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
Claims 1-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 09/08/2025.
Applicant's election with traverse of the restriction requirement in the above reply is acknowledged. The traversal is on the ground(s) that restriction is improper because a full and complete search of the claimed subject matter would include both groups of claims, such that a serious search burden does not exist between the groups. This is not found persuasive because, as set forth in MPEP 808.02, in order to demonstrate a serious search burden, the examiner must show by appropriate explanation one of the following, including separate classification thereof, a separate status in the art when they are classifiable together, OR a different field of search. The groups have been shown to be at least classified separately, as shown in the requirement for restriction.
Therefore, without a more detailed showing as to how a serious search burden does not exist between the two groups, or evidence the claims are not distinct from one another, the requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Applicant is advised that should Claim 24 be found allowable, Claim 29 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). In the instant case, Claims 24 and 29 are identical in wording and are substantial duplicates, such that both of these claims cannot be passed to issue together.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 17-20, 23 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US6740416B1, hereinafter ‘Yokogawa’.
Regarding Claim 17, Yokogawa discloses a method of making silica wet gel (Col 1, lines 28-31: an alkoxysilane is reacted to obtain a gel compound, and then drying the gel – a gel before drying is considered a wet gel) comprising the steps of:
preparing a first solution by mixing methyl silicate 51 and methanol (Col 24, lines 51-54: methyl silicate 51 (hereinafter ‘MS-51’) and methanol are mixed to form a Solution A);
preparing a second solution by mixing ammonium hydroxide and water (Col 24, lines 54-56: water and aqueous ammonia, also known as ammonium hydroxide, are mixed along with methanol to form a Solution B);
mixing the first solution and the second solution together to form a precursor material such that the precursor material comprises a weight percent ratio of the methyl silicate 51:water of between 0.25:1 and 2:1 (Col 24, lines 56-57: solution A and B are mixed in a mass ratio of 16:17 – this corresponds to a precursor solution having a mass composition of 17.80 wt% MS-51, 62.29 wt% methanol, 19.79 wt% water, and 0.109 wt% ammonium hydroxide. See the attached table below. Taking the ratio of the mass percent of MS-51 to water, the corresponding ratio is about 17.80:19.79, or reduced, about 0.90:1. This falls within the instant claimed range.
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); and
allowing components in the precursor material to react to form silica wet gel (Col 24, lines 60-61: gelation of the alkoxysilane mixture on a substrate, i.e., the reaction of the components in the precursor material, leads to the production of a gel compound which has not yet been subjected to drying – this is therefore considered a wet gel containing silica, or a silica wet gel).
Regarding Claim 18, Yokogawa discloses that the weight percent ratio of the methyl silicate 51:water for the precursor material is between 0.5:1 and 1:1 (as shown above, the ratio of the mass percent of MS-51 to water in Yokogawa is 0.9:1, which falls within the instant claimed range).
Regarding Claim 19-20, Yokogawa discloses the precursor comprises methyl silicate 51 at a weight percent of greater than or equal 15% and less than or equal to 24% (as discussed above, the mass percent of MS-51 in the precursor solution of Yokogawa is 17.80 wt% - this falls within the claimed range).
Regarding Claim 23, while Yokogawa discloses that, for hydrophobzing, the solvent utilized in the treatment step may be N,N-dimethylformamide (Col 12, lines 34-38), even in light of this, Yokogawa discloses seven alternate solvents suitable for such a purpose, and further, such a treatment is performed before or during supercritical drying, and therefore after the formation of a silica wet gel from a precursor solution as claimed (Col 12, lines 11-17). Therefore, absent evidence to the contrary, the precursor material of the process of Yokogawa as modified above is considered to be devoid of N,N-dimethylformamide, as no amount of N,N-dimethylformamide is added to the precursor solution prior to gelation.
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.
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.
Claim(s) 11-16, 21-22, 24-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over US6740416B1, hereinafter ‘Yokogawa’, in view of Sinko et al. (Influence of Chemical Conditions on the Nanoporous Structure of Silicate Aerogels, Materials, 2010), hereinafter ‘Sinko’.
