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 .
The Amendment filed on July 15, 2025 has been entered. The status of the claims are as follows:
Claims 1, 3, 8, 12-15 and 17 are pending.
Claims 1 and 8 have been amended.
Claims 12-14 are withdrawn as being directed towards a non-elected invention.
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 1, 3, 8, 15 and 17 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.
Claim 1 recites the limitation “the inlet of the mixer(M)” in line 22. There is insufficient antecedent basis for these limitations in the claim.
Claims 3, 8, 15 and 17 are included as they depend from claim 1.
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 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, 3, 8, 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Kurihara et al. (US 2015/0125908 A1; May 7, 2015) in view of LeHoux et al. (US 2012/0118517 A1; May 17, 2012).
Regarding claim 1, Kurihara teaches a process for treating a lignocellulosic biomass comprising:
Pretreating the biomass via cooking to obtain a pretreated substrate,
Solid/liquid separating at least a portion of the pretreated substrate obtained from step a by contacting the mixture with a mixer using a mixing fluid (corresponding to applicant’s upstream substep b1) and extraction/washing using a belt filter, or continuous filter, and a washing fluid to obtain a solid phase and a liquid phase (corresponding to applicant’s substep b2) ([0007]-[0026], [0125]-[0129]).
Kurihara further teaches recycling, or reusing, at least a portion of the liquid phase extracted from the filter as the mixing fluid at the inlet of the mixer ([0128]-[0129]).
Kurihara teaches that the solids phase is enriched in solids and the liquid phase enriched in liquids as claimed, comprising the sugars and enzymes and yeasts. Kurihara discloses that the separated liquid comprises sugary liquors and producing enzymes ([0021]-[0026]). Additionally, as Kurihara teaches the same starting material as claimed, the liquid phase would necessarily be enriched as claimed.
Kurihara further teaches that the pretreated substrate is subjected to a hydrolysis step to obtain a hydrolysate before the liquid/solid separation ([0021], [0125]).
While Kurihara teaches the process as described above, Kurihara fails to specifically teach that the solid/liquid steps are performed with a continuous mixer. However, it would have been obvious to have the separation process a continuous process using a continuous mixture so as to continually process the biomass material to result in a desired solid/liquid separation.
As stated in MPEP 2144.04: In re Dilnot, 319 F.2d 188, 138 USPQ 248 (CCPA 1963) (Claim directed to a method of producing a cementitious structure wherein a stable air foam is introduced into a slurry of cementitious material differed from the prior art only in requiring the addition of the foam to be continuous. The court held the claimed continuous operation would have been obvious in light of the batch process of the prior art.).
As stated above, Kurihara teaches that the filter is a belt filter ([0125]), which corresponds to applicant’s gauze belt filter as it is porous for the liquid to pass. Kurihara fails to teach the belt filter comprises different zones for conveying the mixture successively under partial vacuum to withdraw a liquid phase, but teaches that the washing liquid can be recovered from the recovery line and the recovered washing liquid can be further passed through the filter multiple times ([0129]).
Therefore, it would have been obvious to one of ordinary skill in the art for the belt filter of Kurihara to comprise multiple zones for withdrawing liquid.
LeHoux teaches a solid/liquid separation process for treating biomass, wherein the solid/liquid separation process comprises a filtration device with a co-current or counter-current configuration in single or multiple stages, corresponding to applicant’s zones. LeHoux further teaches that the solid/liquid separation step involved performing the extraction and washing by conveying the mixture under vacuum to separation the solid and liquid ([0044]-[0069]).
It would have been obvious to one of ordinary skill in the art to have the solid/liquid separation step of Kurihara be performed using multiple stages under vacuum as such technique is well known in the art to separating solid from liquid biomass as taught by LeHoux. Performing the extraction of Kurihara under vacuum in multiple stages, or zones, would yield the predictable result of ensuring efficient extraction by reducing the capital cost and energy requirements as taught by LeHoux ([0069]).
Further, it would have been obvious to one of ordinary skill in the art to convey the mixture of Kurihara successively on different zones under partial vacuum for the same reasons as stated above, to ensure efficient extraction by reducing the capital cost and energy requirements as taught by LeHoux ([0069]).
