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 .
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.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-16, in the reply filed on 12 March 2026 is acknowledged. The traversal is on the grounds that different classification, divergent subject matter, and different fields of search to do not present a serious search burden because MPEP § 904 states that searching even one claim group should involve searching different classes, subclasses, and resources. This is not found persuasive because while MPEP § 904 does suggest such a search for one invention, carrying out a search over multiple classes for two inventions is not part of the normal burden of examination. Furthermore, MPEP § 808.02 supports that a serious search burden exists in view the separate classifications of the distinct inventions of Group I and II. In particular, because the article of Group II could be prepared by a method distinct from that of Group I, a search of one invention will not be coextensive with a search of the other.
The requirement is still deemed proper and is therefore made FINAL.
Claims 17-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12 March 2026.
Information Disclosure Statements
The Information Disclosure Statements filed on 21 April 2025, 3 September 2025, 11 December 2025, and 13 April 2026 have been received and considered by the Examiner.
Claim Interpretation
Haze value and how it is measured is not defined in the specification. Accordingly, it will be interpreted as it is in the art and as defined in Zhao (Eq. 1; Optics Express, 2019, 27(4), A39-A50), and may be calculated for any wavelength(s) of light. The specification and claims do not specify the thickness of the sample on which the haze value is calculated, and so the haze value recited in the claim is interpreted as applying to a sample of any thickness.
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.
Claims 1-16 are 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.
Claims 1-9 each recite a limitation where a molar ratio of methyl silicate 51:methyltrimethoxysilane falls within a certain range. However, methyl silicate 51 is not a single substance, but rather commonly refers to a mixture of compounds defined by being formed from hydrolysis and oligomerization of methyl silicate and having a composition of 51 weight% of SiO2, as evidenced by SiSiB Silanes (http://www.powerchemical.net/silanes/5411.html). It is therefore unclear what is meant by a molar amount of this substance or how to calculate a molar amount from any macroscopic quantity, such as mass or volume. Accordingly, it is indefinite what is meant by a molar ratio of this substance to any other, including a molar ratio of methyl silicate 51 to methyltrimethoxysilane.
Claims 10-16 depend upon claim 1 with resolving the indefiniteness and are likewise rejected.
For the purposes of further examination, a molar amount of methylsilicate 51 may be interpreted as any of the following:
any reference to a molar quantity of methyl silicate 51 in the prior art;
a molar quantity in the prior art that is based upon an effective molar mass for methyl silicate 51
a molar quantity which is calculated using the effective molar mass that Table 1 seems to imply (~490 g/mol), which is arrived at by comparing the weight ratios and molar ratios of MS-51 and MTMS in the table and using the known molar mass or MTMS (136.2 g/mol), though it is unclear how Applicant arrived at such values;
Claim 15 additionally recites the term “visible transmission” but this term is indefinite. While the specification paragraph [0108] suggests that this term is well known in the art, [0108] further defines the visible transmission as referring to “the percentage of all incident visible radiation that is transmitted through an object,” where visible is defined as wavelengths between about 380 nm and 780 nm. However, the specification also cites NFRC 300-2017 as providing one method to determine visible transmittance, and this method requires transmission to be calculated based on a weighted solar spectrum over the range 300 nm to 2500 nm. These two definitions are not the same, and therefore it is indefinite to which visible transmission the claim refers.
Furthermore, it is noted that the neither the specification nor the prior art specify a thickness of a sample on which the visible transmission is measured. As such, the broadest reasonable interpretation of the limitations regarding visible transmission is that they can be measured for an aerogel of any thickness.
Claim Rejections - 35 USC § 103
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 1-3, 11, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Sonoda et al. (US 6,197,270 B1).
