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 with traverse of Group I claims 1-17 in the reply filed on 28 August 2025 was previously acknowledged in the office action dated 25 September 2025.
The requirement was still deemed proper and was therefore made FINAL.
Claims 1-17 were examined on the merits and claims 18-30 were withdrawn in the previous office action dated 25 September 2025.
Priority
This application is a 371 of PCT/SE2021/050047 which claims the benefit of SE 2050074-0 with an effective filing date of 28 January 2020 as reflected in the filing receipt mailed on 17 May 2024.
Status of the Claims
Claims 1-8 and 10-17 are currently pending.
Claims 1-8 and 10-17 are currently amended.
Claim 9 is currently cancelled.
Claims 18-30 were previously withdrawn
Claims 31-36 were previously cancelled.
Response to Amendments
Applicant’s amendments filed 06 February 2026 are acknowledged.
Claim Objections
Applicant’s amendments to claims 3 and 14 are sufficient to overcome the
objections of the claims. The claims have been amended to correct the grammatical mistakes. The objections are withdrawn.
Claim Rejections - 35 USC § 112
Applicant’s amendments to claims 1-8 and 10-17 and cancellation of claim 9 are sufficient to overcome the rejections of claims 1-17 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. The claims have been amended to correct the antecedent basis issues regarding “The method”, “A method”, or “Method”. The rejections are withdrawn.
Claim 3 has been amended to correct the antecedent basis issue regarding “the stream containing methanol” in line 3. The rejection is withdrawn.
Applicant’s cancellation of claim 9 is sufficient to overcome the rejection of claim 9 under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The rejection is withdrawn.
Response to Arguments
Applicant’s arguments filed 06 February 2026 have been fully considered but they are not persuasive.
Applicant’s argue that Baierl, Bennett, Walther, and Kouisni do not disclose the limitations as recited in the claims. These arguments have been considered but are not persuasive for the reasons set forth in the maintained grounds of rejection below and the response to arguments below.
In response to applications arguments on pages 9-10 of the remarks filed on 06 February 2026 that “there is no teaching in Baierl of further subjecting the compounds separated from methanol (i.e., either of the crude turpentine fractions of Example 1) to treatment to form a second product flow of a purified second compound and/or purified derivative of the second compound, wherein the second compound is dimethyl sulfide, methyl mercaptan, or acetone”. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art, see In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981) and MPEP 2145.
As stated on page 8 of the previous office action dated 25 September 2025 (hereinafter POA), “Baierl does not specifically teach the separation and purification of each component within the black liquor.”
As stated on page 6 the POA, Baierl teaches “the evaporator condensate containing methanol is collected and introduced into the steam stripper described in Example II, see Col. 7, Ln. 33-Col. 8, Ln. 36, Example III. In the steam stripper, hydrogen sulfide and methyl mercaptan are removed from the top of the stripper”, see Fig. 1, Col. 7, Ln. 33-Col. 8, Ln. 36, specifically Examples I-III. To clarify, Baierl teaches “[h]ydrogen sulfide and methyl mercaptan are removed from the top of the stripper”, see Example II, Col. 8, Lns. 5-19, where in the stripper separated hydrogen sulfide gas, methyl mercaptan gas, and other volatile organic gases are subjected to condensation treatment to separate the other volatile organic gases as condensed liquids from the hydrogen sulfide gas and methyl mercaptan gas and the hydrogen sulfide gas and methyl mercaptan gas are further purified after this condensation treatment and collected from the top of the stripper, see Col. 4, Lns. 14-20; Example II, Col. 8, Lns. 5-19. Therefore, Baierl teaches separating methyl mercaptan from the mixed methanol stream and subjecting the separated methyl mercaptan mixed stream to further separation and purification in a condenser.
