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 .
Claims 17,20-25,27-35, and 37 are under examination.
Request for Continued Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 25, 2026 has been entered.
Response to Applicants Arguments/Amendments
The amendments have altered the claimed invention. Therefore, the former art rejection is withdrawn and a new rejection put forward. Because of the claim amendment, the former 112(b) rejection is withdrawn and a new 112(b) rejection is put forward.
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.
Claims 17,20-25,27-35, and 37 are 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.
The recently added claim amendment in independent claims 17 and 31 now recites, “wherein the alkaline aqueous medium supplied to the step (A) has been heated to a temperature of 80°C 100°C or lower prior to supplied to the filtration apparatus and wherein that temperature is substantially maintained throughout the method.” It is not clear if the claimed temperature recited is meant to be 80°C,100°C, a range between 80°C to 100°C, or an even lower temperature range. The limitation appears to be incomplete. Furthermore, the phrase “the temperature is substantially maintained throughout the method” is indefinite because it is unclear if that refers to all the steps recited in the method claim, only one method step, or multiple method steps.
Claim Rejections - 35 USC § 103
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 17,20-25,27-35,37 are rejected under 35 U.S.C. 103 as being unpatentable over Borden (US 20150047629) in view of Mlayah (US 20110105737), Medoff (US 20100112242), Chauveheid (WO 1999020829), and Takao (JP2014079242)
Borden discloses a method of producing a sugar liquid, the method comprises providing at least a three-unit filtration apparatus having a first filtration unit, at least one second filtration unit, and a third filtration unit in fluid communication to facilitate opposed cyclical flow, wherein an alkaline aqueous medium flows sequentially from the third filtration unit to the second filtration unit to the first filtration unit, and the biomass material flows in an opposite direction from the first filtration unit to the second filtration unit to the third filtration unit (Figure 1; Paragraph 12; Paragraph 44); a step (A) of allowing, in the third filtration unit an alkaline aqueous medium to pass through an alkaline aqueous medium treated cellulose containing biomass obtained from step (B), resulting in an alkaline filtrate and obtaining a cellulose-containing solid component (Figure 1, Paragraph 12, Paragraph 44), a step (B) of allowing in the second filtration unit, the alkaline filtrate obtained by the step (A) to pass through an alkaline aqueous medium treated cellulose containing biomass obtained from step (C), resulting in an alkaline filtrate (Figure 1, Paragraph 12, and Paragraph 44), and step (C) allowing in the first filtration unit, the alkaline filtrate obtained by the step (B) to pass through a cellulose-containing biomass (Figure 1, Paragraph 12, and Paragraph 44), a step of hydrolyzing the cellulose-containing solid component obtained in step (A) to a yield a sugar liquid (glucose sugars in a liquid are produced by hydrolyzing solid cellulose containing biomass from the stream) (Figure 1, Abstract, Paragraph 57), a plurality of filtrate circulating portions which allows the alkaline filtrate to move from one filtration unit to the next (Paragraphs 7, 21, and 50) as in instant claims 17, 31-32
Borden teaches hydrolyzing diffuser units that can be used in order to pretreat cellulosic containing biomass materials (Figure 1). Figure 1 of Borden shows that biomass moves from one unit to the other. Borden teaches that alkaline solution and the biomass material can be circulated throughout the system, moving in opposite directions through the various units (Figure 1 and Paragraphs 44, 65-66). Borden does not teach biomass material is moved from one unit to the next with a mesh/porous belt.
Mlayah teaches that biomass can be moved during a pretreatment process using a conveyer belt which is perforated and porous (Paragraphs 41-45 of Mlayah). It would have been obvious to an artisan of ordinary skill at the time of effective filing to have used the conveyer belt of Mlayah in the process of Borden. An artisan would have been motivated to have used such a conveyer belt because it can effectively move biomass material to other units while separating the biomass from the alkaline solution present in that particular chamber (Paragraphs 41-45 of Milayah). Because the perforated belt can successfully move biomass material in the system, there would be a high expectation for success (Paragraphs 41-45 of Milayah) as in instant Claims 17, 31.
Borden does not teach grinding the biomass or breaking it down into a particular size. Medoff teaches that the biomass can initially be grinded in a dry state before treatment ((Paragraphs 100-102) It would have been obvious to an artisan of ordinary skill at the time of effective filing to have used the dry grinding method taught in Medoff. An artisan would have been motivated to have used the dry grinding method taught in Medoff because it exposes the internal fibers of the biomass material so that they can be exposed for further treatment (Paragraph 11 of Medoff). Because such a pretreatment method is able to more effectively break down biomass material, there would have been a high expectation for success) as in instant Claim17, 24, and 31.
