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 .
Response to Amendment
The Amendment filed January 29, 2026 has been entered. Claims 1-8 and 11-16 are pending in the application. Claims 9 and 10 were previously canceled. Claims 1 and 5 were amended and support is found in the Claims and Specification as originally filed.
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.
Claims 1-6, 8, and 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Karada et al., (CN1311266 (A1); cited in the IDS submitted on 08/15/2022; English translation incorporated herewith; hereafter as “Karada”) in view of Liu et al. (CN110015666A; cited in the IDS submitted on 08/15/2022; English translated incorporated herein; hereafter as “Liu”).
Regarding Claims 1, 3, 5, 8, and 11-16, Karada teaches a method of obtaining spherical polysiloxane microparticles [Claim 1], corresponding to the preparation method for a spherical silica powder filler of Claim 1. Karada further teaches said method comprises:
polycondensing an organic trialkoxysilane represented by R1Si(X)3 [¶ 0050; Claim 1], corresponding to the hydrolysis condensation reaction of R1SiX3 of Claim 1;
an organic trialkoxysilane represented by R1Si(X)3 such as methyltrimethoxysilane [¶ 0050; Example 1], thereby reading on wherein R1 is an organic group with 1 carbon atom, of Claim 1, and wherein the T unit is R1SiO3- of Claim 1;
wherein X is a hydrolyzable group [Claim 1], corresponding to wherein X is a hydrolyzable group of Claim 1;
white powder was heated in air for thermal decomposition and the product was amorphous silica [Paragraph 0044], corresponding to calcining the spherical polysiloxane under the condition of a dry oxidizing gas atmosphere, so as to obtain the spherical silica powder filler of Claim 1; and
an average silicone dioxide particle size of 2.43 μm (2,430 nm) [Paragraphs 0043-044], corresponding to silica particles of which the diameter is not less than 50 nanometers of Claims 1, 3 and 11-16, and wherein the diameter is not less than 50 nanometers, and an average particle size of the spherical silica powder filler is between 0.1 µm and 5 µm (100-5,000 nm) of Claims 8 and 11-16; and
However, Karada is silent to wherein the weight ratio of water to R1SiX3 is selected from the group consisting of 600:80 and a range of 1100:80 to 1500:80 of Claim 1, a calcinating temperature being between 1000-1100˚of Claim 1, and a calcinating time is between 6 hours and 12 hours of Claim 5.
Nevertheless, Liu teaches a method of producing high-purity submicron spherical silica powder, comprising 1-100 mol parts water and 1-10 mol parts of an organosilane such as methyltrimethoxysilane of Claim 1(MTMS) [Claim 1; ¶ 0002-0020] (wherein said MTMS corresponds to the R1SiX3) which is equivalent to a weight ratio of water to R1SiX3 of 1:80 to 1059:80 (MTMS MW = 136 g/mol; min water to R1SiX3 ratio = 1 mol water to 10 mol MTMS = 18 g water to 1360 g MTM = 1:80; max water to R1SiX3 ratio = 100 mol water to 1 mol MTMS = 1800 g water to 136 g MTM = 1059:80) which overlaps with wherein the weight ratio of water to R1SiX3 is 600:80 of Claim 1.Liu also teaches the method is environmentally friendly because it uses less water than tradition methods for preparing silicone powder [¶ 0023].
Liu further teaches a calcinating temperature of 500-1200 degrees Celsius for 1-15 hours [¶ 0015, 0022], which overlaps a calcinating temperature being between 1000-1100˚C of Claim 1, and a calcinating time is between 6 hours and 12 hours of Claim 5. Liu teaches the calcinating process results in a desirable high-purity submicron spherical silicon powder [¶ 0022].
Karada and Liu are considered to be analogous art as the claimed invention, as all are in the same field of preparing spherical silica powder comprising organosilane and water.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the water/MTMS ratio and calcinating process of Liu with the spherical polysiloxane microparticles of Karada, thereby arriving at the claimed invention.
Furthermore, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Liu for the ratio of water to R1SiX3, calcinating temperature and time (1-1059:80, 500-1200˚C, and 1-15 hours, respectively) overlaps the instantly claimed range (600:80, 1000-1100˚C, and 6-12 hours, respectively) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding Claims 2 and 6, Karada further teaches:
wherein the hydrolysable group, X, may include a halogen [Paragraph 0022], thereby reading on wherein the hydrolyzable group is a halogen atom of Claim 2; and
an organic silane represented by the formula SiX4, wherein X represents a hydrolyzable group [Claim 1], such as tetramethoxysilane [Example 1], which reads on wherein Q-unit is SiO4- of Claim 6.
Karada teaches the polysiloxane microparticles were spherical [Paragraph 0043], corresponding to the spherical polysiloxane of Claim 4.
However, Karada is silent to wherein the oxidizing gas contains oxygen to oxidize all the organics in the polysiloxane of Claim 4.
Regarding Claim 4, the calcination oxidizing efficacy are functions of the composition of the polysiloxane and the method by which it is calcinated. Since Karada teaches the same silica powder formed by the same method as required by the instant claim, as set forth in the rejection above, the silica powder of Karada would be expected to result in the same oxidation efficacy as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is expectedly present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed silica powder, as the reference teaches each of the claimed ingredients (polysiloxane) for the same utility (making silica powder) and for the same purpose (to producing a silica powder filler).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Karada et al., (CN1311266 (A1); cited in the IDS submitted on 08/15/2022; English translation incorporated herewith; hereafter as “Karada”) as set forth in Claims 1-3, 6, 8 and 11-16 above, and in view of Liu et al. (CN110015666A; cited in the IDS submitted on 08/15/2022; English translated incorporated herein; hereafter as “Liu”) in further view of Sun et al., (CN 110016242 A; cited in the IDS submitted on 08/15/2022; English translation incorporated herewith; hereafter as “Sun”).
