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 .
Claim Rejections - 35 USC § 102
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.
Claims 1-4, 6, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Unehara et al. (US 7,070,748).
Regarding claim 1, Unehara et al. teaches non-porous spherical silica having a mean particle diameter of 0.1-20 µm (Col. 4, lines 5-8; Col. 5, lines 30-32), and teaches that “[t]he mean particle diameter means a median diameter” determined from a particle diameter distribution measured by a laser diffraction scattering method (Col. 7, lines 25-31). The mean particle diameter of Unehara et al. therefore corresponds to the median diameter d50 recited in claim 1 and is obtained in the same manner as the median diameter d50 of the instant claims (¶35 of the instant PG-PUB). The disclosed range of 0.1-20 µm encompasses the range of 0.5 µm to 20 µm recited in claim 1.
Unehara et al. further teaches that the specific surface area SA of a true spherical body of silica having no pores, a diameter of d (µm) and a true specific gravity of 2.2 is expressed as SA = 2.73/d (Col. 7, lines 32-48, Formulas (II) and (III)), and teaches that its non-porous spherical silica “has the specific surface area, as determined by BET method, of 1.0-1.5 times the theoretical value, which means that it has a high sphericity and superior superficial smoothness” (Col. 6, lines 33-37; see also Col. 7, lines 61-64, “Specific surface area of the non-porous spherical silica of the present invention is 1.5 times the theoretical value or less”). The specific surface area is measured by the BET method (Col. 6, lines 33-35; Col. 7, lines 65-67), as it is in the instant claims (¶39 of the instant PG-PUB). A specific surface area of from 1.0 to 1.5 times SA = 2.73/d corresponds to a product of the specific surface area and the median diameter of from 2.73 µm·m²/g to 4.095 µm·m²/g (calculated by Examiner; 1.0 × 2.73 = 2.73 and 1.5 × 2.73 = 4.095), which falls entirely within the range of 2.7 µm·m²/g to 5.0 µm·m²/g recited in claim 1.
Unehara et al. exemplifies five such spherical silicas in Table 1 (Cols. 17-18): Example 1, having a mean particle diameter of 1.3 µm and a specific surface area of 2.7 m²/g; Example 2, 2.7 µm and 1.5 m²/g; Example 3, 4.0 µm and 0.69 m²/g; Example 4, 9.0 µm and 0.33 m²/g; and Example 5, 9.1 µm and 0.34 m²/g. The corresponding products of the specific surface area and the median diameter are 3.51, 4.05, 2.76, 2.97 and 3.09 µm·m²/g, respectively (calculated by Examiner; 1.3 × 2.7 = 3.51, 2.7 × 1.5 = 4.05, 4.0 × 0.69 = 2.76, 9.0 × 0.33 = 2.97 and 9.1 × 0.34 = 3.09). Each of these five products falls within the range of 2.7 µm·m²/g to 5.0 µm·m²/g recited in claim 1, and each of the five median diameters falls within the range of 0.5 µm to 20 µm recited in claim 1. Table 1 reports the ratio of the observed specific surface area to the theoretical value for these same five examples as 1.3, 1.5, 1.0, 1.1 and 1.1, respectively, which is consistent with the products calculated above.
Regarding claims 2 and 3, Unehara et al. does not explicitly teach that the spherical silica powder has a dielectric loss tangent of 0.0020 or less at a frequency of 1 GHz, or that a kneaded product containing the spherical silica powder has a viscosity of 5000 mPa·s or less measured by the method recited in claim 3. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., a dielectric loss tangent of 0.0020 or less at 1 GHz and a kneaded product viscosity of 5000 mPa·s or less, would naturally arise and be achieved by a composition with all the claimed ingredients. “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 4, Unehara et al. teaches that on the surface of the silica particles obtained by the wet process “a number of silanol groups (Si—OH) are present, which are combined with atmospheric water to form the above-mentioned bonding water,” that “[t]he silanol groups can be removed by calcinating silica obtained by Step-i at a temperature of 1,000° C. or higher,” that “[t]he calcinating temperature is thus preferably 1,100° C. or higher,” and that “in order to reduce the quantity of silanol on the surface to the extremity, the calcinating process is preferably carried out at a temperature of 1,150° C. or higher” (Col. 13, lines 4-18). A silanol group that is combined with adsorbed water corresponds to the bonded silanol group recited in claim 4 (see ¶51 of the instant PG-PUB, which defines the bonded silanol group as “a silanol (Si—OH) group bonded to water adsorbed to the silica particles, or bonded to silanol on the silica surface”). Example 1 of Unehara et al. calcinates the disintegrated spherical silica gel in a quartz beaker at 1,150° C. for 6 hours (Col. 14, lines 55-60).