Borden teaches that the temperature is adjusted/controlled in the actual unit where the biomass is treated. Borden does not teach that the alkaline solution is first heated and then introduced into the treatment unit with the biomass. Chauveheid teaches that previously heated alkaline liquid can be introduced into a unit containing the biomass (Page 1, last 2 paragraphs of Chauveheid). It would have been obvious to an artisan of ordinary skill at the time of effective filing to have heated alkaline liquid in another container before adding it to a reactor containing the biomass as taught by Chauveheid. An artisan would have been motivated to have applied the teachings of Chauveheid since it is an alternative way of applying heated alkaline material to biomass to degrade the biomass (Page 1, last 2 paragraphs of Chauveheid). Because Chauveheid teaches that heating alkaline liquid in a separate container and then supplying it to a reaction vessel with biomass still successfully breaks down the biomass material, there would be a high expectation for success (Page 1, last 2 paragraphs of Chauveheid) as in instant Claims 17 and 31.
Borden does not teach maintaining the alkaline solution at a specific temperature. However, Takao teaches that a specific temperature range can be maintained for the alkaline solution during the treatment process in which the temperature can be in the range of 70°C to 100°C (Paragraphs 40-41 of Takao). It would have been obvious to an artisan of ordinary skill at the time of effective filing to have maintained the temperature of the alkaline solution within a range of 70°C to 100°C since that temperature range is able to effectively break down biomass material (Paragraphs 40-41 of Takao). Because Takao teaches that keeping alkaline solutions within such a temperature range can effectively break down biomass material (Paragraphs 40-41 of Takao), there would be a high expectation for success as in instant Claims 17 and 31.
Dependent Claim taught by Borden
Borden further teaches wherein the alkaline aqueous medium supplied to step (A) and the alkaline filtrate obtained by the steps (A) and (B) are maintained substantially at the same temperature (Paragraph 53) as in instant Claim 20, Borden teaches that the alkaline filtrate has a temperature of about 100°C which can include a temperature greater or less than 100°C (Paragraph 53) as in instant Claim 21. Borden teaches that an acetic acid may be included to break down pretreatment. It would have been obvious to have added acetic acid with the alkaline solution because it would be helpful to break down cellulosic material (Paragraph 42) as in instant Claim 22. Borden teaches wherein the cellulose containing biomass supplied to the step C is a herbaceous biomass (Paragraph 85) as in instant Claim 25. Borden teaches wherein the alkaline aqueous medium and the alkaline filtrate are alkaline aqueous solutions (Paragraph 43) as in instant Claim 27. Borden teaches wherein the period of time during sequences of step A to C is about one minute to about 90 minutes (Paragraphs 51-52) as in instant Claim 28. Borden teaches that the alkaline filtrate obtained by steps A and B is allowed to pass through the cellulose containing biomass by self-weight filtration in the direction of gravity (Paragraph 66) as in instant Claim 33. Borden teaches wherein the alkaline aqueous medium is a sodium hydroxide aqueous solution or a potassium hydroxide aqueous solution (Paragraph 43) as in instant Claim 34. Borden teaches wherein step B is a step of allowing the alkaline filtrate obtained by the step B to repeatedly pass through the alkaline aqueous medium treated cellulose containing biomass obtained from step B through two or more of the least one second filtration unit arranged in series (Figure 1) as in instant Claims 35 and 37.
Dependent Claim taught by Milayah
Milayah teaches that the liquid solution used in pretreatment can be maintained at a temperature of 95-110°C (Paragraph 68) as in instant Claim 21.
Dependent Claims taught by Medoff
Medoff teaches that acetic acid may be used in a pretreatment stream (Paragraph 12 of Medoff) as in instant Claim 21. Medoff also teaches that the size of the biomass can be reduced using sieving with screens, each screen having different size apertures (Paragraph 104) of Medoff). Medoff teaches an example where the biomass can be sieved to a size of 1/8 of an inch (Paragraph 69 of Medoff) which is less than the claimed sieved size.
MPEP 2144.04 addresses changes in size.
Changes in Size/Proportion
In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package “of appreciable size and weight requiring handling by a lift truck” were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) (“mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled.” 531 F.2d at 1053, 189 USPQ at 148.).
