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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 10-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Though applicants’ originally filed supporting disclosure provides support for a chemical scavenger (such as TOPO) that is tethered to the silane material, it does not provide support for a scavenger material/molecule (such as TOPO) that is attached to a separate material/molecule/tethering molecule(note: TOPO is the current elected tethering molecule) that is then attached to the silane material.
This is a new matter rejection.
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 8-11 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.
Claim 8-11 recite the limitation "the plurality of pores" in the last two lines of each claim. There is insufficient antecedent basis for this limitation in the claim.
Claims are confusing as to intent because it can not be determined what aspect of the claim from which these claims depend is being further defined through the reference back to “the plurality of pores” referred to by these claims when the claim from which they depend does not previously refer to their inclusion. Though xerogels do include pores, the reference back to “the plurality of pores” of the claim from which they depend without a plurality of pores or which plurality of pores being referred back to being accounted for by the claim from which these claims depend is ambiguous.
Appropriate correction is required.
Claims 10 and 11 are confusing as to intent because it can not definitively be ascertained how a scavenger (such as TOPO) can be attached to the same material (particularly, the currently elected TOPO) as a tethering group when there is no seen or provided means for such to be connected in such an arrangement. Further, is can not be seen or definitively ascertained what distinction is intended between the make-up of materials that may be compositionally the same but are ascribed the roles of being “scavengers” or “tethering molecules”.
Appropriate correction is required.
For examination purposes, in light of the above pointed to new mater and ambiguity, the “scavenger” and the “tethering molecule” of claims 10 and 11 have been treated as if they may be the same material (such as the currently elected TOPO material).
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.
Claim(s) 1 and 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over HISCONMEZ & ERAL{Journal of Alloys and Compounds article cited by applicants} in view of Nakanishi et al.(9,285,300) and Angelos et al.(Advanced Functional Materials Document).
HISCONMEZ & ERAL disclose silica gels that contain applicants’ elected TOPO material added to their compositional make-up {see abstract and experimental}. Owing to the closeness of the make-up of the silica gel materials of the instant concern and included and elected TOPO material of the instant concern, it is held that it would necessarily follow that the TOPO material of HISCONMEZ & ERAL would be attached to the silane materials of HISCONMEZ & ERAL to any degree that is required by the claims. Regarding claims 10 and 11, HISCONMEZ & ERAL’s disclosure of the TOPO material of the instant concern is sufficient to meet the scavenger, as well as the already pointed to attached/tethering molecule, requirements to any degree that is required by these claims {see also rejections under 35USC112 above}. Further, HISCONMEZ & ERAL’s disclosed materials that are targeted by the TOPO of their disclosure is sufficient to meet the target molecule requirements of claim 11.
HISCONMEZ & ERAL differs from applicants’ claims in that xerogels are not formed from their gels. However, Nakanishi et al. discloses it to be well known to form xerogels from silane materials of the instant concern through removal of liquid from their structure{see abstract, column 13 lines 11-23 and the Examples} and Angelos et al. discloses CTAB to be a well known template material for forming the same{see Sections 1.; 2.; 2.1.4; 3.; 4.1; 4.1.1; 4.2; 4.4 and Figures 1, 2 and 4}. Accordingly, it would have been obvious for one having ordinary skill in the art to have removed the liquid from the gels of HISCONMEZ & ERAL in the manner provided for by Nakanishi et al. and templated on CTAB in the manner provided for by Angelos et al. for the purpose of forming articles useful for separation, purification and concentration in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Regarding claim 7, owing to formation of the xerogels through the combination of HISCONMEZ & ERAL with Nakanishi et al., porosity would necessarily follow.
Regarding claims 8, though pore sizes as claimed are not specifically disclosed through formation of the xerogels provided for by Nakanishi et al., overlap is evident {see column 5 lines 4-14}. Accordingly, it would have been obvious for one having ordinary skill in the art to have formed xerogels having any pore sizes provided for by Nakanishi et al. in forming the xerogels from the combination of HISCONMEZ & ERAL with Nakanishi et al. for the purpose of forming articles useful for separation, purification and concentration in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Regarding claim 9, in that the TOPO material applied to the silica materials are contained on and within the structure of the materials of HISCONMEZ & ERAL, it would necessarily follow that the TOPO material would remain at or on the pore walls of the developing pore structure as liquid is removed.
For the purposes of expedited prosecution, the following is set forth in addition to the above rejection under 35USC103 on considering Angelos et al. in light of the full scope of claim 1:
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Angelos et al.(Advanced Functional Materials Document).
Angelos et al. discloses xerogels comprising cetyltrimethylammonium bromide (CTAB) templated silane material as claimed with a tethering molecule attached to the silane material to the degree required by the claims {see Sections 1.; 2.; 2.1.4; 3.; 4.1; 4.1.1; 4.2; 4.4 and Figures 1, 2 and 4}.
Response to Arguments
Applicants’ arguments on reply have been considered. However, they are unpersuasive.
Election/Restriction requirement has not changed, was made without traverse and is not in need of or appropriately approached for further address at this time.
Previous rejection under 35USC112 is withdrawn in light of applicants’ amendments on reply. However, above new rejections under 35USC112 are set forth in light of applicants’ amendments on reply.
Previous rejection under 35USC103 is withdrawn in light of applicants’ amendments on reply. However, the above new rejection under 35USC103 has been set forth. Applicants’ remarks on reply are addressed in the body of the rejection above.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Buckholz et al. is cited for its disclosure of relevant materials in the related arts.
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 John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN M COONEY/Primary Examiner, Art Unit 1765