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 II, claims 14-18, in the reply filed on 06/15/2026 is acknowledged.
Claim Rejections - 35 USC § 112
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.
Claims 15-16 and 18 are 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.
Regarding claim 15, line 4, the addition of the term “their analogues” extends the scope of the claims so as to render them indefinite since it is unclear what “analogues” is intended to convey. The addition of the word “analogues” to the otherwise definite expressions (e.g. guanosine triphosphate) renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955).
Regarding claim 16, lines 2-5, the addition of the phrase “analogues thereof” extends the scope of the claims so as to render them indefinite since it is unclear what “analogues thereof” is intended to convey. The addition of the word “analogues” to the otherwise definite expressions (e.g. PCN-333) renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955).
Regarding claim 18, the term “MOF Cr3” lacks sufficient antecedent basis. In the interest of compact prosecution and in view of the instant specification, the claim is attempting to limit the ratio of organophosphate per metal site in the MOF, with the Cr3 referring to the trichromium cluster in MOFs such as Cr-MIL-101. See [086]-[087] in the instant specification. The broader interpretation was applied to the claims, where the ratio of organophosphate to metal ratio was examined.
Furthers, the claimed ratio of “irreversibly adsorbed organo-phosphate to MOF Cr3 is in the range of about 0.09 to about 0.59” is unclear because the claim does not provide units (e.g. molar ratio, weight ratio, etc.) and accordingly skilled artisans viewing such a ratio would be unable to ascertain the scope of the invention from the claim. In the interest of compact prosecution and in view of the instant specification, a molar ratio of organophosphate to metal ion in the solid MOF was intended and prior art was applied to this interpretation, in addition to the broader interpretation above (see [142] in the instant specification).
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.
(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.
Claims 14-15 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lou et al. (CN113101908A English).
Regarding claim 14, Lou teaches a hybrid ligand metal organic framework material that comprises metal organic framework and a nucleotide source incorporated in the material, where the nucleotide includes adenosine monophosphate, adenosine diphosphate, adenosine triphosphate, deoxyadenosine monophosphate, deoxyadenosine diphosphate, deoxyadenosine triphosphate, cyclic adenosine monophosphate, guanosine monophosphate, Guanosine diphosphate, guanosine triphosphate, deoxyguanosine monophosphate, deoxyguanosine diphosphate, deoxyguanosine triphosphate, cyclic guanosine monophosphate, cytidine monophosphate, cytidine diphosphate, deoxycytidine monophosphate, cyclic guanosine monophosphate at least one of cytidine phosphate, uridine monophosphate, guanosine monophosphate, inosine nucleotide, uridine diphosphate, adenosine monophosphate, deoxyuridine monophosphate, and cyclic uridine monophosphate (Abstract; Claims). Lou teaches the material is assembled with nucleotides to form a stable coordination structure and that the material is washed with solvent prior to obtaining the MOF material containing the nucleotide (Pg. 3, par. 6-14; Pg. 4, par. 6; Pg. 4, par. 22-26; Pg. 5, par. 17).
Lou teaching a hybrid material comprising a MOF and an organophosphate, where the phosphate nucleotides are incorporated into the MOF to form a stable coordination structure is equivalent to “irreversibly adsorbed organophosphate”. This is interpreted from at least [136] of the instant specification that describes irreversibly bound ATP as being “ATP molecules are not removed upon repeated washings with water at 4 °C”.
Regarding claim 15, Luo anticipates the MOF of claim 14 and Luo teaches the nucleotide includes adenosine monophosphate, adenosine diphosphate, adenosine triphosphate, deoxyadenosine monophosphate, deoxyadenosine diphosphate, deoxyadenosine triphosphate, cyclic adenosine monophosphate, guanosine monophosphate, Guanosine diphosphate, guanosine triphosphate, deoxyguanosine monophosphate, deoxyguanosine diphosphate, deoxyguanosine triphosphate, cyclic guanosine monophosphate, cytidine monophosphate, cytidine diphosphate, deoxycytidine monophosphate, cyclic guanosine monophosphate at least one of cytidine phosphate, uridine monophosphate, guanosine monophosphate, inosine nucleotide, uridine diphosphate, adenosine monophosphate, deoxyuridine monophosphate, and cyclic uridine monophosphate (Abstract; Claims)
Regarding claim 17, Luo anticipates the MOF of claim 14 and further teaches the MOF contains metal ions (Pg. 2, Background; Pg. 4, par. 3-8; Pg. 4, par. 20).
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 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.
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.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Lou et al. (CN113101908A English) in view of Wang et al. (J. Am.Chem. Soc. 2017, 139, 9827-9830; cited in IDS dated 12/05/2023).
Regarding claim 16, Luo anticipates the MOF of claim 14 and the claim further requires the “MOF comprises at least one species selected from the group consisting of MIL-101 and analogues thereof;MIL-100(Cr); MOF-808(Zr); PCN-333 analogues; UiO-67 and analogues thereof; Ni-BPM; INA@MOF- 808(Zr); UiO-66 and analogues thereof; NU-1000 and analogues thereof; HKUST-1(Cu); Ni- IRMOF-74-IV; ZIF-67(Zr); PCN-222 analogues, and combinations thereof,” to which Luo does not specify the morphology of the MOFs.
Wang teaches phosphate-modified oligonucleotide-functionalized metal-organic framework nanoparticles, where the metal-organic framework species include UiO-66, UiO-67, PCN-222, and MIL-101 (Cr, Al, Fe) (Abstract; Pg. 9828, right col.).
Advantageously, the MOFs taught by Wang provide metal surfaces that allow for phosphate moieties to attach to, while further providing high stability and extensive characterization data (Pg. 9827, right col.; Pg. 9828, left and right col.).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to select one of the MOF species taught by Wang in the MOF of Lou in order to provide metal sites that are able to have phosphate moieties attached while being stable and extensively characterized, as taught by Wang
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Lou et al. (CN113101908A English).
Regarding claim 18, Lou anticipates the MOF of claim 14 and Lou further teaches the nucleotide is provided at a concentration relative to the metal ions at a molar ratio of 0.05-10 (0.005:1) to 4:1 (Pg. 4, par. 7). Lou teaches the metal ions incorporated into the MOF can include chromium ions (Pg. 4, par. 4). Accordingly, Lou teaching a MOF containing metal ions, including chromium, prepared with a molar ratio of nucleotide to metal ion overlapping the claimed range would provide a material comprising the taught range and therefore renders obvious “a ratio of irreversibly adsorbed organo- phosphate to MOF Cr3 is in the range of about 0.09 to about 0.59.”
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Lou (molar ratio 0.05-10 (0.005:1) to 4:1) overlaps with the claimed range (molar ratio about 0.09 to about 0.59). Therefore, the range in Lou renders obvious the claimed range.
Conclusion
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/JORDAN W TAYLOR/Examiner, Art Unit 1738
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