RESPONSE TO AMENDMENT
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 .
WITHDRAWN REJECTIONS
The objection to the specification and drawings made of record in the office action mailed 05/01/2026 have been withdrawn due to Applicant’s amendment and arguments in the response filed 07/31/2026.
The 35 U.S.C. §112 rejection of the claims 4, 12 and 17 made of record in the office action mailed on 05/01/2026 have been withdrawn due to Applicant’s amendment and arguments in the response filed 07/31/2026.
The 35 U.S.C. §102 rejections of claims 4, 10, 12 and 15 made of record in the office action mailed on 05/01/2026 have been withdrawn due to Applicant’s amendment and arguments in the response filed 07/31/2026.
Claim objections
Claim 26 is objected to because of the following informalities: “methysilyl” should be corrected to “methylsilyl”.
Claim 26 is objected to because of the following informalities: “transmittance” should be amended to clarify that the nanomaterial has an “optical” or “light” transmittance of 70% or more, rather than a transmittance rate of another physical property. Appropriate correction is required.
REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 102
Claims 1-3, 5-9, 11, 13-14, 16-17 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ikoma et al. (JP 2014-035045).
Citations to Ikoma et al. below refer to the machine translation document provided with the office action mailed on 05/01/2026
Regarding claim 1, Ikoma discloses a heat insulating material is formed by containing aerogel particles A, a hydrophilic adhesive 4, and an amphiphilic compound 5 having hydrophilic and hydrophobic functional groups (English abstract). The silica airgel particles A are constituted of silica fine particles having diameters of less than 10 nm that are crosslinked together via -O-Si-O- linkages. (page 1, last full paragraph, Fig. 3). The fine particles of the aerogel particles therefore meet the limitation of “nanomaterial” as claimed and linked together in a network with a “cross-linking part” having the general structure -O-Si-O- which would meet the limitation of a “polysiloxane” as presently claimed. This network can be further modified with bi, tri and tetrafunctional silanes which are subject to hydrolysis and polycondensention (page 3, 3rd and 4th paragraph), thereby forming a polysiloxane, including organic groups, which is crosslinked with the particles as claimed.
The aerogel particles are subjected to hydrophobic treatment using a silane material such as an alkylalkoxysilane or halogenated alkylsilane and are connected together in a three-dimensional network (i.e. are cross-linked as presently claimed). (page 5, paragraphs 2-4). Examples of the alkylsilane materials include dimethyldichlorosilane which would includes 2 methylsilyl groups which would be present on the aerogel particle surface. (page 5, 2nd paragraph).
Regarding claims 2-3, while not explicitly mentioned as a covalent bond, hydrolysis of alkylalkoxysilanes as the hydrophobic treatment of silica particles via solvent substitution would form a covalent bond on the silica surface. Furthermore, the crosslinking part including the bi, tri and tetrafunctional silanes introduced during the fine particle synthesis and then subject to hydrolysis and polycondensention (page 3, 3rd and 4th paragraph), would be covalently bonded directly to the nanomaterial.
Regarding claim 5, the use of the term “three-dimensional network” implies bonding in at least one location. (page 5, paragraph 4). Furthermore, the organosilane or siloxane network is bonded between the 2 particles and would therefore be bonded at one or two locations as claimed.
Regarding claim 6, Ikoma does not explicitly disclose length of the cross-linking part is smaller than ½ of an average particle diameter of the plurality of nanoparticles, but does disclose the size of the airgel particle A may be, for example, in a range where the longest length of the particle is 50 nm or more and 10 mm or less. The size of the alkylalkoxysilane or halogenated alkylsilanes which are molecules having chain lengths of the order of Angstroms would therefore be significantly smaller than even half of a 50 nm size particle.
Regarding claims 7-8, Ikoma discloses in FIGS. 2A and 2B, the airgel particle A is a silica airgel particle, and is a silica (SiO .sub.2 ) structure having pores on the order of several tens of nanometers (for example, 20 to 40 nm). The size of one silica fine particle is, for example, about 1 to 2 nm (page 2, last full paragraph). This disclosure is sufficient to anticipate the claimed ranges in view of a specific value disclosed within the broader claimed range. (see MPEP 2131.03).
Regarding claim 9, Ikoma et al. teaches that the airgel particles A may be in the form of spherical nanoparticles, flakes, or fibers. (page 5, 4th paragraph).
Regarding claim 11, Ikoma et al. teaches forming a porous film with the particles, adhesive and amphiphilic compound. (Abstract and page 5-6 bridging paragraph).
Regarding claim 13, the structure disclosed in Ikoma et al. would meet the limitations of “an antireflection film” and “a protective sheet” since the limitations do not impart additional structural features beyond those explicitly claimed.
Regarding claims 14 and 16, Ikoma et al. teaches forming a porous film with the particles, adhesive and amphiphilic compound. (Abstract and page 5-6 bridging paragraph). The hydrophobizing treatment including the alkylalkoxysilane or halogenated alkylsilane disclosed in Ikoma et al. would result in the formation of a silyl compound as claimed. (page 5, paragraphs 2-4). The structure disclosed in Ikoma et al. would meet the limitations of “an antireflection film” and “a protective sheet” since the limitations do not impart additional structural features beyond those explicitly claimed.
