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 .
DETAILED ACTION
Claims 1-24 and 26-29 are canceled. Claims 25 and 30-33 are pending. Claims 30-33 are withdrawn as being drawn to a non-elected invention. Claim 25 is under consideration in this action.
The instant claims are entitled to an effective filing date of 03/31/2020.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 25 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (nature-based product) without significantly more.
Claim 25 recites “a composition” in line 1, which is one of the statutory categories (Step 1: Yes).
Claim 25 recites a decomposition product derived from an oxidative depolymerized, peracetic-acid-treated lignin sample from corn stover, and including phenolic oligomers, with each phenolic oligomer of the phenolic oligomers having a molecular weight ranging from 200 Daltons to 34,884 Daltons, and monomeric phenolic constituents, including (i) hydroquinone, (ii) p-coumaric acid, (iii) 2,6-dimethoxyhydroquinone, (iv) syringic acid, (v) phloroglucinol, (vi) 4- hydroxybenzaldehyde, (vii) 4-hydroxyacetophenone, (viii) ferulic acid, (ix) 3-ethylphenol, and (x) 2-hydroxybenzyl alcohol; wherein the decomposition product is an oil.
The instant specification teaches the discovery of a bio-oil derived from oxidative depolymerized lignin. See [0055]. The lignin-derived monomers present within the bio-oil include (i)-(x) of instant claim 25. See table 4 and [0077]. Furthermore, the specification discloses that the bio-oil includes dimers, trimers, and/or large oligomers that have a size ranging from 200-34884 Daltons. See [0078]. Thus, the specification identifies the instantly claimed monomeric phenolic constituents and the phenolic oligomers as being present in the bio-oil derived from corn stover lignin. According to evidentiary reference Salvachu (as relied upon in the non-final action mailed 12/28/2022), in nature powerful oxidative enzymes catalyze lignin depolymerization. See the abstract on page p. 6046. Furthermore, as evidenced by PubChem (National Center for Biotechnology Information, 2026), peracetic acid can be formed naturally in the environment through a series of photochemical reactions. See section 14.2.5. Therefore, the depolymerization of corn stover lignin and peracetic-acid-treatment are natural processes that would occur without human interference. Compared to closest naturally occurring counterpart (e.g. corn stover lignin), there is no structural difference between the natural product and the instantly claimed product. Because there is no indication in the record that the instantly claimed decomposition product has a markedly different characteristic in structure, function, or other properties as compared to its natural counterpart, claim 25 is directed to a natural-product, which is a judicial exception (Step 2A Prong 1: Yes).
Claim 25 does not add any elements to the judicial exception that could integrate it into a practical application (Step 2A Prong 2: No), or amount to an inventive concept (Step 2B: No).
Accordingly, claim 25 is not patent eligible.
Response to Arguments
Applicant's arguments filed 01/27/2026 have been fully considered but they are not persuasive.
Rejection of claim 25 under 35 U.S.C. 101
Applicant argues that claim 25 is directed to a bio-oil having a phenolic content sufficient to enable the bio-oil to effectively act as an antimicrobial agent that can be implemented into lactic acid bacteria-contaminated media to inhibit the growth of one or more species of lactic acid bacteria without also inhibiting yeast growth and/or hindering alpha-amylase or glucoamylase enzymatic saccharification activity. Applicant direct supports to paragraph [0055] of the specification. See p. 5 paragraph 1 of the remarks.
This argument is not persuasive because arguments of counsel cannot take the place of factually supported objective evidence (MPEP 2145 or 716.01(c)). Instant claim 25 is drawn to an oil product. However, the amount of each monomeric phenolic constituent in the oil product is not limited, and there is no evidence of record indicating the claimed oil product possesses an antimicrobial characteristic that is markedly different compared to the natural product judicial exception.
Applicant argues that there was no attempt whatsoever to explain how or why the enzyme referred to in Salvanchu would be expected to structurally affect a lignin sample in the same fashion as peracetic acid. See p. 5 paragraph 2 of the remarks. Furthermore, Applicant asserts that the rejection should be withdrawn, because claim 25 was amended to require the lignin sample to be peracetic-acid-treated. See p. 7 paragraph 1 of the remarks.
This argument is not persuasive because claim 25 does not require the peracetic acid treatment to structurally alter the claimed lignin sample in anyway. Claim 25 recites “a decomposition product derived from an oxidative depolymerized, peracetic-acid-treated lignin sample from corn stover” in lines 2-3. As such, the claim entails a corn stover lignin sample that is derived from any oxidative depolymerization process, and separately treated by peracetic-acid in anyway. The instant specification teaches depolymerizing a lignin sample using peracetic acid (see [0010]). However, the claim does not explicitly require the peracetic acid treatment to result in the depolymerization. The evidence provided by Salvanchu indicates that oxidative enzyme lignin depolymerization is a natural process, and there is no evidence of record suggesting that naturally depolymerized corn stover lignin differs structurally compared to the claimed oil product.