As stated on page 7 of the POA, “[i]n addition, dimethyl disulfide is also separated from the methanol containing stream by steam fractionation to form a crude turpentine, dimethyl disulfide, and water as a bottom stream which is removed, then the dimethyl disulfide is separated from the turpentine and water by auxiliary decantation separation, see Col. 8, Lns. 38-56, Example IV”. Baierl also teaches “spent Kraft pulping liquor contain chemicals produced during the pulping operation including, for example, methanol, ethanol, acetone, dimethyl disulfide, dimethyl sulfide, methyl mercaptan, crude turpentine and hydrogen sulfide”, see Col. 2, Lns. 5-30. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Baierl to also separate dimethyl sulfide by decantation. Therefore, it is obvious to one of ordinary skill in the art that Baierl teaches separating dimethyl sulfide from the mixed methanol stream and subjecting the separated dimethyl sulfide mixed stream to further separation and purification by decantation as detailed by Baierl with the separation of dimethyl disulfide.
Since “[t]he use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain”, see In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)) and MPEP 2123, and Baierl also teaches “further processing to obtain saleable products” if the purity of the recovered chemicals are poor, as stated on page 8 of the POA, “it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Baierl to rearrange the purification method by including additional purification columns for each specific component in the black liquor, see MPEP 2144.04 VI., with a reasonable predictability of success for the purpose of recovering each chemical in the black liquor with high purity in order to obtain saleable products, see Baierl, Col. 2, Lns. 5-66.”
For the reasons indicated above, applicant’s above arguments are not persuasive.
In response to applications arguments on pages 11-13 of the remarks filed on 06 February 2026 that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, see In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), and MPEP 2143.
“A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention)”, see MPEP 2141.01(a).
As stated on pages 9-10 of the POA:
“Baierl teaches separating at least three fractions from the wood pulp black liquor methanol stream, turpentine fractions 3, 8, and sulfur containing fraction 5, see Figs. 1-2, Col. 2, Lns. 5-66, Col. 7, Ln. 33-Col. 8, Ln. 56, and that each product in the initial feed mixture is separated to obtain pure saleable products, see Col. 2, Lns. 45-66.”
“Bennett relating to the production of dimethyl sulfide from the waste liquor obtained in the pulping of wood, see Col. 1, Lns. 25-43, which contains methanol, see Baierl, Col. 2, Lns. 60-66, in order to produce dimethyl disulfide, see Claim 1”, and is applied to teach the same.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Baierl and Bennett both teach the purification and separation of dimethyl sulfide from a mixed wood pulp stream, a person of ordinary skill in the art has good reason to modify Baierl by relying upon Bennett before the effective filing date of the claimed invention for knowledge generally available within the dimethyl sulfide purification arts, see MPEP 2143 B & G and 2141, for the benefit of efficiently recovering each chemical in the black liquor with high purity via distillation, see Bennett, Col. 1, Lns. 25-43; and, MPEP 2141 and 2143 I. B-D.
As stated on page 12 of the POA:
“Walther relates to the separation and extraction of valuable products from black liquor obtained from a wood pulp mill, see Paras. [0053]-[0054];[0098]-[0101];[0243]”, and is applied to teach the same.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Baierl and Walther both teach the purification and separation of chemicals from a mixed wood pulp stream, a person of ordinary skill in the art has good reason to modify Baierl by relying upon Walther before the effective filing date of the claimed invention for knowledge generally available within the wood pulp distillation separation purification arts to recover acetone, see MPEP 2143 B & G and 2141, for the benefit of efficiently recovering each chemical in the black liquor with high purity via further processing, see Walther, Paras. [0020];[0082];[0100];[0237];[0243]; and, MPEP 2141 and 2143 I. B-D.
As stated on page 14 of the POA:
“Kouisni relating to the separation of compounds from kraft black liquors containing methanol from wood pulp mills, see Abstract, Fig. 1, and Baierl, Col. 2, Lns. 5-66”, and is applied to teach the same.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Baierl and Kouisni both teach the purification and separation of chemicals from a mixed wood pulp stream, a person of ordinary skill in the art has good reason to modify Baierl by relying upon Kouisni before the effective filing date of the claimed invention for knowledge generally available within the wood pulp distillation mass flow, separation, oxidation, and purification arts, see MPEP 2143 B & G and 2141, for the benefit of efficiently converting odorous chemicals in the black liquor to desirable product compounds that do not have negative effects on human health and other forms of life, see Kouisni, Para. [0005]; and, MPEP 2141 and 2143 I. B-D.
