DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 6-12 are withdrawn.
Claims 1-5 and 13-20 are pending and represent all claims currently under consideration.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/27/2026 has been entered.
Response to Arguments
Applicant's arguments filed 01/27/2026 have been fully considered but they are not persuasive.
Applicant argues that the water content in Yougen is determined by measuring the weight change after drying at 150°C for 20 hours, and therefore does not read on the water content of the amended claim which is a difference between a weight reduction percentage from a room temperature to a temperature of 500°C and a weight reduction percentage from a room temperature to a temperature of 1100°C (Remarks, page 5). This argument is not persuasive, because there is no evidence provided to support that the claimed measurement of water content would result in a different value than the measurement of water content by Yougen. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Applicant argues that nothing in Suzuki ‘215 allows for an assumption that the water content disclosed is what remains after firing or that such moisture content is structural water as recited in the amended claim (Remarks, pages 6-7). This argument is not persuasive, because as stated previously, Suzuki ‘215 teaches a method of producing silica particles with controlled pores characterized by firing at a temperature of 300-1300 °C (Suzuki ‘215, page 3, paragraph 0011) and teaches a controlled pore silica particle having a moisture content of 10% or less (Suzuki ‘215, claim 3), which overlaps the claimed range. Therefore, it would be reasonable to expect that the moisture content is what remains after firing.
Applicant further states that the silica obtained after calcination in Suzuki ‘215 does not fall within the specific surface area range of the claims, and therefore simultaneous achievement of the multiple parameters are not taught or suggested, citing Suzuki’s teaching that “the pores are controlled to have a specific surface area of 3 to 60 m2/g” (Remarks, page 7). This argument is not persuasive, because the teaching cited by the Applicant refers to a specific surface area of the pores, while in the preceding paragraph, Suzuki ‘215 teaches a specific surface area of the silica of 400 m2/g or more (Suzuki ‘215, page 2, 2nd paragraph), which lies within the claimed range and reads on the specific surface area of the silica particles as claimed.
Applicant argues that one of ordinary skill in the art would not find the oil absorption capacity of Lukas relevant to the particles of Suzuki ‘215 (Remarks, page 8). This argument is not persuasive, because while Suzuki ‘215 does not measure an oil absorption, Suzuki ‘215 teaches a pore volume of at least 0.1 ml/g (Suzuki ‘215, abstract), which overlaps the claimed range. Lucas (WO 2019068596 A1) teaches silica particles with a pore volume of less than 0.1 ml/g, overlapping the claimed range and the range of Suzuki ‘215, and teaches the claimed oil absorption capacity (Lucas, claim 7). Therefore, the teachings of Lucas suggest an oil absorption as claimed is known in the field for silica particles having the claimed pore volume, and is relevant to the particles of Suzuki ‘215.
Maintained/Modified 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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki ‘029 (JP H08209029 A), further in view of Yougen (JP 2004010420 A; IDS reference, 12/08/2022). The references were cited previously by the Examiner.
Regarding claim 1, Suzuki ‘029 teaches spherical silica particles (Suzuki ‘029, claim 6) wherein a BET specific surface area is 30-800 m2/g (Suzuki ‘029, claim 1), which overlaps the claimed range of 300 m2/g or more, and Suzuki ‘029 teaches the surface area is measured by the BET method (Suzuki ‘029, page 10, 8th paragraph). Suzuki ‘029 teaches a preferred pore volume of 0.2-2 cc/g (i.e., mL/g; Suzuki ‘029, page 6, 3rd paragraph), which overlaps the claimed range of 0.3 ml/g or less, and further teaches an oil absorption ranging from 50 ml/100 g to 300 ml/100 g (Suzuki , page 6, 4th paragraph), which overlaps the claimed range of 50 ml/100 g or less. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Suzuki ‘029 teaches the addition of water (Suzuki ‘029, page 10, paragraph 0092), but does not specify a content percentage. Yougen teaches a spherical silica powder with a desired water content of 0.3-5% by mass (Yougen, page 33, paragraph 0041), which overlaps the claimed range of 1.6% or more water. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP § 2144.05(I). Yougen further teaches the water content affects the level of cohesiveness (i.e., the water is structural; Yougen, page 33, paragraph 0041). While Yougen does not measure a content percentage of structural water in the exact method as claimed, the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Suzuki ‘029 and Yougen are considered to be analogous to the claimed invention, because all are in the same field of spherical silica particles with similar surface areas. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized the water content in the spherical silica particle taught by Suzuki ‘029 through routine experimentation, because Suzuki does not specify the final amount of water present. See MPEP § 2144.05(II). It would be reasonable to expect one skilled in the art to arrive at the claimed water content when optimizing within the range taught by Yougen, because Yougen teaches the water content affects the level of cohesiveness and teaches a preferred amount which achieves the best dispersion state (Yougen, page 33, paragraph 0041).