Applicant argues that the Examiner has not clearly and specifically explained why independent claim 25 is ineligible for patenting as required. See the first passage on p. 7 of the remarks.
This argument is not persuasive because the rejection goes through each step of the subject matter eligibility test for products and processes (MPEP 2106). The answer to step 1 is yes, because claim 25 is directed to a composition of mater statutory category. The answer to step 2A prong 1 is yes, because the evidence of record indicates that the claim recites a natural product. The answer to step 2A prong two is no, because the claim does not recite an additional element or limitation that could integrate the natural product into a practical application. Consequently, the answer to step 2B is also no, because the claim does not set forth additional elements that necessitate analysis under step 2B.
Claim Interpretation
Claim 25 is a product-by-process claim that requires an oil decomposition product derived from an oxidative depolymerized lignin sample from corn stover that includes phenolic oligomers each of which has a molecular weight ranging from 200-34,884 Daltons and the following monomeric phenolic constituents: (i) hydroquinone, (ii) p-coumaric acid, (iii) 2,6-dimethoxyhydroquinone, (iv) syringic acid, (v) phloroglucinol, (vi) 4- hydroxybenzaldehyde, (vii) 4-hydroxyacetophenone, (viii) ferulic acid, (ix) 3-ethyphenol, and (x) 2-hydroxybenzyl alcohol.
The specification teaches carrying out an oxidative depolymerization of lignin procedure previously disclosed by Ma et al. (2016) in Peracetic Acid Depolymerization of Biorefinery Lignin for Production of Selective Monomeric Phenolic Compounds (as cited in the IDS filed 07/28/2021). Specifically, the specification teaches treating lignin with a peracetic acid (PAA) dosage of 0.8g PAA/g lignin with glacial acetic acid used to dilute the reaction mixture to 5% solid loading. Approximately 1g of lignin is utilized in each reaction mixture. The reaction occurs at 60 ˚C for one hour while being mixed every ten minutes. Once the reaction was completed, the reaction mixture was centrifuged at 4000 rpm to remove unreacted solids and the supernatant was mixed with water at a 1:4 ratio to create an aqueous phase prior to bio-oil extraction. The bio-oil was extracted from the aqueous phase by mixing ethyl acetate at a 1:1 ratio three times. The ethyl acetate fractions were combined and dried under vacuum at 60˚C for 24 hours to obtain the bio-oil, which was then dissolved in ethanol and centrifuged to remove any undissolved solids. See [0061]. The total amount of phenolic compounds present in the bio-oil are estimated via microtiter-plated Folin-Ciocalteu assay. See [0065]. Furthermore, the specification discloses that in some embodiments, the lignin sample is subjected to a peracetic acid treatment in which the lignin sample is mixed with PAA and diluted. In some embodiments, the lignin sample may be mixed with PAA at a 0.2-1g lignin/g PAA concentration with 5% solid loading (diluted with water or glacial acetic acid. The bio-oil may be extracted using ethyl acetate. See [0044].
Claim Rejections – 35 USC §102/35 USC § 103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim 25 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ma et al. (2016) in Peracetic Acid Depolymerization of Biorefinery Lignin for Production of Selective Monomeric Phenolic Compounds, with evidence from Kalinoski (2021). Controlling bacterial contamination during fuel ethanol fermentation using thermochemically depolymerized lignin bio-oils. Green Chemistry, 23(17), 6477-6489. Ma is cited in the IDS filed 07/28/2021, but the reference is provided herein with the supporting information.
When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing a nonobvious different between the claimed product and the prior art product.
Regarding claim 25, Ma teaches treating diluted acid corn stover lignin (DACSL) with peracetic acid (PAA) in an aqueous solution at different temperatures 303, 318, and 333 (i.e. 333K=59.85˚C), reaction times 30–720 min, and PAA dosages 0.2–1 g lignin/g PAA. Lignin and peracetic acid are added into an aqueous solution and mixed for 1 min prior to reaction at the selected temperature. The batch reactors are kept in a preheated incubator, 303-333 K. See the second paragraph on page 10890. Following the addition of PAA, all lignin samples are quickly dissolved within an hour of reaction at 333 and 363 K. The amount of time required to completely dissolve lignin depends on temperature and PAA dosage. Increasing reaction temperature and PAA dosage further facilitates solubilization. Furthermore, Ma teaches detecting phenolic compounds through the use of Folin-Ciocalteu reagent. See the right column on page 10885. To analyze the products mixture in detail, ethyl acetate is applied to extract the phenolic compounds from the aqueous solution (e.g. extracting an oil phase). Aqueous samples of 0.5-1 mL, depending on the concentration, are extracted with 2 mL ethyl acetate three times. See the third paragraph on page 10890. Ma suggests using glacial acetic acid as a reagent. See the first paragraph in the right column on page 10890. In the supporting information, Ma indicates that hydroquinone (4), 4-hydroxyacetophenone (5) and syringic acid (6) are present in the DACSL after a 90 min oxidation by PAA at 333 K with an Nb2O5 catalyst. See the mass spectrums for numbers 4-6 spanning pages s9-s10. Moreover, Ma suggests that oligomeric phenolic compounds are present in the ethyl acetate extracted fraction. See the first sentence in the right column on page 10888. Thus, Ma teaches producing an ethyl acetate extracted DASCL fraction from corn stover that includes phenolic monomers and oligomeric phenols.