Regarding Claim 11, Yokogawa discloses a method of making silica wet gel (Col 1, lines 28-31: an alkoxysilane is reacted to obtain a gel compound, and then drying the gel – a gel before drying is considered a wet gel, and a gel made with an alkoxysilane is considered a silica gel) comprising the steps of:
preparing a first solution by mixing methyl silicate 51 and methanol, wherein the first solution comprises the methanol at a weight percent of greater than or equal to 60% and less than or equal to 90% (Example 1, Col 24, lines 51-54: MS-51 and methanol are mixed in a mass ratio of 47:81 – this corresponds to a solution having 63.3 wt% methanol and the balance MS-51);
preparing a second solution by mixing ammonium hydroxide and water, wherein the second solution comprises the ammonium hydroxide at a weight percent of greater than or equal to 0.5% and less than or equal to 1% (Col 24, lines 54-56: water, 28 % by mass aqueous ammonia, also known as ammonium hydroxide, and methanol are mixed in a mass ratio of 50:1:81 – this corresponds to a solution having a concentration of ammonium hydroxide of 0.758 wt%);
mixing the first solution and the second solution together to form a precursor material (Col 24, lines 56-57: solution A and solution B were mixed); and
allowing components in the precursor material to react to form silica wet gel (Col 24, lines 60-61: gelation of the alkoxysilane mixture on a substrate leads to the production of a gel compound which has not yet been subjected to drying – this is therefore considered a wet gel containing silica, or a silica wet gel).
Further regarding Claim 11, while Yokogawa discloses the process of making a silica wet gel as shown above, and is further drawn to making a silica aerogel (Col 1, lines 7-10), Yokogawa does not disclose the first solution comprises MS-51 at a weight percent of greater than or equal to 15% and less than or equal to 30%, or that the second solution comprises water at a weight percent of greater than or equal to 99% and less than 100%.
Sinko discloses a review of how the chemical conditions of silicate aerogels affects the nanoporous structure and other properties of silica aerogels produced by such conditions (Title, Abstract). A person of ordinary skill in the art would have recognized Sinko as analogous to Yokogawa, as both references are drawn to the same field of endeavor as the claimed invention, the synthesis of silica aerogels - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Further, Sinko discloses a detailed discussion regarding how variations in the synthesis conditions of silicate aerogels, including type of starting materials, effect of pH, effect of catalyst, effect of precursor concentration, effect of water content, and effect of solvent may affect the structure and properties of silica aerogels (3. Influence of Synthesis Conditions on Nanoporous Structure of Silicate Aerogels).
Particularly, Sinko discloses that the bulk density of aerogels is gradually enhanced with increasing precursor concentration in the initial solution of sol-gel technique (3.4. Effect of precursor concentration). Gels prepared with lower amounts of solvent have a higher density. The higher concentration of precursors supports the condensation reaction, because the larger amount of solvent separates the reacting species from each other. At lower precursor concentration, the hydrolysis reactions are favored rather than the polymerization. Thus, the polymer size decreases. Comparing the influences of precursor, water, and polymer concentration, the density significantly will be higher with enhanced amounts of these components, however, the precursor concentration has the most predominant effect on the density and the pore size. From this, it is clear that the amount of both the precursor, or in the case of Yokogawa, MS-51, and the amount of water within the process of Yokogawa are variables that, when adjusted, materially influence the physical properties of the resulting aerogel, including gel density, polymer size, and pore size.