Regarding claim 1, Sononda teaches a method of making a hydrophobic silica aerogel having a density of 110 mg/cc (Table 1, Comparative Example 1, col. 13) comprising the steps of:
preparing a first solution by mixing methyl silicate 51 and solvent (tetramethoxysilane oligomer (Methyl Silicate 51, average molecular weight 470; manufactured by Colcoat LTD.) as alkoxysilane, ethanol and water as a solvent);
preparing a second solution of ammonium hydroxide and water (15 N aqueous ammonia as catalyst was prepared)
mixing the first solution and the second solution together to form a mixed solution (the tetramethoxysilane oligomer, ethanol, water and 15N aqueous ammonia were blended); and,
allowing the components in the mixed solution to react to form silica wet gel (stirred for 1 minute to obtain a sol which was cast into a container and allowed to stand at room temperature for 1 day to obtain a gel);
hydrophobilizing and drying the hydrophobized wet gel to form a hydrophobic silica aerogel (resultant gel was used to perform solvent substitution with ethanol, hydrophobilizing treatment and supercritical drying to obtain a hydrophobic aerogel).
Further regarding the hydrophobilizing treatment, Sononda teaches subjecting the wet gel to hydrophobilizing treatment with hexamethyldisilaze (col. 13), and that a hydrophobizing treatment can be caried out by immersing the gel in a solution of hydrophobilizing agent in a diluent (solvent; col. 6, lines 21-22). While Sononda’s Comparative Example 1 utilizes hexamtehyldisilazane, Sonanda also teaches that instead of hexamethyldisilazae, the hydrophobilizing agent can be methyltrichlorosilane, trimethylchlorosilane, trimethylmethoxysilane, or the like (col. 6, lines 7-14). One of ordinary skill in the art would understand that a group that includes trimethylchlorosilane, trimethylmethoxysilane, methyltrichlorosilane, and the like would also include methyltrimethoxysilane, as it is related to methyltrichlorsilane in the same way that trimethylmethoxysilane is related to trimethylchlorosilane. Additionally, Sononda teaches that both halogen groups (e.g., chloro) and alkoxy groups (e.g., methoxy) are functional groups that are reactive with silanol groups (col. 5, line 66-col. 6, line 3) as required in the hydrophobilizing treatment; i.e. methyltrimethoxysilane is a functional equivalent of methyltrichlorosilane.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the hydrophobilizing treatment by preparing a third solution by mixing methyltrimethoxysilane and diluent and adding the third solution to the silica wet gel. One of ordinary skill in the art would have been motivated to do so because Sononda teaches that compounds like methyltrimethoxysilane would be an effective hydrophobilizing agents to substitute for hexamethyldisilazane in the method of Comparative Example 1, and that such a hydrophobilizing treatment should be conducted with a diluent (solvent).
Sonoda also teaches using the hydrophobilizing agent in a controlled amount (Preferably, the hydrophobilizing agent in the hydrophobilizing treatment is used at an amount corresponding to the number of moles that is enough to react with all silanol groups on the surface of the raw polymer constituting the gel. For example, an amount of the hydrophobilizing agent is preferably in a range of a ratio by weight of around 0.5 to 10 based on (the raw polymer)/(the hydrophobilizing agent); col. 6, lines 38-50). Based upon the effective molar mass for methyl silicate 51 taught by Sonoda (470 g/mol; col. 13, line 13) and the molecular weight of methyltrimethoxysilane (136 g/mol), mass ratios of 0.5 and 10 correspond to a mole ratios for methyl silicate 51:methyltrimethoxysilane of 0.14:1 and 2.9:1, respectively. Sonoda therefore teaches a range which includes the instantly claimed range of 0.95:1 to 2.55:1.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). Therefore, the claimed range or a molar ratio merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Regarding the preparing the second solution by mixing solvent, ammonium hydroxide, and water, while Sononda teaches only mixing ammonium hydroxide and water, this solution is then added to a mixture that contains a solvent (col. 13). The addition of solvent to the ammonium hydroxide first versus adding ammonium hydroxide solution to a mixture containing solvent represents an obvious modification, as the courts have found that selection of any order of mixing ingredients is prima facie obvious absent new or unexpected results. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). MPEP 2144.04(IV)(C).
