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 Application
Claims 1-17 are pending.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-16, directed to a MOF, and the species of Zr6(BDC)3(fum)3 in the reply filed on 08/28/2026 is acknowledged. The election was made without traverse.
The requirement is therefore made FINAL.
Since the elected species reads on claims 1-12 and 14-16, these claims are under current examination and are examined to the extent these claims read on the elected species. Claims 13 and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Claims 1-12 and 14-16 are under current examination.
Claim Rejections - 35 USC § 112(a) -Written Description
The following is a quotation of the first paragraph of U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12 and 14-16 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The instant claims are directed to a MOF genus described in functional definition in claims 1-12 and 14-16, such as:
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”. Said genus of compounds is not adequately defined in the instant specification. The MPEP states that for a generic claim, the genus can be adequately described if the disclosure presents a sufficient number of representative species in examples that encompass the genus. (MPEP § 2163). A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014) (Claims directed to a functionally defined genus of antibodies were not supported by a disclosure that "only describe[d] one type of structurally similar antibodies" that "are not representative of the full variety or scope of the genus."). An adequate written description of a chemical invention also requires a precise definition, such as by structure, formula, chemical name, or physical properties, and not merely a wish or plan for obtaining the chemical invention claimed. See, e.g., Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 927, 69 USPQ2d 1886, 1894-95 (Fed. Cir. 2004) (The patent at issue claimed a method of selectively inhibiting PGHS-2 activity by administering a non-steroidal compound that selectively inhibits activity of the PGHS-2 gene product, however the patent did not disclose any compounds that can be used in the claimed methods. While there was a description of assays for screening compounds to identify those that inhibit the expression or activity of the PGHS-2 gene product, there was no disclosure of which peptides, polynucleotides, and small organic molecules selectively inhibit PGHS-2. The court held that "[w]ithout such disclosure, the claimed methods cannot be said to have been described."). If the genus has a substantial variance, the disclosure must describe a sufficient variety of species to reflect the variation within that genus. Furthermore, for a broad generic claim, the specification must provide adequate written description to identify the genus of the claim. In Regents of the University of California v. Eli Lilly & Co. the court stated:
"A written description of an invention involving a chemical genus, like a description of a chemical species, 'requires a precise definition, such as by structure, formula, [or] chemical name,' of the claimed subject matter sufficient to distinguish it from other materials." Fiers, 984 F.2d at 1171, 25 USPQ2d 1601; In re Smythe, 480 F.2d 1376, 1383, 178 USPQ 279, 284985 (CCPA 1973) ("In other cases, particularly but not necessarily, chemical cases, where there is unpredictability in performance of certain species or subcombinations other than those specifically enumerated, one skilled in the art may be found not to have been placed in possession of a genus ...") Regents of the University of California v. Eli Lilly & Co., 43 USPQ2d 1398.
Additionally, in Carnegie Mellon University v. Hoffman-La Roche Inc., Nos. 07-1266, -1267 (Fed. Cir. Sept. 8, 2008), the Federal Circuit affirmed that a claim to a genus described in functional terms was not supported by the specification’s disclosure of species that were not representative of the entire genus. The Guidelines for Examination of Patent Applications under the 35 USC § 112, first paragraph, “Written Description” Requirement”, published at Federal Register, Vol. 66, No. 4, pp. 1099-1111 outline the method of analysis of claims to determine whether adequate written description is present. The first step is to determine what the claim as a whole covers, i.e., discussion of the full scope of the claim. Second, the application should be fully reviewed to understand how applicant provides support for the claimed invention including each element and/or step, i.e., compare the scope of the claim with the scope of the description. Third, determine whether the applicant was in possession of the claimed invention as a whole at the time of filing. Each of these factors has been considered, with the most relevant factors discussed below. For each claim drawn to a genus, each of these factors is to be considered to determine whether there is disclosure of a representative number of species that would lead one skilled in the art to conclude that applicant was in possession of the claimed invention. Where skill and knowledge in the art is high, adequate written description would require fewer species to be disclosed than in an art where little is known; further, more species would need to be disclosed to provide adequate written description for a highly variable genus.
