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 1-11, 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Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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), 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 1-11 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 1 recites the limitation “solvent” in line 3 and “solvent” in line 7. 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 2-11 depend upon claim 1 and are likewise rejected.
Claims 4 and 5 each refer to “the solvent” in line 1 respectively. It is unclear whether solvent is intended to refer to solvent in line 3 of claim 1 or line 7 of claim 1 or both.
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.
Claim(s) 1-6, 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Yokogawa et al (JP H06135712 where citations are from the Machine Translation provided by the Office) and in further view of Kim et al (US 2017/0369326).
Yokogawa teaches a method for producing an aerogel comprising subjecting a gel material obtained from oligomers of alkoxysilane to supercritical drying, the method comprising:
Preparing a mixture of methyl silicate 51, ethanol, water, and 15N ammonia water (i.e., ammonium hydroxide) to form a reaction system;
Allowing the mixture to stand to cause gelation (i.e., forming a wet gel);
Adding ethanol to the wet gel and heating to substitute water and the like so that the solvent portion is completely replaced with alcohol;
Supercritically drying to remove the solvent to form a silica aerogel (see [0007] to [0026]).
Yokogawa does not specifically teach where the methyl silicate 51, ethanol, water, and ammonium hydroxide are mixed by first preparing a first solution from the oligomer of alkoxysilane and solvent, preparing a second solution by mixing ammonium hydroxide and water, then mixing the first solution and the second solution together.
Furthermore, Yokogawa does not teach a hydrophobic aerogel with a density of 100 to 200 mg/ml and although Yokogawa teaches adding an ethanol for solvent exchange, Yokogawa does not teach preparing a third solution of ammonium hydroxide and solvent, and preparing a fourth solution by mixing methyltrimethoxysilane and diluent wherein the methyl silicate 51, mixing the third and fourth solution to form a solvent exchange solution, subjecting the silica wet gel to the solvent exchange solution to form a hydrophobic silica wet gel, and methyltrimethoxysilane are provided in a controlled amount selected to provide a molar ratio of methyl silicate 51: methyltrimethoxy silane of greater than or equal to 0.98:1 and less than or equal to 1.43:1.
First regarding the first and second solutions, it has been held that selection of any order of mixing ingredients is prima facie obvious. See MPEP 2044.04.IV.C. Here, Yokogawa teaches mixing methyl silicate 51, ethanol, water and ammonium hydroxide to form a wet gel. It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the mixing of the methyl silicate 51, ethanol, water, and ammonium hydroxide in any order including where the methyl silicate 51 and ethanol are mixed in a first solution, the ammonium hydroxide and water are mixed in a second solution, then the first and second solutions are mixed as an obvious selection of mixing ingredients absent new and unexpected results.
Regarding the hydrophobic aerogel and hydrophobilizing treatment, Kim 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]).
It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform a process as taught by Yokogawa where the wet gel is subjected to a step for surface modification by adding a surface modifier solution and ammonium hydroxide simultaneously with the solvent exchange to produce a hydrophobic wet gel and dried to produce a hydrophobic silica aerogel as taught by Kim since it improves the resistance to absorption of moisture which reduces gel structure characteristics and physical properties as suggested by Kim.
Further regarding the density of the hydrophobic aerogel, as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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). 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 suggested by Yokogawa and Kim where the tap density is in any range overlapping with 30 to 150 mg/ml including the claimed range to obtain a hydrophobic silica aerogel suitable for Kim’s industrial uses.
Regarding the ratio of methyl silicate 51 to MTMS, Kim teaches a method where a surface modifier solution is added in an amount such that the molar ratio of the surface modifier to water glass in the water glass solution (i.e., the precursor to the silica wet gel) is in a range of 0.07 to 2 (see [0047]). Kim also teaches using the surface modifier added in an amount such that the molar ratio of the surface modifier is able to react with all silanol groups on the surface of the wet gel since silanol groups not surface modified cause condensation reaction during drying which causes the size of the pores to decrease (see [0048]). Therefore, Kim teaches that the molar ratio of the surface modifier to the silica wet gel precursor is a results effective variable on the surface modification effect and porosity of the aerogel. It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the method as taught by Yokogawa and Kim where the molar ratio of silica wet gel precursor : methyltrimethoxysilane is in any range overlapping with 0.07:1 to 2:1 as taught by Kim including the claimed ranges as a results effective variable on the surface modification of the silanol groups in the silica wet gel.
