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
Claims 1, 3, 6 – 11, 14 – 16 and 18 – 20 are pending and rejected.
Election/Restriction
Applicant’s election of species without traverse of the hydrophobic metal organic framework of Embodiment 1 in the reply filed on July 17, 2026 is acknowledged. Embodiment 1 reads on the hydrophobic metal organic framework material in claim 1 as presented below:
One metal (aluminum) ion in aluminum chloride hexahydrate (AlCl3 • 6 H2O),
A plurality of multidentates, wherein the multidentates comprise azole groups (3,5-pyrazoledicarboxylic acid), and
A plurality of hydrophobic (silane) groups, wherein the hydrophobic groups comprise siloxane.
Examination: Applicant’s elected species of Embodiment 1 is not allowable over the prior art. However, in the interest of compact prosecution, the search has been further extended to include the scope, wherein the multidentates comprise 2-aminoterephthalic acid. Subject matter not embraced by the elected embodiment or the scope search is therefore withdrawn from further consideration.
Priority
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Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on May 23, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 1, 6 and 14 – 15 are objected to because of the following informalities:
Claim 1, lines 6 – 8 of the claim: The limitation “… the multidentates comprise pyridine groups, nitrile groups, azole groups or combinations thereof” is grammatically incorrect because it does not recite proper language for the groups of alternatives. In order to overcome the objection, Applicant may amend the limitation as follows: “… the multidentates comprise pyridine groups, nitrile groups, or azole groups, or combinations thereof”. Emphasis added.
Claim 6, lines 2 – 5 of the claim: The limitation “… the multidenates comprise 3,5-pyrazoledicarboxylic acid, 2,5-furandicarboxylic acid, 2-aminoterephthalic acid or combinations thereof” is grammatically incorrect because it does not recite proper language for the groups of alternatives. In order to overcome the objection, Applicant may amend the limitation as follows: “… the multidentates comprise 3,5-pyrazoledicarboxylic acid, 2,5-furandicarboxylic acid, or 2-aminoterephthalic acid, or combinations thereof”. Emphasis added.
Claim 14, lines 2 – 5 of the claim: The limitation “… the multidentates comprise pyridine groups, nitrile groups, azole groups or combinations thereof” is grammatically incorrect because it does not recite proper language for the groups of alternatives. In order to overcome the objection, Applicant may amend the limitation as follows: “… the multidentates comprise pyridine groups, nitrile groups, or azole groups, or combinations thereof”. Emphasis added.
Claim 15, page 6 line 17 – page 7 line 3: The limitation “… the multidenates comprise 3,5-pyrazoledicarboxylic acid, 2,5-furandicarboxylic acid, 2-aminoterephthalic acid or combinations thereof” is grammatically incorrect because it does not recite proper language for the groups of alternatives. In order to overcome the objection, Applicant may amend the limitation as follows: “… the multidentates comprise 3,5-pyrazoledicarboxylic acid, 2,5-furandicarboxylic acid, or 2-aminoterephthalic acid, or combinations thereof”. Emphasis added.
Appropriate correction is required.
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.
Claim 6 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, regards as the invention.
Claim 1 recites the limitation “… the multidentates comprise pyridine groups, nitrile groups, azole groups or combinations thereof”. Emphasis added. Dependent claim 6 is directed to the hydrophobic metal organic framework material of claim 1, wherein the multidentates comprise 3,5-pyrazoledicarboxylic acid, 2,5-furandicarboxylic acid, 2-aminoterephthalic acid or combinations thereof”. Emphasis added. The term “comprise” is open-ended and it is unclear whether the multidentates according to claim 6 further comprises 3,5-pyrazoledicarboxylic acid, 2,5-furandicarboxylic acid, 2-aminoterephthalic acid in addition to the multidentates claimed in claim 1 (emphasis added), or if 3,5-pyrazoledicarboxylic acid, 2,5-furandicarboxylic acid, and 2-aminoterephthalic acid are narrower species of the same multidentates in claim 1. Thus, the metes and bounds of the claims are sufficiently defined such that the scope of the multidentates can be ascertained.
For examination purposes, the scope is interpreted as 3,5-pyrazoledicarboxylic acid, 2,5-furandicarboxylic acid, and 2-aminoterephthalic acid are narrower species encompassed within the genus multidentates in claim 1. In order to overcome the rejection, Applicant may amend claim 6 as follows: “… the multidentates is selected from 3,5-pyrazoledicarboxylic acid, 2,5-furandicarboxylic acid, and 2-aminoterephthalic acid, or combinations thereof”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Based on the claim interpretation of claim 6 above (see, 112(b) rejection in point (8) above), 3,5-pyrazoledicarboxylic acid, 2,5-furandicarboxylic acid, and 2-aminoterephthalic acid are interpreted as narrower species encompassed within the genus multidentates in claim 1. However, it is noted that the species of “2,5-furandicarboxylic acid” and “2-aminoterephthalic acid” do not contain a pyridine group, nitrile group or azole group as claimed in claim 1. Thus, the species of 3,5-pyrazoledicarboxylic acid, 2,5-furandicarboxylic acid, and 2-aminoterephthalic acid do not include all of the limitations of multidentates of the claim upon which it depends.
