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 .
Claim Rejections - 35 USC § 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Unohara et al (GB 2279944) and in further view of Katsuro et al (US 6,110,852).
Unohara teaches a high-purity spherical silica having low hygroscopity, the spherical silica produced by providng spherical hydrous silica particles, acid treating the spherical hydrous silica; and subjecting the obtained silica to a heat treatment at a temperature of 1,050 to 1,200°C (see Page 4, ¶3 and Page 16, Ln 18-24).
Unohara does not teach that the number of water molecules desorbed at 50°C-1,000°C at a condition of 30°C/min is 10 µmol/g or less, and in which 10% mass or more of the total powder is α-quartz crystal.
However, since Unohara teaches a spherical silica that produced by a process that is substantially identical to the claimed invention including starting from an amorphous spherical silica, acid treating, and heating to a temperature within the range of 1,050 to 1,200°C. Furthermore, Katsuro teaches that calcining dry silica gel powder at temperatures from 1000 to 1300°C closes the pores in the silica and forms synthetic quartz (see Col 5, Ln 3 to 64). Therefore, one of ordinary skill in the art would reasonably expect that the low hygroscopity spherical silica in Unohara is identical to the invention including where the water desorption properties and quartz content are in ranges comparable to the claim.
Regarding claim 2, given the above one of ordinary skill in the art would reasonably expect that the low hygroscopity spherical silica in Unohara is identical to the invention including the degree of crystallization in ranges comparable to the claim.
Regarding claim 3, given the above one of ordinary skill in the art would reasonably expect that the low hygroscopity spherical silica in Unohara is identical to the invention including the content of quartz in ranges comparable to the claim.
Regarding claim 4, given the above one of ordinary skill in the art would reasonably expect that the low hygroscopity spherical silica in Unohara is identical to the invention including the content of cristobalite in ranges comparable to the claim.
Regarding claim 5, Unohara teaches a spherical silica that is high purity and substantially free of impurities such as alkaline earth metals and examples where the amount of alkaline earth metals is less than 1 ppm (see Page 20, Ln 6-11).
Regarding claim 6, Unohara teaches the spherical silica used as a filler in a resin (see Abstract).
Regarding claim 7, Unohara teaches a method for preparing high-purity spherical silica having low hygroscopity, the spherical silica produced by providing spherical hydrous silica particles, acid treating the spherical hydrous silica; and subjecting the obtained silica to a heat treatment at a temperature of 1,050 to 1,200°C (see Page 4, ¶3 and Page 16, Ln 18-24).
Claim 7 therefore differs from the process of claim 7 wherein the silica gel is heated to crystallize before treating with acid and heating at 800-1400°C.
However, it has been held that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See MPEP 2144.04.IV.C. Here, Unohara and Katsuro teach a process wherein an amorphous silica gel is crystallized after treating with an acid and where the product is identical as a low hygroscopic, quartz containing spherical silica. 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 in any order including where crystallization occurs after acid treatment of silica gel absent evidence of new or unexpected results.
Regarding claim 8, Unohara teaches a method where hydrous silica particles containing adherent water (i.e., a solvent) are heated in a first step to dry the silica particle prior to the calcination step (see Page 15, Line 10 to Page 16, Line 9). 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 in any order including where the silica gel is dried in a first step absent evidence of new or unexpected results.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A Merkling can be reached at (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL FORREST/Primary Examiner, Art Unit 1738
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