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 .
The amendment of November 18, 2025 has been received and entered. With the entry of the amendment, claims 13 and 18-20 are canceled, and claims 1-12 and 14-17 are pending for examination.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-17 in the reply filed on June 9, 2025 is acknowledged.
It is noted that non-elected claims 18-20 were canceled in the amendment of June 9, 2025.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 6-8, 10, 14-15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over CN 109503116 (hereinafter ‘116) in view of WO 2017/038648 (hereinafter ‘648), EITHER alone OR further in view of Kim et al (US 2018/0086587).
Claims 1, 2, 7, 8, 10: ‘116 teaches a method for producing a fiber composite material (from impregnated fiber felt) (note page 2, translation). The method would include providing a first silica sol (silicon source), and providing a second silicon precursor (hexamethyldisilazane, HDMS, meeting the requirements of claims 7, 8 and 10) and combining this with the silica sol material (note page 3, translation). The fiber material is treated with the silica sol and second silicon precursor (in combination), which spreads the sol solution on the fiber material (as well as the HDMS) (note page 3, translation). Then there is an in situ condensation step on the fiber material and second silicon precursor (HDMS) after the treating step is finished, so as to obtain a wet composite material (note pages 3, 4, translation, after impregnation in the fiber felt, note the standing for example, to form the wet gel felt body, with gelling understood condensation occurs, and it is understood that a colloids would also be present from the sol (which would give colloidal size particles)). Also note the further treatment before the drying, which can further be said to allow for condensation (note page 3, 4, translation). Then, there is a drying step on the wet composite material, to give a fiber composite material (note pages 3, 4, translation). The treating and condensation steps can be done without organic solvents (note the mixture for impregnation has the silica sol, HDMS, pH adjusting agent and solvent, listed as required, where the solvent can be water, and other organic solvent not required) (note page 3, translation), and the standing (condensation) step would be with these same materials. Further treatment before drying can also be in water (note step (4), page 4, translation), giving another period that can allow for condensation without organic solvent present. The system can be used for making aerogel (aeroge in translation) (note page 2, translation).
(A) As to the forming of the hydrolyzed solution as claimed (for providing the silica sol source), ‘116 notes an acidic or alkaline silica sol can be used (note page 3, translation).
‘648 describes forming an aerogel (airgel) layer from a sol (note abstract, page 2, translation), where the aerogel layer is formed on an insulated body which can have a fiber shape (note page 3, translation). The aerogel layer is formed using a sol formed with hydrolysis product of a silicon compound having a hydrolysable functional group, where in forming the layer there can be further condensation of the sol and dried from a wet gel, where using such materials indicted as giving good heat insulation and flexibility (note page 3, translation). It is described that the silicon compound with the hydrolysable functional group can be a silane compound such as methyltrimethoxysilane or dimethyldimethyoxysilane (as desired by claim 2) (note page 7, translation). Furthermore, to provide the sol generation process, silicon compound is provided, mixed with a solvent, and a surfactant can also be present, and also acid catalyst, and a hydrolysis reaction is performed and then sol-gel reaction to give a semi-gelled sol coating liquid (note page 11, translation). The sol can also contain silica particles (note pages 9 and 11, translation), further giving a resulting silica sol solution. The solvent can be water alone or water and alcohol, where water is desirably used for high surface tension and low volatility (note page 11, translation). Furthermore, the surfactant can be a cationic surfactant such as cetyltrimethylammonium bromide (CTAB) or cetyltrimethylammoium chloride (CTAC) (both indicated by applicant page 0034 of the specification as filed as an “emulsifying agent” as claimed) (note page 12, translation). Thereafter the sol is applied to the main body/substrate and then gelled and heated and aged (note pages 12-13, translation). Thus, ‘648 teaches forming a sol using a silane compound as claimed in claim 2, water and emulsifying agent, which does not require organic solvents.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘116 to provide a sol solution generation step by performing a hydrolysis step on a mixture including a first silicon precursor of methyltrimethoxysilane or dimethyldimethyoxysilane, and emulsifying agent of CTAB or CTAC, and water, silica particles, etc., and no organic solvent, giving a hydrolyzed sol solution to be used as the silica sol as suggested by ‘648 to provide a desirable sol solution that also gives heat insulation and flexibility to the aerogel, since ‘116 requires an initial silica sol to provide the material used for treating the fibers, for making an aerogel, and ‘648 describes that a desirable sol solution as s sol to use for applying a sol to form a layer on an aerogel that can also be in fiber shape can be that provided by provide a sol solution generation step by performing a hydrolysis step on a mixture including a first silicon precursor or methyltrimethoxysilane or dimethyldimethyoxysilane, and emulsifying agent of CTAB or CTAC, and water, silica particles, etc., and no organic solvent, which gives a desirable heat insulation and flexibility, and the use of water solvent is desirable for high surface tension and low flexibility. Furthermore, as to the treating step also excluding organic solvents, since the non-organic containing sol of ‘648 above is used, no organic solvent would be needed in (1) the hydrolysis step and also there would be none in the further (2) treating and (3) condensation steps, since as discussed for ‘116 no additional organic solvent would be added during these steps.
