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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 17 NOVEMBER 2025 has been entered.
Claim Status
Rejected Claims: 1-3, 7-15, 18, and 23-26
Withdrawn Claims: 4-6 and 16-17
Cancelled Claims: 19-22
Response to Amendment
The amendment filed on 17 NOVEMBER 2025 has been entered.
In view of the amendment to the claims, the amendment of claims 1 and 23, the cancellation of claims 19-21, and the addition of new claims 24-26 have been acknowledged.
In view of the amendment to claim 23, the previous claim objection has been withdrawn.
In view of the arguments, the rejections under 35 U.S.C. 102 and 35 U.S.C. 103 have been modified.
Response to Arguments
Applicant’s arguments filed on 17 NOVEMBER 2025 have been fully considered.
Applicant argues, regarding claims 1 and 23, that Rothman et al (US Patent Application No. 20170232451 A1) hereinafter Rothman does not teach the correct combination of materials and chemical reactions of the instant application and thus does not create the coating with improved durability of the instant application (Arguments filed 17 NOVEMBER 2025, Pages 9-21).
The Examiner respectfully disagrees.
Applicant’s arguments with respect to claims 1 and 23 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. Darling specifically teaches the composition of the instant application utilizing the same techniques as the instant application and with the same materials of the instant application.
Claim Objections
Claim 25 is objected to because of the following informalities:
In Claim 25, there is a second period after the end of the claim that should be deleted.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 7-9, 11-14, 18, and 24-26 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Darling et al (US Patent Application No. 20170166456 A1) hereinafter Darling.
Regarding Claim 1, Darling discloses an oleophilic foam (i.e., a composite medium comprising; Abstract) fabricated by coating a base material (i.e., a substrate), which can include polyurethane, polyimides, acrylics, polyamides, polyesters, polycarbonates, and polyaramides among others (i.e., a polymeric substrate; Paragraph 0022), with an inorganic material via at least one of atomic layer deposition, molecular layer deposition, or sequential infiltration synthesis (i.e., an inorganic material disposed on the polymeric substrate to form an inorganic deposited substrate) wherein the inorganic material is then functionalized with an oleophilic material (i.e., a hydrophobic coating that is disposed on and reacts with the inorganic material of the inorganic deposited substrate; Paragraph 0006), the inorganic material can include Al2O3, TiO2, ZnO, MgO, SiO2, HfO2, ZrO2, W or any combination thereof (Paragraph 0028) and that the oleophilic material can include a silane or a combination of silanes (Paragraph 0041) which react with the inorganic material to form a covalent bond (i.e., so as to form a covalently bonded collection surface; Paragraph 43).
Furthermore, the limitation “configured to attract mineral particles of interest in an aqueous system” is directed toward an expected result from the practice or use of the claimed invention and is therefore not subject to patentability. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)). See MPEP §2112.01(I).
Regarding Claim 2, Darling anticipates the composite medium of claim 1. Darling further discloses that the oleophilic material can include a silane or a combination of silanes (Paragraph 0041) which react with the inorganic material to form a covalent bond (i.e., wherein the hydrophobic coating includes, and is formed by, a hydrophobic silane that is applied to and reacts with the inorganic material; Paragraph 43).
Regarding Claim 3, Darling anticipates the composite medium of claim 2. Darling further discloses that the oleophilic material can include butyldimethyl(dimethylamino)silane (i.e., wherein the hydrophobic silane is selected from butyldimethyl (dimethylamino) silane (BDMS); Paragraph 0041).
Regarding Claim 7, Darling anticipates the composite medium of claim 1. Darling further discloses that an inorganic material can be functionalized with vinyltriethoxysilane (i.e., wherein the hydrophobic coating includes, and is formed by a combination of a reactive silane that is applied to and reacts with the inorganic material) in combination with a silane (i.e., and a combination of a polymeric coating that is subsequently applied to and reacts with the reactive silane and the inorganic material; Paragraph 0041). The category of silanes includes polymers of silanes and the processes of ALD an MLD, disclosed by Darling, are known methods of exposing the oleophilic materials which can react the silanes both with the inorganic materials and with the other silane compounds by means of the co-reactant, such as water, used between ALD cycles of the oleophilic material (Paragraphs 0040-0043).
Regarding Claim 8, Darling in view of Rothman makes obvious the composite medium of claim 7. Darling further teaches that an inorganic material can be functionalized with vinyltriethoxysilane (i.e., wherein the reactive silane is selected from vinyl alkoxy silane; Paragraph 0041).
Regarding Claim 9, Darling anticipates the composite medium of claim 1. Darling further discloses that the oleophilic material can include a combination of butyldimethyl(dimethylamino)silane (i.e., wherein the hydrophobic coating includes, and is formed by, a hydrophobic silane that is applied to and reacts with the inorganic material), vinyltriethoxysilane (i.e., a reactive silane that is subsequently applied to and reacts with the hydrophobic silane and the inorganic material), and a silane (i.e., a polymeric coating that is subsequently applied to and reacts with the hydrophobic silane, the reactive silane and the inorganic material; Paragraph 0041). The category of silanes includes polymers of silanes and the processes of ALD an MLD, disclosed by Darling, are known methods of exposing the oleophilic materials which can react the silanes both with the inorganic materials and with the other silane compounds by means of the co-reactant, such as water, used between ALD cycles of the oleophilic material (Paragraphs 0040-0043).
