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 Arguments
Applicant's arguments, filed April 13, 2026, have been fully considered but they are not deemed to be fully persuasive. The following rejections and/or objections constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112 Indefiniteness
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 3 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 3 recites “The method of claim 2,...” and thus depends on claim 2. However, claim 2 has been canceled. A claim that depends on a canceled claim is indefinite because the boundaries of the claim cannot be clearly determined. It is suggested that claim 3 be dependent on claim 1 to correct this issue.
Clarification and/or amendment 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.
Claim 1, 3, and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Eddaoudi et al. (US 2017 0096394) in view of Noro and Nakamura (NPG Asia Materials 2017) and Liu et al. (Environmental Science and Technology, 2015).
This rejection is MAINTAINED for the reasons of record set forth in the Office Action mailed January 6, 2026 and those set forth herein.
Regarding new limitations of amended claim 1, the limitation of perfluoroalkyl or polyfluoroalkyl substance (PFAS) is derived from canceled claim 2 and the related claims 2 and 3 were rejected over Eddaoudi in view of Noro and Liu as discussed in the Office Action mailed January 6, 2026. Regarding the new limitation that the RE (rare earth) metal ions break a C-F bond to remove the one or more fluorine atoms from the organo-fluorine molecule, Eddaoudi discloses that RE MOF (metal organic framework) can be produced by contacting Y3+ with 2-fluorobezoic acid (2-FBA) (an organo-fluorine molecule) (¶ 119). It is proposed that fluoro-bridged clusters are present in all RE MOFs using 2-FBA and the source of the fluorine is likely 2-FBA (¶ 155 of instant specification as filed). Because Eddaoudi explicitly discloses contacting a RE metal ion with an organo-fluorine molecule, the underlying cleavage of the C-F bond and the subsequent extract of the fluorine atom from the organo-fluorine molecule occur automatically. The product of Eddaoudi would be a fluorinated RE MOF containing fluoro-bridged clusters. Applicant’s description of this chemical breakdown merely explains the scientific phenomenon already occurring in Eddaoudi’s reaction mixture. When a product or process is inherently rendered obvious by the prior art, the invocation of an unappreciated mechanism cannot rescue the claim from a rejection. Therefore, the newly added structural mechanism in amended claim 1 is inherently rendered obvious, and the rejection remains proper. “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). As discussed in the Office Action mailed January 6, 2026, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to utilize PFAS such as perfluorooctanoic acid (PFOA) instead of 2-FBA of Eddaoudi as an organo-fluorine molecule.
Applicant argues that there is no evidence in Eddaoudi that a fluorine has been extracted from 2-FBA via the breaking of any C-F bonds, and the resulting MOF formed by Eddaoudi does not include any fluorine atoms. Applicant argues that Noro also does not extract any fluorine atoms from an organo-fluorine molecule. Applicant argues that it is unclear what would result from combining Eddaoudi and Noro. Applicant argues that Liu does not teach extraction of fluorine through breaking C-F bonds. Applicant argues that none of Eddaoudi, Noro, nor Liu teaches extraction of a fluorine from an organo-fluorine molecule as required by the instant claims.
This argument is unpersuasive. As discussed above, Eddaoudi teaches the method producing RE MOF by contacting RE metal ions with an organo-fluorine molecule. Eddaoudi does not mention that RE metal ions break a C-F bond and extract fluorine atoms from the organo-fluorine molecule to produce a fluorinated RE MOF. However, this mechanism is inherently present in Eddaoudi’s process, and the product of Eddaoudi would be a fluorinated RE MOF containing fluoro-bridged clusters. The recitation of this mechanism does not impart patentable weight to the claim. It is well-settled that where the prior art teaches the same steps of a process or the same structural interaction under the same conditions, the inherent properties, functions, or results of that process are also disclosed. “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Regarding Noro and Liu, it is well-settled patent law that the test for obviousness is not whether the features of a secondary reference can be bodily incorporated into the structure of the primary reference. Rather, the test is what the combined teaching of the references would suggest to a person of ordinary skill in the art. In re Keller, 642 F.2d 413, 2108 USPQ 871. Neither Noro nor Liu criticizes, discredits, or discourages the destruction of C-F bonds. As discussed in the Office Action mailed January 6, 2026, it would have been obvious to substitute the 2-FBA of Eddaoudi with the PFAS of Noro (the PFOA of Liu) as another organo-fluorine molecule in order to produce a fluorinated RE MOF using the method of Eddaoudi. Further, a person of ordinary skill in the art would have been motivated to use PFAS or other organo-fluorine molecules in order to expand the applications.
