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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-16, drawn to a method, classified in G01N 33/182.
II. Claims 17-20, drawn to an electrochemical analyte sensor, classified in G01N 27/30.
III. Claims 21-22, drawn to a method of using the electrochemical analyte sensor, classified in G01N 27/49.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case, the apparatus as claimed can be used to practice another materially different process such as sensing cations.
Inventions I and III are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed can have a materially different design, mode of operation, function, or effect such as applying a constant potential instead of a varying potential. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions II and III are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the product as claimed can be used in a materially different process such as applying a constant potential to sense cations.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions require a different field of search (searching for different classes/subclasses or electronic resources, or employing different search strategies or search queries). Group I would require a search in at least CPC G01N 33/182, along with a unique text search. Group II would not be searched as above and would require a search in at least CPC G01N 27/30, along with a unique text search. Group III would not be searched as above and would require a search in at least CPC G01N 27/49, along with a unique text search.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Francisco Almeida on January 6, 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-16. Affirmation of this election must be made by applicant in replying to this Office action. Claims 17-22 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Information Disclosure Statement
The information disclosure statement filed September 4, 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Specifically, the copy provided for the Kahn NPL document is not legible.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 2 is objected to because of the following informalities: in line 2, “the presence” should read “a presence”. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: in line 2, “a second ion species” should read “a second anion species”. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: in line 2, “the MOF nanoparticles” should read “the plurality of crystalline MOF nanoparticles”. Appropriate correction is required.
Claim 16 is objected to because of the following informalities: in line 1, “the MOF nanoparticles” should read “the plurality of crystalline MOF nanoparticles”. Appropriate correction is required.
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 1-13 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Marshall et al., Size-Dependent Properties of Solution-Processable Conductive MOF Nanocrystals, Journal of the American Chemical Society, Vol. 144, Issue 13, pp. 5784-5794 (2022) (hereinafter “Marshall”) (provided in Applicant’s IDS filed on September 4, 2024) in view of Gandara et al., Porous, Conductive Metal-Triazolates and Their Structural Elucidation by the Charge-Flipping Method, Chem. Eur. J., Vol. 18, Issue 34, pp. 10595-10601 (2012) (hereinafter “Gandara”) (provided in Applicant’s IDS filed on September 4, 2024).
Regarding claim 1, Marshall teaches a method, comprising:
exposing an electrochemical anion sensor to a sample (exposing an MOF-based electrochemical device to a TBABF4/MeCN solvent to detect BF4- anions, Marshall, Figs. 5c & 6b, pg. 5789, left column, last paragraph, right column, last paragraph, pg. 5790, left column), wherein the electrochemical anion sensor comprises an electrode functionalized with a conductive porous film comprising a plurality of crystalline metal organic framework (MOF) nanoparticles (a glassy carbon electrode or a quartz crystal microbalance electrode is functionalized with a conductive porous film comprising a plurality of crystalline MOF nanoparticles which are Fe(TA)2 nanoparticles, Marshall, abstract, Figs. 1, 5c, & 6b, pg. 5789, left column, last paragraph, right column, last paragraph; TA = 1,2,3-triazolate, Marshall, pg. 5784, right column, last paragraph); and
applying a potential to the electrode (applying a potential to the glassy carbon electrode or quartz crystal microbalance electrode to generate cyclic voltammogram traces, Marshall, Figs. 5c & 6b, pg. 5789, left column, last paragraph, right column, last paragraph, pg. 5790, left column).
Marshall teaches that the 16 nm Fe(TA)2 nanoparticles have a small pore size (Marshall, pg. 5789, left column, last paragraph). Marshall is silent with respect to the value of the small pore size of the Fe(TA)2 nanoparticles, and therefore fails to teach a pore size ranging from greater than 4.5 Å to less than 10 Å.