Optionally, further using Kim, if the hydrolyzed solution and second silicon precursor are to be applied to the fiber material separately before condensation, Kim further describes how a sol solution can be prepared and applied to a fiber material, and immediately thereafter a second material can be applied (here the catalyst for gelling), and then gelling /aging/condensation followed by drying occurs (note figure 2) or the sol solution and second material can be premixed and applied to the fiber material together and then gelation/gaining/condensation followed by drying occurs (note figure 4, and 0007, 0015, 0021, 0092). Therefore, it further would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘116 in view of ‘648 to provide that the silica solution is applied to the fiber material and immediately thereafter the additional material of the HMDS, water and pH adjustor, before the condensation and drying as suggested by Kim with an expectation of predictably acceptable results, because ‘116 wants a combination of silica sol, HMDS, water and pH adjustor applied to the fiber material (note page 3, translation), and Kim indicates how sol and additional material can be applied either together or by first applying the sol solution and then additional material, before gelling/aging/condensation. As well, note In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results).
(B) as to the weight ratio of the first silicon precursor to the second silicon precursor: ’116 controls the amount of silica sol used and the amount of HDMS (second precursor) used (note page 3, translation), and ‘648 further notes controlling the amounts of materials for the sol (which would include the first precursor) (note pages 7, 11-12, translation). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amounts of the first and second precursors used, giving amounts and ratio in the claimed range. "[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).
Claim 3:as to the amounts of the first silicon precursor and emulsifying agent, ‘648 indicates 1-100 parts mas of surfactant/emulsifying agent to 100 parts silicon compound/first silicon precursor, which amounts overlap the claimed range, and it therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of emulsifying agent and first precursor, giving a pH in the claimed range. Note 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);
Claim 4: as to the pH of the hydrolysis step, ‘116 notes that an acidic silica sol can be used (note page 3, translation). ‘648 notes that when making the sol, an acid catalyst can be present, including various acids, which can be added in a range of amounts (note page 11, translation). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the acid/amount of acid, giving a pH in the claimed range. "[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)
Claim 6: It would have been suggested that the HMDS be dissolved in water since the HDMS is mixed in with water as a solvent to make a composition for treating (note ‘116, page 3, translation).
Claims 14, 17: the features of claim 14 are provided as discussed for claim 1 above, except the specific weight ratios of first and second silicon precursors (with a narrower range than claim 1). However, ’116 controls the amount of silica sol used and the amount of HDMS (second precursor) used (note page 3, translation), and ‘648 further notes controlling the amounts of materials for the sol (which would include the first precursor) (note pages 7, 11-12, translation). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amounts of the first and second precursors used, giving amounts and ratio in the claimed range. "[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). This would also apply to claim 17,
Claim 15: As to the pH of the hydrolysis step, ‘116 notes that an acidic silica sol can be used (note page 3, translation). ‘648 notes that when making the sol, an acid catalyst can be present, including various acids, which can be added in a range of amounts (note page 11, translation). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the acid/amount of acid, giving a pH in the claimed range. "[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).
