DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶/L) where # denotes the page number and ¶/L denotes the paragraph number or line number. Citation to patent literature will be in the form (Inventor # : LL) where # is the column number and LL is the line number. Citation to the pre-grant publication literature will be in the following format (Inventor # : ¶) where # denotes the page number and ¶ denotes the paragraph number.
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 .
Status of Application
The preliminary amendment dated 2/16/2024 has been received and will be entered.
Claim(s) 1-17 is/are pending.
Claim(s) 3-16 is/are currently amended.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on:
3/3/2026
2/16/2024
are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
I. Claims 3-5, 7, 8, 10, 15 - or as stated below – is/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.
Claims 3-5 contains broad and narrower ranges in the same claim. Note the “preferably…. most preferably” language. This is indefinite. MPEP 2173.05(c).
Claim 7 refers to “the combined content in chloride or fluoride or both…” Claim 1, from which Claim 7, does not refer to fluoride. The term lacks antecedent basis.
Claim 8 recites “preferably…” It is unclear if step (b2) is a required or optional step.
Claim 10 recites “preferably being selected…” It is unclear if this is a limitation or not.
Claim 15 recites “are used in…” followed by various “uses.” This doesn’t recite any actual process steps, and is indefinite. See MPEP 2173.05(q).
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.
I. Claim(s) 1-13 and 15-17 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over Luo, et al., Preparation of silica nanoparticles using silicon tetrachloride for reinforcement of PU, Chemical Engineering Journal 2012; 187: 357-366 (hereinafter “Luo at __”).
With respect to Claim 1, this claim requires “(a) hydrolyzing a silicon chloride in aqueous solution, thereby producing a gel comprising silicic acid and hydrogen chloride, wherein the silicon chloride is of the following formula (1')
RcSi(OH)dCl4-c-d (1')
with R being at each occurrence independently selected from the group consisting of alkyl groups having 1, 2, or 3 carbon atoms; and c being at each occurrence independently selected from the group consisting of 0, 1, 2, and 3; and d being at each occurrence independently selected from the group consisting of 0, 1, 2, and 3; provided that c + d <3.”
Luo teaches silicon tetrachloride, interpreted as a silicon chloride, where c = 0, d = 0. (Luo at 358, col. 1-2). 0 + 0 < 3.The silicon tetrachloride is mixed with water. (Luo at 358, col. 1-2: “Deionized water was used throughout the experiments… Alkaline solution was poured into the hydrolysis container.”). Hydrogen chloride and silicic acid are produced. See e.g. (Luo at 361, col. 2 – 362, col. 1: “The influence of reaction time on the yield of silica nanoparticles might be explained by the fact that hydrolysis of silicon tetrachloride in water is the key step of reaction process, which produced monosilicic acid and hydrochloride.”) (citations omitted).
Claim 1 further requires “(b) removing at least part of the hydrogen chloride from the gel to obtain a purified gel.” Hydrogen chloride is removed. (Luo at 358, col. 2: “The by-product HCl gas of the reaction was discharged…”).
Claim 1 further requires “(c) adjusting the pH of the purified gel to at least 9.” Luo teaches the pH of the solution reached “nearly neutrality.” (Luo at 358, col. 2). This is interpreted as “at least 9,” but to the extent this is somehow incorrect, Luo teaches adding various bases at various alkalinities. (Luo at 359, Table 1). This results in different silica particle sizes. Id., see also (Luo at 259, 3.1.1 Effect of the type of alkaline solution; 360, 3.1.2 Effect of alkaline concentration). The pH / alkalinity is a result-effective variable, optimization of which does not impart patentability. MPEP 2144.05.
Claim 1 further requires “(d) then polycondensating silicic acid to form the silica particles.” Silica particles are condensed. (Luo at 358, 2.2.2. Preparation of silica nanoparticles).
As to Claim 2, notwithstanding the issues above, a = 0. (Luo at 358, col. 1-2).
As to Claim 3, notwithstanding the issues above, a = 0. (Luo at 358, col. 1-2).
As to Claim 4, notwithstanding the issues above, a = 0. (Luo at 358, col. 1-2).
As to Claim 5, silicon tetrachloride is taught. (Luo at 358, col. 1-2).
As to Claim 6, room temperature is taught. (Luo at 358, col. 2).
As to Claim 7, notwithstanding the issues above, HCl is removed. (Luo at 358).
As to Claim 8, notwithstanding the issues above, washing with deionized water is taught. (Luo at 358, col. 2). Step (b2) is construed as optional.
As to Claim 9, following step (a), the silicic acid is not dried. (Luo at 358, col. 2).
As to Claim 10, at least sodium hydroxide is taught. (Luo at 358, Table 1).
As to Claim 11, Luo teaches adding various bases at various alkalinities. (Luo at 359, Table 1). This results in different silica particle sizes. Id., see also (Luo at 259, 3.1.1 Effect of the type of alkaline solution; 360, 3.1.2 Effect of alkaline concentration). The pH / alkalinity is a result-effective variable, optimization of which does not impart patentability. MPEP 2144.05.
As to Claim 12, Luo teaches adding various bases at various alkalinities. (Luo at 359, Table 1). This results in different silica particle sizes. Id., see also (Luo at 259, 3.1.1 Effect of the type of alkaline solution; 360, 3.1.2 Effect of alkaline concentration). The pH / alkalinity is a result-effective variable, optimization of which does not impart patentability. MPEP 2144.05.
As to Claim 13, what is understood as colloidal particles are formed. (Luo at 359, col. 2: “Fine (approximately 8 nm diameter) primary particles could be seen in a gel…”).
As to Claim 15, notwithstanding the ambiguities above, polishing is taught. (Luo at 357, col. 1).
As to Claim 16, silica particles are taught. (Luo at 360, Fig. 2).
As to Claim 17, a formulation (very broad, generic language) is taught. Id. Note also the formulations with polyurethane (PU). See e.g. (Luo “Abstract,” passim).
II. Claim(s) 14 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over Luo, et al., Preparation of silica nanoparticles using silicon tetrachloride for reinforcement of PU, Chemical Engineering Journal 2012; 187: 357-366 (hereinafter “Luo at __”) in view of:
(i) Zhang, et al., Preparation of monodisperse silica particles with controllable size and shape, J. Mater. Res. 2003; 18(3): 649-653 (hereinafter “Zhang at __”).
The discussion accompanying “Rejection I” above is incorporated herein by reference.
As to Claim 14, to the extent Luo does not teach seeding the silica growth, in a similar process, Zhang teaches seeding silica growth. (Zhang at 649, II. Experimental). One of skill in the art would be motivated to employ silica seeds “to improve monodispersidity and spheric shape and increase the size of silica particles.” (Zhang at 649, col. 2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL C. MCCRACKEN whose telephone number is (571) 272-6537. The examiner can normally be reached on Monday-Friday (9-6).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony J. Zimmer can be reached on 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736
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