Regarding Claim 11, Darling anticipates the composite medium of claim 1. Darling further discloses that the inorganic material formed on the base material includes a metal oxide (i.e., wherein the inorganic material comprises a metal oxide; Paragraph 0028) for the purpose of forming a linker for the coupling of the oleophilic material (Paragraph 0037).
Regarding Claim 12, Darling anticipates the composite medium of claim 11. Darling further discloses that the inorganic material can include Al2O3, TiO2, ZnO, MgO, SiO2, HfO2, ZrO2, W or any combination thereof (i.e., wherein the metal oxide is selected from TiO2, Al2O3, ZnO, MgO, SiO2, HfO2 and ZrO2; Paragraph 0028).
Regarding Claim 13, Darling anticipates the composite medium of claim 1. Darling further discloses that a first metal precursor deposited on the foam (Paragraph 0023) includes diethyl zinc or trimethylaluminum (i.e., wherein the inorganic material comprises an oxidized precursor selected from diethyl zinc or trimethylaluminum; Paragraph 0025).
Regarding Claim 14, Darling anticipates the composite medium of claim 1. Darling further discloses that the base material is coated with an inorganic material using at least one of an atomic layer deposition (ALD), a molecular layer deposition (MLD) or sequential infiltration synthesis (SIS) process (i.e., wherein the inorganic material is deposited using an atomic layer deposition (ALD), a molecular layer deposition (MLD), a sequential infiltration synthesis (SIS); Abstract).
Regarding Claim 18, Darling anticipates the composite medium of claim 1. Darling further discloses that the base material can include polyurethane, polyimides, acrylics, polyamides, polyesters, polycarbonates, and polyaramides among others (i.e., wherein the polymeric substrate is made of a polymer selected from a group consisting of polyamides, polyesters, polyurethanes, polyacrylates, and poly(carbonates); Paragraph 0022).
Regarding Claim 24, Darling discloses an oleophilic foam (i.e., a composite medium comprising; Abstract) fabricated by coating a base material (i.e., a substrate), which can include polyurethane, polyimides, acrylics, polyamides, polyesters, polycarbonates, and polyaramides among others (i.e., a polymeric substrate made of a polymer selected from a group consisting of polyamides, polyesters, polyurethanes, polyacrylates, and poly(carbonates); Paragraph 0022), with an inorganic material via at least one of atomic layer deposition, molecular layer deposition, or sequential infiltration synthesis (i.e., an inorganic material disposed on the polymeric substrate to form an inorganic deposited substrate; and deposited using an atomic layer deposition (ALD), molecular layer deposition (MLD), sequential infiltration synthesis (SIS)) wherein the inorganic material is then functionalized with an oleophilic material (i.e., a hydrophobic coating that is disposed on and reacts with the inorganic material of the inorganic deposited substrate; Paragraph 0006), the inorganic material can include Al2O3, TiO2, ZnO, MgO, SiO2, HfO2, ZrO2, W or any combination thereof (i.e., the inorganic material being a metal oxide is selected from TiO2, Al2O3, ZnO, MgO, SiO2, HfO2 and ZrO2; Paragraph 0028) and that the oleophilic material can include a silane or a combination of silanes (Paragraph 0041) which react with the inorganic material to form a covalent bond (i.e., so as to form a covalently bonded collection surface; Paragraph 43).
Furthermore, the limitation “configured to attract mineral particles of interest in an aqueous system” is directed toward an expected result from the practice or use of the claimed invention and is therefore not subject to patentability. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)). See MPEP §2112.01(I).
Regarding Claim 25, Darling anticipates the composite medium of claim 24. Darling further discloses that an inorganic material can be functionalized with vinyltriethoxysilane (i.e., wherein the hydrophobic coating includes, and is formed by a combination of a reactive silane that is applied to and reacts with the inorganic material) in combination with a silane (i.e., and a combination of a polymeric coating that is subsequently applied to and reacts with the reactive silane and the inorganic material; Paragraph 0041). The category of silanes includes polymers of silanes and the processes of ALD an MLD, disclosed by Darling, are known methods of exposing the oleophilic materials which can react the silanes both with the inorganic materials and with the other silane compounds by means of the co-reactant, such as water, used between ALD cycles of the oleophilic material (Paragraphs 0040-0043).
Regarding Claim 26, Darling anticipates the composite medium of claim 25. Darling further discloses that the oleophilic material can include a combination of butyldimethyl(dimethylamino)silane (i.e., wherein the hydrophobic coating includes, and is formed by, a hydrophobic silane that is applied to and reacts with the inorganic material), vinyltriethoxysilane (i.e., a reactive silane that is subsequently applied to and reacts with the hydrophobic silane and the inorganic material), and a silane (i.e., a polymeric coating that is subsequently applied to and reacts with the hydrophobic silane, the reactive silane and the inorganic material; Paragraph 0041). The category of silanes includes polymers of silanes and the processes of ALD an MLD, disclosed by Darling, are known methods of exposing the oleophilic materials which can react the silanes both with the inorganic materials and with the other silane compounds by means of the co-reactant, such as water, used between ALD cycles of the oleophilic material (Paragraphs 0040-0043).
