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 .
Final Rejection
Applicant's arguments filed 1/26/2026 have been fully considered but they are not persuasive for reasons detailed below.
The rejections are maintained or modified as follows:
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 5-10 and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,066,525. Although the claims at issue are not identical, they are not patentably distinct from each other as the instant claims are merely broader versions of the patented claims and Applicant has ample rationale to seek broader claim coverage.
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 of this title, 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.
Claims 1, 5-10, 22, 25-27 and 31-34 are rejected under 35 U.S.C. 103 as being unpatentable over Regnault et al. (“Regnault)(US 4,292,089) in view of Shall (US 5,635,024), El-Shenawy et al. (“Shenawy”)(NPL D7 submitted in IDS of 7/29/2021) and Yeong (KR 10-2013-010880).
Regnault (fig. 3) teaches a method for separating a lignocellulose particle fraction and a lignin particle fraction from crude lignin derived from a hydrolysis process of wood-based raw material, comprising
(re: certain elements of claims 1, 7, 27) providing the wood-based raw material including lignin, cellulose, and hemicellulose (col. 2, ln. 49+ teaching that separation process is applicable to lignocellulose materials, such as vegetable waste, wood shavings, etc., wherein Examiner notes that lignocellulose by definition comprises lignin, cellulose and hemicellulose);
subjecting the wood-based raw material to the hydrolysis process to convert the cellulose to sugars (col. 2, ln. 64-68 teaching that intent of hydrolysis process is “saccharification of the lignocellulose materials on a large scale”), the subjecting forming the
the crude lignin, the crude lignin including water-insoluble lignin residue having non-hydrolyzed lignocellulose particles and free lignin particles (fig. 3 near drum 1A and col. 3, ln. 50-col. 7, ln. 20; col. 9-col. 14, ln. 25 and col. 15 Example 2 teaching that crude lignin/plant matter undergoes acid hydrolysis in drum 1A that creates lignocellulose particle fragments—i.e., non-hydrolyzed lignocellulose particles--and, then in a next step, said fragments are treated with bubbling hydrochloric acid such that fine lignin particles—i.e., free lignin particles, are separated via flotation from lignocellulose fragments that remain in separation chambers BDa and BDb); and
separating the lignin particle fraction and the lignocellulose particle fraction from the crude lignin in more than one solid-solid separation step (Id. teaching multiple flotation solid-solid separation steps that separate particles based on size, wherein each separation step can be regarded as separating the fine lignin particle fraction and lignocellulose particle fraction);
(re: claim 10) circulating the lignocellulose particle fraction such that the lignocellulose particle fraction is combined with the starting material to form additional crude lignin (fig. 3 showing combining starting material with meter near 307 with lignocellulose fragments being formed in drum 1A);
(re: claims 31, 32) wherein the cruse lignin is in the form or a suspension;
wherein a weight particle average particle size of the crude lignin is below 1000 um (col. 8, ln. 5+ teaching that fragments of solid material are further dissolved while undergoing a size reduction to leave a fine residual particles in suspension, wherein fine particles are regarded as below 1000 um);
(re: claim 33) wherein the lignocellulose particles are recirculated back to the hydrolysis process (fig. 3 showing continuous mixing/recirculating of lignocellulose particles and addition of bubbling hydrochloric acid in each separation tank to complete hydrolysis process);
(re: claim 34) wherein the hydrolysis process includes acid hydrolysis, enzymatic hydrolysis, or a combination thereof (col. 4, ln. 14-45 teaching use of hydrochloric acid and continuous treatment of said lignocellulose particles with a concentrated acid solution).
Regnault as set forth above teaches all that is claimed except for expressly teaching
(re: certain elements of claims 1, 5) adding a stabilizing chemical and a hydrophobic chemical, wherein the stabilizing chemical is polysaccharide; and
wherein the at least one solid-solid separation steps includes application of centrifugal forces, elutriation, aggregation, flocculation, screening, or any combination thereof;
(re: claim 6) wherein the hydrophobic chemical includes diesel oil, biodiesel oil, fuel oil, bio fuel oil, kerosene biokerosene, other middle distillate fraction, or any combination thereof;
(re: claim 8) purifying the lignocellulose particle fraction in at least one purification step;
(re: claim 9) purifying the lignin particle fraction in at least one purification step;
(re: claim 22) wherein the lignin particle fraction is removed as an underflow in the more than one solid-solid separation step;
(re: claim 25) wherein the stabilizing chemical predominantly adsorbs on the lignocellulose particle fraction;
(re: claim 26) wherein the stabilizing chemical keeps the suspended lignocellulose particle fraction stable through physico-chemical interaction.
Shall, however, expressly teaches the use of stabilizing chemical agents that improve lignin separation via coagulation—i.e., stable through the separation process—and that it is well-known to implement further separation steps to purify lignin-type fractions (fig. showing additional pulverizer and screening steps wherein lignin particle is removed; col. 2-3 teaching addition of polymeric and defoaming agents as well as mineral or inorganic acids to assist with a subsequent lignin separation step, wherein said agents “causes the lignins to coagulate and float to the top…[t]here the lignins can be easily separated by screening the top …or filtering” using solid-solid separation steps such as a screen or drainage belt and, optionally, a further solid-solid separation step using a belt press or centrifuge).