Ma does not explicitly teach an oil.
Ma does not teach a decomposition product that includes phenolic oligomers, with each phenolic oligomer having a molecular weight ranging from 200 Daltons to 34,884 Daltons.
Ma does not teach the following phenolic constituents: (ii) p-coumaric acid, (iii) 2,6-dimethoxyhydroquinone, (v) phloroglucinol, (vi) 4-hydroxybenzaldehyde, (viii) ferulic acid, (ix) 3-ethylphenol and (x) 2-hydroxybenzyl alcohol.
MPEP §2131.01 provides guidance as to 35 U.S.C. 102 rejections over multiple references. Such rejection has been held to be proper when the extra references are cited to: (C) Show that a characteristic not disclosed in the reference is inherent.
Evidentiary reference Kalinoski teaches carrying out oxidative depolymerization following the procedures of Ma. See the last passage on page 6478. Kalinoski discloses that PAA depolymerizes lignin into monolignols by cleaving C-C and ether bonds in the lignin polymeric structure, then individual phenolics can undergo multiple schemes to form primarily hydroxylated and acidic phenolic structures. Kalinoski teaches obtaining a bio-oil comprised of hydroxylated, i.e. hydroquinone and 2,6-dimethoxyhydroquinone, and acidic, i.e. p-coumaric acid, phenolic monomers. See the left column of page 6482. Thus, Kalinoski indicates that the phenolic content of bio-oil is inherent to the depolymerization process.
One would reasonably expect the DASCL product resulting from the process of Ma to be substantially identical to the instantly claimed product, because both products are the result of PAA depolymerization of corn stover lignin. As evidenced by Kalinoski, PAA depolymerizes lignin into monolignols that can serve as precursors for hydroxylated and acidic phenolic monomers, such as p-coumaric acid. In the instant case, there are no structural differences between the instantly claimed corn stover lignin and the corn stover lignin of Ma. As such, one would reasonably expect PAA to depolymerize both lignin samples in a similar manner, as to arrive at identical or substantially identical decomposition products. MPEP 2112.01(II) states that “[w]here the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Response to Arguments
Applicant's arguments filed 01/27/2026 have been fully considered but they are not persuasive.
Rejection of claim 25 under 35 U.S.C. 102/103
Applicant argues that the claimed decomposition product in independent claim 25 and the product in Ma are derived from corn stover lignin samples produced utilizing different preparation/purification means. Accordingly, the processes by which the claimed product and the DASCL product in Ma are produced are not identical or substantially identical. Applicant argues that the instant specification, e.g. [0057]-[0058], describes subjecting corn stover to NaOH pretreatment. Whereas Ma teaches subjecting corn stover to a diluted acid pretreatment (p. 10889, last paragraph, p. S2 and fig S1). See p. 8 last paragraph of the remarks. Applicant asserts that one of ordinary skill in the art would readily appreciate that the use of distinct corn stover preparation/purification methods can affect the composition of the lignin sample obtained from the treated corn stover, and thus the decomposition product. One of ordinary skill in the art would not assume that the claimed product and the DASCL product of Ma are identical or substantially identical. See p. 9, paragraph 1 of the remarks.
This argument is not persuasive because Ma also teaches purifying crude residual lignin by diluted alkaline extraction to produce DACSL. See section 1.1.1(a) on page S2. Although Ma does not disclose which alkali was used for such purification, NaOH is generally understood to be alkaline. The instant specification, in paragraph [0058], teaches pretreating corn stover at the National Renewable Energy Laboratory using NaOH, and an enzymatic hydrolysis. Similarly, Ma teaches a pretreatment carried out in the National Renewably Energy Laboratory (see section 1.1.1(a) on page S2), and an enzymatic hydrolysis (see section 1.1.1(b) on page S2). Applicant has not pointed to evidence indicating that the structure produced by the purification method of Ma differs compared to the structure produced by the instantly disclosed purification method.
Conclusion
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 KIMBERLY C BREEN whose telephone number is (571)272-0980. The examiner can normally be reached M-Th 7:30-4:30, F 8:30-1:30 (EDT/EST).
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, LOUISE HUMPHREY can be reached at (571)272-5543. 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.
/LOUISE W HUMPHREY/Supervisory Patent Examiner, Art Unit 1657
/K.C.B./Examiner, Art Unit 1657