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 .
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.
Election/Restrictions
Claims 4 and 8-9 stand withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 timely traversed the restriction (election) requirement in the reply filed on 19 February 2026.
Claim Interpretation
As previously set forth, claim 1 recites the limitation “in an inverted radial manner.” This term is interpreted as being met when the coating is on the inside of the glass container and directed inward from the walls. Any coating covalently bonded to the inner wall as described by the remaining limitations of claim 1 will necessarily meet the limitation of being bonded in an inverted radial manner.
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 1-3, 5, and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Wohleb (US 2005/0059162 A1) in view of Pasán Garcia et al. (WO 2020/249834 A1; published 17 December 2020) and Li et al. (J. Mater. Chem. A, 2014, 2, 13868–13872), and with respect to claims 3 and 11, as evidenced by Rocío-Bautista et al. (RSC Adv., 2018, 8, 31304–31310). An English language equivalent of WO 2020/249834 A1 is US PG Pub 2022/0266218 A1; all references to Pasán Garcia below cite the US document.
Regarding claim 1, Wohleb teaches a glass container for microextraction comprising an inner wall coated with a sorptive material (surface sorbent microextraction assembly…sorption vial 20 is made from a rigid, non-reactive material, such as silica glass; [0044]-[0045] and Fig. 1 and 2). Wohleb further teaches that the sorptive coating on their glass container can be PDMS ([0049]).
Wohleb does not teach the coating comprising a MOF or having the formula recited in the instant claim.
However, Pasán Garcia teaches a stationary phase for microextraction (abstract) comprising a coating of formula -surface-O-R-M-MOF that is covalently bonded to a fiber surface in an radial manner ([0013]), where surface is Ti/Ni, MOF is a metal-organic framework, and M is Al, the same metal as in the MOF ([0036]; the notation used for the terminal group in the prior art is “Al-O-C-metal organic framework”, but the final O-C can be itself be considered part of the MOF). Pasán Garcia further teaches a method to prepare their coatings that would yield an intermediate compound R with the structure -Si-(CH2)3-NH-CH(=O)-(C6H4)-COO- (reaction of the surface generated using (3-aminopropyl)triethoxysilane that is shown in Fig. 1 with terephthaloyl chloride; [0037]-[0038]), which is identical to the R group recited as option A of the instant claim.
It is noted that while claim 1 and [0036] of the Pasán Garcia patent application recite the intermediate compound of -Si-(CH2)-(CH2)4-(CH2)-NH-CH(=O)-(C6H4)-COO-, and not the variant -Si-(CH2)3-NH-CH(=O)-(C6H4)-COO-, one of ordinary skill in the art would recognize that treatment of the surface depicted in Fig. 1 with terephthaloyl chloride, as described in [0037]-[0038], would produce -Si-(CH2)3-NH-CH(=O)-(C6H4)-COO-, and not - Si-(CH2)-(CH2)4-(CH2)-NH-CH(=O)-(C6H4)-COO-.1
Pasán Garcia also teaches that their MOF coatings provide significantly improved performance relative to conventional PDMS coatings for sorption of small-size hydrocarbons ([0035]).
Additionally, Li teaches that MOF sorbents for microextraction can be attached to silica surfaces via linkages of the same general structure as those used by Pasán Garcia (Scheme 1, copied below): surface-O-R-M-MOF, where surface is Si (quartz), MOF is a metal-organic framework, M is Cd, the same metal as in the MOF, and R is Si-(CH2)3-NH-CH(=O)-C2H4-COO-, a variant of the Si-(CH2)3-NH-CH(=O)-(C6H4)-COO- linker used by Pasán Garcia.
