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 § 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)(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) 1, 2 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Fujioka (WO 2018/096876), EPO translation.
Fujioka describes a silica powder (para. 1) The uranium content of the silica powder is 0.02ppb or less (para. 28). The composition has a sphericity of 0.9 or higher (para. 17).
MPEP states that prior art which teaches a range overlapping or touching the claimed range anticipates if the prior art range discloses the claimed range with “sufficient specificity.” See 2131.03.
As to Claim 2, Fujioka teaches that the specific surface area can be 4 m2/g (para. 148, 155).
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) 4, 5, 6, 7, 8, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujioko.
Fujioko describes that the Fe content is 10ppm or less (para. 29). Although Fujioko does not specifically state that the iron content is in terms of Fe2O3, since Claim 4 requires a Fe2O3 amount of 100 ppm or less and dividing this amount by half to reflect the amount of Fe in the material would still be less than 100ppm, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the amount of iron employed is less than 100ppm.
As to Claim 5, In one example, Fujioko teaches that the silica contains about 0.1ppm Al (para. 0148). Although the reference does not describe the amount of Al in terms of Al2O3, since 0.1ppm is much less than 500ppm, far less than half, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the amount of Al in silica still meets this feature of the claim.
As to Claim 6, in one example, Fujioko teaches that the silica contains about 0 ppm K (para. 0148). Although the reference does not describe the amount of K in terms of K2O, since 0 is much less than 10 ppm, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the amount of K in silica still meets this feature of the claim.
As to Claim 7, in one example, Fujioko teaches that the amount of Na is 0.2 ppm (para. 0148). Although the reference does not describe the amount of Na in terms of Na2O, since 0.2 is much less than 15 ppm, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the amount of K in silica still meets this feature of the claim.
As to Claim 8, in one example, Fujioko teaches that the amount of Ca is 0.1ppm (para. 0148). Although the reference does not teach that the amount of Ca used is in-terms of CaO, since this reflects the amount of Ca in the precipitated silica, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the total amount of Ca in this sample is 0.1ppm. This is less than the 15ppm CaO claimed.
As to Claim 10, in one example, Fujioko teaches that the amount of Ti is 5ppm or less (para. 29). Although the reference does not describe the amount of Ti in terms of TiO2, since 5 ppm is much less than 10 ppm, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the amount of Ti in silica still meets this feature of the claim.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujioko as applied to claim 1 above, and further in view of Grohmann (WO 2017/103171).
Fujioko discloses that the average particle size ranges from 0.73 µm (para. 149).
Fujioko does not disclose the particle size distribution of Claim 3.
Grohmann describes a silicon dioxide powder (para. 1). The composition is made with the absence of impurities (para. 4, 34). The silicon dioxide granules are melted (para. 42), treated (para. 58, 63) and shaped (para. 42). The particles have a particle size distribution where D10 is from 1-10 µm (para. 87), D50 is from 6-15µm (para. 88) and D90 is from 5-40 µm (para. 89).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce silica with a particle size distribution of D10 is from 1-10 µm, D50 is from 6-15µm and D90 is from 5-40 µm, as taught by Grohmann for use with the silica of Fujioko because this pore distribution would lead to predictable and expected results.
Claim(s) 1, 2, 4, 6, 7, 8, 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yasuhiro (GB 2279944).
Yasuhiro describes a high-purity spherical silica (title). The uranium content is less than 1 ppm (page 15, line 4). A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.”
The sphericity is 0.9 (abstract). As to the size, Yasuhiro teaches that the particles have a size of about 10-15 µm (page 15, lines 22-26).
As to Claim 2, Yasuhiro teaches that in some embodiments, the specific surface area can be 2.5 m2/g or 2.8 m2/g (see table 1).
As to Claim 4, Yasuhiro teaches that the Fe is well below 1 ppm (page 20, lines 9-10). Although the reference does not teach that the amount of Fe used is in-terms of Fe2O3 since 1 ppm is much less than 100 ppm of the claim, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the amount of Fe in silica still meets this feature of the claim.
As to Claims 6, 7, 8 and 9, Yasuhiro teaches that the amount of K, Na, Ca, Mg in an amount of 1ppm (page 20, lines 8-10). Although the reference does not describe these metals in terms of their oxide form, however since the amounts of the metals are less than the concentrations claimed, the concentration of these metals overlap the claimed feature.
Conclusion
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/SHENG H DAVIS/Primary Examiner, Art Unit 1732 March 17, 2026