Further, Sinko discloses that the amount of water used in the initial gelation solutions can significantly affect the silica framework (3.5. Effect of water content). At lower molar ratios, the H2O is not sufficient to complete the hydrolysis reaction of the silicon precursor. The molar ratio of H2O/Si(OR)4 in the gelation solutions should accordingly be sufficient to approach the minimal hydrolysis degree of the alkoxide required for the gelation. Ratios of water/alkoxy group ≤ 2 favor the condensation reactions. In the case of silicon alkoxide precursor, the incomplete hydrolysis leads to linear chain formation with residual organic groups. On the other hand, at higher molar ratio, the hydrolysis proceeds faster, and the condensation takes place slowly. Water/alkoxy group ratios > 4 induce very loose gel networks with high porosity and smaller particles. Due to the presence of excess water, the rate of polymerization is lower than that of condensation, producing cyclization and enhancing the siloxane bond formation within the particles. At molar ratios lower than 2 and higher than 12, only dense and cracked aerogels will be formed. The lowest density (0.08 g cm-3) and the most transparent (90%) aerogels can be obtained with molar ratios between 6 and 10. Further, it is disclosed that the amount of water used in the precursor solution affects the surface area of the resulting aerogel. From this, it is clear that the amount of water in the initial gelation solution is a critical, result effective variable that may be manipulated in order to influence properties of the aerogel, including manipulating the rate of hydrolysis and condensation of the silicate precursor, thereby manipulating the properties of the framework of the produced aerogel, such as surface area and density.
Accordingly, as the resulting aerogel density, polymer size, specific surface area, and pore volume are variables that can be modified, among others, by adjusting the amount of both water and MS-51 in the initial sol gel solution, the precise amount of each would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results associated and commensurate in scope with the claimed range, the claimed range cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of both the MS-51 precursor in the first solution and the amount of water in the second solution in Yokogawa in order to obtain chemical conditions in the resulting precursor comprising a mixture of the first and second solution, which would lead to desired aerogel properties, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 223).
Regarding Claim 12, Yokogawa as modified above makes obvious the precursor material of claim 1 comprises methyl silicate 51 at a weight percent of greater than or equal to 15% and less than or equal to 24%; methanol at a weight percent of greater than or equal to 60% and less than or equal to 68%; and ammonium hydroxide at a weight percent of greater than or equal to 0.08% and less than or equal to 0.2%. (Col 24, lines 56-57: solution A and B are mixed in a mass ratio of 16:17 – this corresponds to a solution having 17.8 wt% MS-51, 62.29 wt% methanol, and 0.109 wt% ammonium hydroxide).
Further regarding Claim 12, Yokogawa does not disclose that the precursor comprises water at a weight percent of greater than or equal to 15% and less than or equal to 17% (instead Yokogawa discloses a precursor wherein the resulting wt% of water is about 19.79 wt% - see Example 1 cited above).
However, as shown above by Sinko, the amount of water as claimed in the resulting precursor solution is considered a result-effective variable that may be routinely optimized in order to manipulate the resulting aerogel properties, such as aerogel density, polymer size, specific surface area, and pore volume. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of water in the precursor solution in Yokogawa in order to obtain the desired aerogel properties, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 223).
Regarding Claim 13, Yokogawa as modified above makes obvious the precursor comprises methyl silicate 51 at a weight percent of greater than or equal to 15.28% and less than or equal to 19% (Col 24, lines 56-57: solution A and B are mixed in a mass ratio of 16:17 – this corresponds to a solution having 17.8 wt% MS-51).
Further regarding Claim 13, Yokogawa does not disclose that the precursor comprises methanol at a weight percent of greater than or equal to 65.16% and less than or equal to 68.52% (instead Yokogawa discloses a precursor wherein the resulting wt% of methanol is about 62.29 wt% - see Example 1 cited above), that the precursor comprises water at a weight percent of greater than or equal to 15.68% and less than or equal to 16.04% (instead Yokogawa discloses a precursor wherein the resulting wt% of water is about 19.79 wt% - see Example 1 cited above), or ammonium hydroxide at a weight percent of greater than or equal to 0.15% and less than or equal to 0.17 wt% (instead Yokogawa discloses a precursor wherein the resulting wt% of ammonium hydroxide is about 0.109 wt% - see Example 1 cited above).
However, as shown above by Sinko, the amount of water as claimed in the resulting precursor solution is considered a result-effective variable that may be routinely optimized in order to manipulate the resulting aerogel properties, such as aerogel density, polymer size, specific surface area, and pore volume. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of water in the precursor solution in Yokogawa in order to obtain the desired aerogel properties, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 223).
