DETAILED ACTION
Claim(s) 1, 3-5 and 7-14 were rejected in Office Action mailed on 05/19/2026.
Applicant filed a response, amended claim(s) 1 and 4-7, withdrew claims 15-20 on 07/02/2026.
Claim(s) 1-20 are pending, and claim(s) 15-20 are withdrawn.
Claim(s) 1, 4-5 and 13 are rejected.
Claims 2-3, 6-11 and 14 are objected to.
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 Interpretation
Claim 1, recites “a first temperature” in lines 2-3, “a second temperature” in lines 6-7, “a third temperature” in lines 10-11.
The examiner interprets that the phrases do not require three different temperatures, i.e., the three temperatures can be identical to each other. The examiner further interprets that the phrases do not require a specific order of applying the three temperatures.
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.
Claim(s) 1, 4-5 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Jasra et al., JP2007527304A (Jasra).
The examiner has provided a machine translation of Jasra et al., JP2007527304A (Jasra). The citation of the prior art set forth below refers to the machine translation.
Regarding claim 1, Jasra teaches a method for controlling the pore size of microporous solids (Jasra, page 9, 1st paragraph; which is in a form of a particulate material according of Examples 1-8 of Jasra), comprising activating the molecular sieve adsorbent (which necessarily would have an initial porosity and a final porosity) at a temperature range of 350 to 450 °C (reading upon the second temperature) from which physically adsorbed water is to be removed for a period in the range of 3 to 6 hours (Jasra, page 8, 1st paragraph);
converting the alkoxide deposited on the modified adsorbent to silica by calcining
the modified adsorbent at a temperature range of 450 to 600 °C (reading upon the third temperature) for a period of 3 to 8 hours (Jasra, page 8, 6th paragraph);
treating the activated adsorbent with the alkoxide vapor at a temperature range of 80-150°C (reading upon a first temperature) for a period of 2-6 hours (Jasra, page 8, 6th paragraph);
which overlap the ranges or values of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Further regarding claim 1 and 4-5, given that Jasra teaches converting the alkoxide deposited on the modified adsorbent to silica by calcining the modified adsorbent at a temperature range of 450 to 600 °C (Jasra, page 8, 6th paragraph); the temperature would necessarily have influence on the structure of the silica produced, which would have influence on the final porosity. Therefore, Jasra would necessarily meet the claimed limitation of wherein the final porosity is controlled at the third temperature;
wherein the final porosity is controlled by varying the third temperature;
wherein controlling the final porosity comprises: a) choosing a desired final porosity, and b) choosing a specific third temperature.
Regarding claim 13, as applied to claim 1, given that Jasra teaches converting the alkoxide deposited on the modified adsorbent to silica by calcining the modified adsorbent at a temperature range of 450 to 600 °C (Jasra, page 8, 6th paragraph), i.e., the modified adsorbent comprises silica. Therefore, the modified adsorbent comprises silica of Jasra reads upon particle material comprises silica particles, and can necessarily be used in size exclusion chromatrography.
Furthermore, the recitation in the claims that the silica particles for use in size exclusion chromatography devices is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Jasra discloses the powder (i.e., particle material) as presently claimed, it is clear that the molecular sieve adsorbent powder comprising silica of Jasra would be capable of performing the intended use, i.e. for use in size exclusion chromatography devices, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Allowable Subject Matter
Claims 2-3, 6-11 and 14 are 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.
Regarding claim 2-3, and 7, Jasra teaches activating the molecular sieve adsorbent (which necessarily would have an initial porosity and a final porosity) at a temperature range of 350 to 450 °C (reading upon the second temperature) (Jasra, page 8, 1st paragraph);
converting the alkoxide deposited on the modified adsorbent to silica by calcining
the modified adsorbent at a temperature range of 450 to 600 °C (reading upon the third temperature) (Jasra, page 8, 6th paragraph);
treating the activated adsorbent with the alkoxide vapor at a temperature range of 80-150°C (reading upon a first temperature) (Jasra, page 8, 6th paragraph), which are outside the copes of claims 2-3 and 7.
Regarding claims 8-12 and 14, Jasra does not disclose or suggest pore volume, pore size or particle size as claimed.
Response to Arguments
In response to the amended claim 1, which recites, “heating the particle material to a first temperature”, “heating the particle material to a second temperature” and heating the particle material to a third temperature”, it is noted that the referenced teaching from Mauss and Mauss in view of Schmudlach would not anticipate/meet the present claims. Therefore, the previous 35 U.S.C. 102a(1)/103 rejections over Mauss, Mauss in view of Schmudlach, are withdrawn from the record. However, the amendments necessitate a new set of rejections over Jasra as set forth above.
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.
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
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