In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
The appropriate level/aperture to sieve the cellulose containing biomass is going to be dependent upon the equipment used to carry out the pretreatment and hydrolysis operations. The size of the biomass pieces will be dependent upon the chemicals and treatments used to break down the biomass. Altering the size of the biomass material does not materially affect the structure and/or function of the biomass material. The biomass material can still be used as a substrate to make sugar liquid. Applicant failed to provide evidence of the criticality of the recited range of an aperture size of 30mm or more. Therefore, the aperture proportions listed in claim 23 would have been obvious.
Borden does not teach a precise pH to keep the alkaline solution at. However, Medoff teaches raising the pH to exceed 10 which encompasses the pH range between 10 to 12 (Paragraphs 317 and 339 of Medoff). Medoff teaches a pH range of 9-11 (Paragraph 317). It would have been obvious to an artisan of ordinary skill at the time of effective filing to have raised the pH to above 10 as taught by Medoff. An artisan would have been motivated to have raised the pH to such a level because Medoff teaches that raising the pH to over 10 followed by a subsequent lowering of the pH afterwards can help to precipitate unwanted toxins that are inhibitory to further processing (Paragraph 339 of Medoff). Because Medoff teaches that this process can produce a better quality product there would have been a high expectation for success as in instant Claim 29.
The hydrolysis operation of Borden is responsible for helping to break down the cellulose containing biomass material into sugars (Paragraph 19 of Borden). Borden does not expressly teach that enzymes are added to the hydrolysis process. Medoff teaches that hydrolysis can be accomplished by adding a group of enzymes to the cellulose containing biomass material (Paragraph 337 of Medoff). It would have been obvious to an artisan of ordinary skill in the art to have added enzymes of Medoff to further break down the biomass material in the hydrolysis operation of Borden. An artisan would have been motivated to have added such enzymes because Medoff teaches “Cellulases are a group of enzymes that act synergistically to hydrolyze cellulose. Commercially available Accellerase.RTM. 1000 enzyme complex, which contains a complex of enzymes that reduces lignocellulose biomass into sugars can be used (Paragraph 337).” There would have been a high expectation for success because Medoff teaches that the addition of such cellulases can help break down the biomass material into useful sugars in the hydrolysis operation as in instant Claim 30.
Medoff teaches that aqueous alkaline pretreatment solutions used can include sodium hydroxide and potassium hydroxide; these solutions can further break down biomass materials (Paragraph 311 of Medoff) as in instant Claim 34.
Borden teaches a diffuser (a series of pretreatment units) that is used to break down biomass materials. Borden does not teach that the cellulosic biomass material that is being broken down is transported throughout the units using a porous belt. However, an artisan would have been motivated to have used such a belt taught by Milayah because it allows for just the cellulosic biomass material to be successfully transported from one unit to the next without transporting large amounts of alkaline solutions.
Borden does not teach a physical pretreatment operation that breaks down the biomass material into smaller pieces. Medoff teaches that more interior portions of the biomass material can be available for hydrolysis and other operations such as fermentation by better exposing such interior fibrous biomass material by dry grinding and sieving. An artisan would have been motivated to have used these techniques taught by Medoff because they provide more biomass material available to be converted into sugars. An artisan would have similarly been motivated to have added the preheated alkaline aqueous medium to the process of Borden because the alkaline aqueous medium is already heated up and ready to breakdown lignocellulose biomass material as taught by Chauveheid. Furthermore, an artisan would have been motivated to have included temperature maintenance of the alkaline aqueous medium (taught in Takao) in order to ensure that the alkaline aqueous medium was kept at an optimal temperature to break biomass materials down. Given the teachings of the cited references and the level of skill of an ordinary skilled artisan at the time of applicants’ invention, it must be considered, absent evidence to the contrary, that the ordinary skilled artisan would have had a reasonable expectation of success in practicing the claimed invention.
All the claimed elements were known in the prior art, and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combinations would have yielded predictable results to one of ordinary skill in the art at the time of the invention (See KSA International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007). People of ordinary skill in the art will be high educated individuals, possessing advanced degrees, including M.D.s and Ph.D.s. They will be medical doctors, scientists, or engineers. Thus, these people most likely will be knowledgeable and well-read in the relevant literature and have the practical experience in biofuel production and fermentation reactions. Therefore, the level of ordinary skill in this art is high.
Conclusion
All claims stand rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN K VAN BUREN whose telephone number is (571)270-1025. The examiner can normally be reached M-F:9:30am-5:40pm; 9:00-10:00pm.
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, Tracy Vivlemore can be reached at 571-272-2914. 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.
LAUREN K. VAN BUREN
Examiner
Art Unit 1638
/Tracy Vivlemore/Supervisory Primary Examiner, Art Unit 1638
Prosecution Insights