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 .
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.
Claim Status
Applicant’s amendment of 09/02/2025 is acknowledged. Claims 1, 22, 24, 31, and 34 are amended, and claim 26 is cancelled. Claims 16-25 and 27-35 are currently pending.
Election/Restrictions
An election of invention/species was required in the instant application as detailed in the Office action dated 03/20/2025. The election is maintained and claim 33 remains withdrawn. Accordingly, claims 16-25, 27-32, and 34-35 are examined on the merits herein.
Priority
The instant application is a 371 of PCT/EP2021/050150 filed on 01/07/2021 and claims foreign priority to EP20151600.2 filed on 01/14/2020 as reflected in the filing receipt dated on 11/08/2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Withdrawn Objections and Rejections
Applicant’s amendment to the specification has overcome the previous objection to the disclosure. Thus, the objection is hereby withdrawn.
Applicant’s amendments to the claims have overcome the previous objections to the claims. Thus, the objections are hereby withdrawn.
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.
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.
Claims 16-21, 27-30, and 34-35 are rejected under 35 U.S.C. 103 as being unpatentable over Evonik Industries (Dec. 2015; PTO-892 of 03/20/2025) in view of Degussa (May 1993; PTO-892 of 06/09/2025) and as evidenced by Evonik Industries (Jul. 2015; PTO-892 of 06/09/2025).
Evonik Industries (Dec. 2015) discloses surface-treated AEROSIL® fumed silica products that can be used in a wide range of industries such as silicone rubber, paint and coating formulations, toner products, adhesives and sealants, cable compounds, and resin systems (Page 22, Paragraph 1). By subjecting hydrophilic grades of AEROSIL® to post-treatment with alkoxysilanes, silazanes, or siloxanes, hydrophobic products such as AEROSIL® R812S can be formed that display low moisture uptake, particularly good dispersion properties, and an ability to configure rheological behavior (Page 61, Paragraph 1 and Table 14). AEROSIL® R812S is surface treated with hexamethyldisilazane (HMDS) and is suitable for use in toner formulations, as evidenced by Evonik Industries (Jul. 2015; Page 10, Paragraph 1 and Table 4). It also has a tamped density of 60 g/L and a BET surface area of 195 – 245 m2/g (Page 94, Table). The tamped density and BET surface area values lie within and thus renders obvious the ranges recited in instant claims 16 and 17, respectively. HMDS reads on the silazane species of the surface treatment agent recited in instant claim 16 and the elected species hexamethyldisilazane recited in instant claims 18 and 27. The use of AEROSIL® R812S in toner formulations reads on both a composition comprising the fumed silica powder and its intended use as a toner recited in instant claims 34 and 35, respectively.
Regarding instant claims 20 and 29, Evonik Industries (Dec. 2015) discloses that the carbon content of AEROSIL® R812S is 3.0 – 4.0%, which lies within and thus renders obvious the instantly claimed ranges. Carbon content is measured by weighing sample material in a ceramic crucible, oxidizing the carbon, then quantifying the resulting carbon dioxide gas in µg/g (Page 33, Paragraph 2), which aligns method for determining carbon content as disclosed in the instant specification (Instant Specification, Page 18, lines 20-25) and indicates that the carbon content reported by Evonik Industries (Dec. 2015) represents % by weight of the fumed silica powder.
However, Evonik Industries (Dec. 2015) does not explicitly disclose that the number of silanol groups relative to BET surface area dSiOH of AEROSIL® R812S is at least 0.85 SiOH/nm2 as determined by reaction with lithium aluminum hydride (LiAlH4) and that its methanol wettability is more than 40% by volume as recited in instant claim 16, that the median particle size d50 is less than 100 µm as recited in instant claims 19 and 28, that the number of silicon atoms in the surface treatment agent relative to the BET surface area d[Si] is at least 1.0 [Si atoms]/nm2 as recited in instant claims 21 and 30, or that the ratio of d[Si]/dSiOH is 0.5 to 10 as recited in instant claim 26.
