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/Restrictions
Applicant’s election without traverse of Group I, claims 21-30, and species of silica: claims 23 and 24; colloidal silica: claims 23 and 24; epoxy functional silane: claim 26; and the amine-functionalized group of formula I: claims 27 and 28, in the reply filed on 04/22/2026 is acknowledged.
Specification
The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper. Applicant is required to amend the disclosure to include the material incorporated by reference, if the material is relied upon to overcome any objection, rejection, or other requirement imposed by the Office. The amendment must be accompanied by a statement executed by the applicant, or a practitioner representing the applicant, stating that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter. 37 CFR 1.57(g).
The attempt to incorporate subject matter into this application by reference to US Patent Application No. 18/300265 is ineffective because it is an unpublished application. It should be replaced by U S Patent No. 12384958.
Drawings
The drawings are objected to because Fig. 1 ANS would be difficult to read, mainly when it is reduced to print. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1 recites the limitation " the amine functionalized group " in line 8. There is insufficient antecedent basis for this limitation in the claim.
All the claims dependent of claim 1 are also rejected.
Claim Rejections - 35 USC § 102
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 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.
Claims 21-22, and 25-30 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Dai et al. (US 2011/0274832 A1) (“Dai” herein).
(Claims contain only selected species)
Claim 21.
Dai discloses, as best understood based on the indefinites above, an amine functionalized nanoparticle comprising:
a reaction product obtained by a first step of coating a nanoparticle with a trialkoxyorganosilane, [008-0012, 0038] and
thereafter covalently bonding an amine-functionalized silane to the surface of the coated nanoparticle, wherein the reaction product has a core-shell nanoparticle morphology comprising, [0008-0012, 0057-0058]
the trialkoxyorganosilane coated nanoparticle core [0012-0013] and
the amine functionalized group on the surface of the coated nanoparticle core as a shell, ,0012-0013, 0018-0019] and
wherein the nanoparticle has an average particle size from about 1 nm to about 1000 nm. [0034, 0039]
Claim 22.
Dai discloses the nanoparticle of claim 21, wherein the nanoparticle has an average particle size from about 1 nm to about 500 nm, or from about 1 nm to about 200 nm. [0034, 0039]
Claim 25.
Dai discloses the nanoparticle of claim 21, wherein the nanoparticles are free of ceramics and carbon or carbon-based materials. [0010-0011]
Claim 26.
Dai discloses the nanoparticle of claim 21, wherein the trialkoxyorganosilane is an epoxy functional silane. [0012-0013, 0038]
Claim 27.
Dai discloses the nanoparticle of claim 21, wherein the amine functionalized group is provided by an amine-functionalized silane according to formula I
PNG
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122
168
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Greyscale
wherein: R¹, R², and R³ are independently -OMCH₃, -OH, -CH₃, or -Cl and
wherein M is absent, -(CH₂)m- , or -(CH₂Y)n-, wherein m is an integer from 1 to 5, n is an integer from 1 to 5,
wherein Y is O, N, or S; and R⁴ is -CH₂, or a substituted or an unsubstituted, linear or branched C2-C20 alkyl group, or -(Ar)-; R⁵ is absent or H; and R⁶ is -CH₃, a substituted or an unsubstituted, linear or branched C2-C20 alkyl group or a primary, secondary, tertiary or quaternary alkyl amine, -(Ar)- , =(CNH₂NH₂), -((CH₂)₀NH₂), -((CH₂)₀NHCH₃), -((CH₂)ôNH(CH₂)pNH₂), - ((CH₂)₀NH(CH₂)₀Ar),
wherein o and p are independently integers from 1 to 15. [008-0013, 0038]
Claim 28.
Dai discloses the nanoparticle of claim 27, wherein the amine-functionalized silane is (3-aminopropyl) trimethoxysilane [0012-0013, 0038]
Claim 29.
Dai discloses the nanoparticle of claim 21, wherein the amine functionalized group is covalently bonded to the trialkoxyorganosilane coated nanoparticle.[0012-0013, 0038, 0057]
Claim 30.
Dai discloses the nanoparticle of claim 21, wherein the molar ratio of the trialkoxyorganosilane to the amine-functionalized silane is about 1:1 to about 100:1 or about 1:1 to about 20:1, and the mass ratio of the trialkoxyorganosilane coated nanoparticle core to the amine-functionalized silane on the surface of the coated nanoparticle is about 1:1 to about 100:1 or about 1:1 to about 40:1. [0057-0058]
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 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.
Claims 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Dai as applied to claim 21 above, and further in view of Saresh et al. (US 2019/0299184 A1) (“Saresh” herein).
Claim 23.
Day discloses the nanoparticle of claim 21. Dai however does not explicitly disclose, wherein the nanoparticles are selected from silica nanoparticles.
Saresh teaches the above limitation. (See paragraphs 0006 & 0031 →Saresh teaches this limitation in that A composition of matter includes a liquid and nanoparticles suspended in the liquid. The nanoparticles each include silica, alumina. Commercially available colloidal silica nanoparticles were dispersed in simulated seawater and maintained at temperatures of 70° C. and 80° C.) for the purpose of having nanoparticles used to form suspensions or colloids. [0003, abstract]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention do modify the method of Dai, with the above limitation, as taught by Saresh, in order to have maintaining suspensions of nanoparticles.
Claim 24.
Day discloses the nanoparticle of claim 23. Day however does not explicitly disclose, wherein the silica is selected from the group consisting of colloidal silica. (Same as claim 22)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Salla et al. (US 2016/0376490 A1) Functionalized Nanoparticles As Crosslinking Agents For Sealant Application teaches A variety of methods and compositions are disclosed, including, in one embodiment, present disclosure relates to treatment of subterranean formations and, in specific examples, to sealant compositions that may be used for creating fluid flow preventing barriers in a subterranean formation. A method may comprise reacting components comprising functionalized silica nanoparticles and a crosslinkable component in a subterranean formation to create a barrier in the subterranean formation, wherein the functionalized silica nanoparticles comprise at least one functional group selected from the group consisting of amino groups, thiol groups, and combinations thereof, Tour et al. (US 2015/0050741 A1) TRANSPORTERS OF OIL SENSORS FOR DOWNHOLE HYDROCARBON DETECTION teaches Various embodiments of the present disclosure pertain to nanocomposites for detecting hydrocarbons in a geological structure. In some embodiments, the nanocomposites include: a core particle; a polymer associated with the core particle; a sulfur-based moiety associated with the polymer; and a releasable probe molecule associated with the core particle, where the releasable probe molecule is releasable from the core particle upon exposure to hydrocarbons. Additional embodiments of the present disclosure pertain to methods of detecting hydrocarbons in a geological structure by utilizing the nanocomposites of the present disclosure, and Chen et al. (US 2013/0259808 A1) MULTIFUNCTIONAL NANOPARTICLES teaches Multifunctional nanoparticles can include two or more different populations of nanocrystals that impart a combination of properties arising from the constituent populations in a single, multifunctional nanoparticle.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 571-272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 05/12/2026
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