With respect to the scope of the claims, the full scope includes a MOF genus described in functional definition in claims 1-12 and 14-16, such as:
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”. For example, the instant claims do not include structures of such MOF that satisfies the functional definition of the genus. "The description requirement of the patent statute requires a description of an invention, not an indication of a result that one might achieve if one made that invention."). Problems satisfying the written description requirement for original claims often occur when claim language is generic or functional, or both. Ariad, 593 F.3d at 1349, 94 USPQ2d at 1171 ("The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus."
Comparison of the scope of the claims and the scope of the specification reveals that the scope of the claims is broader than that supported by the specification. There is guidance in the specification regarding only two MOF of similar nature with same central metal atom and same linkers BDC and fumaric acid, however, the instant claims encompass millions of compounds. There are no drawings, structural or empirical formulas that sufficiently define the genus of compounds that fulfill the instant function, to allow one to determine the scope of possible compounds.
Functional language at the point of novelty, as herein employed by applicants, is admonished in University of California v. Eli Lilly and Co. 43 USPQ2d 1398 (CAFC, 1997) at 1406: stating this usage does “little more than outline goal appellants hope the recited invention achieves and the problems the invention will hopefully ameliorate”. The CAFC further clearly states that “[A] written description of an invention involving a chemical genus, like a description of a chemical species, requires a precise definition, such as by structure, formula, [or] chemical name, of the claimed subject matter sufficient to distinguish it from other materials” at 1405 (emphasis added), and that “It does not define any structural features commonly possessed by members of the genus that distinguish from others. One skilled in the art therefore cannot, as one can do with a fully described genus, visualize or recognize the identity of the members of the genus. A definition by function, as we have previously indicated, does not suffice to define the genus…” at 1406 (emphases added).
Having analyzed the claims with regard to the written description guidelines, the specification does not disclose a representative number of compounds or relate a MOF genus described in functional definition in claims 1-12 and 14-16, such as:
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” to a structure sufficient to describe said compounds. Thus, one of ordinary skill in the art would be led to conclude that applicants were not in possession of the invention commensurate with the scope of the claims, at the time the application was filed.
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 1-12 and 14-16 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 1-12 and 14-16 are indefinite:
Claims 1-12 and 14-16 define MOF in terms of functional definition, using ambiguous language and/or relative language such as first linker, second linker, different window types, heterolinkers, high connectivity clusters, strong metal oxygen bonds etc. Thus, structure of such MOF is unclear to the examiner.
Claim 15 is also indefinite as the claim recites broad and narrower limitations within the same claim. For example, “plurality of heterolinkers, for example each ---type of network. Thus, making scope of claim unclear.
Appropriate correction/explanation required.
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 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 1-12 and 14-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yuan (JACS, 2020, 142, 4732-4738; as provided by the applicant on IDS dated 01/15/2024).
Yuan discloses method of making MOF with Zr linked with ditopic linkers BDC (ligand B, LB) and fumaric acid (ligand A, LA) (Zr BDC fum) (same linkers and metal as in the elected species) of different shapes, lengths and side groups and controlling lattice dimensions, pore sizes etc., by varying molar ratios of linkers (entire article).
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With regards to limitations of claims “3D structure, window types, metal nodes, cage type, topology, coordination numbers, high connectivity clusters, strong metal oxygen bonds”-since the cited prior art discloses same MOF as in the instant claims with same metal and same linkers and preparing them with different ratios of LA and LB as in the instant claims, the MOF of the cited prior is expected to have same 3D structure, window types, metal nodes, cage type, topology, coordination numbers, high connectivity clusters, strong metal oxygen bonds” whether or not recognized by the cited prior art.
Since the cited prior art reads on all the limitations of the instant claims 1-12 and 14-16, these claims are anticipated.
