DETAILED ACTION
Claim(s) 1-9, 11, 13-15 and 18 were rejected in Office Action mailed on 06/10/2026.
Applicant filed a response, amended claim(s) 1, withdrew claim(s) 16-17 and 20 on 09/10/2026.
Claim(s) 1-20 are pending, and claim(s) 16-17 and 20 are withdrawn.
Claims 1-9, 11, 13-15 and 18 are rejected.
Claims 10, 12 and 19 are objected to.
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 § 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.
Claim 6 is 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 6, recites “wherein the crystalline silica comprises a crystalline form selected from the group consisting of quartz, cristobalite, tridymite and combinations thereof”. However, it is unclear how claim 6 further narrows claim 1, which claim 6 depends on, given that claim 1 recites “wherein said additive acts to improve dissolution of said crystalline silica, including that of cristobalite, comprised in said plant ash”.
The examiner interprets that claim 6 refers to wherein the crystalline silica comprises cristobalite, and optionally further comprises a crystalline form selected from the group consisting of quartz, tridymite and combinations thereof.
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.
Claim(s) 1-7, 9, 11, 13 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al., EP 3770115A1 (Li) in view of Anand et al., IN 202021056035A (Anand) (both provided in IDS received on 06/17/2024).
Regarding claims 1-6, 9, 11, 13 and 18, Li teaches a method for preparing an aqueous solution containing a silicate, a rice hull ash (reading upon a plant ash) and an inorganic alkali are mixed in water and reacted to give a slurry, the slurry is subjected to a solid-liquid separation to give the aqueous solution containing the silicate (reading upon results in formation of the silicate) (Li, [0005]; [0010]);
the rice hull ash is produced by rice hull upon entering a boiler combustion zone (Li, [0057]);
as an example, the inorganic alkali is sodium hydroxide (reading upon a base), the water-soluble silicate is sodium silicate (Li, [0012]);
the rice hull ash and an aqueous solution of the aqueous solution of the inorganic alkali can be mixed and reacted (Li, [0011]), wherein the aqueous solvent of the aqueous solution of the inorganic alkali reads upon a dispersing medium.
Li further teaches in Examples 1-9, in preparation of white carbon black (i.e., silica from the silicate), the water glass mother liquor (i.e., sodium silicate) and sodium sulfate solution (reading upon an additive) and water were mixed before acidifying with sulfuric acid to produce silica (Li, [0114] and [0115]). It therefore would have been obvious to a person of ordinary skill in the art to varying the order of addition of sodium sulfate solution and add the sodium sulfate solution (reading upon an additive, wherein said additive is a salt comprising a sulfur oxyanion) along with rice hull ash and the inorganic alkali when producing the silicate prior acidifying to produce silica, and yield expected results.
Further, it has been held that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, see MPEP 2144.04, section C, and also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), and In re Gibson, 39 F.2d 975, 5USPQ 230 (CCPA 1930).
Further regarding claim 1, Li does not explicitly disclose wherein said plant ash comprises crystalline silica; or said crystalline silica, including that of cristobalite, comprised in said plant ash.
With respect to the difference, Anand teaches synthesis of silica from rice husk ash (Anand, page 2, 1st paragraph). Anand specifically teaches the characteristics of the rice husk ash are dependent on composition of the rice husks, burning temperature, burning time and type of boiler (Anand, page 2, bottom paragraph); a rice husk ash has cristobalite in a range of 1 to 50 wt%, quartz in a range of 1 to 10 wt.% and amorphous silica in a range of 50 to 98 wt.% (Anana, page 3, 1st paragraph).
Anand is analogous art as Anand is drawn to synthesis of silica from rice husk ash.
In light of the disclosure of Anand, it therefore would have been obvious to a person of ordinary skill in the art to use rice husk ash of varying characteristics in the preparing of silicate and silica of Li, including a rice husk ash has cristobalite in a range of 1 to 50 wt%, quartz in a range of 1 to 10 wt.% and amorphous silica in a range of 50 to 98 wt.%, dependent on composition of the rice husks, burning temperature, burning time and type of boiler, and thereby arrive at the claimed invention.
