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 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Claims 15-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 12 March 2026.
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 cited in the IDS filed 6/11/2026), 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 1-14 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 1 recites the limitation “solvent” in line 2 and “solvent” in line 6. It is therefore unclear whether the invention is limited to where the second solvent is identical to the first solvent or not. Accordingly, it is indefinite what is meant by solvent in line 7.
Claims 2-14 depend upon claim 1 and are likewise rejected.
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 7 recites the limitation "the methanol" in line 6. There is insufficient antecedent basis for this limitation in the claim.
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 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/637,885 in view of Evans et al (US 2016/0096949). Regarding instant claim 1, claim 1 of ‘885 application is considered as meeting the limitations of claim 1
,except for the fact that the ‘885 patent application uses methyltriethoxysilane and the instant claim requires methyltrimethoxysilane. However, Evans teaches a process for producing a hydrophobic aerogel comprising reacting a wet gel with a hydrophobic agent selected from a group including methyltrimethoxysilane and methyltriethoxysilane as functional equivalents for hydrophobic silylation agents (see [0128]). 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.
Regarding instant claims 2-11, the further limitations of these claims are recited in claims 2-14 of the ‘885 application.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/637,850 in view of Tabata et al (Hydrophobic silica aerogel production at KEK, Nucl. Instruments Methods Phys. Res. Sect. A Accel. Spectrometers, Detect. Assoc. Equip., 668 (2012) provided in the IDS filed on 07/02/2025) and Kim et al (US 2017/0369326). Regarding instant claim 1, claim 1 of ‘715 application is considered as meeting the limitations of claim 1, except for preparing a solution comprising ammonium hydroxide and solvent, mixing this solution with the methyltrimethoxysilane solution to prepare a solvent exchange solution and subjecting the silica wet gel to the solvent exchange solution to form a hydrophobic silica wet gel.
Regarding tetramethyl orthosilicate instead of methyl silicate 51, Tabata teaches that methyl silicate 51 and tetramethoxysilane are known equivalents as raw materials for preparing silica aerogel (see Page 65, Col 2, ¶1). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the process as claimed in claim 1 of the ‘850 application where methyl silicate 51 is substituted for tetramethyl orthosilicate as known equivalents for the same purpose as silica precursor in forming aerogel.
Regarding methyltrimethoxysilane instead of methyltriethoxysilane, Evans teaches a process for producing a hydrophobic aerogel comprising reacting a wet gel with a hydrophobic agent selected from a group including methyltrimethoxysilane and methyltriethoxysilane as functional equivalents for hydrophobic silylation agents (see [0128]). 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.
Regarding instant claims 2-14, the further limitations of these claims are recited in claims 2-14 of the ‘885 application.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/637,715 in view of Kim et al (US 2017/0369326). Regarding instant claim 1, claim 1 of ‘715 application is considered as meeting the limitations of claim 1, except for preparing a solution comprising ammonium hydroxide and solvent, mixing this solution with the methyltrimethoxysilane solution to prepare a solvent exchange solution and subjecting the silica wet gel to the solvent exchange solution to form a hydrophobic silica wet gel.
Kim teaches a method of preparing a hydrophobic silica aerogel comprising a step 1 for preparing a silica wet gel, a step 2 for surface modification comprising adding a surface modifier solution containing a surface modifier and a solvent to a wet gel and an ammonium hydroxide during the surface modification reaction as a to prepare a hydrophobic silica wet gel, and a step 3 of drying the hydrophobic silica wet gel to form a hydrophobic silica aerogel (see [0031] to [0060]). Kim further teaches where the surface modifier is methyltrimethoxysilane (see [0049]). Kim teaches a method that performs surface modification and solvent substitution in a single step and controlling the degree of hydrophobicity by adding ammonium hydroxide (see Abstract). Kim further teaches that silica aerogels having hydrophobicity prevents the absorption of moisture and prevent gel structure characteristics and physical properties from reducing, easing use in industry (see [0011]). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to add a fourth solution comprising ammonium hydroxide and solvent to the process as claimed in ‘715 to control the surface modification reaction as suggested by Kim.
Regarding instant claims 2-14, the further limitations of these claims are recited in claims 2-20 of the ‘715 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Citation of Pertinent Art
Urata et al (JP 2003/212535) teaches a method for preparing an aerogel, the method comprising: Diluting tetramethoxysilane (TMOS or tetramethylorthosilicate) with methanol; Preparing a second mixture of water and ammonia (i.e., ammonium hydroxide and water); Adding the ammonia diluted water to the TMOS and allowing the components to react to form a wet gel; Adding methyltrimethoxysilane to the wet get and allowing to stand to form a hydrophobic wet gel; Drying the wet gel to produce the dry aerogel (see Example 1).
Urata does not teach a process comprising solvent in the second solution, preparing a third solution of ammonium hydroxide and solvent, a fourth solution of methyltrimethoxysilane and diluent, preparing a solvent exchange solution by mixing the third and fourth solution and solvent, and subjecting the silica wet gel to solvent exchange solution to form a hydrophobic silica wet gel, or the total weight percentage of tetramethylorthosilicate and total weight percentage of methyltrimethoxysilane required in claim 1.
Kim et al (US 2017/0369326) teaches a method of preparing a hydrophobic silica aerogel having a tap density of 30 mg/ml to 150 mg/ml comprising a step 1 for preparing a silica wet gel, a step 2 for surface modification comprising adding a surface modifier solution containing a surface modifier and a solvent to a wet gel and an ammonium hydroxide during the surface modification reaction as a to prepare a hydrophobic silica wet gel, and a step 3 of drying the hydrophobic silica wet gel to form a hydrophobic silica aerogel (see [0031] to [0060]). Kim further teaches where the surface modifier is methyltrimethoxysilane (see [0049]). Kim teaches a method that performs surface modification and solvent substitution in a single step and controlling the degree of hydrophobicity by adding ammonium hydroxide (see Abstract). Kim further teaches that silica aerogels having hydrophobicity prevents the absorption of moisture and prevent gel structure characteristics and physical properties from reducing easing use in industry (see [0011]).
Kim does not teach a process comprising preparing a first solution by mixing tetramethylorthosilicate and solvent, preparing a second solution by mixing solvent, ammonium hydroxide and water, mixing the first and second solution to form a silica wet gel, or the total weight percentage of tetramethylorthosilicate and total weight percentage of methyltrimethoxysilane required in claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL FORREST whose telephone number is (571)270-5833. The examiner can normally be reached Monday-Friday (10AM-6PM).
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/MICHAEL FORREST/Primary Examiner, Art Unit 1738
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