Karada and Liu teach the silica powder produced by means of hydrolysis and calcination of Claim 1 as set forth above and incorporated herein by reference.
However, Karada and Liu are silent to wherein the preparation method further comprises adding a treatment agent to perform surface treatment on the spherical silica powder filler, and the treatment agent comprises a silane coupling agent and/or disilazane of Claim 7.
Nevertheless, Sun teaches a method for modifying the surface of a monomolecular layer of nano-silicon dioxide [Claim 1], which corresponds to performing surface treatment on the spherical silica powder filler of Claim 7. Sun further teaches the silane coupling agent may be is hexamethyl disilazane [Claim 3], which corresponds to the disilazane of Claim 7. Sun also teaches said method results in improved dispersibility of the modified nano-silica as a filler in the resin, thereby having a stronger interfacial force and obtaining better comprehensive performance [Paragraph 0022].
Karada, Liu and Sun are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing silica powders.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the method of surface modification of Sun with the polysiloxane particle of Karada and Liu, thereby arriving at the claimed invention.
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-
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Claims 1-2 and 4-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-3 and 5-7 of copending Application No. 17/800073. Although the claims at issue are not identical, they are not patentably distinct from each other because the silica powder prepared from calcining polysiloxane and the method of use of said silica powder, anticipate the instant claimed silica powder prepared from calcining polysiloxane and the method of use of said silica powder. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed January 29, 2026 have been fully considered but they are not persuasive.
Applicant argues (1) that experimental data demonstrates critical synergy between the specific water ratio and the high-temperature calcination range now recited in Claim 1. However, the data have been considered but are not found to be convincing. The water ratio data presented demonstrate comparative examples (Comparative Example 1, and Example 6) having water ratios of 5000:80 and 2500:80 which are outside the upper end of the claimed ranges, versus comparative Example 2 having a water ratio of 800:80 which is the singular data point between the claimed range of 600:80 and 1100:80 to 1500:80. The comparative examples are shown in comparison to Examples 1, 3, and 4 having water ratios of 600:80, 1100:80, and 1100:80, and 1500:80, respectively, which are within the claimed ranges. However, there is no comparative example demonstrating that a water ratio outside the lower end of the claimed range (<600:80) confers the same purported improved results (particle size and dielectric loss). Therefore, the unexpected results do not correlate to the claimed range of water ratio. The data is not commensurate in scope with the claim language and is therefore not found to be persuasive. As such, it is suggested that multiple data points be presented to show claimed particle size and dielectric loss properties within the claimed water ratio range vs. outside the claimed ranges (below the lower water ratio range <600:80, and between the range of 600:80 and 1100:80) confers the same unexpected results. Thus, applicant’s argument is not persuasive.
Furthermore, the high-temperature calcination data demonstrate comparative examples (Examples 5, 2, 6, and Comparative Example 1) with calcination temperatures of 950, 850, 1000, and 1000˚C, all of which are below the lower end of the claimed range. However, there is no complementary data demonstrating expected or desirable results with calcination temperatures that are above the upper end of the claimed range. Therefore, the unexpected results do not correlate to the claimed range of water ratio. The data is not commensurate in scope with the claim language and is therefore not found to be persuasive. As such, it is suggested that multiple data points be presented to show claimed particle size and dielectric loss properties within the claimed water ratio range vs. outside the claimed ranges (with multiple data points within, above and below the claimed range, i.e., 1000-1100˚C, below 1000˚C, and above 1100˚C) confers the same unexpected results. Thus, applicant’s argument is not persuasive.
In addition, regarding Applicant’s asserted “critical synergy” that results in dielectric loss that “increases significantly,” the data have been considered but are not found to be convincing. Comparative example (Example 5), with a “Liu-like” ratio and a Karada-like temperature, has a dielectric loss of 0.0006, which is slightly above the dielectric loss of 0.0005 of an exemplary example (Example 4). It is unclear what the Applicant considers a significant dielectric loss.
On a similar note, Applicant’s Remarks submitted on 07/07/2025 disclosed that water ratios of 800:80, 1100:80, 2500:80 resulted in “exceptionally low dielectric loss” [Page 6, ¶ 3]. These water ratios were within the previously claimed range, but now that they fall outside of the claimed range, Applicant asserts that the “dielectric loss increases significantly.” Previously exemplary examples are now considered comparative examples even though the dielectric loss data for each example remained the same. Again, it is unclear what the Applicant considers a significant dielectric loss. It appears that the claimed ranges were amended around ranges taught in the prior art but data demonstrating criticality of the claimed range is lacking. Thus, applicant’s argument is not persuasive.
Applicant argues (2) a person skilled in the art following Karada would be discouraged from increasing the temperature to 1100˚C, as the prior art does not suggest that this specific range would solve the problem of dielectric loss. However, attention is directed to the disclosure above, wherein Karada is no longer relied on to teach the calcinating temperature, Liu is. More specifically Liu teaches a calcinating temperature of 500-1200 degrees Celsius for 1-15 hours [¶ 0015, 0022], which overlaps the claimed calcinating temperature and time. Liu further teaches the calcinating process results in a desirable high-purity submicron spherical silicon powder [¶ 0022] which would motivate one of ordinary skill to use the teachings of Liu to modify the silica powder of Karada. Thus, applicant’s argument is not persuasive.
Applicant argues (3) that Claim 1 was narrowed to the specific high-performance “islands” proven by the examples. However, as mentioned above in (1), the data has been considered but not found to be convincing. It is suggested that more data points in more data ranges (above, below, and within claimed ranges) be provided that demonstrate the asserted criticality. Thus, applicant’s argument is not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764