DETAILED ACTION
This action is in response to the amendments and remarks filed 07/16/2026, in which claims 1, 6 and 12 have been amended, and claims 1, 3 and 6-23 are pending and ready for examination.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 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, 3 and 6-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “wherein the ZIOS is formed from a three-dimensional supramolecular structure into a nanosheet structure and deposited onto the membrane support” and claim 12 recites similarly “zinc imidazole salicylaldoxime supramolecule (ZIOS) nanosheets formed from a three-dimensional supramolecular structure and deposited on a membrane support”. However, the original disclosure as filed does not appear to disclose this concept. The sworn statements in the affidavit do not remedy that: the concept was not disclosed in the original disclosure as filed, which does not use the word delamination, and the statements are not supported by experimental data. The specification notes that rod-like structures are formed at different conditions, but does not recite that the rods are transformed or delaminated to form nanosheets, to the contrary the specification states the PVA keeps the crystals from growing larger, i.e. the PVA prevents the rod-like structure from forming, the specification also notes this is just a guess. Specifically the specification recites “FIG. 4 illustrates that as the PVA concentration increases from 0% to 1 %, the width of ZIOS expands from 0.69 μm to 3.26 μm, while the length of ZIOS decreases from 12.03 μm to 9.17 μm. Consequently, a transformation from a rod-like to a hexagonal sheet-like morphology is observed” And “It is speculated that it may be a result of PVA chains attaching to the surface of sma11 crystals, possibly through interactions between the dangling Zn center and OH groups, which could hinder growth among certain directions, leading to the transformation from rod-like to hexagonal sheet-like morphology” [0063]. Thus the statements about transformation are simply referring to the Fig. 4 different morphologies formed as a result of the process, and do not imply that the rods are first formed and then delaminated or transformed into the nanosheets.
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, 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, 7-16 and 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over Chunyan Chen, et al., A high absorbent PVDF composite membrane based on β-cyclodextrin and ZIF-8 for rapid removing of heavy metal ions, Separation and Purification Technology, Volume 292, 2022, 120993, ISSN 1383-5866 (hereinafter “Chen”) in view of Bui, N.T., Kang, H., Teat, S.J. et al. A nature-inspired hydrogen-bonded supramolecular complex for selective copper ion removal from water. Nat Commun 11, 3947 (2020). (hereinafter “Bui”) and Abounahia, N.; Qiblawey, H.; Zaidi, S.J. Progress for Co-Incorporation of Polydopamine and Nanoparticles for Improving Membranes Performance. Membranes 2022, 12, 675. (hereinafter “Abounahia”), Xin-ping Wang, Jingwei Hou, Fu-shan Chen, Xiang-min Meng, In-situ growth of metal-organic framework film on a polydopamine-modified flexible substrate for antibacterial and forward osmosis membranes, Separation and Purification Technology, Volume 236, 2020, 116239 (hereinafter “Wang”) and Jing Deng, et al., Morphologically Tunable MOF Nanosheets in Mixed Matrix Membranes for CO2 Separation, Chemistry of Materials 2020 32 (10), 4174-4184, DOI: 10.1021/acs.chemmater.0c00020, (hereinafter “Deng”).
Regarding Claim 1 Chen discloses a method of preparing a metal cation-capturing membrane, the method comprising depositing a heavy metals adsorbent nanoparticle, βCD@ZIF-8, onto a membrane support wherein the membrane support is polyvinylidene fluoride (PVDF); Chen Sec. 2.2.2.; Abstract, Introduction, Secs. 2.2. and 2.3.
Chen does not disclose (1) the adsorbent nanoparticle is a zinc imidazole salicylaldoxime supramolecule (ZIOS), or (2) wherein the membrane support has been coated with polydopamine (PDA) and polyethyleneimine (PEI), or (3) wherein the method comprises incubating the membrane support with zinc nitrate hexahydrate, 2-methylimidazole, salicylaldoxime in one or more solutions, and (4) a viscosity enhancer, wherein the ZIOS is formed from a three-dimensional supramolecular structure into a nanosheet structure and deposited onto the membrane support.