Degussa teaches that the LiAlH4 method can be employed to determine the total silanol group density on the silica surface, wherein specific surface area is generally determined according to the BET method (Page 15, Section 3.2.5 and Page 42, “Silanol Group Density” and “Specific Surface”). A higher silanol group density correlates with a lower hydrophobicity (Page 15, Section 3.2.5 and Page 8, Table 1). Of several hydrophobic AEROSIL® silicas, Degussa reports that AEROSIL® R812S has a silanol group density of 0.68 SiOH/nm2 whereas AEROSIL® R805, which is less hydrophobic than R812S, has a silanol group density of 1.66 SiOH/nm2 (Page 15, Section 3.2.5 and Page 8, Table 1). The advantage of all hydrophobic AEROSIL® grades over hydrophilic AEROSIL® 200 is that having a lower silanol group density reduces agglomeration and allows for easier dispersion (Page 21, Section 4.1.2).
Degussa further teaches that AEROSIL® R812S has a methanol wettability of > 60% by volume (Page 8, Table 1; see Page 14, Fig. 12 for units), which lies within and thus renders obvious the range recited in instant claim 16. Additionally, all hydrophobic silicas of Degussa have a primary particle size within the range of 7 – 16 nm (Page 8, Table 1).
Regarding the number of silanol groups recited in instant claim 16, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surface-treated fumed silica powder, AEROSIL® R812S, of Evonik Industries (Dec. 2015) by adjusting the number of free silanol groups relative to the BET surface area within the range of 0.68 SiOH/nm2 – 1.66 SiOH/nm2, which overlaps the instantly claimed range, because Degussa teaches that any silanol group density within this range is suitable for forming hydrophobic fumed silicas with improved dispersibility and reduced agglomeration. One of ordinary skill in the art would have been motivated to adjust the silanol group density, which Degussa relates to the silica’s hydrophobicity, in order to improve the silica’s rheological behavior and compatibility with a formulation, as suggested by Evonik Industries (Dec. 2015).
Regarding claimed properties that could be affected by modifying the number of free silanol groups, including the methanol wettability and tamped density recited in instant claim 16 and the carbon content recited in instant claims 20 and 29: Because the tamped densities (ranging from 50 – 60 g/L) and carbon contents (ranging from 0.6 – 7.5% by volume) of all hydrophobic AEROSIL® grades reported by Degussa (Page 8, Table 1) lie within the instantly claimed ranges, and the methanol wettabilities (ranging from >35% to >60% by volume) of all hydrophobic AEROSIL® grades lie within or closely overlap the instantly claimed range, one of ordinary skill in the art would reasonably expect that adjusting the number of silanol groups of the AEROSIL® R812S of Evonik Industries (Dec. 2015) within the range taught by Degussa would produce a surface-treated fumed silica powder that still meets all limitations of instant claims 16, 20, and 29.
Regarding instant claims 19 and 28, while the combination of Evonik Industries (Dec. 2015) and Degussa is silent on the median particle size of the surface-treated fumed silica powder, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to adjust the particle size within the range taught by Degussa, which lies within the instantly claimed range, since the reference teaches that any size between 7 – 16 nm is suitable for forming hydrophobic synthetic silicas with improved dispersibility and reduced agglomeration. Silica particles within this range would necessarily have a numerical median particle size d50 of less than 100 µm and, therefore, the limitation is rendered obvious.
Regarding instant claims 21 and 30, the combination of Evonik Industries (Dec. 2015) and Degussa is silent on the number of silicon atoms in the surface treatment agent relative to the BET surface area d[Si] of the surface-treated fumed silica powder. However, Evonik Industries (Dec. 2015) teaches that AEROSIL® fumed silica powders have a silanol group density of approximately 2.5 SiOH/nm2 prior to surface treatment (Page 52, Section 3.4.2.1). Thus, with 2.5 SiOH/nm2 available for surface modification and 0.68 SiOH/nm2 – 1.66 SiOH/nm2 free silanol groups remaining after treatment with HMDS, the surface-treated fumed silica powder would necessarily comprise approximately 0.84 [Si atoms]/nm2 – 1.82 [Si atoms]/nm2, which closely overlaps the instantly claimed range, as a result of HMDS silicon atoms being bonded to the “non-free” silanol groups on the fumed silica powder surface.