Regarding claim 6, Unehara et al. teaches a process for producing the non-porous spherical silica comprising a step of emulsification comprising preparing a water-in-oil type emulsion in which an aqueous solution of alkali silicate is dispersed in the form of fine particles as a dispersed phase; a step of coagulation comprising mixing that emulsion with an aqueous solution of mineral acid and thereby forming spherical silica gel; steps of extraction and washing; a step of drying; a step of disintegration with a screen; and a step of calcinating the disintegrated spherical silica gel (claim 1; Col. 4, lines 16-42). In Example 1, JIS No. 3 water glass is diluted with water to a SiO₂ content of 15% and emulsified into an isoparaffinic hydrocarbon oil at 2,980 rpm, the emulsion is added to 28% aqueous sulfuric acid to coagulate the silica gel, and the silica gel particles are washed, dried at 120° C. for 20 hours, disintegrated through a 33 µm polyester screen and calcinated at 1,150° C. for 6 hours (Col. 14, lines 19-60). Obtaining the raw material of the spherical silica powder by using an aqueous alkali silicate solution as the silica source and gelling that liquid with a mineral acid is forming a spherical silica precursor by a wet method as that term is defined at ¶63 of the instant PG-PUB, and an emulsion gelling method is expressly identified as a wet method at ¶64 of the instant PG-PUB. Because the process of Unehara et al. yields the spherical silica powder of claim 1 as set forth above, it is a method for producing the spherical silica powder according to claim 1.
Regarding claim 9, Unehara et al. teaches a sealing resin composition containing the non-porous spherical silica (Col. 5, lines 22-25), and teaches that the silica “hardly lowers fluidity of a liquid sealing material when it is blended therewith at the filling rate based on the liquid sealing material in the range of 40-90% by weight” (Col. 3, lines 40-45). A filling rate of from 40 to 90% by weight falls entirely within the range of 5% by mass to 90% by mass recited in claim 9. Unehara et al. further blends the silica with Epikote 815 liquid epoxy resin at silica blending rates of 65% by weight and 70% by weight (Col. 17, lines 6-14).
Claim Rejections - 35 USC § 103
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.
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Unehara et al. (US 7,070,748) as applied to claim 1 above, and further in view of Shiobara et al. (JP 2008-162849). For convenience, the citations below for Shiobara et al. are taken from an English language machine translation included herewith.
Regarding claim 5, Unehara et al. teaches the spherical silica powder of claim 1 as set forth above. Unehara et al. does not teach that the spherical silica powder comprises 30 ppm to 1500 ppm of Ti. To the contrary, Unehara et al. is concerned with a high purity product and controls the content of metals other than alkali metals and silicon in the alkali silicate solution to 0.1% by weight or less (Col. 4, lines 55-60). However, Shiobara et al. teaches high purity cristobalite particles in which a metal selected from aluminum, magnesium and titanium and/or an oxide thereof is present on a part or all of the surface in an amount of 200 to 2,000 ppm in terms of metal (Page 1, line 60 to Page 2, line 2), particularly 500 to 2,000 ppm (Page 4, lines 1-5). The starting material is spherical amorphous silica obtained by melt spheronization in a flame (Page 2, lines 40-44) having an average particle size of 0.3 to 30 µm, particularly about 5 to 20 µm, expressed as a mass average value D50, that is, a median diameter at which the cumulative mass is 50% (Page 2, lines 46-56). The surface treatment is carried out with an organometallic compound of aluminum, magnesium or titanium, or a sol or slurry of such a compound, in an amount of 100 ppm or more, desirably 300 to 3,000 ppm, in terms of metal element mass with respect to the amorphous silica, after which the treated silica is heat treated at 1,000 to 1,600 °C, preferably 1,200 to 1,500 °C (Page 3, lines 9-14, 35-40 and 42-44). Example 6 employs a titanium compound, and titanium element was confirmed on the surface of the particles obtained (Page 4, lines 57-60; Page 5, lines 10-12). Shiobara et al. teaches that the particles obtained are preferably spherical (Page 2, lines 4-5; Page 4, lines 16-21) and are used as a filler for a resin composition for encapsulating a semiconductor element (Page 4, lines 16-21 and 28-31).
