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 .
Response to Amendment
This Office action is in response to the amendment filed on 01/29/2026. After entry of this amendment, claims 1-20 are currently pending in this Application.
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.
Claim(s) 1-3, 5, 8-11, 13, 15-17, and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 1751795 to Sun with evidence provided from U.S. Patent No. 4,490,526 to Amort et al. (hereinafter Amort) as applied to claim 1 and its dependent claims.
With respect to claim 1, Sun discloses a process during which a solution comprising a mixture of cyclohexane (i.e. claimed "hydrocarbon solvent"), chloropropylmethoxysilane (i.e. claimed "alkyl silane"), and SiO₂ is formed and dispersed using an ultrasonic oscillation (Sun, abstract, [0007], [0009], [0016]). Sun discloses the effect of ultrasonic technology is to make the coupling agent fully contact with the silanol groups on the surface of the silica (Sun, [0007]). Although the outcome of the teaching of Sun is the production of surface-modified silica, the intermediate product of Sun, is a stable solution.
It is noted that alkyl silane refers to a very broad class of silanes, and chloropropylmethoxysilane is a recognized in the field of chemistry to be an alkyl silane as, also, with evidence provided from Amort (Amort, col. 3, lines 27-34).
With respect to claims 2 and 3, as noted above, Sun discloses the use of cyclohexane which reads on the claimed “hydrocarbon solvent” and also, which is an alkane (Sun, abstract, [0009], [0016]).
With respect to claim 5, Sun discloses the use of ultrasonic mixture to mix the
components in the solution; because the reference does not disclose increase or decreasing the temperature during ultrasonic dispersion, the reference is seen to render performing this mixing at room temperature.
With respect to claim 8, it is noted that this is a product by process claim because the claim claims a stable solution, i.e. product, but depends from a process claim/limitation. Therefore, claim 8 is not limited to the process steps or process limitations such as the starting components and the ultrasonic step; MPEP 2113 states "[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 as 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).
Because an intermediate product produced by Sun is a stable solution, it is taken to render the claim obvious.
With respect to claim 9, Sun discloses a process during which a solution comprising a mixture of cyclohexane (i.e. claimed "hydrocarbon solvent"), chloropropylmethoxysilane (i.e. claimed "silane"), and SiO₂ is formed and dispersed using an ultrasonic oscillation (Sun, abstract, [0007], [0009], [0016]). Sun discloses the effect of ultrasonic technology is to make the coupling agent fully contact with the silanol groups on the surface of the silica (Sun, [0007]). Additionally, Sun teaches that as a result of the mixing/dispersing the components, a condensation reaction takes place which results in preparing amino-functionalized silica materials, i.e. surface-modified silica, which is obtained by vacuuming drying it to obtain the surface-modified silica (Sun, [0009]).
The reference teaches all the claimed components and step(s); thus, it is taken to read on the claimed process for producing a stable solution.
With respect to claims 10 and 11, as noted above, Sun discloses the use of cyclohexane which reads on the claimed “hydrocarbon solvent”, which is an alkane (Sun, abstract, [0009], [0016]).
With respect to claim 13, Sun discloses the use of ultrasonic mixture to mix the components in the solution; because the reference does not disclose increase or decreasing the temperature during ultrasonic dispersion, the reference is seen to render performing this mixing at room temperature.
With respect to claim 15, it is noted that this is a product by process claim because the claim claims a stable solution, i.e. product, but depends from a process claim/limitation. Therefore, claim 15 is not limited to the process steps or process limitations such as the starting components or the step of ultrasonically mixing the component; MPEP 2113 states "[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 as 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).
Because the end result of the process and teachings of Sun is the production of surface-modified silica, Sun is taken to render the claim obvious.
With respect to claim 16, Sun discloses a process during which a solution
comprising a mixture of cyclohexane, i.e. claimed “hydrocarbon solvent”, chloropropylmethoxysilane, and SiO₂ is formed and dispersed using an ultrasonic oscillation (Sun, abstract, [0007], [0009], [0010], [0016]). Sun discloses the effect of ultrasonic technology is to make the coupling agent fully contact with the silanol groups on the surface of the silica (Sun, [0007]). Additionally, Sun teaches that as a result of the mixing/dispersing the components, a condensation reaction takes place which results in preparing amino-functionalized silica materials, i.e. claimed “surface-modified silica”, which is obtained by vacuuming drying to obtain the final surface-modified silica (Sun, [0009]).
The reference teaches all the claimed components and step(s); thus, it is taken to read on the claimed process for producing a stable solution.
With respect to claim 17, Sun teaches the surface-modified silica is a silane modified silica, through the use of a silane compound (throughout Sun).
With respect to claims 19 and 20, as noted above, Sun discloses the use of cyclohexane, which is an alkane and reads on the claimed “solvent” (abstract, [0009], [0016]).