Regarding instant claim 26, the combination of Evonik Industries (Dec. 2015) and Degussa teaches a surfaced-treated fumed silica powder having a d[Si] of 0.84 [Si atoms]/nm2 – 1.82 [Si atoms]/nm2 and a dSiOH of 0.68 SiOH/nm2 – 1.66 SiOH/nm2 as discussed in detail above. Thus, the ratio of d[Si]/dSiOH is approximately 0.5 to 2.7, which lies within and thus renders obvious the instantly claimed range.
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). Note MPEP 2144.05.
One of ordinary skill in the art would reasonably expect success in modifying the surface-treated fumed silica powder, R812S, of Evonik Industries (Dec. 2015) with the teachings of Degussa as proposed because Evonik Industries (Dec. 2015) teaches that an advantage of surface treating is the ability to configure the rheological behavior of the fumed silica powders, even in polar systems (Evonik Industries, Dec. 2015; Page 61, Paragraph 1).
Claims 16-23, 27-32 and 34-35 are rejected under 35 U.S.C. 103 as being unpatentable over Evonik Industries (Dec. 2015; PTO-892 of 03/20/2025) in view of Degussa (May 1993; PTO-892 of 06/09/2025), as applied to claims 16-21, 26-30, and 34-35 above, and further in view of Hauksdóttir (Dec. 2016; PTO-892 of 06/09/2025) and as evidenced by Evonik Industries (Jul. 2015; PTO-892 of 06/09/2025).
The combination of Evonik Industries (Dec. 2015) and Degussa, as evidenced by Evonik Industries (Jul. 2015), teaches the fumed silica powder of instant claims 16 and 29 as discussed in detail above and incorporated herein.
However, the combination of Evonik Industries (Dec. 2015) and Degussa does not expressly teach the cumulative pore volume recited in instant claims 22 and 31 or the bulk density recited in instant claims 23 and 32.
Hauksdóttir teaches that in the paper and print industries, silica properties like high internal porosity, specific surface structure, and low refractive index, make silica an optimal choice among available pigment types (Page 12, Section 2.2.4). While fumed silica is not comprised of porous particles, the specific aggregate structure enables the formation of a network structure with pores and capillaries, allowing it to have a specific pore volume, which can be adjusted to improve ink/toner absorption (Page 13, “Porosity”). Consequently, Hauksdóttir teaches that it is important to optimize silica porosity and particle size in order to create a desired print finish (Page 14, “Particle size”). For example, high pore volume silicas can improve print definition and color to color bleed in ink-jet coatings (Page 11, “Porosity”), and increased porosity improves the printability with faster ink absorption and therefore reduces the risk of residual ink-transfer into subsequent inking unit (Page 13, “Porosity”). A low porosity, however, can limit the ink absorption rate (Page 14, “Particle size”).
Typical fumed silica properties for paper and print industries include a specific pore volume of 1.6 – 2.2 mL/g (also written as 1.6 – 2.2 cm3/g), a bulk density of 0.07 – 0.5 g/cm3, a particle size of 7 – 40 nm, a BET surface area of 50 – 380 m2/g, and a tapped density of 0.05 g/cm3 (also written as 0.05 g/mL or 50 g/L). Hauksdóttir teaches that mercury intrusion porosimetry is a routine method used to determine pore volume, porosity, and pore size distribution (Page 46, Section 3.2.4). The technique has a lower limit of > 6 nm for assessing porous samples and can also be used to determine apparent density and bulk density (Page 46, Section 3.2.4 and Page 66). Regarding instant claims 22 and 31, while the combination of Evonik Industries (Dec. 2015) and Degussa is silent on the cumulative pore volume of the surface-treated fumed silica powder, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to increase the cumulative pore volume using a minimum value of 1.6 – 2.2 cm3/g as measured by mercury intrusion porosimetry with a lower limit of > 6 nm, which Hauksdóttir teaches as a typical fumed silica pore volume, as a starting point for routine optimization. One of ordinary skill in the art would have been motivated to increase the pore volume to improve print definition and color to color bleed in ink-jet coatings, as taught by Hauksdóttir.
