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
Applicant's election with traverse of Group I, claims 1-8 in the reply filed on 07/21/2026 is acknowledged. The traversal is on the ground(s) that the subject matter of all claims is sufficiently related that a thorough search for the subject matter of the remaining claims… thus… the search and examination of the entire application could be made without serious burden… MPEP 803 stated that “if the search and examination of all the claims in an application can be made without serious burden, the examiner must examine them on the merits, even though they include claims to independent or distinct inventions”.
This is not found persuasive because the application is a national stage application provided in 37 CFR 1.475(a), and shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Lack of unity of invention may be directly evident "a priori," i.e., before considering the claims in relation to any prior art, or may only become apparent "a posteriori," i.e., after taking the prior art into consideration. In this case, there is a lack of unity of invention after taking the prior art into consideration “a posteriori” (see MPEP § 1850.II).
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/01/2026.
Information Disclosure Statement
The listing of references in the specification at [0003] is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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 1-8 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.
Claims 1-7 recites “stabilized… active silica”. The claimed “stabilized” and “active” are indefinite because the metes and bounds of the “stabilized… active silica” is not clear. What is “active silica”? What is “active” in “aqueous silica solution”? What is “stabilized active silica”? Or, what is “stabilized” in “aqueous silica solution”?
The specification is also ambiguous with respect to “stabilized… active silica”. Specification at [0006]-[0007], shown with Examiner’s annotation below, attempts to disclose “stabilized… active silica” based on the preparation method or property, but the “metes and bounds” is unclear.
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Examiner will give claimed “stabilized… active silica” its broadest reasonable interpretation in view of the specification; however, the examiner will not read limitations into the claims from the specification (see MPEP 2111 and MPEP 2173).
Examiner suggests clarifying the claimed limitation because “claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant... uncertainties of claim scope should be removed, as much as possible, during the examination process” (see MPEP 2171).
Claim 8 is rejected due to its dependency on claim 7.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Fuhrmann et al. (US 2014/0042359 A1) (“Fuhrmann” hereinafter).
Regarding claim 1, Fuhrmann teaches a stabilized aqueous active silica solution (see Fuhrmann at [0001] teaching a process for preparing aqueous colloidal silica sols of high purity from silicate solutions, to aqueous colloidal silica sols… high-purity aqueous silica), which is taken to meet the claimed “stabilized aqueous active silica solution” based on the structure as outlined below, and on specification at [0006]-[0007] disclosing stable active silica can be produced by adding predetermined amount of a stabilizer (e.g., an acid, potassium hydroxide, ammonia, or an organic base) to an aqueous active solution… the aqueous active silica solution prepared from an aqueous alkali silicate solution), comprising
at least one stabilizer A selected from the group consisting of… an acid (see Fuhrmann at [0016]-[0017] teaching process… for preparing an aqueous colloidal silica sol… comprises… a. preparing an aqueous solution of water-soluble alkali metal silicate with a pH of less than 2… mixing a water-soluble alkali metal silicate or an aqueous alkali metal silicate solution with an acidifier, see Fuhrmann at [0060] teaching the acidifier used in step a) of the process… may be… sulphuric acid). Sulphuric acid is taken to meet the claimed stabilize A… acid,
wherein the amount of the stabilizer A is 0.167 to 10% by mass relative to the mass of SiO2 contained in the aqueous active silica solution (see Fuhrmann at [0063] teaching the water-soluble alkali metal silicate should be dissolved in the acidic aqueous alkali metal silicate solution obtained after process step a) in a concentration of 1 to 8% by weight… based on the SiO2 content) (see MPEP 2144.05(I)).
Regarding claims 2-3, Fuhrmann teaches the limitations as applied to claim 1 above, and Fuhrmann further teaches wherein the acid is an… inorganic acid (claim 2), and wherein the inorganic is… sulfuric acid (claim 3) (see Fuhrmann at [0060] teaching the acidifier used in step a) of the process… may be… sulphuric acid).
Regarding claim 4, Fuhrmann teaches the limitations as applied to claim 1 above, and Fuhrmann further teaches wherein the organic acid is citric acid (see claim 2 rejection, wherein the claimed acid (or organic acid) is met by inorganic acid (see MPEP 2111.04.II)).
Regarding claim 5, Fuhrmann teaches the limitations as applied to claim 1 above, and Fuhrmann further teaches wherein the organic base is an amine or a quaternary ammonium hydroxide (see claim 1 rejection, wherein the claimed stabilizer A is met by acid (see MPEP 2111.04.II)).