Shenawy also teaches that using stabilizing chemicals/coagulants improves the efficiency of lignin separation (p. 44-46 teaching use of agents, such as polysaccharides and carboxymethyl cellulose (CMC), that function as coagulants to improve lignin separation, wherein it is logically follows that the stabilizing chemical are predominantly adsorbed by lignocellulose as lignocellulose is the primary biomass in the base reference).
Yeong further teaches that it is well-known to use hydrophobic chemicals to enhance lignin separation (p. 5-6 teaching use of kerosene to enhance lignin separation and settling tank, wherein centrifugal and filtering separation elements may be utilized; fig. 1 near 12, 14 showing further separation/purification of lignin fraction).
It would thus be obvious to one with ordinary skill in the art to modify the base reference with these prior art teachings—with a reasonable expectation of success—to arrive at the claimed invention. The rationale for this obviousness determination can be found in the prior art itself as cited above and from an analysis of the prior art teachings that demonstrates that the modification to arrive at the claimed invention would merely involve the substitution/addition of well-known elements (e.g., stabilizing agents, purifying steps or separation elements) with no change in their respective functions. Moreover, the use of prior art elements according to their known functions is a predictable variation that would yield predictable results (e.g., benefit produced by known function), and thus cannot be regarded as a non-obvious modification when the modification is already commonly implemented in the relevant prior art. See also MPEP 2143.I (teaching that simple substitution of one known element for another to obtain predictable results is known to one with ordinary skill in the art); 2144.06, 2144.07 (teaching as obvious the use of art recognized equivalences). Further, the prior art discussed and cited demonstrates the level of sophistication of one with ordinary skill in the art and that these modifications are predictable variations that would be within this skill level. Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the invention of Regnault for the reasons set forth above.
Response to Arguments
Applicant’s arguments that the prior art fails to teach the amended claim features are unpersuasive in view of the formulated prior art rejection set forth above. In particular, Applicant arguments again focus on “crude lignin” and how it is formed and attempt to distinguish the cited prior art by the amended steps of “providing wood-based raw material” and “subjecting” said material to hydrolysis. The cited prior art clearly teaches the use of “wood” and a continuous hydrolysis process and--as noted above--wood-based raw material and lignocellulose by definition include lignin, cellulose and hemicellulose. Examiner again notes that the term crude lignin is not clearly defined in the prior art or specification and thus can be reasonably be regarded as any biomass originating from wood or plant material and that Applicant’s own—now cancelled dependent claim 4---merely describes that “crude lignin is formed by hydrolysis”. Applicant now attempts to argue that crude lignin is also known as hydrolysis lignin and that it is totally or predominantly insoluble in water and that Regnault is directed to dissolved cellulose from straw. This is not persuasive as Regnault as cited above expressly teaches that the separation process is applicable to lignocellulose materials, such as vegetable waste, wood shavings, etc.—not just to straw. Further, Regnault as cited above teaches that the process is a continuous process so that the lignocellulose fragments can be fully dissolved during further hydrolysis, thus it is unclear how Applicant can argue that “non-hydrolyzed lignocellulose particles” and “free lignin particles” are not taught when the focus of Regnault is the continuous separation of the “fine lignin particle”, i.e., free lignin particles, from the lignocellulose fragments by continued hydrolysis and multiple separation stages. Applicant’s arguments related to the application of the secondary references are likewise unpersuasive the secondary references are merely relied on to teach that it is well-known to add a stabilizing chemical to improve the separation of lignin particles, for example by improving coagulation during flotation separation, and also teach that the separation step can comprise a “solid-solid” separation step, such as a screen that specifically removes lignin “solids” from other solid particles in an underflow of the screen. Consequently, as a reasonable interpretation of the prior art undermines Applicant’s argument, the claims stand rejected.
Examiner has maintained the prior art rejections, statutory rejections and drawing objections as previously stated and as modified above. Applicant's amendment necessitated any new grounds 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). The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 extension fee 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 date of this final action.
Conclusion
Any references not explicitly discussed but made of record during the prosecution of the instant application are considered helpful in understanding and establishing the state of the prior art and are thus relevant to the prosecution of the instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH C RODRIGUEZ whose telephone number is 571-272-3692 (M-F, 9 am – 6 pm, PST). The Supervisory Examiner is MICHAEL MCCULLOUGH, 571-272-7805.
Alternatively, to contact the examiner, send an E-mail communication to Joseph.Rodriguez@uspto.gov. Such E-mail communication should be in accordance with provisions of the MPEP (see e.g., 502.03 & 713.04; see also Patent Internet Usage Policy Article 5). E-mail communication must begin with a statement authorizing the E-mail communication and acknowledging that such communication is not secure and may be made of record. Please note that any communications with regards to the merits of an application will be made of record. A suggested format for such authorization is as follows: "Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me concerning any subject matter of this application by electronic mail. I understand that a copy of these communications will be made of record in the application file”.
Information regarding the status of an application may also be obtained from the Patent Center: https://patentcenter.uspto.gov/
/JOSEPH C RODRIGUEZ/Primary Examiner, Art Unit 3655
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April 2, 2026