Further regarding claim 1, given that Li in view of Anand teaches an identical or substantially identical process with identical or substantially identical materials, i.e., preparing an aqueous solution containing a silicate, using a rice hull ash, sodium hydroxide, with sodium sulfate added long with the rice hull ash and the sodium hydroxide, with those of the presently claimed (claim 1), therefore, it is clear that the sodium sulfate of Li in view of Anand would necessarily and inherently meet the claimed limitation of “wherein said additive acts to improve dissolution of said crystalline silica, including that of cristobalite, comprised in said plant ash”.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or 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 7, as applied to claim 1, Li in view of Anand teaches a rice husk ash has cristobalite in a range of 1 to 50 wt%, quartz in a range of 1 to 10 wt.% (wherein cristobalite and quartz read upon crystalline silica; and the crystalline silica ranges from 2 to 50 wt.% of the total SiO2 content (i.e., (1+1)/(1+1+98)=2%; 50/(50+50)=50%);) and amorphous silica in a range of 50 to 98 wt.%, which overlaps with the presently claimed range.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Anand as applied to claim 1 above, and further in view of Theunissen et al., EP 0363197A2 (Theunissen) (provided in IDS received on 06/17/2024).
Regarding claim 8, Li in view of Anand does not explicitly disclose wherein step (a) is carried out at a reaction temperature from 120 to 250 °C.
With respect to the difference, Theunissen teaches hydrothermal method of preparing sodium silicate (Theunissen, Abstract). Theunissen specifically teaches a method of preparing sodium silicate, by heating SiO2, caustic soda solution and water at above 150˚C (Theunissen).
As Theunissen expressly teaches, the hydrothermal method is capable of producing high molar SiO2/Na2O ratio (Theunissen, Abstract).
Theunissen is analogous art as Theunissen is drawn to hydrothermal method of preparing sodium silicate.
In light of the motivation of hydrothermal method of preparing sodium silicate as taught by Theunissen, it therefore would have been obvious to a person of ordinary skill in the art to prepare the silicate solution of Li in view of Anand, using the hydrothermal method of Theunissen, including at above 150˚C, in order to producing high molar SiO2/Na2O ratio, thereby arrive at a range the encompasses the range of the presently claimed.
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).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Anand as applied to claim 1 above, and further in view of Bacher et al., US 2020/0399134 A1 (Bacher) (provided in IDS received on 06/17/2024).
Regarding claim 14, as applied to claim 1, Li in view of Anand does not explicitly disclose wherein the process further comprises a step (b) of separating the silicate solution from the impurities deriving from the ash, said impurities comprising carbon products and metals.
With respect to the difference, Bacher teaches liquid silicate derived from rice hull and for use in the product of silica (Bacher, Abstract). Bacher specifically teaches upon reaction of rice ash with sodium hydroxide, there is separation system to remove undissolved solids, and purification system in order to produce high purity sodium silicate solution (Bacher, Figures 1-2); the combustion of the rice hulls can result in rice hull ash that contains greater than 90% silica and about 6% carbon. The rice hull ash also contains metallic impurities, such as calcium (Ca), iron (Fe), manganese (Mn), magnesium (Mg), potassium (K) and sodium (Na) (Bacher, [0006]);
As Bacher expressly teaches, attempts to pretreat the rice hulls prior to combustion have been reported to reduce these metallic impurities; however, these rice hull pretreatments appear to be expensive, time-consuming, and requires the use of large amounts of acid solutions (Bacher, [0006]).
Bacher is analogous art as Bacher is drawn to liquid silicate derived from rice hull and for use in the product of silica.
In light of the motivation of purifying sodium silicate derived from rice hull, as taught by Bacher, it therefore would have been obvious to a person of ordinary skill in the art, to remove impurities including carbon and metallic impurities, after sodium silicate is produced from rice hull, in order to use a less expensive, time-consuming, and without requiring the use of large amounts of acid solutions, and produce high quality sodium silicate, and thereby arrive at the claimed invention.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Anand as applied to claim 14 above, and further in view of Roggendort et al., Structural evolution of sodium silicate solutions dried to amorphous solids, Journal of Non-crystalline solids, 2001 (Roggendort).
Regarding claim 15, as applied to claim 15, Li in view of Anand does not explicitly disclose further comprising a step (c) of drying the silicate solution obtained after step (b) so as to obtain a silicate in solid form.
With respect to the difference, Roggendort teaches sodium silicate solution (Roggendort, Abstract). Roggendort specifically teaches for some applications the materials have to be dried, e.g., for their use as fire protecting layers in glazings (Roggendort, page 752, right column, 2nd paragraph).
Roggendort is analogous art as Roggendort is drawn to sodium silicate solution.