Regarding claim 6, Fuhrmann teaches the limitations as applied to claim 1 above, and Fuhrmann further teaches wherein the aqueous active silica solution having an SiO2 concentration of 2.8 to 3.3% by mass (see Fuhrmann at [0082] teaching aqueous silica solution with an SiO2 of 1-6% by weight) (see MPEP 2144.05(I)),
exhibits a viscosity of 0.5 to 20 mPa˖s as measured by the Ostwald method at 23°C within three hours after production, and the viscosity of the aqueous active silica solution measured after storage at 23°C for three days is 5.0 times or less the viscosity measured at 23°C within three hours after production (since the aqueous silica solution as taught by Fuhrmann and the claimed stabilized aqueous active silica solution employ substantially similar materials and process, it is reasonable to believe that the claimed properties (i.e., exhibits a viscosity of 0.5 to 20 mPa˖s as measured by the Ostwald method at 23°C within three hours after production, and the viscosity of the aqueous active silica solution measured after storage at 23°C for three days is 5.0 times or less the viscosity measured at 23°C within three hours after production) would have naturally flowed following the teaching of Fuhrmann (see MPEP 2112.01)).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Fuhrmann in view of Watanabe et al. (US 6,632,489 B1) (“Watanabe” hereinafter).
Regarding claim 7, Fuhrmann teaches a silica sol (see Fuhrmann at [0082] teaching aqueous colloidal silica sol), comprising
silica particles that are a polycondensate of the active silica contained in the stabilized aqueous active silica solution according to claim 1 (see Fuhrmann at [0019] teaching c. forming a stable colloidal sol by establishing a temperature, concentration and pH suitable for nucleation and particle growth in the aqueous silica solution obtained from step b), see Fuhrmann at [0082] teaching the high-purity aqueous silica solution… as a starting solution to form an aqueous colloidal silica sol… the growth of colloidal silica particles can be brought about there by means of any known process for forming a stable aqueous colloidal silica sol from aqueous silica solution… typically, for this purpose, the temperature, the concentration and the pH of the aqueous silica solution are adjusted such that nucleation and particle growth are initiated, see claim 1 rejection based on Fuhrmann).
However, Fuhrmann does not explicitly teach the claimed “wherein the silica particles have an average primary particle diameter of 5 to 300 nm”.
Like Fuhrmann, Watanabe teaches colloidal silica sol for nucleation and particle growth in the aqueous silica solution (see Watanabe at C4 L7-11 teaching the silica sol… has an SiO2 concentration of 50% by weight or less is stable… it is characterized in that the shape of colloidal silica particles dispersed in the liquid medium of the silica sol has a size of 50 to 500 nm as a particle diameter). Colloidal silica particles with a particle diameter of 50 to 500 nm is taken to meet the claimed “wherein the silica particles have an average primary particle diameter of 5 to 300 nm”.
Watanabe further teaches sol composed of spherical colloidal silica particles having a particle diameter of 4 to 150 nm is highly stable and has been used in various fields of application (see Watanabe at C3 L27-29).
Additionally, MPEP states that "[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", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05.II.A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to adjust the nucleation and particle growth of the colloidal silica particles as taught by Fuhrmann with a particle diameter of 50 to 500 nm as taught by Watanabe because colloidal silica particles having a particle diameter of 4 to 150 nm is highly stable and has been used in various fields of application, and there is a reasonable expectation of success that the disclosed particle size diameter would be suitable.
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 a statement of reasons for the indication of allowable subject matter: there are no prior art references of record that teach or fairly suggest to one of ordinary skill in the art all the cumulative limitations of each of the respective independent claims 1 and 7, and dependent claim 8.
Specifically, it is noted that Fuhrmann teaches all the limitations as claimed in claim 1, and Fuhrmann in view of Watanabe teach all the limitations as claimed in claim 7. Additionally, Fuhrmann teaches the water-soluble alkali metal silicate or aqueous solution thereof used in step a) of the process… may be desired water-soluble alkali metal silicate or aqueous solution thereof… preference is given… to using sodium silicate (solution)… and… potassium silicate (solution)… it is also possible to use mixtures of a plurality of silicate solutions… the water-soluble alkali metal silicate or aqueous solution thereof used in… process step a) is therefore especially a sodium waterglass… and… potassium waterglass… a waterglass solution with an SiO2 content of 28.9% by weight (see Fuhrmann at [0058]). Fuhrmann further teaches waterglass solutions used… K 16 ppm… 32 ppm (see Fuhrmann at [0118]). However, Fuhrmann and/or Fuhrmann in view of Watanabe do not explicitly teach the claimed “the amount of potassium ions contained in the silica sol is 1,500 to 5,000 ppm, and the ratio of (potassium ion concentration by ppm)/(Na ion concentration by ppm) is 100 to 1,000”. And, there are no prior art references of record that provide adequate teachings or apparent reason that would lead the person of ordinary skill to modify Fuhrmann and/or Fuhrmann in view of Watanabe as claimed.
As such, the prior art references of record fail to teach or render obvious all the cumulative limitations of each of the respective independent claims 1 and 7, and dependent claim 8 as claimed. Therefore, all the cumulative limitations of each of the respective independent claims 1 and 7, and dependent claim 8 are considered allowable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARITES A GUINO-O UZZLE whose telephone number is (571)272-1039. The examiner can normally be reached M-F 8am-4pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731
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