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 .
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.
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(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bao et al. (Talanta, 154 (2016) 360-366) as evidenced by Yan et al. (MOF-5 Metal-Organic Framework as Sorbent for In-Field Sampling and Preconcentration in Combination with Thermal Desorption GC/MS for Determination of Atmospheric Formaldehyde) .
With regards to Claim 1 Bao teaches:
A metal-organic framework (MOF) coated on the inner wall of a capillary column which reads on applicant's claimed chromatography column comprising an MOF coating on an inner wall of a channel. The MOF is capable of being used as an adsorbent and a stationary phase for volatile organic compounds (VOCs) so that preconcentration and separation of VOCs are performed simultaneously. (See Bao pg. 362, Fig. 2 and part 2.4 pgs. 361-363 and part 2.5 pg. 363)
Bao does not explicitly teach both adsorbing and preconcentrating of VOCs.
The method of using the apparatus does not expressly or impliedly require any particular structure in addition to that disclosed by Bao. The courts have held that the manner or method in which a machine is to be utilized is not germane to the issue of patentability of the machine itself. The apparatus or product must be structurally distinct from the prior art. See MPEP 2114
With regards to the term “hybrid” applicant has defined the term on pg. 1 of the specification as “hybrid micro-gas chromatography column (hereinafter sometimes referred to as a hybrid μ-GC column chip) capable of simultaneously performing preconcentration of low-concentration VOCs, which is the function of a preconcentrator, and separation of low-concentration VOCs, which is the function of a gas separation column, in a single chip, in order to miniaturize a portable GC system, thereby completing the present disclosure.” However, applicant has not clarified how the claimed structure is distinct from the prior art structures and as such the prior art, which has the same structure as the claimed invention, is considered to read on “hybrid” and to be capable of performing the claimed functions. The courts have held that the manner or method in which a machine is to be utilized is not germane to the issue of patentability of the machine itself. The apparatus or product must be structurally distinct from the prior art. See MPEP 2114
Further, Yan et al. (cited in the Bao article above) teaches a metal–organic framework MOF-5 has the ability to function as a sorbent for in-field sampling and preconcentration. The MOF appears to separate out, thus concentrating the formaldehyde prior to analysis.)
Since it is unclear if the recited “channels” are micro sized or what the “hybrid micro-gas” entails, Bao et al. does not specifically recite the dimensions of its capillary; however, in the separation art, most capillaries are micro-sized. It is noted that limitations relating to size and dimensions are held not sufficient to patentably distinguish over the prior art. See In re Rose, 220 F.2d 1048, 189 USPQ 143 (CCPA 1976); Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984); MPEP 2144.04 IV. It is noted that Bae et al. teaches the separation of VOC ethylbenzene (see fig. 4, claim 5 although monitoring VOCs is the use of the device).
With regards to Claim 2-4 Bao teaches:
The MOF selected is MOF-5 which reads on applicants claimed selection of MOF-5 which comprises a metal ion and an organic ligand coordinated to the metal ion wherein the metal ion is zinc which reads on applicant's claimed zinc and the organic ligand is dicarboxylate which reads on applicant's claimed dicarboxylic acid. (See Bao part 1, pg. 361 paragraph 2 of the left column)
With regards to Claim 5 Bao teaches:
Separation of ethylbenzene, which reads on applicant's claimed selection of ethylbenzene as a target VOC for separation. (See Bao pg. 364 left column and Table 1)
Other Applicable Prior Art
All other art cited not detailed above in a rejection is considered relevant to at least some portion or feature of the current application and is cited for possible future use for reference. Applicant may find it useful to be familiar with all cited art for possible future discussion.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIT E ANBACHT whose telephone number is (571)272-9876. The examiner can normally be reached on M, T, R, F 11 am - 4 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dieterle can be reached on (571) 270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9876.
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/BRIT E. ANBACHT/Examiner, Art Unit 1776
BRIT E. ANBACHT
Examiner
Art Unit 1776