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 .
Response to Amendment
Applicant has amended claims 1, 12, and 20 and canceled claim 7. Claims 1-6 and 8-20 are pending.
The amendments to the claims have necessitated new claim objections. See claim objections below for details.
The amendments to the claims have overcome the 112(b) rejections of record. However, following further consideration, the amendments to the claims have been found to necessitate new rejections under 112(b). See 112(b) rejections below for details.
The amendments to the claims have necessitated new rejections over the prior art previously relied upon.
Response to Arguments
Applicant’s arguments, see Remarks, filed 7/7/2025, with respect to the 112(b) have been fully considered and are persuasive.
Specifically, Applicant has argued that the amendments to the claims have overcome the 112(b) rejections of record. Therefore, the 112(b) rejections have been withdrawn.
However, following further consideration, the amendments to the claims have been found to necessitate new rejections under 112(b). See 112(b) rejections below for details.
Applicant’s arguments, see Remarks, filed 7/7/2025, with respect to the prior art rejections over Kochanek have been fully considered but they are not persuasive.
Applicant has argued that the amendments to the claims have placed the claims into condition for allowance over the Kochanek primary reference relied upon in the previous Office Action.
Examiner respectfully disagrees.
The claims as amended are either anticipated by or obvious over Kochanek in the manners described in the 102 and 103 rejections set forth below. See 102 and 103 rejections below for details.
Applicant’s arguments, see Remarks, filed 7/7/2025, with respect to the double patenting rejections have been fully considered and are persuasive.
Specifically, Applicant has argued that the double patenting rejections of record have been overcome by the Terminal Disclaimer filed 7/7/2025. Therefore, the double patenting rejections have been withdrawn.
Claim Objections
Claims 1, 12, and 20 are objected to because they contain informalities.
With regard to claim 1: In line 20, insert a comma following “reincorporation into a biochar product”.
With regard to claim 12: In line 13, insert a comma following “reincorporation into a biochar product”.
With regard to claim 20: In line 10, insert a comma following “into a biochar solution”.
The following are new rejections necessitated by amendment.
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 1-6 and 8-19 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 1 recites “where the further processed collected biochar extract comprises a solution that continues to comprise at least the solution and the desired compound” in lines 22-24 (emphasis added).
Examiner understands that “the solution” which is comprised within the solution alongside the desired compound (i.e. “the solution” recited in specifically line 24) refers to the “solution containing at least one solvent…” introduced in lines 10-12. Examiner further understands that the “solution that continues to comprise at least the solution and the desired compound” is a different solution than that introduced in lines 10-12.
Nevertheless, referring to two different elements using the same name leads to a lack of clarity in the claims. Thus, the claim is rendered unclear by its use of the term “solution” to refer to two different mixtures.
To overcome this rejection, Applicant should amend claim 1 such that it uses unique names to refer to each of the solutions. For example, Applicant could amend claim 1 to recite --a first solution-- and --a second solution--.
Claims 2-6 and 8-10 are rejected due to their dependency on indefinite claim 1.
Claim 12 recites “where the further processed collected biochar extract comprises a solution that continues to comprise at least the solution and the desired compound” in lines 15-17 (emphasis added).
Examiner understands that “the solution” which is comprised within the solution alongside the desired compound refers to the “solution containing at least one solvent…” introduced in lines 6-8. Examiner further understands that the “solution that continues to comprise at least the solution and the desired compound” is a different solution than that introduced in lines 6-8.
Nevertheless, referring to two different elements using the same name leads to a lack of clarity in the claims. Thus, the claim is rendered unclear by its use of the term “solution” to refer to two different mixtures.
To overcome this rejection, Applicant should amend claim 12 such that it uses unique names to refer to each of the solutions. For example, Applicant could amend claim 12 to recite --a first solution-- and --a second solution--.
