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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show any information regarding the steps of the disclosed invention as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). 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.
Information Disclosure Statement
The information disclosure statement filed January 02, 2024 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because the statement discloses U.S. Patent Document Boll which has an invalid document number. Furthermore, it appears that this document is a misnumbering of the U.S. Patent document disclosed in Paragraph 0006 of the specification of the present application as originally filed. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Claim Rejections - 35 USC § 102
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 1 and 4-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Buekenhoudt et al (U.S. Patent # 8,980,096).
In the case of claims 1 and 5, Buekenhoudt teaches a method for producing an organic functionalized solid inorganic substrate/inorganic matrix comprised of a metal hydroxide and/or metal oxide (Abstract and Column 1 Lines 15-27). The method of Buekenhoudt comprised a drying step in the form of steps a) and b) wherein the substrate/inorganic matrix was dried and had protons removed from the surface of the substrate followed by step d) wherein the surface of the substrate was contacted with an organometallic reagent (Column 3 Line 55 through Column 4 Line 6). Buekenhoudt teaches that the substrate/inorganic matrix comprised a metal element M1 and that contacting the substrate with the organometallic reagent resulted in the organic functional moiety attaching to the element M1 by means of a direct M-C bond not including an oxygen bridge (Column 4 Lines 7-19, Column 6 Lines 20-31 and Column 25 Claim 1). Furthermore, Buekenhoudt teaches that the drying comprised flowing an inter gas in the form of argon or nitrogen or dry air over the substrate surface (Column 10 Lines 54-56 and Column 17 Lines 21-50).
As for claim 4, as was discussed previously the inert gas of Buekenhoudt was nitrogen.
As for claims 6-9, Buekenhoudt that removing of the protons form the substrate comprised contacting the substrate with a reagent in the form of an alcohol wherein the inert gas was bubbled through a liquid bath of the reagent in order to contact the reagent/alcohol onto the substrate surface (Column 10 Line 49 through Column 11 Line 32).
As for claims 10 and 17, Buekenhoudt does not specifically teach having removed protons from the substrate surface by contacting the substrate with the organometallic reagent. However, Buekenhoudt teaches that the organometallic reagent used in the taught method was a Grignard reagent (Column 12 Lines 37-45) and according to Paragraph 0083 of the specification of the present application as originally filed Grignard reagents are capable of removing any protons from the substrate surface. Therefore, it is the examiners position that the method of Buekenhoudt would have removed protons from the substrate surface by contacting the substrate with the organometallic reagent because Buekenhoudt taught using Grignard reagents as organometallic reagents.
As for claim 11, Buekenhoudt teach that the organometallic reagent had a formula of R-M, R-M-X or R-M-R wherein R was an organic functional group, M was either Li or Mg and X was a halogen (Column 12 Lines 26-45).
As for claim 12, Buekenhoudt teaches that M1 of the substrate was a Group IVb transition metal (Column 4 Lines 20-24).
As for claim 13, Buekenhoudt teaches that after functionalizing the substrate in step d) the substrate was washed (Column 13 Lines 16-25).
As for claims 14-16, Buekenhoudt teaches that the organic functionalized substrate/matrix was in the form of a membrane used for performing filtration (Column 14 Line 62 through Column 13 Line 16 and Column 17 Lines 51-67).
As for claim 18, as was discussed previously, the inert gas of Buekenhoudt was argon.
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.
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Buekenhoudt et al.
The teachings of Buekenhoudt as it applies to claim 1 have been discussed previously and are incorporated herein.
In the case of claims 2 and 3, Buekenhoudt does not specifically teach that the drying was carried out at a pressure of at least atmospheric pressure and that the contacting with the organometallic reagent was carrier out at a temperature of at least 90 ℃. However, Buekenhoudt teaches that the contacting was conducted at elevated temperatures (Column 12 Lines 53-60) and that the method was conducted within a reaction vessel which had conditions in order to maintain dryness in the vessel (Column 17 Lines 21-50). Furthermore, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP section 2144.05.II.A.
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined an optimal pressure during drying and an optimal temperature during contacting for the method Buekenhoudt in order to maintain dry condition within the reaction vessel.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ormerod (U.S. Patent Publication No. 2020/0024545) teaches a method for modifying an inorganic substrate wherein an organic group was directly bonded to a metal element of the substrate.
Conclusion
Claims 1 through 18 have been rejected. No claims were allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at (571)272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712
Prosecution Insights