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the PDMS sorptive coating on the inner wall of the glass container taught by Wohleb with the MOF adsorptive coating taught by Pasán Garcia, where the coating is covalently attached to the silica surface of the silica, as taught by Li, thereby arriving at a glass container with a coating of formula -Si-O-R-M-MOF covalently bonded to the inner wall thereof in an inverted radial manner, where MOF is a metal-organic framework, where M is a metal dependent on a type of the MOF, and where R is an intermediate compound of -Si- (CH2)3-NH-CH(=O)-(C6H4)-COO-. One of ordinary skill in the art would have been motivated to do so because Pasán Garcia teaches that their coating has better sorption properties than the conventional PDSM used by Wohleb and because Li teaches that the same types of linkers used by Pasán Garcia to attach to metal are also effective at attaching to silica surfaces, such as would be provided by the glass vial of Wohleb.
Regarding claim 2, modified Wohleb teaches the container of claim 1, where Pasán Garcia teaches the metal is Al ([0036]).
Regarding claim 3, modified Wohleb teaches the container of claim 1, where Pasán Garcia teaches assembling the MOF using conditions that would generate the CIM-80(Al) (aqueous solution (15 ml) containing 1 mmol of mesaconic acid, 1 mmol of aluminum nitrate nonahydrate and 0.5 mmol of urea in a 26 ml glass vial, sealed with Teflon and capped. The vial is kept at 150° C. for at least 2 hours, to then take it out of the oven and let it cool in the air; [0030]-[0031]), as evidenced by Rocío-Bautista (Section 2.3).
Regarding claim 5, Wohleb teaches a thin film microextraction device comprising a glass container with an inner wall coated with a sorptive material (surface sorbent microextraction assembly…sorption vial 20 is made from a rigid, non-reactive material, such as silica glass; [0044]-[0045] and Fig. 1 and 2). Wohleb further teaches that the sorptive coating on their glass container can be PDMS ([0049]).
Wohleb does not teach the coating comprising a MOF or having the formula recited in the instant claim.
However, Pasán Garcia teaches a stationary phase for microextraction (abstract) comprising a coating of formula -surface-O-R-M-MOF that is covalently bonded to a fiber surface in an radial manner ([0013]), where surface is Ti/Ni, MOF is a metal-organic framework, and M is Al, the same metal as in the MOF ([0036]; the notation used for the terminal group in the prior art is “Al-O-C-metal organic framework”, but the final O-C can be itself be considered part of the MOF). Pasán Garcia further teaches a method to prepare their coatings that would yield an intermediate compound R with the structure -Si-(CH2)3-NH-CH(=O)-(C6H4)-COO- ([0037]-[0038]), which is identical to option A of the instant claim.
It is noted that while claim 1 and [0036] of the Pasán Garcia patent application recite the intermediate compound of -Si-(CH2)6-NH-CH(=O)-(C6H4)-COO-, and not the variant -Si-(CH2)3-NH-CH(=O)-(C6H4)-COO-, one of ordinary skill in the art would recognize that treatment of the surface depicted in Fig. 1 with terephthaloyl chloride, as described [0037]-[0038], would produce -Si-(CH2)3-NH-CH(=O)-(C6H4)-COO-, and not -Si-(CH2)3-NH-CH(=O)-(C6H4)-COO-.2
Pasán Garcia also teaches that their MOF coatings provide significantly improved performance relative to conventional PDMS coatings for sorption of small-size hydrocarbons ([0035]).
Additionally, Li teaches that MOF sorbents for microextraction can be attached to silica surfaces via linkages of the same general structure as those used by Pasán Garcia (Scheme 1, copied above): surface-O-R-M-MOF, where surface is Si (quartz), MOF is a metal-organic framework, and M is Cd, the same metal as in the MOF, and R is Si-(CH2)3-NH-CH(=O)-C2H4-COO-, a variant of the Si-(CH2)3-NH-CH(=O)-(C6H4)-COO- linker used by Pasán Garcia.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the PDMS sorptive coating on the inner wall of the glass container taught by Wohleb with the MOF adsorptive coating taught by Pasán Garcia, where the coating is covalently attached to the silica surface of the silica, as taught by Li, thereby arriving at a TFME device comprising a glass container with a coating of formula -Si-O-R-M-MOF covalently bonded to the inner wall thereof in an inverted radial manner, where MOF is a metal-organic framework, where M is a metal dependent on a type of the MOF, and where R is an intermediate compound of -Si- (CH2)3-NH-CH(=O)-(C6H4)-COO-. Such a device would be capable of preconcentrating a sample in analytical chemistry by adsorbing it into the sorptive material, as supported by Pasán Garcia ([0004]).