Regarding instant claims 23 and 32, while the combination of Evonik Industries (Dec. 2015), Degussa, and Hauksdóttir is silent on the bulk density of the surface-treated fumed silica powder, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the bulk density within the range taught by Hauksdóttir, which overlaps the instantly claimed range, since the reference teaches that any amount between of 0.07 – 0.5 g/mL as measured by mercury intrusion porosimetry is suitable for producing a fumed silica powder suitable for use in the print industry.
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). Note MPEP 2144.05.
Regarding the specifics of the mercury intrusion method recited in instant claims 22-23 and 31-32, the patentability of a product-by-process claim is based on the product itself and does not depend on its method of production/evaluation. Note: MPEP 2113(I). Because the combination of Evonik Industries (Dec. 2015), Degussa, and Hauksdóttir teaches a surface-treated fumed silica comprising the same properties as instantly claimed, it is structurally the same as the claimed fumed silica powder regardless of the method of evaluation.
One of ordinary skill in the art would reasonably expect success in modifying the surface-treated fumed silica powder taught by the combination of Evonik Industries (Dec. 2015) and Degussa with the teachings of Hauksdóttir as proposed because Hauksdóttir encourages the optimization of porosity, which directly relates to bulk density, in order to produce fumed silica powders with properties viewed as desirable in the paper and print industries, in which Evonik Industries (Dec. 2015) teaches its surface-treated fumed silica powders are suitable for use.
Claims 16-25, 27-32, and 34-35 are rejected under 35 U.S.C. 103 as being unpatentable over Evonik Industries (Dec. 2015; PTO-892 of 03/20/2025) in view of Degussa (May 1993; PTO-892 of 06/09/2025) and Hauksdóttir (Dec. 2016; PTO-892 of 06/09/2025), as applied to claims 16-23, 26-32, and 34-35 above, and further in view of Svanholm (2007; PTO-892 of 06/09/2025) and as evidenced by Evonik Industries (Jul. 2015; PTO-892 of 06/09/2025).
The combination of Evonik Industries (Dec. 2015), Degussa, and Hauksdóttir, as evidenced by Evonik Industries (Jul. 2015), teaches the fumed silica powder of instant claims 16 and 23 as discussed in detail above and incorporated herein.
However, the combination of Evonik Industries (Dec. 2015), Degussa, and Hauksdóttir does not expressly teach the skeletal density recited in instant claim 24, or the porosity recited in instant claim 25.
Svanholm teaches that fumed silica powders used as pigments in paper coatings have a characteristic particle density of 2 g/cm3 (also written as 2 g/mL) (Page 23, Table V). While Svanholm is silent on whether the term “particle density” relates to true particle density or apparent particle density, Hauksdóttir teaches that apparent density measured by mercury intrusion porosity should approach its skeletal or true density if all porosity has been adequately assessed (Page 46, Section 3.2.4).
Regarding instant claim 24, while the combination of Evonik Industries (Dec. 2015), Degussa, and Hauksdóttir is silent on the skeletal density of the surface-treated fumed silica powder, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the skeletal density using 2 g/mL as taught by Svanholm, which lies within and thus renders obvious the instantly claimed range, as a starting point for routine optimization. One of ordinary skill in the art would have been motivated to adjust the skeletal density, which directly relates to porosity, in order to improve ink/toner absorption, as taught by Hauksdóttir.
Regarding instant claim 25, because the combination of Evonik Industries (Dec. 2015), Degussa, Hauksdóttir, and Svanholm teaches a surface-treated fumed silica powder having the bulk density of 0.07 – 0.5 g/mL and a skeletal density of 2 g/mL, the fumed silica powder would necessarily have a porosity of approximately 75% to 95%, which lies within and thus renders obvious the claimed range, as evidenced by the instant specification, which states that porosity (P) = 100*(1 – dbulk/dsk) (Instant Specification, Page 9, lines 13-20).
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). Note MPEP 2144.05.
Regarding the specifics of the mercury intrusion method recited in instant claims 24 and 25, the patentability of a product-by-process claim is based on the product itself and does not depend on its method of production/evaluation. Note: MPEP 2113(I). Because the combination of Evonik Industries (Dec. 2015), Degussa, Hauksdóttir, and Svanholm teaches a surface-treated fumed silica comprising the same properties as instantly claimed, it is structurally the same as the claimed fumed silica powder regardless of the method of evaluation.
