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Claims 1-6, 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 3/13/26.
Applicant argues that Claims 14 and 15 should be joined with group II. In light of the new amendments rending Claims 14 and 15 dependent from Claim 7 exclusively, the arguments are persuasive and Claims 14 and 15 are joined with group II.
Claim Objections
Claims 7-10 are objected to because of the following informalities:
In order to provide further proper antecedent basis, it is suggested the followings:
Please amend “Fumed” to “the surface unmodified fumed” in line 1 of each claims 8-10.
Please amend “the silica” to “the surface unmodified fumed” in claim 8, line 1, claim 9, line 2 and claim 10, line 2, and
Please amend “the silica” to “the surface unmodified fumed silica powder” in claim 8, line 4.
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.
Claim 16 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No.: 17/792471 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 16 of ‘471 discloses a silanol group relative to the BET surface area concentration of at least 0.85 SiOH/nm2 determined the same way. This feature overlaps the claims.
As to the size, Claim 16 of ‘471 states that the median particle size is less than 100 µm. This overlaps the claimed range. Although ‘471 does not state that the particle size is determined using the static light scatting method, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that any method known in the field to determine particle size and particle size distribution would be effective.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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) 7, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barthel (CN 1405084).
Barthel describes a silica (title) that is a silyated-modified fumed silica (page 3, para. 5 and last para on page 3 describing silica made pyrogenically). The silica has a size that has an average size of less than 100nm (page 3, para. 7). The silica made can be used in a large number of applications, including as an additive for use as a flow aid (page 2, para. 9). As to the surface silanol group concentration, Barthel teaches that the silanol group has a concentration of less than 0.6 SiOH/nm2 (page 9, para. 1 and 8). This can be considered a feature relative to the BET surface area since nm2 describes the SiOH in terms of the area of the silica.
Although Barthel does not specifically state that the SiOH/nm2 is determined by reaction with lithium aluminum hydride or that the particle size of the silica is determined by static light scattering method in a 5% by weight aqueous dispersion of the silica after 120 seconds of ultrasonic treatment at 25 degrees C, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that any method for determining SiOH/nm2 concentration and particle size are effective in accurately determining these features.
As to Claim 10, this claim is a product-by-process claim.
Although Barthel does not explicitly teach the method steps as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Barthel meets the requirements of the claimed product, Barthel clearly meets the requirements of the present claim.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barthel as applied to claim 7 above, and further in view of Lortz (US Pub.: 2011/0086958).
Barthel describes a density of their particle of less than 60 g/L (page 13, lines 5-6), but Barthel does not specifically describe this density as a tap density. The particle can be made by feeding a solution of the starting composition using an atomizing spraying means (page 6, para. 10). The particles made can be used in a number of uses, to include for use in toners (see page 2, last full para).
Lortz describes a surface-modified silicon dioxide particle (abstract). The reference explains that their silica particle is made by spray drying and gives a tamped density of 55 g/L (para. 93). Lortz explains that the surface-modified silica particles can be used in toner powders, as well as in other applications (abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce fumed silica with a tamped density of 55 g/L, as taught by Lortz for use with the fumed silica of Barthel because this tamped density is effective for use in toner applications.
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance: Shad et al. “Effects of fumed silica flow aids on flowability and packing of metal powders. . .”. Shad describes use of fumed silica as a flow aid (title). Shad tests several fumed silica size ranges, one of which has a d90 of 6.2µm, a D10 of 2.7 µm and a d50 of 4.4µm (Table 2-1). Shad shows a number of different particle sizes (see table 2-1). Shad explains that the size of the silica used influences the amount added to the composition (see conclusion and Fig. 4-3).
However, the date of this article is not prior to the effective filing date of the current application.
Next, Otter (CN 108698883) describes a silica dioxide made by pyrolysis (page 17, step II, para. 3). The particle size range results in d10 of 50-150 µm, d50 of 150-300 µm and D90 is 250-620µm (page 18, steps I, J and K). However, the size range is too large. That is, Claim 8 depends on Claim 8 and Claim 7 requires that the d90 is not more than 10µm.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHENG HAN DAVIS whose telephone number is (571)270-5823. The examiner can normally be reached 9-5:30.
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/SHENG H DAVIS/Primary Examiner, Art Unit 1732 April 30, 2026
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