DETAILED ACTIONNotice 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 .
Election/Restriction
Applicant's election with traverse of Claims 1-13 in the reply filed on March 18, 2026 is acknowledged. The traversal is on the ground(s) that search and examination of the entire application could be made without serious burden. This is not found persuasive because, as set forth in MPEP 808.02, in order to demonstrate a serious search burden, the Examiner must show by appropriate explanation one of the following, including separate classification thereof, a separate status in the art when they are classifiable together, OR a different field of search. The groups have been shown to be at least classified separately, as shown in the requirement for restriction.
Therefore, without a more detailed showing as to how a serious search burden does not exist between the two groups, or evidence the claims are not distinct from one another, the requirement is still deemed proper and is therefore made FINAL.
Claims 14-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 March 18, 2026.
Claim Objections
Claim 8 is objected to because of the following informalities:
In Claim 8, add a space following “claim 1”.
Appropriate correction is required.
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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 and 16-20 of copending Application No. 18/636681 (reference application), herein known as ‘681. Although the claims at issue are not identical, they are not patentably distinct from each other because the weight percent ranges of the tetramethyl orthosilicate and methyltrimethoxysilane disclosed in claim 6 of ‘681 overlap with the molar ratio range of tetramethyl orthosilicate to methyltrimethoxysilane of greater than or equal to 3.7:1 and less than or equal to 9.2:1, as disclosed in claim 1 of the instant application, based on the following calculations:16.9g TMOS / 152.221 g/mol = 0.111 mol; 4.6g MTMS / 136.222 g/mol = 0.0338 mol 0.111 / 0.0338 = 3.2831g TMOS / 152.221 g/mol = 0.2036 mol; 2.6g MTMS / 136.222 g/mol = 0.0191 mol 0.2036 / 0.0191 = 10.66In Claim 6 of ‘681, the molar ratio of tetramethyl orthosilicate to methyltrimethoxysilane is between 3.28:1 and 10.66:1. This range overlaps with the instant application’s claimed range, and further overlaps with the molar ratio ranges of claims 2-6. The density range of claim 6 of ‘681 (120 mg/cc to 200 mg/cc) also overlaps with the density range of claim 1 of the instant application (100 mg/cc to 200 mg/cc) and claim 5 of the instant application (120 mg/cc to 150 mg/cc).
Furthermore, Claims 7 and 8 teach that both the solvent and the diluent are methanol, which reads on claim 6 of ‘681. Claims 9-13 correspond to claims 16-20 of ‘681.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 and 16-20 of copending Application No. 18/636715 (reference application), herein known as ‘715. Although the claims at issue are not identical, they are not patentably distinct from each other because the weight percent ranges of the tetramethyl orthosilicate and methyltrimethoxysilane disclosed in claim 6 of ‘715 overlap with the molar ratio range of tetramethyl orthosilicate to methyltrimethoxysilane of greater than or equal to 3.7:1 and less than or equal to 9.2:1, as disclosed in claim 1 of the instant application, based on the following calculations:2.8g TMOS / 152.221 g/mol = 0.0184 mol; 0.8g MTMS / 136.222 g/mol = 0.00587 mol 0.0184 / 0.00587 = 3.135.7g TMOS / 152.221 g/mol = 0.0374 mol; 0.5g MTMS / 136.222 g/mol = 0.00367 mol 0.0374 / 0.00367 = 10.19In Claim 6 of ‘715, the molar ratio of tetramethyl orthosilicate to methyltrimethoxysilane is between 3.13:1 and 10.19:1. This range overlaps with the instant application’s claimed range, and further overlaps with the molar ratio ranges of claims 2-6. The density range of claim 6 of ‘715 (120 mg/cc to 200 mg/cc) also overlaps with the density range of claim 1 of the instant application (100 mg/cc to 200 mg/cc) and claim 5 of the instant application (120 mg/cc to 150 mg/cc).
Furthermore, Claims 7 and 8 teach that both the solvent and the diluent are methanol, which reads on claim 6 of ‘715. Claims 9-13 correspond to claims 16-20 of ‘715.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-13 would be allowable if the nonstatutory double patenting rejections set forth in this Office action are overcome.
The following is a statement of reasons for the indication of allowable subject matter: Schwertfeger et al. (US 5587107 A), Yokogawa et al. (US 6740416 B1), Chen et al. (US 2024/0199835 A1), Sonoda et al. (US 6197270 B1), Rao et al. (“Effect of methyltrimethoxysilane as a synthesis component on the hydrophobicity and some physical properties of silica aerogels”), and Chowdhury et al. (US 2023/0286813 A1) are considered to be the closest prior art to the instant claims.
