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 .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted:
Group I, claims 1-11, drawn to a silica scaffold.
Group II, claims 12-23, drawn to a method of making a silica scaffold.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of the silica scaffold of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Parmentier (U.S. 2018/0318794 A1), which discloses a silica scaffold (Parmentier, [0001], monolithic porous material of amorphous silica) comprising: a unidirectional, micron-pore, silica honeycomb monolith (Parmentier, [0033], substantially rectilinear capillary channels parallel to one another; [0307], hexagonal cross-sections), wherein the unidirectional, micron-pore, silica honeycomb monolith has unidirectional pores having a length of greater than 20 mm (Parmentier, [0044]), a pore cross-sectional dimension of between 0.1 μm and 1.5 μm (Parmentier, [0053], [0170]), which overlaps with the claimed range of between 1 μm and 100 μm, and a pore wall thickness of between 50 nm and 1000 nm (Parmentier, [0170]).
It would have been obvious to one of ordinary skill in the art before the
effective filing date of the invention to have selected the overlapping portion of the pore cross-sectional dimensions because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
During a telephone conversation with Tolga Gulmen on December 2nd, 2025, a provisional election was made without traverse to prosecute the invention of Group I, claims 1-11. Affirmation of this election must be made by applicant in replying to this Office action. Claims 12-23 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
Claim 8 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 8 recites the broad recitation "at least 0.5%", and the claim also recites "at least 5%" which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 10 recites that the unidirectional pores have a length of at least 1 cm and depends from claim 1, which recites that the unidirectional pores have a length of at least 20 mm.
MPEP 608.01(n)III states that “The test as to whether a claim is a proper dependent claim is that it shall include every limitation of the claim from which it depends[, according to 35 U.S.C. 112(d)/4th par.,] or in other words that it shall not conceivably be infringed by anything which would not also infringe the basic claim..." See also Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 119 USPQ2d 1773, 1783 (Fed. Cir. 2016) (stating that “A dependent claim that contradicts, rather than narrows, the claim from which it depends is invalid” under 35 U.S.C. 112(d)/4th par.).
Here, claim 10 may be infringed without necessarily also infringing claim 1. For example, a monolith having unidirectional pores having a length of 10 mm (1 cm) would infringe claim 10 without infringing claim 1, which requires the unidirectional pores to be at least 20 mm.
Since claim 10 may be infringed without necessarily also infringing claim 1, claim 10 is rejected under 35 U.S.C. 112(d)/4th par. for being an improper dependent claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
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, 4-7, and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Parmentier (U.S. 2018/0318794 A1).
Regarding claim 1, Parmentier discloses a silica scaffold (Parmentier, [0001], monolithic porous material of amorphous silica) comprising: a unidirectional, micron-pore, silica honeycomb monolith (Parmentier, [0033], substantially rectilinear capillary channels parallel to one another; [0307], hexagonal cross-sections), wherein the unidirectional, micron-pore, silica honeycomb monolith has unidirectional pores having a length of greater than 20 mm (Parmentier, [0044]), a pore cross-sectional dimension of between 0.1 μm and 1.5 μm (Parmentier, [0053]) or between 50 μm and 100 μm (Parmentier, [0054], more than 50μm; [0052] less than 0.1 mm), which overlaps with the claimed range of between 1 μm and 100 μm, and a pore wall thickness of between 50 nm and 1000 nm (Parmentier, [0170]) or less than 50 μm (Parmentier, [0052], channels less than 0.1 mm; [0051], thickness less than one half of diameter), which overlaps with the claimed region of between 1 μm and 20 μm.
It would have been obvious to one of ordinary skill in the art before the
effective filing date of the invention to have selected the overlapping portion of the pore cross-sectional dimensions and pore wall thicknesses because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding claims 4-7, Parmentier renders the silica scaffold of claim 1 obvious, as discussed above, but does not explicitly teach a water-flow-through rate of 1 mL/min•cm2 or greater (claim 4), 1 mL/min•cm2 or greater with a constant head pressure of about 1.5 kPa (claim 5), 2 mL/min•cm2 or greater with a constant head pressure of about 2.7 kPa (claim 6), or 3 mL/min•cm2 with a constant head pressure of about 4.4 kPa (claim 7). However, Parmentier teaches that channel thickness should be controlled to increase the speeds of diffusion phenomena (i.e., flow rate) (Parmentier, [0177], “The thickness of the walls of the channels must be as narrow as mechanically possible to increase the speeds of diffusion phenomena.”).
