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 .
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The disclosure is objected to because of the following informalities: the specification cannot have reference to the claims.
Appropriate correction is required.
Election/Restrictions
Applicant's election with traverse of Invention I, reading on claims 1-15, in the reply filed on 6/15/2026 is acknowledged. The traversal is on the ground(s) that there is no substantial burden, claim 1 is generic to inventions I and II. This is not found persuasive because the inventions are distinct and further search burden is defined on page 3 of the Restriction Requirement.
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Invention II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/15/2026.
The requirement is still deemed proper and is therefore made FINAL.
Applicant's election with traverse of species A1 in the reply filed on 6/15/2026 is acknowledged. The traversal is on the ground(s) that the numbers are directed to a range of final pore volume. This is found persuasive and the requirement to elect species A is withdrawn.
Applicant's election with traverse of species B1 in the reply filed on 6/15/2026 is acknowledged. The traversal is on the ground(s) that there would not be a substantial burden in view of the close relationship. This is not found persuasive because the chemical components are mutually exclusive.
The requirement is still deemed proper and is therefore made FINAL.
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 1-15 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.
Claim 1 recites the limitation "the pore volume”. There is insufficient antecedent basis for this limitation in the claim. This term has not previously been defined. Claims 2-15 are rejected as well since they depend from claim 1 and do not rectify the issue.
Claim 1 recites the limitation "the particle material”. There is insufficient antecedent basis for this limitation in the claim. The term “porous particle material” has previously been defined; it is not clear if this refers to the same or a different material. Claims 2-15 are rejected as well since they depend from claim 1 and do not rectify the issue.
Claim 5 recites the limitation "with porous particle material”. There is insufficient antecedent basis for this limitation in the claim. This term has previously been defined; it is not clear if it refers to the same or different limitation. Claim 6 is rejected as well since they depend from claim 5 and do not rectify the issue.
Claim 7 recites the limitation "hydrophilic compound”. There is insufficient antecedent basis for this limitation in the claim. This term has previously been defined; it is not clear if it refers to the same or different limitation.
Claims 8 and 9 recite the limitation "the particle material”. There is insufficient antecedent basis for this limitation in the claim. The term “porous particle material” has previously been defined; it is not clear if this refers to the same or a different material.
Claim Rejections - 35 USC § 102
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 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 person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claims 1-2, 5-6, 8-9, and 15 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US 20130135610 by Bouvier et al. (Bouvier).
In regard to claim 1, Bouvier teaches a method of making a porous particle material for use as stationary media in chromatographic separation ([0260]-[0261]). Bouvier teaches reducing the pore volume of the particle material from an initial pore volume to a final pore volume ([0260]-[0261], Table 1, Table 2, product 2a SPV 1.29 cm3/g, precursor product 1j SPV 1.36 cm3/g, heated between 120-155°C). Bouvier teaches hydrating the porous particle material ([0261]; [0283]). Bouvier teaches coating the porous particle material with a hydrophilic compound to obtain a surface modified porous particle material ([0263]-[0264]).
In regard to claim 2, Bouvier teaches the step of reducing the pore volume comprises performing a thermal treatment on the porous particle material ([0260]-[0261], heated).
In regard to claim 5, Bouvier teaches the step of coating the porous particle material with a hydrophilic compound comprises preparing an aqueous mixture comprising a catalyst ([0261]-[0264], aqueous solution, hydrochloric acid). Bouvier teaches adding the hydrophilic compound to the aqueous mixture ([0261]-0264]). Bouvier teaches adding the porous particle material to the mixture of step b and reacting the hydrophilic compound with porous particle material to form a coating on the porous particle material and obtain a surface modified porous particle material ([0261]-[0264]).
In regard to claim 6, Bouvier teaches the hydrophilic compound is a silane compound chosen from the group consisting of glycidoxypropyltrimethoxysilane ([0263]-[0264]).
In regard to claim 8, Bouvier teaches an initial pore volume of the particle material is between 1.2-1.6 cc/g ([0260]-[0261], Table 1, Table 2, product 2a SPV 1.29 cm3/g, precursor product 1j SPV 1.36 cm3/g, heated between 120-155°C; product 2r or 2s 1.13 or 1.12 cm3/g and precursor 1f SPV 1.22 cm3/g cm3/g).
In regard to claim 9, Bouvier teaches a final pore volume of the particle material is between 0.7-1.1 cc/g ([0260]-[0261], Table 1, Table 2, product 2r or 2s 1.13 or 1.12 cm3/g and precursor 1f SPV 1.22 cm3/g cm3/g).
