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 .
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 26-43 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 26 recites the limitation "the amount of at least one preselected non-siliceous inorganic substance" in line 3-4. There is insufficient antecedent basis for this limitation in the claim.
Claim 26 recites the limitation "the chelating agent" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 26 recites the limitation "the desired amount" in line 5. There is insufficient antecedent basis for this limitation in the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 34 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 34 contains the language that surface area is controlled by controlling the amount of preselected non-siliceous inorganic matter and/or the heat treatment temperature. The claim language is broader than claim 26 upon which it depends because claim 26 which already limits the process to controlling the surface area to the claimed range by controlling the amount of said preselected non-siliceous matter and the dependent claim language “or” expands to controlling the surface area by controlling the heat treatment temperature instead of controlling the amount of said preselected non-siliceous matter. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 40 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 40 contains the language that the heat treatment temperature is in the range of 200°C to 1000°C but depends on claim 26 which already limits the heat treatment to 200°C to 1000°C. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claim(s) 26, 31-32, 34-37, 40-43 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Real et al (“Preparation of Silica from Rice Husks”, J. Am. Ceram. Soc. 79 (8) 2012-2016 (1996)).
Real discloses a method for preparation of silica gel (i.e., amorphous, high surface area silica) from rice husk (i.e., a siliceous plant matter), the method comprising preliminary leaching with dilute hydrochloric acid before combustion to obtain relatively pure silica with a high specific surface area (~260 m2/g) (see Abstract and Pages 2015-2016). Real further discloses that if HCl leaching is performed after pyrolysis, the specific surface area decreases to 1 m2/g (see Abstract). Real discloses where the treatment is targeted to remove Al, Fe, Ca, Mg, Na, K, Ti, P, Sr, Zn, Mn and other compounds (see Page 2013, Table 1). Real further discloses a method where the concentration of potassium is reduced to 0.01% (i.e., 100 ppm) obtain the high surface area (see Page 2013, Table 1). Real further discloses that leached raw material is burned at 600°C (see Page 2014, Col 2, Paragraph 2).
Real therefore discloses a method comprising manipulating the amount of preselected inorganic matter (leaching and removing Al, Fe, Ca, Mg, Na, K, Ti, P, Sr, Zn, Mn and other compounds) from siliceous plant matter (rice husk) by introducing mineral acid (acid leaching with HCl), the preselected non-siliceous inorganic substance is established at a preselected amount of from 20 ppm to 25,000 ppm (potassium remaining is at an amount of 100 ppm) to control the surface area of the porous amorphous silica within the range of 10 m2/g and 450 m2/g (surface are is about 260 m2/g); and heat treating in the presence of oxygen at a temperature in a range of 200°C to 1,000°C (burning the raw material at a temperature of 600°C).
Regarding claim 31-32, Real discloses a method comprising introducing hydrochloric acid which is a mineral acid.
Regarding claim 34, Real discloses a method where the surface area is controlled to 260 m2/g by controlling the amount of potassium.
Regarding claim 35, Real discloses that the specific pore volume of the silica treated with HCl before burning is 0.43 cm3/g (see Page 2013, Table II).
Regarding claim 36, Real discloses a method where the pore size distribution is controlled to a range of 10 angstrom to 200 angstrom (see Page 2015, Figure 6).
Regarding claim 37, Real discloses a method where the amount of non-siliceous inorganic substances is controlled to 0.56 % (i.e., 5,600 ppm) since it discloses that SiO2 is 99.44% (see Page 2013, Table I).
Regarding claim 40, as applied above Real discloses burning at a temperature of 600°C.
Regarding claim 41, Real discloses where the treatment is targeted to remove Al, Fe, Ca, Mg, Na, K, Ti, P, and Mn compounds (see Page 2013, Table 1).
Regarding claim 42, as applied above Real discloses acid leaching which is a chemical process.
Regarding claim 43, Real disclose a method producing amorphous silica (see Page 2014, Col 2, Second Paragraph).
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) 27-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shipley (US 2006/0222582) and in further view of Real.