For the reasons indicated above, applicant’s above arguments are not persuasive.
For all of the reasons indicated above, the following rejections are maintained:
Claims 1-5, 7, 9, 10, 12, and 17 under 35 U.S.C. 103 as being unpatentable over Baierl (US3764461, patented 09 October 1973);
Claim 6 under 35 U.S.C. 103 as being unpatentable over Baierl (US3764461, patented 09 October 1973), as applied to claims 1-5, 7, 9, 10, 12, and 17 in the 35 USC 103 rejection above, in view of Bennett et al. (US3452100, patented 24 June 1969, hereinafter Bennett);
Claims 8 and 11 under 35 U.S.C. 103 as being unpatentable over Baierl (US3764461, patented 09 October 1973), as applied to claims 1-5, 7, 9, 10, 12, and 17 in the 35 USC 103 rejection above, in view of Walther et al. (US20130337527, hereinafter Walther);
Claims 13, 15, and 16 under 35 U.S.C. 103 as being unpatentable over Baierl (US3764461, patented 09 October 1973), as applied to claims 1-5, 7, 9, 10, 12, and 17 in the 35 USC 103 rejection above, in view of Kouisni et al. (US20150096697, hereinafter Kouisni); and,
Claim 14 under 35 U.S.C. 103 as being unpatentable over Baierl (US3764461, patented 09 October 1973), as applied to claims 1-5, 7, 9, 10, 12, and 17 in the 35 USC 103 rejection above, in view of Bennett et al. (US3452100, patented 24 June 1969, hereinafter Bennett) and Kouisni et al. (US20150096697, hereinafter Kouisni).
Maintained Rejections Based on the reply filed on 06 February 2026
In the Spirit of Compact Prosecution
Throughout prosecution the examiner has attempted to identify all objections and clarity issues amongst the claims, applicant is advised that some objections and clarity issues may still remain. Going forward, the examiner respectfully requests applicant to perform a detailed review of the claims regarding clarity, grammar, antecedent basis, word spacing, and spelling issues.
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 1-5, 7, 9, 10, 12, and 17 stand rejected under 35 U.S.C. 103 as being unpatentable over Baierl (US3764461, patented 09 October 1973).
Baierl teaches the claims 1-5, 7, 9, 10, 12, and 17 limitations of a method of separating and recovering saleable pure forms of chemicals, such as methanol, ethanol, acetone, dimethyl disulfide, dimethyl sulfide, methyl mercaptan, crude turpentine and hydrogen sulfide, which are produced during digestion of wood in a wood mill within Kraft pulping liquor or black liquor, see Col. 2, Ln. 5-Col. 3, Ln. 26, Figs. 1 and 2, Col. 7, Ln. 33-Col. 8, Ln. 58, specifically Examples I-IV, where the mixed stream of liquors produced during Kraft pulping and similar operations is first collected and evaporated to from about 12% to about 60% solids, i.e., compounds with boiling points lower than methanol are separated, the evaporator condensate containing methanol is collected and introduced into the steam stripper described in Example II, see Col. 7, Ln. 33-Col. 8, Ln. 36, Example III. In the steam stripper, hydrogen sulfide and methyl mercaptan are removed from the top of the stripper and the remainder bottom stream containing methanol is, as depicted in Fig. 1, sent to a fractionating column 1, i.e., compounds with boiling points lower than methanol are separated, where a crude turpentine fraction 3 is separated from a volatile chemical fraction 2, which contains the methanol, see Fig. 1, Col. 7, Ln. 33-Col. 8, Ln. 36, specifically Examples I-III, meeting:
The first product flow containing methanol and the one or more separation units for separating methanol from first solids in instant application claim 1;
The second separation of hydrogen sulfide and third compound of methyl mercaptan from methanol in instant application claim 2;
The boiling point separation in instant application claim 5 and in instant application claim 7,
The methanol in instant application claim 9;
The arrangement in instant application claim 12;
The specific stream in instant application claim 17;
