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 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Withdrawn Claims: 4-6 and 16-17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 08 APRIL 2026 has been entered.
In view of the amendment to the claims, the amendment of claims 1-2, 7, 9, and 23-26 has been acknowledged.
In view of the amendment to claim 25, the claim objection has been withdrawn.
In view of the amendment to claims 1 and 23-24, the rejections under 35 U.S.C. 102 have been changed to rejections under 35 U.S.C. 103 and the rejections under 35 U.S.C. 103 have been modified to account for the newly amended limitations.
Response to Arguments
Applicant’s arguments filed on 08 APRIL 2026 have been fully considered.
Applicant argues that Darling does not teach a hydrophobic polymer coating that is disposed on and reacts with the inorganic material of the inorganic deposited substrate because Darling only describes the oleophilic layer as a silane which is functionalizing the inorganic layer and is not considered a hydrophobic polymer compound. Therefore, instant claim 1 is allowable (Arguments filed 08 APRIL 2026, Pages 9-10).
Regarding Applicant’s argument, polymers are units of monomers formed into large structural units by the covalent bonding of the monomer units to each other. Darling does not explicitly teach that the oleophilic material, which is a silane, is made to be a hydrophobic polymer coating. However, Darling teaches that the silane material is optionally exposed to a co-reactant such as water, after the inorganic layer has already been exposed to the silane (Paragraph 0042). This is well known in the art to cause cross-linking between the silane monomer groups through a hydrolysis reaction and would make the deposited silane layer into a silane polymer layer (i.e., a hydrophobic polymer coating). As such, Darling teaches the polymerization of a silane after reaction and attachment to the inorganic layer and so the silane is considered “a hydrophobic polymer coating that is disposed on and reacts with the inorganic material of the inorganic deposited substrate”. Therefore, instant claim 1 is not allowable.
Applicant argues that instant claims 2-3, 7-15, 18, and 23-26 either depend from instant claim 1 or contain the same limitations as instant claim 1 and are allowable for the same reasons above (Arguments filed 08 APRIL 2026, Page 10).
Regarding Applicant’s argument, instant claim 1 is not allowable and so instant claims 2-3, 7-15, 18, and 23-26 are also not allowable.
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.
Claims 1-3, 7-9, 11-14, 18, and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Darling et al US Patent Application No. 20170166456 A1 (hereinafter Darling).
Regarding Claim 1, Darling teaches 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).
Darling does not explicitly teach that the oleophilic material, which is a silane, is made to be a hydrophobic polymer coating.
However, Darling teaches that the silane material is optionally exposed to a co-reactant such as water, after the inorganic layer has already been exposed to the silane (Paragraph 0042). This is well known in the art to cause cross-linking between the silane monomer groups through a hydrolysis reaction and would make the deposited silane layer into a silane polymer layer (i.e., a hydrophobic polymer coating).
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 further teaches 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 polymer 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 further teaches 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 further teaches that an inorganic material can be functionalized with vinyltriethoxysilane (i.e., wherein the hydrophobic polymer 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). Darling further teaches that the silane material is optionally exposed to a co-reactant such as water, after the inorganic layer has already been exposed to the silane (Paragraph 0042). This is well known in the art to cause cross-linking between the silane monomer groups through a hydrolysis reaction and would make the deposited silane layer into a silane polymer layer (i.e., a hydrophobic polymer coating).
Regarding Claim 8, 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 further teaches that the oleophilic material can include a combination of butyldimethyl(dimethylamino)silane (i.e., wherein the hydrophobic polymer 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 silane material is optionally exposed to a co-reactant such as water, after the inorganic layer has already been exposed to the silane (Paragraph 0042). This is well known in the art to cause cross-linking between the silane monomer groups through a hydrolysis reaction and would make the deposited silane layer into a silane polymer layer (i.e., a hydrophobic polymer coating).
Regarding Claim 11, Darling further teaches 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 further teaches 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 further teaches 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 further teaches 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 further teaches 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 teaches 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).
Darling does not explicitly teach that the oleophilic material, which is a silane, is made to be a hydrophobic polymer coating.
However, Darling teaches that the silane material is optionally exposed to a co-reactant such as water, after the inorganic layer has already been exposed to the silane (Paragraph 0042). This is well known in the art to cause cross-linking between the silane monomer groups through a hydrolysis reaction and would make the deposited silane layer into a silane polymer layer (i.e., a hydrophobic polymer coating).
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 further teaches that an inorganic material can be functionalized with vinyltriethoxysilane (i.e., wherein the hydrophobic polymer 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). Darling further teaches that the silane material is optionally exposed to a co-reactant such as water, after the inorganic layer has already been exposed to the silane (Paragraph 0042). This is well known in the art to cause cross-linking between the silane monomer groups through a hydrolysis reaction and would make the deposited silane layer into a silane polymer layer (i.e., a hydrophobic polymer coating).
Regarding Claim 26, Darling further teaches that the oleophilic material can include a combination of butyldimethyl(dimethylamino)silane (i.e., wherein the hydrophobic polymer 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 silane material is optionally exposed to a co-reactant such as water, after the inorganic layer has already been exposed to the silane (Paragraph 0042). This is well known in the art to cause cross-linking between the silane monomer groups through a hydrolysis reaction and would make the deposited silane layer into a silane polymer layer (i.e., a hydrophobic polymer coating).
Claims 10 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Darling as applied to claim 1 above, and further in view of Rothman et al US Patent Application No. 20170232451 A1 (hereinafter Rothman).
Regarding Claim 10, 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 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.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Darling in view of Rothman.
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 polymer 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 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 explicitly teach that the oleophilic material, which is a silane, is made to be a hydrophobic polymer coating.
However, Darling teaches that the silane material is optionally exposed to a co-reactant such as water, after the inorganic layer has already been exposed to the silane (Paragraph 0042). This is well known in the art to cause cross-linking between the silane monomer groups through a hydrolysis reaction and would make the deposited silane layer into a silane polymer layer (i.e., a hydrophobic polymer coating).
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
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 ADAM ADRIEN GERMAIN whose telephone number is (703)756-5499. The examiner can normally be reached Mon - Fri 7:30-4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at (571)272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.A.G./ Examiner, Art Unit 1777
/Ryan B Huang/ Primary Examiner, Art Unit 1777
Prosecution Insights