Kurihara teaches using a continuous belt filter as described above, but fails to specifically teach that it function counter-currentwise between the circulation of the solid/liquid mixture to be separated and the extraction/washing fluid.
The examiner notes, however, that the direction the continuous filter functions would be dependent on the exact location of the treatment zones in comparison to one another, as well as the flow of the liquid.
Kurihara teaches using a continuous filter for the same purposed as the instant invention and therefore it would have been obvious to one of ordinary skill in the art to have the filter function in either direction in order to produce the same results, or a desired solid/liquid separation.
Further, Lehoux teaches that the solid/liquid separation process comprises a filtration device with a co-current or counter-current configuration in single or multiple stages ([0069]), and therefore, as such configuration is well known in the art for processing biomass, it would have been obvious for the filter of Kurihara to function counter-current wise.
Kurihara further teaches that the operating parameters (e.g. type of filter material, number of separation passes, etc.) can be selected so that the liquid phases have a certain concentration ([0125]-[0129]).
With respect to the exact concentration, it would have been obvious to one of ordinary skill in the art to vary the operating parameters of the separation steps to achieve a desired concentration. It is well known in the art that the type of filter material and number of filter passes will affect the final concentration and therefore it is well within the ordinary skill in the art to vary the operating parameters through routine experimentation to results in a desired concentration.
Further stated stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Kurihara teaches that the filter is a belt filter ([0125]) as described above, but fails to teach that the belt filter comprises at least three zones for withdrawing a liquid phase, but teaches that the washing liquid can be recovered from the recovery line and the recovered washing liquid can be further passed through the filter multiple times ([0129]).
Therefore, it would have been obvious to one of ordinary skill in the art for the belt filter of Kurihara to comprise at least three zones for withdrawing liquid, one zone for withdrawing and reusing the liquid and another for withdrawing a final liquid product.
Further, as stated above, LeHoux teaches a solid/liquid separation process for treating biomass, wherein the solid/liquid separation process comprises a filtration device with a co-current or counter-current configuration in single or multiple stages, corresponding to applicant’s zones ([0044]-[0069]).
It would have been obvious to one of ordinary skill in the art to have the solid/liquid separation step of Kurihara be performing using multiple stages as such technique is well known in the art to separating solid from liquid biomass as taught by LeHoux. Performing the extraction of Kurihara in multiple stages would yield the predictable result of ensuring efficient extraction by reducing the capital cost and energy requirements as taught by LeHoux ([0069]).
Kurihara teaches that the washing liquid can be recovered from the recovery line and the recovered washing liquid can be further passed through (e.g. recycled) the solid/liquid separation process (which comprises the mixer) ([0129]).
Therefore, it would have been obvious to one of ordinary skill in the art for the belt filter of Kurihara to comprise at least three zones for withdrawing liquid, one zone for withdrawing and reusing the liquid and another for withdrawing a final liquid product.
With respect to the third and/or last zone, the examiner notes that Kurihara fails to specifically teach a third zone, however, such zone would have been obvious to one of ordinary skill in the art as Kurihara teaches that the recovered washing liquid can be further passed through the filter multiple times ([0129]). This is merely a duplication of parts (e.g. adding more zones) for which the liquids can be passed through and recovered, which would have been obvious to one of ordinary skill in the art based upon the teachings of Kurihara.
Additionally, as stated above, it would have been obvious to one of ordinary skill in the art to have the solid/liquid separation step of Kurihara be performing using multiple stages as such technique is well known in the art to separating solid from liquid biomass as taught by LeHoux. Performing the extraction of Kurihara in multiple stages would yield the predictable result of ensuring efficient extraction by reducing the capital cost and energy requirements as taught by LeHoux ([0069]).
Regarding claim 3, Kurihara further teaches that the pretreated substrate is subjected to a hydrolysis step to obtain a hydrolysate ([0021], [0125]). Therefore, Kurihara teaches that the pretreated substrate is subjected to at least one subsequent treatment step and the solid phase obtained in step b is also subjected to at least one subsequent treatment step.