With regard to Claim 1, Schwertfeger teaches a method of making a hydrophobic silica aerogel involving the mixture of tetramethyl orthosilicate, methyltrimethoxysilane, methanol, ammonium hydroxide, and water (Col. 5, Examples 1 to 9; RSi(OR')3 (R=methyl, vinyl, propyl, phenyl) and Si(OR')4 (R'=methyl) were mixed in various ratios (x mol of RSi(OR')3, y mol of Si(OR')4) and dissolved in a specific amount of methanol (cf. Table 1). A calculated amount of aqueous 0.01 N ammonia solution corresponding to (3x+4y) mol of water, was added to the solution. After mixing, the batch was allowed to stand in a closed vessel at room temperature until gelling occurred).
Schwertfeger teaches a density of hydrophobic silica aerogel between 100 mg/cc and 200 mg/cc (Table 2, Example 8, 170 kg/m3; Claims 1-2, An SiO2 aerogel having a density of up to 395 kg/m3; An SiO2 aerogel containing carbon particles, having a density of less than 250 kg/m3).
Schwertfeger teaches a molar ratio of tetramethyl orthosilicate:methyltrimethoxysilane of greater than or equal to 3.7:1 and less than or equal to 9.2:1 (Table 1, Example 8; 600 mmol TMOS: 150 mmol MTMS = 4:1 molar ratio).
Schwertfeger is silent to the steps of preparing a first solution, a second solution, and a third solution in the order claimed.
Yokogawa teaches preparing a first solution by mixing tetramethyl orthosilicate and solvent, preparing a second solution by mixing solvent, ammonium hydroxide and water, mixing the first solution and the second solution together to form a mixed solution, and allowing components in the mixed solution to react to form silica wet gel (Col. 24, Example 1; Solution A was prepared by mixing an oligomer of tetramethoxysilane… and methanol at a mass ratio of 47:81. Further, Solution B was prepared by mixing water, 28% by mass ammonia aqueous solution and methanol at a mass ratio of 50:1:81. Then, Solution A and Solution B were mixed at a mass ratio of 16:17 to form an alkoxysilane solution, which was dropped onto one surface of a plate member (100) made of soda glass followed by spin-coating at 700 r.p.m. for ten seconds).
Yokogawa is silent to preparing a third solution by mixing methyltrimethoxysilane and diluent, and adding the third solution to the silica wet gel, allowing the third solution to react with the silica wet gel to form hydrophobic silica wet gel, and drying the hydrophobic silica wet gel to form hydrophobic silica aerogel.
Chen teaches preparing a third solution by mixing methyltrimethoxysilane and diluent and adding the third solution to the silica wet gel, which would lead to the formation of hydrophobic silica aerogel (Paragraph 0059, The mixed hydrolysis step (S1) comprises: mixing a siloxane compound or a methylsiloxane compound with a large amount of an aqueous solution containing alcohols to form a uniform mixed solution, wherein the siloxane compound is selected from a group consisting of tetramethoxysilane (TMOS), tetraethoxysilane (TEOS) and a combination thereof; the methylsiloxane is selected from a group consisting of methyltrimethoxysilane (MTMS), methyltriethoxysilane (MTES) and a combination thereof).
However, Yokogawa and Chen do not teach or suggest the hydrophobic silica aerogel having a density of between 100 mg/cc and 200 mg/cc, and a molar ratio of tetramethyl orthosilicate:methyltrimethoxysilane of greater than or equal to 3.7:1 and less than or equal to 9.2:1. Further, there is no motivation to combine the teachings of Schwertfeger with Yokogawa, Chen, or other prior art disclosed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Wang et al. (US 2019/0333490 A1) teaches a preparation method of a monolithic silica aerogel slab, comprising adding an ammonia solution to a TMOS solution, to form the aerogel. The reference does not disclose the use of MTMS.
Zhang et al. (CN 111101819 A) teaches a preparation method of hydrophobic silica aerogel. The reference discloses a molar ratio of TMOS to MTMS of 1:1, and does not disclose preparing separate solutions of TMOS and MTMS.
Rao et al. (“Influence of Molar Ratios of Precursor, Catalyst, Solvent and Water on Monolithicity and Physical Properties of TMOS Silica Aerogels”) teaches the effect of adjusting molar ratios of precursors on the physical properties of TMOS-based silica aerogels. The reference does not disclose the use of MTMS.
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/ABDUL-RAHMAN YUSUF WALEED SMARI/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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