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 .
Claim Interpretation
To promote clarity and efficiency in the examination process (compact prosecution), the following terms as outlined below are interpreted, but not limited to, the following:
Regarding claims 1-11, the terminology “for barium collection” is not given patentable weight because MPEP 2111.02(II) states “the claim preamble must be read in the context of the entire claim. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” Therefore, the limitation of “for barium collection, in the preamble of claim 1 is not given patentable weight.
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.
Claim 7 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 7, the claim recites a list in the alternative or a Markush group, however the third grouping in the list, recites a secondary list of “oxides of Ba, Sr, Co, La, Mn, Zn, Ni, and combinations thereof”. It is unclear due to grammatical errors, whether this list are separate components of the magnetic metal oxide, or if they are a part of the last Fe2O3 listed in the initial list. The examiner will interpret and suggests the applicant amend to the following:
“The composition of claim 1 wherein the magnetic metal oxide is selected from the group consisting of Fe3O4; γ-Fe2O3; or Fe2O3 modified with oxides of Ba, Sr, Co, La, Mn, Zn, Ni, and combinations thereof.”
This interpretation was in light of the applicant’s specification, wherein all the examples include Fe3O4, not modified by the other transition metal oxides, further leading the examiner to believe this was simply a grammatical error, and this interpretation is how the applicant intended the limitation to read.
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.
Claim(s) 1-5, 7-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weston (US20210379559A1), in view of Zeng (CN107042087A). *Note Zeng is based on the attached, English, machine-translated version.
Regarding claim 1, Weston teaches a composition for barium collection; {[0007] re. MOF composition} the metal organic framework material comprising: a transition metal; {[0007] re. MOF metal Zr} an organic ligand chemically bonded to the transition metal; {[0007] re. organic ligand} and an inorganic ion. {[0007 re. inorganic salt}
Weston fails to teach the composition comprising: a core comprising a magnetic metal oxide; and a metal organic framework material coated on a surface of the core.
Zeng teaches the composition comprising: a core comprising a magnetic metal oxide; {[0006] re. Fe3O4} and a metal organic framework material coated on a surface of the core. {[0006] re. in situ method for magnetic metal-organic framework core-shell materials; Note that in-situ requires direct binding on the surface of the composition}
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Westons with Zeng’s teachings the composition comprising: a core comprising a magnetic metal oxide; and a metal organic framework material coated on a surface of the core as Zeng teaches a method to create an MOF, and Weston teaches an MOF compound. Doing so would has an advantage of simple synthesis and no need for external metal ion sources. {Zeng, [0006]}
Regarding claim 2, Weston fails to teach wherein the composition for barium collection has a particle size in a range of 100 mm to 5000 nm.
Zeng teaches wherein the composition for barium collection has a particle size in a range of 100 mm to 5000 nm. {[0013] re. particle size 240-500nm & [0030] re. particle size 472-654nm}
There is significant overlap between the claimed and prior art ranges. Such particle sizes are deemed to constitute results effective variables for which it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have optimized the particle size by routine experimentation, so as to adsorb more of the target material. MPEP, Section 2144.05 includes court rulings that have determined that such types of parameter values or ranges do not support the patentability of such subject matter, particularly where the prior art contains similar ranges, amounts or proportions, or suggests such similarity, absent a finding of unexpected criticality or achieving of unexpected results.
Regarding claim 3, Weston fails to teach wherein the composition for barium collection has a pore size of from 5Å to 10Å.
Zeng teaches wherein the composition for barium collection has a pore size of from 5Å to 10Å. {Page 34 Figure 3 re. the pore width from 0.5-1.0nm. Note 0.1nm = 1Å}
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Weston with Zeng’s teachings wherein the composition for barium collection has a pore size of from 5Å to 10Å as doing so would results in a composition with high adsorption efficiency, fast magnetic response, easy to recycle and reuse, widely used in water treatment. {Zeng, [0016]}
Regarding claim 4, wherein the composition for barium collection has a surface area of greater than 100m2/g. {[0037] re. surface area of at least 1,000m2/g}
There is significant overlap between the claimed and prior art ranges. Such surface areas are deemed to constitute results effective variables for which it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have optimized the surface area by routine experimentation, so as to create a surface capable of adsorbing more of the target material. MPEP, Section 2144.05 includes court rulings that have determined that such types of parameter values or ranges do not support the patentability of such subject matter, particularly where the prior art contains similar ranges, amounts or proportions, or suggests such similarity, absent a finding of unexpected criticality or achieving of unexpected results.