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.
Claims 10, 15, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Darling et al (US Patent Application No. 20170166456 A1) hereinafter Darling, in view of Rothman et al (US Patent Application No. 20170232451 A1) hereinafter Rothman.
Regarding Claim 10, Darling anticipates the composite medium of claim 1. Darling further teaches that the foam structure can be shaped so as to form any suitable structure (Paragraph 0022)
Darling does not teach wherein the polymeric substrate comprises a reticulated foam having a 3D open-cell structure.
However, Rothman teaches that a solid phase body may take the form of a reticulated foam made of soft polymers providing the three-dimensional open-cell structure for the purpose of having a higher surface area to volume ratio (i.e., wherein the polymeric substrate comprises a reticulated foam having a 3D open-cell structure; Paragraphs 0153).
Rothman is analogous to the claimed invention because it pertains to an engineered collection medium for use in mineral separation (Abstract). It would have been obvious to one of ordinary skill in the art to modify the oleophilic foam as taught by Darling with the structure as taught by Rothman because the structure would have a higher surface area to volume ratio.
Regarding Claim 15, Darling anticipates the composite medium of claim 1. Darling further teaches that the foam structure can be shaped so as to form any suitable structure (Paragraph 0022)
Darling does not teach wherein the polymeric substrate comprises a polymer bead.
However, Rothman teaches that the technique utilizes polymer-based beads because they are inexpensive to manufacture and behave similar to a bubble without popping so that they may be used to lift valuable materials during froth flotation (i.e., wherein the polymeric substrate comprises a polymer bead; Paragraphs 0060-0063).
It would have been obvious to one of ordinary skill in the art to modify the oleophilic foam as taught by Darling to have the shape of beads as taught by Rothman because the beads would be inexpensive to manufacture and perform similar to air bubbles during froth flotation.
Regarding Claim 23, Darling teaches an oleophilic foam (i.e., a composite medium comprising; Abstract) fabricated by coating a base material, which can include polyurethane, polyimides, acrylics, polyamides, polyesters, polycarbonates, and polyaramides among others (Paragraph 0022), with an inorganic material via at least one of atomic layer deposition, molecular layer deposition, or sequential infiltration synthesis (i.e., an inorganic material disposed on the foam to form an inorganic deposited substrate) wherein the inorganic material is then functionalized with an oleophilic material (i.e., a hydrophobic coating that is disposed on and reacts with the inorganic material of the inorganic deposited substrate; Paragraph 0006), the inorganic material can include Al2O3, TiO2, ZnO, MgO, SiO2, HfO2, ZrO2, W or any combination thereof (i.e., an inorganic material having a metal oxide; Paragraph 0028) and that the oleophilic material can include a silane or a combination of silanes (Paragraph 0041) which react with the inorganic material to form a covalent bond (i.e., so as to form a covalently bonded collection surface; Paragraph 43). Darling further teaches that the oleophilic material can include a combination of butyldimethyl(dimethylamino)silane (i.e., wherein the hydrophobic coating includes, and is formed by, a hydrophobic silane that is applied to and reacts with the inorganic material), vinyltriethoxysilane (i.e., a reactive silane that is subsequently applied to and reacts with the hydrophobic silane and the inorganic material), and a silane (i.e., a polymeric coating that is subsequently applied to and reacts with the hydrophobic silane, the reactive silane and the inorganic material; Paragraph 0041). The category of silanes includes polymers of silanes and the processes of ALD an MLD, disclosed by Darling, are known methods of exposing the oleophilic materials which can react the silanes both with the inorganic materials and with the other silane compounds by means of the co-reactant, such as water, used between ALD cycles of the oleophilic material (Paragraphs 0040-0043). Darling further teaches that the foam structure can be shaped so as to form any suitable structure (Paragraph 0022)
Darling does not teach wherein the polymeric substrate comprises a reticulated foam having a 3D open-cell structure.
However, Rothman teaches that a solid phase body may take the form of a reticulated foam made of soft polymers providing the three-dimensional open-cell structure for the purpose of having a higher surface area to volume ratio (i.e., wherein the polymeric substrate comprises a reticulated foam having a 3D open-cell structure; Paragraphs 0153).
It would have been obvious to one of ordinary skill in the art to modify the oleophilic foam as taught by Darling with the structure as taught by Rothman because the structure would have a higher surface area to volume ratio.
Furthermore, the limitation “configured to attract mineral particles of interest in an aqueous system” is directed toward an expected result from the practice or use of the claimed invention and is therefore not subject to patentability. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)). See MPEP §2112.01(I).
Conclusion
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/A.A.G./ Examiner, Art Unit 1777
/IN SUK C BULLOCK/ Supervisory Patent Examiner, Art Unit 1772