Further, Sinko discloses the effect of solvent concentration in the initial sol gel solution on the resultant properties of the produced aerogel (3.6. Effect of solvent). Particularly, Sinko discloses the density of the final aerogel can be controlled by varying the ratio of solvent to precursor in the initial solutions. The amount of solvent defines the pore volume within the silica network. Thus, a high solvent to precursor ratio could result in a low-density silica aerogel, similar to the effect of excess water content. Using an alcoholic medium, a large amount of alcohol can slow the condensation processes by esterification (replacement of -OH with -OR) and can promote breaking the siloxane bonds by alcoholysis (≡Si−O−Si≡ + ROH → ≡Si−OH + ≡Si−OR). Alcoholysis and esterification induce to weaken the gels and some shrinkage. The solvent content affects less the nanostructure; the degree of branching in the network and the size of primary particles. It is therefore clear from this that the amount of a solvent in the initial sol gel solution, such as methanol in the mixed precursor of Yokogawa, may be manipulated in order to materially affect the physical properties of the resulting gels, including the density of said gels.
Accordingly, as the resulting aerogel density is a variable that can be modified, among others, by adjusting the amount of solvent in the sol gel precursor solution, or in the case of Yokogawa, methanol in the initial sol gel precursor solution, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results associated and commensurate in scope with the claimed range, the claimed range cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of methanol in the precursor solution of Yokogawa in order to obtain the desired aerogel properties, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 223).
Furthermore, Sinko discloses how the effect of the acid catalyst composition affects the resulting properties of the produced aerogel (3.3. Effect of catalyst). Particularly, Sinko discloses only turbid colloid solutions can be obtained below 0.005 N HCl or HNO3 concentrations due to the insufficient amount of catalyst, i.e., the incomplete hydrolysis of the silicate precursor. Clear and transparent alcogels are formed with the acid catalyst concentrations above 0.008 N. It was found that the higher the concentration of catalyst, the larger the silica aerogel density is. It is therefore clear from this that the amount of a catalyst in the initial sol gel solution, such as the ammonium hydroxide catalyst utilized by Yokogawa, may be manipulated in order to materially affect the physical properties of the resulting gels, including the density of said gels and sufficient degree of hydrolysis of the silicate precursor to produce said gel.
Accordingly, as the resulting aerogel density and degree of hydrolysis of the silicate precursor are variables that can be modified, among others, by adjusting the amount of acid catalyst, or in the case of Yokogawa, aqueous ammonia (i.e., ammonium hydroxide) in the initial sol gel solution, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results associated and commensurate in scope with the claimed range, the claimed range cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of ammonium hydroxide in the precursor solution of Yokogawa in order to obtain the desired aerogel properties, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding Claim 14-15, as discussed above, the mixture of Solutions A and B as disclosed in Yokogawa result in a precursor solution having a mass composition of 17.80 wt% MS-51, 62.29 wt% methanol, 19.79 wt% water, and 0.109 wt% ammonium hydroxide. Taking the ratio of the mass percent of MS-51 to water, the corresponding ratio is about 17.88:19.79, or reduced, about 0.90:1. This falls within the instant claimed ranges.
Regarding Claim 16, while Yokogawa discloses that, for hydrophobzing, the solvent utilized in the treatment step may be N,N-dimethylformamide (Col 12, lines 34-38), even in light of this, Yokogawa discloses seven alternate solvents suitable for such a purpose, and further, such a treatment is performed before or during supercritical drying, and therefore after the formation of a silica wet gel as claimed (Col 12, lines 11-17). Therefore, absent evidence to the contrary, the precursor material of the process of Yokogawa as modified above is considered to be devoid of N,N-dimethylformamide, as no amount of N,N-dimethylformamide is added to the precursor solution prior to gelation.
Regarding Claim 21, Yokogawa discloses the precursor material comprises: methyl silicate 51 at a weight percent of greater than or equal to 15% and less than or equal to 24%; methanol at a weight percent of greater than or equal to 60% and less than or equal to 68%; and ammonium hydroxide at a weight percent of greater than or equal to 0.08% and less than or equal to 0.2% (Col 24, lines 56-57: solution A and B are mixed in a mass ratio of 16:17 – this corresponds to a precursor solution having a mass composition of 17.80 wt% MS-51, 62.29 wt% methanol, and 0.109 wt% ammonium hydroxide. These values fall within the instant claimed ranges).
