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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-12, in the reply filed on 3/6/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 13-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/6/2026 for the reasons discussed above.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the gel" in the fifth line. There is insufficient antecedent basis for this limitation in the claim. The claim does not previously refer to “a gel.”
Claim 1 recites the limitation "the modified wet gel" in the 13th line. There is insufficient antecedent basis for this limitation in the claim. The claim does not previously refer to “a modified wet gel.”
Claim 1 recites the limitation "the wet gel generating process" and “the washed and modified wet gel”. There is insufficient antecedent basis for this limitation in the claim. The claim does not previously refer to “a washed and modified wet gel.”
Claim 1 recites the limitation "the dried wet gel" in the last line. There is insufficient antecedent basis for this limitation in the claim. The claim does not previously refer to “a dried wet gel.”
Claim 1 recites “a modifying process of modifying a surface of a network structure with a predetermined organic group”. It is unclear how this step and the components recited in the step relate to the rest of the steps and formation of the gel. Which network structure? The claim refers to forming a sol, a gel, a wet gel, and it is not clear what is being modified in which step. It appears that a surface-modifying group is added after solvent exchanging the solvent in the wet gel to form a surface-modified wet gel. However, this is not clearly articulated in the method.
Claim 5 recites the limitation "the reactive group". There is insufficient antecedent basis for this limitation in the claim. The claim does not previously refer to a reactive group, nor does claim 1 on which claim 5 depends.
Claim 6 recites the limitation "the compound" and “the reactive group”. There is insufficient antecedent basis for this limitation in the claim. The claim does not previously refer to “a compound” or “a reactive group,” nor does claim 5 on which claim 6 depends.
Claim 7 recites the limitation "the washing process” and “the washing liquid". There is insufficient antecedent basis for this limitation in the claim. The claim does not previously refer to a washing process or a washing liquid, nor does claim 6 or 1 on which claim 7 depends.
Claim 8 recites the limitation "the drying process". There is insufficient antecedent basis for this limitation in the claim. The claim does not previously refer to “a drying process” nor does claim 1 on which claim 8 depends. Rather, claim 1 recites “a process of drying.”
Claim 9 recites the limitation "the crushing process”, “the aerogel", “the primary particles”, “the secondary particles”, and “the aerogel particles”. There is insufficient antecedent basis for these limitations in the claim. Neither claim 9, nor claim 1 on which claim 9 depends, recites “a crushing process,” “an aerogel,” “primary particles,” “secondary particles,” or “aerogel particles.” It is also unclear what is occurring in claim 9. Claim 9 recites “wherein in the crushing process…the aerogel is crushed so that the aerogel particles in which the primary particles are framework units are included at 50% or more and the rest is aerogel particles in which the secondary particles are framework units.” What primary particles? What is “primary particles” referring to? What is meant by “framework units”? it is not clear what is occurring given the current language of instant claim 9.
Claims 10-11 recite the limitation "the mixture". There is insufficient antecedent basis for this limitation in the claim.
The term “weakly bonded” in claims 1-12 is a relative term which renders the claim indefinite. The term “weakly bonded” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear what meets “weakly bonded” and what does not. The instant specification contains no description as to what meets “weakly bonded” and what does not. Therefore, claims 1-12 are indefinite.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hidaka et al. (JP 2014-035043A). Because JP 2014-035043A is not in English, the machine-translated English equivalent is cited below and is attached.
Hidaka et al. teach aerogel particles produced by polymerizing silica using the sol-gel method and then removing the solvent by drying (¶22). Alkoxysilanes are used as raw materials. The alkoxysilane is hydrolyzed and condensed in the presence of a solvent to produce a wet gel comprising a silica skeleton, which is dried to remove the solvent. See ¶22. A solvent-containing gel is pulverized to form particles and the particles are dried. Examples of silicon alkoxide in the instant invention include trimethoxysilane, triethoxysilane, tetramethoxysilane, and tetraethoxysilane (see ¶8, item [4] of the instant specification). Hidaka et al. teach that alkoxysilanes used in the disclosed invention include methyltrimethoxysilane, methyltriethoxysilane, tetramethoxysilane, and tetraethoxysilane. See ¶23. This meets the metal alkoxide of instant claims 1-2.
The alkoxysilane is hydrolyzed using water and an organic solvent. This meets the “mixing process” of instant claim 1. A sol is necessarily formed by the mixing. The hydrolyzed mixture is polymerized and gelled. This meets the “gelling process” of instant claim 1. The polymer product produced is a wet gel. The hydrolysis and polymerization of the alkoxysilanes (the production of the sol and the gel) are carried out in the presence of a catalyst, including acidic and basic catalysts. This meets instant claim 3. See ¶25. Additionally, functional-group introducers can be added to the alkoxysilane reaction solution (¶26). The process of producing the aerogel particles includes preparation of the silica sol (hydrolysis), gelation of the silica sol (gelling), maturation (which is aging), pulverization, solvent replacement, surface treatment, and drying. See ¶28. Silicate alkoxides are used to produce the silica sol including tetramethoxysilane and tetraethoxysilane. See ¶29. This meets instant claim the metal alkoxide of instant clams 1-8.
Hidaka et al. teaches aging the gel to form a wet gel. See ¶33. Aging occurs at 40 to 80ºC for 4 to 24 hours. See ¶33, page 26 of the attached translation. The temperature overlaps the range of instant claim 4 and the time period falls within the range of instant claim 4. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on the teachings Hidaka et al., to age the gels at a temperature which meets the instant claim limitations of instant claim 4 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Hidaka et al. teaches that the solvent exchange preferably occurs after grinding. See ¶35. After solvent exchange, a hydrophobic treatment is performed. This corresponds to the instantly claimed “modifying process” of instant claim 1. An expressly named example of modifying (treatment) compound is dimethyldichlorosilane. See page 29, ¶36. This meets instant claims 5-6.
