DETAILED ACTION
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 42 – 52, drawn to a polyimide wet-gel, classified in C08J3/075.
II. Claims 53 – 56, drawn to a nanoporous gel material, classified in C08J9/28.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful to make another final product, e.g. a nanoporous gel having a non-fibrillar morphology. Additionally the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Scott Breining on May 7, 2026 a provisional election was made without traverse to prosecute the invention of Group II, Claims 53 – 56. Affirmation of this election must be made by applicant in replying to this Office action. Claims 42 – 52 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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 53 – 56 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 53 recites a “corresponding” wet-gel but does not set forth how this wet-gel relates to the claimed nanoporous gel. Dependent Claims 54 – 56 do not remedy this deficiency and also therefore rejected under this statute. For the purposes of examination, Claim 53 will be interpreted as setting forth the nanoporous gel material is formed by drying a polyimide wet-gel which comprises, prior to drying, water in a molar ratio of water to polyimide of 5 or greater.
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.
Claims 53 – 56 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2015/0141544 to Meador et al. (hereinafter Meador).
Regarding Claims 53, 54, and 56. Meador teaches a polyimide aerogel comprising pores with a size distribution peaking at 14 to 30 nanometers [0137], corresponding to a nanoporous gel material comprising a pore structure. The polyimide aerogel may resemble polymer fibers tangled together and a more open porosity around the fiber strands ([0092] and [0138]; Figures 5 and 26), corresponding to fibrillar morphology and an array of pores. The polyamide aerogel is formed by drying a polyimide wet-gel [0046].
Meador is silent regarding the amount of water is said wet-gel relative to the polyimide therein. However, the quantity of water in the wet-gel which is dried to from the polymide aerogel is a product-by-process limitation that is not further limiting in as so far as the structure of the product is concerned. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695,698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113) Once a product appearing substantially identical is found, the burden shifts to the applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1993) (MPEP 2113)
In the instant case, both the claimed polyimide aerogel and the polyimide aerogel are polyimide aerogels having all of the instantly claimed features, namely they are nanoporous polyimide aerogels having a fibrillar morphology and an array of pores. Both are prepared by drying polymide wet-gels, such that water is removed to form the aerogels. Moreover, [0072] and [0185] of the PG-PUB of the instant application provide evidence the claimed quantity of water prior to drying does not have an impact on the properties or structure of the obtained aerogels, indicating the disclosed carbon aerogels have “similar properties to carbonized aerogels in which the corresponding wet-gels are prepared by the conventional dehydration process” and that the amount of water did not “have an impact on the structure of the carbon aerogel”. For these reasons, it is the Office’s position that the claimed polyimide aerogel and the polyimide aerogel of Meador are reasonably considered to be substantially identical.
Regarding Claim 55. Meador teaches the nanoporous aerogel of Claim 55 may be heated at 400°C for 24 hours [0058]. [0157] of the PG-PUB of the instant application sets forth heating at least 400°C results in carbonization of the aerogel. Thus, it would be reasonably expected that heating the nanoporous aerogel as taught by Meador results in a carbon aerogel derived from a polyimide aerogel by carbonization.
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references also pertain to polyimide aerogels.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
