DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are pending in the instant application.
Priority
This application was filed on April 17, 2024.
Information Disclosure Statements
Applicants’ Information Disclosure Statements, filed on 07/02/2025, 09/03/2025, 12/11/2025, and 04/13/2026, have been considered. Please refer to Applicant’s copies of the PTO-1449 submitted herewith.
Response to Amendment
The submission of claims by Applicants’ representative Dr. Jason C. Valentine on 03/08/2021 has been entered.
Response to Restriction Requirement
Applicant’s election with traverse of Group I (claim 1-11) drawn to a to a method of making a hydrophobic silica aerogel in the reply filed on 03/12/2026 is acknowledged. Applicant traverses the restriction requirement on the ground that there would not be a serious burden on the Examiner to examine the claims of both groups together because the subject matter of Groups I and II are to be sufficiently related that a thorough search of the subject matter of one claim Group would encompass a search of the subject matter of both claim Groups. Applicant’s argument has been fully considered, but is found not persuasive. For the instant case, allowability of the method claims of Group I would have not necessarily leads to allowability of the product claims of Group II because the claimed products of Group II could be prepared by a different method from the method of Group I, and different search strategies of various databases are required to search the claims of Group I and the claims of Group II. Therefore, there would be a serious burden on the Examiner to examine the claims of both groups together. Accordingly, the restriction requirement is maintained, and made FINAL.
Status of the Claims
Claims 12-20 are withdrawn from further consideration by Examiner as being drawn to non-elected inventions under 37 CFR 1.142(b) responding to the restriction requirement. Claims 1-11 are under examination on the merits.
In addition, withdrawn claims 12-20 are not subject to rejoinder even claims 1-11 are found allowable because product claims 12-20 were not first elected for examination. The rejoinder applies only when applicant elects claims directed to the product first, and the product claims are subsequently found allowable, withdrawn process claims that depend from or otherwise require all the limitations of the allowable product claim will be considered for rejoinder. See page 4 of the restriction requirement mailed on 01/12/2026.
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 obviousness-type 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-14 of co-pending U.S. Patent Application No. 18/637,818 (“the `818 application”) published as US20250326219A1.
Although the conflicting claims are not identical, they are not patentably distinct from each other because Applicant’s claims 1-11 and claims 1-14 of the `818 application are both drawn to a method of making a hydrophobic silica aerogel, comprising the steps of: 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; 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.
The differences between present claim 1 and claim 1 of the `818 application are: 1) claim 1 of the `818 application defines “the tetramethyl orthosilicate has a total weight percent of greater than or equal to 2.3% and less than or equal to 5.5%, and the methyltrimethoxy-silane 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; while claim 1 of the present Application defines “the tetramethoxysilane and methyltrimethoxysilane are provided in a controlled amount selected to provide a molar ratio of tetramethoxysilane : methyltrimethoxysilane of greater than or equal to 3.86:1 and less than or equal to 6.11:1”. Said limitation of claim 1 of the `818 application read on the limitation of claim 1 of the present Application based on the following calculation: for claim 1 of the `818 application, the tetramethyl orthosilicate (Mw=152.22) has a total weight percent of equal to 2.3% based on the total weight is 1,000 mg is 23 mg (0.151 mmol); and the methyltrimethoxysilane (Mw=136.22) has a total weight percent of equal to 0.5% based on the total weight is 1,000 mg is 5 mg (0.037 mmol); therefore, the weight percentage of tetramethyl orthosilicate to methyltrimethoxysilane can be converted to molar ratio 0.151/0.037= 4.08, which reads on the limitation “molar ratio of tetramethoxysilane : methyltrimethoxysilane of greater than or equal to 3.86:1 and less than or equal to 6.11:1” of present claim 1. 2) In terms of the preamble limitation “a hydrophobic silica aerogel having a density of between 100 mg/cc and 200 mg/cc” of present claim 1, claim 4 of the `818 application teaches the same limitation. For the similar analysis, it can be concluded that claims 1-14 of the `818 application would have rendered claims 1-11 either anticipating double patenting or obvious double patenting.
Claims 1-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of co-pending U.S. Patent Application No. 18/636,715 (“the `715 application”) published as US20240351326A1.
Although the conflicting claims are not identical, they are not patentably distinct from each other because Applicant’s claims 1-11 and claims 1-20 of the `715 application are both drawn to a method of making a hydrophobic silica aerogel, comprising the steps of: 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; allowing components in the mixed solution to react to form silica wet gel; preparing a third solution by mixing methyltrimethoxysilane and methanol; 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.
Even though claim 1 of the `715 application does not discloses preparing a third solution by mixing ammonium hydroxide and solvent for preparing a solvent exchange solution, mixing ammonium hydroxide and solvent is disclosed in the preparing a second solution of claim 1 of the `715 application, and the difference is obvious variation for preparing the final hydrophobic silica aerogel.
In terms of the difference of “the tetramethyl orthosilicate has a total weight percent of greater than or equal to 2.3% and less than or equal to 5.7%, and the methyltrimethoxy-silane 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” of claim 1 of the `715 application, and “the tetramethoxysilane and methyltrimethoxysilane are provided in a controlled amount selected to provide a molar ratio of tetramethoxysilane : methyltrimethoxysilane of greater than or equal to 3.86:1 and less than or equal to 6.11:1” of present claim 1, the limitation of claim 1 of the `715 application can read on the limitation of present claim 1 based on the following calculation: the tetramethyl orthosilicate (Mw=152.22) has a total weight percent of equal to 2.3% based on the total weight is 1,000 mg is 23 mg (0.151 mmol); and the methyltrimethoxysilane (Mw=136.22) has a total weight percent of equal to 0.5% based on the total weight is 1,000 mg is 5 mg (0.037 mmol); therefore, the weight percentage of tetramethyl orthosilicate to methyltrimethoxysilane can be converted to molar ratio 0.151/0.037= 4.08, which reads on the limitation “molar ratio of tetramethoxysilane : methyltrimethoxysilane of greater than or equal to 3.86:1 and less than or equal to 6.11:1” of present claim 1. In terms of the preamble limitation “a hydrophobic silica aerogel having a density of between 100 mg/cc and 200 mg/cc” of present claim 1, claim 6 of the `715 application teaches the same limitation. For the similar analysis, it can be concluded that claims 1-20 of the `715 application would have rendered present claims 1-11 obvious double patenting.
Conclusions
Claims 1-11 are rejected.
Claims 12-20 are withdrawn.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/YONG L CHU/Primary Examiner, Art Unit 1731
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