In order to overcome the rejection, Applicant may cancel the claim, amend the claim to delete the species “2,5-furandicarboxylic acid” and “2-aminoterephthalic acid” and place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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.
Claims 1, 3, 6 – 7, 9 – 11, 14 – 16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al. US2019/0217271 A1 in view of Bromberg et al. WO2013/019865 A2.
Determining the scope and contents of the prior art
Yamamoto et al. teach a “porous coordination polymer compound (PCP) is a porous material having nanopores, in which metal ions and organic ligands form a three-dimensional coordination network, and has various characteristics such as a regular pore structure, a high specific surface area, and a flexible structure… (f)or this reason, the PCP is expected to play a role as a highly designed functional material, and for example, applications of the PCP to a gas adsorbent, a gas storage material”. See, e.g., paragraph [0002]. Yamamoto teaches a composite material comprising a porous coordination polymer (PCP) PCP-F comprising aluminum(III) chloride hexahydrate as the metal ion and 2-amino-terephthalic acid as the plurality of multidentates, and the porous body of Example 1 (vinyltrimethoxysilane and vinylmethyl-dimethoxysilane). See, e.g., Example 13, page 20. Further, Yamamoto teaches “the alkoxy
groups of the dialkoxysilane and the trialkoxysilane form a siloxane network by the hydrolysis and the polycondensation reaction”. See, e.g., paragraph [0114].
Ascertaining the differences between the prior art and the claims at issue
Compared to instant claims, Yamamoto et al. do not explicitly teach the multidentates comprise 3,5-pyrazoledicarboxylic acid, as elected in Embodiment 1 by the Applicant.
Rationale for a prima facie case of obviousness
According to MPEP §2141(III), two of the rationales in the KSR decision states “(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success”… (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention”. KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Bromberg et al. teach “metal-organic frameworks (MOF), constituted by metal ions or metal ion clusters occupying nodal framework positions coordinated with di- or multi-podal
organic ligands, are rapidly emerging as an important family of crystalline materials to be utilized as catalysts in organic reactions”. See, e.g., page 2, lines 12-15. The metal component of the matrices comprises aluminum, specifically aluminum(III) chloride hexahydrate. See, e.g., Examples 2, 14 and 16. The organic ligand is a dicarboxylic acid, including 3,5-pyrazole dicarboxylic acid. See, e.g., page 12, line 14, and claim 27. Yamamoto teaches porous coordination polymer compound (PCP) plays a role “as a highly designed functional material, and for example, applications of the PCP to a gas adsorbent, a gas storage material”. See, e.g., paragraph [0002]. Bromberg suggests 3,5-pyrazole dicarboxylic acid as the organic ligand to bond to metal ion to eliminate toxicants. A person having ordinary skill in the art would have been motivated to perform routine experimentation, such as using 3,5-pyrazole dicarboxylic acid as the multidentate instead of 2-amino-terephthalic acid, to prepare and optimize the porous coordination polymer composite material as taught by Yamamoto et al. The purpose of the routine experimentation would have been to determine which ligand or multidentate would be optimal to increase the efficacy of the composite material. The PHOSITA would have an expectation of success in preparing such composite material comprising aluminum(III) chloride hexahydrate as the metal ion, 3,5-pyrazole dicarboxylic acid as the plurality of multidentates in combination with porous body of Example 1.
With respect to claims 8 and 18 – 19, MPEP §2144.05(II)(A) states:
“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)”.
In the instant case, Yamamoto teaches “concentration of the metal ion in reaction of the metal ion and an organic ligand is around 1 to 1000 mM (mmol/1), and the concentration of the organic ligand is around 1 to 2000 mM… [a]s the mixture ratio of the metal ion and the organic ligand, the molar ratio of the metal cation to the coordination bond group of the organic ligand is preferably around 1:1”. See, e.g., paragraphs [0079]-[0080]. Since Yamamoto also teaches that the ratio is preferably 1:1, the PHOSITA would been motivated to use the molar ratio as a good starting point to perform routine experimentation and determine the optimum concentration of the metal ion, multidentates, and the porous body in the composite material.
With respect to claims 9 – 10 and 20, MPEP §2112.01(I)-(II) states:
“Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)… Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.”
Please note, the limitations “the hydrophobic metal organic framework material has a carbon dioxide (CO2) adsorption in a range of 2.00 mmol/g to 8.00 mmol/g under an absolute temperature of 298K” (claims 9 and 20) and “a contact angle between the hydrophobic metal organic framework material and a surface of liquid water is in a range of 110° to 170°” (claim 10) are properties of the hydrophobic metal organic framework material. Since Yamamoto et al. and Bromberg et al. teach the hydrophobic metal organic framework material comprising the same metal ions, multidentates and hydrophobic groups as claimed in the instant claims, the material would inherently also possess the same carbon dioxide (CO2) adsorption in a range of 2.00 mmol/g to 8.00 mmol/g under an absolute temperature of 298K and contact angle between the hydrophobic metal organic framework material and a surface of liquid water is in a range of 110° to 170°. Thus, the combined teachings of the prior art would have rendered the instant claim prima facie obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sagar Patel whose telephone number is (571)272-1317. The examiner can normally be reached Monday - Friday: 9am to 5pm EST.
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/Sagar Patel/Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626
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