However, with regard to (1) ZIOS, Bui discloses zinc imidazole salicylaldoxime supramolecule (ZIOS) is a known copper and heavy metals adsorbent, which is directly compared to ZIF 8; and exhibits unprecedented rapid adsorption kinetics and a moderately high copper ion adsorption capacity; Bui Abstract, Introduction (pg. 2), Discussion, Methods.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Chen by substituting for the heavy metals adsorbent nanoparticle ZIOS as disclosed by Bui because ZIOS exhibits unprecedented rapid adsorption kinetics and a moderately high copper ion adsorption capacity (Bui Discussion).
With regard to (2) with PDA and PEI, Abounahia discloses it is known to use an intermediate layer of PDA and PEI as a means of immobilizing nanoparticles onto membrane surfaces, including by first coating the membrane in PDA/PEI then depositing the nanoparticles; Sec. 2., 3.1., 3.2.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method and membrane of Chen in view of Bui by first coating the PVDF membrane with an intermediate layer of PDA and PEI as disclosed by Abounahia because this is a known means of improving the immobilization of nanoparticles on membranes surfaces.
With regard to (4) a viscosity enhancer, Deng discloses forming a ZIF nanoparticles (which are formed in a similar process to ZIOS), wherein 1 wt% PVA was added to the ZIF precursors solution during ZIF formation to control the morphology of the formed ZIF particles such that they form nanosheets, wherein the molecular weight of the additive PVA has a significant influence on the thickness and size of the ZIF nanosheets; Abstract, “ZIF-C Synthesis”, Conclusions.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Chen in view of Bui and Abounahia by adding 1 wt% PVA to the precursor solution(s) in order to form nanosheets as disclosed by Deng because controlling the morphology of the ZIOS to form nanosheets would increase the specific surface area of the formed ZIOS which would be expected to enhance adsorption of contaminants, i.e. heavy metals, and because ZIF and ZIOS are formed in a similar way from similar precursors and thus it would have provided an expectation of success in forming nanosheets.
With regard to (3) incubating the membrane support with zinc nitrate hexahydrate, 2-methylimidazole, salicylaldoxime in one or more solutions, Wang discloses using a PDA coating on a membrane in order to attach a ZIF-8 particle layer on the membrane via direct immersion in a single ZIF-8 precursor solution, i.e. an aqueous solution comprising zinc nitrate hexahydrate and 2-methylimidazole; Abstract, 1. Introduction, Secs. 2.2.-2.3., Fig. 1.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the combined method and membrane of Chen in view of Bui, Abounahia and Deng by incubating the PDA and PEI coated membrane directly in a singular precursor solution (i.e. for ZIOS) because as disclosed by Wang the PDA coating layer improves nucleation propensity and bonding which allows direct immersion in the precursor solution to form an attached particle layer, and thus avoids the extra steps of first impregnating the membrane with zinc nitrate hexahydrate then drying as in Chen, where the solution(s) may be filtered through the membrane to achieve the deep-permeation of Chen.
Thus resulting in incubating the membrane support with zinc nitrate hexahydrate, 2-methylimidazole, salicylaldoxime and a viscosity enhancer in one solution.
With regard to “wherein the ZIOS is formed from a three-dimensional supramolecular structure into a nanosheet structure and deposited onto the membrane support”, Chen in view of Bui, Abounahia, Wang and Deng discloses the same process as that recited in claim 1, as discussed above. Therefore, it is asserted, absent evidence to the contrary, that one would reasonably expect the process to inherently function the same as the process recited. Specifically, it is asserted that the ZIOS is formed from a three-dimensional supramolecular structure into a nanosheet structure and deposited onto the membrane support. See MPEP 2112.02.
Regarding Claim 3 Chen in view of Bui, Abounahia, Wang and Deng discloses the method of claim 1, wherein the membrane support has a pore size of 0.45; Chen Sec. 2.1.
Regarding Claims 7-8 Chen in view of Bui, Abounahia, Wang and Deng discloses the method of claim 1, wherein Bui discloses the incubation is carried out for 2 h at 53–57 °C (Bui “ZIOS synthesis”). Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claims 9-10 Chen in view of Bui, Abounahia, Wang and Deng discloses the method of claim 1, wherein the viscosity enhancer is PVA, Deng Abstract, “ZIF-C Synthesis”, Conclusions.
Regarding Claim 11 Chen in view of Bui, Abounahia, Wang and Deng discloses the method of claim 1, wherein the viscosity enhancer is present in one or more solutions at a concentration of 1 wt%; Deng Abstract, “ZIF-C Synthesis”, Conclusions.