Regarding claim 2, Suzuki ‘029 and Yougen together teach all the elements of the current invention as applied to claim 1. As above, Suzuki ‘029 teaches the addition of water (Suzuki ‘029, page 10, paragraph 0092), but does not specify a content percentage. Yougen teaches a spherical silica powder with a desired water content of 0.3-5% by mass (Yougen, page 33, paragraph 0041), which overlaps the 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. See MPEP § 2144.05(I). Yougen further teaches the water content affects the level of cohesiveness (i.e., the water is structural; Yougen, page 33, paragraph 0041). It would be reasonable to expect one skilled in the art to arrive at the claimed water content when optimizing within the range taught by Yougen, because Yougen teaches the water content affects the level of cohesiveness and teaches a preferred amount which achieves the best dispersion state (Yougen, page 33, paragraph 0041).
Regarding claim 3, Suzuki ‘029 and Yougen together teach all the elements of the current invention as applied to claim 1. Suzuki ‘029 teaches either drying at a temperature of up to 150 °C or calcination at a temperature of 150-1000 °C (Suzuki ‘029, page 9, 2nd paragraph). Therefore, it would have been prima facie obvious to one of ordinary skill in the art to use an alternative to calcination processing at a temperature of 1000 °C or more, such as calcination processing at a lower temperature or drying as taught by Suzuki ‘029.
Regarding claim 4, Suzuki ‘029 and Yougen together teach all the elements of the current invention as applied to claim 1. Suzuki ‘029 teaches silica is coated or surface treated (i.e., compounded) with an inorganic oxide which can be titanium oxide or zinc oxide (Suzuki ‘029, page 9, 3rd paragraph).
Regarding claim 5, Suzuki ‘029 and Yougen together teach all the elements of the current invention as applied to claim 4. Suzuki ‘029 teaches the metal oxide in 0-50% by weight based on the weight of SiO2 (i.e., the silica particle; Suzuki ‘029, claim 1), which encompasses the claimed range of 0.5-30% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Claims 1-5, 13, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki ‘215 (JP H09208215 A), further in view of Suzuki ‘029 (JP H08209029 A). The references were cited previously by the Examiner.
Regarding claim 1, Suzuki ‘215 teaches silica particles having a specific surface area of 400 m2/g or more, which lies within the claimed range, and a pore volume of at least 0.1 ml/g (Suzuki ‘215, abstract), which overlaps the claimed range. Suzuki ‘215 teaches the specific surface area is determined by the BET method (Suzuki ‘215, page 4, paragraph 0017). Suzuki ‘215 teaches a method of producing silica particles with controlled pores characterized by firing at a temperature of 300-1300 °C (Suzuki ‘215, page 3, paragraph 0011) and teaches a controlled pore silica particle having a moisture content of 10% or less (Suzuki ‘215, claim 3), which overlaps the claimed range. As stated in the instant specification, typically adsorbed water can be easily removed by heating at around 100 °C, whereas structural water is difficult to remove even at temperatures above 400 °C (pages 3-4, paragraph 0014). Therefore, it would be reasonable to expect that after firing at 300-1300 °C, only structural water would remain to contribute to the moisture content. While Suzuki ‘215 does not measure a content percentage of structural water in the exact method as claimed, the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Suzuki ‘215 does not measure an oil absorption as claimed. Suzuki ‘029, however, teaches spherical silica particles (Suzuki ‘029, claim 6) wherein a BET specific surface area is preferably 100-500 m2/g (Suzuki ‘029, page 10, 2nd paragraph), which overlaps the claimed range of 300 m2/g or more, and Suzuki ‘029 teaches the surface area is measured by the BET method (Suzuki ‘029, page 10, 8th paragraph). Suzuki ‘029 teaches a preferred pore volume of 0.2-2 cc/g (i.e., mL/g; Suzuki ‘029, page 6, 3rd paragraph), which overlaps the claimed range of 0.3 ml/g or less, and further teaches a preferred oil absorption ranging from 50 ml/100 g to 300 ml/100 g (Suzuki ‘029, page 6, 4th paragraph), which overlaps the claimed range of 50 ml/100 g or less.