The range of 200 to 2,000 ppm taught by Shiobara et al. overlaps the range of 30 ppm to 1500 ppm recited in claim 5 over the interval of from 200 ppm to 1500 ppm. In the case where the claimed ranges “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). See MPEP 2144.05. It is further noted that claim 5 requires only that the spherical silica powder comprise 30 ppm to 1500 ppm of Ti; it does not require that the silica be amorphous, and cristobalite is a form of silica.
Unehara et al. and Shiobara et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of spherical silica powders of micrometer scale used as fillers in resin compositions for encapsulating semiconductor elements. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add titanium in an amount of 30 ppm to 1500 ppm, as taught by Shiobara et al., to the spherical silica, as taught by Unehara et al., and would have been motivated to do so in order to promote the transformation of the spherical silica during the high temperature treatment that Unehara et al. already performs at 1,100° C. to 1,150° C. or higher (Col. 13, lines 12-18), and thereby to improve productivity. Shiobara et al. teaches that where the treatment amount is less than 100 ppm “the progress of cristobalite progresses slowly, and the productivity deteriorates” (Page 3, lines 37-39), and that raw silicas fired under the same conditions but without the metal surface treatment gave conversion rates of only 12% and 10% (Page 5, lines 14-17).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Unehara et al. (US 7,070,748) as applied to claim 6 above, as further evidenced by Deckner et al. (US 8,221,725).
Regarding claim 7, Unehara et al. teaches the method for producing the spherical silica powder of claim 6 as set forth above, including the formation of a spherical silica precursor in the form of a spherical silica gel by coagulating a water-in-oil emulsion of an aqueous alkali silicate solution with a mineral acid, and the drying and disintegration of that spherical silica gel prior to calcinating (Col. 14, lines 32-60). Unehara et al. does not explicitly teach that, in accordance with JIS K0067:1992, 1 g of the silica precursor heated and dried at 850° C. for 0.5 hours exhibits a mass loss of 5.0% by mass to 15.0% by mass. Applicant states at ¶67 of the instant PG-PUB that “[t]he ignition loss is a sum of a mass of adhering water adhered to the silica precursor and a mass of water generated from condensation of the silanol group contained in the silica precursor.” Unehara et al. teaches that on the surface of silica particles obtained by the wet process such as Step-1 “a number of silanol groups (Si—OH) are present, which are combined with atmospheric water to form the above-mentioned bonding water,” and that those silanol groups are removed only by calcinating at a temperature of 1,000° C. or higher (Col. 13, lines 4-9). The spherical silica gel of Unehara et al. at the conclusion of the disintegration step, having been dried at only 120° C. for 20 hours and not yet calcinated (Col. 14, lines 55-60), therefore contains both adhering water and condensable silanol, which are the two components of the ignition loss as applicant has defined it.
Unehara et al. further recognizes the water content of the silica gel before calcinating as a variable that affects the result obtained, teaching that “[a]lthough water content in the silica gel before the calcinating is not particularly limited, it is preferable to calcinate silica gel whose water content has been reduced as much as possible, in order to prevent coagulation among the particles at the time of calcinating” (Col. 13, lines 33-37). Therefore, the water content of the silica gel before calcinating, which is the mass lost on ignition recited in claim 7, is a result-effective variable. It is well known in the art to optimize result effective variables, such as water content. MPEP § 2144.05. “[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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05 II.A.
