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 Objections
Claims 21 and 23 are objected to because of the following informalities: It is suggested to reword these claims as “said mesoporous silica particles comprise the particles of claim 13”. Appropriate correction is required.
Claims 25 and 26 are objected to under 37 CFR 1.75(c) as being in improper form because the manner in which they are drafted results in dependency from more than one claim, and not in the alternative. See MPEP § 608.01(n). Accordingly, the claims 25-26 have not been further treated on the merits. This objection is repeated from the non-final action mailed 09/19/2025.
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. 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 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).
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).
Response to Arguments
Applicant’s amendments have overcome the rejection under 112(b) and the objections to the claims with the exception of the claim objections noted above. A new rejection is made above over Manayil and Brothers, both of which were provided in the IDS filed under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 01/20/2026.
Allowable Subject Matter
Claims 14, 15, and 18-24 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
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 01/20/2026 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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 JENNIFER C MCNEIL whose telephone number is (571)272-1540. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at 571-272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JENNIFER C. MCNEIL
Primary Examiner
Art Unit 1793
/Jennifer McNeil/ Primary Examiner, Art Unit 1793