Claim 12 recites “for purposes of further use and/or processing” in line 17. It is believed that Applicant intended to recite here --for purposes of even further use and/or processing--, as mere “further use and/or processing” has already been described earlier in the claim, i.e. beginning in line 11.
To overcome this rejection, Applicant should amend line 17 of claim 12 to recite --for purposes of even further use and/or processing-- in place of “for purposes of further use and/or processing”.
Claims 13-19 are rejected due to their dependency on indefinite claim 12.
The following are new rejections necessitated by amendment and made over the prior art previously relied upon.
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 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) 12, 14, 15, 18, and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kochanek et al. (“Karrikins Identified in Biochars Indicate PostFire Chemical Cues Can Influence Community Diversity and Plant Development”), hereafter referred to as Kochanek.
With regard to claim 12: Kochanek teaches a method of producing a desired compound, i.e. karrikinolide (KAR1), from the pyrolysis of biomass (abstract, “Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3), the method comprising steps of:
Selecting a biomass source, e.g. green waste feedstock (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], Table 1, Figures 2 and 3).
Pyrolysing the biomass source using a pyrolysis tech A and a pyrolysis tech B, wherein pyrolysing the biomass source using pyrolysis tech A and pyrolysis tech B involves pyrolysing the biomass source at various predetermined temperatures (various predetermined highest heating temperatures [HHT]) between 450-590 °C and, a predetermined hold time (residence time) of 28-40 minutes, whereby the pyrolysis of the biomass source produces biochar (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3). Kochanek does not explicitly teach that the pyrolysing of the biomass produces bio-oil. However, it is understood that pyrolysis processes necessarily produce some amount of bio-oil, e.g. volatile organic compounds. As evidence, Examiner points to the Introduction section of Kochanek, which teaches that pyrolysis produces “bio-oils” (First sentence of 3rd paragraph in the Introduction section [page 2]), and that volatile organic compound (which qualify as “bio-oil”) occur in biochar when liquids and gases re-condense on biochar during pyrolysis (Final sentence of 3rd paragraph in the Introduction section [page 3]). Thus, it is understood that the pyrolysis of the biomass in Kochanek necessarily produces at least a small amount of bio-oil.
Creating extracts from each of the various biochars produced at varying temperatures and hold times by contacting the various biochars produced at varying temperatures and hold times with a solution containing at least one solvent, wherein the at least one solvent is ethyl acetate (“Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3).
Collecting the extracts from the biochar to recover the desired compound (KAR1), wherein the collected biochar extract continues to comprise the solution (i.e. the solution containing at least one solvent, said solvent being ethyl acetate) and the desired compound (“Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3; “Materials and Methods: Dormancy and plant growth assays” [pages 7 and 8], “Supporting information: S3 Fig. Tomato and lettuce seed germination at 3 d and 1 d, respectively, after sowing into Petri dishes containing water or extracts of biochar“ [pages 15 and 16]).
Note: The step of “collecting the extracts from the biochar to recover the desired compound (KAR1)” is satisfied by the implicit step of supplying the extracts to the location at and/or the means by which they are subjected to filtering. Said step of “collecting the extracts” does not include the step of filtering.
And further processing the collected extracts separate from and/or prior to disposal, wherein further processing the collected extract includes removing biochar product from the collected extract by filtering, where the further processed (filtered) collected extract comprises a solution that continues to comprise at least the solution (i.e. the solution containing at least one solvent, said solvent being ethyl acetate) and the desired compound (KAR1) and the desired compound for the purposes of even further use and/or processing separate from, or prior to, disposal (“Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3).
Note: The further processed (filtered) collected extract “comprises a solution that continues to comprise at least the solution and the desired compound for the purposes of [even] further use and/or processing separate from, or prior to, disposal” at least in that the further processed collected extract continues to comprise the solution and the desired compound up until partway through a step of even further use and/or processing, i.e. until at least part way through a step of evaporating the extract to dryness (see third sentence of “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5]). Therefore, for the purposes of the step of even further use and/or processing, the further processed extract continues to comprise the solution and the desired compound when it is supplied to said step and during the initial portions of said step.
