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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/22/2025 has been entered.
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 (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.
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.
Claims 1-2, 5-13, 16-18, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Koichi et al. (JP H06246175 A) (Koichi) in view of Garcia-Gonzalez et al. (“Supercritical drying of aerogels using CO2: Effect of extraction time on the end material textural properties”, 2012) (Garcia-Gonzalez).
Regarding claims 1 and 22, Koichi teaches a catalyst-supporting inorganic porous material and a method for producing the same (Koichi, Title; Abstract), wherein the inorganic porous material is obtained by drying a swellable layered compound in a swollen state by a supercritical drying method (Koichi, p. 2, Paragraph 2) and the swellable layered compound may be synthetic smectite (Koichi, p. 2, Paragraph 6) and swelling inorganic layers may be phyllosilicate minerals such as synthetic mica (Koichi, p. 2, Paragraph 7) (i.e., a method for drying a synthetic phyllosilicate).
Further, Koichi teaches the swellable layered compound is mixed with a solvent such as water, ethanol, and methanol (Koichi, p. 2, Paragraphs 8 and 9) (i.e., providing a mixture of the synthetic phyllosilicate and an organic solvent or a non-organic solvent that is miscible with carbon dioxide in a reaction container).
Koichi further teaches when the swellable layered compound contains water, for example, by substituting with ethanol, supercritical drying under supercritical conditions of ethanol (p. 3, Paragraph 8), and further, there is a method in which carbon dioxide in the supercritical state is gradually added to ethanol, and the carbon dioxide in the supercritical state is replaced while drying (p. 3, Paragraph 9) (i.e., combining the mixture with carbon dioxide).
Further, Koichi teaches the supercritical drying in substances such as carbon dioxide results in the prevention of condensation of the inorganic pillar material in the swellable layer compound and aggregation of the swellable layered compounds, as well as maintaining the structure to obtain an inorganic porous material with a larger pore volume (Koichi, p. 3, Last paragraph) (i.e., holding a temperature and pressure of the reaction container above a critical point of the carbon dioxide).
Although there are no disclosures on the supercritical drying being for up to about 120 minutes or up to about 60 minutes (i.e., claim 22) as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the drying times, including over the amounts presently claimed, in order to achieve the desired pore volume of the obtained porous inorganic material without condensation of the inorganic pillar material in the swellable layer compound and aggregation of the swellable layered compounds, and thereby arrive at the claimed invention.
However, Koichi does not explicitly teach depressurizing the reaction container under an isothermal condition to atmospheric pressure and cooling at atmospheric pressure.
With respect to the difference, Garcia-Gonzalez teaches supercritical drying of aerogels using CO2 (Garcia-Gonzalez, Title; Abstract), wherein after supercritical drying, the pressure is released to atmospheric pressure, and the temperature is decreased until room temperature (Garcia-Gonzalez, p. 299, Col. 1, Paragraph 1), i.e., temperature remains the same until depressurized, then the temperature is decreased to room temperature wherein this would naturally cool the dried product (i.e., depressurizing the reaction container under an isothermal condition to atmospheric pressure and cooling at atmospheric pressure).
As Garcia-Gonzalez expressly teaches, the purpose of releasing the pressure and decreasing the temperature is to collect the dried sample (Garcia-Gonzalez, p. 299, Col. 1, Paragraph 1).
Garcia-Gonzalez is analogous art as it is drawn to supercritical drying of gels using carbon dioxide (Garcia-Gonzalez, Title; Abstract).
In light of the motivation of releasing the pressure and lowering the temperature after supercritical drying as disclosed by Garcia-Gonzalez, it therefore would have been obvious to one of ordinary skill in the art to modify the supercritical drying method of Koichi by releasing the pressure and lowering the temperature after supercritical drying in order to collect the dried phyllosilicate from the chamber, and thereby arrive at the claimed invention.
Regarding claim 2, Koichi, in view of Garcia-Gonzalez, teaches the method of claim 1, wherein carbon dioxide in the supercritical state (i.e., liquid carbon dioxide) is added to the mixture (p. 3, Paragraphs 8 and 9) (i.e., combining the mixture with liquid carbon dioxide).
Regarding claims 5, 9, 10, and 16, Koichi, in view of Garcia-Gonzalez, teaches the method of claim 1, wherein the swellable layer compound (i.e., synthetic phyllosilicate) is mixed with water (i.e., aqueous solvent) and ethanol (i.e., organic solvent; an alcohol) (Koichi, p. 3, Paragraph 8).
Regarding claims 6 and 17, Koichi, in view of Garcia-Gonzalez, teaches the method of claim 1, wherein the swellable layered compound is a phyllosilicate such as synthetic smectite and synthetic mica (Koichi, p. 2, Paragraphs 6 and 7). While Koichi does not explicitly state the making of synthetic smectite and mica, as they are used in the method, it is clear that the synthetic phyllosilicates were made through a process known to a person of skill in the art.
Regarding claims 7, 11, 12, and 13, Koichi, in view of Garcia-Gonzalez, teaches the method of claim 1, wherein a water repellent treatment of the inorganic porous material is performed by functionalizing at least one of a halogen group, an amino group, an imino group, a carboxyl group, and an alkoxide group using a water repellent material such as trimethoxysilane (i.e., claim 13, a trioxysilane) (Koichi, p. 2, Paragraphs 4-6) (i.e., claim 7, adding a functionalization agent to the mixture prior to combining with a solvent; claim 12, hydrophobic functionalization agent; claim 11, miscible or soluble in the organic solvent).
Regarding claims 8 and 18, Koichi, in view of Garcia-Gonzalez, teaches the method of claim 1, wherein the swellable inorganic layered compound may be phyllosilicate minerals such as synthetic smectite and synthetic mica (Koichi, p. 2, Paragraphs 6 and 7).