Claims 1-12 and 14-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chainok (CrystEngComm, 2018, 20, 7446; as provided by the applicant on IDS dated 01/15/2024).
Chainok discloses MOF with Ln with examples of Sm, Er linked with ditopic linkers BDC and fumaric acid (Ln (Sm, Eu, Tb or Er) (BDC) (fum)0.5 (same linkers in ratio of 2:1) (entire article).
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With regards to limitations of claims “3D structure, window types, metal nodes, cage type, topology, coordination numbers, high connectivity clusters, strong metal oxygen bonds”-since the cited prior art discloses same MOF as in the instant claims with same metal and same linkers as in the instant claims, the MOF of the cited prior is expected to have same 3D structure, window types, metal nodes, cage type, topology, coordination numbers, high connectivity clusters, strong metal oxygen bonds” whether or not recognized by the cited prior art.
Since the cited prior art reads on all the limitations of the instant claims 1-12 and 14-16, these claims are anticipated.
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 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 of this title, 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-12, 14-16 and elected species are rejected under 35 U.S.C. 103 as being unpatentable over Yuan (JACS, 2020, 142, 4732-4738; as provided by the applicant on IDS dated 01/15/2024).
Determining the scope and contents of the prior art
Yuan discloses method of making MOF with Zr linked with ditopic linkers BDC (ligand B, LB) and fumaric acid (ligand A, LA) (Zr BDC fum) (same linkers and metal as in the elected species) of different shapes, lengths and side groups and controlling lattice dimensions, pore sizes etc., by varying molar ratios of linkers (entire article).
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With regards to limitations of claims “3D structure, window types, metal nodes, cage type, topology, coordination numbers, high connectivity clusters, strong metal oxygen bonds”-since the cited prior art discloses same MOF as in the instant claims with same metal and same linkers and preparing them with different ratios of LA and LB as in the instant claims, the MOF of the cited prior is expected to have same 3D structure, window types, metal nodes, cage type, topology, coordination numbers, high connectivity clusters, strong metal oxygen bonds” whether or not recognized by the cited prior art.
Ascertaining the differences between the prior art and the claims at issue
Yuan discloses method of making MOF with Zr linked with ditopic linkers BDC (ligand B, LB) and fumaric acid (ligand A, LA) (Zr BDC fum) of different shapes, lengths and side groups and controlling lattice dimensions, pore sizes etc., by varying molar ratios of linkers, but fails to teach the elected species specific compound Zr6 (BDC)3(fum)3.
Resolving the level of ordinary skill in the pertinent art
With regards to the above difference, Yuan discloses method of making MOF with Zr linked with ditopic linkers BDC (ligand B, LB) and fumaric acid (ligand A, LA) (Zr BDC fum) of different shapes, lengths and side groups and controlling lattice dimensions, pore sizes etc., by varying molar ratios of linkers. Thus, with the guidance provided by the cited prior art, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that linkers LA and LB can be used in different molar ratio to make MOF with both LA and LB for desired pore size, lattice size etc., and with varying numbers of LA and LB in the MOF, such as the elected species.
Based on the above established facts, it appears that the teachings of above cited prior art read applicants’ MOF.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have modified the elements as claimed by known methods with no change in their respective functions, and the modification would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Yuan discloses method of making MOF with Zr linked with ditopic linkers BDC (ligand B, LB) and fumaric acid (ligand A, LA) (Zr BDC fum) of different shapes, lengths and side groups and controlling lattice dimensions, pore sizes etc., by varying molar ratios of linkers.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is a reasonable expectation of success that linkers LA and LB can be used in different molar ratio to make MOF with both LA and LB for desired pore size, lattice size etc., and with varying numbers of LA and LB in the MOF, such as the elected species and can be made by teachings of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking advantage of the teaching of the above cited references and making the instantly claimed MOF with a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Milligan Adam can be reached at 571-2707674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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