Regarding claims 2-3, 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 suggested by Yokogawa and Kim where the tap density is in any range overlapping with 30 to 150 mg/ml including the claimed range to obtain a hydrophobic silica aerogel suitable for Kim’s industrial uses. It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the method as taught by Yokogawa and Kim where the molar ratio of silica wet gel precursor : methyltrimethoxysilane is in any range overlapping with 0.07:1 to 2:1 as taught by Kim including the claimed ranges as a results effective variable on the surface modification of the silanol groups in the silica wet gel.
Regarding claim 4, Yokogawa teaches a method comprising methanol or ethanol (See [0012] and Examples).
Regarding claims 5-6, Yokogawa teaches a method comprising methanol (see [0012] and Examples).
Regarding claim 9, Yokogawa teaches a method where the shrinkage rate is 0 to 2% (see Examples and Table 2).
Regarding claim 11, Yokogawa and Kim teach a process devoid of surfactant.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Yokogawa and Kim, 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).
As applied to claim 1, Yokogawa and Kim teach the method of claim 1.
Regarding claim 7, Yokogawa teaches a method comprising aging (see [0012]). Yokogawa and Kim do 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 perform the process as taught by Yokogawa and Kim where aging is for a period of 7 days, 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 8, Yokogawa and Kim do not teach subjecting the hydrophobic wet gel to solvent exchange for a 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 solvent exchange by dipping the alcogels in alcohol (the alcogels were dipped in ethanol in order to replace the solution contained in the alcogels with pure ethanol; p. 24, col. 2, ¶ 1), which is interpreted as a solvent exchange 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 process as taught by Yokogawa and Kim comprising solvent exchange 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 dipping with pure ethanol solvent before drying is appropriate for solvent exchange.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Yokogawa and Kim, 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).
As applied to claim 1, Yokogawa and Kim teach the method of claim 1 and Yokogawa further teaches that their hydrophobic silica aerogel is transparent where a light transmittance is 96% (see [0001] and Table 1).
Regarding claim 10, Yokogawa and Kim do 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 aerogels 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 Yokogawa and Kim’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 Yokogawa 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 Yokogawa and Kim to form wet gels with high transmittance and low haze values; such enhancements would be expected to also improve the optical properties of the hydrophobized 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 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18/636,411 and in further view of Kim. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘411 patent application include all the limitations of the instant claims when viewed with Kim.
Regarding instant claim 1, the ‘411 application encompasses the first, second and third solution as well as forming a hydrophobic silica wet gel and drying to form a silica wet gel. As applied above, Kim teaches a method for preparing a hydrophobic silica aerogel comprising adding an ammonium hydroxide during a surface modification step of a silica wet gel with a methyltrimethoxysilane to control the surface modification. 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 ‘411 to control the surface modification reaction as suggested by Kim.
Furthermore, the ratio of methyl silicate 51:methyltrimethoxysilane of 0.98:1 to 1.43:1 lies within the range of 0.95:1 to 2.55:1 recited in claim 1 of the ‘411 application.
Regarding claims 2-11, limitations are further recited in claims 2-16 of the ‘411 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-11 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 Evans et al (US 2016/0096949).
Regarding instant claim 1, claim 1 of ‘975 application is considered as meeting the limitations of claim 1 the instant claim, except for the fact that the ‘975 patent uses methyltriethoxysilane and the instant claim requires methyltrimethoxysilane and the molar ratio of methyl silicate 51 : methyltriethoxysilane. 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.
Further regarding the molar ratio, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to
Regarding instant claims 2-11, the further limitations of these claims are recited in claims 2-11 of the ‘975 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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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