Regarding claims 2 and 3, Sonoda teaches the method of claim 1, where molar ratio of methyl silicate 51:methyltrimethoxysilane is in the range of 0.14 to 2.9:1, which includes the instantly claimed ranges of 0.0.98:1 to 1.43:1, as required by claim 2, and 1.3:1 to 1.7:1, as required by claim 3.
It is again noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists. Therefore, the claimed ranges of a molar ratio merely represent obvious variants and/or routine optimizations of the values of the cited prior art.
Regarding claim 11, Sonoda teaches the method of claim 1, where Sonoda also teaches that the diluent (solvent) for the hydrophobizing treatment may be methanol (col. 6, line 26).
Regarding claim 16, Sonoda teaches the method of claim 1 where the method is devoid of using a surfactant (col. 13).
Claims 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Sononda et al. (US 6,197,270 B1), as applied to claim 1 above, and further in view of Iswar et al. (Acta Materialia 2021, 213, 116959) and Yokogawa et al. (J. Non-Cryst. Solids 1995, 186, 23-29; hereinafter Yokogawa ‘95)..
Regarding claims 4-9, Sonoda teaches the method of claim 1, where the molar ratio of methyl silicate 51:methyltrimethoxysilane is in the range of 0.14:1 to 2.9:1, as analyzed for claim 1. This overlaps with the instantly claimed ranges for molar ratio recited in each of claims 4-9. Sonoda does not teach the density being in the range of between 120 mg/cc and 200 mg/cc, as required by claims 4-6, or in the range of between 120 mg/cc and 150 mg/cc, as required by claims 7-9.
However, Iswar teaches that for silica aerogels prepared and supercritically dried by a method similar to Sonoda’s method (p. 2, col. 2, ¶ 1), that increased density corresponds to increased stiffness (Fig. 1c and 1d). Iswar also teaches that a minimum in thermal conductivity, and therefore maximal insulating properties, may exist near densities of ~140 mg/cc (density near ~0.12 g/cm3 has the lowest λ in this study, but the true minimum may be at somewhat higher densities, e.g. ~0.14 g/cm3; p. 4, col. 1). Iswar further teaches the density of the silica aerogels can be controlled by varying the starting concentrations of the SiO2 precursor (aerogels of varying ρ were obtained by varying the starting SiO2 equivalent concentration; p. 2, col. 2, ¶ 1).
Yokogawa ’95 also teaches a substantially similar process to Sonoda for preparing hydrophobic silica aerogels, including the initial step of mixing methylsilicate 51, ethanol, water and ammonia (Section 2, ¶ 1). Yokogawa additionally teaches that these aerogels, too, can be prepared with varying density by varying the initial concentrations of silica precursors (Table 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Sonoda using the technique of Yokogawa ’95 and Iswar in order to achieve densities in the range of ~140 mg/cc, as taught by Iswar, thereby meeting the limitations on density required by claims 4-9. One of ordinary skill in the art would have been motivated to do so in order to maximize the insulating ability by minimizing thermal conductivity, as taught by Iswar. One of ordinary skill in the art would have also been motivated to increase the density beyond Sonoda’s 110 mg/cc in order to balance the desired stiffness of the aerogel with its density, as taught by Iswar.
Further regarding the molar ratio, it is again noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists. Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Sononda et al. (US 6,197,270 B1), as applied to claim 1 above, and further in view of Yokogawa et al. (US 5,496,527 A; hereinafter Yokogawa ‘527).
Regarding claim 10, Sonoda teaches the process of claim 1, where the solvent is ethanol (Comp. Ex. 1, col. 13) but does not teach the solvent being methanol.
However, Yokogawa ‘527 teaches a largely similar process for the preparation of a silica wet gel (Example 6, col. 6), and further teaches that the ethanol solvent can instead be methanol (col. 3, lines 40-42).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the ethanol solvent used in the Sonoda with methanol, as taught by Yokogawa ‘527. One of ordinary skill in the art would have been motivated to do so because they would be replacing one solvent with another than has also been shown effective for the same transformation.