With regard to claim 14: The biomass source includes wood (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3).
With regard to claim 15: One of the various temperatures is 450 °C (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3).
With regard to claims 18 and 19: The desired compound is karrikinolide, i.e. KAR1, which is a Karrikin and a butenolide (abstract, “Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3).
The following are new rejections necessitated by amendment and made over the prior art previously relied upon.
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 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.
Claim(s) 1, 3-6, 9, and 10 is/are rejected under 35 U.S.C. 103 as obvious over Kochanek.
With regard to claim 1: Kochanek teaches a method of producing a desired compound, i.e. karrikinolide (KAR1), from the pyrolysis of biomass (abstract, “Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3), the method comprising steps of:
Obtaining a biomass source, e.g. green waste feedstock (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], Table 1, Figures 2 and 3).
Pyrolysing the biomass source using a pyrolysis tech A and a pyrolysis tech B, wherein pyrolysing the biomass source using pyrolysis tech A and pyrolysis tech B involves pyrolysing the biomass source at least two different temperatures (various highest heating temperatures [HHT]) between 450-590 °C and, at each of the various temperatures, retaining the biomass under pyrolysis conditions for a period (residence time) of 28-40 minutes, wherein pyrolysis conditions include a higher heating temperature (highest heating temperature HHT), whereby the pyrolysis of the biomass at the at least two different temperatures for the period of 28-40 minutes produces at least two different biochars (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3).
Note: Because Kochanek includes a step of retaining the biomass under pyrolysis conditions for a period (residence time) of 28-40 minutes, wherein pyrolysis conditions include a higher heating temperature (highest heating temperature HHT) (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3), it is understood that the process of Kochanek includes retaining biomass at a at a higher heating temperature for a period of not longer than one day.
Creating extracts from each of the at least two different biochars by contacting the at least two biochars with a solution containing at least one solvent, wherein the at least one solvent is solvent is ethyl acetate, and wherein the extracts comprise the solution and the desired compound (KAR1) (“Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3).
Determining (by GC-MS analysis) which of the extracts from each of the at least two biochars produces (i.e. contains) a highest concentration of the desired compound, i.e. a highest concentration of KAR1 (“Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3).
Kochanek does not explicitly characterize the method as being one of “producing a highest concentration” of the desired compound. However, as discussed above, the method of Kochanek includes steps of: 1) determining which of the extracts from each of the at least two biochars produced at at least two different temperatures produces a highest concentration of the desired compound, and 2) creating an extract from biochar produced at a temperature that produced the extract containing the highest concentration of the desired compound. Thus, Kochanek is necessarily qualifies as a method of “producing a highest concentration” of the desired compound.
Kochanek does not explicitly teach retaining biomass at a at least one of the two different temperatures for a period of not longer than one day and not less than one minute.
However, as discussed above, because Kochanek includes a step of retaining the biomass under pyrolysis conditions for a period (residence time) of 28-40 minutes, wherein pyrolysis conditions include a higher heating temperature (highest heating temperature HHT) (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3), it is understood that the process of Kochanek includes retaining biomass at a higher heating temperature for a period of not longer than one day.
Furthermore, although Kochanek does not explicitly teach retaining biomass at a at a higher heating temperature for a period of not less than one minute, Kochanek’s teachings to retaining the biomass under pyrolysis conditions for a period (residence time) of 28-40 minutes, wherein pyrolysis conditions include a higher heating temperature (highest heating temperature HHT), at least suggest retaining the biomass at said HHT for the duration of the residence time, i.e. a period of 28-40 minutes, which is a period of not less than 1 minute.