In light of the disclosure of Roggendort, it therefore would have been obvious to a person of ordinary skill in the art to dry the sodium silicate solution of Li in view of Anand and Bacher, for some applications and thereby arrive at the claimed invention.
Allowable Subject Matter
Claims 10, 12 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 10, none of Li, Anand, Theunissen, Bacher or Roggerdort discloses or suggests wherein the multivalent anion is selected from a dicarboxylate, a tricarboxylate and a combination thereof.
Regarding claim 12, none of Li, Anand, Theunissen, Bacher or Roggerdort discloses or suggests wherein said salt is sodium citrate (Na3C6H5O7), potassium citrate (K3C6H5O7), or a combination thereof.
Regarding claim 19, none of Li, Anand, Theunissen, Bacher or Roggerdort discloses or suggests redispersing the silicate in solid form in a dispersing medium, and (II) reacting the so-produced silicate solution and, optionally in addition at least one of a silicate solution other than the so-produced silicate solution, NaOH and a secondary silica source, with an acidifying agent to achieve precipitation of silica.
Response to Arguments
Applicant primarily argues:
“The Examiner considered it as being obvious to use sodium sulfate from the acidification step in Li for the reaction step involving the rice hull ash and the base, as required in pending claim 1. However, the sodium sulfate relied upon by the Examiner is not present in the silicate-producing step in Li at all.
As disclosed in Li, the digestion is carried out with rice hull ash, sodium hydroxide and water only. See Li paras. [0010]-[0012] and the Preparation Examples, e.g. [0112]. Additionally, the dissolution procedure is further taught to include boiling on an electric stove for 3-5 minutes in para. [0101]. Additionally, Li paras. [0010]-[0012] describe the formation of the silicate. Specifically, Li teaches contacting the rice hull ash with the sodium hydroxide and water to form a slurry C. The slurry is filtered to form a filtrate A and a filter cake D. The filter cake D is washed with water to form a washing liquor B. However, the combination of filtrate A and washing liquor B becomes the aqueous solution containing silicate.
Following the formation of the aqueous solution containing silicate in Li, the solution is reacted with sodium sulfate. Thus, sodium sulfate of Li is not used in the dissolution of the crystalline silica, specifically the cristobalite, to form silicates. Instead, the sodium sulfate of Li is reacted with silicates. Specifically, the sodium sulfate appears exclusively in the subsequent acidification and precipitation stage of Li, where it serves as an electrolyte during the precipitation of the white carbon black. See Li paras. [0085] and [0114]. The Examiner's reasoning is therefore not a mere change in the order of addition of the same ingredient, but rather a repurposing of the sodium sulfate for an entirely different function, namely the dissolution of crystalline silica during alkaline digestion, which Li does not teach or suggest. The skilled person, starting from Li and seeking to improve the dissolution of the crystalline, particularly the cristobalite portion of the crystalline silica, would have found no incentive in Li to replace the sodium sulfate from the precipitation stage into the digestion, and no reasonable expectation that doing so would improve dissolution.”
Remarks, p. 9-10
The Examiner respectfully traverses as follows:
Firstly, the rational of rejection of claim 1 based on Li in view of Anand, is not that Li directly discloses the use of sodium sulfate during the preparation of an aqueous solution containing a silicate. Rather, the rational of rejection of claim 1 based on Li in view of Anand is that It therefore would have been obvious to a person of ordinary skill in the art to varying the order of addition of sodium sulfate solution and add the sodium sulfate solution (reading upon an additive, wherein said additive is a salt comprising a sulfur oxyanion) along with rice hull ash and the inorganic alkali when producing the silicate prior acidifying to produce silica, and yield expected results, as set forth on page 5-6 of Office Action mailed 06/10/2026.
Secondly, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggests the modification to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). MPEP 2144 IV.
Thirdly, given that Li in view of Anand teaches an identical or substantially identical process with identical or substantially identical materials, i.e., preparing an aqueous solution containing a silicate, using a rice hull ash, sodium hydroxide, with sodium sulfate added long with the rice hull ash and the sodium hydroxide, with those of the presently claimed (claim 1), therefore, it is clear that the sodium sulfate of Li in view of Anand would necessarily and inherently meet the claimed limitation of “wherein said additive acts to improve dissolution of said crystalline silica, including that of cristobalite, comprised in said plant ash”, as set forth above on pages 6-7, absent evidence to the contrary.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or 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).