Regarding Claim 12 Chen in view of Bui, Abounahia, Wang and Deng discloses the method of preparing a metal cation-capturing membrane as in the rejection of claim 1, which is herein incorporated in this rection of claim 12, and thus the metal cation-capturing membrane formed by said method, which comprises a zinc imidazole salicylaldoxime supramolecule (ZIOS) nanosheet on a membrane support; see the detailed rejection of claim 1 supra. Wherein the ZIOS is in the form on a nanosheet, and it is inherent that the zinc imidazole salicylaldoxime supramolecule (ZIOS) nanosheets are formed from a three-dimensional supramolecular structure and deposited on a membrane support
Regarding Claim 13 Chen in view of Bui, Abounahia, Wang and Deng discloses the metal cation-capturing membrane of claim 12, wherein the metal cation-capturing membrane is made by controlled growth of ZIOS onto the membrane support; see rejection of claims 1 and 12 supra. Where because the synthesis process of Chen in view of Bui, Abounahia, Wang and Deng is substantially similar to that disclosed in the instant specification, it is asserted, absent evidence to the contrary, that one would reasonably expect that controlled growth of ZIOS nanosheets inherently occurs. See MPEP 2112.01.
Regarding Claim 14 Chen in view of Bui, Abounahia, Wang and Deng discloses the metal cation-capturing membrane of claim 13, wherein the method comprises incubating the membrane support with two precursors solutions (Chen 2.2.2.), and wherein the precursor solution for ZIOS is disclosed to include zinc nitrate hexahydrate, 2-methylimidazole, salicylaldoxime in one solution (Bui “ZIOS synthesis”). Therefore in combination it would have been obvious to deposit the ZIOS nanoparticles on the membrane via incubation with either one solution comprising all the precursors (as in Bui), or alternatively to deposit a first solution of zinc nitrate hexahydrate then a second solution comprising the remaining precursors (as in Chen) (i.e. 2-methylimidazole, salicylaldoxime).
Regarding Claim 15 Chen in view of Bui, Abounahia, Wang and Deng discloses the metal cation-capturing membrane of claim 12, wherein the membrane support is polyvinylidene fluoride (PVDF); Chen Sec. 2.2.2.
Regarding Claim 16 Chen in view of Bui, Abounahia, Wang and Deng discloses the metal cation-capturing membrane of claim 12, wherein the membrane support has a pore size of 0.45; Chen Sec. 2.1.
Regarding Claim 18 Chen in view of Bui, Abounahia, Wang and Deng discloses the metal cation-capturing membrane of claim 12, and with regard to the ZIOS nanosheet having a hexagonal sheet morphology, Chen in view of Bui, Abounahia, Wang and Deng discloses a membrane formed by the same process as that recited in claim 1 and 12, as discussed above. Therefore, it is asserted, absent evidence to the contrary, that one would reasonably expect the membrane to inherently have the same properties recited. Specifically, it is asserted that the ZIOS nanosheet have a hexagonal sheet morphology. See MPEP 2112.02.
Regarding Claim 19 Chen in view of Bui, Abounahia, Wang and Deng discloses the metal cation-capturing membrane of claim 12, which is used in a method of removing transition metal ions (i.e. copper) from an aqueous solution (Chen Abstract, 2.3., Bui Title, Abstract, “Adsorption capability of ZIOS”), the method comprising passing the aqueous solution across the metal cation-capturing membrane (Chen 2.3., Fig. 2).
Regarding Claim 20 Chen in view of Bui, Abounahia, Wang and Deng discloses the method of claim 19, wherein the aqueous solution used is a test solution, but Chen discloses the intended use in for removal copper/heavy metals from wastewater (Abstract, Introduction) and similarly Bui discloses the ZIOS material is useful for the adsorptive removal of copper from acid mine drainage-polluted water (pg. 2, right column). Therefore, at the time of filing, it would have been obvious to substitute the test solution for wastewater or mine drainage.
Regarding Claim 21 Chen in view of Bui, Abounahia, Wang and Deng discloses the method of claim 19, wherein the aqueous solution has a pH in a range of about 2 to about 9.; (Chen Sec. 3.2.1., Fig. 8; Bui Fig. 3, Pg. 6 left column). Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 22 Chen in view of Bui, Abounahia, Wang and Deng discloses the method of claim 19, wherein the transition metal ions comprise Cu ions; Chen Abstract, 2.3., Bui Title, Abstract, “Adsorption capability of ZIOS”.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Chen in view of Bui, Abounahia, Wang and Deng further in view of Bishnu P. Biswal, et al., Selective interfacial synthesis of metal–organic frameworks on a polybenzimidazole hollow fiber membrane for gas separation, (Paper) Nanoscale, 2015, 7, 7291-7298 (hereinafter “Biswal”).
