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
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 1-6, 9-23, and 26-29 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 US 2021/0207428 to Pilon et al. (hereinafter “Pilon”).
As to claim 1, Pilon discloses an article 10 comprising a glass substrate 12 and a hydrophobic silica aerogel sheet 14 adhered to the glass substrate with a transparent adhesive 16 wherein the hydrophobic silica aerogel sheet is synthesized from tetraethoxysilane (TEOS) and methyltriethoxysilane (MTES) (paragraph 95; figure 1). The silica aerogel sheet has a light transmittance of 98.3% at 550 nm and a haze value of 1.4% (table 2).
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12: glass substrate
14: silica aerogel thermal barrier layer
16: transparent adhesive
As to claims 2, 17 and 19, Pilon discloses that the silica aerogel sheet has an average pore diameter of less than 15 nm (paragraph 105).
As to claims 3-6, 14-16, and 20-23, Pilon does not explicitly disclose the silica aerogel sheet comprising the following features:
a water contact angle of at least 900;
a thermal conductivity in air of 13.5 mW/mK or less;
a flexural modulus of 6000 kPa or less; and
a specific surface area of at least 750 m2/g.
However, it appears that the silica aerogel sheet in Pilon and the claimed invention are made of the same material. The hydrophobic silica aerogel sheet is synthesized from a combination of multiple silica alkoxide precursors including tetramethoxysilane (TMOS), tetraethoxysilane (TEOS), methyltrimethoxysilane (MTMS), methyltriethoxysilane (MTES) (paragraph 59). In particular, the hydrophobic silica aerogel sheet is comprised of TEOS and MTES with a mixing ratio within the range set out in the specification of the claimed invention (paragraph 95; figure 1; and table 1). The silica aerogel sheet has a light transmittance of 98.3% at 550 nm and a haze value of 1.4% (table 2). The silica aerogel sheet has an average pore diameter of less than 15 nm (paragraph 105) within the claimed range. The silica aerogel sheet has a thickness of 3 mm within the claimed range (paragraph 50).
Therefore, the examiner takes the position that the features (a) to (d) would be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
As to claims 9, 10, 26 and 27, Pilon discloses that a silica aerogel sheet can be synthesized from a combination of multiple silica alkoxide precursors including tetramethoxysilane (TMOS), tetraethoxysilane (TEOS), methyltrimethoxysilane (MTMS), methyltriethoxysilane (MTES) (paragraph 59).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to prepare a silica aerogel sheet using a precursor mixture of TMOS and MTMS; or a precursor mixture of TMOS and MTES because such combinations have been shown in the art to be recognized equivalent precursor mixtures for formation of the silica aerogel and selection of these combinations would be within the level of ordinary skill in the art.
As to claim 11, Pilon discloses that the silica aerogel sheet has a thickness of 3 mm (paragraph 50).
As to claims 12, 13, 28, and 29, Pilon discloses that the silica aerogel has a light transmittance of 98.3% at 550 nm and a haze value of 1.4% (table 2). The silica aerogel is synthesized from the same two alkoxy silanes set out in the specification of the claimed invention. The silica aerogel sheet has an average pore diameter of less than 15 nm (paragraph 105). The silica aerogel sheet can be synthesized from a combination of multiple silica alkoxide precursors including TMOS, TEOS, MTMS and MTES (paragraph 59). Therefore, it is not seen that a visible transmittance of at least 99% would not be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
As to claim 18, Pilon discloses a dual pane window 28 is formed with a first glass substrate 30, and a first silica aerogel sheet 32 that is paired with a second glass substrate 36 and a second silica aerogel sheet 38 and separated by a space 42 (figure 3). The first glass substrate 30 is joined to the first silica aerogel sheet 32 with a transparent adhesive 34. The second glass substrate 36 is joined to the second silica aerogel sheet 38 with a transparent adhesive 40. The silica aerogel is synthesized from tetraethoxysilane (TEOS) and methyltriethoxysilane (MTES) (paragraph 95; figure 3). The silica aerogel has a light transmittance of 98.3% at 550 nm and a haze value of 1.4% (table 2).
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Claims 3-6, 9, 20-23, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Pilon as applied to claims 1 and 18 above, and further in view of Ingale et al. (hereinafter “Ingale”), “Physico-chemical Properties of Silica aerogels prepared from TMOS/MTMS Mixture”, J. Porous Mater 2011, 18, 567-572.
Pilon discloses that a silica aerogel sheet can be synthesized from a combination of multiple silica alkoxide precursors including TMOS, TEOS, MTMS, and MTES (paragraph 59).
Pilon does not explicitly disclose the silica aerogel sheet comprising the following features:
water contact angle of at least 900;
a thermal conductivity in air of 13.5 mW/mK or less;
a flexural modulus of 6000 kPa or less; and
a specific surface area of at least 750 m2/g.