Regarding claim 17, silica aerogel particles used in Ikoma et al. would meet the limitation of “a material for electronic apparatus including a solar cell material”, “a semiconductor material” and “a low dielectric constant film material”.
Regarding claim 24, the hydrophobic coating material dimethyldichlorosilane would meet the limitation of a dimethylsilyl compound.
Claim Rejections - 35 USC § 103
Claims 6 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Ikoma et al. (JP 2014-035045).
In the alternative to the 35 U.S.C. §102(a)(1) rejection of claim 6 above, the claim is further rejected as follows:
Regarding claim 6, Ikoma does not explicitly disclose length of the cross-linking part is smaller than ½ of an average particle diameter of the plurality of nanoparticles, but does disclose the size of the airgel particle A may be, for example, in a range where the longest length of the particle is 50 nm or more and 10 mm or less. However, from the viewpoint of strength, handleability, and moldability (page 5). Ikoma discloses in FIGS. 2A and 2B, the airgel particle A is a silica airgel particle, and is a silica (SiO .sub.2 ) structure having pores on the order of several tens of nanometers (for example, 20 to 40 nm). The size of one silica fine particle is, for example, about 1 to 2 nm (page 2).
It would have been obvious to one of ordinary skill in the art to optimize the size of the hydrophobic agent or the network links between the silica particles such that they would be significantly smaller than ½ the size of the diameter of the silica particles as claimed.
One of ordinary skill in the art would have found it obvious to optimize the size of the size of the hydrophobic agent or the network links between the silica particles in view of the explicit disclosure that the size of the silica particles and size of the pores are result effective in producing a composite having necessary or improved properties to function as a heat insulation material (such as strength, handleability and moldability).
Regarding claim 25, Ikoma et al. teaches that the diameter of the silica fine particles having diameters of less than 10 nm, overlapping with the presently claimed range. (page 1, last full paragraph, Fig. 3). 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).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Ikoma et al. (JP 2014-035045) in view of Bertino et al. (U.S. App. Pub. No. 2019/0143290).
Ikoma et al. is relied upon as described in the rejection of claim 1, above.
Ikoma et al. teaches a heat insulating material is formed by containing aerogel particles A, a hydrophilic adhesive 4, and an amphiphilic compound 5 having hydrophilic and hydrophobic functional groups (English abstract).
However, Ikoma et al. does not teach a transmittance of 70% or more.
Bertino et al. teaches a method of making an aerogel that is crosslinked to form a composition that can have both its porosity and transmittance carefully controlled. (Abstract, par. [0051] and [0081]-[0084]). Bertino et al. teaches using the aerogel in a thermal insulation or window pane applications. (par. [0028]). Bertino et al. teaches that the aerogel can be formed into a pane having a transmittance of more than 70% (par. [0096]-[0097]).
It would have been obvious to one of ordinary skill in the art to optimize the transmittance of the aerogel containing material of Ikoma et al. to have a light transmittance of 70% or more in view of the teachings of Bertino et al.
One of ordinary skill in the art would have found it obvious to optimize the transmittance of the aerogel containing material of Ikoma et al. in order to form a product having commercial value with a high transmittance, as taught by Bertino et al. A high transmittance would yield a product which is transparent, allowing the ability to see through a window pane or insulating coating made of the aerogel containing material.
Claims 1-3, 5-9, 11, 13-14, 16-17, 24 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Bertino et al. (U.S. App. Pub. No. 2019/0143290) in view of Kern et al. (U.S. Pat. No. 3,441,525).
Regarding claim 1, Bertino et al. teaches a silica aerogel (Title and Abstract) comprising a primary particles having a size of 5 nm or less which aggregates into particles of 20-30 nm. (nanomaterial, par. [0075]) wherein the primary particles are crosslinked with a crosslinker such as an isocyanate which bonds to the polysiloxane surface of the primary particles. (see annotated Fig. 4 below).
PNG
media_image1.png
1012
896
media_image1.png
Greyscale
Furthermore, the silica contains organosilanes having di and trifunctional organosilanes during synthesis which are present on the surface and react with the crosslinking material which interacts with the polymerizable moiety of the organosilane. (par. [0064] and par. [0072], see page 9, right column: “Cross-linking typically employs derivatization of the pores using an organosilane carrying a polymerizable moiety”). The silica particles therefore also include a “cross-linking part” including a silane compound as claimed.
Bertino et al. does not disclose a methysilyl compound provided on the nanomaterial surface.
Kern et al. teaches a process for making an aqueous dispersion for use as a filler in a rubber composition (Abstract) and teaches that it is known in the art to surface modify silica aerogels with methyl-silyl containing groups to prevent agglomeration thereof. (col. 5, lines 24-35).
It would have been obvious to one of ordinary skill in the art to surface modify the silica aerogel surface to include methyl-silyl as claimed.
One of ordinary skill in the art would have found it obvious to include methylsilyl groups on the surface of the silica aerogel of Bertino et al. in order to prevent unwanted agglomeration of the aerogel material.