Regarding claim 8, Kurihara further teaches that the extraction/washing fluid is heated to a temperature of at least 30 C before introduction into the filter separation apparatus ([0125]).
Regarding claim 15, Kurihara teaches that the biomass is wood, straw, waste building materials, as well as other crops ([0086]).
Regarding claim 17, as stated above, the prior art teaches that steps b1 and b2 are carried out in series in a continuous process.
Kurihara teaches that the washing liquid can be recovered from the recovery line and the recovered washing liquid can be further passed through (e.g. recycled) the solid/liquid separation process (which comprises the mixer) ([0129]) (e.g. in series in a continuous way).
Additionally, as stated above, it would have been obvious to one of ordinary skill in the art to have the solid/liquid separation step of Kurihara be performing using multiple stages as such technique is well known in the art to separating solid from liquid biomass as taught by LeHoux. Performing the extraction of Kurihara in multiple stages would yield the predictable result of ensuring efficient extraction by reducing the capital cost and energy requirements as taught by LeHoux ([0069]).
Response to Arguments
Applicant’s amendments have overcome part of the 112(b) rejection from the previous Office Action and therefore part of it has been withdrawn.
Further, the examiner notes that it is not clear when the processing steps of producing enzymes c and/or producing yeasts d occur in the claimed process. Do these steps occur after extracting the liquid phases having a concentration of 50 g of sugar/kg?
Applicant’s arguments with respect to the 103 rejection have been fully considered but were not found persuasive.
Applicant argues that the separation step of Kurihara is to obtain a hydrothermally treated liquid and a cellulose containing solid, while the separation process “b” as claimed is configured to product highly concentrated aqueous solutions of sugars having a concentrate of at least 50 g of sugar/kg.
This is not found persuasive as the separation step of Kurihara is directed towards producing a sugar liquid ([0104] and [0105]). While Kurihara may teach additional steps than the claimed process, the instant claim does not exclude additional steps from being present. Therefore, as the process of Kurihara results in a liquid phase enriched in aqueous solution of sugars that can be applied to the production of enzymes ([0121]), this argument is not found persuasive.
Additionally, Kurihara teaches that the washing liquid can be recovered from the recovery line and the recovered washing liquid can be further passed through (e.g. recycled) the solid/liquid separation process (which comprises the mixer) ([0129]).
Therefore, it would have been obvious to one of ordinary skill in the art for the belt filter of Kurihara to comprise at least three zones for withdrawing liquid, one zone for withdrawing and reusing the liquid and another for withdrawing a final liquid product.
Further, Kurihara teaches that the operating parameters (e.g. type of filter material, number of separation passes, etc.) can be selected so that the liquid phases have a certain concentration ([0120]-[0129]).
With respect to the exact concentration, it would have been obvious to one of ordinary skill in the art to vary the operating parameters of the separation steps to achieve a desired concentration. It is well known in the art that the type of filter material and number of filter passes will affect the final concentration and therefore it is well within the ordinary skill in the art to vary the operating parameters through routine experimentation to results in a desired concentration.
Further stated stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Applicant’s argument that Kurihara teaches advantages of obtaining a hydrothermally treated liquid and a cellulose containing solid, which is different than the instant invention, is not found persuasive for the same reasons as stated above. Kurihara is directed towards producing a sugar liquid ([0104] and [0105]). The claims allow for additional steps than what is recited through the use of the transitional phrase “comprising”. Kurihara renders obvious the claimed active steps as recited above (e.g. pretreating and separating). Therefore, as the process of Kurihara results in a liquid phase enriched in aqueous solution of sugars that can be applied to the production of enzymes ([0121]), applicant’s arguments are not found persuasive.
The examiner suggests making the claims clearer with respect to 112(b) issues (e.g. the exact order of the processing steps and how the enzymes and yeasts are produced in the method) and providing reasoning as to why it would not have been obvious to optimize the parameters of Kurihara to result in a liquid phase having a desired concentration, especially as Kurihara teaches producing a sugar liquid from a solid/liquid separation phase. Therefore, optimizing parameters is merely routine experimentation that is well understood in the art.
For the reasons stated above, a 103 rejection is maintained.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached on (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791