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Sonoda et al. (US 6,197,270 B1), as applied to claim 1 above, and further in view of Yokogawa et al. (J. Non-Cryst. Solids 1995, 186, 23-29; hereinafter Yokogawa ‘95).
Regarding claim 12, Sonoda teaches the process of claim 1, and teaches ageing the wet gel for a period of 1 day (col. 13).
Sonoda does not teach aging the silica wet gel or the hydrophobic silica wet gel for a time period of at least 7 days.
However, Yokogawa ’95 teaches a substantially similar process for preparing hydrophobic silica aerogels, including the initial step of mixing methylsilicate 51, ethanol, water and ammonia (Section 2, ¶ 1). Yokogawa further teaches aging the formed gel for a period of 7 days before hydrophobizing treatment (p. 24, col. 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to age the silica wet gel in the process of Sonoda for a period of 7 days before adding the third solution to the silica wet gel, as taught by Yokogawa ’95. One of ordinary skill in the art would have been motivated to do so because Yokogawa ’95 teaches that these aging conditions are also appropriate for preparing similar hydrophobic silica aerogels.
Regarding claim 13, Sonoda teaches the process of claim 1, and Sonoda further teaches that the diluent (solvent) for the hydrophobizing treatment may be methanol (col. 6, line 26).
Sonoda does not teach subjecting the hydrophobic wet gel to solvent extraction with methanol for an extraction time period of less than 24 hours.
However, Yokogawa ’95 teaches a substantially similar process for preparing hydrophobic silica aerogels, including the initial step of mixing methylsilicate 51, ethanol, water and ammonia and subsequent hydrophobizing treatment in an alcohol solvent (ethanol). (Section 2). Yokogawa also teaches washing the hydrophobized silica gel in the solvent used for the reaction by dipping (the alcogels were … dipped in ethanol again to be washed; p. 24, col. 2, ¶ 2), which is interpreted as a solvent extraction of less than 24 hours.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the hydrophobilizing treatment of Sonoda in methanol, and to then subject the hydrophobized silica aerogel to solvent extraction with methanol (washing) for a time period of less than 24 hours, as taught by Yokogawa ’95. One of ordinary skill in the art would have been motivated to do so because Yokogawa ’95 teaches that washing with clean ethanol solvent before drying is appropriate, and Sonoda teaches than methanol is an acceptable substitute for ethanol.
Regarding claim 14, Sonoda teaches the process of claim 1, but does not teach the shrinkage value of their aerogel.
However, Yokogawa ’95 teaches a substantially similar process for preparing hydrophobic silica aerogels that are modified with trimethylsiliyl instead of methylsilyl groups. Yokogawa further teaches that the hydrophobic silica aerogels have shrinkage values of less than 2% (TMSA samples shrank by less than 2% during supercritical drying; p. 27, col. 2, ¶ 2), while unmodified aerogels have shrinkage values of about 5% (Table 2).
Therefore it would be reasonable to conclude that the hydrophobic aerogels prepared by the method of Sonoda would exhibit similar shrinkage values and meet the claim limitation for a shrinkage value of less than 4%.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of [their] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 4380, 483-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Sonoda et al. (US 6,197,270 B1), as applied to claim 1 above, and further in view of Pilon et al. (US 2021/0207428 A1) and Zhao et al. (Optics Express, 2019, 27(4), A39-A50), and as evidenced by Bertino et al. (US 2019/0143290 A1).
Regarding claim 15, Sonoda teaches the method of claim 1 and further teaches that their hydrophobic silica aerogel has a visible transmission (light transmittance) of 91% for a plate having a thickness of 10 mm (Table 1, where the thickness is ).
Sonoda does not teach the hydrophobic silica aerogel having a visible transmission of at least 97.8% or a haze value of 3% or less.
