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 .
Applicant’s response to restriction letter of 5/9/25 is acknowledged. Applicant elected Group I (claims 1-2) and Group B (DES, deep eutectic solvent) with traverse.
In traversal of this rejection applicant argues that the elected subject matter shares a common technical feature with Groups III-IV. Therefore, rejoinder of Groups III-IV with the elected invention does not impose an undue burden of searching on the examiner and said Groups should be rejoined with Group I.
In response to applicant’s argument, Group IV, (namely claim 3, drawn to a method of Group I further comprising introducing more biomass to the mixture of step(a) ) is hereby rejoined with the elected invention.
However, in view of applicant’s election of Group (B), claims 1-2 (drawn to Group III ) remains withdrawn as Group III (invention A) invention is directed to a method of use of DABCS and not DES and hence, said withdrawn invention shares no common technical feature with instantly elected invention. Therefore, Group III (invention A) invention, in contrast to applicant’s view, cannot be rejoined with the elected invention and restriction as stated previously is hereby made Final.
Claims 1 and 3 are only examined to the extent that they read on the elected invention, namely a method of use of deep eutectic solvent (DES).
DETAILED ACTION
Claims 1 and 3, drawn to a method of use of DES only, are under examination on the merits.
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 1 and 3 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. In claim 1(c), applicant is utilizing “optionally” and “and/or” simultaneously, followed by claim 1 (d), which also recites “optionally”, rendering said claim confusing as its metes and bounds can hardly be assessed. Claim 3 is merely rejected for depending from claim 1. Appropriate clarification is required.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Singh (WO 2018/204424, 8/2018, cited in the IDS) or, in the alternative, under 35 U.S.C. 103 as obvious over Singh.
In view of applicant’s election, instantly elected invention is considered as following:
“A method to produce a sugar from a biomass, the method comprising:
(a) providing a first mixture comprising a solubilized biomass and a deep eutectic solvent (DES), wherein (i) the DES is any combination of Lewis or Bronsted acid and base comprising any anionic and/or cationic species that have sufficient vapor pressure so that it can be readily distilled;
(b) optionally introducing an enzyme and/or a microbe to the first mixture such that the enzyme and/or microbe produce a sugar from the solubilized biomass; and,
(c) optionally the sugar is separated from the first mixture.”
In view of said claim interpretation, Singh recites the following:
“Claim 12. A method of pretreating biomass comprising: (a) providing a biomass, (b) pretreating the biomass with a DES system to produce a sugar and a lignin, (c) optionally separating the sugar and the lignin, (d) depolymerizing and/or converting the lignin into one or more lignin derived monomeric phenol, or a mixture thereof, (e) providing the one or more lignin derived monomeric phenol, or a mixture thereof, in a solution, (f) introducing one or more quaternary ammonium salts, or a mixture thereof, to the solution, (g) heating the solution, such that steps (f) and (g) together result in the synthesis of a DES, (h) optionally forming a DES system from the DES synthesized in step (g), and (i) optionally repeating steps (a) to (h) using the DES system formed in step (h) in the pretreating step (b).”.
Singh characterizes its DES (inherently made of Lewis or Bronsted acid and base, inherently creating a mixture of anions and cations that can be readily distilled) as following (see claims 19-22):
“19. The method of claim 12, wherein the hydrogen acceptor is a quaternary ammonium salt comprising: (a) a quaternary ammonium cation comprising four alkyl groups covalently linked to the ammonium cation, wherein each of the four alkyl groups is independently selected from the group consisting of C1-C6 alkyl and at least one of the alkyl comprises a hydroxyl group as a substituent; and, (b) an anion selected from the group consisting of OH-", HSO4-, H2PO4-, PO4-, lysinate, HCO3-, a carboxylic acid anion, a dicarboxylic acid anion, and CI-.
20. The method of claim 19, wherein the quaternary ammonium cation is a choline.
21. The method of claim 20, wherein the hydrogen acceptor is choline chloride (ChCl).
22. The method of claim 12, the (g) heating step comprises increasing the temperature of the solution to a value within a range of about 75 °C to about 125 °C.”
Regarding instant claim 3, obviously, the more biomass introduced into the step (a) of claim 1 the more sugar is obtained, which is a desired product and hence, rendering the method of claim 3 highly motivating.
Therefore, it is believed that the teachings of Singh as a whole, anticipate this invention or in the least render it obvious.
Claim(s) 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sun et al., “Sun” (US 2017/0349617, 12/2017, see also its corresponding US patent No. 10,703,770) or, in the alternative, under 35 U.S.C. 103 as obvious over Sun.
Said publication, which from now on will be used to cite relevant text, in [0065], tecahs the following:
Practically useful ionic liquids (ILs), such as 1-ethyl-3-methylimi-dazolium acetate ([C2C1IM][OAc]), and choline lysinate ([Ch][Lys]) are highly effective for the pretreatment of lignocellulosic biomass. However, employing ILs like those in one-pot bioprocessing from biomass to biofuel still remains challenges such as toxicity, water-washing requirement or pH compatibility problems. To address these issues, herein, for the first time, we demonstrated one-pot integrated cellulosic ethanol production enabled by low toxic inexpensive protic ILs (PILs) under water-washing free and pH adjustment free conditions. These PILs are consisting of cheap ions derived from simple amino bases (e.g., ethanolamine, diethanolamine, or triethanolamine, choline) and acids from common commercial sources (e.g., acetic acid, sulfuric acid, phosphoric acid, hydrochloric acid and formic acid). Without pH adjustment and water-washing operation the pretreatment slurry could be directly used for saccharification and simultaneous saccharification and fermentation (SSF) in the presence of commercial enzyme and/or wide type yeast. As two options, 85% glucose and 35% xylose (monomers) could be liberated from switchgrass (SG), and a 70% of theoretical ethanol yield could be obtained in SSF by using as high as 40% SG loading at pretreatment step. This study opens avenues for improvement of efficiency and lowering of cost IL pretreatment process.
As applicant appreciates, some of the combinations of ions used to prepare ionic liquids by Sun do meet the limitations of instantly claimed DES.
Regarding instant claim 3, obviously, the more biomass introduced into the step (a) of claim1 the more sugar is obtained, which is a desired product, rendering the method of claim 3 highly motivating.
Therefore, once again it is believed that the teachings of Sun as whole, anticipate this invention or in the least, render it obvious.
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 and 3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12, 14-26 of copending Application No. 16/672,075. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claims recited in said copending application overlaps with the scope of instantly elected claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 10-18 of copending Application No. 16/737,724. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claims recited in said copending application overlaps with the scope of instantly elected claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No.11,118,204. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claims in said patent overlaps with the scope of instantly elected claims.
Claims 1, 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No.12,049,654. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claims in said patent overlaps with the scope of instantly elected claims.
Claims 1, 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-15 of U.S. Patent No.10,907,184. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claims in said patent overlaps with the scope of instantly elected claims.
No claim is allowed.
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/MARYAM MONSHIPOURI/Primary Examiner, Art Unit 1651