As depicted in Fig. 1, the volatile chemical fraction 2 containing methanol is subjected to a caustic treatment 4 producing another separated volatile chemical fraction 2 containing methanol and a separated sulfur-containing-chemical fraction is removed as salts, where the sulfur-containing fraction inherently contains the rest of the sulfurs from the starting liquor, i.e., dimethyl disulfide and dimethyl sulfide, see MPEP 2112 and Col. 2, Ln. 45-Col. 3, Ln. 26, Fig. 1, Col. 5, Lns. 15-20, Col. 7, Ln. 33-Col. 8, Ln. 36, specifically Example I. In addition, dimethyl disulfide is also separated from the methanol containing stream by steam fractionation to form a crude turpentine, dimethyl disulfide, and water as a bottom stream which is removed, then the dimethyl disulfide is separated from the turpentine and water by auxiliary decantation separation, see Col. 8, Lns. 38-56, Example IV, meeting:
The first auxiliary separation unit for the separation of a second compound, dimethyl sulfide, dimethyl disulfide, or derivative thereof, from water and turpentine in instant application claim 1 and in instant application claim 10;
As depicted in Figs. 1 and 2, there are a series of separation units where methanol is separated from a variety of compounds until a final fraction is sent to a distillation column to primarily produce methanol, see Figs. 1-2, Col. 7, Ln. 33-Col. 8, Ln. 56, meeting:
The arrangement in instant application claim 3; and,
The methanol in instant application claim 4.
Baierl does not specifically teach the separation and purification of each component within the black liquor.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified Baierl to rearrange the purification method by including additional purification columns for each specific component in the black liquor, see MPEP 2144.04 VI., with a reasonable predictability of success for the purpose of recovering each chemical in the black liquor with high purity in order to obtain saleable products, see Baierl, Col. 2, Lns. 5-66.
In addition, ““the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).”, see MPEP 2112 I. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, that the remainder of the sulfur compounds of Baierl that are not previously specifically separated will include dimethyl disulfide and dimethyl sulfide.
Claim 6 stands rejected under 35 U.S.C. 103 as being unpatentable over Baierl (US3764461, patented 09 October 1973), as applied to claims 1-5, 7, 9, 10, 12, and 17 in the 35 USC 103 rejection above, in view of Bennett et al. (US3452100, patented 24 June 1969, hereinafter Bennett).
Baierl does not teach the limitations of claim 6.
Baierl teaches separating at least three fractions from the wood pulp black liquor methanol stream, turpentine fractions 3, 8, and sulfur containing fraction 5, see Figs. 1-2, Col. 2, Lns. 5-66, Col. 7, Ln. 33-Col. 8, Ln. 56, and that each product in the initial feed mixture is separated to obtain pure saleable products, see Col. 2, Lns. 45-66.
Bennett relating to the production of dimethyl sulfide from the waste liquor obtained in the pulping of wood, see Col. 1, Lns. 25-43, which contains methanol, see Baierl, Col. 2, Lns. 60-66, in order to produce dimethyl disulfide, see Claim 1. The process of Bennett includes recovering a sulfide, such as dimethyl sulfide, which is further purified by distillation, see Col. 1, Lns. 25-43, i.e., compounds with boiling points different than methanol are separated, meeting:
The separation in instant application claim 6.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Baierl to rearrange the purification method by including additional purification columns for each specific component in the black liquor, see MPEP 2144.04 VI., and as taught by Bennett with a reasonable predictability of success for the purpose of recovering each chemical in the black liquor with high purity via distillation, see Bennett, Col. 1, Lns. 25-43.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. A person of ordinary skill in the art has good reason to further purify a compound separated from a mixed stream by pursuing the known options within their technical grasp for the benefit of recovering each chemical in the black liquor with high purity via distillation, see Bennett, Col. 1, Lns. 25-43 and MPEP 2141.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Claims 8 and 11 stand rejected under 35 U.S.C. 103 as being unpatentable over Baierl (US3764461, patented 09 October 1973), as applied to claims 1-5, 7, 9, 10, 12, and 17 in the 35 USC 103 rejection above, in view of Walther et al. (US20130337527, published 19 December 2013, hereinafter Walther).
Baierl does not teach the limitations of instant application claims 8 and 11.