Gandara teaches microcrystalline, porous, conductive metal-triazolates (MET) combining 1H-1,2,3-triazole and Fe ions (Gandara, abstract). Gandara teaches precise control of pore apertures to a fraction of an Angstrom in the range 4.5 to 6.1 Å (Gandara, abstract, pg. 10596, left column, first paragraph). Gandara teaches that MET-3 (Fe) has a pore diameter of 4.5 Å and exhibits significant electrical conductivity (Gandara, abstract, pg. 10596, left column, first paragraph, pg. 10598, left column, third paragraph, Table 1, Fig. 4).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the small pore size of the Fe(TA)2 nanoparticles of Marshall to be 4.5 Å as taught by Gandara in order to yield the predictable result of exhibiting significant electrical conductivity. Generally, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP § 2144.05(I).
Regarding claim 2, Modified Marshall teaches measuring a signal produced by one or more anions present in the sample to thereby detect the presence and/or identity of the one or more anions (measuring the voltammetric responses in the TBABF4 environment to monitor the BF4- anions, Marshall, Figs. 5c & 6b, pg. 5789, left column, last paragraph, right column, last paragraph, pg. 5790, left column).
Regarding claim 3, Modified Marshall teaches wherein the one or more anions independently have a diameter ranging from 1 Å to 10 Å (the BF4- anion was just below the pore size of the MOF which has a pore size of 4.5 Å, Marshall, pg. 5789, left column, last paragraph, Gandara, abstract, pg. 10596, left column, first paragraph, pg. 10598, left column, third paragraph, Table 1, see modification supra).
Regarding claim 4, Modified Marshall teaches wherein the one or more anions are independently selected from halide anions, perhalogenated anions, oxyanions, nitrile-containing anions, or any combination thereof (the BF4- anions which are perhalogenated anions, Marshall, pg. 5789, left column, last paragraph, right column, last paragraph).
Regarding claim 5, claim 4 recites “halide anions, perhalogenated anions, oxyanions, nitrile-containing anions, or any combination thereof,” and therefore, the limitation “wherein the one or more halide anions are selected from F-, Cl-, I-, Br-, or any combination thereof” of claim 5 is further limiting an optional component of claim 4 and is not further limiting the one or more anions when the one or more anions are perhalogenated anions.
Regarding claim 6, Modified Marshall teaches wherein the one or more perhalogenated anions are selected from BF4-, PF6-, OTf-, CF3SO3-, CF3SO2NH-, or any combination thereof (the BF4- anions, Marshall, pg. 5789, left column, last paragraph, right column, last paragraph).
Regarding claim 7, claim 4 recites “halide anions, perhalogenated anions, oxyanions, nitrile-containing anions, or any combination thereof,” and therefore, the limitation “wherein the one or more nitrile-containing anions are C2N3-” of claim 7 is further limiting an optional component of claim 4 and is not further limiting the one or more anions when the one or more anions are perhalogenated anions.
Regarding claims 8-9, claim 4 recites “halide anions, perhalogenated anions, oxyanions, nitrile-containing anions, or any combination thereof,” and therefore, the limitations “wherein the one or more oxyanions comprise a halogen, sulfate, phosphate, or nitrate” of claim 8 and “wherein the one or more oxyanions are ClO4-” of claim 9 are further limiting an optional component of claim 4 and are not further limiting the one or more anions when the one or more anions are perhalogenated anions.
Regarding claim 10, Modified Marshall teaches wherein the potential is a varying potential and the signal is detected as an intercalation potential (varying potential of the cyclic voltammograms and measuring ion intercalation processes, most notably a sharp, reversible feature at 1.2 V which strongly suggests that this redox event corresponds to ion-coupled charge transport to interior Fe sites enabled by the smaller size of the BF4- anion, Marshall, Figs. 5c & 6b, pg. 5789, left column, last paragraph, right column, last paragraph, pg. 5790, left column, first paragraph, right column, first paragraph).
Regarding claim 11, Modified Marshall teaches wherein the potential is a fixed potential and the signal is detected as a change in current (a sharp increase in current at 1.2 V, Marshall, Fig. 6b, pg. 5790, left column, first paragraph).