Regarding Claim 6 Chen in view of Bui, Abounahia, Wang and Deng discloses the method of claim 1, but does not disclose wherein the method comprises incubating the membrane support between two cells, wherein the first cell comprises zinc nitrate hexahydrate and the second cell comprises 2-methylimidazole, salicylaldoxime and a viscosity enhancer
However Biswal discloses forming a ZIF nanoparticles (which are formed in a similar process to ZIOS), wherein the method comprises incubating the membrane support between two cells (i.e. the hollow fiber membrane’s lumen/tube side as one cell and the shell side/outside the hollow fiber as a second cell, separated by the membrane); wherein the first cell/tube side comprises zinc nitrate solution and the second cell/shell side comprises 2-methylimidazol solution; Sec. “Fabrication of the ZIF-8@PBI-BuI-In composite”.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Chen in view of Bui, Abounahia, Wang and Deng by incubating the membrane support between two cells, wherein the first cell comprises a zinc nitrate hexahydrate solution and the second cell comprises a 2-methylimidazole solution as disclosed by Biswal because this is a known means to form nanoparticles on a membrane from zinc nitrate hexahydrate and 2-methylimidazole precursor solutions.
Biswal does not address which solution the other materials of the precursor should go in, so it would have been obvious to try placing the addition precursor solution materials (i.e. salicylaldoxime and the viscosity enhancer) in either solution in their respective cells, because this involves choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Chen in view of Bui, Abounahia, Wang and Deng further in view of Kontos, A.G., et al. (2014), CO2 Captured in Zeolitic Imidazolate Frameworks: Raman Spectroscopic Analysis of Uptake and Host–Guest Interactions. ChemSusChem, 7: 1696-1702. (hereinafter “Kontos”).
Regarding Claim 23 Chen in view of Bui, Abounahia, Wang and Deng discloses the method of claim 22, wherein in-situ Raman analysis is used to differentiate Cu2+ and Ni2+ adsorption mechanisms onto the metal cation-capturing membrane.
However Kontos discloses using in-situ Raman analysis to study CO2 adsorption mechanisms in ZIF-69 including quantifying CO2 uptake, identifying weak host–guest interactions and elucidating CO2 sorption mechanism in ZIFs; Abstract, Conclusions.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Chen in view of Bui, Abounahia, Wang and Deng by using in situ Raman analysis to study the mechanisms of target contaminant absorbance onto the adsorbent (i.e. ZIOS) as disclosed by Kontos because “[i]t not only provides qualitative information related to the contribution of functional groups to sorption, structural changes, framework stability, and nature of binding, but also gives quantitative estimate of the sorption capacity at desired pressures and temperatures”.
As to specifically differentiating Cu2+ and Ni2+ adsorption mechanisms onto the metal cation-capturing membrane, Bui notes that “selective removal of copper from nickel electrolysis anolytes has long been a problem plaguing the global metallurgical industry” (pg. 2 left column), and that “ZIOS may have potential for applications that target more than one toxic cation and/or the selective removal of other metal ions from select mixtures. If the limited selectivity of ZIOS is indeed governed by the salicylaldoxime ligand, this behavior should be tunable by changing the solution pH to a range favorable for more selective copper uptake by this chelator” (pg. 6, left column). And therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to use the in situ Raman analysis to specifically differentiate Cu2+ and Ni2+ adsorption mechanisms onto the metal cation-capturing membrane in order to target conditions which selectively favor adsorption of one over the other.
Response to Amendment
The previous 35 U.S.C. 112(b) rejections of claims 6 and 12 are withdrawn in view of the Applicants’ arguments and amendments.
Response to Arguments
Applicant's arguments filed 07/16/2026 have been fully considered but they are not persuasive.
The 1.132 Declaration/Affidavit of Dr. Bui filed 07/16/2026 is acknowledged and has been considered together with the arguments in the remarks.
