DETAILED ACTION
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 without traverse of Group II (claims 17, 21, 23, 24, 26-30, 34, 41, 43-45, 47, 48, and 50) in the reply filed on 07/27/2026 is acknowledged.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 17, 21, 23, 24, 26-30, 34, 41, 43-45, 47, 48, and 50 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15, 17 and 18 of copending Application No. 18/834,414 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the pending application and Application No. 18/834,414 teach “A method for producing a processed siliceous material, comprising:
reacting (i) a feedstock siliceous material with (ii) a fluoride-containing compound under conditions suitable to dissolve a portion of the feedstock siliceous material and leave the remaining portion of the feedstock siliceous material undissolved; and
heterogeneously precipitating the dissolved portion of the feedstock siliceous material onto the undissolved portion of the feedstock siliceous material, to produce a processed siliceous material.”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 17, 21, 23, 24, 26-30, 34, 41, 43-45, 47, 48, and 50 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barnett et al. (U.S. Pat. No. 6,217,840).
Regarding claim 17, 23, 24, 26-30, 34, 41, 43-45, 47, 48, and 50 Barnett et al. teaches a process for producing fumed silica from solid material comprising a first part of input or feed material is a source of silica, such as sand, quartz, flint, diatomite and mineral silicate (column 4, lines 10-25). Barnett et al. teaches a second part of the feed material includes ammonium bifluoride (column 4, lines 25-30). Barnett et al. teaches the first and second source are fed to an acid digester which meets a broad and reasonable interpretation of combining ammonium fluoride and/or ammonium bifluoride with a material comprising silicate in an aqueous combination (column 4, lines 30-40). Barnett et al. teaches temperature in the digester can range from ambient up to 300 ̊C which overlaps with an aqueous combination at a maximum temperature of greater than or equal to 10 ̊C and less than or equal to 125 ˚C (column 5, lines 1-10). 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). Although Barnett et al. does not specify silicate and/or a salt and wherein the method produces and/or accumulates less than or equal to 30 ppm hydrogen fluoride in the process it is clear that method taught by Barnett et al. would necessarily produce producing silicate and/or a salt and wherein the method produces and/or accumulates less than or equal to 30 ppm hydrogen fluoride because the process taught by Barnett et al. teaches the same components and reaction conditions claimed by Applicant (column 4, lines 10-40; column 5, lines 1-10).” Where the claimed and prior art products are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 21, Barnett et al. teaches operate the digestor under negative pressures for purposes of facilitating removal of the gaseous component which overlaps with wherein the ammonium fluoride and/or bifluoride is combined with the material comprising silicate at a maximum pressure of greater than or equal to 0.1 atm and less than or equal to 100 atm (column 5, lines 10-20).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GUINEVER S GREGORIO whose telephone number is (571)270-5827. The examiner can normally be reached M-W 11 am - 9 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Coris Fung can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GUINEVER S GREGORIO/Primary Examiner, Art Unit 1732 09/11/2026
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