As the channel wall thickness is a variable that can be modified, among others, by adjusting the water-flow-through rate, with channel wall thickness both increasing/decreasing as the water-flow-through rate is increased/decreased, the precise water-flow-through rate would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed water-flow-through rate cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the water-flow-through rate in Parmentier to obtain the desired channel wall thickness as taught by Parmentier (Parmentier, [0177]) (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). “[W]here 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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Regarding claim 9, Parmentier renders the silica scaffold of claim 1 obvious, as discussed above, wherein the unidirectional pores have an average cross-sectional aspect ratio of more than 5:1 (Parmentier, [0042], length of equal to or greater than 10 mm; [0052], diameter of less than 2 mm), which overlaps with the claimed range of between 1:1 and 10:1.
It would have been obvious to one of ordinary skill in the art before the
effective filing date of the invention to have selected the overlapping portion of the average cross-sectional aspect ratios because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding claim 10, Parmentier renders the silica scaffold of claim 1 obvious, as discussed above, wherein the unidirectional pores have a length of at least 1 cm (Parmentier, [0042], greater than or equal to 10 mm).
Regarding claim 11, Parmentier renders the silica scaffold of claim 1 obvious, as discussed above, wherein the pore cross-sectional dimension is between 50 μm and 100 μm (Parmentier, [0052], diameter of less than 0.1 mm; [0054], diameter of more than 50 μm), which overlaps with the claimed range of between 25 μm and 75 μm.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the pore cross-sectional dimensions because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Parmentier (U.S. 2018/0318794 A1), as applied to claim 1 above, and further in view of Smyth (WO 2010/066745 A2).
Regarding claim 2, Parmentier renders the silica scaffold of claim 1 obvious, as discussed above, but does not explicitly teach that the unidirectional, micron-pore-silica honeycomb monolith has a Young’s modulus of 300 kPa or greater. However, Parmentier teaches that one or more texturing additives or binders can be added to an immersion suspension to impart sufficient mechanical strength to a fiber for handling and shaping thereof (Parmentier, [0231]), and that these additives may form part of the final monolith (Parmentier, [0232]). Parmentier is concerned with the mechanical strength of the monolith (Parmentier, [0235], “The mechanical strength of the spacer may be ensured by baking allowing establishment of hydrogen bond type forces between the solid particles.”). Smyth teaches that, in silica monoliths to be used as stationary phases in chromatography, a Young’s modulus of 1 MPa is required (Smyth, Page 26, lines 19-21).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have selected, in Parmentier’s monolith, a Young’s modulus of at least 1 MPa, as Parmentier produces a monolith with mechanical properties which are sufficient for use as a stationary phase in chromatography (Parmentier, [0001], [0235]), and Smyth teaches that a Young’s modulus of at least 1 MPa is required for monoliths consistent with Parmentier’s (Smyth, Page 26, lines 19-21).
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Parmentier (U.S. 2018/0318794 A1), Smyth (WO 2010/066745 A2), Ren (WO 2021/142464 A2), Desmet (U.S. 2009/0053470 A1), and Imai (U.S. 2013/0052117 A1) are considered to be the closest prior art to the instant claims.
Regarding claim 3, Parmentier renders the silica scaffold of claim 1 obvious, as discussed above, but does not teach or suggest that the monolith has a yield strength of 100 kPa or greater. Additionally, while Parmentier does teach that the monolith has sufficient mechanical strength for use as a stationary phase in chromatography (Parmentier, [0001], [0235]), none of the other cited prior art references clarify a specific yield strength that would be obvious for Parmentier’s monolith.
Regarding claim 8, Parmentier renders the silica scaffold of claim 1 obvious, as discussed above, but neither Parmentier nor the other cited prior art references teach or suggest that the monolith when submerged in water has a specific optical transmittance at one or more ultraviolet or visible wavelengths.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached on 571-270-3590. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736