Ex Parte Morris et al

Patent Trial and Appeal Board

Apr 13, 2017

12935642 (P.T.A.B. Apr. 13, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/935,642 11/18/2010 Russel Morris 021305.00332 5927
4372 7590 04/17
ARENT FOX LLP
1717 K Street, NW
WASHINGTON, DC 20006-5344
EXAMINER
PARAD, DENNIS J
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
04/17/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket @ arentfox. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUSSEL MORRIS, CHRISTIAN SERRE,
PATRICIA HORCAJADA CORTES, ALEXANDRE VIMONT,
THOMAS DEVIC, and GERARD FEREY1
Appeal 2016-003824
Application 12/935,642
Technology Center 1600
Before TAWEN CHANG, RYAN H. FLAX, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a porous crystalline metal-organic framework (MOF)
solid loaded with at least one Lewis base gas. Claims 1—8 and 10-15 are on
appeal as rejected under 35 U.S.C. § 103(a). We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 We understand the Real Parties in Interest to be Centre National de la
Recherche Scientifique (CNRS), University of Saint Andrews, Universite de
Versailles - Saint-Quentin-en-Yvelines, and Ensi Caen. Br. 1.
Appeal 2016-003824
Application 12/935,642
STATEMENT OF THE CASE
The Specification states “[t]he MOF solids of the present invention
are capable of adsorbing and releasing gases of biological interest in a
controlled manner. They can be used in the pharmaceutical field and/or for
applications in the cosmetics field. They can also be used in the food
industry.” Spec. 1:13—18.2
The appealed claims can be found in the Claims Appendix of the
Appeal Brief. Claim 1 is the sole independent claim, is representative, and
reads as follows:
1. A porous crystalline MOF solid loaded with at least one Lewis
base gas selected from the group consisting of NO, CO and H2S,
at least a part of which coordinates with M, said solid comprising
a three-dimensional succession of units having the following
formula (I):
MmOkXlLp (I)
in which:
• each occurrence of M independently represents an ion of a
transition metal Mz+ wherein M is Fe and in which z is 2 or 3,
wherein approximately 15 to 20% of the Fe is reduced from Fe3+
to Fe2+;
• m is 1 to 12;
• k is 0 to 4;
• 1 is 0 to 18;
• p is 1 to 6;
2 When citing to the Specification (Spec.) herein, we refer to the English
translation of International Patent Application No. PCT/FR2009/000381
dated Oct. 11, 2010.
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Application 12/935,642
• X is an anion chosen from the group comprising OH', Cl", F,
I", Br, SO42', NO3", CIO4", PF6", BF4', R-(COO)n" where R is as
defined below, R^COOV, R^SC^V, R^PChy, where R1 is a
hydrogen, a linear or branched, optionally substituted, Ci to C12
alkyl, or an aryl, and where n is an integer from 1 to 4;
• L is a spacer ligand comprising a radical R comprising q
0
O
II *
carboxylate groups *—C O 5 where
- q is 2, 3, 4, 5 or 6;
- * denotes the point of attachment of the carboxylate with
the radical R;
- # denotes the possible points of attachment of the
carboxylate to the metal ion;
- R represents:
(i) a Ci -12 alkyl, C2-12 alkene or C2-12 alkyne
radical;
(ii) a fused or nonfused, monocyclic or
polycyclic aryl radical containing 6 to 50
carbon atoms;
(iii) a fused or nonfused, monocyclic or
polycyclic heteroaryl containing 1 to 50
carbon atoms;
(iv) an organic radical comprising a metal
element chosen from the group comprising
ferrocene, porphyrin and phthalocyanin;
the R radical being optionally substituted with one or more
R2 groups, independently chosen from the group comprising
Ci-10 alkyl; C2-10 alkene; C2-10 alkyne; C3-10 cycloalkyl; C1-10
heteroalkyl; C1-10 haloalkyl; C6-10 aryl; C3-20 heterocyclic;
(Ci-io)alkyl(C5-io)aryl; (Ci-io)alkyl(C3-io)heteroaryl; F; Cl; Br; I;
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Appeal 2016-003824
Application 12/935,642
-N02; -CN; -CF3; -CH2CF3; -OH; -CH2OH; -CH2CH2OH; -NH2;
-CH2NH2; -NHCHO; -COOH; -CONH2; -S03H; -CH2S02CH3;
-P03H2; or a -GRG1 function in which G is -0-, -S-, -NRG2-;
-C(=0)-, -S(=0)-, -SO2-, -C(=0)0-, -C(=0)NRG2 -, -0C(=0)-,
-NRG2C(=0)-, -0C(=0)0-, -0C(=0)NRG2 -, -NRG2C(=0)0-,
-NRG2C(=0)NRG2 - or -C(=S)-, where each occurrence of RG1 is,
independently of the other occurrences of RG1, a hydrogen atom;
or a linear, branched or cyclic, optionally substituted,
Ci-12 alkyl, Ci-12 heteroalkyl, C2-10 alkene or C2-10 alkyne
function; or a C6-10 aryl, C3-io heteroaryl, C5-10 heterocyclic,
(Ci-io)alkyl(C5-io)aryl or (Ci-io)alkyl(C3-io)heteroaryl group in
which the aryl, heteroaryl or heterocyclic radical is optionally
substituted; or else, when G represents -NRG1 , it forms together
with the nitrogen atom to which it is bonded, a heterocycle or a
heteroaryl which is optionally substituted;
wherein the pores of the MOF solid are empty of solvent
and are loaded with said at least one Lewis gas base.