Regarding claim 21, Koichi, in view of Garcia-Gonzalez, teaches the method of claim 1, but does not explicitly state the dried phyllosilicate has: a BET surface area equal to or greater than about 400 m2/g; a d90/d10 equal to or less than about 10; a d50 equal to or less than about 600 nm; and a shape factor equal to or less than about 50.
However, as Koichi teaches the method that is substantially identical to the method of drying a synthetic phyllosilicate as presently claimed, it is clear that dried phyllosilicate of Koichi would also have the claimed properties of a BET surface area equal to or greater than about 400 m2/g; a d90/d10 equal to or less than about 10; a d50 equal to or less than about 600 nm; and a shape factor equal to or less than about 50.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Response to Arguments
Applicant primarily argues:
“According to the Office Action, Koichi teaches a catalyst-supported inorganic porous material where the inorganic porous material is obtained by drying a swellable layered compound in a swollen state by a supercritical drying method. Office Action at 3. Additionally, the Office Action asserts that Koichi teaches the supercritical drying in substances such as carbon dioxide prevents condensation of the inorganic pillar material in the swellable layer compound and aggregation of the swellable layered compounds. Id. at 4. The Office Action acknowledges that Koichi is silent regarding supercritical drying for up to about 120 minutes, but nonetheless contends that "it would have been obvious to one of ordinary skill in the art to vary the drying times...in order to achieve the desired pore volume of the obtained porous inorganic material without condensation of the inorganic pillar material in the swellable layer compounds and aggregation of the swellable layered compounds, and thereby arrive at the claimed invention." Id. at 5. The Office Action further acknowledges that Koichi is silent regarding depressurizing the reaction container under an isothermal to atmospheric pressure and cooling at atmospheric pressure and relies on Garcia-Gonzalez to cure Koichi's deficiency.
Applicant respectfully disagrees. Koichi and Garcia-Gonzalez are not combinable to arrive at Applicant's pending claims.
First, Koichi and Garcia-Gonzalez are non-analogous art. Koichi pertains to
supercritical drying of phyllosilicates whereas Garcia-Gonzalez pertains to supercritical drying of aerogels, which are fundamentally different materials from a phyllosilicate. Therefore, a skilled artisan would not expect Garcia-Gonzalez's supercritical drying conditions for an aerogel to be at all relevant for a phyllosilicate.”
Remarks, p. 7-8
The examiner respectfully traverses as follows:
Firstly, while Garcia-Gonzalez is not drawn to supercritical drying of phyllosilicates, Garcia-Gonzalez is not relied upon to teach the supercritical drying process, but rather the process required to remove the dried product after supercritical drying, namely depressurizing the reaction container under an isothermal condition to atmospheric pressure and cooling at atmospheric pressure. This process of depressurizing and cooling, while not explicitly stated by Koichi, would be considered necessary to a person of ordinary skill in the art in order to collect the dried product safely, and therefore, there is proper motivation to combine Koichi and Garcia-Gonzalez.
Therefore, Koichi and Garcia-Gonzalez are considered analogous art as they are both drawn to supercritical drying.
Applicant further argues:
“Second, even if Garcia-Gonzalez were relevant to forming synthetic silicates, Garcia-Gonzalez teaches away. Garcia-Gonzalez teaches that supercritical drying times of less than 60 minutes caused "cracks and shrinkage" in the dried material and supercritical drying times between 60 minutes and 120 minutes results in "plenty of cracks" in the dried silicate aerogel material, discouraging the ordinary artisan from using drying times of 120 minutes or less with silicate materials. Garcia-Gonzalez at page 7 (left column). Thus, Garcia-Gonzalez teaches away from supercritical drying times of "up to about 120 minutes "recited in Applicant's claims.
Koichi does not cure these deficiencies, because it is silent on supercritical drying times that are shorter than 8 hours. Nothing in Koichi teaches or suggests a shorter drying time, let alone supercritical drying for no longer than about 120 minutes. Therefore, a skilled artisan would not have been motivated to modify Koichi with Garcia- Gonzalez because neither reference teaches or suggests that Applicant's claimed supercritical drying times would provide an intact dried material. In contrast, Applicant has demonstrated that CO2 supercritical drying for up to 120 minutes (e.g., a one-hour drying time) can achieve a dried phyllosilicate material. Only with Applicant's specification in hand would a skilled artisan have been able to make this determination, especially when Garcia-Gonzalez expressly discourages supercritical drying times of 120 minutes or less and Koichi is entirely silent on any supercritical drying time shorter than 8 hours.”
Remarks, p. 8-9
The examiner respectfully traverses as follows:
Firstly, Garcia-Gonzalez is only used as teaching reference in order to teach depressurizing the reaction container under an isothermal condition to atmospheric pressure and cooling at atmospheric pressure (Garcia-Gonzalez, p. 299, Col. 1, Paragraph 1), not to teach the supercritical drying time. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Secondly, as applicant already stated, Garcia-Gonzalez is drawn to the supercritical drying of aerogels, which are fundamentally different from phyllosilicates. Therefore, whether or not the supercritical drying times of less than 60 minutes are detrimental to the supercritical drying of aerogels in Garcia-Gonzalez does not concern the supercritical drying of phyllosilicates in Koichi, and would not be considered teaching away from a drying time of 60 minutes or less.
Further, it is noted that while Garcia-Gonzalez does not disclose all the features of the present claimed invention, Garcia-Gonzalez is used as a teaching reference, namely to teach depressurizing the reaction container under isothermal condition to atmospheric pressure and cooling at atmospheric pressure, in order to collect the dried product, i.e., phyllosilicate, from the chamber, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Conclusion
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/C.M.C./Examiner, Art Unit 1732 /CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732