Suzuki ‘215 and Suzuki ‘029 are considered to be analogous to the claimed invention, because both are in the same field of spherical silica particles with the same surface area and pore volume. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention based on the teachings of Suzuki ‘215 and Suzuki ‘029, that a spherical silica particle of the claimed surface area and pore volume would be expected to result in the claimed structural water content as measured by Suzuki ‘215 and the claimed oil absorption as taught by Suzuki ‘029.
Regarding claim 2, Suzuki ‘215 and Suzuki ‘029 together teach all the elements of the current invention as applied to claim 1. Suzuki ‘215 teaches a method of producing silica particles with controlled pores characterized by firing at a temperature of 300-1300 °C (Suzuki ‘215, page 3, paragraph 0011) and teaches a controlled pore silica particle having a moisture content of 10% or less (Suzuki ‘215, claim 3), which overlaps the claimed range. As stated in the instant specification, typically adsorbed water can be easily removed by heating at around 100 °C, whereas structural water is difficult to remove even at temperatures above 400 °C (pages 3-4, paragraph 0014). Therefore, it would be reasonable to expect that after firing at 300-1300 °C, only structural water would remain to contribute to the moisture content.
Regarding claim 3, Suzuki ‘215 and Suzuki ‘029 together teach all the elements of the current invention as applied to claim 1. Suzuki ‘215 teaches the particles are dried or calcined (Suzuki ‘215, page 2, 2nd paragraph). Further, Suzuki ‘029 teaches either drying at a temperature of up to 150 °C or calcination at a temperature of 150-1000 °C (Suzuki ‘029, page 9, 2nd paragraph). In both cases, it would have been prima facie obvious to one of ordinary skill in the art to use an alternative to calcination processing at a temperature of 1000 °C or more, such as drying at a lower temperature as taught by both references (Suzuki ‘215, page 9, paragraph 0074; Suzuki ‘029, page 9, 2nd paragraph) or calcination processing at a lower temperature as taught by Suzuki ‘029 (Suzuki ‘029, page 9, 2nd paragraph).
Regarding claim 4, Suzuki ‘215 and Suzuki ‘029 together teach all the elements of the current invention as applied to claim 1. Suzuki ‘215 teaches at least one kind of metal oxide which can be titanium or zinc oxide is stuck to (i.e., compounded) the silica (Suzuki ‘215, abstract). Further, Suzuki ‘029 teaches silica is coated or surface treated (i.e., compounded) with an inorganic oxide which can be titanium oxide or zinc oxide (Suzuki ‘029, page 9, 3rd paragraph).
Regarding claim 5, Suzuki ‘215 and Suzuki ‘029 together teach all the elements of the current invention as applied to claim 4. Suzuki ‘215 teaches the metal oxide in 0.5-10% by weight (Suzuki ‘215, page 10, paragraph 0079), which lies within the claimed range. Further, Suzuki ‘029 teaches the metal oxide in 0-50% by weight based on the weight of SiO2 (i.e., the silica particle; Suzuki ‘029, claim 1), which encompasses the claimed range of 0.5-30% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP §2144.05(I).