After the hydrophobic treatment, which surface modifies the gel, the gel is washed with a solvent to remove any unreacted treatment agent. See ¶37, page 29. This meets instant claim 7. The gel is then dried at atmospheric pressure. See ¶37, page 30. This meets instant claim 8 and also meets “drying the washed and modified wet gel.”
While Hidaka et al. teaches that crushing of the gel preferably occurs before drying, each of the instantly claimed method steps, i.e. mixing of a silicon alkoxide which meets instant claims 1-2 with a solvent which is hydrolyzed to form a sol; gelling of the sol; aging of the gelled sol to form a wet gel at a temperature and for a duration which meets instant claim 4; a solvent exchange of the solvent within the wet gel; a modifying step with an organic group which meets instant claims 5-6; washing the modified wet gel with a solvent to remove any unreacted modification material; dried the washed and dried wet gel; and crushing of the aerogel to form particles, are disclosed in Hidaka, as well as the same materials recited in the instant claims. Drying occurs at atmospheric pressure as recited in the instant claims. It is noted that selection of any order of performing process steps is prima facie obvious. See MPEP 2144.04 Section IV, Subsection C. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959); In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); and In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). It would therefore have been obvious to one of ordinary skill in the art, given the disclosure of Hidaka et al., to crush the aerogel into particles after drying. Hidaka et al. teaches that aerogel particles can be produced by crushing the aerogel after forming the aerogel. See ¶27, last sentence of page 20.
As the same steps are present using the same materials (see the entire discussion above), the aerogel particles necessarily meet “weakly bonded aerogel ultrafine particle” to the extent that this term can be interpreted (see the indefinite rejection above).
Hidaka et al. teaches that the aerogel particles can have a size of, for example, 50 nm to 10 mm, and the particles can be made to any suitable size. Hidaka et al. teaches that the particles may be a mixture of particles of various sizes. Given this teaching, it would have been obvious to one of ordinary skill in the art to produce aerogel particles having a bimodal particle size distribution, including “primary particles: which are “framework units” included at 50% or more and aerogel particles of a second size which are “secondary particles” which are framework units. See ¶39, page 31-32 of the attached translation. This meets instant claim 9 to the extent that claim 9 can be interpreted (see indefinite rejection above).
Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hidaka et al. (JP 2014-035043A) and further in view of WO 2017/038646A1. Because JP 2014-035043A and WO 2017/038646A1 are not in English, the machine-translated English equivalents are cited below and are attached.
Hidaka et al. discloses the method as discussed in this rejection above. Hidaka et al. do not expressly recite adding hollow particles to the mixture of alkoxysilane (metal alkoxide) and solvent before forming after mixing and before gelling. Hidaka et al. do not expressly teach that the hollow particles meet instant claim 12.
However, WO 2017/038646A1 teaches aerogel components produced using hollow silica particles (abstract, ¶10). The silica particles have and outer shell and a hollow internal core (¶27). The hollow particles suppress aggregation when added to a slurry (which is a sol) comprising solvent and alkoxysilane (¶17, ¶57). WO 2017/038646 teaches that the hollow silica particles are added to a sol of solvent and polysiloxane compound, which meets adding hollow particles to a mixture of metal alkoxide (the sol can contain alkoxysilanes in WO ‘646; see ¶57) and solvent as recited in instant claims 10-11. See ¶65 of WO ‘646. The sol containing the hollow silica particles is gelling and then aged to obtain a wet gel (see ¶131). Aging can occur at a temperature of from 40-80ºC for 20 to 90 minutes (¶140). This meets instant claim 4. The wet gels are solvent exchanged and then washed to remove unreacted components (¶142). The washed and solvent exchanged wet gels are then dried (¶153-154).
The particles have a diameter of, for example 10 nm to 50 nm, with the hollow particles used in the examples having a diameter of 50 nm. See ¶40 and ¶162. This falls within the range of the nano-size hollow particles recited in instant claim 12. One of ordinary skill in the art would at once envisage that if the average particle size of the hollow particles 50 nm, and the particles are comprised of a silica shell with a hollow core as disclosed in ¶27, the shell must necessarily be less than 50 nm, which overlaps the range of the size recited for the nano-size hollow particles in instant claim 12. The hollow particles are preferably spherical (see ¶40). The aerogel particles are in the form of secondary particles composed of multiple primary particles. As shown in Figure 1 in the original document, the primary particles (1) account for more than 50% of framework units, while the rest of the network unit structure (2) is made up of secondary particle framework units (2 in Figure 1). This appears to meet instant claim 9.
Both Hidaka et al. and WO 2017/038646 relate to the field of aerogel materials and methods of production thereof, including formation of a sol through hydrolysis of mixture containing an alkoxysilane and solvent, gelling of the sol, aging of the gelled sol, solvent exchange, washing, and drying of the wet gel to form an aerogel. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to include hollow, spherical particles having an outer shell and hollow core and having a diameter (and therefore shell size, as well as the structure shown in figure 10, as disclosed in WO ‘646 and discussed above, in the mixture of the invention of Hidaka et al., in order to impart moderate strength to the aerogel material and obtain aerogel materials with excellent shrinkage resistance during drying. See ¶40 of WO 2017/038646. Additionally, using the hollow spherical particles disclosed in WO 2017/038646 provides aerogels with excellent thermal insulation and flexibility (¶21).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
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/K. BOYLE/Primary Examiner, Art Unit 1766
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