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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/5/2025 has been entered.
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.
Claim(s) 1-4, 6-10 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Ooshiro (US 20190071818) in view of ‘655 (KR 101938655 B1). A machine translation of ‘655 has been attached as an English equivalent and is used in the citations below.
Regarding Claims 1 and 6, Ooshiro discloses a method for manufacturing an insulation sheet comprising a silica aerogel (abstract), comprising the steps of: adding a concentrated hydrochloric acid catalyst to a silica material, thereby preparing a silica sol solution ([0045]); impregnating a nonwoven fabric substrate with the silica sol solution ([0048]), and gelling the silica aerogel solution ([0049]); immersing, in hydrochloric acid, the gel-impregnated substrate ([0051-0053], i.e. a chlorine-based acid-induced aqueous solution), and immersing in a mixture solution of a silylating agent and an alcohol, thereby performing hydrophobization ([0054-0056], i.e. an acidic surface modification solution containing a surface modifier); and performing drying ([0057-0058]).
Ooshiro does not explicitly teach using a sodium-based base catalyst; however, ‘655 teaches mixing a silica sol with a basic catalyst such as sodium hydroxide during manufacturing an silica aerogel blanket (See Claim 10). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the catalyzed silica sol of Ooshiro to be a base catalyzed sol, as taught in ‘655, because it is a known catalyzed silica sol in the aerogel art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the aerogel of Ooshiro with a base catalyzed sol as in ‘655.
Ooshiro does not explicitly teach the number of moles of acid in the acidic surface modification solution with respect to a number of moles of sodium ions in the sodium-based base catalyst; however, Ooshiro teaches the hydrophobization surface modification in a sufficient amount to cause reaction between the gel and the acid. Ooshiro teaches the surface modification permeating the substrate and creating cavities for the silylation agent to permeate. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to optimize the concentration of the surface modification, as suggested by the reference, in order to achieve sufficient reaction, permeation, and cavities, and in such an optimization one of ordinary skill in the art would have arrived at applicant’s claimed concentrations.
Regarding Claim 2, ‘655 teaches using an alcohol solution of basic catalyst such as sodium hydroxide (Step 2). ‘655 does not explicitly teach an aqueous solution; however, ‘655 teaches the sol prepared by a mixture including water (Step 1) and selection of any order of mixing ingredients is prima facie obvious. MPEP 2144.04 IV C. It would have been prima facie obvious to one of ordinary skill in the art to select the order of mixing ingredients of ‘655 to be any order, including mixing of the base catalyst with water before mixing with the silica precursor, because selection of any order of mixing ingredients is prima facie obvious and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the sol of ‘655 with any order of mixing the ingredients.
Regarding Claim 3, ‘655 teaches preparing a silica sol comprising a silica precursor and an alcohol (see claim 10).
Regarding Claim 4, Ooshiro teaches wherein a silica sol is used at a theoretical spatial volume, which is required from the volume density of the substrate, or greater ([0048]). Ooshiro teaches the aerogel content is a variable which effects heat insulation, productivity, and economy ([0048]). Ooshiro does not explicitly teach 80-120 vol% based on the volume of the substrate for a blanket; however, Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05 II A. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to optimize the concentration of sol of the combined references, as suggested by Ooshiro, in order to achieve a desirable heat insulation, productivity, and economy, and in such an optimization one of ordinary skill in the art would have arrived at Applicant’s claimed concentration.
Regarding Claim 7, Ooshiro teaches immersion in the mixture solution of a silylating agent and an alcohol ([0054-0056]). Ooshiro is silent as to the concentration of the solution; therefore, one of ordinary skill in the art would have been motivated to look to related art to determine a suitable concentration. ‘655 teaches a surface modifier is used as a solution phase diluted with an organic solvent, and is diluted at 10 vol% (Step 3). 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). MPEP 2144.05 I. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the concentration of Ooshiro to be a concentration, as suggested by ‘655, because ‘655 teaches it is a suitable solution concentration in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the mixture of Ooshiro with a concentration as taught in ‘655.
Regarding Claim 8, Ooshiro does not explicitly teach the claimed surface modifiers; however, ‘655 teaches the surface modifier is trimethylchlorosilane or hexamethyldisilazane (see Claim 9). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the modifier of Ooshiro to be a modifier, as suggested by ‘655, because ‘655 teaches it is a suitable modifier in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the product of Ooshiro with a modifier as taught in ‘655.
Regarding Claim 9, Ooshiro teaches curing in order to reinforce the structure of a gel skeleton after gelation ([0050], i.e. aging). ‘655 also teaches performing aging after gelation to allow the gel to complete the chemical change. ‘655 teaches the aging step allows the structure to be more firmly formed and enhances mechanical stability (Step 2). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the curing of Ooshiro to include an aging step, as taught in ‘655, in order to achieve a more firmly formed structure with enhanced mechanical stability.
Regarding Claim 10, ‘655 teaches wherein the aging is carried out at a temperature of 50-70°C for 1-10 hours (Step 2). 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). MPEP 2144.05 I. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the aging of the combined references to be at any conditions, as suggested by ‘655, including those within the claimed range, because ‘655 teaches they are all suitable conditions in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the product of the combined references with aging conditions as taught in ‘655.