In regard to claim 15, Bouvier teaches a porous material according to claim 1 (([0263]-[0264])).
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 7 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over US 20130135610 by Bouvier et al. (Bouvier), as noted above.
In regard to claim 7, Bouvier teaches the limitations as noted above. Further, Bouvier teaches a hydrophilic compound, water, and a catalyst ([0260]-[0264]). Bouvier teaches adding hydrophilic compound to the water and catalyst mixture ([0260]-[0264]).
Bouvier does not teach 6X water with 0.1X amount of catalyst. Bouvier does not teach 1/3X hydrophilic compound. Bouvier does not teach reacting the hydrophilic compound with 1X of the porous particle material to obtain a surface modified porous particle material.
It would be obvious to one of ordinary skill in the art before the effective filing date to tune the amounts of water, catalyst, and hydrophilic compound in the method of making the porous particle in order to obtain desired properties such as pore size and chromatographic functionality.
In regard to claim 10, Bouvier teaches the limitations as noted above. Further, Bouvier teaches the porous particle material has an average particle size between 1.6-3.0 µm ([0261]). It would have been obvious to one of ordinary skill in the art at the time of invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
In regard to claim 11, Bouvier teaches the limitations as noted above. Further, Bouvier teaches the porous particle material has an average particle size of 1.8 – 3.0 µm ([0261]). It would have been obvious to one of ordinary skill in the art at the time of invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
In regard to claim 12, Bouvier teaches the limitations as noted above. Further, Bouvier teaches the porous particle material comprise silica particles ([0053]; [0085]; [0137]). It would be readily apparent to one of ordinary skill in the art that features from Formula I can be incorporated into Example 2 because they are both directed towards creating stationary phase material for a chromatography system. 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 13, Bouvier teaches the limitations as noted above. Further, Bouvier teaches the coating formed on the porous particle material has a thickness of between 3.0-3.7 µmol/m2 ([0264]). It would have been obvious to one of ordinary skill in the art at the time of invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
In regard to claim 14, Bouvier teaches the limitations as noted above. Further, Bouvier teaches the coating formed on the porous particle material results in a surface modified particle material having a diol bonded phase ([0263]-[0264]; [0079]). It would be readily apparent to one of ordinary skill in the art that features from Formula II can be incorporated into Example 2 because they are both directed towards creating stationary phase material for a chromatography system. 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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over US 20130135610 by Bouvier et al. (Bouvier), as noted above, in view of U.S. Patent Publication No. 2016/0220983 by Jo et al. (Jo).
In regard to claim 3, Bouvier teaches the limitations as noted above. Further, Bouvier teaches the step of reducing the pore volume comprises performing trihydroxylation reaction on the surface of the porous particle material ([0044]). Bouvier does not teach dihydroxylation reaction on the surface of the porous particle material.
Jo teaches the monomer comprises a hydroxyl group and can include either a dihydroxy or a trihydroxy ([0065]). Jo teaches the compounds may be used alone or in combination ([0065]).
In view of Jo’s recognition that di and trihydroxy compounds are interchangeable for forming superficially porous particles, it would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the dihydroxy compound of Bouvier with the trihydroxy compound of Jo as it is merely the selection of a functionally equivalent hydroxylation compound recognized in the art and one of ordinary skill in the art before the effective filing date would have a reasonable expectation of success in doing so. Mere substitution of an equivalent is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). Said combination would amount to use of a known element for its intended use in a known environment to accomplish entirely expected result.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US 20130135610 by Bouvier et al. (Bouvier), as noted above, in view of WO2017155884 by Lawrence et al. (Lawrence).
In regard to claim 4, Bouvier teaches the limitations as noted above. Further, Bouvier teaches hydrating the porous material with hydrochloric acid solution ([0262]). Bouvier does not teach hydrofluoric acid solution.
Lawrence teaches producing superficially porous particles ([0207]). Lawrence teaches suitable acids include hydrochloric acid or hydrofluoric acid ([0208]).
In view of Lawrence’s recognition that acids are interchangeable for forming superficially porous particles, it would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the hydrochloric acid of Bouvier with the hydrofluoric acid of Lawrence. Mere substitution of an equivalent is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire Wang can be reached at (571) 270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARA M PEO/Primary Examiner, Art Unit 1774
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