Regarding claim 13, Suzuki ‘215 and Suzuki ‘029 together teach all the elements of the current invention as applied to claim 1. Suzuki ‘215 teaches a method of producing silica particles with controlled pores characterized by firing at a temperature of 300-1300 °C (Suzuki ‘215, page 3, paragraph 0011) and teaches a controlled pore silica particle having a moisture content of 10% or less (Suzuki ‘215, claim 3), which overlaps the claimed range. As stated in the instant specification, typically adsorbed water can be easily removed by heating at around 100 °C, whereas structural water is difficult to remove even at temperatures above 400 °C (pages 3-4, paragraph 0014). Therefore, it would be reasonable to expect that after firing at 300-1300 °C, only structural water would remain to contribute to the moisture content.
Regarding claim 17, Suzuki ‘215 and Suzuki ‘029 together teach all the elements of the current invention as applied to claim 1. Suzuki ‘215 teaches a pore volume of at least 0.1 ml/g (Suzuki ‘215, abstract), which overlaps the claimed range. Further, Suzuki ‘029 teaches a preferred pore volume of 0.2-2 cc/g (i.e., mL/g; Suzuki ‘029, page 6, 3rd paragraph), which overlaps the 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. See MPEP §2144.05(I).
Regarding claim 18, Suzuki ‘215 and Suzuki ‘029 together teach all the elements of the current invention as applied to claim 1. Suzuki ‘215 teaches silica particles having a specific surface area of 400 m2/g or more, which overlaps the claimed range, and teaches the specific surface area is determined by the BET method (Suzuki ‘215, page 4, paragraph 0017). Further, Suzuki ‘029 teaches spherical silica particles (Suzuki ‘029, claim 6) wherein a BET specific surface area is preferably 100-500 m2/g (Suzuki ‘029, page 10, 2nd paragraph), which overlaps the 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. See MPEP §2144.05(I).
Claims 1-5 and 13-19 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki ‘215 (JP H09208215 A), further in view of Lucas (WO 2019068596 A1). The references were cited previously by the Examiner.
Regarding claim 1, Suzuki ‘215 teaches silica particles having a specific surface area of 400 m2/g or more, which lies within the claimed range, and a pore volume of at least 0.1 ml/g (Suzuki ‘215, abstract), which overlaps the claimed range. Suzuki ‘215 teaches the specific surface area is determined by the BET method (Suzuki ‘215, page 4, paragraph 0017). Suzuki ‘215 teaches a method of producing silica particles with controlled pores characterized by firing at a temperature of 300-1300 °C (Suzuki ‘215, page 3, paragraph 0011) and teaches a controlled pore silica particle having a moisture content of 10% or less (Suzuki ‘215, claim 3), which overlaps the claimed range. As stated in the instant specification, typically adsorbed water can be easily removed by heating at around 100 °C, whereas structural water is difficult to remove even at temperatures above 400 °C (pages 3-4, paragraph 0014). Therefore, it would be reasonable to expect that after firing at 300-1300 °C, only structural water would remain to contribute to the moisture content. While Suzuki ‘215 does not measure a content percentage of structural water in the exact method as claimed, the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
As stated above, Suzuki ‘215 does not measure an oil absorption as claimed. Lucas, however, teaches silica particles with a pore volume of less than 0.1 ml/g and with an oil absorption capacity of 20 to 50 ml/100 g (Lucas, claim 7).
Suzuki ‘215 and Lucas are considered to be analogous to the claimed invention, because both are in the same field of spherical silica particles with the same pore volume. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the spherical silica particle of Suzuki ‘215 to have an oil absorption value as taught by Lucas to be suitable in the field (Lucas, page 8, lines 30-32).
Regarding claim 2, Suzuki ‘215 and Lucas together teach all the elements of the current invention as applied to claim 1. Suzuki ‘215 teaches a method of producing silica particles with controlled pores characterized by firing at a temperature of 300-1300 °C (Suzuki ‘215, page 3, paragraph 0011) and teaches a controlled pore silica particle having a moisture content of 10% or less (Suzuki ‘215, claim 3), which overlaps the claimed range. As stated in the instant specification, typically adsorbed water can be easily removed by heating at around 100 °C, whereas structural water is difficult to remove even at temperatures above 400 °C (pages 3-4, paragraph 0014). Therefore, it would be reasonable to expect that after firing at 300-1300 °C, only structural water would remain to contribute to the moisture content.