Applicant further argues:
“Furthermore, the "order of addition" line of reasoning relied upon by the Examiner applies only in the absence of new or unexpected results. However, the Declaration filed under 37 CFR 1.132 filed herewith, hereinafter "the Declaration," describes and the present application demonstrates exactly such unexpected results, particularly accelerated dissolution of crystalline silica comprised in rice husk ash and rice hull ash using citrate salts. As shown in Examples 1 to 4 and summarized in Table 2 of the application as filed, each sample was carried out at the same reaction temperature of 180 °C and with rice husk ash containing 83.1 wt.% silica, of which 40 wt.% was cristobalite based on total SiO2 content. Because 40 wt.% of the silica in the ash is crystalline, the maximum SiO2 dissolution yield achievable if only the non-crystalline silica dissolves is 60%, as indicated in Table 2 of the application. However, the SiO2 dissolution yield rises from 47% in the absence of any additive (comparative Example 1) to 79 to 93% in the presence of sodium citrate or potassium citrate (Examples 2and 3), whereas a salt having a monovalent anion, namely KCl, gives only 48% (comparative Example 4). Thus, the yield from the inventive examples greatly exceeded the 60% ceiling at the same mild temperature of 180 °C. This demonstrates that a substantial part of the cristobalite itself was dissolved. Additionally, this shows that the improvement is specific to the multivalent anion and is not a generic salt or ionic-strength effect and confirms that the effect is both surprising and directly attributable to the distinguishing feature.”
Remarks, p. 10-11
Declaration, items 11-20
The Examiner respectfully traverses as follows:
The data to show advantageous effects by the process for producing a silicate from a plant ash in the present invention is not persuasive for the following reasons.
Firstly, the data is not commensurate in scope with the scope of the claims. The specification only provides data for a process for producing a silicate from a plant ash, wherein the process comprises a step (a) of reacting: a specific plant ash obtained from a specific combustion of a specific silica-containing plant part and/or plant, wherein said plant ash comprises specific amount and specific type of crystalline silica; with a specific type and amount of base; wherein step (a) is carried out in a reaction mixture comprising a specific type and amount of a dispersing medium and specific types and amounts of additive, and at specific reaction temperature for specific duration of time;
while the present claim broadly recites a process for producing a silicate from a plant ash, wherein the process comprises a step (a) of reacting: any plant ash obtained from any combustion of any silica-containing plant part and/or plant, wherein said plant ash comprises any amount and any type of crystalline silica; with any type and amount of base; wherein step (a) is carried out in a reaction mixture comprising any type and amount of a dispersing medium and specific types and amounts of additive, as long as the additive is a salt comprising a multivalent anion, and at any reaction temperature for any duration of time.
Applicant further argues:
“Anand et al. does not remedy this deficiency, as it is relied upon only for the cristobalite content of the ash and likewise contains no teaching of a multivalent anion additive during digestion. Anand further describes incinerating rice husk ash at 900 to 1025°C followed by leaching the rice husk ask with sodium hydroxide while maintaining continuous agitation and heating temperatures between 75 and 95°C to form a slurry. Upon filtering a slurry, the filtrate includes the silicate. See Anand p 6, lines 24-p 7 line 1. Thus, the combination of Li and Anand does not suggest the dissolution of crystalline silica and in particular cristobalite, with an additive of a multivalent anion to form silicates. To the contrary, the combination of Li and Anand both suggest treating a rice husk ash with solely a base, and at temperatures that are lower than those recited in claim 8.”
Remarks, p. 11
The Examiner respectfully traverses as follows:
Firstly, it is noted that while Anand does not disclose all the features of the present claimed invention, Anand is used as teaching reference, namely using rice husk of varying characteristics in the preparing of silicate and silica of Li, including a rice husk ash has cristobalite in a range of 1 to 50wt%, quartz in a range of 1 to 10 wt.% and amorphous silica in a range of 50 to 98 wt.%, and yield expected results, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Secondly, Li in view of Anand meets the present claim 1, as set forth above on pages 4-6.