One of ordinary skill in the art would have been motivated to modify the device of Wohleb in such a manner because Pasán Garcia teaches that their coating has better sorption properties than the conventional PDSM used by Wohleb and because Li teaches that the same types of linkers used by Pasán Garcia to attach to metal are also effective at attaching to silica surfaces, such as would be provided by a glass vial.
Regarding claim 10, modified Wohleb teaches the device of claim 5, where Pasán Garcia teaches the metal is Al ([0036]).
Regarding claim 11, modified Wohleb teaches the device of claim 5, where Pasán Garcia teaches assembling the MOF using conditions that would generate the CIM-80(Al) (aqueous solution (15 ml) containing 1 mmol of mesaconic acid, 1 mmol of aluminum nitrate nonahydrate and 0.5 mmol of urea in a 26 ml glass vial, sealed with Teflon and capped. The vial is kept at 150° C. for at least 2 hours, to then take it out of the oven and let it cool in the air; [0030]-[0031]), as evidenced by Rocío-Bautista (Section 2.3).
Response to Arguments
Applicant's arguments with respect to the rejection of independent claim 1 under 35 USC § 103, pages 8-11 of the reply filed 20 July 2026 have been fully considered but they are not persuasive.
In response to applicant’s argument that there is no teaching, suggestion, or motivation found within Wohleb itself to modify Wohleb’s device with a MOF coating, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Pasán Garcia provides a clear teaching that MOF-based coatings are superior to traditional coatings such as the PDMS coatings used by Wohleb, a teaching that one of ordinary skill in the art would recognize extends beyond the nitinol fibers used by Pasan Garcia. By applying the coating of Pasán Garcia to the device of Wohleb one would be using a known technique to improve a similar device in the same way, and one of ordinary skill in the art would have been capable of applying this known method to the device of Wohleb with predictable results. MPEP 2143(I)(C).
Furthermore, while Pasán Garcia may teach away from silica fibers, one of ordinary skill in the art would further recognize that glass vials in no way suffer from the same breakage problems as glass or silica fibers. The fundamental factor that Pasán Garcia teaches as a problem with silica is not one that would be of concern when using the glass containers of Wohleb.
In response to applicant's arguments regarding the differences between Pasán Garcia and Li compared to the instant invention, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, the fundamental structure matching the instant invention is taught by Wohleb. It is only the coating that is being modified by Pasán Garcia and Li, and such a modification is firmly supported by Pasán Garcia’s teaching on the improved properties of their coating compared to the coatings of Wohleb.
Regarding Applicant’s arguments on the alleged difficulties one would face in adapting the coating method of Pasán Garcia to Wohleb’s device, these are also unpersuasive. No evidence is provided that one of ordinary skill in the art would find it challenging to adapt the methods of Pasán Garcia and Li to a vial surface, for example by filling the vial rather than dipping a fiber. As noted above, the chemical reactions used to prepare the instant devices are generally the same as those in the prior art.
The rejection of independent claim 1 is maintained.
Applicant’s arguments regarding claims 2-3, 5, and 10-11 depend upon those set forth for claim 1. For the same reason as articulated above, these arguments are unpersuasive and the prior rejections are maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 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, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
1 It is additionally noted the method described by Pasan Garcia in [0037]-[0038] utilizes the same reagents as the instant invention (p. 8, line 32 to p. 9, line 2) and would be expected to produce the same products.
2 It is additionally noted the method described by Pasan Garcia in [0037]-[0038] utilizes the same reagents as the instant invention (p. 8, line 32 to p. 9, line 2) and would be expected to produce the same products.
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