In addition, a person having ordinary skill in the art would recognize that residence time at higher (highest) heating temperature is a result effective variable in pyrolysis. Specifically, a person having ordinary skill in the art would recognize that if the residence time of a pyrolysis feed at a higher heating temperature is too low, then the desired pyrolysis will not be achieved. On the other hand, if the residence time of a pyrolysis feed at a higher heating temperature is too low, then the feed will be pyrolyzed to a greater extent than desired and/or energy will be wasted. "[When] the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation," (see MPEP 2144.05 II A).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Kochanek by optimizing the residence time of the biomass at at least one of the at least two different temperatures, i.e. respective higher (highest) heating temperature, such that retaining the biomass under pyrolysis conditions for a period (residence time) of 28-40 minutes comprises retaining biomass at a respective higher (highest) heating temperature for a period of 28-40 minutes (which is a period not less than one minute and not more than one day).
Modified Kochanek does not explicitly teach steps of i) collecting biochar extract from the at least two different biochars that produced the extract containing the highest concentration of the desired compound, where the collected biochar extract continues to comprise the solution of the desired compound; and ii) further using and/or processing the collected biochar extract separate from, or prior to, disposal, where further using the collected biochar extract includes applying the collected extract to seeds, soil, plants or for reincorporation into a biochar product and further processing the collected biochar extract includes removing biochar particles from the collected biochar extract or distilling, refining or concentrating the collected biochar extract, where the further processed collected biochar extract comprises a solution that continues to comprise at least the solution and the desired compound for purposes of even further use and/or processing separate from, or prior to, disposal.
However, such a step would be satisfied merely by repeating the method of Kochanek so as to confirm the results thereof. To elaborate, repeating the method of Kochanek would comprise conducting again the steps of obtaining the biomass source, pyrolyzing the biomass source, creating the extracts, and determining which of the extracts produces the highest concentration of the desired compound. The repeated step of creating the extract would amount to a step of collecting biochar extract from the at least two different biochars, including that/those which produced the extract containing the highest concentration of the desired compound, where the biochar extract comprises the solution and the desired compound. The repeated step of determining which of the extracts produces the highest concentration of the desired compound would include a sub-step of filtering the extracts, which would in turn amount to a step of further processing the collected biochar extract, separate from, or prior to, disposal, where further processing the collected biochar extract includes removing biochar particles from the collected biochar extract, and where the further processed collected biochar extract comprises a solution that continues to comprise at least the solution and the desired compound for purposes of even further use and/or processing separate from, or prior to, disposal.
To elaborate upon the step of further processing, in base Kochanek, the step of determining (by GC-MS analysis) which of the extracts from each of the at least two biochars produces (i.e. contains) a highest concentration of the desired compound, includes a sub-step of filtering the extracts, such that the filtered extracts comprise a solution that continues to comprise at least the solution (i.e. the solution containing at least one solvent, said solvent being ethyl acetate) and the desired compound (KAR1) for the purposes of even further use and/or processing separate from, or prior to, disposal (“Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3). Note that the further processed (filtered) extract “comprises a solution of at least the washing or cleaning solution and the KAR1 for the purposes of even further use and/or processing separate from, or prior to, disposal” at least in that the further processed extract continues to comprise the solution and the desired compound up until partway through a step of even further use and/or processing, i.e. until at least part way through a step of evaporating the extract to dryness (see third sentence of “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5]). Therefore, the repeated sub-step of filtering the extracts would amount to the claimed step of further processing the collected biochar extracts.
A person having ordinary skill in the art would consider it advantageous to repeat the method of Kochanek, i.e. to conduct said method multiple times, so as to confirm the results thereof, as doing so increases the certainty and accuracy of said results, thereby allowing any decisions made based on said results to be made with greater confidence.
It would have been obvious to one of ordinary skill in the art before the effective filing date to further modify Kochanek by repeating the method thereof, i.e. to conduct said method multiple times, so as to confirm the results thereof.
