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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/14/2025 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) 1-13, 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20180009969A1, hereinafter ‘Kim’, in view of Rao et al. (Organic Surface Modification of TEOS Based Silica Aerogels Synthesized by Co-Precursor and Derivatization Methods, Journal of Sol-Gel Science and Technology, 20004), hereinafter ‘Rao’.
Regarding Claim 1, Kim discloses an aerogel blanket ([00022]) comprising:
an aerogel structure ([0026]); and
a substrate for a blanket ([0022]), wherein:
the aerogel structure includes a three-dimensional network structure formed by a plurality of aerogel particles aggregated or bonded ([0026]);
the aerogel structure is formed by a process including gelling a silica sol that includes a silica precursor composition ([00033]);
and which further includes a hydrophobizing agent and water ([0033]).
Further Regarding Claim 1, regarding, as claimed, an average aerogel structure size (D50) measured by spraying 10 ml of dry powder of the aerogel structure with air at a pressure of 15 psi, and using laser diffraction of 780 nm wavelength is 5 µm to 10 µm, Kim teaches an aerogel where the average particle diameter (D50) is 5 µm to 80 µm as measured using laser diffraction (see [0028]). As set forth in MPEP 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare an aerogel blanket as taught by Kim where the D50 is in any workable or overlapping range with 5 µm to 80 µm including the claimed range of 5 µm to 10 µm.
Further regarding D50 measured by spraying 10 ml of dry powder of the aerogel structure with air at a pressure of 15 psi and using laser diffraction of 780 nm wavelength, D50 is an intrinsic physical property of the aerogel particles regardless of the measurement conditions. A person of ordinary skill in the art would reasonably expect that aerogel particles having D50 as measured by laser diffraction as taught by Kim to be conducted under laser diffraction conditions where the D50 is accurately measured and the same as the claimed D50.
Further regarding Claim 1, while Kim discloses surface hydrophobization for the TEOS based ([0033]) aerogel may be carried out using common methods, and specifically, may be carried out using any one of surface modifiers such as silane-based compounds ([0035]), Kim does not disclose that the hydrophobizing agent includes trimethylethoxy silane (TMES) as claimed.
Rao discloses the organic surface modification of TEOS based silica aerogels (title). A person of ordinary skill in the art would have recognized Rao as analogous to Kim, as both references are drawn to the same field of endeavor as the claimed invention, the production of TEOS based, surface modified hydrophobic aerogels - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Further, Rao discloses the use of a co-precursor method for production of a hydrophobic aerogel, in which a hydrophobic reagent is added to the silica sol prior to gelation, resulting in a hydrophobic aerogel (2. Experimental Procedures). Further, Rao discloses the use of TMES as a hydrophobic reagent, and discloses the use thereof in the disclosed method is associated with zero shrinkage of the formed gel, while still exhibiting a high contact angle, a measurement that indicates the hydrophobicity of the produced gel – the TMES co-precursor gel notably has the highest reported contact angle of all performed co-precursor trials, indicating that TMES provides a significant hydrophobic modification to the gel (Table 1). Given this, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize a hydrophobic reagent comprising TMES in the process of Kim. Rao has shown that TMES successfully hydrophobically treats the produced gel and provides a great amount of hydrophobization, and therefore one of skill in the art would have expected predictable results in the use of TMES in the process of Kim.
Further regarding the product by process limitations, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974).
Here, as applied above, Kim and Rao disclose an aerogel having the structure of silica aerogel that is hydrophobically modified with TMES. The instant claim comprising gelling a silica sol that includes a silica precursor composition and a catalyst composition including TMES hydrophobizing agent implies production of an identical structure of silica aerogel modified with TMES. In the event any slight differences can be shown between the TMES modified aerogels, the burden is on Applicant to provide concrete evidence that the difference exhibits unexpected properties compared to the prior art Kim and Rao. See Ex parte Gray, 10 USPQ2d 1922. Regarding Claim 2, Kim discloses the aerogel structure has a spider web shape having a three-dimensional network structure formed by a plurality of aerogel particles aggregated or bonded, wherein the spider web shape is a structure having a network of aerogel filaments interconnected to one another ([0026]: “the aerogel is a particulate porous structure including a plurality of micropores, and may have a microstructure forming a mesh-type cluster by the bindings of nano-sized first particles…that is, a three-dimensional network structure.” This is considered a spider web shape as claimed).
