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 .
Status of the Claims
The preliminary amendment filed on 12/19/2023 has been entered. Claims 1-20 have been canceled and claims 21-40 are newly added. As such, claims 21-40 are currently pending and are under examination.
Claim Objections
Claims 31-32 and 37-40 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.
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 29 and 35 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 29, the parenthetical limitation “(mol ratio)” is interpreted as "such as mol ratio" and renders the claim indefinite because it is unclear whether the limitation “mol ratio” is part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 35, The limitation “functionalized derivative thereof” renders the claim vague and indefinite because the term does not limit the claim to the recited species and thus is unclear as to how much variation of the recited species are tolerated by the use of term “functionalized derivative thereof”.
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.
Claims 21, 23, 30, 33 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Lieb (Lieb, A. et al. “MIL-100(V) – A mesoporous vanadium metal organic framework with accessible metal sites” Microporous and Mesoporous Materials 157 (2012) 18–23)).
Regarding claim 21, Lieb teaches a method for synthesizing a vanadium metal organic framework by combining 588 mg of triethyl-1,3,5-benzenetricarboxylate as a pre-ligand with 628 mg of VCl3 as a metal source comprising a metal component to provide a plurality of solid reactants; adding 5 mL (5000 mg) of water as a solvent to the plurality of solid reactants to form a reaction mixture, wherein about 19.6 wt % of the reaction mixture are the plurality of solid reactants; heating the reaction mixture wherein the pre-ligand is converted to a ligand in the reaction mixture and the ligand reacts with the metal component; and cooling the reaction mixture to produce an insoluble portion and a soluble portion, wherein the reaction mixture does not comprise dimethylformamide and the insoluble portion comprises a plurality of the metal-organic frameworks, each metal-organic framework comprising the ligand and the metal component (Experimental, sect. 2.1).
The claimed concentration of at least 50 wt% of the plurality of solid reactants in the reaction mixture are merely close to about 19.6 wt % of Lieb. In view of MPEP §2144.05, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, absent any showing of unexpected results or criticality.
Regarding claim 23, Lieb’s triethyl-1,3,5-benzenetricarboxylate and the claimed trimethyl-1,3,5-benzenetricarboxylate are homologs, i.e. (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) and thus are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. See MPEP § 2144.09.
Regarding claim 30, the amount of water added to the reaction mixture is in 5000 mg relative to 1216 mg of solid reactants, i.e. about 4 weight equivalents relative to solid reactants. Based on the above rationale, the claimed ratio is deemed obvious for being merely close to that of Lieb.
Regarding claim 33, Lieb teaches that the reaction is performed at a temperature of 220 °C.
Regarding claim 36, Lieb teaches the process further comprising separating the insoluble portion from the soluble portion by filtration followed by drying at 373 K (100 °C) under air.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a method of making a metal-organic framework comprising: combining a pre-ligand with a metal source comprising a metal component to provide a plurality of solid reactants; adding a solvent to the plurality of solid reactants to form a reaction mixture, wherein at least 50 wt % of the reaction mixture are the plurality of solid reactants; heating the reaction mixture wherein the pre-ligand is converted to a ligand in the reaction mixture and the ligand reacts with the metal component; and cooling the reaction mixture to produce an insoluble portion and a soluble portion, wherein the reaction mixture does not comprise dimethylformamide and the insoluble portion comprises a plurality of the metal-organic frameworks, each metal-organic framework comprising the ligand and the metal component in view of the teachings of Lieb.
Claims 21-27, 29-30, and 33-36 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou (Zhou, L. et al. “Direct synthesis of robust hcp UiO-66(Zr) MOF using poly(ethylene terephthalate) waste as ligand source” Macroporous and Mesoporous Materials, vol. 290, Aug. 2019, pp. 1-8; cited in IDS 10/23/2025).
Regarding claims 21-27, 29-30 and 34-35, Zhou teaches a method for synthesizing a Zr metal organic framework, UiO-66(Zr), by combining 75 mg of PET as a pre-ligand with 105 mg of ZrCl4 as a metal source comprising a metal component to provide a plurality of solid reactants; adding 3 mL of formic acid (3660 mg) and 3 mL acetone (2373 mg) as solvents to the plurality of solid reactants to form a reaction mixture, wherein about 2.98 wt % of the reaction mixture are the plurality of solid reactants; heating the reaction mixture wherein the pre-ligand is converted to a ligand in the reaction mixture and the ligand reacts with the metal component; and cooling the reaction mixture to produce an insoluble portion and a soluble portion, wherein the reaction mixture does not comprise dimethylformamide and the insoluble portion comprises a plurality of the metal-organic frameworks, each metal-organic framework comprising the ligand and the metal component (Experimental, sect. 2.1).
