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 .
Election/Restrictions
Applicant’s election without traverse of Group I, (drawn to a method for the simultaneous dehydration of glucose and xylose in biomass hydrolysate to furfurals; and), and the species of xylose, in the reply filed on 11/12/2024 is acknowledged.
Claims 1-2, 4-7 and 9-20 are pending of which claims 13-20 (Group II) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected invention there being no allowable generic or linking claim. The restriction requirement is still deemed proper and is made Final.
Pending claims 1-2, 4-7 and 9-12 have been examined on the merits.
Withdrawn Rejections
The rejection of claim 1-12 under 35 U.S.C. 112(b) or pre‐AIA 35 U.S.C. 112 is withdrawn in view of the claim amendment and cancellation.
New Grounds of Rejection due to claim amendment
Claim Rejections - 35 USC § 112 (New Matter)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 4-7, and 9-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The newly added limitation in claim 1 “lacking active hydrolytic enzymes” is not supported by the Application as filed. The added language does not appear in any of the original claims, specification, or drawings as asserted by applicant in the 07/14/2025 Remarks. As such, a person of ordinary skill in the art (POSITA) would not have recognized possession of “lacking active hydrolytic enzymes.” Furthermore, the specification does not disclose any properties, or experiment indicating “lacking active hydrolytic enzymes.” The absence of any mention of “lacking active hydrolytic enzymes” in the specification, drawings, and provisional application supports the conclusion that “lacking active hydrolytic enzymes” are newly added subject matter.
Maintained rejection (Clarification added following claim amendment)
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 (i.e., changing from AIA to pre-AIA ) 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office
action.
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 1-2, 4-7 and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Chheda et al. (US 10,138,218) in view of Delbecq et al. (Front Chem. 2018 May 8;6:146), and in further view of Corma et al. (Chem Rev. 2007 Jun;107(6):2411-502), Mellmer et al. (Nat Commun 10, 1132 (2019)).
Regarding claim 1-2, 4-7, Chheda (col. 3, line 15-35) teaches in step (a) to (d) a method for producing furfural from biomass feedstock, which involves hydrolyzing the biomass to produce “at least one C5-carbohydrate (xylose).” While the Chheda does not explicitly mention C6-carbohydrate, it would have been obvious to a person of ordinary skill in the art (POSITA) to recognize that the phrase “at least one C5-carbohydrate” would also include other carbohydrates, such as C6-carbohydrate (glucose). For instance, Chheda (col. 4, line 15-33) describes the presence of both C5-xylose and C6-glucose during the biomass hydrolysis process, a hydrolysate is produced which leads to the final product containing furfural. Chheda (col. 3 and 4; col. 25, Table 1) demonstrate the presence of both glucose and xylose in the hydrolysate streams, alongside their respective dehydration products, hydroxymethylfurfural (HMF) and furfural. This simultaneous detection supports the interpretation that simultaneous dehydration of C5 and C6 sugars, yielding both HMF and furfural in the final product. This is supported by Corma (page 2412, right col.) teaches “two types of sugars are present in biomass: hexoses (six-carbon sugars), of which glucose is the most common, and pentoses (five-carbon sugars), of which xylose is most common.”
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Corma (page 2424, Scheme 8) also discloses dehydration of monosaccharides or hydrolysis of vegetable biomass leads to xylose and glucose, as an example, their dehydration results in furfural and HMF, respectively.
Regarding solid/silica-alumina catalysts and acidic ion-exchange resin, catalyst, Chheda (col. 14, line 20-48) teaches the following:
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This indicates that both amorphous silica-alumina and acidic ion exchange resins are preferred catalysts for the dehydration of monosaccharides from biomass to furfurals. While Chheda does not explicitly disclose using amorphous silica-alumina and acidic ion exchange resins in sequence, given that both catalysts have been separately applied to the dehydration of xylose or glucose, the combination of these known catalysts in the claimed sequence represents a predictable variation aimed at optimized furfural or HMF yields. Therefore, it would have been obvious to a POSITA to combine these known techniques to achieve an improved furfural and HFM yield. As evidence by Mittal et al. (Energy & Fuels, 37(17), 13115–13125.) at abstract teaches “A noticeable improvement in HMF yield from dehydration of 8 wt %glucose was obtained by combining an acidic ion-exchange resin (PuroliteCT-275DR) with an amorphous silica-alumina catalyst (Davicat-3115) resulting in HMF yields of 27−33% using a homogeneous solvent system of aqueous dioxane (dioxane/water, 2:1 v/v) at 195 °C in 5 min.”
Regarding NaCl, the combined teachings of Chheda and Corma do not explicitly teach the use of NaCl in the dehydration process.
