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
Claims 36-47 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 8th, 2026.
Applicant's election with traverse of Group I, claims 28-32 and 35 in the reply filed on June 8th, 2026 is acknowledged. The traversal is on the grounds that claims 33-34 and 36 have been amended to be dependent from claim 28. The Examiner agrees that claims 33-34 have each been amended to be dependent from claim 28 and hereby rejoins claims 33-34 with the remaining claims in Group I, withdrawing the requirement of restricting claims 33 and 34 from claims 28-32 and 35 in the Restriction Requirement dated May 21st, 2026. However, the incorporation of amended features of product claim 28 into the amended method claim 36 does not restore unity of invention because claim 28 is still not a special technical feature (see rejection of claim 28 under 35 U.S.C. 102(a)(1) below).
The remainder of the restriction requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to because Fig. 17 has two labels of 2θ = 5° along its x-axis. The second label should be 10°. 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.
Claim Interpretation
Claim 28 recites a limitation directed to “a porosity”. The instant Specification states, “The porosity (or micropore volume) of the materials can be determined using methods known in the relevant art” (Specification, [0091]). Therefore, where taught in the prior art, “micropore volume” is interpreted to read on “porosity” as claimed.
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.
Claim 33 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 33 recites a limitation directed to “a relative intensity” in lines 4-5. Claim 28, upon which claim 33 depends, recites “a relative intensity” in line 4 and further specifies that “the relative intensity is calculated as an integrated intensity of a peak between 2° and 7° in an X-ray diffraction pattern corresponding to the aggregate integrated intensity of the (100) and (110) peaks divided by an average of intensities of the (111), (200), and (600) peaks” in lines 6-9. This recitation of “the relative intensity” is interpreted to read on “a relative intensity” of claim 28, but not necessarily on “a relative intensity” of claim 33, as claim 33 is newly reciting “a relative intensity” after antecedent basis has already been established for “the relative intensity” in claim 28. Therefore, it is unclear which features of the zirconium-based metal-organic framework are being claimed to have “a relative intensity”. For purposes of examination, any relative intensity that can be attributed to a property measurement of the zirconium-based metal-organic framework will be interpreted to read on “a relative intensity”, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111.
Similarly, claim 33 recites a limitation directed to “a peak width ratio”. It is unclear which peaks are being referenced in the claim. For purposes of examination, any numerical ratio arising from two peaks that can be attributed to a property measurement of the zirconium-based metal-organic framework will be interpreted to read on “a peak width ratio”.
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.
Claims 28-30 and 32-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shearer 2016 ("Functionalizing the defects: Postsynthetic ligand exchange in the metal organic framework UiO-66", 2016) (see the attached copy including Supporting Information), as evidenced by Shearer 2014 (“Tuned to perfection: Ironing out the defects in metal-organic framework UiO-66”, 2014).
Regarding claim 28, Shearer 2016 teaches a metal-organic framework (Shearer 2016, Page S68, Figure S14, Table S2; Page S4, Paragraphs 1-3, 50Benz) comprising a plurality of tetravalent cations (Shearer 2016, Page 7190, Col. 1, Paragraph 1, zirconium(IV) cations) and terephthalate linkers (Shearer 2016, Page 7190, Col. 1, Paragraph 1, benzene-1,4-dicarboxylate is terephthalate) crystallized in a cubic lattice (Shearer 2016, Figure 4 showing the cubic lattice), wherein the metal-organic framework has a surface area of 1515 m2/g, (Sherer 2016, Page 7192, Col. 1, Paragraph 3, 50Benz BET S.S. = 1515 m2/g), a porosity of 0.62 cc/g (Shearer 2016, Page S97, 50Benz Pore Volume / cm3g-1), and a relative intensity of 0.454 (Shearer 2016, Page S68, Broad Peak of 50Benz), wherein the relative intensity is calculated as an integrated intensity of a peak between 2° and 7° 2θ in an X-ray diffraction pattern corresponding to the aggregate integrated intensity of the (100) and (110) peaks divided by an average of intensities of the (111), (200), and (600) peaks (Shearer 2016, Fig. S1, Page S16, Paragraph 1).
Shearer 2016 does not explicitly teach that the metal-organic framework is crystallized in a primitive lattice. However, in an earlier publication, this is explicitly taught of the low-angle XRD “broad peak” of the defective UiO-66 material under study (Shearer 2014, Page 4069, Col. 1, Paragraph 4, “These further observations allowed us to discover that there is a strong correlation between poor thermal stability and the extent to which two weak and broad symmetry forbidden reflections (indexing to the (100) and (110) of a primitive cell) are evident in the low angle region of the PXRD pattern.”). Therefore, despite Shearer 2016’s silence to the lattice type, a portion of the metal-organic framework it studies is crystallized in a primitive cubic lattice. See MPEP 2112.I, citing, e.g., Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999) (stating that “"[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”). In the instant case, reciting the lattice type of Shearer 2016’s metal-organic framework does not distinguish the instantly claimed product from that of Shearer 2016.
Regarding claim 29, Shearer 2016 teaches the metal-organic framework of claim 28, as discussed above, wherein the tetravalent cation is Zr (Shearer 2016, Page S4, Paragraphs 1-3; Page 7190, Col. 1, Paragraph 1, zirconium(IV)).