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) in view of Noro and Nakamura (NPG Asia Materials 2017) and Liu et al. (Environmental Science and Technology, 2015).
This rejection is MAINTAINED for the reasons of record set forth in the Office Action mailed January 6, 2026 and those set forth herein.
Regarding new limitations of amended claim 1, the limitation of PFAS is derived from canceled claim 2 and the related claims 2 and 3 were rejected over Xue in view of Noro and Liu as discussed in the Office Action mailed January 6, 2026. Regarding the new limitation that the RE metal ions break a C-F bond to remove the one or more fluorine atoms from the organo-fluorine molecule, Xue discloses that RE MOF can be produced by contacting Y3+ with 2-fluoro-4-(1H-tetrazol-5-yl) benzoic acid (H2FTZB) (an organo-fluorine molecule) (page 7665, Synthesis of Y-FTZB-MOF). It is proposed that fluoro-bridged clusters are present in all RE MOFs using 2-FBA and the source of the fluorine is likely 2-FBA (¶ 155 of instant specification as filed). Because Xue explicitly discloses contacting a RE metal ion with an organo-fluorine molecule, the underlying cleavage of the C-F bond and the subsequent extract of the fluorine atom from the organo-fluorine molecule occur automatically. The product of Xue would be a fluorinated RE MOF containing fluoro-bridged clusters. Applicant’s description of this chemical breakdown merely explains the scientific phenomenon already occurring in Xue’s reaction mixture. When a product or process is inherently rendered obvious by the prior art, the invocation of an unappreciated mechanism cannot rescue the claim from a rejection. Therefore, the newly added structural mechanism in amended claim 1 is inherently rendered obvious, and the rejection remains proper. “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). As discussed in the Office Action mailed January 6, 2026, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to utilize PFAS such as PFOA instead of instead of H2FTZB of Xue as an organo-fluorine molecule.
Applicant argues that none of Xue, Noro, or Liu, alone or in combination, teaches the subject matter of claim 1 as amended because none of them teaches extraction of a fluorine atom from an organo-fluorine molecule.
This argument is unpersuasive. As discussed above, Xue teaches the method producing RE MOF by contacting RE metal ions with an organo-fluorine molecule. Xue does not mention that RE metal ions break a C-F bond and extract fluorine atoms from the organo-fluorine molecule to produce a fluorinated RE MOF. However, this mechanism is inherently present in Xue’s process, and the product of Xue would be a fluorinated RE MOF containing fluoro-bridged clusters. The recitation of this mechanism does not impart patentable weight to the claim. It is well-settled that where the prior art teaches the same steps of a process or the same structural interaction under the same conditions, the inherent properties, functions, or results of that process are also disclosed. “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Regarding Noro and Liu, it is well-settled patent law that the test for obviousness is not whether the features of a secondary reference can be bodily incorporated into the structure of the primary reference. Rather, the test is what the combined teaching of the references would suggest to a person of ordinary skill in the art. In re Keller, 642 F.2d 413, 2108 USPQ 871. Neither Noro nor Liu criticizes, discredits, or discourages the destruction of C-F bonds. As discussed in the Office Action mailed January 6, 2026, it would have been obvious to substitute the H2FTZB of Xue with the PFAS of Noro (the PFOA of Liu) as another organo-fluorine molecule in order to produce a fluorinated RE MOF using the method of Xue. Further, a person of ordinary skill in the art would have been motivated to use PFAS or other organo-fluorine molecules in order to expand the applications.
Claims 6, 7, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Xue, Noro, and Liu as applied to claims 1, 3, 5, and 8, 9, and 11 above, and further in view of Eddaoudi et al. (US 2017 0096394).
This rejection is MAINTAINED for the reasons of record set forth in the Office Action mailed January 6, 2026 and those set forth herein.
Applicant argues that neither Xue nor Eddaoudi teaches extraction of any fluorine atoms from an organo-fluorine molecule. Applicant argues that claims are patentable over both these references because original claim 2 was not rejected over Xue in view of Eddaoudi, and claims 6, 7, and 10 depend on claim 1 and incorporate all limitations thereof.
This argument is unpersuasive. As discussed above and in the Office Action mailed January 6, 2026, original claim 1 is unpatentable over Xue. Original claim 2 and amended claim 1 which incorporates the limitations of original claim 2 are unpatentable over Xue in view of Noro and Liu. As discussed above, Xue and Eddaoudi inherently teach extraction of fluorine atoms from an organo-fluorine molecule when RE metal ions contact with the organo-fluorine molecule. Consequently, dependent claims 6, 7, and 10 are also obvious for the reasons set forth in Office Action mailed January 6, 2026.
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 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
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