However, Delbecq (page 6; page 15) teaches that adding NaCl as a co-catalyst or additive in the xylose dehydration process can significantly improve yield of furfural. Delbecq (page 19, left col.; page 7, left col.; page 10, left col.) teaches various NaCl concentration ranging between 1.05 g (18 mM) to 2.4 g (41.0 mM) and 3.5 wt% (60 mM). Therefore, it would have been obvious to a person of ordinary skill in the art to optimize NaCl concentration between 18 to 60 mM because such concentration, as indicated by Delbecq, to improve furfural yield. For example, Delbecq (page 7, left col.) teaches that the addition of NaCl (2.4 g or 41.0 mM) to the dehydration process resulted in a significant 83% increase in furfural yield. Furthermore, Delbecq (page 18) teaches 12% xylose solution can yield a product containing 98% furfural. Therefore, it would have been obvious to a POSITA to modify the teachings of Chheda in view of the Delbecq and Corma to arrive at the claimed invention, because the combined references teach that combining NaCl and solid acid catalyst, such as acidic zeolites, can yield greater than 96% furfural under optimized condition.
Furthermore, while the combined teachings of Chheda, Delbecq and Corma does not explicitly teach the phrase “lacking active hydrolytic enzymes.” However, the references teach acid hydrolysis and dehydration of biomass-derived sugars using minerals and solid catalysts, comprising strong acid or strong organic solvents and high temperatures, thus, a POSITA would understand that active hydrolytic enzymes would not survive or function under these conditions, and therefore are not part of the process, effectively teachings “lacking active hydrolytic enzymes” by implication.
Regarding claim 9, the combined teaching of Chheda, Delbecq and Corma do not explicitly teach a mixture of 2 parts dioxane to 1 part water (vol/vol).
However, Mellmer (page 2) teaches that dioxane/water solvent (9:1 ratios) significantly increase the rate on conversion of fructose to HMF, as well as HMF yield. Given that Corma (page 2425, left col.) also teaches dioxane in a mixed solvents (water-organic) solves the problem arising from the low solubility of hexoses, this further demonstrates that dioxane/water mixture is critical for the dehydration process. While Mellmer doe not explicitly teach dioxane/ rater ratio (2:1 ratio), however Mellmer discusses the impact of varying solvent-water, at even 3:1 ratio, composition, improves dehydration yield. Therefore, it is reasonable to infer that a POSITA would consider adjusting the dioxane/water ratio to arrive at the claimed invention, because Corma and Mellmer teach dioxane/water mixture as a critical component for the dehydration process. As evidence by Mittal et al. (Energy & Fuels, 37(17), 13115–13125.) at abstract teaches “using a homogeneous solvent system of aqueous dioxane (dioxane/water, 2:1 v/v) at 195 °C in 5 min…” resulting to a more than 2-fold increase in HMF yields.
Regarding claim 10, Chedda (col. 3; left col.) teaches in step (e) the dehydration of biomass product containing C5-carbohydrate compound, including xylose, is in contact with a solid acid catalyst and the reaction is between 100°C to about 250°C.
Regarding claim 11, Delbecq (page 7, left col.) teaches “NaCl addition was proved to play the role of accelerating furfural formation rate and shortening the reaction times.” Ain addition, Chedda (col. 17, line 10-20) teaches the following:
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Regarding claim 12, Delbecq (page 10, right col.) teaches:
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This indicates that microwave technology, when use with NaCl, leads to improved yields and reaction times. It would have been obvious to a POSITA to utilize a microwave reactor with NaCl to optimize the reaction condition, thus achieving shorter reaction times and higher yields which significantly improved the reaction condition.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Argument
Applicant argues that the phrase “lacking active hydrolytic enzyme” was added in the instant claim based on the reaction conditions described in paragraphs 15, 16, FI Gs. 7 A, 7B, 8A and 8B is not persuasive. The fact that the phrase “lacking active hydrolytic enzyme” is not explicitly mentioned or described in the specification, then it lacks proper written description. The fact that harsh conditions might denature biologically active enzymes, this is not a persuasive argument for a lack of description in the specification about the enzyme presence, absence, or denaturation during the dehydration process. Therefore, it is improper to add such a phrase to the instant claims without clear support, as it introduces ambiguity about the claim scope.
Applicant argues that none of the references teach biomass hydrolysate in direct contact with a solid catalyst in a way that would indicate the biomass lack active hydrolytic enzyme. Applicant’s argument is not persuasive, because Chedda (col. 3-4 and 13-14) explicitly teaches processes where biomass or biomass hydrolysate in direct contact with solid acid catalysts, including silica-alumina catalysts, under controlled temperature and pressure. Chedda also teaches various reactor configuration including packed-bed flow-through reactors where the biomass is in contact with heterogenous solid acid catalysts, to indicate biologically active enzymes are not involved in the reaction process. Therefore, Chedda’s teachings clearly demonstrate that the biomass hydrolysate is in contact with solid acid catalysts, contrary to Applicant’s assertion.
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 PIERRE PAUL ELENISTE whose telephone number is (571)270-0589. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JAMES H ALSTRUM-ACEVEDO can be reached on (571) 272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/P.P.E./Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622
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