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 amendment filed on 08/25/2026 has been entered. Claims 21, 27-29 and 35 have been amended and claim 26 has been canceled. Thus claims 21-25 and 27-40 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.
Withdrawn Rejections
The 112(b) rejection of claims 29 and 35 has been withdrawn in view of the amendment.
Claim 21 has been amended by narrowing the solvent to comprising at least one of a monocarboxylic acid and/or a mineral acid. 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); cited in PTO-892 06/11/2026) Lieb teaches a method for synthesizing a vanadium metal organic framework in which water is used as a solvent. Thus the 103 rejection over Lieb has been withdrawn.
The terminal disclaimer filed on 08/25/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Application number 18413176 has been reviewed and is accepted. The terminal disclaimer has been recorded and the nonstatutory double patenting rejection has been withdrawn.
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 21-25, 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 21-25, 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 50 wt% 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.
Response to Arguments
The Applicant argues that the Office Action’s “assertion that [2.98] wt % of Zhou is close to 50 wt%” is unsupported by the factual basis stated in the MPEP. The Applicant indicates that the cases indicated in MPEP § 2144.05 provide “close” disclosure that as differing by a factor of 2, whereas the 2.98 wt% of Zhou differs from the claimed 50 wt% or more by more than an order of magnitude. The Applicant thus argues that there is no resemblance between any of the cases in the MPEP and the instant situation.
The examiner disagrees. The obviousness of the claimed invention is based on the claimed concentration value being merely close to that of Zhou. Even though the concentration difference between the claimed invention and Zhou is higher than the factual basis indicated in the MPEP, there is nothing in the MPEP that limits the difference of values. In fact, MPEP § 2144.05 discusses the importance of criticality or achieving unexpected results of the claimed ranges. The Office Action discussed that such difference does not result to unexpected results in the claimed invention. The examiner maintains 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, the use of 50 wt% of the plurality of solid reactants as claimed does not appear to achieve unexpected results over that of Zhou.
The Applicant failed to rebut the above prima facie case of obviousness by showing the criticality of the range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." (see MPEP § 2144.05).
The Applicant further argues that the claimed invention solves a long felt need, in which the concentration of the solid reactants are laboratory scale synthesis and that the dilute nature in Zhou, it is difficult to use the process of Zhou for commercial production. The Applicant thus discusses that increasing the solid content to the claimed one, the synthesis of commercial scale quantities of MOFs becomes more feasible.
The examiner disagrees. MPEP § 716.01(c) states
Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor.
Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor.
Thus, the arguments presented by the Applicant of the long felt need does not replace evidence where evidence is necessary. (MPEP § 716.01(c)).
In view of the foregoing, the instantly claimed method of making a metal-organic framework remains obvious over the teachings of Zhou.
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 21-25, 27-30 and 33-36 are rejected and no claims are allowed.
THIS ACTION IS MADE FINAL. 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 MEDHANIT W BAHTA whose telephone number is (571)270-7658. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MEDHANIT W BAHTA/ Primary Examiner, Art Unit 1692
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