The claimed concentration of at least 50 wt% of the plurality of solid reactants in the reaction mixture are merely close to about 2.98 wt % of Zhou. In view of MPEP §2144.05, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, absent any showing of unexpected results or criticality. In this instance, the instant specification describes in [0056] Under reaction conditions, the pre-ligand converts to a ligand (e.g., fumaric acid or terephthalic acid or a derivative thereof) and reacts with the metal component to form a metal- organic framework. The same conversion of PET (pre-ligand) to terephthalic acid is observed in Zhou to obtain the final metal organic framework. As such, in the absence of evidence of criticality, the use of a lower weight percent of the plurality of solid reactants in the reaction mixture as claimed will not support the patentability. The same rationale applies for claims 29-30.
Regarding claim 33, Zhou teaches that the reaction is performed at a temperature of 160 °C.
Regarding claim 36, Zhou teaches the process further comprising separating the insoluble portion (precipitates) from the soluble portion by centrifugation, washed and dried at room temperature in air.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a method of making a metal-organic framework comprising: combining a pre-ligand with a metal source comprising a metal component to provide a plurality of solid reactants; adding a solvent to the plurality of solid reactants to form a reaction mixture, wherein at least 50 wt % of the reaction mixture are the plurality of solid reactants; heating the reaction mixture wherein the pre-ligand is converted to a ligand in the reaction mixture and the ligand reacts with the metal component; and cooling the reaction mixture to produce an insoluble portion and a soluble portion, wherein the reaction mixture does not comprise dimethylformamide and the insoluble portion comprises a plurality of the metal-organic frameworks, each metal-organic framework comprising the ligand and the metal component in view of the teachings of Zhou.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-30 and 33-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 18/413,176. Although the claims at issue are not identical, they are not patentably distinct from each other because they are drawn to a method of making a metal of making a metal-organic framework.
Copending claim 1 fails to recite that the reaction mixture does not comprise dimethylformamide as instantly claimed, however, copending claim 8 cures the deficiency by reciting “wherein the reaction mixture does not comprise dimethylformamide”. Thus, a skilled artisan has a reasonable expectation of success in arriving at the instantly claimed method by combining the method of copending claims 1 and 8.
Furthermore, the method of the instant claim is generic to copending claim 9 because copending claim 9 recites species of metal source “selected from the group consisting of metal hydroxides, metal acetates, metal hydroxyacetates, metal carbonates, metal hydroxycarbonates, and mixtures thereof”, and a narrower concentration of “between 15 wt.% and 50 wt.% of the reaction mixture is the plurality of reactants”. As such, the entire scope of '504 claims falls within the scope of the instant claims. In accordance to MPEP § 804, the claim under examination is not patentably distinct from the reference claim(s) if the claim under examination is anticipated by the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 1052, 29 USPQ2d 2010, 2015-16 (Fed. Cir. 1993). Thus, the instant claims are anticipated by copending claims 9-21.
Allowable Subject Matter
The subject matter of claims 31-32 and 37-40 is free of prior art. The closest prior art references, Lieb (Lieb, A. et al. “MIL-100(V) – A mesoporous vanadium metal organic framework with accessible metal sites” Microporous and Mesoporous Materials 157 (2012) 18–23)) and Zhou (Zhou, L. et al. “Direct synthesis of robust hcp UiO-66(Zr) MOF using poly(ethylene terephthalate) waste as ligand source” Macroporous and Mesoporous Materials, vol. 290, Aug. 2019, pp. 1-8; cited in IDS 10/23/2025), and their teachings have been set forth above. The references further teach the crystal forms of the MOFs, but fail to teach or suggest adding a crystallization aid to the reaction mixture with the solvent, wherein the crystallization aid is a divalent metal. Hence, claims 31-32 and 37-40 are deemed novel and unobvious over the closest prior art references.
Conclusion
Claims 21-30 and 33-36 are rejected and no claims are allowed.
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/MEDHANIT W BAHTA/ Primary Examiner, Art Unit 1692
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