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 .
Status of Application
Claims 7-16 are pending. Claims 15 and 16 are withdrawn. Claims 7-14 are presented for examination.
Response to Arguments
Applicant's arguments filed 8/10/2026 have been fully considered but they are not persuasive. Applicant argues that the prior art fails to teach that the treatment is performed sequentially. The Examiner agrees that Elias does not teach the steps performed sequentially. However, the Examiner maintains that it would have been obvious to select any order of mixing ingredients as the selection of any order of mixing ingredients is prima facie obvious in the absence of new or unexpected results.
Applicant argues that the selection of the order allows for the step (A2) to proceed more uniformly at high degree. However, Applicant has not provided evidence commensurate in scope with the claims to support this statement. Therefore, absent evidence of unexpected results the Examiner maintains the rejections over Elias.
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.
1. Claim(s) 7-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Elias et al. (U.S. Pat. No. 4116919).
Regarding claims 7-14, Elias teaches a known method of treating silica comprising: adding both 1,3-divinyl-1,1,3,3-tetramethyldisilazane and hexamethyldisilazane together to fumed silica (fumed silica is a type of gas-phrase process silica) with a BET surface area of 250 m2/g to yield silica particles that include trimethylsilyl and vinyldimethylsilyl groups on the surface of the particles (column 7, line 67-column 8, line 17). Additionally, Elias teaches the 1,3-divinyl-1,1,3,3-tetramethyldisilazane added in 5.27 g (note that according to the formula the claimed range for this compound is 0.495 g - 9.9 g, based on 198 g of silica * 250 as the BET/5000-100000) and the hexamethyldisilazane added in 53.24 g (note that according to the formula the claimed range for this compound is 16.5 g - 330 g, based on 198 g of silica * 250 as the BET/150-3000) at column 8, lines 12-16. Elias only fails to teach the order of the steps of adding the 1,3-divinyl-1,1,3,3-tetramethyldisilazane first and then treating the treated particles with hexamethyldisilazane.
However, the mixing the silazanes together or separately will yield the same treated silica product including groups from each silazane precursor on the surface of the silica. This would simply be a change in the sequence of adding ingredients. Furthermore, selection of any order of mixing ingredients is prima facie obvious in the absence of new or unexpected results. See Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In reBurhans, 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); In reGibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). As the final product will be the same regardless of the order of adding the disilazanes, modifying Elias to add the 1,3-divinyl-1,1,3,3-disilazane before the hexamethyldisilazane is prima facie obvious.
Conclusion
Claims 7-16 are pending.
Claims 7-14 are rejected.
Claims 15 and 16 are withdrawn.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
August 23, 2026Primary Examiner, Art Unit 1717
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