As discussed above, when repeating the method of Kochanek:
i) The repeated step of creating the extract would amount to a step of collecting biochar extract from the at least two different biochars, including that/those which produced the extract containing the highest concentration of the desired compound, where the biochar extract comprises the solution and the desired compound; and
ii) The filtering sub-step in the repeated steps of deterring will amount to a step of further processing the collected biochar extract, separate from, or prior to, disposal, where further processing the collected biochar extract includes removing biochar particles from the collected biochar extract, and where the further processed collected biochar extract comprises a solution that continues to comprise at least the solution and the desired compound for purposes of even further use and/or processing separate from, or prior to, disposal.
With regard to claim 3: In modified Kochanek, the biomass source includes wood (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3).
With regard to claim 4: In modified Kochanek, one of the at least two temperatures is 450 °C (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3).
With regard to claim 5: In modified Kochanek, pyrolyzing the biomass source at least two different temperatures further includes pyrolyzing the biomass source at the at least two different temperatures each for different time periods, i.e. pyrolyzing the biomass source at a different time period corresponding to each of the at least two different temperatures (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3). Specifically, the biomass source is pyrolyzed using pyrolysis technology A at a temperature of 550 °C and a corresponding time period of 40 min, and also using pyrolysis technology B at a different temperature of 590 °C and a different corresponding time period of 28-29 °C (see Table 1).
Modified Kochanek does not explicitly teach that one of the different time periods is one half hour.
However, Kochanek teaches that pyrolysis technologies A and B can be carried out for a time period (residence time) of 28-40 minutes (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3). The claimed time period of one half hour (30 minutes) lies inside the taught range of time periods. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 I). Kochanek teaches a more specific range of hold times of 28-29 minutes (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3), which is very close to the claimed hold time of one half hour (30 minutes). “A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close,” (MPEP 2144.05 I). In view of the forgoing teachings by Kochanek, a person having ordinary skill in the art would have a reasonable expectation that the pyrolysis step would be functional if carried out for a time period of 1 half hour.
It would have been obvious to one of ordinary skill in the art before the effective filing date to further modify Kochanek by carrying out the pyrolysis step thereof such that one of the different time periods is 1 half hour (30 minutes), in order to obtain a predictably functional method of extracting a desired compound (KAR1) from biochar.
With regard to claim 6: Modified Kochanek teaches that both sets of extracts are filtered (“Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3; “Materials and Methods: Dormancy and plant growth assays” [pages 7 and 8], “Supporting information: S3 Fig. Tomato and lettuce seed germination at 3 d and 1 d, respectively, after sowing into Petri dishes containing water or extracts of biochar“ [pages 15 and 16]). Thus, although it is not explicitly taught, it is understood that all of the extracts in modified Kochanek are further processed such that the majority of biochar particles are removed from said extracts, i.e. as a filtration, if it is carried out successfully, will remove the majority of solid particles suspended in a liquid.
In the alternative, Kochanek’s teachings regarding filtering the extracts implicitly suggests that it is desirable to remove solid particles from the extracts.
In the event such is not already accomplished by the filtering steps of modified Kochanek, it would have been obvious to one of ordinary skill in the art before the effective filing date to further modify Kochanek by further processing the biochar extracts to remove a majority of biochar particles therefrom, in accordance with Kochanek’s implicit suggestion that removal of solids from the extracts is desired.
With regard to claims 9 and 10: The desired compound is karrikinolide, i.e. KAR1, which is a Karrikin and a butenolide (abstract, “Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3).
Claim 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kochanek, as applied to claim 1 above, and in further view of Malyala et al. (US 2017/0304791), hereafter referred to as Malyala.
With regard to claim 2: Modified Kochanek does not explicitly teach that the biomass source is coconut shells.
However, Kochanek does teach that the biomass source can be formed from a variety of plant and tree wastes, including palm fronds (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3). Notably, coconuts are understood to grow on a particular type of palm tree. Thus, it would not require a great leap in logic for a person having ordinary skill in the art to arrive at the notion that coconut shells would be a suitable biomass source for the method of Kochanek.
