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 .
This action is responsive to the amendment filed on December 4, 2025.
Claims 1-14, 16-20 are pending. Claim 15 is canceled.
The rejection of claim 17 under 35 U.S.C. 112 (b) is withdrawn in view of Applicant’s amendment.
The rejection of claims 11-14, 16-19 under 35 U.S.C. 102(a)(1) as being anticipated by Ek et al is withdrawn in view of Applicant’s amendment.
The rejection of claim 15 under 35 U.S.C. 103 as being unpatentable over Ek et al in view of Soria-Hoyo et al is withdrawn in view of Applicant’s amendment.
Claim 20 stands rejected under 35 U.S.C. 103 as being unpatentable over Ek et al in view of Song et al.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 11-14, 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Ek et al (Atomic Layer Deposition of Amino-Functionalized Silica Surfaces Using N-(2-Aminoethyl)-3-aminopropyltrimethoxysilane as a Silylating Agent (already of record)) in view of Soria-Hoyo et al (Synthesis of a nanosilica supported CO2 sorbent in a fluidized bed reactor (already of record)).
Regarding claims 11-14, 16-19, Ek et al discloses the invention substantially as claimed. Ek et al teaches N-(2-Aminoethyl)-3-aminopropyltrimethoxysilane was deposited onto a porous silica by molecular layer deposition and CCl4 to form one layer and further layers up to 6 by treating with N-(2-Aminoethyl)-3-aminopropyltrimethoxysilane and water (2.1-2.3). Ek further teaches the film thickness can be controlled by the number of layer deposition reaction cycles (Introduction). However, Ek et al fails to specifically disclose nanosilica.
In the same field of endeavor, Soria-Hoyo et al teaches CaO deposited nanosilica powder by molecular layer deposition to form a CO2 sorbent (Abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed to have provided nanosilica as the support in Ek et al in view of Soria-Hoyo et al as simple substitution of one silica for another nanosized silica would have provided a nanosized functionalized support. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Ek et al (Atomic Layer Deposition of Amino-Functionalized Silica Surfaces Using N-(2-Aminoethyl)-3-aminopropyltrimethoxysilane as a Silylating Agent (already of record)) in view of Song et al (KR20120058723 (already of record)).
Regarding claim 20, Ek et al discloses the invention substantially as claimed. Ek et al teaches N-(2-Aminoethyl)-3-aminopropyltrimethoxysilane was deposited onto a porous silica by molecular layer deposition and CCl4 to form one layer and further layers up to 6 by treating with N-(2-Aminoethyl)-3-aminopropyltrimethoxysilane and water (2.1-2.3). Ek further teaches the film thickness can be controlled by the number of layer deposition reaction cycles (Introduction). However, Ek et al fails to specifically disclose alumina and zeolite.
In the same field of endeavor, Song et al porous carrier such as alumina, silica and zeolite deposited with atomic layer deposition (Paragraphs 1-28).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted alumina or zeolite in Ek et al in view of Song et al in order to provide a support for molecular layer deposition. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
Response to Arguments
Applicant's arguments filed December 4, 2025 have been fully considered but they are not persuasive.
With respect to the obviousness rejection over Ek et al in view of Soria-Hoyo et al, Applicant argues that Ek et al indicates that the intended commercial application of the amino-functionalized silica surfaces for use as stationary phases in chromatographic columns in which employ particles on the micrometer scale and not nanoparticles. Applicant further argues that Ek et al in view of Soria-Hoyo et al fail to teach the technical advantages of the instant invention. Applicant further argues hindsight. The Examiner respectfully disagrees with the above argument because the use of nanoparticles in chromatographic columns is well known, see Mao et al on the attached 892 Form. Mao et al teaches it is known to use nanoparticles in chromatography and the benefits of the large surface to volume ratio (Abstract, 2.2). It is noted that a prima facie case of obviousness does not require the solution of the same problem or recognition of the same advantages as applicant’s invention. In re Dillion, 16 USPQ 2nd 1897. Applicant has failed to provide any evidence of unexpected results. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
With respect to the obviousness rejection over Ek et al in view of Song et al, Applicant argues that there is no reasoning provided evidencing that alumina or zeolite would be suitable for the intended use of Ek et al. Applicant further argues the prior art fails to address the problem of the instant invention. Applicant further argues hindsight. The Examiner respectfully disagrees with the above argument as Ek et al teaches functionalization of silica surfaces with atomic layer deposition and Song et al teaches porous carriers alumina, silica and zeolite deposited with atomic layer deposition; hence, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted alumina or zeolite in Ek et al in view of Song et al in order to provide a support for molecular layer deposition. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07. It is noted that a prima facie case of obviousness does not require the solution of the same problem or recognition of the same advantages as applicant’s invention. In re Dillion, 16 USPQ 2nd 1897. Applicant has failed to provide any evidence of unexpected results. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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 TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 March 25, 2026
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