Patent Application 17573071 - POST-SYNTHETICALLY MODIFIED METAL-ORGANIC

Title: POST-SYNTHETICALLY MODIFIED METAL-ORGANIC FRAMEWORKS FOR SELECTIVE BINDING OF HEAVY METAL IONS IN WATER

Application Information

Invention Title: POST-SYNTHETICALLY MODIFIED METAL-ORGANIC FRAMEWORKS FOR SELECTIVE BINDING OF HEAVY METAL IONS IN WATER
Application Number: 17573071
Submission Date: 2025-05-16T00:00:00.000Z
Effective Filing Date: 2022-01-11T00:00:00.000Z
Filing Date: 2022-01-11T00:00:00.000Z
National Class: 502
National Sub-Class: 401000
Examiner Employee Number: 85248
Art Unit: 1736
Tech Center: 1700

Rejection Summary

102 Rejections: 2
103 Rejections: 2

Cited Patents

The following patents were cited in the rejection:

US 0369746🔗

Office Action Text

DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .

Election/Restrictions
Applicant’s 2/13/25 election without traverse of “MIL-100” from Species Group A and “Catechol” from Species Group B is acknowledged. Claims 4 and 7 are withdrawn from further consideration per 37 CFR 1.142(b) as drawn to nonelected species, there being no allowable generic or linking claim. Claims 1-3, 5-6, and 8-20 have been examined on the merits. Note that claim 1, having been designated as generic in the 1/16/25 Species Election Requirement (“SER”), is not deemed limited to the elected species for prior art purposes.

Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: claim 18’s “wherein the polymer is redox active” must be added to an appropriate portion of the specification.

Claim Interpretation
Claim 1 is a device claim that includes a method-of-use limitation, namely “wherein a liquid is flowed across the composition of matter.” The method-of-use limitation has not been given patentable weight because the presence thereof within the body of a claim raises a question/doubt as to the limiting effect thereof. See MPEP 2103 I. C. Note further that, absent structural differences between a claim and a prior art material or article, a recitation of the claimed material or article’s intended use cannot alone patentably distinguish the claimed invention from the prior art. See MPEP 2114 I-II, citing, e.g., Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987); MPEP 2111.02 II, citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (stating that “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”). See also In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969) (stating that “a mere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable”). Thus, if the prior art structure is capable of performing the intended use, it meets the claim. See MPEP 2111.02 II, citing In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (citing, inter alia, In re Zierden).

Claim Rejections - 35 USC § 101 and 112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

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.

Claims 1-3, 5-6, and 8-20 are 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.
Claims 1-3, 5-6, and 8-20 are rejected for indefiniteness under 35 U.S.C. 112(b)/2nd par. because they constitute device claims which include method limitations (namely, claim 1’s “wherein a liquid is flowed across the composition of matter”). It is well-settled that method limitations are improper in device claims, since it is the device’s structure which is covered in an apparatus claim, and not the method of using such device. See MPEP 2173.05(p) II; IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005). Said claims are also rejected under 35 U.S.C. 101 because claim 1 recites limitations to both a process and a device: sec. 101 only allows one statutory class per (independent) claim. Id. See also MPEP 2173.05(p) II, citing Ex parte Lyell, 17 USPQ2d 1548, 1551 (BPAI 1990) (stating that an independent claim drafted to embrace or overlap more than one statutory class of 35 U.S.C. 101 violates said statute, which is written to allow for only one statutory class per independent claim, and also violates 35 U.S.C. 112[(b)/]2nd par. for ambiguity since it does not particularly point out and distinctly claim the invention).
Applicant is hereby advised that, as independent claim 1 is rejected for deficiencies under 35 USC 112(b)/2nd par., all claims depending therefrom also contain such deficiencies and are likewise rejected (unless the deficiencies are resolved by the dependent claim’s own limitations) - cure thereof is required for any and all claims affected even if any such claim were otherwise found allowable. See, e.g., In re Jolly, 80 USPQ 504, 504-05 (CCPA 1949) (holding that dependent claims of indefinite claims are thusly indefinite), and Ex parte Kristensen, 10 USPQ2d 1701, 1702-04 (BPAI 1989) (same); 35 USC 112(d)/4th par.

Claims 5 and 14 are rejected under 35 U.S.C. 101 and 112(b)/2nd par. for the same reasons as those detailed above vis-à-vis claim 1, as claims 5 and 14’s “treated with a binder to adjust particle properties comprising size or hardness” is a method limitation within an overall device claim. As such, these claims have not been evaluated on the merits vis-à-vis prior art.
Claims 14 and 18 are rejected for indefiniteness under 35 U.S.C. 112(b)/2nd par. because claim 14’s “the MOF/organic polymer ligand” and claim 18’s “the polymer” lack sufficient antecedent bases. Note that these rejections may be overcome by amending said claims to depend from claim 8.

Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –

(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.