In response to applicant's arguments against the references individually throughout the arguments, 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 response to Applicants’ argument that ZIOS and ZIF systems would not have been “predictably interchangeable merely because they share certain precursor components”, and therefore the claims are not obvious; the Examiner disagrees. Applicants argue it would not have been obvious to substitute ZIOS for ZIF or substitute ZIF synthesis strategies to form ZIOS because ZIOS is claimed to be formed “from a three-dimensional supramolecular structure into a nanosheet structure and deposited onto the membrane support” (as now claimed) and “involves the in situ delamination or transformation of ZIOS from a larger three-dimensional supramolecular particulate form into nanosheet-like structures” (as argued in the remarks), which in unlike ZIF which assembles in a “bottom-up crystallization”, and therefore a PHOSITA would not have a reasonable expectation of success in forming the claimed ZIOS nanosheets. However, the idea that ZIOS forms first as a three-dimensional supramolecular structure such as a rod-like structure, which is then transformed or delaminated into nanosheets, would not have been available to a PHOSITA at the time of filing, as that is not disclosed in the prior art. Thus, even if it is the case that ZIOS nanosheets of the instant invention are formed from a transformation of a larger structure, this would not have affected the obviousness or predictability of the outcomes of the combination of the prior art teachings as in the above rejections, since POSHITA would not have that knowledge at the time of filing the instant application.
In response to Applicants’ argument that it would not have been obvious to a person of ordinary skill in the art to substitute ZIOS, the supramolecular copper chelating complex disclosed in Bui, for the ZIP-8 adsorbent utilized in Chen's membrane fabrication method, or otherwise use ZIF synthesis processes to motive creation of a ZIOS membrane; the Examiner disagrees. Applicants argue that “Materials at different dimensional scales, including nanometer-scale particles, micron-scale supramolecular particles, and atomically thin or sheet-like structures, do not merely differ in size; they frequently exhibit different physical behavior, different surface accessibility, different assembly behavior, different transport properties, and different responses to synthesis conditions. It is therefore an oversimplification to treat nanometer-scale ZIF particles, micron-scale ZIOS rod-like particles, and ZIOS nanosheets as though they were interchangeable material forms governed by the same practical synthesis expectations” (the Declaration of Dr. Bui, paragraph 7), and note Bui was employed solely as a benchmark material not because ZIF and ZIOS share structural, chemical and physical similarity. However, respectfully, Bui is clear that ZIOS is similar to ZIF-8 with some different characteristics, through its many comparisons throughout the disclosure of Bui. ZIOS is also formed from the same precursors as ZIF with the addition of salicylaldoxime: ZIF-8 is made from reacting: Zinc nitrate and 2-MI (Biu ZIF-8 synthesis) (and in Chen 2.2.1. also cyclodextrin), ZIOS is made from reacting : Zinc nitrate, 2-MI and salicylaldoxime (Biu ZIOS synthesis). Therefore, despite differences in size of the formed ZIOS when compared to ZIF, they are both similar heavy metal/copper adsorbents made by remarkably similar synthesis processes. One of skill in the art would not need to understand the more nuanced differences in the underlying synthesis mechanism to find it obvious that they would be obvious to substitute, and that strategies for synthesizing ZIF would be obvious to apply to ZIOS. Particularly because the differences in the synthesis process noted by Applicants would not have been available to one of skill in the art. The Declaration stating Bui’s intent in comparing ZIOS to ZIF does not change what was available known to a PHOSITA at the time of filing. With regard to the predictability of the combinations of the prior art teachings in the rejections, it is specifically noted that combination need only have a reasonable expectation of success, not a 100% expectation of success, see MPEP 2143.02 (II). Thus the proposed prior art combinations do not need to suggest that ZIOS would behave exactly as ZIF as the prior art is not seen to suggest that ZIOS would behave so differently from ZIF as to teach away from their substitution..
With regard to Applicants arguments that the claims recite an in situ formation process for ZIF and not a simple process of depositing pre-formed nanoparticles on a support, and therefore the claim are not obvious; the Examiner disagrees. Prior art Wang is cited as motivation to form the ZIOS particles fully in situ during membrane incubation, as it is a known alternative means for forming similar ZIF particles wherein, as discussed above, one of skill in the art would see the ZIOS synthesis process as remarkably similar to that of ZIF, would not have known that ZIOS forms in a different way to ZIF, and would therefore have been motivated to apply teachings from ZIF synthesis process, such as Wang, to ZIOS.