A spherical silica gel prepared by gelling an aqueous alkali silicate solution and dried at a temperature of from about 100° C. to about 300° C. without being calcinated retains from about 5% by mass to about 15% by mass of adhering water and condensable silanol, which is driven off on ignition at 850° C. This noticed fact is further evidenced by Deckner et al. (US 8,221,725), which teaches that the total bound and free water of a silica may be determined by totaling a loss on drying, performed first at 105° C. for two hours, and a loss on ignition, performed on the dried sample at 1,000° C. for one hour, and which reports that a wet process precipitated silica, Z-119, has a loss on drying of 6.1% and a loss on ignition of 5.1%, whereas a fused silica that has already been subjected to a high temperature treatment, TECO SIL 44CSS, has a loss on drying of only 0.1% and a loss on ignition of only 2.2% (Col. 4, lines 41-53).
At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to dry the spherical silica gel of Unehara et al. to an ignition loss of 5.0% by mass to 15.0% by mass, and would have been motivated to do so in order to reduce the water content sufficiently to prevent coagulation among the particles at the time of calcinating, as taught by Unehara et al. (Col. 13, lines 33-37), while retaining silanol groups whose condensation during firing densifies the particle. Additionally, there is no evidence on the record to show that the spherical silica gel of Unehara et al., dried at 120° C. for 20 hours, does not possess an ignition loss within the range recited in claim 7.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Unehara et al. (US 7,070,748) as applied to claim 6 above, and further in view of Kusaka et al. (JP 2000-272916). For convenience, the citations below for Kusaka et al. are taken from an English language machine translation included herewith.
Regarding claim 8, Unehara et al. does not teach the pore volume of the spherical silica gel so formed. However, Kusaka et al. teaches a method for producing spherical silica gel in which an alkali silicate solution and an acid solution are separately and continuously supplied to the rotary disk portion of a rotary disk type spraying device to prepare a mixed solution which is dispersed as droplets and gelled during the dispersion (¶6), and teaches that by this method spherical silica gel having a pore volume of 0.01 to 3.0 ml/g, a specific surface area of 1 to 1000 m²/g and a compressive strength of 1 to 10 kgf/mm2 is suitably produced (¶28). Kusaka et al. exemplifies spherical silica gels having pore volumes of 1.2 ml/g (¶34), 0.7 ml/g (¶37), 0.3 ml/g (¶39) and 0.9 ml/g (¶43), each of which falls within the range of 0.3 ml/g to 2.2 ml/g recited in claim 8. The disclosed range of 0.01 to 3.0 ml/g encompasses the claimed range. In the case where the claimed ranges “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). See MPEP 2144.05.
Unehara et al. and Kusaka et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of producing spherical silica gel particles by gelling an aqueous alkali silicate solution with an acid. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to form the spherical silica gel of Unehara et al. with a pore volume of 0.3 ml/g to 2.2 ml/g, as taught by Kusaka et al., and would have been motivated to do so because Kusaka et al. teaches that the spherical silica gel after gelation “is a hydrogel because it does not involve solvent evaporation, and can be subjected to an aging treatment at an appropriate stage of the subsequent step to obtain any desired pore volume” (¶9), and that the spherical silica gel so obtained is solid, has no depressions or cracks, has high particle strength and has a sharp particle size distribution (¶5, 46). Unehara et al. is concerned with obtaining a spherical silica gel free from depressions and irregularities in order to obtain superior superficial smoothness after calcinating (Col. 3, lines 8-13).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Unehara et al. (US 7,070,748) as applied to claim 1 above, and further in view of Deckner et al. (US 8,221,725).