Claim(s) 1-5, 8-13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2006/0281828 to Nakayama et al. (hereinafter Nakayama) with evidence provided from U.S. Patent Application Publication No. 2007/0275499 to Corderman et al. (hereinafter Corderman) as applied to claim 1 and its dependent claims.
With respect to claim 1, Nakayama discloses hydrolysis and polymerization of alkoxysilane with an organic-modifying agent to form organically modified silica, which is dispersed by an ultrasonic treatment to form an organically modified silica dispersion (Nakamaya, abstract).
Nakayama teaches mixing a wet gel, which comprises silica, with an organic- modifying agents such as monochlorosilane, or triethoxy(3-butenyl)silane wherein the silane is dissolved in a solvent such as hexane, cyclohexane or more, using an ultrasonic treatment for preferably 5-120 minutes under a temperature of 10-40°C ([0032]-[0040]). The mixture/solution is taken to read on the claimed stable solution comprising silica in a hydrocarbon solvent.
The disclosed cyclohexane reads on the claimed “hydrocarbon solvent”. Also, monochlorosilane and triethoxysilanes, an example of which is triethoxy(3-butenyl)silane, are classified as an “alkyl” silane as evidenced by Corderman (Corderman, [0026]).
With respect to claims 2 and 3, as noted above, Nakayama teaches the use of a solvent such as hexane or cyclohexane, which are hydrocarbons (Nakayama, [0037]).
With respect to claim 4, as noted above, Nakayama teaches performing ultrasonication for 5-120 minutes (Nakayama, [0039]) which overlaps with the claimed range of about 1 to about 40 minutes.
MPEP 2144.05 states "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).
With respect to claim 5, as noted above, Nakayama teaches the process to take place under a temperature of 10-40°C (Nakayama, [0037]), which includes the room temperature as well.
With respect to claim 8, it is noted that this is a product by process claim because the claim claims a stable solution, i.e. product, but depends from a process claim. Therefore, the claim is not limited to the process steps or process limitations such as the starting components; MPEP 2113 states "[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 as 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).
Because the reference discloses an organically modified silica dispersion/mixture, as an intermediate product in the formation of a coating liquid, wherein this intermediate dispersion comprising silica in a hydrocarbon solvent with a silane, the reference is taken to render the claim obvious.
With respect to claim 9, Nakayama discloses hydrolysis and polymerization of alkoxysilane with an organic-modifying agent to form organically modified silica, which is dispersed by an ultrasonic treatment to form an organically modified silica dispersion; the reference continues to disclose adding a resin and an initiator to the dispersion to prepare a coating liquid applied onto a substrate which is then dried (Nakayama, abstract; [0053]-[0054]).
Nakayama teaches producing a wet gel of silica, then mixing the wet gel, which comprises silica, with an organic-modifying agents such as monochlorosilane, or triethoxy(3-butenyl)silane wherein the silane is dissolved in a solvent such as hexane, cyclohexane or more, using an ultrasonic treatment for preferably 5-120 minutes under a temperature of 10-40°C (Nakayama, [0032]-[0040]).
It is important to note that the claim comprises the open transitional phrase "comprising" which would allow the presence of any other components or steps within the claimed process. Thus, the fact that Nakayama teaches a process which, at some stage, involves mixing a wet gel of silica with a silane and a solvent under ultrasonic mixing to form a solution which is then mixed with other components to be applied to a substrate and dried, is taken to render claim 9 obvious.
With respect to claims 10 and 11, as noted above, the solvent taught in Nakayama is hexane or cyclohexane which is a hydrocarbon ([0037]).
With respect to claim 12, as noted above, the ultrasonication of the dispersion takes place for preferably 5-120 minutes ([0039]) which overlaps with the claimed range of about 1 to about 40 minutes.
MPEP 2144.05 states "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).
With respect to claim 13, as noted above, Nakayama teaches the process to take place under a temperature of 10-40°C (Nakayama, [0037]), which includes the room temperature as well.
With respect to claim 15, the finally dried coating, which had been applied onto a substrate, contains surface-modified silica; thus, the reference is seen to render claim 15 obvious.
It is important to note that this claim is a product by process claim because the claim claims a stable solution, i.e. product, but depends from a process claim.
Therefore, claim 15 is not limited to the process steps or process limitations such as the starting components; MPEP 2113 states "[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 as 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).
Claim(s) 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sun with evidence provided from Amort as applied to claim 1 above, and further in view of U.S. Patent Application Publication No. 2021/0139753 to Restorp et al. (hereinafter Restorp).
With respect to claim 6, Sun teaches a process during which a solution comprising a mixture of a hydrocarbon solvent, a silane, and SiO₂ is formed and dispersed using an ultrasonic oscillation as detailed out above (Sun, abstract, [0007], [0009], [0016]). Sun discloses chloropropylmethoxysilane which is an alkyl silane, but is silent to the use of any of the silanes recited in claim 6.