Further regarding Claim 21, Yokogawa does not disclose that the precursor comprises water at a weight percent of greater than or equal to 15% and less than or equal to 17%.
However, as shown above by Sinko, the amount of water as claimed in the resulting precursor solution is considered a result-effective variable that may be routinely optimized in order to manipulate the resulting aerogel properties, such as aerogel density, polymer size, specific surface area, and pore volume. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of water in the precursor solution in Yokogawa in order to obtain the desired aerogel properties, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 223).
Regarding Claim 22, Yokogawa discloses the precursor material comprises: methyl silicate 51 at a weight percent of greater than or equal to 15.28% and less than or equal to 19% (Col 24, lines 56-57: solution A and B are mixed in a mass ratio of 16:17 – this corresponds to a precursor solution having a mass composition of 17.80 wt% MS-51. This falls within the instant claimed range).
Further regarding Claim 22, Yokogawa does not disclose that the precursor comprises methanol at a weight percent of greater than or equal to 65.16% and less than or equal to 68.52%; water at a weight percent of greater than or equal to 15.68% and less than or equal to 16.04%; or ammonium hydroxide at a weight percent of greater than or equal to 0.15% and less than or equal to 0.17%.
However, as shown above by Sinko, the amount of water, solvent, and acid catalyst as claimed are considered result-effective variables that may be routinely optimized in order to manipulate the resulting aerogel properties of the aerogel produced in the process of Yokogawa, such as aerogel density, polymer size, specific surface area, and pore volume. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of water, methanol, and ammonium hydroxide in the precursor solution in Yokogawa in order to obtain the desired aerogel properties, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 223).
Regarding Claim 24, Yokogawa makes obvious a method of making silica wet gel (Col 1, lines 28-31: an alkoxysilane is reacted to obtain a gel compound, and then drying the gel – a gel before drying is considered a wet gel) comprising the steps of:
preparing a first solution by mixing methyl silicate 51 and methanol (Col 24, lines 51-54: MS-51 and methanol are mixed to form a Solution A);
preparing a second solution by mixing ammonium hydroxide and water (Col 24, lines 54-56: water and aqueous ammonia, also known as ammonium hydroxide, are mixed along with methanol to form a Solution B);
mixing the first solution and the second solution together to form a precursor material such that the precursor material comprises methyl silicate 51 at a weight percent of greater than or equal to 15% and less than or equal to 24%; methanol at a weight percent of greater than or equal to 60% and less than or equal to 68%; water at a weight percent of greater than or equal to 15% and less than or equal to 17%; and ammonium hydroxide at a weight percent of greater than or equal to 0.08% and less than or equal to 0.2%. (Col 24, lines 56-57: solution A and B are mixed in a mass ratio of 16:17 – this corresponds to a solution having 17.80 wt% MS-51, 62.29 wt% methanol, and 0.109 wt% ammonium hydroxide); and
allowing components in the precursor material to react to form silica wet gel (Col 24, lines 60-61: gelation of the alkoxysilane mixture on a substrate leads to the production of a gel compound which has not yet been subjected to drying – this is therefore considered a wet gel containing silica, or a silica wet gel).
Further regarding Claim 24, Yokogawa does not disclose that the precursor comprises water at a weight percent of greater than or equal to 15% and less than or equal to 17% (instead Yokogawa discloses a precursor wherein the resulting wt% of water is about 19.79 wt% - see Example 1 cited above).
However, as shown above by Sinko, the amount of water as claimed in the resulting precursor solution is considered a result-effective variable that may be routinely optimized in order to manipulate the resulting aerogel properties, such as aerogel density, polymer size, specific surface area, and pore volume. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of water in the precursor solution in Yokogawa in order to obtain the desired aerogel properties, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 223).