Claims 5, 11, 12 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over ‘116 in view of ‘648, EITHER alone OR further in view of Kim as applied to claims 1-4, 6-8, 10, 14-15 and 17 above, and further in view of CN 101318659 (hereinafter ‘659).
Claim 5: As to the loading capacity of the first silicon precursor, ‘648 notes controlling the amounts of materials for the sol (which would include the first precursor) (note pages 11-12, translation).
‘659 teaches a method for producing a fiber composite material (aerogel composite) (note ooo2, 0016, 0024-0026, note the fiber reinforcing body/material). The process includes providing a silica sol (which can be prepared or purchased from the market, note 0018, at least suggesting that known sol materials can be used), and where example sols can be formed with silicate materials, water and organic solvent and acid catalyst, or also water glass, water and HCl (with no organic solvent listed) (note 0016, 0018, 0054, 0062, 0063). After the sol is formed, a treating step with the sol is provided on a fiber material, so as to spread the sol on the fiber material (note 0016, 0021). Then an in situ gelling step/aging step is performed on the fiber material (note 0016, example at 0054 where the sol gelled and aged in situ in a mold after provided to the fiber, and similar at 0062, 0063, where this can be with heating, note 0016, 0019, 0020). Further as to the loading amount, ‘659 indicates that the mass ratio of silica sol to reinforcing material (fiber body) is 1:0.001 to 10.0, and where the solid contents of the sol is 0.01 to 60.0 % (note 0016-0018).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘116 in view of ‘648, EITHER alone OR further in view of Kim to optimize the amount of sol/first precursor used in regards to the amount of fiber material, giving a loading capacity in the claimed range, as suggested by ‘659 with an expectation of predictably acceptable results, since ‘116 is loading a fiber material with sol, ‘648 notes controlling material content in sols, and ‘659 indicates to control the amount of sol provided in fibers as discussed above, and it would have been obvious to optimize the desired amount loaded to give a repeatable material of desired silica amounts, where such optimization would give loading capacity in the claimed range. "[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).
Claim 11: when providing the control as discussed above for claim 5, it would have been obvious to optimize the weight ratio of the first silicon precursor to the fiber material for the reasons as discussed above for claim 5 by optimizing the amount of first silicon precursor and fiber material, giving values in the claimed range. "[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).
Claims 12, 16: further as to the control of the amount of second silicon precursor and fiber material, ‘116 also indicates to control the amount of the second silicon precursor used (note page 3, translation). when providing the control as discussed above for claim 5, it would further have been obvious to optimize the weight ratio of the second silicon precursor to the fiber material similarly for the reasons as discussed above for claim 5 by optimizing the amount of second silicon precursor and fiber material (since both would be controlled) giving values in the claimed range. "[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).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over ‘116 in view of ‘648, EITHER alone OR further in view of Kim as applied to claims 1-4, 6-8, 10, 14-15 and 17 above, and further in view of Matheron et al (US 2008/0079894) and Hemery et al (US 2021/0277242).
Claim 9: As to the specific second silicon precursor, ‘116 describes using HMDS as discussed for claim 1 above. Matheron indicates that when that when providing a first sol treatment to a substrate with condensation (note 0045-0055), it is desirable to also attach a hydrophobic group to the treated article (note 0053, 0055), where materials for providing hydrophobicity can include HDMS, and also silazanes and disilazanes in general (note 0111, 0116). Additionally, Hemery indicates how when providing silazanes it is known to provide as R groups attaches to methyl or ethyl, and also methylene or propylene (that is, would give the R2 claimed) (note 0099, 0090),
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘116 in view of ‘648, EITHER alone OR further in view of Kim to expect that other disilazanes can be used instead of HDMS as suggested by Matheron and Hemery with an expectation of predictably acceptable results, since ‘116 describes using HDMS, which is known in the art for providing hydrophobicity, noting Matheron, and when used Kim at (0083-0084), and Matheron notes how other silazanes and disilazanes can be used for such treatment, and therefore it would be expected that other silazanes and disilazanes can be used in the process instead of HDMS, and Hemery would show the known use of alkylene groups in silazanes, which would also be understood acceptable for disilazanes due to the repeated structure, and thus using R2 so b1 and b2 are 1 and a1 and a2 (hydrogen) are 1 would be understood to be an acceptable variant due to the similar structure.