One of ordinary skill in the art would reasonably expect success in modifying the surface-treated fumed silica powder taught by the combination of Evonik Industries (Dec. 2015), Degussa, and Hauksdóttir with the teachings of Svanholm as proposed because Hauksdóttir encourages the optimization of porosity, which directly relates to skeletal and bulk densities, in order to produce fumed silica powders with properties viewed as desirable in the paper and print industries, in which Evonik Industries (Dec. 2015) teaches its surface-treated fumed silica powders are suitable for use.
Response to Arguments
Applicant’s arguments submitted on XXX with respect to rejections under 35 U.S.C. 103 have been fully considered, but were not found to be persuasive.
Applicant argues that the cited prior art references do not disclose the d[Si]/dSiOH ratio of 0.5 to 10 as recited in amended claim 16, its significance, or a process by which it may be obtained and, as such, cannot be dismissed as a matter of routine optimization. Specifically, Applicant argues that it is not proper to rely on inferred values that are neither disclosed nor inherent in the references to establish obviousness. This argument was not found to be persuasive. The values from which the Examiner derived the prior art d[Si]/dSiOH ratio of 0.5 to 2.7, which lies within and thus renders obvious Applicant’s claimed range of 0.5 to 10, are indeed disclosed in the prior art. Evonik Industries (Dec. 2015) clearly teaches that all AEROSIL® grades, which includes hydrophobic AEROSIL® R812S, have a silanol group density of ~2.5 SiOH/nm2 prior to surface modification. Degussa provides that surface-treated hydrophobic AEROSIL® grades have silanol group densities ranging from 0.68 – 1.66 SiOH/nm2. While the combination of Evonik Industries (Dec. 2015) and Degussa is silent as to the d[Si] of the prior art surface-treated fumed silica powder, which inherently has a d[Si], an ordinarily skilled artisan with no ability to determine the d[Si] in a laboratory setting would reasonably rely on disclosed values in the prior art to calculate, not infer, the d[Si] of the powder following treatment with HMDS, as was determined by the Examiner.
Applicant further argues that the conclusions drawn by the Examiner are based on an invalid assumption of a 1:1 stoichiometric correspondence between each “non-free” silanol group and a surface-bound silicon atom from HDMS treatment, asserting that not all silanols are equally reactive or accessible, and HDMS treatment can yield multiple types of surface products. Without any evidence provided to support Applicant’s assertion, this argument was not found to be persuasive. First, it is noted that any inaccessible silanol groups, as Applicant proposes, would necessarily be unreacted silanol groups accounted for in Degussa’s disclosed range of dSiOH, which was used to calculate the number of “non-free” silanol groups reasonably reacted with silicon atoms from HDMS treatment. Further, Applicant has not provided a comparison of the claimed invention to the prior art invention to demonstrate that the two structures are patentably distinct and/or that one of ordinary skill would not reasonably arrive at the claimed d[Si]/dSiOH ratio through optimization of the powder’s dSiOH within the range of 0.68 – 1.66 SiOH/nm2, for which motivation is provided by Degussa. Regarding Applicant’s assertion that optimizing the surface properties of functional fumed silica powders involves considerations beyond polarity alone, the Examiner notes that the MPEP does not require that the motivation to modify the prior art be the same as the motivation of Applicant in the determination of obviousness. In fact, such reasoning would constitute hindsight analysis. Given that the prior art composition possesses the same tamped density and methanol wettability, and provides motivation to increase the powder’s silanol group density within the claimed range, an ordinarily skilled artisan would reasonably arrive at a fumed silica powder having the same combination of properties as claimed, solely based on the prior art teachings.
