 7 be dependent on claim 6 to correct this issue.
Appropriate correction is required.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Eddaoudi et al. (US 2017 0096394 A1; cited on PTO-892) in view of Noro and Nakamura (NPG Asia Materials 2017; cited on PTO-892) and Liu et al. (Environmental Science and Technology, 2015; cited on PTO-892).
Eddaoudi disclose a method producing a RE metal organic framework (MOF) by contacting Y3+ (reads on RE metal ions of instant claims 1 and 5) with 2-fluorobezoic acid (2-FBA) (reads on an organo-fluorine molecule of instant claim 1 and a benzoic acid derivative comprising at least one fluorine substituent of instant claims 2) (¶ 119). Eddaoudi disclose that H3BTB (reads on a ligand of instant claims 6 and 7) and solvent comprising DMF and water (reads on a solvent of instant claims 8-10) can be used to produce the MOF (¶ 119). The producing method and RE MOF of Eddaoudi read on a method of instant claim 1 and a fluorinated RE MOF of instant claim 11 because Eddaoudi uses 2-FBA which is a fluorinated modulator. The fluorine atoms can be extracted from the modulator and fluorine bridges can be formed in the MOF (¶ 155 of instant specification as filed).
Regarding claim 3, Eddaoudi does not disclose the organo-fluorine molecule is PFOA, applicant’s elected species.
Noro discloses that fluorinated MOFs can be synthesized using perfluoroalkyl substituents (page 10, PERFLUOROALKANE-FUNTIONALIZED MOFS). Noro discloses that perfluoroalkyl substituents can be adopted into MOFs by using bridging ligands with their substituents or by using terminal ligands bearing them (page 10, PERFLUOROALKANE-FUNTIONALIZED MOFS). Noro discloses that the perfluoroalkanes can provide polar adsorption sites and the fluorine-containing MOFs provide useful properties such as specific fluorophilic field, preferential adsorption for O2 and CO2, and high ionic conductivity (page 10, PERFLUOROALKANE-FUNTIONALIZED MOFS; Table 1).
Liu discloses examining the adsorption performance of MOFs specifically using PFOA as a model compound (ABSTRACT; page 8658, column 1, ¶ 2). Liu discloses that the absorbance of PFOA by functionalized MOFs is useful for environmental remediation (ABSTRACT; page 8658, column 1, ¶ 2).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use PFOA as an organo-fluorine molecule in the MOF of Eddaoudi. A person of ordinary skill in the art would have been motivated to make these modifications and reasonably would have expected success because Noro teaches perfluoroalkyl substituents can be used to enhance MOF functionality such as gas adsorption, and Liu teaches PFOA, a specific type of perfluoroalkyl-containing compound, can be absorbed by MOFs for environmental remediation. Accordingly, a person of ordinary skill in the art would have been motivated to use PFOA as a organo-fluorine molecule as taught by Noro and Liu in order to enhance the MOF utility for specialized applications such as gas adsorption or environmental remediation. Therefore, the claims invention represents no more than the simple substitution of one known organo-fluorine molecule for another to obtain predictable results.
Claims 1-3, 5, and 8, 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Xue et al. (Journal of the American Chemical Society 2013; cited on PTO-892) in view of Noro and Nakamura (NPG Asia Materials 2017; cited on PTO-892) and Liu et al. (Environmental Science and Technology, 2015; cited on PTO-892).
Xue discloses a method producing Y-FTZB-MOF (reads on a fluorinated RE MOF of instant claim 11) by contacting Y3+ (reads on RE metal ion of instant claims 1 and 5) with 2-fluoro-4-(1H-tetrazol-5-yl) benzoic acid (H2FTZB) (reads on an organo-fluorine molecule of instant claim 1 and a benzoic acid derivative comprising at least one fluorine substituent of instant claims 2) (page 7665, Synthesis of Y-FTZB-MOF). Xue discloses that DMF can be used for synthesis of the compound (reads on a solvent of instant claims 8 and 9) (page 7665, Synthesis of Y-FTZB-MOF).
Regarding claim 3, Xue does not disclose the organo-fluorine molecule is PFOA.
As discussed above, Noro discloses that fluorinated MOFs can be synthesized using perfluoroalkyl substituents (page 10, PERFLUOROALKANE-FUNTIONALIZED MOFS). Noro discloses that perfluoroalkyl substituents can be adopted into MOFs by using bridging ligands with their substituents or by using terminal ligands bearing them (page 10, PERFLUOROALKANE-FUNTIONALIZED MOFS). Noro discloses that the perfluoroalkanes can provide polar adsorption sites and the fluorine-containing MOFs provide useful properties such as specific fluorophilic field, preferential adsorption for O2 and CO2, and high ionic conductivity (page 10, PERFLUOROALKANE-FUNTIONALIZED MOFS; Table 1).
As discussed above, Liu discloses examining the adsorption performance of MOFs specifically using PFOA as a model compound (ABSTRACT; page 8658, column 1, ¶ 2). Liu discloses that the absorbance of PFOA by functionalized MOFs is useful for environmental remediation (ABSTRACT; page 8658, column 1, ¶ 2).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use PFOA as an organo-fluorine molecule in the MOF of Xue. A person of ordinary skill in the art would have been motivated to make these modifications and reasonably would have expected success because Noro teaches perfluoroalkyl substituents can be used to enhance MOF functionality such as gas adsorption, and Liu teaches PFOA, a specific type of perfluoroalkyl-containing compound, can be absorbed by MOFs for environmental remediation. Accordingly, a person of ordinary skill in the art would have been motivated to use PFOA as a organo-fluorine molecule as taught by Noro and Liu in order to enhance the MOF utility for specialized applications such as gas adsorption or environmental remediation. Therefore, the claims invention represents no more than the simple substitution of one known organo-fluorine molecule for another to obtain predictable results.
Claims 6, 7, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Xue et al. (Journal of the American Chemical Society 2013; cited on PTO-892) in view of Eddaoudi et al. (US 2017 0096394 A1; cited on PTO-892).
Xue is discussed above.
Regarding claims 6 and 7, Xue does not disclose further comprising contacting the RE metal ions and the organo-fluorine molecule with a ligand such as H3BTB.
Regarding claim 10, Xue does not disclose the solvent further comprises water, hydrogen peroxide (H2O2), acetic acid, HNO3, or any combination thereof.
As discussed above, Eddaoudi disclose that ligand such as H3BTB and solvent comprising DMF and water can be used to produce the MOF (¶ 119).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use a ligand such as H3BTB and a solvent such as DMF with water for producing the MOF of Xue. A person of ordinary skill in the art would have been motivated to make these modifications and reasonably would have expected success because Eddaoudi teaches the use of ligand comprising H3BTB and the solvent comprising DMF and water to produce the fluorinated RE MOF. Therefore, one of ordinary skill in the art would have been motivated to modify Xue in view of Eddaoudi to arrive at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONG HWAN BAEK whose telephone number is (571)272-0670. The examiner can normally be reached Mon - Thu, 9 am - 3 pm ET.
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/JONG HWAN BAEK/Examiner, Art Unit 1618
/Michael G. Hartley/Supervisory Patent Examiner, Art Unit 1618