In response to Applicants’ argument that Deng does not teach that adding PVA or any viscosity enhancer would enable the claimed ZIOS transformation into nanosheets, and thus the claims are not obvious; the Examiner disagrees. While Applicants argue that PVA is used in a different way in the instant invention, it is not clear that is the case, since Wang uses PVA to effect the form of ZIF particle in order to create nanosheets, and Applicants’ appear to do the same; any underlying differences in how the different systems function to provide the same result (i.e. adding PVA in order to form nanosheets) would not need to be taken into account by PHOSITA for the combination to result in success. As discussed above, one of skill in the art would see the ZIOS synthesis process as remarkably similar to that of ZIF, would not have known that ZIOS forms in a different way to ZIF, and would therefore have been motivated to apply teachings from ZIF synthesis process, such as Deng, to ZIOS.
In response to Applicants’ argument that the distribution of precursor components and viscosity enhancer in the claimed ZIOS system is not arbitrary and effects whether the transformation into nanosheets occurs, and thus the claims are not obvious; the Examiner disagrees. Biswal discloses the first cell comprises a zinc nitrate hexahydrate solution and the second cell comprises a 2-methylimidazole solution, but does not address which solution the other materials of the precursor should go in, so it would have been obvious to try placing the addition precursor solution materials (i.e. salicylaldoxime and the viscosity enhancer) in either solution in their respective cells, because this involves choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. This thus clearly a matter of choosing among finite solutions, and you have two solution and two materials (salicylaldoxime and the viscosity enhancer )which need to be added, resulting in 4 possible combinations (both in the first solution, both in the second solution, or one in each (and its reverse); another way of saying this is there are 4 possible solutions and they are all obvious. With regard to criticality of the placement of the salicylaldoxime and/or the viscosity enhancer in one of the first or second solutions, Applicants’ do not appear to have data that shows the claimed criticality.
In response to Applicants’ argument that “[t]he fact that Raman spectroscopy can be used in one system does not create a reasonable expectation that it would function meaningfully in another” and therefore it would not have been obvious to combine the teachings of Kontos with that of the combined invention; the Examiner disagrees. Applicants appear to argue that there would not have been an expectation of success in applying Raman spectroscopy to the system of Chen in view of Bui, et al. because the system of Kontos does not use the same adsorption process and that “Raman spectroscopy is a known analytical technique, its successful application is highly system and sample dependent”, however no specific evidence is provided which would teach away from the suggested combination.” Applicants’ are reminded again that a reasonable expectation of success does not mean a 100% expectation of success. Kontos discloses that it is known to use Raman spectroscopy to identify sorption mechanism in ZIFs, and therefore one of skill in the art would have a reasonable expectation of success in using Raman spectroscopy to identify sorption mechanism in ZIF and other ZIF-like adsorbents such as ZIOS.
In response to Applicants’ argument that it would not have been obvious to substitute a test solution with wastewater or mine drainage; the Examiner disagrees. Bui discloses the ZIOS material is a “promising candidate for the adsorptive removal of copper from acid mine drainage-polluted water” (pg. 2, right column). And thus to use the membrane comprising ZIOS to treat acid mine drainage-polluted water is clearly obvious from the disclosure of Bui. While the Examiner appreciates that Applicants’ are named authors of Bui, Bui never-the-less is available as prior art and thus the advantages of ZIOS are known to one of skill in the art at the time of filing of the instant invention.
Generally, Applicants’ position that ZIOS and ZIF are not so related as to suggest to a PHOSITA at the time of filing that they may be substituted and teachings of ZIF synthesis may be applied to ZIOS synthesis is not persuasive. Applicants’ main reasons that they would not be obvious to combine are that 1) the ZIOS is formed in a different way; which would not have been known to PHOSITA and thus cannot be evidence against the combination, and 2) that complete predictability would not have been expected because ZIOS is different from ZIF, which is not a correct interpretation of the legal standards of patentability. It is further noted that arguments provided by the inventors are not given any more weight merely because they are submitted as an affidavit, and theses arguments are not a proper substitute for factual evidence or experimental data. The claims thus remain rejected.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Eric J. McCullough whose telephone number is (571)272-8885. The examiner can normally be reached Monday-Friday 10:00-6:00.
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, Benjamin L 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773
Prosecution Insights