Restorp discloses preparing an adhesive composition comprising a few components one of which is modified colloidal silica wherein colloidal silica surface is modified with at least one surface-bound hydrophilic organosilane moiety (Restorp, abstract, [0118]). Restorp teaches organosilane-functionalized colloidal silica is formed from a reaction between one or more organosilane reactants and one or more silanol groups on the silica surface (Restorp, [0120]), and discloses the organic moiety in the organosilane reactant can be chloropropyl (Restorp, [0136] and [0124]-[0136]). Restorp, additionally, discloses the use of organosilane reactants such as octyl triethoxysialne and provides more exemplary compounds as well (Restorp, [0141]).
Thus, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified Sun with evidence provided from Amort with the teachings of Restorp in order to substitute chloropropylmethyoxysilane with another organosilane such as one of those disclosed by Restorp such as octyl triethoxysilane, which is recited in claim 6, motivated by the fact that based on the teachings of Restorp, octyl triethoxysilane is recognized as one of the known silanes used the surface-modification of colloidal silica, and the fact that Restorp, also, recognizes the use of an organosilane containing chloropropyl organic moiety, which is the moiety taught by the primary reference. Thus, the substitution of chloropropylmethoxysilane of Sun with octyl triethoxysilane of Restorp is well within the scope of a skilled artisan.
With respect to claim 7, Sun teaches a process during which a solution comprising a mixture of a hydrocarbon solvent, a silane, and SiO₂ is formed and dispersed using an ultrasonic oscillation as detailed out above (Sun, abstract, [0007], [0009], [0016]). Sun discloses chloropropylmethoxysilane, but is silent to the use of a triethoxysilane as recited in claim 7.
Restorp discloses preparing an adhesive composition comprising a few components one of which is modified colloidal silica wherein colloidal silica surface is modified with at least one surface-bound hydrophilic organosilane moiety (Restorp, abstract, [0118]). Restorp teaches organosilane-functionalized colloidal silica is formed from a reaction between one or more organosilane reactants and one or more silanol groups on the silica surface (Restorp, [0120]), and discloses the organic moiety in the organosilane reactant can be chloropropyl (Restorp, [0136] and [0124]-[0136]). Restorp, additionally, discloses the use of organosilane reactants such as octyl triethoxysilane, methyl triethoxysilane and a few more (Restorp, [0141]).
Thus, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified Sun with the teachings of Restorp in order to substitute chloropropylmethyoxysilane with another organosilane such as a triethoxysilane such as octyl triethoxysilane or methyl triethoxysilane as those taught by Restorp motivated by the fact that based on the teachings of Restorp, octyl triethoxysilane or methyl triethoxysilane are recognized as some of the known silanes used the surface-modification of colloidal silica, and the fact that Restorp, also, recognizes the use of an organosilane containing chloropropyl organic moiety. Thus, the substitution of chloropropylmethoxysilane of Sun with a triethoxysilane is well within the scope of a skilled artisan.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sun as applied to claim 9 above, and further in view of U.S. Patent Application Publication No. 2021/0139753 to Restorp et al. (hereinafter Restorp).
Sun teaches a process during which a solution comprising a mixture of a hydrocarbon solvent, a silane, and SiO₂ is formed and dispersed using an ultrasonic oscillation as detailed out above (Sun, abstract, [0007], [0009], [0016]). Additionally,
Sun teaches that as a result of the mixing/dispersing the components, a condensation reaction takes place which results in preparing amino-functionalized silica materials, i.e. surface-modified silica, which is obtained by vacuuming drying it to obtain the surface-modified silica, as again detailed out above. Sun discloses chloropropylmethoxysilane, but is silent to the use of any of the specifically claimed silanes such as those claimed in claim 14.
Restorp discloses preparing an adhesive composition comprising a few components one of which is modified colloidal silica wherein colloidal silica surface is modified with at least one surface-bound hydrophilic organosilane moiety (Restorp, abstract, [0118]). Restorp teaches organosilane-functionalized colloidal silica is formed from a reaction between one or more organosilane reactants and one or more silanol groups on the silica surface (Restorp, [0120]), and discloses the organic moiety in the organosilane reactant can be chloropropyl (Restorp, [0136] and [0124]-[0136]). Restorp, additionally, discloses the use of organosilane reactants such as octyl triethoxysilane or methyl triethoxysialne and provides more exemplary compounds as well (Restorp, [0141]).