Furthermore, Malyala teaches a method of capturing material extracted from biochar (abstract), wherein the biochar may be formed from a variety of different biomass sources, including but not limited to coconut shells (paragraph [0091]). Malyala teaches that different starting materials will lead to biochars having different properties (paragraph [0091]). The teachings of Kochanek provide data in support Malyala’s teaching on this matter. For example, the data in Figure 3 of Kochanek suggests that biochars formed from different materials will have different concentrations of KAR1-.
In view of the forgoing, a person having ordinary skill in the art would (1) have a reasonable expectation that the method of Kochanek could be carried out successfully using coconut shells as the biomass source, and (2) have motivation to attempt the process of Kochanek using a variety of different biomass sources, including but not limited to coconut shells, so as to discover an optimal biomass source for yielding a high KAR1 biochar and/or biochar extract.
It would have been obvious to one of ordinary skill in the art before the effective filing date to further modify Kochanek in view of Malyala by using coconut shells as the biomass source, in order to determine whether or not coconut shells are an optimal biomass source for yielding a high KAR1 biochar and/or biochar extract.
Claim 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kochanek, as applied to claim 1 above, and in further view of Flematti et al. (“Karrikin and Cyanohydrin Smoke Signals Provide Clues to New Endogenous Plant Signaling Compounds”), hereafter referred to as Flematti.
With regard to claim 8: Modified Kochanek does not explicitly teach that the desired compound is a cyanohydrin.
However, as detailed in the rejection of claim 1 above, Kochanek teaches a method which involves extracting KAR1 from biochar. Kochanek teaches that KAR1 is of interest as it stimulates plant growth (abstract). This knowledge would suggest to one of ordinary skill in the art that it would be desirable to extract other compounds known to stimulate plant growth from biochar.
Cyanohydrins are known to be signaling compounds that stimulate plant growth, as evidenced by Flematti (abstract, sections titled “DISCOVERY OF GLYCERONITRILE AS A GERMINATION STIMULANT IN SMOKE” and “CYANIDE SIGNALING”). Felmatti indicates that burning of plant materials produces cyanohydrins (abstract, sections titled “DISCOVERY OF GLYCERONITRILE AS A GERMINATION STIMULANT IN SMOKE” and “CYANIDE SIGNALING”). This would suggest to one of ordinary skill in the art that there is a strong likelihood of char containing cyanohydrins.
It would have been obvious to one of ordinary skill in the art to further modify the method of Kochanek in view of Felmatti by adapting the method of Kochanek to extract from char other growth-stimulating signaling compounds, including but not limited to cyanohydrins, in order to obtain a predictably successful method of extracting useful growth-stimulating compounds from biochar.
Claim 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kochanek, as applied to claim 1 above, and in further view of Lou et al. (“Water extract from straw biochar used for plant growth promotion: An initial test”), hereafter referred to as Lou.
With regard to claim 11: Modified Kochanek does not explicitly teach extracting macromolecular compounds with a molecular weight in excess of 1 kilodalton.
However, as detailed in the rejection of claim 1 above, Kochanek teaches a method which involves extracting KAR1 from biochar. Kochanek teaches that KAR1 is of interest as it stimulates plant growth (abstract). This knowledge would suggest to one of ordinary skill in the art that it would be desirable to extract other compounds known to stimulate plant growth from biochar.
Lou teaches a method involving the formation of an extract from biochar, wherein the extracts comprised humic substances (abstract, “Results: Chemical Properties of Biochar Extracts”), and wherein the extracts proved to be beneficial to plant growth (“Results: Effect on Plant Growth”, “Conclusions”). Humic substances are understood to comprise macromolecular compounds. Thus, the teachings of Lou would suggest to one of ordinary skill in the art that it would be desirable to form biochar extracts comprising macromolecular compounds, in order to obtain a biochar extract for stimulating plant growth.