Regarding claim 3, Suzuki ‘215 and Lucas together teach all the elements of the current invention as applied to claim 1. Suzuki ‘215 teaches the particles are dried or calcined (Suzuki ‘215, page 2, 2nd paragraph). Therefore, it would have been prima facie obvious to one of ordinary skill in the art to use an alternative to calcination processing at a temperature of 1000 °C or more, such as drying at a lower temperature as taught by both references (Suzuki ‘215, page 9, paragraph 0074).
Regarding claim 4, Suzuki ‘215 and Lucas together teach all the elements of the current invention as applied to claim 1. Suzuki ‘215 teaches at least one kind of metal oxide which can be titanium or zinc oxide is stuck to (i.e., compounded) the silica (Suzuki ‘215, abstract).
Regarding claim 5, Suzuki ‘215 and Lucas together teach all the elements of the current invention as applied to claim 4. Suzuki ‘215 teaches the metal oxide in 0.5-10% by weight (Suzuki ‘215, page 10, paragraph 0079), which lies within the claimed range.
Regarding claim 13, Suzuki ‘215 and Lucas together teach all the elements of the current invention as applied to claim 1. Suzuki ‘215 teaches a method of producing silica particles with controlled pores characterized by firing at a temperature of 300-1300 °C (Suzuki ‘215, page 3, paragraph 0011) and teaches a controlled pore silica particle having a moisture content of 10% or less (Suzuki ‘215, claim 3), which overlaps the claimed range. As stated in the instant specification, typically adsorbed water can be easily removed by heating at around 100 °C, whereas structural water is difficult to remove even at temperatures above 400 °C (pages 3-4, paragraph 0014). Therefore, it would be reasonable to expect that after firing at 300-1300 °C, only structural water would remain to contribute to the moisture content.
Regarding claim 14, Suzuki ‘215 and Lucas together teach all the elements of the current invention as applied to claim 1. As stated above, Suzuki ‘215 does not measure an oil absorption as claimed. Lucas, however, teaches silica particles with a pore volume of less than 0.1 ml/g and with an oil absorption capacity of 20 to 50 ml/100 g (Lucas, claim 7). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the spherical silica particle of Suzuki ‘215 to have an oil absorption value as taught by Lucas to be suitable in the field (Lucas, page 8, lines 30-32).
Regarding claim 15, Suzuki ‘215 and Lucas together teach all the elements of the current invention as applied to claim 1. As stated above, Suzuki ‘215 does not measure an oil absorption as claimed. Lucas, however, teaches silica particles with a pore volume of less than 0.1 ml/g and with an oil absorption capacity of 20 to 50 ml/100 g (Lucas, claim 7). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the spherical silica particle of Suzuki ‘215 to have an oil absorption value as taught by Lucas to be suitable in the field (Lucas, page 8, lines 30-32).
Regarding claim 16, Suzuki ‘215 and Lucas together teach all the elements of the current invention as applied to claim 1. As stated above, Suzuki ‘215 does not measure an oil absorption as claimed. Lucas, however, teaches silica particles with a pore volume of less than 0.1 ml/g and with an oil absorption capacity of 20 to 50 ml/100 g (Lucas, claim 7). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the spherical silica particle of Suzuki ‘215 to have an oil absorption value as taught by Lucas to be suitable in the field (Lucas, page 8, lines 30-32).
Regarding claim 17, Suzuki ‘215 and Lucas together teach all the elements of the current invention as applied to claim 1. Suzuki ‘215 teaches a pore volume of at least 0.1 ml/g (Suzuki ‘215, abstract), which overlaps the 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. See MPEP §2144.05(I).
Regarding claim 18, Suzuki ‘215 and Lucas together teach all the elements of the current invention as applied to claim 1. Suzuki ‘215 teaches silica particles having a specific surface area of 400 m2/g or more, which overlaps the claimed range, and teaches the specific surface area is determined by the BET method (Suzuki ‘215, page 4, paragraph 0017).