Regarding Applicant’s argument that there is no indication that altering the relative densities of treatment-derived silicon atoms versus residual silanol groups would predictably result in the required combination of properties, this argument was not found to be persuasive. As discussed in the prior art rejections of record: Because the tamped densities (ranging from 50 – 60 g/L) and carbon contents (ranging from 0.6 – 7.5% by volume) of all hydrophobic AEROSIL® grades reported by Degussa (Page 8, Table 1) lie within the instantly claimed ranges, and the methanol wettabilities (ranging from >35% to >60% by volume) of all hydrophobic AEROSIL® grades lie within or closely overlap the instantly claimed range, one of ordinary skill in the art would reasonably expect that adjusting the number of silanol groups of the AEROSIL® R812S of Evonik Industries (Dec. 2015) within the range of other hydrophobic AEROSIL® grades taught by Degussa would predictably produce a surface-treated fumed silica powder having the same combination of properties as claimed.
Applicant further submits that the other cited references do not cure the deficiencies of the analysis presented above. This argument was found to be unpersuasive in view of the Examiner’s responses provided above.
In view of the foregoing, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness. Therefore, the prior art rejections of record are maintained.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 16-25, 27-32 and 34-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-20, 22, 25-27, 30, and 34-35 of copending Application No. 17/667,727 in view of Degussa (May 1993; PTO-892 of 06/09/2025), Evonik Industries (Dec. 2015; PTO-892 of 03/20/2025), Hauksdóttir (Dec. 2016; PTO-892 of 06/09/2025), and Svanholm (2007; PTO-892 of 06/09/2025).
App. ‘727 claim 16 recites a surface treated fumed silica, comprising a methanol wettability of at least 20% by volume in a methanol/water mixture, which overlaps the range recited in instant claim 16, among other characteristics. App. ‘727 claim 17 recites that the BET surface area of the silica is 30 m2/g to 500 m2/g, which lies within and thus renders obvious the range recited in instant claim 17. App. ‘727 claim 18 recites that the surface treatment agent is selected from the group consisting of: organosilanes; silazanes; acyclic polysiloxanes; cyclic polysiloxanes; and mixtures thereof, which renders obvious the same recited in instant claim 16. App. ‘727 claims 19 and 26 recite that the numerical median particle size d50 of the silica is less than 10 µm, which lies within and thus renders obvious the range recited in instant claims 19 and 28. App. ‘727 claims 20 and 27 recite that the carbon content of the silica is from 0.1% to 5% by weight, which lies within and thus renders obvious the range recited in instant claims 20 and 29. App. ‘727 claim 22 recites that the tamped density of silica powder is not more than 250 g/L, which overlaps the range recited in instant claim 16. While App. ‘727 claim 16 does not explicitly recite that the surface treated fumed silica is a powder, claim 22 recites that it is. App. ‘727 claims 25 and 30 recite that the methanol wettability is 30% – 70% by volume methanol in a methanol/water mixture, which overlaps the range recited in instant claim 16. App. ‘727 claim 34 recites a composition comprising the silica of claim 16, which reads on the composition of instant claim 34. App. ‘727 claim 35 recites that the composition is selected from the group consisting of: a toner; a paint; a coating; a silicone; a pharmaceutical or cosmetic preparation; an adhesive; or a sealant, which reads on the intended uses of the composition recite in instant claim 35.
Regarding overlapping ranges, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the methanol wettability and tamped density within the ranges recited in the claims of App. ‘727 since the copending application recites that any methanol wettability between 30% – 70% and tamped density of 250 g/L or less is suitable for producing a surface treated fumed silica powder. 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). Note MPEP 2144.05.
The claims of App. ‘727 differ from the instant claims in that the claims of App. ‘727 do not explicitly recite that the number of silanol groups relative to BET surface area dSiOH is at least 0.85 SiOH/nm2 as recited in instant claim 16, that the surface treatment agent is selected from the group consisting of those recited in instant claims 18 and 27, that the number of silicon atoms in the surface treatment agent relative to BET surface area d[Si] is at least 1.0 [Si atoms]/nm2 as recited in instant claims 21 and 30, that the cumulative pore volume of pores >4 nm is at least 8.0 cm3/g as recited in instant claims 22 and 31, that the bulk density dbulk is less than 0.20 g/mL as recited in instant claims 23 and 32, that the skeletal density dsk is at least 0.50 g/mL as recited in instant claim 24, that the porosity is at least 60% as recited in instant claim 25, or that the ratio of d[Si]/dSiOH is 5.0 to 10 as recited in instant claim 26.