It would have been obvious to one of ordinary skill in the art before the effective filing date to further modify Kochanek in view of Lou by adapting the method of Kochanek to extract from char other growth-stimulating compounds, including but not limited to macromolecules having molecular weights in excess of 1 kilodalton (e.g. macromolecular humic substances), in order to obtain a predictably successful method of extracting useful growth-stimulating compounds from biochar.
Claims 13 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kochanek in view of Malyala.
With regard to claim 13: Kochanek teaches all of the limitations of claim 12 as described in the 102 rejections above.
Kochanek does not explicitly teach that the biomass source is coconut shells.
However, Kochanek does teach that the biomass source can be formed from a variety of plant and tree wastes, including palm fronds (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3). Notably, coconuts are understood to grow on a particular type of palm tree. Thus, it would not require a great leap in logic for a person having ordinary skill in the art to arrive at the notion that coconut shells would be a suitable biomass source for the method of Kochanek.
Furthermore, Malyala teaches a method of capturing material extracted from biochar (abstract), wherein the biochar may be formed from a variety of different biomass sources, including but not limited to coconut shells (paragraph [0091]). Malyala teaches that different starting materials will lead to biochars having different properties (paragraph [0091]). The teachings of Kochanek provide data in support Malyala’s teaching on this matter. For example, the data in Figure 3 of Kochanek suggests that biochars formed from different materials will have different concentrations of KAR1-.
In view of the forgoing, a person having ordinary skill in the art would (1) have a reasonable expectation that the method of Kochanek could be carried out successfully using coconut shells as the biomass source, and (2) have motivation to attempt the process of Kochanek using a variety of different biomass sources, including but not limited to coconut shells, so as to discover an optimal biomass source for yielding a high KAR1 biochar and/or biochar extract.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Kochanek in view of Malyala by using coconut shells as the biomass source, in order to determine whether or not coconut shells are an optimal biomass source for yielding a high KAR1 biochar and/or biochar extract.
With regard to claim 20: Kochanek teaches a method of producing karrikinolide (KAR1), from the pyrolysis of biomass (abstract, “Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3), the method comprising steps of:
Selecting a biomass, e.g. green waste feedstock, for pyrolysis (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], Table 1, Figures 2 and 3).
Pyrolysing the biomass source using a pyrolysis tech A and a pyrolysis tech B, wherein pyrolysing the biomass source using pyrolysis tech A and pyrolysis tech B involves pyrolysing the biomass source at temperatures (highest heating temperatures [HHT]) between 450-590 °C (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3).
The pyrolysing in Kochanek, i.e. the pyrolysis using tech A and tech B, is carried out with a residence time of 28-40 minutes (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3). As discussed above the pyrolysis temperature (highest heating temperatures [HHT]) is between 450-590 °C (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3). Thus, it is understood that the pyrolysing in Kochanek involves holding the biomass at pyrolysis temperature of less than 600 °C for longer than one minute but less than 24 hours.
In Kochanek, the pyrolysis produces biochar (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3). Kochanek does not explicitly teach that the pyrolysing of the biomass produces bio-oil. However, it is understood that pyrolysis processes necessarily produce some amount of bio-oil, e.g. volatile organic compounds. As evidence, Examiner points to the Introduction section of Kochanek, which teaches that pyrolysis produces “bio-oils” (First sentence of 3rd paragraph in the Introduction section [page 2]), and that volatile organic compound (which qualify as “bio-oil”) occur in biochar when liquids and gases re-condense on biochar during pyrolysis (Final sentence of 3rd paragraph in the Introduction section [page 3]). Thus, it is understood that the pyrolysis of the biomass in Kochanek necessarily produces at least a small amount of bio-oil.
Creating an extract of the KAR1 from the biochar by contacting the biochar with a washing/cleaning solution, i.e. ethyl acetate, such that the extract comprises the washing/cleaning solution (ethyl acetate) and the KAR1 (“Materials and Methods: Karrikin quantification and chemical characterization” [page 5], Table 1, Figures 2 and 3).