Regarding claim 27, Shipley discloses a method for producing porous, amorphous silica resulting from pyrolysis of a siliceous plant matter, the method comprising:
soaking siliceous plant matter in an aqueous solution containing chelating agents, mineral and/or organic acids (see [0010]); where the removal of metallic compounds prior to pyrolysis of the siliceous plant matter increases the porosity of the amorphous silica resulting from the pyrolysis so that the amorphous silica resulting from pyrolysis increases from 20 to 40 square meters/gram to as much as 300 to 400 square meters/grams (see [0024]) (i.e., where the amount of non-siliceous inorganic substance is manipulated to control the surface area of the porous amorphous silica obtained after heat treatment since one of ordinary skill in the art would recognize 300 to 400 square meters/grams to refer to surface area measured in square meter/grams.);
the treated siliceous plant matter is thermally pyrolyzed in the presence of oxygen at a controlled temperature preferably in the 500°C to 900°C range (see [0033]).
Shipley further a method where the concentration of solute is dependent on the amount of inorganic compounds contained varies according to plant species, soil, and other growing conditions but will generally be half to one mol of chelating agent (some chelating agents capture more than a mole for mole ratio of impurities) for each mole of inorganic compound to be removed before pyrolysis (see [0026]). Shipley further discloses that for highest chemical purity at least one or more mol of solute would be used for every mole of inorganic oxide present and when less chemical purity and porosity are desired or permissible (see [0026]).
Shipley therefore discloses a method comprising manipulating the amount of a non-siliceous inorganic substance (the metallic compounds) in siliceous plant matter by controlling the amount of the chelating agent or by introducing mineral acids (by controlling the concentration of the solutes) where the surface area is controlled; and heat treating the siliceous plant matter.
Shipley does not explicitly disclose that the amount of the preselected non-siliceous inorganic substance remaining in the plant matter is established at a preselected amount of from 20 ppm to 25,000 ppm and where the preselected non-siliceous inorganic substance includes elements or compounds of alkali metals, alkali earth metals, aluminum, boron, iron, manganese titanium and/or phosphorus.
Real discloses a method for preparation of silica gel (i.e., amorphous, high surface area silica) from rice husk (i.e., a siliceous plant matter), the method comprising preliminary leaching with dilute hydrochloric acid before combustion to obtain relatively pure silica with a high specific surface area (~260 m2/g) (see Abstract and Pages 2015-2016). Real further discloses that if HCl leaching is performed after pyrolysis, the specific surface area decreases to 1 m2/g (see Abstract). Real discloses where the treatment is targeted to remove Al, Fe, Ca, Mg, Na, K, Ti, P, Sr, Zn, Mn and other compounds (see Page 2013, Table 1). Real further discloses a method where the concentration of potassium is reduced to 0.01% (i.e., 100 ppm) obtain the high surface area (see Page 2013, Table 1). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the method as disclosed by Shipley where the preselected amount of non-siliceous inorganic substance is potassium and set to an amount of 100 ppm as disclosed by Real since controlling potassium to 100 ppm produces a high surface area, amorphous silica as disclosed by Real.
Regarding claim 28, Shipley discloses citric acid (see [0019]).
Regarding claim 29, Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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." See MPEP 2144.05.II.A. Here, Shipley discloses that the exact concentration of solute to be used cannot be specified for various siliceous plant matter, as the amount of inorganic compounds contained varies according to plant species, soil, and other growing conditions but will generally be half to one mol of chelating agent (some chelating agents capture more than a mole for mole ratio of impurities) for each mole of inorganic compound to be removed before pyrolysis (see [0026]). Shipley therefore suggests that the amount of chelating agent relative to the plant matter is a results effective variable affecting the removal of the metallic compounds. It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the process as disclosed by Shipley where the proportion of chelating agent is in any workable or optimum range including the claimed range as a matter of routine experimentation to optimize the removal of the metallic compounds.
Regarding claim 30, Shipley discloses citric acid (see [0019]). As above in claim 29, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the process as disclosed by Shipley where the proportion of citric acid is in any workable or optimum range including the claimed range as a matter of routine experimentation to optimize the removal of the metallic compounds.
Claim(s) 38-39 are rejected under 35 U.S.C. 103 as being unpatentable over Real as applied to claim 26, and in further view of Shipley and in further view of Riveros et al (“Rice husks as a source of high purity silica”, J. Crystal Growth 75 (1986) 126-131).