Regarding Claim 25, Yokogawa as modified above makes obvious the precursor material comprises methyl silicate 51 at a weight percent of greater than or equal to 15.28% and less than or equal to 19% (Col 24, lines 56-57: solution A and B are mixed in a mass ratio of 16:17 – this corresponds to a solution having 17.8 wt% MS-51).
Further regarding Claim 25, Yokogawa does not disclose that the precursor comprises methanol at a weight percent of greater than or equal to 65.16% and less than or equal to 68.52% (instead Yokogawa discloses a precursor wherein the resulting wt% of methanol is about 62.29 wt% - see Example 1 cited above), that the precursor comprises water at a weight percent of greater than or equal to 15.68% and less than or equal to 16.04% (instead Yokogawa discloses a precursor wherein the resulting wt% of water is about 19.79 wt% - see Example 1 cited above), or ammonium hydroxide at a weight percent of greater than or equal to 0.15% and less than or equal to 0.17 wt% (instead Yokogawa discloses a precursor wherein the resulting wt% of ammonium hydroxide is about 0.109 wt% - see Example 1 cited above).
However, as shown above by Sinko, the amount of water, solvent, and acid catalyst as claimed are considered result-effective variables that may be routinely optimized in order to manipulate the resulting aerogel properties of the aerogel produced in the process of Yokogawa, such as aerogel density, polymer size, specific surface area, and pore volume. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of water, methanol, and ammonium hydroxide in the precursor solution in Yokogawa in order to obtain the desired aerogel properties, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding Claim 26-27, as discussed above, the mixture of Solutions A and B as disclosed in Yokogawa result in a precursor solution having a mass composition of 17.80 wt% MS-51, 62.29 wt% methanol, 19.79 wt% water, and 0.109 wt% ammonium hydroxide. Taking the ratio of the mass percent of MS-51 to water, the corresponding ratio is about 17.80:19.79, or reduced, about 0.90:1. This falls within the instant claimed ranges.
Regarding Claim 28, while Yokogawa discloses that, for hydrophobzing, the solvent utilized in the treatment step may be N,N-dimethylformamide (Col 12, lines 34-38), even in light of this, Yokogawa discloses seven alternate solvents suitable for such a purpose, and further, such a treatment is performed before or during supercritical drying, and therefore after the formation of a silica wet gel as claimed (Col 12, lines 11-17). Therefore, absent evidence to the contrary, the precursor material of the process of Yokogawa as modified above is considered to be devoid of N,N-dimethylformamide, as no amount of N,N-dimethylformamide is added to the precursor solution prior to gelation.
Regarding Claim 29, Yokogawa makes obvious a method of making silica wet gel (Col 1, lines 28-31: an alkoxysilane is reacted to obtain a gel compound, and then drying the gel – a gel before drying is considered a wet gel) comprising the steps of:
preparing a first solution by mixing methyl silicate 51 and methanol (Example 1, Col 24, lines 51-54: MS-51 and methanol are mixed to form a Solution A);
preparing a second solution by mixing ammonium hydroxide and water (Col 24, lines 54-56: water and 28 % by mass aqueous ammonia, also known as ammonium hydroxide, are mixed along with methanol to form a Solution B);
mixing the first solution and the second solution together to form a precursor material such that the precursor material comprises methyl silicate 51 at a weight percent of greater than or equal to 15% and less than or equal to 24%; methanol at a weight percent of greater than or equal to 60% and less than or equal to 68%; and ammonium hydroxide at a weight percent of greater than or equal to 0.08% and less than or equal to 0.2%. (Col 24, lines 56-57: solution A and B are mixed in a mass ratio of 16:17 – this corresponds to a solution having 17.8 wt% MS-51, 62.29 wt% methanol, and 0.109 wt% ammonium hydroxide); and
allowing components in the precursor material to react to form silica wet gel (Col 24, lines 60-61: gelation of the alkoxysilane mixture on a substrate leads to the production of a gel compound which has not yet been subjected to drying – this is therefore considered a wet gel containing silica, or a silica wet gel).