Regarding claim 10, Unehara et al. teaches the spherical silica powder of claim 1 as set forth above. Unehara et al. does not teach a slurry composition comprising 1% by mass to 50% by mass of the spherical silica powder. However, Deckner et al. teaches compositions comprising spherical fused silica, that is, compositions “wherein at least 25% of the fused silica particles are spherical” (Col. 9, lines 33-35), a spherical particle being “any particle where the whole particle is mostly rounded or elliptical in shape” (Col. 9, lines 19-21). The fused silica has a median particle size ranging “from about 1 micron to about 20 microns, from about 1 micron to about 15 microns, from about 2 microns to about 12 microns, from about 3 microns to about 10 microns, as measured by Malvern Laser Light Scattering Particle Sizing” (Col. 10, lines 36-41) and a BET surface area ranging “from about 1 m²/g to about 50 m²/g, from about 2 m²/g to about 20 m²/g, from about 2 m²/g to about 9 m²/g, and from about 2 m²/g to about 5 m²/g” (Col. 4, lines 26-31). Deckner et al. teaches that the amount of fused silica used “may be from about 1%, 2%, 5%, 7%, 10%, 12%, 15%, 20%, 25%, 30%, 35%, 40%, 45%, 50% to about 5%, 7%, 10%, 12%, 15%, 20%, 25%, 30%, 35%, 40%, 45%, 50%, 55%, 60%, 65%, or 70%, or any combination thereof” (Col. 13, lines 31-35), and separately that the amount of fused silica may be from about 20% to about 50% by weight of the composition (Col. 9, lines 53-56). Deckner et al. further teaches that “[d]ue to its relatively low water absorption, the fused silica may be made into a slurry during processing, ultimately allowing quicker processing and faster batch times,” that “fused silica slurries can be made in which water comprises less than about 30% in some embodiments, or less than 40% in some embodiments,” and that a composition may be made “comprising the addition of a fused silica slurry” which “may be flowable or pumpable” (Col. 7, lines 6-19 and 32-34). The disclosed amounts of from about 1% to about 70% by weight, and of from about 20% to about 50% by weight, encompass and overlap the range of 1% by mass to 50% by mass recited in claim 10. In the case where the claimed ranges “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). See MPEP 2144.05.
Unehara et al. and Deckner et al. are analogous art because Deckner et al. is reasonably pertinent to the particular problem with which the inventor was concerned, namely that of providing a dense, non-porous spherical silica of micrometer scale having a low specific surface area and a low content of surface silanol groups and of dispersing that silica in a liquid medium. Deckner et al. is directed to the same material and to that same problem, teaching that its fused silica has “its low BET specific surface area, low porosity, and low number of surface hydroxyl groups” (Col. 5, lines 50-53), a true or intrinsic density of from about 2.1 g/cm³ to 2.2 g/cm³ and a specific gravity of from about 2.1 to 2.2 (Col. 6, lines 39-46), and comparatively low water and oil absorption, “measurements that correlate well with BET specific surface area” (Col. 6, lines 50-52), and teaching that this material is formulated as a flowable, pumpable slurry. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to formulate the non-porous spherical silica of Unehara et al. as a slurry composition comprising 1% by mass to 50% by mass of the silica, as taught by Deckner et al., and would have been motivated to do so because Deckner et al. teaches that a silica having low porosity and low water absorption may be made into a slurry during processing, “ultimately allowing quicker processing and faster batch times” (Col. 7, lines 6-9).
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.
Claims1 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of copending Application No. 19/411,472 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, claim 1 of the reference application teaches spherical silica, having a median diameter d50 of 0.5 μm to 20 μm, a product A×d50 of a BET specific surface area A (m2/g) and the median diameter d50 (μm) being 2.7 (μm·m2/g) to 5.0 (μm·m2/g).
Regarding claim 5, claim 3 of the reference application teaches spherical silica having a Ti content of 30 ppm by mass to 1500 ppm by mass.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims1 and 3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of copending Application No. 18/938,403 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, claim 1 of the reference application teaches spherical silica, having a median diameter d50 of 0.5 μm to 20 μm, a product A×d50 of a BET specific surface area A (m2/g) and the median diameter d50 (μm) being 2.7 (μm·m2/g) to 5.0 (μm·m2/g).
Regarding claim 3, claim 3 of the reference application teaches that the spherical silica particles have a viscosity measured by the following measurement method of 5,000 mPa·s or less, the measurement method is that the silica particle dispersion is dried to obtain powdery spherical silica particles, 8 parts by mass of the powdery spherical silica particles obtained and 6 parts by mass of boiled linseed oil are mixed and kneaded at 2000 rpm for 3 minutes to obtain a kneaded product, and the kneaded product is measured for 30 seconds at a shear rate of 1 s−1 using a rotary rheometer to determine the viscosity at 30 seconds.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
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