Baierl teaches separating at least three fractions from the wood pulp black liquor methanol stream, turpentine fractions 3, 8, and sulfur containing fraction 5, see Figs. 1-2, Col. 2, Lns. 5-66, Col. 7, Ln. 33-Col. 8, Ln. 56, and that each product in the initial feed mixture is separated to obtain pure saleable products, see Col. 2, Lns. 45-66.
Walther relates to the separation and extraction of valuable products from black liquor obtained from a wood pulp mill, see Paras. [0053]-[0054];[0098]-[0101];[0243], by further processing the black liquor containing methanol by repeated thermal distillation until a top stream containing primarily acetone is separated from the mixture of materials in the feed, i.e., separation by differences in boiling point and the second auxiliary separation in instant application claim 2, see Paras. [0054];[0243], meeting:
The deviating boiling points in instant application claim 8; and,
The third component acetone in instant application claim 11.
In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Baierl to rearrange the purification method by including additional purification columns for each specific component in the black liquor, see MPEP 2144.04 VI., and as taught by Walther with a reasonable predictability of success for the purpose of recovering each chemical in the black liquor with high purity via further processing, see Walther, Paras. [0020];[0082];[0100];[0237];[0243].
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. A person of ordinary skill in the art has good reason to further purify a compound separated from a mixed stream by pursuing the known options within their technical grasp for the benefit of recovering each chemical in the black liquor with high purity via further processing, see Walther, Paras. [0020];[0082];[0100];[0237];[0243] and MPEP 2141.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Claims 13, 15, and 16 stand rejected under 35 U.S.C. 103 as being unpatentable over Baierl (US3764461, patented 09 October 1973), as applied to claims 1-5, 7, 9, 10, 12, and 17 in the 35 USC 103 rejection above, in view of Kouisni et al. (US20150096697, published 09 April 2015, hereinafter Kouisni).
Baierl does not teach the limitations of instant application claims 13, 15, and 16.
Baierl teaches separating at least three fractions from the wood pulp black liquor methanol stream, turpentine fractions 3, 8, and sulfur containing fraction 5, see Figs. 1-2, Col. 2, Lns. 5-66, Col. 7, Ln. 33-Col. 8, Ln. 56, and that each product in the initial feed mixture is separated to obtain pure saleable products, see Col. 2, Lns. 45-66.
Kouisni relating to the separation of compounds from kraft black liquors containing methanol from wood pulp mills, see Abstract, Fig. 1, and Baierl, Col. 2, Lns. 5-66, teaches a black liquor tank 1 containing a) hydrogen sulphide (H2S); b) mercaptan (CH3SH); c) dimethyl sulphide (CH3S CH3); and d) dimethyl disulphide (CH3SSCH3), see Fig. 1, Paras. [0018];[0024];[0032]-[0038];[0044], where a lignin stream 5a containing methanol is contacted with H2SO4 and wash liquor in filter 6, which will inherently convert methanol in stream 5a to DMS and/or methyl mercaptan, see MPEP 2112 and instant specification, Pg. 2, Lns. 26-30 and Pg. 8, Lns. 12-29, to filter lignin out of the liquor and the filtered liquor is recycled in flow line 6 c to weak black liquor tank 1 then the liquor is concentrated/purified to separate sulphides in a multiple effect evaporator (MEE) assembly 2, the purified sulphides are fed to a black liquor oxidation reactor 3 to form dimethyl sulphoxide from the dimethyl sulphide, see Fig. 1, Paras. [0032]-[0038];[0044], meeting:
The second compound and oxidation in instant application claim 15;
The lignin treatment with sulfur, which will convert methanol to DMS and/or methyl mercaptan, to black liquor tank 1, to separation evaporator unit in instant application claim 16;
The conversion of methanol in a stream to decrease the mass flow of methanol and increase the mass flow of DMS and/or methyl mercaptan in instant application claim 13.
In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Baierl to rearrange the purification method by including additional purification columns for each specific component in the black liquor, see MPEP 2144.04 VI., and to concentrate and convert the compounds to the desired product compounds, as taught by Kouisni with a reasonable predictability of success for the purpose of converting odorous chemicals in the black liquor to desirable product compounds that do not have negative effects on human health and other forms of life, see Kouisni, Para. [0005].
