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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-14 in the reply filed on 03/18/2026 is acknowledged. The traversal is on the ground(s) that there would not be a serious burden on the Examiner to examine the claims of both groups together. This is not found persuasive because the invention in group II requires a glass substrate and a sheet of aerogel. The method of the invention of group I does not require making sheets or adhering an aerogel sheet onto a glass substrate. Additionally, MPEP §806.05(f) highlights that a restriction between a process of making and product are proper when the product as claimed can be made by another and materially different process. The product of Group II does not require the method of making of the invention of Group I and can be made by another and materially different process.
The requirement is still deemed proper and is therefore made FINAL.
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 2, 5, 8, 9, 11 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.
Claim 2 recites the limitation "the methanol" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the methanol" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the methanol" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the methanol" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the methanol" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Allowable Subject Matter
Claims 1, 3, 4, 6, 7, 10, 12-14 are indicated as containing allowable subject matter.
Claims 2, 5, 8, 9, 11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 3, 4, 6 and 7 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.
The following is a statement of reasons for the indication of allowable subject matter: Claim 1 requires “A method of making a hydrophobic silica aerogel, comprising the steps of: preparing a first solution by mixing methyl silicate 51 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; allowing components in the mixed solution to react to form silica wet gel; preparing a third solution by mixing ammonium hydroxide and solvent; preparing a fourth solution by mixing methyltrimethoxysilane and diluent; preparing a solvent exchange solution by mixing the third solution, the fourth solution and solvent; subjecting the silica wet gel to the solvent exchange solution to form a hydrophobic silica wet gel; and drying the hydrophobic silica wet gel to form hydrophobic silica aerogel; wherein the methyl silicate 51 has a total weight percent of greater than or equal to 1.8% and less than or equal to 4% and the methyltrimethoxysilane has a total weight percent of greater than or equal to 0.5% and less than or equal to 0.8%, wherein total weight percent represents a total weight percent of a component in the first, second, third and fourth solutions.”
Yokogawa et al. US 6740416 teaches a method of making silica wet gel (Col 1, lines 28-31: an alkoxysilane is reacted to obtain a gel compound, and then drying the gel – a gel before drying is considered a wet gel) comprising the steps of:
preparing a first solution by mixing methyl silicate 51 and methanol (Col 24, lines 51-54: methyl silicate 51 (hereinafter ‘MS-51’) and methanol are mixed to form a Solution A);
preparing a second solution by mixing ammonium hydroxide and water (Col 24, lines 54- 56: water and aqueous ammonia, also known as ammonium hydroxide, are mixed along with methanol to form a Solution B);
mixing the first solution and the second solution together to form a precursor material such that the precursor material comprises a weight percent ratio of the methyl silicate 51:water of between 0.25:1 and 2:1 (Col 24, lines 56-57: solution A and B are mixed in a mass ratio of 16:17 – this corresponds to a precursor solution having a mass composition of 17.80 wt% MS- 51, 62.29 wt% methanol, 19.79 wt% water, and 0.109 wt% ammonium hydroxide.
However there is no teaching or suggestion regarding “…preparing a third solution by mixing ammonium hydroxide and solvent; preparing a fourth solution by mixing methyltrimethoxysilane and diluent; preparing a solvent exchange solution by mixing the third solution, the fourth solution and solvent; subjecting the silica wet gel to the solvent exchange solution to form a hydrophobic silica wet gel; and drying the hydrophobic silica wet gel to form hydrophobic silica aerogel; wherein the methyl silicate 51 has a total weight percent of greater than or equal to 1.8% and less than or equal to 4% and the methyltrimethoxysilane has a total weight percent of greater than or equal to 0.5% and less than or equal to 0.8%, wherein total weight percent represents a total weight percent of a component in the first, second, third and fourth solutions.” Nor would it have been obvious to do so.
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 and 10-14 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-11 of co-pending Application No. 18/637947 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions require making a hydrophobic silica aerogel by forming a silica wet gel by mixing a first solution of methyl silicate 51 and a second solution of ammonium hydroxide with water. Then combining the silica wet gel with a solvent exchange solution which was made from a third solution of ammonium hydroxide in solvent and a fourth solution of methyltrimethoxysilane.
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 SYED TAHA IQBAL whose telephone number is (571)270-5857. The examiner can normally be reached M-F; 7-5.
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/SYED T IQBAL/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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