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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/17/2025 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.
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.
Claim(s) 12 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Martens et al (WO 2015/128496).
Martens et al teaches a silanol compound represented by the formula in Fig 2:
PNG
media_image1.png
346
370
media_image1.png
Greyscale
Martens et al also teaches a silicate octameric cube in Fig 2, which reads on the claimed formula (2) (pg 12). Martens et al also teaches silicate oligomer polyhedral of formula [SiO3/2]n[OH]n with n=6 or 10, i.e. hexamer of formula (1) and decamer of formula (3) (pg 12-13).
Martens et al does not explicitly teach one dimension, or two dimensional or three-dimensional structures.
Martens et al teaches silicate hydrate structures are changed through the use of a whole variety of small manipulations and with knowledge about the synthesis of silicate hydrates makes it perfectly feasible to create a large set of ordered materials in which the oligomers are arranged in different ways; wherein the silicate oligomers in those materials are interconnected through a network of hydrogen bonds; and each of the terminal oxygen or silanol group is hydrogen bonded to a terminal oxygen or silanol group of a different silica cube (pg 13-14). Martens et al teaches silicate oligomers can also be stabilized by solvent stabilization, for example by using solvents with a high dielectrical constant or using solvents capable of forming hydrogen bonds with the terminal oxygens and/or silanols on the silicate oligomers (pg 25). Martens et al teaches silicate hydrates containing ethylenediamine metal-complexes (pg 16); organic groups (Fig 4). Martens et al teaches in Figure 4 a core of Si8O20 surround by a Y shell, wherein y is any organic group. Martens et al also broadly teaches highly reactive oligosiloxysilane compounds can be used as building block(s) in the synthesis of hierarchical materials, these hierarchical materials can be constructed (a) using only of highly reactive oligosiloxysilane compounds, (b) using a combination of silane monomers and highly reactive oligosiloxysilane compounds, (c) using a combination of silane oligomers and highly reactive oligosiloxysilane compounds, (d) using a combination of silicate oligomers and highly reactive oligosiloxysilane compounds (e) using a combination of metal cations, metal anions, metal nan clusters and highly reactive oligosiloxysilane compounds, (f) using a combination of layered silica based materials and highly reactive oligosiloxysilane compounds, (g) using a combination of small reactive organic molecules and highly reactive oligosiloxysilane compounds (pg 4, ln 1-15), which clearly suggests the silicate octameric cube of Fig 2 may be combined with organic molecules to form hierarchical materials. It is also noted that the crystal broadly claims an elemental substance, and the crystal taught by Martens clearly comprises elemental substances, Si and O atoms, as depicted in Fig 2 (pg 15, ln 1-26).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify Martens et al by forming ordered materials in which the oligomers are arranged in different ways, i.e. one dimension, or two dimensional or three dimensional structures; wherein the silicate oligomers in those materials are interconnected through a network of hydrogen bonds, as taught by Martens et al, to produce desired structures. It is noted that Martens et al teaches the same silanol compound, as applicant, and hydrogen bonding adjacent silanol compounds with at least hydroxy group; therefore, the claimed structural shapes would be expected through routine experimentation.
In regards to the limitation “wherein the one-dimensional structure includes any one of the following forms 1 to 20, and the two-dimensional structure and the three-dimensional structure,” Martens et al teaches a silicate octameric cube in Fig 2, which reads on the claimed formula (2) (pg 12). Applicant teaches in paragraph [0021] of the specification the alignment form (see below) and the mode of a hydrogen bond is arbitrary as long as the hydrogen bond is formed in such a way as to allow for the alignment (applicant’s paragraph [00023]); therefore, the hydrogen bonded silanol taught by Martens et al would be expected to be one of forms 9-11.
PNG
media_image2.png
472
260
media_image2.png
Greyscale
In regards to the limitation “in the forms 1 to 20, a positional relationship of hydrogen bonds formed between silanol compounds satisfies any one of the following (i) to (vii):(i) an upper hydroxy forms a hydrogen bond with an upper hydroxy of another silanol compound, another upper hydroxy forms a hydrogen bond with an upper hydroxy of yet another silanol compound,(ii) an upper hydroxy forms a hydrogen bond with a lower hydroxy of another silanol compound, a lower hydroxy forms hydrogen bond with an upper hydroxy of yet another silanol compound,(iii) an upper hydroxy and a lower hydroxy form a hydrogen bond with an upper hydroxy and a lower hydroxy of another silanol compound, another upper hydroxy and another lower hydroxy forms a hydrogen bond with an upper hydroxy and a lower hydroxy of yet another silanol compound,(iv) an upper two hydroxy form a hydrogen bond with a lower two hydroxy of another silanol compound, a lower two hydroxy form a hydrogen bond with an upper two hydroxy of yet another silanol compound,(v) an upper three hydroxy form a hydrogen bond with a lower three hydroxy of another silanol compound, a lower three hydroxy form a hydrogen bond with an upper three hydroxy of yet another silanol compound,(vi) an upper four hydroxy form a hydrogen bond with a lower four hydroxy of another silanol compound, a lower four hydroxy form a hydrogen bond with an upper four hydroxy of yet another silanol compound,(vii) an upper five hydroxy form a hydrogen bond with a lower five hydroxy of another silanol compound, a lower five hydroxy form a hydrogen bond with an upper five hydroxy of yet another silanol compound,” this limitation would be expected because Martens et al teaches a silicate octameric cube in Fig 2, which reads on the claimed formula (2) (pg 12). Applicant teaches in paragraph [0021] of the specification the alignment form (see below) and the mode of a hydrogen bond is arbitrary as long as the hydrogen bond is formed in such a way as to allow for the alignment (applicant’s paragraph [00023]); therefore, the hydrogen bonded silanol taught by Martens et al would be expected have a positional relationship of hydrogen bonds formed between silanol compounds satisfies any one of (i) to (vii) because (i) to (vii) recites every possible positional relationship of hydrogen bonds, thus one of the forms would be necessary to form the alignment.
PNG
media_image2.png
472
260
media_image2.png
Greyscale
Response to Arguments
Applicant's arguments filed 11/17/2025 have been fully considered but they are not persuasive.
Applicant’s arguments that Martens et al does not teach the limitations of claim 12 are noted but not found persuasive. As discussed above in the rejection, Martens et al teaches applicant’s structure (2) and hydrogen bonding; therefore, the hydrogen bonded structure would be expected to at least one of the claimed forms because applicant teaches the forms are arbitrarily formed by hydrogen bonding. Also, the hydrogen bonded silanol taught by Martens et al would be expected have a positional relationship of hydrogen bonds formed between silanol compounds satisfies any one of (i) to (vii) because (i) to (vii) recites every possible positional relationship of hydrogen bonds, thus one of the forms would be necessary to form the alignment.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Verlooy et al (Synthesis and characterization of the new cyclosilicate hydrate (hexamethyleneimine)4·[Si8O16(OH)4]·12H2O” from IDS filed 04/23/2021) teaches Si8O16(OH)4 and columns of hydrogen bonded cubic octamer silicate anions (Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J SONG whose telephone number is (571)272-1468. The examiner can normally be reached Monday-Friday 10AM-6PM.
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, Kaj Olsen can be reached at 571-272-1344. 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.
MATTHEW J. SONG
Examiner
Art Unit 1714
/MATTHEW J SONG/ Primary Examiner, Art Unit 1714
Prosecution Insights