Ingale, however, discloses that the hydrophobic silica aerogel sheet prepared from a sol-gel process using a precursor mixture of TMOS and MTMS wherein a ratio of MTMS/TMOS is 0:100, 25:75, 50:50, 75:25 and 100:0 by volume (abstract). The hydrophobic silica aerogel sheet exhibit a surface area of 1037 m2/g when the precursor composition comprises TMOS:MTMS with a volume ratio of 1:1 (p 569, Surface Area).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to prepare a silica aerogel sheet using a precursor mixture comprising TMOS:MTMS with a volume ratio of 1:1 motivated by the desire to increase a surface area of the hydrophobic silica aerogel sheet to 1037 m2/g.
It appears that the silica aerogel sheet in Pilon/Ingale and the claimed invention are made of the same precursor material. The hydrophobic silica aerogel sheet is synthesized from a combination of TMOS and MTMS with a volume ratio of 1:1. The silica aerogel sheet has a light transmittance of 98.3% at 550 nm and a haze value of 1.4%. The silica aerogel sheet has an average pore diameter of less than 15 nm within the claimed range. The silica aerogel sheet has a thickness of 3 mm within the claimed range. The silica aerogel sheet has a surface area of 1037 m2/g within the claimed range.
Therefore, the examiner takes the position that the features (a) to (c) would be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
Claims 7, 8, 24 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Pilon as applied to claims 1 and 18 above, and further in view of US 2011/0223329 to Meredith et al. (hereinafter “Meredith”).
Pilon does not explicitly disclose the hydrophobic silica aerogel sheet synthesized from a precursor mixture of methyl silicate 51 and MTMS; or a precursor mixture of methyl silicate 51 and MTES.
Meredith, however, discloses an article comprising a glass substrate and silica film coated on the glass substrate (abstract; and paragraphs 74 and 75). The silica film is prepared by a sol-gel process using a precursor mixture comprising an oligomeric organosilicate and one or more of MTMS and MTES (paragraph 64). Meredith also teaches that the oligomeric organosilicate is methyl silicate 51 (paragraph 61).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to prepare a silica aerogel sheet of Pilon using a precursor mixture of an oligomeric organosilicate and one or more of MTMS and MTES disclosed in Meredith motivated by the desire to promote adhesion strength between the glass substrate and the silica aerogel sheet while providing an article with superior anti-reflection properties (see Meredith’s paragraphs 74 and 75).
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 1-6, and 10-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-20 of copending Application No. 18/638,201 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present invention are fully encompassed by those of the reference application.
The claims of the reference application do not explicitly teach the hydrophobic silica aerogel sheet having a thermal conductivity of 13.5 mW/mK or less; a flexural modulus of 6000 kPa or less; a specific area of at least 750 m2/g; and an average pore diameter of 30 nm or less.
However, it appears that the hydrophobic silica aerogel sheets of the reference application and the claimed invention are structurally the same and formed from the same precursor material comprising MTES and TMOS. Therefore, the examiner takes the position that the thermal conductivity of 13.5 mW/mK or less; the flexural modulus of 6000 kPa or less; the specific area of at least 750 m2/g; and the average pore diameter of 30 nm or less as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 7 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-20 of copending Application No. 18/638,201 (reference application) as applied to claim 1 above, in view of Meredith.
The reference application does not explicitly disclose the hydrophobic silica aerogel sheet synthesized from a precursor mixture of methyl silicate 51 and MTMS; or a precursor mixture of methyl silicate 51 and MTES.
Meredith, however, discloses an article comprising a glass substrate and silica film coated on the glass substrate (abstract; and paragraphs 74 and 75). The silica film is prepared by a sol-gel process using a precursor mixture comprising an oligomeric organosilicate and one or more of MTMS and MTES (paragraph 64). Meredith also teaches that the oligomeric organosilicate is methyl silicate 51 (paragraph 61).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to prepare a silica aerogel sheet of the reference application using a precursor mixture of an oligomeric organosilicate and one or more of MTMS and MTES disclosed in Meredith motivated by the desire to promote adhesion strength between the glass substrate and the silica aerogel sheet while providing an article with superior anti-reflection properties (see Meredith’s paragraphs 74 and 75).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6, 9, and 11-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-20 of copending Application No. 18/638,006 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present invention are fully encompassed by those of the reference application.
The claims of the reference application do not explicitly teach the hydrophobic silica aerogel sheet having a thermal conductivity of 13.5 mW/mK or less; a flexural modulus of 6000 kPa or less; a specific area of at least 750 m2/g; and an average pore diameter of 30 nm or less.