The teachings of Degussa, Evonik Industries (Dec. 2015), Hauksdóttir, and Svanholm are as set forth above and incorporated herein.
Regarding the number of silanol groups recited in instant claim 16, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surface treated fumed silica powder recited in the claims of App. ‘727 by adjusting the number of free silanol groups relative to the BET surface area within the range of 0.68 SiOH/nm2 – 1.66 SiOH/nm2, which overlaps the instantly claimed range, because Degussa teaches that any silanol group density within this range is suitable for forming hydrophobic fumed silicas with improved dispersibility and reduced agglomeration. One of ordinary skill in the art would have been motivated to adjust the silanol group density, which Degussa relates to the silica’s hydrophobicity, in order to improve the silica’s rheological behavior and compatibility with a formulation, as suggested by Evonik Industries (Dec. 2015).
Regarding claimed properties that could be affected by modifying the number of free silanol groups, including the methanol wettability and tamped density recited in instant claim 16 and the carbon content recited in instant claims 20 and 29: Because the tamped densities (ranging from 50 – 60 g/L) and carbon contents (ranging from 0.6 – 7.5% by volume) of all hydrophobic silicas reported by Degussa (Page 8, Table 1) lie within the instantly claimed ranges, and the methanol wettabilities (ranging from >35% to >60% by volume) of all hydrophobic silicas lie within or closely overlap the instantly claimed range, one of ordinary skill in the art would reasonably expect that adjusting the number of silanol groups of the surfaced treated fumed silica powder recited in the claims of App. ‘727 within the range taught by Degussa would produce a surface-treated fumed silica powder that still meets all limitations of instant claims 16, 20, and 29.
Regarding the surface treatment agent of instant claims 18 and 27, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surface treated fumed silica powder taught by the combination of App. ‘727 claims, Degussa, and Evonik Industries (Dec. 2015) by selecting hexamethyldisilazane (HMDS) as the surface treatment agent because it is commonly used in the art, as taught by Degussa and Evonik Industries (Dec. 2015), to produce surface treated fumed silica powders having the same properties as the surface treated fumed silica powder recited in the claims of App. ‘727.
Regarding instant claims 21 and 30, the combination of App. ‘727 claims, Degussa, and Evonik Industries (Dec. 2015) is silent on the number of silicon atoms in the surface treatment agent relative to the BET surface area d[Si] of the surface-treated fumed silica powder. However, Evonik Industries (Dec. 2015) teaches that untreated fumed silica powders have a silanol group density of approximately 2.5 SiOH/nm2 prior to surface treatment (Page 52, Section 3.4.2.1). Thus, with 2.5 SiOH/nm2 available for surface modification and 0.68 SiOH/nm2 – 1.66 SiOH/nm2 free silanol groups remaining after treatment with HMDS, the surface-treated fumed silica powder would necessarily comprise approximately 0.84 [Si atoms]/nm2 – 1.82 [Si atoms]/nm2, which closely overlaps the instantly claimed range, as a result of HMDS silicon atoms being bonded to the “non-free” silanol groups on the fumed silica powder surface.
Regarding instant claims 22 and 31, while the combination of App. ‘727 claims, Degussa, and Evonik Industries (Dec. 2015) is silent on the cumulative pore volume of the surface-treated fumed silica powder, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to increase the cumulative pore volume using a minimum value of 1.6 – 2.2 cm3/g as measured by mercury intrusion porosimetry with a lower limit of > 6 nm, which Hauksdóttir teaches as a typical fumed silica pore volume, as a starting point for routine optimization. One of ordinary skill in the art would have been motivated to increase the pore volume to improve print definition and color to color bleed in ink-jet coatings, as taught by Hauksdóttir, which the claims of App. ‘727 teach as a use of the surface-treated fumed silica powder.
Regarding instant claims 23 and 32, while the combination of App. ‘727 claims, Degussa, Evonik Industries (Dec. 2015), and Hauksdóttir is silent on the bulk density of the surface-treated fumed silica powder, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the bulk density within the range taught by Hauksdóttir, which overlaps the instantly claimed range, since the reference teaches that any amount between of 0.07 – 0.5 g/mL as measured by mercury intrusion porosimetry is suitable for producing a fumed silica powder suitable for use in the print industry.