(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

Claims 1, 6, 9-13, 15, and 17 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as anticipated by Azzazy et al., US 2015/0369746 (published 12/24/15; PCT filed 2/11/14; US Prov’l Appl’n filed 2/11/13) (“Azzazy”). Regarding claims 1, 6, 9-13, and 17, Azzazy discloses a heavy metal adsorbent (comprising a core of the metal organic framework “MOF” Zr-bdc, aka “UiO-66”; bdc8 = 1,4-benzene dicarboxylic acid) comprising a porous MOF with unsaturated coordination sites (bdc), an organic ligand (dithizone, aka “DZ”) functionalized with a first functional group bound to the MOF (the DZ’s aniline N atoms are understood to bind to the MOF) and a second functional group (the DZ’s thiourea group, which is considered to be either a Lewis acid or Lewis base vis-à-vis claims 12-13) to bind heavy metals such as Bi(III), Zn(II), Pb(II), Hg(II), and/or Cd(II). See Azzazy at, e.g., par. 30-32, 38, 57, 71, and 74-76; clms. 1-10.
Regarding claim 15, as Azzazy discloses that its UiO-66/DZ is “thoroughly washed with deionized water until no elution of [excess] DZ color was observed”, and that “Deionized water was used for all experiments”, Azzazy’s UiO-66/DZ is considered to be water-stable. See Azzazy at, e.g., par. 57, 69, and 74-75.

Claim 16 is rejected under 35 U.S.C. 102(a)(1) and (a)(2) as anticipated by Azzazy as illustrated by the 2003 Dume Physics World article (“Dume”).1 Regarding claim 16, Azzazy’s MOF binds heavy metals such as bismuth (as Bi(III)). See Azzazy at, e.g., par. 59, 88-89, and 91; Tables 1-2. While Azzazy does not state that bismuth is radioactive, Dume so states. See Dume at, e.g., p. 1.

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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
In considering the obviousness rejections below, the applicant should note that the person having ordinary skill in the art at the time of the effective filing date of the claimed invention has the capability of understanding the scientific and engineering principles applicable to the claimed invention. The references of record in the application reasonably reflect this level of skill.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Azzazy. Regarding claim 2, Azzazy teaches that its heavy metal adsorbent is employed as a solid powder within an aq. phase; the powder, with target analytes adsorbed thereon, is separated from the aq. phase via a filter paper. See Azzazy at, e.g., par. 57-61 and 76. While Azzazy does not specify that its heavy metal adsorbent is employed in/as a packed bed, it nevertheless would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to do so, given the limited number of options for employing its solid powder with aq.-phase target analytes (i.e. suspending the powder as previously detailed, as a fluidized bed via counter-current contact with the aq. phase, or as a packed bed through which the aq. phase is flowed).
See, e.g., Pfizer v. Apotex, 480 F.3d 1348, 82 USPQ2d 1321 (Fed. Cir. 2007) (holding that selecting from a set of 53 anions known to be acceptable for the given purpose would still give rise to a reasonable expectation of success [despite the size of the set]); MPEP 2143 I(E).

Claims 3, 5, 8, 14, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Azzazy in view of the 3/3/15 Zhang et al. Angew. Chem. Article (“Zhang”). Regarding claims 3, 5, 8, and 14, Azzazy’s teachings and suggestions are as detailed above. While Azzazy’s heavy metal adsorbent is not incorporated in a membrane as in claim 3, its MOF (or MOF-ligand composite) is not treated with a binder to adjust particle properties comprising size or hardness as in claims 5 and 14, and its organic ligand is not an organic polymer ligand as in claim 8, these limitations are taught by Zhang.
Zhang teaches that by functionalizing MOF crystals (such as modified UiO-66, also used by Azzazy) with flexible polymer chains via postsynthetic polymerization (“PSP”), a “membrane with good separation capacity for [certain heavy/toxic transition metal] ions in solution” (Azzazy’s aim of removing heavy/toxic transition metals from solution being detailed above) is formed; the membrane also desirably possesses flexibility as opposed to the structural fragility and particle agglomeration features of MOF crystals that are not so polymerically functionalized. See Zhang at, e.g., p. 4333, par. 1 to p. 4334, 1st full par.; Scheme 1; Figs. 1-2. In view of the foregoing, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Azzazy’s overall methodology by functionalizing its MOF crystals with flexible polymer chains to form a membrane as taught by Zhang, to thereby achieve Zhang’s taught advantages of “good separation capacity for [certain heavy/toxic transition metal] ions in solution” and structural flexibility (the polymer functionalization is regarded as a binder vis-à-vis claims 5 and 14 that alters the particles’ size or hardness properties). MPEP 2143 I(G).
Regarding claim 18, Azzazy’s MOF comprises Zr as detailed above vis-à-vis claim 1. See Azzazy at, e.g., par. 71 and 74-75. As Zr is a transition metal with multiple possible valences, it (and thus Azzazy's Zr-comprising MOF) is considered to be redox active as claimed.

Conclusion
Any inquiry concerning this communication or earlier communications from Examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. Examiner can normally be reached on M-F 8:30-5:00 (Central). 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 Examiner by telephone are unsuccessful, Examiner’s supervisor, Anthony Zimmer can be reached on (571) 270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.

/DANIEL BERNS/ May 13, 2025
Primary Examiner
Art Unit 1736

1 NOTE: a rejection under sec. 102 is proper even if an illustrative reference is cited in addition to the primary prior art reference, so long as the illustrative reference is cited merely to show that certain facts were known to be inherent by the primary reference, even though the primary reference may be silent on such facts. See MPEP 2131.01 III.