Regarding claim 5, Weston modified by Zeng is silent to wherein the composition for barium collection has a saturation adsorption capacity toward barium of at least 500 mg/g. However, the combination teaches a structure with the same composition, size, pore size, and surface area of the claimed invention, thus will exhibit the same properties.
As the amount and costs of adsorbent required is a variable that can be modified, among others, by optimizing the saturation adsorption capacity of the claimed composition, the precise saturation adsorption capacity would have been considered a result effective variable by one having ordinary skill in the art at the effective filing date of the invention. As such, without showing unexpected results, the claimed saturation adsorption capacity of at least 500 mg/g cannot be considered critical. See Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989) Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the saturation adsorption capacity in the method of Zeng to lower the costs and amount of adsorbent required. Since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP §2144.05(II)(A).
Regarding claim 7, Weston fails to teach wherein the magnetic metal oxide is selected from the group consisting of Fe3O4, γ-Fe2O3, or Fe2O3 modified with oxides of Ba, Sr. Co, La, Mn, Zn, Ni, and combinations thereof.
Zeng teaches wherein the magnetic metal oxide is selected from the group consisting of Fe3O4, γ-Fe2O3, or Fe2O3 modified with oxides of Ba, Sr. Co, La, Mn, Zn, Ni, and combinations thereof. {[0006] re. Fe3O4}
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Weston with Zeng’s teachings wherein the magnetic metal oxide is selected from the group consisting of Fe3O4, γ-Fe2O3, or Fe2O3 modified with oxides of Ba, Sr. Co, La, Mn, Zn, Ni, and combinations thereof as Weston teaches an MOF compound and Zeng teaches a method of making an MOF compound. Doing so would increase the efficiency of making the membrane as utilizing an iron oxide shell can be achieved through a single hydrothermal step, without the need for functionalization of a separate magnetic core. {Zeng, [0015]}
Regarding claim 8, Weston teaches wherein the transition metal is selected from the group consisting of zirconium and chromium. {[0007] re. metals consisting of Zr or Cr}
Regarding claim 9, Weston teaches wherein the organic ligand is selected from the group consisting of aminoterephthalic acid, terephthalic acid (BDC), 1,3,5-benzenetricarboxylic acid, 2-mercaptomalic acid, meso-dimercaptosuccinic acid and piperazine-1,4-dicarboxylic acid. {[0012] re. terephthalic acid}
Regarding claim 10, Weston teaches wherein the inorganic ion is selected from the group consisting of sulfate. {[0008] re. inorganic salt selected from a sulfate}
Regarding claim 11, Weston fails to teach wherein a surface of the magnetic metal oxide comprises a carboxylic acid functional group.
Zeng teaches wherein a surface of the magnetic metal oxide comprises a carboxylic acid functional group. {[0029] re. the coordination of carboxylic acid}
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Weston with Zeng’s teaching wherein a surface of the magnetic metal oxide comprises a carboxylic acid functional group as doing so would increases the efficiency of making the composition as there is no need to modify the magnetic nucleus or perform cumbersome steps such as layer-by-layer self-assembly utilizing carboxylic acid as a coordination group. {Zeng, [0029]}
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weston (US20210379559A1) modified by Zeng (CN107042087A), in view of Cruz (US20230311213A1). *Note Zeng is based on the attached, English, machine-translated version.
Regarding claim 6, Weston modified by Zeng fails to teach wherein the magnetic metal oxide has a particle size in a range of 10 nm to 30 nm.
Cruz teaches wherein the magnetic metal oxide has a particle size in a range of 10 nm to 30 nm. {[0014] re. about 10nm to about 500nm}
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Weston modified by Zeng with Cruz’s teachings wherein the magnetic metal oxide has a particle size in a range of 10 nm to 30 nm as each invention each invention involves a nanoporous structure for adsorption. Doing so would increase the surface area of the porous membrane as Cruz teaches the ability to grow the metal in particulate form, which creates more surface area for particles to be adsorbed onto. {Cruz, [0014]}
Claim(s) 12-13, 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zeng (CN107042087A), in view of Kostedt (US20130134098A1). *Note Zeng is based on the attached, English, machine-translated version.
