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
The amendments to the claims are supported by the specification.
Any rejections and/or objections made in the previous Office Action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
No new grounds of rejection are set forth below. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
Claims 1-7 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima et al (US 20080249326 A1).
The rejection is adequately set forth in paragraphs 22-27 of the Office Action filed on 7/21/2026 and is incorporated herein by reference.
Response to Arguments
Applicant's arguments filed 7/28/2026 have been fully considered but they are not persuasive.
Applicant argues that the Office has not established a case of prima facie obviousness by failing to provide reasoning that supports both how and why a person of skill in the art would have modified Nakajima in the proposed way to reach the claimed invention. The examiner notes that modification of Nakajima is not necessary to arrive at the claimed invention. As cited in the prior Office Action, a prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I). In the instant case, the claimed ranges of pore size, alkyl group length, and average particle diameter all overlap or lie inside the ranges disclosed by Nakajima, rendering the claimed invention prima facie obvious over Nakajima. “Selecting a narrow range from within a somewhat broader range disclosed in a prior art reference is no less obvious than identifying a range that simply overlaps a disclosed range… [W]hen…the claimed ranges are completely encompassed by the prior art, the conclusion is even more compelling than in cases of mere overlap. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” (citations omitted)).[1] …[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Applicant particularly argues that Nakajima does not fairly disclose or render obvious embodiments wherein applicant’s R1 and R2 are the same. As cited in the prior Office Action, Nakajima’s disclosure of two identically labelled R1 substituents, rather than separately labelled R1 and R2 substituents which are disclosed as being the same, necessarily teaches embodiments wherein the identically labelled R1 substituents are the same ([0008], Formula (I)).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Savannah G Phillips whose telephone number is (571)270-0822. The examiner can normally be reached M-Th 8-6 ET.
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, Joseph Del Sole can be reached at (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAVANNAH G. PHILLIPS/Examiner, Art Unit 1763 /JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