Further regarding Claim 29, Yokogawa does not disclose that the precursor comprises water at a weight percent of greater than or equal to 15% and less than or equal to 17% (instead Yokogawa discloses a precursor wherein the resulting wt% of water is about 19.79 wt% - see Example 1 cited above).
However, as shown above by Sinko, the amount of water as claimed in the resulting precursor solution is considered a result-effective variable that may be routinely optimized in order to manipulate the resulting aerogel properties, such as aerogel density, polymer size, specific surface area, and pore volume. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of water in the precursor solution in Yokogawa in order to obtain the desired aerogel properties, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 223).
Regarding Claim 30, Yokogawa as modified above makes obvious the precursor material comprises methyl silicate 51 at a weight percent of greater than or equal to 15.28% and less than or equal to 19% (Col 24, lines 56-57: solution A and B are mixed in a mass ratio of 16:17 – this corresponds to a solution having 17.8 wt% MS-51).
Further regarding Claim 30, Yokogawa does not disclose that the precursor comprises methanol at a weight percent of greater than or equal to 65.16% and less than or equal to 68.52% (instead Yokogawa discloses a precursor wherein the resulting wt% of methanol is about 62.29 wt% - see Example 1 cited above), that the precursor comprises water at a weight percent of greater than or equal to 15.68% and less than or equal to 16.04% (instead Yokogawa discloses a precursor wherein the resulting wt% of water is about 19.79 wt% - see Example 1 cited above), or ammonium hydroxide at a weight percent of greater than or equal to 0.15% and less than or equal to 0.17 wt% (instead Yokogawa discloses a precursor wherein the resulting wt% of ammonium hydroxide is about 0.109 wt% - see Example 1 cited above).
However, as shown above by Sinko, the amount of water, solvent, and acid catalyst as claimed are considered result-effective variables that may be routinely optimized in order to manipulate the resulting aerogel properties of the aerogel produced in the process of Yokogawa, such as aerogel density, polymer size, specific surface area, and pore volume. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of water, methanol, and ammonium hydroxide in the precursor solution in Yokogawa in order to obtain the desired aerogel properties, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 223).
Regarding Claim 31-32, as discussed above, the mixture of Solutions A and B as disclosed in Yokogawa result in a precursor solution having a mass composition of 17.80 wt% MS-51, 62.29 wt% methanol, 19.79 wt% water, and 0.109 wt% ammonium hydroxide. Taking the ratio of the mass percent of MS-51 to water, the corresponding ratio is about 17.80:19.79, or reduced, about 0.90:1. This falls within the instant claimed ranges.
Regarding Claim 33, while Yokogawa discloses that, for hydrophobzing, the solvent utilized in the treatment step may be N,N-dimethylformamide (Col 12, lines 34-38), even in light of this, Yokogawa discloses seven alternate solvents suitable for such a purpose, and further, such a treatment is performed before or during supercritical drying, and therefore after the formation of a silica wet gel as claimed (Col 12, lines 11-17). Therefore, absent evidence to the contrary, the precursor material of the process of Yokogawa as modified above is considered to be devoid of N,N-dimethylformamide, as no amount of N,N-dimethylformamide is added to the precursor solution prior to gelation.
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-online/eterminal-disclaimer.
Claims 11-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12-19 of copending Application No. 18181357, hereinafter ‘the reference application’.
Namely, the reference application claims are drawn to an identical method of making a silica wet gel to that of the instant claims, including mixing a first solution comprising MS-51 and methanol, mixing a second solution comprising ammonia hydroxide and water, mixing the first and second solution, and allowing components in the precursor material to react to form silica wet gel. Furthermore, the claims of the reference application encompass each variation of the claimed composition of the resulting precursor solution by the mixture of the first and second solution, as recited by instant Claims 11-32 – see Claims 12-19 of the reference application. Therefore, issuance of both the instant claims and the claims of the reference patent would provide an unjustified timewise extension of the claimed subject matter, such that a double patenting rejection in this case is proper.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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LOGAN LACLAIR
Examiner
Art Unit 1738
/LOGAN LACLAIR/ Examiner, Art Unit 1738