Regarding claim 12, Zeng teaches a method; {[0036] re. example of adsorption of organic dyes} the composition comprising: a core, comprising a magnetic metal oxide; {[0006] re. Fe3O4} and a metal organic framework material coated on a surface of the core, {[0029] re. in situ coordination of the components on the MOF} the metal organic framework material comprising: a transition metal; {[0007] re. MIL-101(Fe). Note MIL-101(Fe) is a type of MOF with an Fe core component} an organic ligand, wherein the organic ligand is chemically bonded to the transition metal; {[0004] re. MOFs being a class that use organic ligands to bind the metal connectors} and an inorganic ion. {[0006] re. metal ion}
Zeng fails to teach the method is for barium collection, comprising: mixing a composition for barium collection with a water source containing barium; and adsorbing, using the composition for barium collection, an amount of barium from the water source to produce a barium-adsorbed composition and a resultant solution.
Kostedt teaches the method is for barium collection, {[0007] re. barium removal} comprising: mixing a composition for barium collection with a water source containing barium; {[0007] re. frac water contacted by the magnetic adsorbent} and adsorbing, using the composition for barium collection, an amount of barium from the water source to produce a barium-adsorbed composition and a resultant solution. {[0012] re. separation of the barium adsorbent from the other water stream}
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Zeng with Kostedt’s teachings wherein the method is for barium collection, comprising: mixing a composition for barium collection with a water source containing barium; and adsorbing, using the composition for barium collection, an amount of barium from the water source to produce a barium-adsorbed composition and a resultant solution as Zeng teaches iron oxides as the core of the adsorbent and Kostedt teaches iron oxides are particularly suitable to makeup the magnetic material of their invention. {Kostedt, [0009]}. This would be a favorable modification to Zeng, as Barium is a toxic material, and for environmental regulations and safety, it is common practice to remove Barium from water sources associated with produced water or frac water. {Kostedt, [0003]}
Regarding claim 13, Zeng fails to teach separating, using magnetic force, the barium-adsorbed composition from the resultant solution.
Kostedt teaches separating, using magnetic force, the barium-adsorbed composition from the resultant solution. {[0012] re. magnetic field}
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Zeng with Kostedt’s teachings of separating, using magnetic force, the barium-adsorbed composition from the resultant solution as each invention involves adsorption of material in a waste stream through metal complexes, and doing so would increase the industrial applicability of the invention, as magnetic force allows the material to be separated out as a liquid slurry, opposed to needing to dry and create a solid during the separation process. {Kostedt, [0011]}
Regarding claim 17, Zeng modified by Kostedt is silent to wherein the composition for barium collection has a saturation adsorption capacity toward barium of at least 500 mg/g. However, the combination teaches a structure with the same composition, size, pore size, and surface area of the claimed invention, thus will exhibit the same properties.
As the amount and costs of adsorbent required is a variable that can be modified, among others, by optimizing the saturation adsorption capacity of the claimed composition, the precise saturation adsorption capacity would have been considered a result effective variable by one having ordinary skill in the art at the effective filing date of the invention. As such, without showing unexpected results, the claimed saturation adsorption capacity of at least 500 mg/g cannot be considered critical. See Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989) Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the saturation adsorption capacity in the method of Zeng to lower the costs and amount of adsorbent required. Since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP §2144.05(II)(A).
Regarding claim 18, Zeng fails to teach wherein the water source is produced water.
