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 .
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) 12-15 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:
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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 obvious to one of ordinary skill in the art at the time of filing 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.
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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.
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Referring to claim 13, see remarks above. Also, 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). Marten et al teaches an octamer, like applicant; therefore, the hydrogen bonded octamer taught by Marten et al would be expected to have one of claimed bonding configuration because of the limited possible hydrogen bonding locations, 4 upper and 4 lower bonding locations. For example, hydrogen bonding between two adjacent octamer would require either an upper or lower OH bond to an upper or lower OH of an adjacent octamer; therefore, an upper-upper bond or an upper-lower bond would be obvious to one of ordinary skill in the art. The examiner maintains that Martens et al explicitly teaches creating a large set of ordered materials in which the oligomers are arranged in different ways would have been obvious to one of ordinary skill in the art at the time of filing (pg 13-14); therefore, the claimed structures would have been obvious to one of ordinary skill in the art at the time of filing because there are a limited number of set of possible structures and making different structures is taught to be obvious to one of ordinary skill in the art at the time of filing. Furthermore, regarding the single hydrogen bond, an upper OH can only bond to adjacent upper or an adjacent lower OH, and applicant claims both possibilities.
Referring to claim 14, the same argument applies. Hydrogen bonding an upper to an upper or an upper to a lower would have been obvious to one of ordinary skill in the art at the time of filing to produce an ordered structure. Furthermore, regarding the single hydrogen bond, an upper silanol can only bond to adjacent upper or an adjacent lower, and applicant claims both possibilities (i-2) or (ii-2).
Referring to claim 15, the same argument applies. Hydrogen bonding an upper to an upper or an upper to a lower would have been obvious to one of ordinary skill in the art at the time of filing to produce an ordered structure, which would be expected to have the claimed structure. Furthermore, regarding the single hydrogen bond, an upper silanol can only bond to adjacent upper or an adjacent lower, and applicant claims both possibilities (i-2) or (ii-2). Therefore, the structures would be expected to be sterically aligned because applicant teaches similar structures.
Response to Arguments
Applicant's arguments filed 02/19/2026 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.
Applicant’s argument that not every possibility is claimed because (vi) would exclude different cases is noted but not found persuasive. The examiner agrees that case (vi) would exclude other cases, however applicant claims those other possibilities in cases (i)-(v) and (vii). The examiner maintains that Martens et al the claimed silicate hydrate structure and 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). Therefore, applicant’s argument that certain processing steps must be carried out to obtain the claimed mode between silanol compounds is not persuasive because Martens teaches creating 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. The examiner maintains that one of the “large set of ordered materials” would satisfy the large set of structures claimed by applicant. Furthermore, the simplest structure would be a single hydrogen bond, and a single hydrogen bond would necessarily occur between an upper OH or lower OH of a first silanol and an upper or a lower OH of an adjacent silanol, and bonding to an upper or lower OH. The examiner maintains that are a limited number of possible hydrogen bonding sites and Martens suggest making desired ordered structures; therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Martens by conducting routine experimentations to obtain at least one of the claimed structures.
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 MATTHEW J SONG whose telephone number is (571)272-1468. The examiner can normally be reached Monday-Friday 10AM-6PM.
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MATTHEW J. SONG
Examiner
Art Unit 1714
/MATTHEW J SONG/ Primary Examiner, Art Unit 1714
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