Response to Arguments
Applicant's arguments filed November 18, 2025 have been fully considered but they are not persuasive.
Note the adjustment to the rejections due to the amendments to the claims.
Applicant argues that as to the 35 USC 103 rejections, the weight ratio of the first silicon precursor to the second silicon precursor as claimed would not be obvious over the prior art, where in ‘116 a content of the silicon source in the silicon precursor solution is 0.03 to 0.3 g/mL and a content of the HDMS in the silicon precursor solution is 5-15 vol%, and from ‘648, the content of the silicon component, based on the total weight of the sol solution as 100 parts by mass, the content of the silicon compound can be 5-50 parts by mass, but the content of the silicon source in ‘116 far different from the content of the silicon compound of ‘648, which would cause differences in solubility and effect with the combination and would be difficult to infer content ratio or mass ratio of the silicon source and HDMS, and so the combination fails to provide the claimed weight ratio. It is also argued that 0047 of the specification indicates benefits from this range. Additionally, as to claim 14, the same arguments are understood to apply to the weight ratio of the first silicon precursor to the second silicon precursor.
The Examiner notes these arguments, however, the rejections above are maintained. As to the combination of ‘116 and ‘648, ‘116 generally teaches the use of a silicon source, which generally can be an alkaline or acidic silica sol (note pages 2 and 3, translation), without limiting how this sol made. ‘648 specifically teaches how silica sols can be made including by performing a hydrolysis step on a first silicon precursor, an emulsifying agent, and water so as to obtain a hydrolyzed sol (note the rejection above), and base catalyst can be provided giving a base (alkaline) solution, for example (note page 12, translation) and also acid catalyst (note page 11, translation), which can give an acidic sol (note the discussion for claim 4 in the rejection above, for example). Therefore, ‘648 gives a silica sol formation method expected to provide an acceptable silica sol for use in the process of ‘116, since ‘116 does not limit how a silica sol is to be formed for its process, and ‘648 teaches a known way to form a silica sol. There would be no reason to this that the silicon source in ‘116 is far different from that in ‘648 since ‘648 is providing materials listed as usable by ‘116. Applicant’s attorney argues there would be differences in solubility and effect, but no showing is made as to why this would be the case. Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). As to the amount of silica source from the first silicon precursor, as compared to the second silicon precursor, as discussed in the rejection, the second source would be HDMS, described in ‘116 in an amount of 5-15 vol% of the solution and the silica sol (silicon source) as 0.03-0.3 g/ml. Furthermore, the first silicon precursor for the sol (from ‘648) can be provided in amounts of 5-50 parts by mass of the sol solution, for example (noting page 7 of the translation). Therefore, if the sol is 0.03 to 0.3 g/ml, the first silicon precursor can be 5 to 50 parts of that mass, so covering a range of 0.0015 to 0.15 g/ml, by weight. Additionally, with the HDMS at 5-15 volume % (of ml, to correspond to the sol amount), the Examiner understands that HDMS as a density of about 0.77 g/ml (a ml would be a cubic cm), and therefore would have a weight of about .0.77 x (.05 -0.15 ml), giving a range of 0.0385 to 0.12 g of HDMS in a ml. (note Pubchem, “Hexamethyldisilazane”, as to density). From the possible amounts of the first silicon precursor in weight and the second silicon precursor in weight (the HDMS), values overlapping the claimed range of claims 1 and 14 would be provided, and the optimization of the amounts would give values in the claimed ranges. It is not difficult to infer content ratio, therefore. As to the argument that the specification would provide benefits from the claimed ranges, there is no showing of criticality/unexpected benefits as to these ranges (for either claim 1 or 14), by showing that outside of these ranges specifically worse results would occur for all the possible combinations of first and second silicon sources, etc. could be used, and in fact for claim 14, clearly a wider range can be used. Therefore, no showing of criticality is made and the rejection is maintained.
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.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718