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
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.
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.
Claims 13, 16, 17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Manayil, “Octyl Co-grafted PrSO3H/SBA-15: Tunable Hydrophobic Solid Acid Catalysts for Acetic Acid Esterification”, ChemCatChem 2017 (cited on IDS filed 01/20/2026) as evidenced by or in view of US 6592764 (Stucky).
Manayil discloses propylsulfonic acid (PrSO3H) solid acid catalysts prepared by modification of mesoporous SBA-15 silica functionalized with mercaptopropyltrimethoxysilane (MPTMS) (corresponding to Formula I) and octyltrimethoxysilane (OTMS) (corresponding to Formula II). Note that these materials are used in Example 1 of the instant specification. Table 1 indicates pore diameters for Oc/PrSO3H/SBA-15 of 4.6-4.8 nm. Still further, Figure S2 in the supplemental data shows pore diameters for Oc/PrSO3H/SMA-15 have a majority of pore diameters above 5 nm and shifts to a higher value as a function of nominal S loading increases. Finally, even assuming that Figure S2 does not illustrate a majority of pores above 5nm, the data of pore diameter of 4.8 nm in Table 1 is so close to 5 nm as to not clearly provide a patentable distinction. a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").
Manayil does not expressly state the diameter of the formed particles, however, Stucky provides evidence that SBA-15 has particle sizes of about 80 microns (paragraph bridging columns 13-14). Alternatively, it would have been obvious to use an SBA-15 material known in the art to be useful for functionalization such as the material disclosed by Stucky as Stucky discloses that the silica may be functionalized (col. 21, lines 28-36). Moreover, Stucky discloses pore sizes of at least 3 nm (claim 133 of Stucky) and discloses pore sizes and the thickness of the silica wall can be adjusted by varying the heating temperature (35-140.degree. C.) or heating time (11-72 h) of the SBA-15 in the reaction solution and by adding organic swelling agents such as 1,3,5-trimethylbenzene (col. 12, lines 38-55). Stucky further discloses in Table 1 a range of pore sizes formed in mesoporous silica where the majority fall above 5 nm (50 Angstroms) and 50 nm (500 Angstroms). Pluronic 123 (used in Mayanil) has pore sizes of 47, 60, 77, 85 and 89 angstroms which converts to 4.7, 6.0, 7.7, 8.5 and 8.9 nm).
Regarding claim 16, Manayil discloses a surface area over 500 m2/g (Table 1).
Regarding claim 17, Manayil discloses preparing Pluronic P123 (polymeric template) in water and HCl (acidic aqueous suspension) and stirring. These steps are commensurate with those carried out in Example 1 of the instant specification and formation of micelles is considered inherent to the formation of the material. Next, TEOS (tetra alkyl orthosilicate precursor) was added with synthesis maintained at 35C for 20h under stirring. The formed silica particles were functionalized by adding MPTMS and octyl-grafting material was added to the un-oxidized samples (Experimental section). The octyl co-grafted samples were then oxidized with hydrogen peroxide to convert thiol groups into sulfonic acid. Thus, SBA-15 is functionalized with propyl sulfonic and OTMS (Results and Discussion, paragraph 1). Removal of the template is considered a necessary step and the claims do not require the specific point at which this step occurs.
Response to Arguments
Applicant’s amendments have overcome the rejection under 112(b) and the objections to the claims.
Applicant’s arguments regarding the amendment to claim 13 is not persuasive. Applicant argues that Manayil reports pore sizes of 4.6-4.8 nm whereas claim 13 now requires greater than 50% of the pores have a diameter between 5 and 50 nm. As stated above in the rejection, Manyil discloses in Figure S2 diameters of the majority of pores are above 5 and below 50nm, whereas there is a peak in the 4.6-4.8 range. The peak does not counter the majority in the range claimed. Alternatively, if the diameter is assumed to be as reported in Table 1, the disclosed diameter of 4.8 is seen to be so close as to not be patentably distinct from 5nm. There is no evidence in the record that a slight difference (4.8 vs 5) in pore size provides a patentable distinction.
Regarding claim 17, applicant argues that the claim requires functionalization prior to removal of the templating agent whereas in Mayanil, removal of the template occurs prior to functionalization. Claim 17 does not require the steps be performed in the order stated. Applicant further argues that the morphology of SBA-15 of Stucky differs from the morphology of the instant application. The claims do not require any particular morphology and the rejection primarily relies upon the method disclosed by Mayanil for making the silica particles.
Allowable Subject Matter
Claims 14, 15, and 18-26 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER C MCNEIL whose telephone number is (571)272-1540. The examiner can normally be reached M-F 9-5.
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, Tong Guo can be reached at 5712723066. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
JENNIFER C. MCNEIL
Primary Examiner
Art Unit 1723
/Jennifer McNeil/Primary Examiner, Art Unit 1723
Prosecution Insights