Kostedt teaches wherein the water source is produced water. {[0007] re. frac water & [0002] re. produced water termed frac water}
It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that the water source of the method of Zeng modified by Kostedt is produced water because Kostedt teaches in [0002] that produced water (water source in the applicant's specification) are often termed "frac water"}
Regarding claim 19, Zeng teaches a method for separating {[0036] re. adsorption of organic dyes separating from water}; and a composition {[0006] re. Fe3O4 MOF material}; the composition for barium collection comprising a core comprising a magnetic metal oxide, {[0006] re. Fe3O4} and a metal organic framework material coated onto a surface of the core, {[0029] re. in situ coordination of the components on the MOF} the metal organic framework material comprising a transition metal; {[0007] re. MIL-101(Fe). Note MIL-101(Fe) is a type of MOF with an Fe core component} an organic ligand chemically bonded to the transition metal; {[0004] re. MOFs being a class that use organic ligands to bind the metal connectors} and an inorganic ion. {[0006] re. metal ion}
Zeng fails to teach that the method for separating is for separating barium from produced water, comprising: separating, using magnetic force, a barium-adsorbed composition from an admixture of produced water; and the composition is for barium collection.
Kostedt teaches that the method for separating is for separating barium from produced water, {[0007] re. frac water contacted by the magnetic adsorbent} comprising: separating, using magnetic force, a barium-adsorbed composition from an admixture of produced water; and the composition is for barium collection. {[0007] re. magnetic adsorbent & [0012] re. separation of the barium adsorbent from the other water stream}
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Zeng with Kostedt’s teachings that the method for separating is for separating barium from produced water, comprising: separating, using magnetic force, a barium-adsorbed composition from an admixture of produced water; and the composition is for barium collection as Zeng teaches iron oxides as the core of the adsorbent and Kostedt teaches iron oxides are particularly suitable to makeup the magnetic material of their invention. {Kostedt, [0009]}. This would be a favorable modification to Zeng, as Barium is a toxic material, and for environmental regulations and safety, it is common practice to remove Barium from water sources associated with produced water or frac water. {Kostedt, [0003]}
Regarding claim 20, Zeng modified by Kostedt is silent to wherein the composition for barium collection has a saturation adsorption capacity toward barium of at least 500 mg/g. However, the combination teaches a structure with the same composition, size, pore size, and surface area of the claimed invention, thus will exhibit the same properties.
As the amount and costs of adsorbent required is a variable that can be modified, among others, by optimizing the saturation adsorption capacity of the claimed composition, the precise saturation adsorption capacity would have been considered a result effective variable by one having ordinary skill in the art at the effective filing date of the invention. As such, without showing unexpected results, the claimed saturation adsorption capacity of at least 500 mg/g cannot be considered critical. See Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989) Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the saturation adsorption capacity in the method of Zeng to lower the costs and amount of adsorbent required. Since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP §2144.05(II)(A).
Claim(s) 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zeng (CN107042087A) modified by Kostedt (US20130134098A1), in view of Douglas (US20130292336A1). *Note Zeng is based on the attached, English, machine-translated version.
Regarding claims 14-16, Zeng modified by Kostedt fails to teach wherein the water source has a total dissolved solids concentration in a range of from 0 to 100,000 ppm; (Claim 14) wherein the water source has a concentration of calcium ions is in a range from 0 to 5,000 ppm; (Claim 15) wherein the water source has a concentration of magnesium ions is in a range from 0 to 1,000 ppm. (Claim 16)
Douglas directed to a frac-water treatment method teaches teach wherein the water source has a total dissolved solids concentration in a range of from 0 to 100,000 ppm; {[0004] re. Table A TDS} (Claim 14) wherein the water source has a concentration of calcium ions is in a range from 0 to 5,000 ppm; {[0004] re. Table A Ca} (Claim 15) wherein the water source has a concentration of magnesium ions is in a range from 0 to 1,000 ppm. {[0004] re. Table A Mg} (Claim 16)
Douglas is silent to the unit of ppm, however, it is known in the wastewater art, that the conversion of mg/L to ppm is ~1:1 with slight variations given other components in the water stream
It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to treat water sources of these concentrations, utilizing the method of Zeng modified by Kostedt, as Table A is directed to "frac water" and Kostedt teaches in [0002] that produced water (water source in the applicant's specification) are often termed "frac water"}
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sarp (US20180250651A1) concerns a composition and method capable of treating water with Barium with many of the claimed components of the invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CONNOR J ROTONDI whose telephone number is (571)272-2058. The examiner can normally be reached M-F 8:00am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached at (571)272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CONNOR J ROTONDI/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773
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