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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/15/2026 has been entered.
Claim Rejections - 35 USC § 112
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 9, 10 and 18 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.
Claims 9 & 10 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 claims.
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 9 recites the limitation "the tethering molecule" in the first line of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim is confusing as to intent because it can not be determined what aspect of the claim from which this claim depends is being further defined through the reference back to “the tethering molecule” referred to by this claim when the claim from which it depends does not previously refer to the inclusion of such an element. The lack of any previous reference to such an element by claim 9 or the claim from which claim 9 depends or accounting for it otherwise renders the claim ambiguous.
Appropriate correction is required.
In light of the above for examination purposes, claim 9 has been treated as not further limiting claim 1 from which it depends.
Claim Interpretation
In light of a lack of any further distinguishing definition by the claims, claims have been treated as if the chemical scavenger and/or any tethered/attached molecule/material that may be set forth by the claims 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, 8-10 and 19-21 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 19-21, 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}.
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 claims 8 and 20, 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 claims 9 & 21, 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.
Claim(s) 18 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) as applied to claims 1, 8-10 and 19-21 above, and further in view of Guo et al.(Molecules document).
HISCONMEZ & ERAL in combination with Nakanishi et al. and Angelos et al. differs in that MTMS-DMDMS is not particularly employed in the making of prepared gel materials of the instant concern. However, Guo et al. discloses MTMS-DMDMS to be well known silica gel materials utilized in closely related preparations of the instant concern {see abstract as well as the entire document}. Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized the MTMS-DMDMS silica gel materials of Guo et al. as the silica gel materials used in the preparations formed through the combination of HISCONMEZ & ERAL, Nakanishi et al. and Angelos et al. for the purpose of achieving acceptably developed silica gel based products with recognized good flexibility, hydrophobicity and thermal insulation characteristics in order to arrive at the products of applicants’ claim with the expectation of success in the absence of a showing of new or unexpected results.
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 new claim 19:
Claim Rejections - 35 USC § 102
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) 19 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 material constituting a chemical scavenger to the degree required by the claims attached/tethered 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.
Any previous rejection not maintained above is withdrawn in light of applicants’ amendments to the claims. Additionally, new rejections under 35USC112 are set forth above in light of applicants’ amendments to the claims.
To the degree that applicants’ arguments concerning 35USC112 that are made on reply may be considered regarding the remaining claims, it is held that commensurate and/or reflective language has not been introduced for claims 9 and 10, and no arguments have been made to indicate why a similar amendment is not required for these claims. Accordingly, rejection of these claims, including claim 18 further dependent therefrom, is appropriately maintained.
Regarding the rejection(s) under 35USC102, rejection of claim 1 has been withdrawn in light of applicants’ amendment to the claim. The new, expeditious rejection of claim 19 is maintained to be appropriately applied as set forth above. To the degree that applicants’ arguments on reply are applicable, it is held and maintained that the limits of claim 19 are not limited in the manner referred to on reply regarding claim 1. Further, the two disclosures within the same reference are sufficient in their anticipation, and this position has not been refuted in fact.
Regarding arguments concerning the rejection under 35USC103, it is held that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
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. 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.
/JOHN M COONEY/ Primary Examiner, Art Unit 1765
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