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 .
Response to Arguments
Applicant’s arguments, filed on 07/14/2026, with respect to objection to the drawings and specification have been fully considered and are persuasive. The objection of the drawings and specification have been withdrawn.
Applicant’s arguments, filed on 07/14/2026, with respect to rejection of claim 1 under 35 USC 112 b/ 2nd has been fully considered and are persuasive. The rejection of the claim has been withdrawn.
Applicant’s arguments, filed on 07/14/2026, with respect to the Claims 21-22, and 25-30 rejected under 35 U.S.C. 102(a) (1) as being anticipated by Dai et al. (US 2011/0274832 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made set forth below.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
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.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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, 24-30 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by of Monastiriotis et al. (US 2014/0162911 A1) (“Monastiriotis” herein).
Claim 21.
Monastiriotis discloses an amine functionalized nanoparticle comprising: [0021]
a reaction product obtained by a first step of coating a silica nanoparticle with a trialkoxyorganosilane, 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, the trialkoxyorganosilane coated nanoparticle core and the amine functionalized group on the surface of the coated nanoparticle core as a shell, and wherein the nanoparticle has an average particle size from about 1 nm to about 1000 nm. [0021, 0033, 0036-0037, 0039, 0045-0047]
Claim 22.
Monastiriotis 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. [0045-0047]
Claim 24.
Monastiriotis discloses the nanoparticle of claim 21, wherein the silica is selected from the group consisting of colloidal silica, nanosilica, silicate nanoparticle, polyhedral oligomeric silsesquioxane nanoparticle, and silicon dioxide nanoparticle dispersion. [0027, 0035]
Claim 25.
Monastiriotis discloses the nanoparticle of claim 21, wherein the nanoparticles are free of ceramics and carbon or carbon-based materials. [0027, 0035]
Claim 26.
Monastiriotis discloses the nanoparticle of claim 21, wherein the trialkoxyorganosilane is an epoxy functional silane. [0033, 0036-0037, 0039]
Claim 27.
Monastiriotis discloses the nanoparticle of claim 21, wherein the amine functionalized group is provided by an amine-functionalized silane according to formula I or II;
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wherein: R¹, R², and R³ are independently -OMCH₃, -OH, -CH₃, or -CI 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)₂NHCH₃), -(CH₂)0NH(CH₂)pNH₂), - (CH₂)NH(CH₂)Ar)
wherein O and p are independently integers from 1 to 15. [0033, 0036-0037, 0039]
Claim 28
Monastiriotis discloses the nanoparticle of claim 27, wherein the amine-functionalized silane is (3- aminopropyl) trimethoxysilane . [0033, 0036-0037, 0039]
Claim 29.
Monastiriotis discloses the nanoparticle of claim 21, wherein the amine functionalized group is covalently bonded to the trialkoxyorganosilane coated nanoparticle. [0033, 0036-0037, 0039]
Claim 30.
Monastiriotis 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. [0033, 0036-0037, 0039, 0045-0047]
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.
Claims 21- are rejected under 35 U.S.C. 103 as being unpatentable over Dai et al. (US 2011/0274832 A1) (“Dai” herein- cited previously) and further in view of Monastiriotis et al. (US 2014/0162911 A1) (“Monastiriotis” herein).
Claim 21.
Dai discloses 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]
Dai however does not explicitly discloses the nanoparticle as a silica nanoparticle.
Monastiriotis teaches the above limitation (See paragraph 0027& 0096→ Monastiriotis teaches this limitation in that suitable forms of particulate materials include dispersions, short fibers and powders (collectively referred to herein as "particulates") of finely divided, functionalized or non-functionalized metals, metal oxides, metalloids, and ceramics e.g., silica, silicon carbide (particles, whiskers or milled whisker forms), alumina, aluminosilicates, spent cracking catalysts, bauxite, ceramics, and the like. Especially preferred inorganic materials are functionalized forms of silica or dispersions or powders of silica to which an external coupling agent has been added to enhance the bond between the added silica and the surrounding polymeric matrix of the proppant coating. Suitable examples include sand, ceramic particulates (such as aluminum oxide, silicon dioxide, titanium dioxide, zinc oxide, zirconium dioxide, cerium dioxide, manganese dioxide, iron oxide, calcium oxide, magnesium oxide, or bauxite), or also other granular materials.) for the purpose of having particulates that are firmly bound to or grafted to the polymeric coating. [0023]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Dai, with the above limitation, as taught by Monastiriotis, in order to have particulates that are firmly bound to or grafted to the polymeric coating. [0023]
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 24.
Dai discloses the nanoparticle of claim 21. Dai however does not explicitly disclose, wherein the silica is selected from the group consisting of colloidal silica, nanosilica, silicate nanoparticle, polyhedral oligomeric silsesquioxane nanoparticle, and silicon dioxide nanoparticle dispersion. (Same as claim 21)
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 or II;
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376
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wherein: R¹, R², and R³ are independently -OMCH₃, -OH, -CH₃, or -CI 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)₂NHCH₃), -(CH₂)0NH(CH₂)pNH₂), - (CH₂)NH(CH₂)Ar)
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]
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 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, Sie Liu can be reached at 571-272-5539. 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 1616 09/11/2026
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