And further processing the created extract separate from, or prior to, disposal, where further processing the created extract includes removing biochar particles from the created extract by filtering, and where the further processed (filtered) created extract comprises a solution of at least the at least the washing or cleaning solution and (ethyl acetate) and the KAR1- for purposes of even further use and/or processing separate from, or prior to, disposal (“Materials and Methods: Karrikin quantification and chemical characterization” [page 5], Table 1, Figures 2 and 3);
Note: The further processed (filtered) created extract “comprises a solution of at least the washing or cleaning solution and the KAR1 for the purposes of even further use and/or processing separate from, or prior to, disposal” at least in that the further processed created extract continues to comprise the solution and the desired compound up until partway through a step of even further use and/or processing, i.e. until at least part way through a step of evaporating the extract to dryness (see third sentence of “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5]). Therefore, for the purposes of the step of even further use and/or processing, the further processed extract continues to comprise the solution and the desired compound when it is supplied to said step and during the initial portions of said step.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as obvious over Kochanek.
With regard to claim 16: Kochanek teaches all of the limitations of claim 12 as described in the 102 rejections above.
Kochanek does not explicitly teach that the predetermined hold time is one half hour.
However, Kochanek teaches that pyrolysis technologies A and B can be carried out with a hold time (residence time) of 28-40 minutes (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3). The claimed holding time of one half hour (30 minutes) lies inside the taught range of hold times. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 I). Kochanek teaches a more specific range of hold times of 28-29 minutes (“Materials and Methods: Systematic biochar preparation” [Pages 4-5], “Materials and Methods: Karrikin quantification and chemical characterisation” [page 5], Table 1, Figures 2 and 3), which is very close to the claimed hold time of one half hour (30 minutes). “A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close,” (MPEP 2144.05 I). In view of the forgoing teachings by Kochanek, a person having ordinary skill in the art would have a reasonable expectation that the pyrolysis step would be functional if carried out with a hold time of 1 half hour.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Kochanek by carrying out the pyrolysis step thereof with a predetermined hold time of 1 half hour (30 minutes) in order to obtain a predictably functional method of extracting a desired compound (KAR1) from biochar.
Claim 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kochanek in view of Flematti.
With regard to claim 17: Kochanek teaches all of the limitations of claim 12 as described in the 102 rejections above.
Kochanek does not explicitly teach that the desired compound is a cyanohydrin.
However, as detailed in the rejection of claim 12 above, Kochanek teaches a method which involves extracting KAR1 from biochar. Kochanek teaches that KAR1 is of interest as it stimulates plant growth (abstract). This knowledge would suggest to one of ordinary skill in the art that it would be desirable to extract other compounds known to stimulate plant growth from biochar.
Cyanohydrins are known to be signaling compounds that stimulate plant growth, as evidenced by Flematti (abstract, sections titled “DISCOVERY OF GLYCERONITRILE AS A GERMINATION STIMULANT IN SMOKE” and “CYANIDE SIGNALING”). Felmatti indicates that burning of plant materials produces cyanohydrins (abstract, sections titled “DISCOVERY OF GLYCERONITRILE AS A GERMINATION STIMULANT IN SMOKE” and “CYANIDE SIGNALING”). This would suggest to one of ordinary skill in the art that there is a strong likelihood of char containing cyanohydrins.
It would have been obvious to one of ordinary skill in the art to modify the method of Kochanek in view of Felmatti by adapting the method of Kochanek to extract from char other growth-stimulating signaling compounds, including but not limited to cyanohydrins, in order to obtain a predictably successful method of extracting useful growth-stimulating compounds from biochar.
Conclusion
Applicant's amendment necessitated the new ground(s) 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).
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.
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/JONATHAN LUKE PILCHER/ Examiner, Art Unit 1772