As applied to claim 26, Real discloses a method for production of porous amorphous silica from siliceous plant matter containing non-siliceous inorganic matter, the method comprising manipulating the amount of at least one inorganic material by controlling the amount of chelating agent or introducing mineral acids into said siliceous plant matter such that the amount of the inorganic material is at an amount of 20 ppm to 25,000 ppm thereby controlling the surface area of the porous amorphous silica obtained after heat treatment to a range of 10 m2/g to 450 m2/g, the inorganic substance including elements of Al, Fe, Ca, Mg, Na, K, Ti, P, Sr, Zn, Mn; and heat treating the treated siliceous plant matter in the presence of oxygen in the range of 500°C to 900°C wherein the resulting silica is comprised of silica of porous amorphous form.
Regarding claim 38, Real does not disclose a method comprising controlling the content of the non-siliceous inorganic substances is in a range of 10 ppm to 1,000 ppm by post washing of the heat-treated silica with at least one of water, mineral acids, chelants, and pH adjustment chemicals.
Regarding post washing, Shipley discloses a method where following pyrolysis the amorphous silica is subjected to a variety of baths which may contain chelating agents, ammonia, mineral and organic acids or base solutes to enhance removal of any residue which may remain therein (See [0035]). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the method for preparing porous amorphous silica as disclosed by Real, where the silica is post washed with water, mineral acids, or chelants as disclosed by Shipley to enhance removal of any residue which may remain.
Regarding the ppm of the non-siliceous inorganic substances after post-washing, Riveros discloses a method for producing high purity silica from rice husk ash, the method comprising acid leaching followed by thermal treatment, and leaching the ashes wherein the silica produced has a purity of 99.98% (i.e., where non-siliceous inorganic substances is controlled to a range of 200 ppm) (see Conclusions). Riveros discloses that high purity silica is useful for the manufacture of solar cells (see Abstract). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform a method for preparing amorphous silica as disclosed by Real and Shipley where post washing the silica removes residue until a purity of 99.98% (i.e., 200 ppm of non-siliceous inorganic substances) is obtained as disclosed by Riveros so that the silica is high purity and useful for solar cell manufacturing.
Regarding claim 39, It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform a method for preparing amorphous silica as disclosed by Real and Shipley where post washing the silica removes residue until a purity of 99.98% (i.e., 200 ppm of non-siliceous inorganic substances) is obtained as disclosed by Riveros so that the silica is high purity and useful for solar cell manufacturing.
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 26 and 33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,618,684 in view of Real.
Claim 8 of the ‘684 patent encompasses a method for production of porous amorphous silica comprising controlling the amount of a flux agent in a siliceous plant matter by adding or mixing a flux agent to the siliceous plant matter before heat treating the plant matter in the presence of oxygen so that the flux agent is in an amount of 20 ppm to 25,000 ppm to control the surface area within the range of 10 m2/g and 450 m2/g. Claim 26 and 33 differ in the claiming of a non-siliceous inorganic substance including elements or compounds of alkali metals, alkali earth metals, aluminum, boron, iron, manganese titanium, and/or phosphorus and to limiting the heat treatment to a temperature of 200°C to 1,000°C.
Real discloses a process for preparing porous amorphous silica where the content of metal impurities including Al, Fe, Ca, Mg, Na, K, Ti, P, Sr, Zn, Mn are controlled to control the surface area to 260 m2/g and where heat treatment comprises a temperature of 600°C. Real further discloses that the process obtains a pure silica with high specific surface area fulfilling the requirements for the manufacture of supported-metal catalyst. It would have been obvious to one of ordinary skill in the art at the time of filing of the invention for the process of claim 8 where adding the flux agent comprises Al, Fe, Ca, Mg, Na, K, Ti, P, Sr, Zn, Mn and a heat treatment of 600°C as taught by Real since it produces a pure silica with a surface area of 260 m2/g from rice husk fulfilling the requirements for manufacture of supported-metal catalyst as disclosed by Real.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL FORREST whose telephone number is (571)270-5833. The examiner can normally be reached Monday-Friday (10AM-6PM).
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/MICHAEL FORREST/Primary Examiner, Art Unit 1738