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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Application
Claims 1-20 are pending and presented for examination. Claims 1-11 were elected with traverse in the response dated 12 March 2026. As such claims 12-20 are withdrawn by the Examiner as they were non-elected.
The traversal is that inter alia, there is no serious search burden present. Different classifications are present as the silica aerogel method of making goes in C01B33/14 and insulating glass windows are classified elsewhere (C03C). Furthermore, the prior art of record cited infira is not drawn to an insulating glass window which further supports that there is a serious search burden present. As such, the Groups I and II are not sufficiently related that a common search would have uncovered the same groups. As such, THIS RESTRICTION REQUIREMENT IS MADE FINAL.
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.
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Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5 and 10-14 of copending application 18637885 (reference application). Although the claims are not identical they are not patentably distinct because:
Instant claim 1 recites a narrower recitation of a hydrophobic silica having a density of 100-200 mg/cc while the copending application is just to a hydrophobic silica aerogel but the general production process steps are the same outside of TMOS:MTES ratio of the copending application is 2.2-5.4:1.2-1.5 which is 1.83-4.5:1 which overlaps that instantly claimed range of 2.16:4.3-1 which his prima facie obvious (see MPEP 2144.05). Copending claims 4 and 5 also overlap instant claims 2 and 3. Instant claims 7-11 are the same as copending claims 10-14. Instant claims 4 and 5 recite that the solvent and diluent are methanol, copending claim 1 does not recite methanol is for this but there appears to be an antecedent basis issue with the copending application that suggests that copending claim 1 uses methanol for both reasons.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10-14 of copending application 18637850 (reference application). Although the claims are not identical they are not patentably distinct because:
Instant claims 1-3 and copending claim 1 differ in that instant claim 1 recites a narrower hydrophobic silica aerogel having a density of 100-200 g/cc but the copending claim is drawn merely to a generic hydrophobic silica aerogel, but the generic process steps are the same, with the exception that the copending claim 1 is drawn to a methyl silicate and the instant claim 1 a narrower TMOS, the ratio of MS:MTMS in copending 1.7-3.9:1.2-1.5 which is 1.42-3.25:1 which overlaps that range instantly claimed such that a prima facie case of obviousness exists (see MPEP 2144.05). Instant claims 4-6 like in the other DP rejections seems to be covered by the claims of the copending application as there appears to be an antecedent basis with respect to methanol as the solvent and diluent. Instant claims 7-11 are the same as copending claims 10-14.
As all applications were filed on the same day, only a one-way test of distinction need be applied (see MPEP §804(II)(B)(4)).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-14 would be allowable outside of the above double patenting rejections.
As to claim 1 (and those dependent thereon), none of the cited prior art either alone or in combination discloses a method of making a silica aerogel comprising mixing TMOS and methanol to produce a first solution; methanol, ammonium hydroxide and water to produce a second solution, mixing the two solutions together and then aging them and then adding a third solution of MTMS and methanol; and aging, wherein the amount of TMOS present in the total of the three solutions is 2.3-5.7% and MTMS is at 0.5-0.8% based on the total weight of the three solutions.
US Patent No. 5587107 to Schwertfeger et al. (hereinafter, “Schwertfeger at __”; cited by Applicants) discloses a method of making silica aerogels comprising mixing a methyl silicate such as TMOS with a second silica precursor and methanol (Schwertfeger at 2:50-60) with water and an ammonia solution (3:1-4). Schwertfeger does not disclose methanol being present in the second solution and does all of the mixtures into one masterbatch without doing it via four separate steps Furthermore, while Schwertfeger discloses changing the amount of water and TMOS there is insufficient information to determine if one of ordinary skill in the art would find it obvious to modify the TMOS amount to be in a totality of 2.3-5.7% versus the overall claimed total solution.
“Effect of methyltrimethoxysilane as a synthesis component on the hydrophobicity and some physical properties of silica aerogels” to Rao et al. (hereinafter, “Rao at __”; cited and provided by Applicants) is the closest piece of prior art and it discloses a method of making a silica aerogel via a mixed solution of 1TMOS:12MeOH:4H2O:3.6e-3NH4OH:0-1.55MTMS), at the extreme of the molar ratios, the TMOS is present at ~25 wt% and MTMS at ~0.23wt% for a ratio of ~100:1 and at 0.64:1 for 18.56% and 25.75% respectively. While Rao discloses that the bulk density increases with increasing amount of MTMS, there is no disclosure of the bulk density being between 100 and 200 mg/cc. Furthermore, Rao does not disclose that a first solution of TMOS+solvent, a second and third solution of NH4OH+water and a fourth solution of MTMS+dilutent are setup such that the first two solutiosn are mixed, the second two solutions are mixed, and solvent extraction of the two mixed solutions are performed as Rao forms a solution with all of the materials together and then forms an alcosol, solvent exchanges, and performs supercritical drying.