Thus, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified Sun with the teachings of Restorp in order to substitute chloropropylmethyoxysilane with another organosilane such as one of those discloses by Restorp such as , octyl triethoxysilane or methyl triethoxysilane motivated by the fact that based on the teachings of Restorp, octyl triethoxysilane or methyl triethoxysilane are recognized as some of the known silanes used the surface-modification of colloidal silica, and the fact that Restorp, also, recognizes the use of an organosilane containing chloropropyl organic moiety. Thus, the substitution of chloropropylmethoxysilane of Sun with octyl triethoxysilane is well within the scope of a skilled artisan.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sun as applied to claim 16 above, and further in view of U.S. Patent Application Publication No. 2021/0139753 to Restorp et al. (hereinafter Restorp).
Sun teaches a process during which a solution comprising a mixture of a hydrocarbon solvent, a silane, and SiO₂ is formed and dispersed using an ultrasonic oscillation as detailed out above (Sun, abstract, [0007], [0009], [0016]). Additionally,
Sun teaches that as a result of the mixing/dispersing the components, a condensation reaction takes place which results in preparing amino-functionalized silica materials, i.e. surface-modified silica, which is obtained by vacuuming drying it to obtain the surface-modified silica, as again detailed out above. Sun discloses chloropropylmethoxysilane, but is silent to the use of another silane such as those claimed in claim 18.
Restorp discloses preparing an adhesive composition comprising a few components one of which is modified colloidal silica wherein colloidal silica surface is modified with at least one surface-bound hydrophilic organosilane moiety (Restorp, abstract, [0118]). Restorp teaches organosilane-functionalized colloidal silica is formed from a reaction between one or more organosilane reactants and one or more silanol groups on the silica surface (Restorp, [0120]), and discloses the organic moiety in the organosilane reactant can be chloropropyl (Restorp, [0136] and [0124]-[0136]). Restorp, additionally, discloses the use of organosilane reactants such as 3-glycidoxypropyl methyldiethoxysilane and provides more exemplary compounds as well (Restorp, [0141]).
Thus, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified Sun with the teachings of Restorp in order to substitute chloropropylmethyoxysilane with another organosilane such as one of those discloses by Restorp such as octyl triethoxysilane or methyl triethoxysilane motivated by the fact that based on the teachings of Restorp, octyl triethoxysilane or methyl triethoxysilane are recognized as some of the known silanes used the surface-modification of colloidal silica, and the fact that Restorp, also, recognizes the use of an organosilane containing chloropropyl organic moiety. Thus, the substitution of chloropropylmethoxysilane of Sun with octyl triethoxysilane is well within the scope of a skilled artisan.
Response to Arguments
Applicant's arguments filed 01/29/2026 have been fully considered but they are not persuasive.
Applicant has asserted independent claim 1 has been amended with limitations inherent to the silanes of claims 6, 14, and 18; as such, Applicant has concluded the rejection of any claim, including independent claim 1, over Sun or Nakayama, alone is traversed (Remarks, page 5). Applicant has then asserted that the rejection of any dependent claim over a combination of references involving Restorp is traversed because Restorp discloses hydrophilic silanes for water compatibility, but that claim 6 claims hydrophobic or coupling silanes, such as alkyl, mercapto, polysulfide, for rubber compatibility (Remarks, page 5).
The Examiner, respectfully, submits amended claim 1 recites, in part, “ultrasonically mixing silica and a hydrophobic silane or a coupling silane selected from alkyl silanes, mercapto silanes, or polysulfide silanes in the hydrocarbon solvent”. The disclosures on the use of chloropropylmethoxy silane, i.e. an alkyl silane, by Sun and, at least, triethoxy(3-butenyl)silane, i.e. alkyl silane, by Nakayama read on the claimed limitation of the newly amended silane of independent claim 1. The recitation of, at least, “alkyl silane” was not in the previous language of claims 6, 14 or 18, and it is a broader recitation compared to any of the specific compounds/structures claimed in any of said dependent claims. Therefore, the Examiner disagrees that claim 1 has been amended with the limitation inherent to the silanes of claims 6, 14, and 18.
Moreover, the Examiner, respectfully, submits the amendment of claim 1 does not require the presence of a hydrophobic silane because the claim recites, in part, “a hydrophobic silane or a coupling silane selected from alkyl silanes, mercapto silans, or polysulfide silanes”. Furthermore, should Applicant amend claim 1 to include only “hydrophobic silanes”, and continue to assert that the octyl triethoxysilane or methyl triethoxysilane, or any other silanes taught by Restorp which may read on any of the claimed structures as claimed in claim 6 are not hydrophobic silanes, or if any of the silanes recited in claim 6 would read on hydrophilic silane, claim 6 may be rejected over 112(d) for not further limiting amended claim 1. Claim 1, as currently amended, does not require the silane to be “hydrophobic”.
Conclusion
THIS ACTION IS MADE FINAL. 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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/PEGAH PARVINI/Primary Examiner, Art Unit 1731