Regarding claim 12, Modified Marshall teaches wherein a detected concentration of the one or more anions in the sample ranges from 1 nanomolar to 1 molar (0.1 M TBABF4/MeCN, Marshall, Fig. 5c, pg. 5789, left column, last paragraph).
Regarding claim 13, Modified Marshall teaches wherein the one or more anions comprise a first anion species (the BF4- anions, Marshall, pg. 5789, left column, last paragraph, right column, last paragraph). Modified Marshall teaches a separate experiment using a TBAPF6 environment for monitoring PF6- anions (Marshall, Figs. 5b & 6a, pg. 5789, left column, last paragraph, right column, last paragraph, pg. 5790, left column). Modified Marshall is silent with respect to monitoring the BF4- anions and the PF6- anions in a mixture during the same experiment, and therefore fails to teach wherein the one or more anions comprise a second ion species, and wherein the first anion species is different from the second anion species.
However, Marshall teaches that the BF4- anions and the PF6- anions have different voltammetric responses with respect to the porous MOF nanoparticles (Marshall, Figs. 5b-5c & 6a-6b, pg. 5789, left column, last paragraph, right column, last paragraph, pg. 5790, left column).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the environment of Modified Marshall to include both BF4- anions and the PF6- anions because they have different voltammetric responses with respect to the porous MOF nanoparticles and thus can be monitored in the same environment. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP § 2143(I)(A).
Regarding claim 15, Modified Marshall teaches applying a negative voltage (a negative voltage is applied in the CVs, Marshall, Figs. 5c & 6b).
The limitation “to de-intercalate the one or more anions from pores of the MOF nanoparticles” is an intended result of a positively recited step, and does not further limit the method or steps. In method claims, the intended result is not given patentable weight when it simply expresses the intended result of a process step positively recited. MPEP 2111.04(I). Furthermore, Modified Marshall teaches the claimed structure, materials, and steps of the claims (see rejections supra), so Modified Marshall is expected to predictably yield the same de-intercalation result as claimed when a negative voltage is applied.
Regarding claim 16, Modified Marshall teaches wherein the MOF nanoparticles have a polydispersity index value ranging from a value greater than 0 to a value less than 0.4 (the Fe(TA)2 nanoparticles have a dispersity value between 0.09 and 0.18, Marshall, pg. 5786, left column, last paragraph).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Marshall in view of Gandara as applied to claim 13 above, and further in view of Mandal et al., Metal-Organic Frameworks (MOFs) as Functional Supramolecular Architectures for Anion Recognition and Sensing, The Chemical Record, Vol. 18, pp. 154-164 (2018) (hereinafter “Mandal”).
Regarding claim 14, Modified Marshall teaches the first anion species and the second anion species (the BF4- anions and the PF6- anions, Marshall, pg. 5789, left column, last paragraph, right column, last paragraph, see modification supra). Modified Marshall fails to teach wherein the one or more anions further comprise a third anion species, and wherein the third anion species is different from the first anion species and the second anion species.
Mandal teaches that metal-organic frameworks (MOFs) can act as potential receptors toward different target components along with ionic species for selective and sensitive anion sensing (Mandal, abstract). Mandal teaches that MOFs may selectively capture oxo-anions in the presence of other competing anions such as ClO4-, NO3-, BF4-, CF3SO3-, etc. (Mandal, pg. 159, right column, last paragraph, pg. 160, left column, first paragraph). Mandal teaches that BF4- anions can be exchanged with ClO4- and NO3- anions in the void-space of the MOFs (Mandal, pg. 161, left column, second paragraph).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the environment of Modified Marshall to further include additional anions such as ClO4- or NO3- as taught by Mandal because they can be exchanged with BF4- in the void-space of the MOFs for monitoring of the anions. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP § 2143(I)(A).
Conclusion
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/V.T./ Examiner, Art Unit 1794
/JAMES LIN/ Supervisory Patent Examiner, Art Unit 1794