Br. 16—17 (Claims App’x). Claim 15 is also relevant and reads as follows:
15. The solid according to claim 14, in which the organic surface
agent is selected from the group consisting of:
- an oligosaccharide, for instance cyclodextrins,
- a polysaccharide, for instance chitosan, dextran, fucoidan,
alginate, pectin, amylase, starch, cellulose or xylan,
- a glycosaminoglycan, for instance hyaluronic acid or
heparin,
- a polymer, for instance polyethylene glycol (PEG),
polyvinyl alcohol or polyethyleneimine,
- a surfactant, for instance pluronic or lecithin,
- vitamins, for instance biotin,
- coenzymes, for instance lipoic acid,
- antibodies or antibody fragments,
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Application 12/935,642
- amino acids or peptides.
Id. at 20.
The following rejections are on appeal:
Claims 1—8 and 10-14 stand rejected under 35 U.S.C. § 103(a) over
Morris3 and Xie.4 Final Act. 2.
Claiml5 stands rejected under 35 U.S.C. § 103(a) over Morris, Xie,
and Kwon.5 Id. at 6.
DISCUSSION
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer. We find the Examiner has established that the claims would have
been obvious over Morris and Xie, and, in the case of claim 15, also Kwon.
Appellants have not produced evidence showing, or persuasively argued,
that the Examiner’s determinations of obviousness are incorrect. Only those
arguments made by Appellants in the Brief have been considered in this
Decision. Arguments not presented in the Brief are waived. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015). Appellants argue all claims together, except 15,
and we have identified claim 1 as representative. Therefore, all claims, but
15, fall with claim 1.
3 International Patent Application Pub. No. WO 2008/020218 Al, published
February 21, 2008 (hereinafter “Morris”).
4 Linhua Xie et al., Mixed-ValenceIron(II, III) Trimesates with Open
Frameworks Modulated by Solvents, 46 INORG. Chem. 7782—88 (2007)
(hereinafter “Xie”).
5 U.S. Patent Application Pub. No. US 2005/0179012 Al, published August
18, 2005 (hereinafter “Kwon”).
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Application 12/935,642
The Examiner determined that all the elements of claim 1 are taught
by Morris, except specifically the limitation, “an ion of a transition metal
Mz+ wherein M is Fe and in which z is 2 or 3, wherein approximately 15 to
20% of the Fe is reduced from Fe3+ to Fe2+,” which the Examiner found to
be taught by Xie. Final Action 2-4. Morris and Xie are directed to the same
technological field and the Examiner determined that the skilled artisan
would have looked to Xie to teach that the Fe3+ and Fe2+ disclosed by Morris
would be provided together and in the amounts/percentages recited by claim
1 because (a) Xie teaches that these Fe ions, at these valences, are
particularly useful as active sites in porous metal-organic frameworks for
biological systems and (b) also because Xie teaches “that the valences of
iron atoms can be modulated” to achieve desired characteristics. Id. at 4.
Appellants argue that it is not possible to combine Morris and Xie
because Xie indicates that heating will destroy its MOF frameworks and
Morris requires heating to activate its MOF (i.e., to remove unwanted
material, e.g., solvent, from its pores). Br. 11. Appellants’ argument is not
persuasive because heating is just one way Morris teaches MOF activation;
other Morris-disclosed methods of activation include reducing pressure,
exposure to electromagnetic radiation, exposure to other solvents, and
physical displacement by the gas molecules sought to be held in the pores.
See Morris 8—11.
Appellants argue Xie teaches away from the invention because it
states “Fe2+ is air-sensitive and readily changes into Fe3+, and Fe3+has a
strong tendency to undergo hydrolysis into a stable polymeric hydrous iron
oxide even in a strongly acidic environment.” Br. 12 (citing Xie 7783).
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Application 12/935,642
The test of obviousness is “whether the teachings of the prior art,
taken as a whole, would have made obvious the claimed invention.” In re
Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). Further, a finding of “teaching
away” requires a reference to actually criticize, discredit, or otherwise
discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
While Xie indicates that “investigations of ion-organic frameworks
are less common compared with those of zinc and copper” because of an air-
sensitivity, etc., Xie nevertheless reports on a study of Fe ions with open
frameworks, conducted in view of advantages of Fe in biological systems.