Regarding Claim 3, Kim discloses the average aerogel structure size (D50) is 6 pm to 7 pm (the structure size of Kim overlaps with the instant claimed range, as shown above).
Regarding Claim 4, Kim discloses the aerogel blanket has the aerogel structure formed inside and on the surface of the substrate for a blanket ([00028]: the aerogel penetrates the surface of the substrate).
Regarding Claim 5, Kim discloses the aerogel particles comprise a hydrophobic group on the surface of the inside of the aerogel particles ([0035]: surface hydrophobization is disclosed).
Regarding Claim 12, Kim discloses the aerogel blanket has a room temperature (23+5°C) thermal conductivity of 30.0 mW/mK or less ([0076]: the thermal conductivity (most commonly reported as room temperature values) is preferably 18 to 27 mW/mK).
Regarding Claims 6-11, 13, 16-17, Kim as modified above meets the following structural requirements of the claims, as set forth above: the average aerogel structure size; the room temperature thermal conductivity; the aerogel particles comprise a hydrophobic group on the surface of the inside of the inside of the aerogel particles.
Further regarding Claims 6-11, 13, 16-17, Kim as modified above is silent regarding each and every physical property of the produced aerogel, including its flexural modulus, compression strength, tensile strength, and moisture impregnation rate as required by the instant claims; however, each of these physical properties can be derived from the structure and composition of an aerogel. Notably, the aerogel produced by Kim as modified above meets each of the structural requirements of Claim 1 – both the instant claim and the prior art product have a three-dimensional network structure formed by a plurality of bonded aerogel particles, each has an average aerogel structure size within 5 and 10 um, both products are produced by a process including gelling a silica sol that includes a silica precursor composition, both include a hydrophobization agent and water, and both include the use of TMES as a hydrophobizing agent, as shown above.
Further, according to [0023] of the as-filed instant specification, when an aerogel is
formed by a gelation step, the presence and concentration of a surface modifier affects the
formation of the aerogel structure, so that aerogel structures are not tangled with each other to
allow the formation of a smaller structure form, which corresponds to the claimed average structure size. Additionally, [0027] states that the hydrophobizing agent affects the aerogel structure such that smaller aerogel structures form than would normally form if gelation and surface modification occur separately.
Given the similarities of the composition between the prior art and the claimed invention, the instant fact pattern resembles that of In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), wherein the court held that “…where the claimed and prior art products are identical or substantially identical in structure or composition…a prima facie case of either anticipation or obviousness has been established.”
Furthermore, it is noted that the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith, as held by the court in In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) – as such, determinations of properties not disclosed by the prior art are made based on a preponderance of the evidence provided in both the prior art and the instant disclosure.
Therefore, based on the preponderance of evidence found in the disclosure of Kim, Rao, and the instant specification, with particular attention paid to the mutual structural features between them, there is a reasonable prima facie basis to conclude that the aerogel of Kim as modified would exhibit the same or nearly the same properties, including the same or nearly the same flexural modulus, compression strength, tensile strength, and moisture impregnation rate, absent evidence to the contrary. The burden of proof now shifts to the Applicant to show that the prior art products do not necessarily or inherently possess the characteristics of the claimed product - see MPEP 2112(V).
Regarding Claim 15, Kim does not disclose that the hydrophobizing agent is activated before mixing the catalyst composition with the silica precursor composition; however, this is a product-by-process limitation. Further regarding the product by process limitations, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974).
Here, as applied above, Kim and Rao disclose an aerogel having the structure of silica aerogel that is hydrophobically modified with TMES. The instant claim comprising gelling a silica sol that includes a silica precursor composition and a catalyst composition including TMES hydrophobizing agent implies production of an identical structure of silica aerogel modified with TMES. In the event any slight differences can be shown between the TMES modified aerogels, the burden is on Applicant to provide concrete evidence that the difference exhibits unexpected properties compared to the prior art Kim and Rao. See Ex parte Gray, 10 USPQ2d 1922.
Response to Arguments
Applicant’s arguments with respect to the rejection of the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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LOGAN LACLAIR
Examiner
Art Unit 1738
/L.E.L./ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738