Secondly, regarding the temperature, Anand is only used as teaching reference in order to teach using rice husk of varying characteristics in the preparing of silicate and silica of Li, including a rice husk ash has cristobalite in a range of 1 to 50wt%, quartz in a range of 1 to 10 wt.% and amorphous silica in a range of 50 to 98 wt.%. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference Li. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Applicant further argues:
“As noted above, contrary to the instant claims, combination of Li and Anand does not suggest the dissolution of crystalline silica, particularly cristobalite, with an additive - a multivalent anion - to form silicates. To the contrary, the combination of Li and Anand suggests treating a rice husk ash with solely a base, and at temperatures that are lower than those recited in claim 8. Thus, Applicant believes claim 8 is patentable over Li and Anand. Additionally, Theunissen, cited for teaching a method of preparing sodium silicate, by heating SiO2, caustic soda solution and water at temperatures ranging from 120 to 250 ˚C, also does not teach or suggest the instant claims. Instead, Theunissen teaches a hydrothermal method and expressly teaches that cristobalite is a product obtained in refining sand by heating it to 1000-1500°C. See col. 3, lines Thus, Theunissen does not remedy what Li and Anand lack with respect to the instantly claimed dissolution of plant ash crystalline silica, particularly that of cristobalite, with the instantly claimed multivalent anion, especially at temperatures in the range of 120 to 250 ˚C as required by claim 8.”
Remarks, p. 12-13
The Examiner respectfully traverses as follows:
Firstly, given that Li in view of Anand teaches an identical or substantially identical process with identical or substantially identical materials, i.e., preparing an aqueous solution containing a silicate, using a rice hull ash, sodium hydroxide, with sodium sulfate added long with the rice hull ash and the sodium hydroxide, with those of the presently claimed (claim 1), therefore, it is clear that the sodium sulfate of Li in view of Anand would necessarily and inherently meet the claimed limitation of “wherein said additive acts to improve dissolution of said crystalline silica, including that of cristobalite, comprised in said plant ash”, as set forth above on pages 6-7, absent evidence to the contrary.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or 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).
Secondly, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that Li in view of Anand does not expressly teach the claimed reaction temperature from 120 to 250 ˚C. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103, which admits that Li in view of Anand does not teach the entire claimed invention. Rather, Theunissen is relied upon to teach claimed elements missing from Li in view of Anand, with proper motivation to combine, namely, the hydrothermal method is capable of producing high molar SiO2/Na2O ratio (Theunissen, Abstract). See pages 7-8 of the Office Action mailed 06/10/2026.
Thirdly, it is noted that while Theunissen does not disclose all the features of the present claimed invention, Theunissen is used as teaching reference, namely a method of preparing sodium silicate, by heating SiO2, caustic soda solution and water at above 150˚C, in order to producing high molar SiO2/Na2O ratio, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Applicant further argues:
“As noted above, Applicant believes claim 1 is patentable over Li in view of Anand. Bacher, cited for teaching separating the silicate solution from the impurities deriving from the ash, does not remedy what Li and Anand lack with respect to the instantly claimed dissolution of the crystalline silica, particularly the cristobalite, using the multivalent anion as claimed. Thus, Applicant believes that the pending claims are patentable over Li in view of Anand and Bacher. Accordingly, withdrawal of the rejection is respectfully requested.”
Remarks, p. 13
The Examiner respectfully traverses as follows:
It is noted that while Bacher does not disclose all the features of the present claimed invention, Bacher is used as teaching reference, namely purifying sodium silicate derived from rice hull to removal impurities including carbon and metallic impurities, in order to use a less expensive, less time-consuming method, and without requiring the use of large amounts of acid solutions, and produce high quality sodium silicate, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Applicant further argues:
“As noted above, Applicant believes claim 14 is patentable over Li in view of Anand and Bacher. Roggendort, cited for teaching that silicates require drying for their use as fire protecting layers in glazings, does not remedy what Li, Anand and Bacher lack with respect to the instantly claimed dissolution of the crystalline silica, particularly the cristobalite, using the multivalent anion as claimed. Thus, Applicant believes that the pending claims are patentable over Li in view of Anand, Bacher and Roggendort. Accordingly, withdrawal of the rejection is respectfully requested.”
Remarks, p. 14
The Examiner respectfully traverses as follows:
It is noted that while Roggendort does not disclose all the features of the present claimed invention, Roggendort is used as teaching reference, namely to dry the sodium silicate solution, and yield expected results, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Therefore, the Examiner has fully considered Applicant’s arguments, but they are found unpersuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELING ZHANG whose telephone number is (571)272-8043. The examiner can normally be reached Monday - Friday: 9:00am-5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu 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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/KELING ZHANG/
Primary Examiner
Art Unit 1732