However, it appears that the hydrophobic silica aerogel sheets of the reference application and the claimed invention are structurally the same and formed from the same precursor material comprising MTMS and TMOS. Therefore, the examiner takes the position that the thermal conductivity of 13.5 mW/mK or less; the flexural modulus of 6000 kPa or less; the specific area of at least 750 m2/g and the average pore diameter of 30 nm or less as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 7 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-20 of copending Application No. 18/638,006 (reference application) as applied to claim 1 above, in view of Meredith.
The reference application does not explicitly disclose the hydrophobic silica aerogel sheet synthesized from a precursor mixture of methyl silicate 51 and MTMS; or a precursor mixture of methyl silicate 51 and MTES.
Meredith, however, discloses an article comprising a glass substrate and silica film coated on the glass substrate (abstract; and paragraphs 74 and 75). The silica film is prepared by a sol-gel process using a precursor mixture comprising an oligomeric organosilicate and one or more of MTMS and MTES (paragraph 64). Meredith also teaches that the oligomeric organosilicate is methyl silicate 51 (paragraph 61).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to prepare a silica aerogel sheet of the reference application using a precursor mixture of an oligomeric organosilicate and one or more of MTMS and MTES disclosed in Meredith motivated by the desire to promote adhesion strength between the glass substrate and the silica aerogel sheet while providing an article with superior anti-reflection properties (see Meredith’s paragraphs 74 and 75).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6, 9, and 11-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-23 of copending Application No. 18/637,818 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present invention are fully encompassed by those of the reference application.
The claims of the reference application do not explicitly teach the hydrophobic silica aerogel sheet having a thermal conductivity of 13.5 mW/mK or less; a flexural modulus of 6000 kPa or less; a specific area of at least 750 m2/g; and an average pore diameter of 30 nm or less.
However, it appears that the hydrophobic silica aerogel sheets of the reference application and the claimed invention are structurally the same and formed from the same precursor material comprising MTMS and TMOS. Therefore, the examiner takes the position that the thermal conductivity of 13.5 mW/mK or less; the flexural modulus of 6000 kPa or less; the specific area of at least 750 m2/g; and the average pore diameter of 30 nm or less as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 7 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-23 of copending Application No. 18/637,818 (reference application).as applied to claim 1 above, in view of Meredith.
The reference application does not explicitly disclose the hydrophobic silica aerogel sheet synthesized from a precursor mixture of methyl silicate 51 and MTMS; or a precursor mixture of methyl silicate 51 and MTES.
Meredith, however, discloses an article comprising a glass substrate and silica film coated on the glass substrate (abstract; and paragraphs 74 and 75). The silica film is prepared by a sol-gel process using a precursor mixture comprising an oligomeric organosilicate and one or more of MTMS and MTES (paragraph 64). Meredith also teaches that the oligomeric organosilicate is methyl silicate 51 (paragraph 61).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to prepare a silica aerogel sheet of the reference application using a precursor mixture of an oligomeric organosilicate and one or more of MTMS and MTES disclosed in Meredith motivated by the desire to promote adhesion strength between the glass substrate and the silica aerogel sheet while providing an article with superior anti-reflection properties (see Meredith’s paragraphs 74 and 75).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6, 9, and 11-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-23 of copending Application No. 18/636,421 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present invention are fully encompassed by those of the reference application.
The claims of the reference application do not explicitly teach the hydrophobic silica aerogel sheet having a thermal conductivity of 13.5 mW/mK or less; a flexural modulus of 6000 kPa or less; a specific area of at least 750 m2/g; and an average pore diameter of 30 nm or less.
However, it appears that the hydrophobic silica aerogel sheets of the reference application and the claimed invention are structurally the same and formed from the same precursor material comprising MTMS and TMOS. Therefore, the examiner takes the position that the thermal conductivity of 13.5 mW/mK or less; the flexural modulus of 6000 kPa or less; the specific area of at least 750 m2/g; and the average pore diameter of 30 nm or less as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 7 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-23 of copending Application No. 18/636,421 (reference application) as applied to claim 1 above, in view of Meredith.
The reference application does not explicitly disclose the hydrophobic silica aerogel sheet synthesized from a precursor mixture of methyl silicate 51 and MTMS; or a precursor mixture of methyl silicate 51 and MTES.
Meredith, however, discloses an article comprising a glass substrate and silica film coated on the glass substrate (abstract; and paragraphs 74 and 75). The silica film is prepared by a sol-gel process using a precursor mixture comprising an oligomeric organosilicate and one or more of MTMS and MTES (paragraph 64). Meredith also teaches that the oligomeric organosilicate is methyl silicate 51 (paragraph 61).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to prepare a silica aerogel sheet of the reference application using a precursor mixture of an oligomeric organosilicate and one or more of MTMS and MTES disclosed in Meredith motivated by the desire to promote adhesion strength between the glass substrate and the silica aerogel sheet while providing an article with superior anti-reflection properties (see Meredith’s paragraphs 74 and 75).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788