Regarding instant claim 24, while the combination of App. ‘727 claims, Degussa, Evonik Industries (Dec. 2015), and Hauksdóttir is silent on the skeletal density of the surface-treated fumed silica powder, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the skeletal density using 2 g/mL as taught by Svanholm, which lies within and thus renders obvious the instantly claimed range, as a starting point for routine optimization. One of ordinary skill in the art would have been motivated to adjust the skeletal density, which directly relates to porosity, in order to improve ink/toner absorption, as taught by Hauksdóttir.
Regarding instant claim 25, because the combination of App. ‘727 claims, Degussa, Evonik Industries (Dec. 2015), Hauksdóttir, and Svanholm teaches a surface-treated fumed silica powder having the bulk density of 0.07 – 0.5 g/mL and a skeletal density of 2 g/mL, the fumed silica powder would necessarily have a porosity of approximately 75% to 95%, which lies within and thus renders obvious the claimed range, as evidenced by the instant specification, which states that porosity (P) = 100*(1 – dbulk/dsk) (Instant Specification, Page 9, lines 13-20).
Regarding instant claim 26, the combination of App. ‘727 claims, Degussa, Evonik Industries (Dec. 2015), Hauksdóttir, and Svanholm teaches a surfaced-treated fumed silica powder having a d[Si] of 0.84 [Si atoms]/nm2 – 1.82 [Si atoms]/nm2 and a dSiOH of 0.68 SiOH/nm2 – 1.66 SiOH/nm2 as discussed in detail above. Thus, the ratio of d[Si]/dSiOH is approximately 0.5 to 2.7, which lies within and thus renders obvious the instantly claimed range.
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). Note MPEP 2144.05.
Regarding the specifics of the mercury intrusion method recited in instant claims 22-25 and 31-32, the patentability of a product-by-process claim is based on the product itself and does not depend on its method of production/evaluation. Note: MPEP 2113(I). Because the combination of App. ‘727 claims, Degussa, Evonik Industries (Dec. 2015), Hauksdóttir, and Svanholm teaches a surface treated fumed silica comprising the same properties as instantly claimed, it is structurally the same as the claimed fumed silica powder regardless of the method of evaluation.
One of ordinary skill in the art would reasonably expect success in modifying the surface treated fumed silica powder recited in the claims of App. ‘727 with the teachings of Degussa, Evonik Industries (Dec. 2015), Hauksdóttir, and Svanholm as proposed because Evonik Industries (Dec. 2015) teaches that an advantage of surface treatment is the ability to configure the rheological behavior of the fumed silica powders, even in polar systems (Evonik Industries, Dec. 2015; Page 61, Paragraph 1).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments submitted on 09/02/2025 with respect to rejections on the grounds of non-statutory double patenting have been fully considered, but were not found to be persuasive.
Applicant argues that references cannot be used to expand a claim beyond what it recites, and that because there does not appear to be any elements recited in the reference patent claims that are uncertain and need interpretation, support from other references should not be needed. This argument was not found to be persuasive. In the case of non-statutory double patenting, an obviousness analysis is used to make clear reasons why an ordinary person of skill in the art would conclude that the invention defined in the claim(s) at issue would have been an obvious variation of the invention defined in the claim(s) in a patent. Note: MPEP 804(II)(B)(3). Prior art references were used to support such analysis, as discussed in detail in the non-statutory double patenting rejections of record.
Regarding Applicant’s argument that the Examiner’s argument of obviousness is flawed, this argument was not found to be persuasive in view of the Examiner’s response provided with respect to the prior art rejections above.
Applicant further argues that the reference patent claims have elements that are not in the current claims. The Examiner respectfully points out that the instant claims are drawn to a fumed silica powder that “comprises” the claimed elements, which does not exclude unrecited elements. Absent any showing provided by Applicant to indicate said elements are mutually exclusive with those instantly claimed and thus cannot exist within the instant fumed silica powder as claimed, the non-statutory double patenting rejections are maintained.
Conclusion
No claim is allowed.
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.
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/SARAH C WISTNER/ Examiner, Art Unit 1616
/SUE X LIU/ Supervisory Patent Examiner, Art Unit 1616