Regarding claim 30, Shearer 2016 teaches the metal-organic framework of claim 28, as discussed above, wherein the terephthalate linker is 1,4-benzenedicarboxylate (BDC) (Shearer 2016, Fig. 2 showing BDC ligand).
Regarding claim 32, Shearer 2016 teaches the metal-organic framework of claim 28, as discussed above, comprising a plurality of zirconium cations and a plurality of BDC linkers (Shearer 2016, Page S4, Paragraphs 1-3; Page 7190, Col. 1, Paragraph 1, zirconium(IV); Fig. 2 showing BDC ligand; Fig. 1 showing that BDC functions as linker).
Regarding claim 33, Shearer 2016 teaches the metal organic framework of claim 28, as discussed above, wherein the metal organic framework comprises a plurality of zirconium cations (Shearer 2016, Page S4, Paragraphs 1-3; Page 7190, Col. 1, Paragraph 1, zirconium(IV)) and 0 wt. % of divalent cation (Shearer 2016, Page S4, Paragraph 1, no divalent cation is present), and wherein the zirconium-based metal-organic framework has a relative intensity of 0.454 (Shearer 2016, Page S68, Broad Peak of 50Benz) and a peak width ratio of less than 1 (Shearer 2016, Page S68, Fig. S14, peak at about 2θ=15 is narrower than the “Broad Peak” from about 2θ=2 to about 7, meaning that it has a peak width ratio of less than 1; see rejection of claim under 35 U.S.C. 112(b) above).
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 31 is rejected under 35 U.S.C. 103 as being unpatentable over Shearer 2016 ("Functionalizing the defects: Postsynthetic ligand exchange in the metal organic framework UiO-66", 2016) (see the attached copy including Supporting Information), as evidenced by Shearer 2014 (“Tuned to perfection: Ironing out the defects in metal-organic framework UiO-66”, 2014), as applied to claim 28 above, and further in view of Abdel-Mageed (“Highly active and stable single-atom Cu catalysts supported by a metal-organic framework”, 2019).
Regarding claim 31, Shearer 2016 teaches the metal-organic framework of claim 28, but does not teach that the metal-organic framework further comprises between about 3.0 wt. % and 10.0 wt. % divalent cation selected from Zn, Co, Sn, and/or Cu. However, Abdel-Mageed teaches modifying UiO-66 with about 3.0 wt. % divalent Cu, or Cu2+ (Abdel-Mageed, Page 5203, Col. 2, Paragraph 2, a Cu:Zr6 atomic ratio of 0.8, corresponding to 0.8 mol Cu per mol UiO-66, which has a molecular weight of 1664.06; Page 5206, Col. 1, Paragraph 1 - Col. 2, Paragraph 1 discuss the divalent nature of Cu in the material).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have modified the metal-organic framework of Shearer 2016 by incorporating about 3.0 wt % divalent Cu (Cu2+), as Abdel-Mageed teaches that incorporating this much Cu2+ into defective UiO-66 results in a highly active CO oxidation catalyst (Abdel-Mageed, Abstract, Conclusion). A person having ordinary skill in the art would have been motivated to realize this advantage in the metal-organic framework of Shearer 2016 with a reasonable expectation of success.
Allowable Subject Matter
Claims 34-35 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Shearer 2016 ("Functionalizing the defects: Postsynthetic ligand exchange in the metal organic framework UiO-66", 2016) (see the attached copy including Supporting Information), Shearer 2014 (“Tuned to perfection: Ironing out the defects in metal-organic framework UiO-66”, 2014), and Abdel-Mageed (“Highly active and stable single-atom Cu catalysts supported by a metal-organic framework”, 2019) are considered to be the closest prior art to the instant claims.
Regarding claim 34, Shearer 2016 teaches the metal-organic framework material of claim 28, as discussed above, and comprising a primitive cubic cell unit (as evidenced by Shearer 2014, Page 4069, Col. 1, Paragraph 4), but neither Shearer 2016 nor the other cited prior art references teach or suggest that the first five X-ray diffraction peaks have d spacings at 20.4130, 14.4691, 11.8446 and 10.2594 ű5%. Specifically, the first two of these values (20.4130 and 14.4691 Å) would occur in a region of the XRD pattern below 2θ = 7°, but the exact position of peaks in this area of Shearer 2016’s XRD pattern cannot be discerned (see “Broad Peak” region of XRD pattern of “50Benz” in Fig. S14 of Shearer 2016, reproduced below), despite the prior art teaching that there are indeed two peaks, corresponding to the (100) and (110) peaks of a primitive cell, in this region (Shearer 2014, Page 4069, Col. 1, Paragraph 4).
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Figure 1. Figure S14 of Shearer 2016 showing "Broad Peak" region in relevant 2θ region.
Because the exact positions of these peaks cannot be determined, and there is no reason in the prior art to modify Shearer 2016’s metal-organic framework to have peaks corresponding to d-spacings of 20.4130 and 14.4691 Å, the claim contains allowable subject matter.
Similarly, for claim 35, as the exact peak positions of the (100) and (110) cannot be determined from Shearer 2016’s XRD pattern, neither can the peaks be resolved from the available information in the prior art, and their respective peak width at half maximum ratios cannot be determined. Further, none of the cited prior art references teach or suggest modifying Shearer 2016’s metal-organic framework to produce (110) and (111) peaks with the claimed peak width at half maximum ratio.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
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