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 Status
Claims 1-20 are pending. Claims 4-5 are withdrawn.
Information Disclosure Statement
The information disclosure statement filed 05/03/2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Foreign Reference 8 is not considered because there is no reference in the file.
Regarding Foreign Reference 8, the Applicant cited to Application 16082803 and an IDS dated April 12, 2021. The Examiner notes there is no IDS which has this date in this application.
Claim Interpretation
The term “substantially nonporous” is interpreted in light of the instant specification at paragraph [0183] as a material which is impermeable or otherwise functions as a nonporous material; such as having a pore volume of less than about 0.10 cc/g or fully nonporous material.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3 and 6-20 are rejected under 35 U.S.C. 103 as being unpatentable over WO2014201033 by Wyndham et al. (Wyndham).
In regard to claim 1, Wyndham teaches a superficially porous material (pg. 22; pg. 33). Wyndham teaches a substantially nonporous core material consisting of silica (pg. 22-24, substantially nonporous inorganic/organic core, silica; pg. 33, substantially nonporous core material is silica). Wyndham teaches a substantially nonporous core coating material disposed on the surface of the substantially nonporous core (pg. 22, substantially nonporous core material is silica coated with an inorganic/organic hybrid surrounding material; core is a composite material; pg. 33-34; pg. 10). Wyndham teaches the substantially nonporous core coating material comprises alumina, titanium oxide, zirconium oxide, cerium oxide, or a combination (pg. 37). Wyndham teaches one or more layers of a porous shell material disposed on the substantially nonporous core coating material (pg. 22, one or more layers of a porous shell material surrounding the core, porous shell layer (on a superficially porous core); pg. 33).
It would be readily apparent to one of ordinary skill in the art that features from different embodiments because they are all directed towards superficially porous particles. See also Boston Scientific v. Cordis, 89 USPQ.2d 1704, 1712 (Fed. Cir. 2009). Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.
In regard to claim 2, Wyndham teaches more than one layer of the porous shell material wherein each layer is independently selected from an inorganic/organic hybrid material, silica, or mixtures thereof (pg. 22; pg. 33; pg. 37).
In regard to claim 3, Wyndham teaches the inorganic/organic hybrid material has the formula I and required variables (pg. 38, hybrid layer material).
In regard to claim 6, Wyndham teaches improved chemical stability to high pH mobile phases as compared to an unbonded, superficially porous silica particles of the same size (pg. 46).
In regard to claim 7, Wyndham teaches further surface modification by coating with a polymer (pg. 47-48).
Regarding limitations recited in claims 8-9 and 12, which are directed to method of making said superficially porous material (e.g. “wherein substantially nonporous core coating material is derived from…silica core” (claim 8); “wherein each layer of the porous shell material is applied using a polyelectrolyte or a chemically degradable polymer” (claim 9); “wherein the one or more layers of the porous shell material are formed in a layer-by-layer process using alternating additions of polyelectrolyte and silica sol”) it is noted that said limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patentability of a product does not depend on its method of production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a product-by-process claim is the same or obvious as the product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.). See MPEP 2113 and 2114. Therefore, since the superficially porous material as recited in claims 8-9 and 12 is the same as the superficially porous material disclosed by modified Wyndham, as set forth above, the claim is unpatentable. In re Marosi, 710 F2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
In regard to claim 9, Wyndham teaches more than one layer of porous shell material (pg. 36).
In regard to claim 10, Wyndham teaches the initial superficially porous particles contains >90 molar % silica (pg. 77).
In regard to claim 11, Wyndham teaches the one or more layers of the porous shell material are porous silica (pg. 36).
In regard to claim 13, Wyndham teaches each of the one or more layers of the porous shell material is independently from 0.05 to 5 µm in thickness as measured perpendicular to a surface of the substantially nonporous core material (pg. 36).
In regard to claim 14, Wyndham teaches each of the one or more layers of the porous shell material is independently from 0.06 to 1 µm in thickness as measured perpendicular to a surface of the substantially nonporous core material (pg. 36).
In regard to claim 15, Wyndham teaches the substantially nonporous core material has a total pore volume of less than about 0.1 cc/g (pg. 22).
In regard to claim 16, Wyndham teaches the substantially nonporous core coating material has a total pore volume of less than about 0.1 cc/g (pg. 47).
In regard to claim 17, Wyndham teaches the substantially nonporous core coating consists of zirconium oxide (pg. 37).
In regard to claim 18, Wyndham teaches the substantially nonporous core coating consists of alumina (pg. 37).
In regard to claim 19, Wyndham teaches the substantially nonporous core coating consists of titanium oxide (pg. 37).
In regard to claim 20, Wyndham teaches the substantially nonporous core coating consists of cerium oxide (pg. 37).
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 KARA M PEO whose telephone number is (571)272-9958. The examiner can normally be reached 9 to 5:30.
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/KARA M PEO/Primary Examiner, Art Unit 1777
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