Regarding claim 19, Suzuki ‘215 teaches silica particles having a specific surface area of 400 m2/g or more, which lies within the claimed range, and a pore volume of at least 0.1 ml/g (Suzuki ‘215, abstract), which overlaps the claimed range. Suzuki ‘215 teaches the specific surface area is determined by the BET method (Suzuki ‘215, page 4, paragraph 0017). As stated above, Suzuki ‘215 does not measure an oil absorption as claimed. Lucas, however, teaches silica particles with a pore volume of less than 0.1 ml/g and with an oil absorption capacity of 20 to 50 ml/100 g (Lucas, claim 7). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the spherical silica particle of Suzuki ‘215 to have an oil absorption value as taught by Lucas to be suitable in the field (Lucas, page 8, lines 30-32).
New Claim Rejections - 35 USC § 103
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki ‘029 (JP H08209029 A), further in view of Yougen (JP 2004010420 A; IDS reference, 12/08/2022), as applied to claims 1-5. The references were cited previously by the Examiner.
Regarding claim 20, Suzuki ‘029 and Yougen together teach all the elements of the current invention as applied to claim 1. As above, Suzuki ‘029 teaches the addition of water (Suzuki ‘029, page 10, paragraph 0092), but does not specify a content percentage. Yougen teaches a spherical silica powder with a desired water content of 0.3-5% by mass (Yougen, page 33, paragraph 0041), which encompasses the 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. See MPEP § 2144.05(I). Yougen further teaches the water content affects the level of cohesiveness (i.e., the water is structural; Yougen, page 33, paragraph 0041). It would be reasonable to expect one skilled in the art to arrive at the claimed water content when optimizing within the range taught by Yougen, because Yougen teaches the water content affects the level of cohesiveness and teaches a preferred amount which achieves the best dispersion state (Yougen, page 33, paragraph 0041).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki ‘215 (JP H09208215 A), further in view of Suzuki ‘029 (JP H08209029 A), as applied to claims 1-5, 13, and 17-18. The references were cited previously by the Examiner.
Regarding claim 20, Suzuki ‘215 and Suzuki ‘029 together teach all the elements of the current invention as applied to claim 1. Suzuki ‘215 teaches a method of producing silica particles with controlled pores characterized by firing at a temperature of 300-1300 °C (Suzuki ‘215, page 3, paragraph 0011) and teaches a controlled pore silica particle having a moisture content of 10% or less (Suzuki ‘215, claim 3), which encompasses the claimed range. As stated in the instant specification, typically adsorbed water can be easily removed by heating at around 100 °C, whereas structural water is difficult to remove even at temperatures above 400 °C (pages 3-4, paragraph 0014). Therefore, it would be reasonable to expect that after firing at 300-1300 °C, only structural water would remain to contribute to the moisture content. While Suzuki ‘215 does not measure a content percentage of structural water in the exact method as claimed, the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki ‘215 (JP H09208215 A), further in view of Lucas (WO 2019068596 A1), as applied to claims 1-5 and 13-19. The references were cited previously by the Examiner.
Regarding claim 20, Suzuki ‘215 and Lucas together teach all the elements of the current invention as applied to claim 1. Suzuki ‘215 teaches a method of producing silica particles with controlled pores characterized by firing at a temperature of 300-1300 °C (Suzuki ‘215, page 3, paragraph 0011) and teaches a controlled pore silica particle having a moisture content of 10% or less (Suzuki ‘215, claim 3), which overlaps the claimed range. As stated in the instant specification, typically adsorbed water can be easily removed by heating at around 100 °C, whereas structural water is difficult to remove even at temperatures above 400 °C (pages 3-4, paragraph 0014). Therefore, it would be reasonable to expect that after firing at 300-1300 °C, only structural water would remain to contribute to the moisture content. While Suzuki ‘215 does not measure a content percentage of structural water in the exact method as claimed, the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Conclusion
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/C.P.J./Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
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