Regarding claims 2-3, the crosslinking is provided via covalent bond as disclosed in Bertino et al. based on the reaction of the isocyanate crosslinker with the particle surface and organosilane polymerizable moiety. (Fig. 4 and par. [0072]). The organosilane present during synthesis would be covalently bonded directly to the nanomaterial.
Regarding claim 5, as can be see in Fig. 4, the crosslinking part is bonded to the surface in one or more locations.
Regarding claim 6, Bertino et al. discloses that the primary particles having a size of 5 nm or less which aggregates into particles of 20-30 nm. (nanomaterial, par. [0075]). While not explicitly disclosing the size of the crosslinking part of the aerogel, the organic functional groups present on the particle surface (which reads on the limitation “cross-linking part” as claimed) due to the use of organosilanes would have sizes in the angstrom range (i.e. an order of magnitude smaller than nanomaterial) which would be much less than 50% of the size of the particles.
In addition, the isocyanate crosslinker as shown in Fig. 4 would approximate 1 nm in size given that the average length of a C-C bond is 1.54 Angstroms. 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).
Finally, Bertino et al. teaches minimizing the overall size of the aggregate primary particles for control of the transparency of the aerogel composition. (par. [0081]-[0084]). It would therefore have been obvious to one of ordinary skill in the art to select a crosslinking material with a small size relative to the primary particles in order to prevent excessively large aggregates to improve the transparency of the aerogel composite. This would result in a crosslinker having sizes much smaller than the primary particle diameter, including 50% or less as claimed. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 (II).
Regarding claims 7-8, Bertino et al. discloses that the primary particles having a size of 5 nm or less which aggregates into particles of 20-30 nm (nanomaterial, par. [0075]), overlapping with the presently claimed ranges.
Regarding claim 9, the nanomaterial includes a plurality of nanoparticles. (par. [0075]).
Regarding claims 11 and 14, the nanomaterial of Bertino et al. is porous and may be provided in the form of a pane (i.e. a film). (par. [0051] and Example 2).
Regarding claim 13, the pane would meet the limitation of a “protective sheet” as claimed and has anti-reflective properties (par. [0097], 2nd to last line).
Regarding claim 16, the aerogel material includes heat insulating properties. (par. [0003] and [0028]).
Regarding claim 17, the silica in the aerogel would meet the limitation of “a material for electronic apparatus including a solar cell material”, “a semiconductor material” and “a dielectric constant film material”, as claimed.
Regarding claim 24, the methyl-silyl containing groups to prevent agglomeration of the aerogel particles in Kern et al. implies at least one of a mono, di or tri-methylsilyl compound material and therefore reads on the presently claimed limitations.
Regarding claim 26, the nanomaterial of Bertino et al. is porous and may be provided in the form of a pane (i.e. a film). (par. [0051] and Example 2). Furthermore, Bertino et al. teaches that the aerogel can be formed into a pane having a transmittance of more than 70% (par. [0096]-[0097]).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Bertino et al. (U.S. App. Pub. No. 2019/0143290) in view of Kern et al. (U.S. Pat. No. 3,441,525), further in view of Ikoma et al. (JP 2014-035045).
Bertino in view of Kern et al. is relied upon as described in the rejection of claim 1, above.
Bertino in view of Kern et al. does not disclose an average particle diameter of the primary particles in the range of 9-14 nm as claimed.
Ikoma discloses a heat insulating material is formed by containing aerogel particles A, a hydrophilic adhesive 4, and an amphiphilic compound 5 having hydrophilic and hydrophobic functional groups (English abstract). The silica airgel particles A are constituted of silica fine particles having diameters of less than 10 nm that are crosslinked together via -O-Si-O- linkages. (page 1, last full paragraph, Fig. 3).
It would have been obvious to one of ordinary skill in the art to use primary particles having diameters of 10 nm or less in the aerogel composition of Bertino et al. in view of the teachings of Ikoma et al.
One of ordinary skill in the art would have found it obvious to use primary particles having diameters of 10 nm or less, overlapping with the presently claimed range, in view of the teaching in Ikoma et al. that such sizes are suitable for forming aerogel composites having insulating properties. One of ordinary skill in the art would therefore have a reasonable expectation of success in using similar particle sizes to achieve a thermally insulating material.
The selection of a known material based on its suitability for its intended purpose is prima facie obvious. MPEP 2144.07.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 07/31/2026 regarding the prior art rejections of record have been carefully considered but are deemed unpersuasive.
The claim amendments included in the response filed on 07/31/2026 are still disclosed in Ikoma et al., as explained above. While Ikoma et al. discloses the use of a hydrophilic adhesive and amphiphilic compound which do not read on the “polysiloxane” and “silane”, the structure of the aerogel includes “crosslinking parts” in the primary particles that nonetheless are taught in the reference. In addition, the “methylsilyl” compound is taught by the presence of the hydrophobic silane material in Ikoma et al.
As such, the claims remain unpatentable over the cited prior art and in view of the newly cited references of Bertino and Kern et al.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 5712721490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 10/08/2026
Prosecution Insights