Detailed Office Action
The communication dated 7/30/2024 has been entered and fully considered.
Claims 12-14, 16-18,9, 21, and 23 have been amended. Claims 15, 20, 24-27 have been canceled. Claims 1-14, 16-19, and 21-23 are pending with claims 11-14, 16-19, and 21-23 withdrawn from consideration.
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 .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 7/30/2024 is acknowledged. The traversal is on the ground(s) that Group I should include claims 12-13, 15-18, and 21-22 as amended. The applicant argues there is no burden to examine these claims and that there is a common technical feature. This is not found persuasive because for three reasons. First, the applicant has argued that the claims share the same technical feature. However, the standard is that the claims must share the same special technical feature. The treatment of claim 1 including neutralizing the alkali cellulose with acid prior to bleaching is not special as it is anticipated as per the rejection below. Secondly, under 371 restriction practice “burden” is not an element of the analysis. A corresponding special technical feature is the critical element for determining unity of invention. Finally, claims 12-13, 15-18, and 21-22 are separate groups. Group I claims 1-10 is the extraction of a pure solid product. Claims 12-13, and 16-18 is the use of the pure solid product to form a solution for feedstock into making a cellulose film, fiber, or shaped article. Claims 21-22 are is a mutually exclusive separate group as the use of the pure solid product for directly forming a film, fiber, or shaped product. The requirement is still deemed proper and is therefore made FINAL.
However, the examiner notes that claims 12-13, 16-18, and 21-22 may be rejoined upon the allowability of instant claim 1 with a special technical feature.
Claim Interpretation
The Examiner interprets the terms “hot water” and “cold water” in light of the specification definition of “Hot water is water above 200 C while cold water is water below 200 C.”
In claim 10 the Examiner interprets hot water followed by cold water to be on the same material of claim 9. That is the claim would not read on hot water treatment of polysaccharide precursor material followed by cold water washing of the solid alkaline polysaccharide containing material.
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 9 and 10 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 9 recites the limitation "the polysaccharide-containing precursor material" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. The polysaccharide-containing precursor material is mentioned in claim 5. Claim 9 should therefore depend upon claim 5.
Claim 9 recites the limitation "the solid alkaline polysaccharide-containing precursor material" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. Instant claim 1 only claims “the solid alkaline polysaccharide-containing precursor material”. It does not use the term “solid”.
Claim 10 depends upon claim 9 and is similarly rejected.
Claim Rejections - 35 USC § 102
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 1-4 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated U.S. 2007/0199669 YANG et al., hereinafter YANG.
As for claim 1, YANG discloses corn husk pieces which have been treated at alkali conditions [0142]. The alkali treated cornhusks are subject to neutralization with acetic acid [0142]. The neutralized corn husks are then bleached [0269] which separates out the lignin and other bindings between the solid cellulose fibers [0271].
As for claim 2, corn husks are a food crop waste.
As for claim 3, corn husks comprise the polysaccharide cellulose [0271].
As for claim 4, the acid is acetic acid; the bleach is hydrogen peroxide [0269].
As for claim 9, YANG discloses washing the solid alkaline polysaccharide containing material before and after neutralization [0142].
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 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2007/0199669 YANG et al., hereinafter YANG, in view of U.S. 4,435,249 MARKHAM et al., hereinafter MARKHAM or U.S. 2001/0023749 NAY et al., hereinafter NAY.
As for claim 5, YANG discloses combining the corn husk material with an alkaline solution to produce a mixture [0131, 0142]. YANG discloses making a mixture of switchgrass with alkali [0134].
YANG fails to disclose agitating during the alkali treatment. MARKHAM discloses alkali delignification-while using a mixer (agitator) in the reactor [col. 4 lines 10-17]. At the time of the invention, it would be prima facie obvious to use a mixer while pulping the biomass of YANG as suggested by MARKHAM. The person of ordinary skill in the art would be motivated to do so by MARKHAM such that there is proper mixing. The person of ordinary skill in the art would expect success as mixing during delignification would allow the alkali chemicals to be available for treatment of the biomass (without mixing the alkali will be depleted during the reaction near the biomass but higher away from the biomass; mixing will increase alkali levels near the biomass). Alternatively, NAY provides further support for a mixer during alkali delignification [0032]. NAY shows the use of a mixer with straw and alkali [0032 and Figure 3]. At the time of the invention, it would be obvious to the person of ordinary skill in the apply the mixer of NAY to improve alkali pulping treatment of YANG. The process is improved by allowing for all the chemicals to be equally distributed. The person of ordinary skill in the art would expect success as both YANG and NAY treat non-woods using alkali.
As for claim 6, YANG discloses the use of sodium hydroxide [0131].
As for claim 7, YANG discloses a time of 12 to 14 hours at 45 degrees C which falls within the claimed range for switchgrass [0134].
As for claim 8, YANG discloses the corn husks can be pretreated by segregating based upon size or cut, sheared or torn [0036, 01103].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 PM.
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, Abbas Rashid can be reached on (571)270-7457. 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.
ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748