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 § 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.
Claims 9-10, 12 and 21-28 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.
Adding elements from claim 11 to claim 9 has created antecedents issues. Examples: an oily phase, an aqueous phase, an activation solution, an aluminosilicate source, a surfactant, at least one solid compound different from…, etc. They appear as if they are different from what are already introduced in steps a1-a4.
Claim Rejections - 35 USC § 103
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) 9-10, 12 and 21-28 are rejected under 35 U.S.C. 103 as unpatentable over Seo et al (US 2013/0055924)
Seo teaches a process of blending a geopolymer like aluminosilicates [0009] source (like metakaolin) and source of silica (like fumed silica: examples) in water and an organic phase like mineral oil [0006, examples], vegetable oil, etc., and adding solid particles ([0007], [0010],) then mixing with shear [0011], then removing the solvent mixture (examples.) The solid particles are listed in [0010]. Examples have NaA zeolite, gold nanoparticles and TiO2 nanoparticles as the compound. The process also adds surfactant as optional in [0007]. See Seo, abstract and claims.
Seo teaches the using mineral oil in examples 13 and 15. Aluminosilicates (metakaolin) and fumed silica are mixed in water and KOH and then mixed with mineral oil with vigorous stirring until the mixture became homogenous, which anticipates “mechanical stirring with shear” (or at the least makes it obvious,) and allowed to stand in containers to form solid polymer body with the requisite pore size and distribution. Oil is then removed using hexane. Adding NaA zeolite is in example 7, gold nanoparticles in example 9, and TiO2 nanoparticles in example 6. Also, the teaching of [0007] makes it clear that the nanoparticles can be added to any of the examples, making the claims obvious if not anticipated.
Steps from claim 11 added to claim 9; and claim 12: the activation solution is disclosed as high pH saline. Seo teaches pH of 14, water and KOH or NaOH. Seo also teaches adding surfactant in [0046], [0056], etc. Stirring is rigorous and continuous. Thus, while the steps may not be exactly in the sequence as recited, the recited steps are present in the teaching of Seo. MPEP 2144.04-IV: changes is sequence of adding ingredients is prima facie obvious.
Claims 10, 21, 22: mineral oil meets the carbon counts.
Claim 23-26: particle size – nanoparticles meet this range. The recited particles are included in Seo, [0007], etc.
Claims 27-28: aqueous to oil phase appears to be about 50% in Seo. The solid compound in the emulsion appears to be higher than the range claimed, but this could be optimized for the intended purpose. Optimizing a result-effective variable – see MPEP 2144.
Allowable Subject Matter
Applicant’s working example shows submicronic LTA zeolite as the solid compound different from the geopolymer. Therefore, adding submicronic LTA zeolite as this compound would overcome Seo as a prior art. While Seo teaches zeolite as such a compound, there is no teaching on submicronic LTA as the zeolite. The NaA zeolite in the example is not submicronic.
Response to Arguments
Applicant's arguments filed 8/31/26 have been fully considered but they are not persuasive. They are addressed in the rejection.
They were addressed before as only a mere change in the sequence of adding ingredients. The arguments are directed at how the Seo reference differ in the addition of ingredients, which the office had not disputed.
The argument, “[t]he present specification confirms that the manufacturing sequence can affect the resulting porous architecture. In Example 2, materials having the same final chemical composition were prepared using protocols differing in the placement of the manufacturing steps,” does not show that the result is in fact unexpected. The results in figures 4 and 7 show minor changes in pore size and distribution, and significantly more spread of pore distribution and increase in the average pore size from 20 to 30 nm. Such differences are observed in the various examples in Seo as well. See Seo’s figures and examples.
For consideration of any unexpected results, there must be a showing that the results are unexpected, and the claim elements must have a nexus with the unexpected results.
Consideration of rebuttal evidence and arguments requires Office personnel to weigh the proffered evidence and arguments. Id.; see also In re Alton, 76 F.3d 1168, 1174-75, 37 USPQ2d 1578, 1582-83 (Fed. Cir. 1996). Office personnel should avoid giving no weight to evidence submitted by applicant, except in rare circumstances. However, to be entitled to substantial weight, the applicant should establish a nexus between the rebuttal evidence and the claimed invention, i.e., objective evidence of nonobviousness must be attributable to the claimed invention.
Conclusion
THIS ACTION IS MADE FINAL. 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 KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached on 5712720579. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISHNAN S MENON/Primary Examiner, Art Unit 1777
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