However, Pilon teaches that silica aeorgels can be cured into slabs with thickness of from approximately 0.5 mm to approximately 3 mm for use in thermal barrier applications ([0049] and [0062]). Because the aerogel will approximately follow the Beer-Lambert law (T = e--τ d, where T is transmittance, d is thickness, and τ is a constant) as evidenced by Bertino ([0096]), a gel with a transmission of 91% at 10 mm is expected to have a transmission of ~99% when only 0.5 mm thick.
Furthermore, Zhao teaches preparing similarly synthesized silica aerogels by mixing methyl silicate 51, water, solvent, and ammonia (Appendix A, Samples B and C) and that these samples have a visible transmittance of 97.6% and a haze value of 2.8% for a sample that is 2.54 mm thick (Table 1). Zhao further teaches that transmittances of greater than 97% are generally correlated with haze values of less than 3% (Figure 4).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare thin slabs of Sonoda’s aerogels, as taught by Pilon, which would have transmission values of~99%, as evidenced by Bertino. One of ordinary skill in the art would have been motivated to do so because Pilon teaches that such thin slabs have applications in thermal barriers. Such aerogels are also expected to have haze values of less than 3%, as supported by Zhao.
If the aerogels of modified Sonoda did not have haze values of less than 3%, one of ordinary skill in the art would have been motivated to reduce the haze levels by using Zhao’s wet gel preparation in the method of Sonoda to form wet gels with high transmittance and low haze values; such enhancements would be expected to also improve the optical properties of the hydrophobilized aerogels. One of ordinary skill in the art would have been motivated to do so because such high-transmittance and low-haze silica aerogels are advantageous in advanced glazing units and solar-thermal systems that could help reduce energy consumption significantly, as taught by Zhao (Section 5).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 7-8, and 10-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18/637,947. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘947 patent include all the limitations of the instant claims, or they recite overlapping ranges.
Regarding instant claims 1 and 2, given the open claim language of the instant claim, the solvent exchange solution of the ‘947 claims is considered as meeting the limitations of the third solution of the instant claims.
Furthermore, the ratio of methyl silicate 51:methyltrimethoxysilane of 0.98:1 to 1.43:1 required by the ‘975 application lies within the range of 0.95:1 to 2.55:1 recited in instant claim 1 and is identical to the range recited in instant claim 2.
Regarding instant claim 3, the range recited in the instant claim overlaps with that recited in claim 1 of the ‘947 application.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). Therefore, the instant claim merely represents an obvious variant and/or routine optimization of the conditions in claim 1 of the ‘947 application.
Regarding instant claims 4-5 and 7-8, the ranges required for density and molar ratio in the instant claims are identical to or overlap with those recited in claims 1-3 of the ‘947 application, and are therefore considered obvious variants.
Regarding claims 10-16, the further limitations of these claims are recited in claims 5-11 of the ‘947 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2 and 10-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/637,975 in view of Sonoda et al. (US 6,197,270 B1).
Regarding instant claims 1 and 2, given the open claim language of the instant claim, the solvent exchange solution of the ‘975 claims is considered as meeting the limitations of the third solution of the instant claim, except for the fact that the ‘975 patent uses methyltriethoxysilane and the instant claim requires methyltrimethoxysilane. However, Sonoda teaches that, as alkoxy groups, methoxy and ethoxy are functional equivalents that serve the same purpose of reacting with silanol groups of the wet gel (col. 6, lines 1-3 and 11-12). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use methyltrimethoxysilane in place of methyltriethoxysilane.
Furthermore, the ratio of methyl silicate 51:methyltrimethoxysilane of 1:1.82 (0.54:1) to 1:1 required by the ‘975 application overlaps with the range of 0.95-:1 to 2.55:1 recited in instant claim 1 and the range of 0.98:1 to 1.43:1 recited in instant claim 2.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). Therefore, the instant claim merely represent an obvious variant and/or routine optimization of the conditions in claim 1 of the ‘975 application.
Regarding instant claims 10-16, the further limitations of these claims are recited in claims 5-11 of the ‘975 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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