Regarding Claim 12, Ooshiro teaches performing drying at 150℃ for two hours ([0057]). Ooshiro does not teach drying under pressure or in a vacuum, i.e. atmospheric pressure.
Regarding Claim 13, Ooshiro teaches wherein the substrate comprises pores ([0011]). ‘655 further teaches a porous body can be used as a substrate for a blanket ([0001]).
Regarding Claim 14, Ooshiro does not explicitly teach the claimed surface modifiers; however, ‘655 teaches methyltrimethoxysilane (MTMS), trimethylethoxysilane (TMES), ethyltriethoxysilane (ETES), and phenyltriethoxysilane (PTES) (Claim 9). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the modifier of Ooshiro to be a modifier, as suggested by ‘655, because ‘655 teaches it is a suitable modifier in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the product of Ooshiro with a modifier as taught in ‘655.
Ooshiro teaches the silica material of the sol may be alkoxysilane or water glass, i.e. sodium silicate ([0046]). Ooshiro does not explicitly teach a combination of the two; however, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). MPEP 2144.06 I. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of the combined references to further include a water glass, as suggested by Ooshiro, because Ooshiro teaches both alkoxysilane and waterglass as suitable silica materials and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the composition of Ooshiro with a combination of the taught suitable silica materials.
Regarding Claim 15, ‘655 teaches wherein the aging is carried out at a temperature of 50-70°C for 1-10 hours (Step 2). 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). MPEP 2144.05 I. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the aging of the combined references to be at any conditions, as suggested by ‘655, including those within the claimed range, because ‘655 teaches they are all suitable conditions in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the product of the combined references with aging conditions as taught in ‘655.
Ooshiro teaches immersion in the mixture solution of a silylating agent and an alcohol ([0054-0056]). Ooshiro is silent as to the concentration of the solution; therefore, one of ordinary skill in the art would have been motivated to look to related art to determine a suitable concentration. ‘655 teaches a surface modifier is used as a solution phase diluted with an organic solvent, and is diluted at 10 vol% (Step 3). ‘655 does not teach 15-40 vol%; however, ‘655 teaches the surface modifier added in an amount of 0.01 to 10 % by volume based on the silica wet gel volume such that the surface modifier concentration effects the porosity and economic efficiency of the process (Step 3). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the concentration of Ooshiro to be an optimum concentration, as suggested by ‘655, in order to achieve a desired porosity and economic efficiency and in such an optimization one of ordinary skill in the art would have arrived at the claimed concentration.
‘655 teaches using an alcohol solution of basic catalyst such as sodium hydroxide (Step 2). ‘655 does not explicitly teach an aqueous solution; however, ‘655 teaches the sol prepared by a mixture including water (Step 1) and selection of any order of mixing ingredients is prima facie obvious. MPEP 2144.04 IV C. It would have been prima facie obvious to one of ordinary skill in the art to select the order of mixing ingredients of ‘655 to be any order, including mixing of the base catalyst with water before mixing with the silica precursor, because selection of any order of mixing ingredients is prima facie obvious and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the sol of ‘655 with any order of mixing the ingredients.
Ooshiro teaches immersing, in hydrochloric acid, the gel-impregnated substrate ([0051-0053], i.e. a chlorine-based acid-induced aqueous solution).
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Ooshiro (US 20190071818) in view of ‘655 (KR 101938655 B1) as applied to claims 1-4, 6-10 and 12-15 above, and further in view of Sun (US20010012819).
Regarding Claim 11, Ooshiro does not explicitly teach washing after hydrophobization; however, Sun teaches water washing of an aerogel treated with acid and silylation before drying ([0350]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the process of the combined references to include water washing, as taught in Sun, because it is a known treatment in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the aerogel of Ooshiro with a water washing, as in Sun.
Response to Arguments
Applicant's arguments filed 12/5/2025 have been fully considered but they are not persuasive.
Applicant argues "in the introducing, the chlorine-based acid-induced aqueous solution is introduced such that a number of moles of acid in the acidic surface modification solution is 1 equivalent to 10 equivalents with respect to a number of moles of sodium ions in the sodium-based base catalyst." is not disclosed or rendered obvious by Ooshiro, Yoo, and Sun, either taken alone or in combination. Applicant argues the Examples with Comparative Examples 7 and 8 of the present application show a synergistic effect in sodium hydroxide and hydrochloric acid of the acidic surface modification solution within the range from 1 equivalent to 10 equivalents (moles of acid:moles of sodium in base catalyst). In response to applicant’s argument, the independent claims are open to all methods of mixing under any processing conditions, all silica sols in any concentration, all sodium-based base catalysts, all methods of impregnating and gelling under any processing conditions, all method of introducing acidic surface modification solutions, all surface modifiers in any concentration, all chlorine-based acid-induced aqueous solutions, and all methods of drying under any processing conditions. The examples of the specification are not commensurate in scope with the present claim language. Also the examples are not sufficient to show criticality of the claimed range. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). MPEP 716.02(d). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). MPEP 176.02(d). There are no comparative examples outside of the claimed range to demonstrate the criticality of the claimed range.
Applicant argues the dependent claims are allowable for the same reasons and the other references do not cure the deficiencies; however, this is not convincing as discussed above.
Conclusion
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/TABATHA L PENNY/Primary Examiner, Art Unit 1712
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