Xie 7783 (left col.). Moreover, Xie demonstrates success in making open
iron-organic frameworks having a “character [that] may allow modulations
of iron-organic frameworks to obtain porous materials with walls containing
electron-active sites and special sized and shaped pores, which are of great
importance in many potential applications . . . .” Id. at 7788. Thus, we do
not find Xie, as a whole, discourages the use of iron in MOF frameworks.
Indeed, to the contrary, Xie, provides motivation to use iron in such
structures.
Appellants argue that even if Morris and Xie were combined, they
would not teach “the presently-claimed MOF solid in which approximately
15 to 20% of the Fe is reduced from Fe3+ to Fe2+.” Br. 13. This is not
persuasive.
Xie expressly discloses an Fe3+: Fe2+ ratio of 78:22 and also that,
The valences of iron atoms are changeable in solvothermal
conditions; thus, the frameworks can be readily affected by
solvents (or possibly some other factors) in the process of
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Application 12/935,642
crystallization. This character may allow modulations of iron-
organic frameworks to obtain porous materials with walls
containing electron-active sites and special sized and shaped
pores, which are of great importance in many potential
applications, such as gas storage and catalysis.
Xie 7787 (left col.), 1788 (right col.).
Our reviewing court has held,
In cases involving overlapping ranges, we and our predecessor
court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness. . . . We have also
held that a prima facie case of obviousness exists when the
claimed range and the prior art range do not overlap but are close
enough such that one skilled in the art would have expected them
to have the same properties.
In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (note, all ranges in
Peterson overlapped, but close ranges are nevertheless obvious).
We find that the 22% Fe2+ disclosed by Xie in the above-identified
ratio discloses “approximately 15 to 20%,” as recited by claim 1 (emphasis
added), or renders the recited 20% obvious. Xie is clear that the percentage
of Fe2+ is a results effective variable such that its optimization would be
merely routine and obvious.
Regarding claim 15, directed to providing an organic surface agent,
e.g., the natural polymer dextran, at the surface of the MOF of claim 1, the
Examiner added Kwon to the prior art combination because Morris teaches
that its monoliths can be made by mixing a powdered organic framework
with a suitable binder, e.g., a polymeric binder, and Kwon disclosed that iron
(Fe2+ and Fe3+) oxides can be mixed with an organic binder, such as dextran,
to form a paste. See Final Action 7; Ans. 20-21; Morris 15; Kwon | 64.
Appellants argue that in the claimed invention, “dextran is used as a surface
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Application 12/935,642
agent,” and the “dextran . . . used in order to form a mixed matrix” in Kwon
“is completely different” than dextran used “to modulate the external surface
properties of the material to adapt it for therapeutic administration.” Br. 14.
We disagree with Appellants’ analysis.
As the Examiner identified, if one reference discloses a solution to a
problem that is reasonably pertinent to a problem of another reference, it is
obvious to combine the two for that purpose. In re Oetiker, 977 F.2d 1443,
1447 (Fed. Cir. 1992). Moreover, it is obvious to those skilled in the art to
substitute one known equivalent for another. See In re Omeprazole Patent
Litigation, 483 F.3d 1364, 1374 (Fed. Cir. 2007) (“[T]his court finds no . . .
error in [the] conclusion that it would have been obvious to one skilled in the
art to substitute one ARC [alkaline reactive compound] for another.”). Here,
the Examiner has established that the dextran of Kwon used for a binder
would have been obvious to use as a binder for the monolithic MOF
structures of Morris.
We note that claim 15 does not recite any particular function for the
“organic surface agent,” just that the MOF of claim 1 comprises, “at its
surface at least one organic surface agent” than can be dextran. We note that
the Specification teaches that the “organic surface agent” can either partially
or totally cover the surface of the MOF, and may “be incorporated by
entanglement during the manufacture of the MOF solids.” Spec. 21:19—33.
As noted above, Morris teaches a binder is incorporated with the MOF
during the manufacture of the MOF solid. Morris 15. We find therefore,
implicit in the Examiner’s rejection (Ans. 7, 20), that use of Kwon’s dextran
as the binder in Morris would result in at least some of the binder being at
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Application 12/935,642
the surface of the MOF that includes iron due to its entanglement during the
manufacture of that solid. We find that the Examiner properly presented a
prima facie case of unpatentability concerning claim 15, Oetiker, 977 F.2d at
1447, and Appellants have not presented evidence or persuasive argument
establishing the Examiner’s determination is incorrect.
SUMMARY
The rejections under 35 U.S.C. § 103(a) are affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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