“Influence of molar ratios of precursor, catalyst, solvent and water on monolithicity and physical properties of TMOS silica aerogels” also to Rao et al. (hereinafter, “Rao-2), discloses very broad values for the TMOS, water, methanol, and ammonium hydroxide molar ratios, testing at the extremes of TMOS:MeOH:H2O:NH4OH yielded 1:90:18:.96 (note that no MTMS is present here) which while giving a value for TMOS of 4.86%, there is no MTMS present. Even if taken in view of the MTMS amount in the other Rao reference, at 1.55:1 MTMS:TMOS would yield 4.23% and 5.7% respectively which is higher for the MTMS amount then that instantly claimed. Furthermore, at a ratio of 0.1 the values would be 4.47% for TMOS and 0.4% for MTMS (11:1). However, at the extreme amounts given in Rao-2, the product would be undesirable as it yields a damaged silica aerogel (Rao-2 at “Abstract”), so one of ordinary skill in the art would not be motivated to modify outside of 1:1-12.99:1-9.99:0.001-0.019. Taking this value, with 0.01 MTMS would yield MTMS at 0.182% and TMOS at 20.265% (~111:1) which is again outside of that claimed range. Furthermore, Rao does not expressly state that solvent exchange is utilized and that all three solutions are admixed at once not like the instant claim where four separate solutions are prepared.
US PG Pub No. 20230286813 to Chowdury et al. (hereinafter, “Chowdury at __”) discloses a method of making a silica aerogel comprising ultimately mixing TMOS at 15.28%, methanol at 68.52%, water at 16.04%, and ammonium hydroxide at 0.16% and solvent exchanging this mixture in a methanol bath (Chowdury at [0098]), but this methanol bath does not contain ammonium hydroxide nor MTMS and adding MTMS at this point is not something that is present in the other references in such a way that one of ordinary skill in the art would be motivated to modify Chowdury to arrive at the instantly claimed invention.
US PG Pub No. 20220315431 to Zenitani et al. (hereinafter, “Zenitani at __”) discloses a method of making silica sol particles (not aerogels) by mixing TMOS at various amounts even at the lowest concentration of TMOS and the maximum value of MTMS results in a ratio of 3.84:1, there would be no motivation to utilize this particular value of Zenitani in any of the other prior art references to produce a silica aerogel, the MTMS is added to silica particles formed, not to a wet gel which then undergoes solvent exchange.
US PG Pub No. 20180112054 to Steiner et al. (hereinafter< “Steiner at __”), which is considered to be the closest piece of prior art, discloses a method of making a silica aerogel (Steiner at “Example 15” which discloses 600 mg/cc which is beyond the 100-200 mg/cc claimed) by mixing 3.389 mL of TMOS and 4.514 mL of methanol to prepare a first solution, and preparing a second solution by mixing 4.514 mL of methanol, 1.514 mL of DI water, and 0.02 mL of 15.1 M NH4OH, but no solvent exchange is performed and no third solution comprising ammonium hydroxide and solvent and a fourth solution of MTMS and diluent is prepared which is mixed together and utilized to solvent exchange with the first two solutions.
US Patent No. 6197270 to Sonoda et al., discloses a method of making a silica aerogel by mixing at once a TEOS oligomer, ethanol, water, and ammonia water (but not the TEOS+methanol+water in one solution and ammonium hydroxide+water which are mixed together, reacted and then aged), however a third solution of MTMS+methanol is not prepared though the reference discloses then hydrophobizing such in MTMS (“Example 14”, which comes from “Example 8” which prepares production of a hydrosol which is not the same as making TEOS). While Sonoda discloses a ratio of polymer:hydrophobizing agent, this is not sufficient to establish a ratio of the TEOS:MTMS as the weight of the TEOS cannot be calculated based on that ratio as the polymer is the hydrosol produced, not the TEOS.
US Patent No. 6740416 to Yokogawa et al., discloses a method of making a silica aerogel by preparing a solution of oligomer of TEOS+methanol and a solution B of ammonia water+methanol (which is considered to meet ammonium hydroxide+water) which is then mixed together and allowed to gel and age but does not expressly state adding to an MTMS solution nor the ratios claimed as 10% of the hydrophobizing agent is added in “Example 1” which is the only portion that sets out how much to add. Furthermore, the weight percentages of TEOS is too high (it is present at at least 18.35 wt.%.
US PG Pub No. 20240199835 to Chen et al., discloses MTMS/MTES to hydrophobized a silica aerogel but does not disclose values within the claimed weight percentages nor usage of two separate solutions. Chen discloses that the density is 0.25-0.45 g/cc which is above that claimed.
Conclusion
Claims 1-11 are provisionally rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD M RUMP whose telephone number is (571)270-5848. The examiner can normally be reached Monday-Thursday 06:45 AM to 04:45 PM.
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RICHARD M. RUMP
Primary Examiner
Art Unit 1759
/RICHARD M RUMP/Primary Examiner, Art Unit 1759
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