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. A person of ordinary skill in the art has good reason to further purify or convert a compound separated from a mixed stream by pursuing the known options within their technical grasp for the benefit of converting odorous chemicals in the black liquor to desirable product compounds that do not have negative effects on human health and other forms of life, see Kouisni, Para. [0005] and MPEP 2141.
In addition, ““the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).”, see MPEP 2112 I. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, that the addition of sulfur will convert methanol to DMS and/or methyl mercaptan.
Claim 14 stands rejected under 35 U.S.C. 103 as being unpatentable over Baierl (US3764461, patented 09 October 1973), as applied to claims 1-5, 7, 9, 10, 12, and 17 in the 35 USC 103 rejection above, in view of Bennett et al. (US3452100, patented 24 June 1969, hereinafter Bennett) and Kouisni et al. (US20150096697, published 09 April 2015, hereinafter Kouisni).
Baierl does not teach the limitations of instant application claim 14.
Baierl teaches separating at least three fractions from the wood pulp black liquor methanol stream, turpentine fractions 3, 8, and sulfur containing fraction 5, see Figs. 1-2, Col. 2, Lns. 5-66, Col. 7, Ln. 33-Col. 8, Ln. 56, and that each product in the initial feed mixture is separated to obtain pure saleable products, see Col. 2, Lns. 45-66.
Bennett teaches separating dimethyl sulfide and methyl mercaptan from the wood pulp methanol stream, processing the dimethyl sulfide and methyl mercaptan to obtain a sulfide, separating the sulfide, and recirculated sulfur obtained from the process to the starting mixture of the separated dimethyl sulfide and methyl mercaptan stream, see Col. 2, Lns. 6-9 and 35-42, Col. 3, Lns. 32-38, Claim 1, specifically the feed stream separated from the wood pulp methanol stream containing dimethyl sulfide and methyl mercaptan, see Col. 1, Lns. 25-43, Col. 2, Lns. 54-71, is further processed by contacting the stream with recirculated sulfur obtained from the process, acidifying the mixture, separating the sulfide, and further purification of the sulfide by distillation, see Col. 2, Lns. 6-9 and 35-42, Col. 3, Lns. 32-38, Claim 1, meeting the recirculation in instant application claim 14.
Kouisni teaches recycle of a black liquor tank containing a) hydrogen sulphide (H2S); b) mercaptan (CH3SH); c) dimethyl sulphide (CH3S CH3); and d) dimethyl disulphide (CH3SSCH3) throughout the process, see Fig. 1, line 6c, and the lignin is contacted with H2SO4 and wash liquor in filter 6, which will inherently convert methanal to DMS and/or methyl mercaptan, see MPEP 2112, Kouisni, Fig. 1, and instant specification, Pg. 2, Lns. 26-30 and Pg. 8, Lns. 12-29, meeting the recirculation and DMS/methyl mercaptan production reactor in instant application claim 14.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Baierl to rearrange the purification method by including additional purification columns for each specific component in the black liquor, see MPEP 2144.04 VI., and to concentrate and convert the compounds to the desired product compounds, as taught by Bennett and Kouisni with a reasonable predictability of success for the purpose of recovering each chemical in the black liquor with high purity via distillation, see Bennett, Col. 1, Lns. 25-43, and converting odorous chemicals in the black liquor to desirable product compounds that do not have negative effects on human health and other forms of life, see Kouisni, Para. [0005].
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. A person of ordinary skill in the art has good reason to further purify or convert a compound separated from a mixed stream by pursuing the known options within their technical grasp for the benefit of recovering each chemical in the black liquor with high purity via distillation, see Bennett, Col. 1, Lns. 25-43, and converting odorous chemicals in the black liquor to desirable product compounds that do not have negative effects on human health and other forms of life, see Kouisni, Para. [0005] and MPEP 2141.
In addition, ““the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).”, see MPEP 2112 I. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, that the addition of sulfur will convert methanol to DMS and/or methyl mercaptan.
Conclusion
No claims are allowed.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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