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 .
Status of the Application
Claims 1-8 and 16-27 are pending, of which claims 6 and 7 are withdrawn.
Amendment necessitated new claim rejection as set forth above.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 8 and 16-25 and elected species are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Karstens (US 20110111474 A1).
Karstens discloses a method to obtain cellulose, hemicellulose, sugars, bioethanol from a biomass comprising steps:
Treating (and therefore Providing) a mixture (equivalent to first reaction mixture) comprising solubilized biomass and an alkanolamine with example of ethanolamine (2-aminoethan-1-ol) at 120C for at least half an hour;
separating and recovering a part of ethanolamine from mixture (a) using vacuum distillation. Mixture left/generated after removal of alkanolamine is equivalent to second mixture and comprises lignin;
performing hydrolysis of second mixture using enzyme cellulases, produced by microbes, bacteria and fungi (includes yeast) with an example of Trichoderma, producing a mixture, equivalent to third mixture;
performing fermentation of the third mixture to produce the compound;
introducing (recycling) at least part of the recovered ethanolamine from step b to the first reaction mixture of step a (entire application, especially abstract, 0017, 0019, 0022, 0023, 0025-0028, 0031, 0032, 0036, 0043-0049, 0051, 0061, claims). Since ethanolamine is recycled to first step to the first reaction mixture, the process is expected to comprise introducing more biomass to the first mixture in step a. This is because of consumption of biomass during first go of the process and recycling of ethanolamine has no meaning if the starting material is not renewed or added (reads on claim (reads on instant claims 1-5, 8, 16, 18-21, 23, 24 and 25). The cited prior art teaches preferably carrying out process in a continuous operation (carried out in single apparatus) (paragraph 0044). Paragraphs 0032, 0057, 0058 teaches that more than 95% of the lignin, (which accounts for 18-25wt% of total biomass) is separated in step 2 and content of lignin after such separation, i.e., mixture 2 is 1.5wt%-3wt% (reads on second mixture comprises at most about 80%by weight of lignin present in the first mixture of claims 17 and 22).
Since the cited prior art reads on all the limitations of the instant claims 1-5, 8 and 16-25, these claims are anticipated.
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 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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 8, 16-27 and elected species are rejected under 35 U.S.C. 103 as being unpatentable over Karstens (US 20110111474 A1).
Determining the scope and contents of the prior art
Karstens discloses a method to obtain cellulose, hemicellulose, sugars, bioethanol from a biomass comprising steps:
Treating (and therefore Providing) a mixture (equivalent to first reaction mixture) comprising solubilized biomass and an alkanolamine with example of ethanolamine (2-aminoethan-1-ol) at 120C for at least half an hour;
separating and recovering a part of ethanolamine from mixture (a) using vacuum distillation. Mixture left/generated after removal of alkanolamine is equivalent to second mixture and comprises lignin;
performing hydrolysis of second mixture using enzyme cellulases, produced by microbes, bacteria and fungi (includes yeast) with an example of Trichoderma, producing a mixture, equivalent to third mixture;
performing fermentation of the third mixture to produce the compound;
introducing (recycling) at least part of the recovered ethanolamine from step b to the first reaction mixture of step a (entire application, especially abstract, 0017, 0019, 0022, 0023, 0025-0028, 0031, 0032, 0036, 0043-0049, 0051, 0061, claims). Since ethanolamine is recycled to first step to the first reaction mixture, the process is expected to comprise introducing more biomass to the first mixture in step a. This is because of consumption of biomass during first go of the process and recycling of ethanolamine has no meaning if the starting material is not renewed or added (reads on claim (reads on instant claims 1-5, 8, 16, 18-21, 23, 24 and 25). The cited prior art teaches preferably carrying out process in a continuous operation (carried out in single apparatus) (paragraph 0044). Paragraphs 0032, 0057, 0058 teaches that more than 95% of the lignin, (which accounts for 18-25wt% of total biomass) is separated in step 2 and content of lignin after such separation, i.e., mixture 2 is 1.5wt%-3wt% (reads on second mixture comprises at most about 80%by weight of lignin present in the first mixture of claims 17 and 22).
Ascertaining the differences between the prior art and the claims at issue
Karstens discloses a method to obtain cellulose, hemicellulose, sugars from a biomass comprising treating (and therefore Providing) a mixture (equivalent to first reaction mixture) comprising solubilized biomass and an alkanolamine with example of ethanolamine; separating and recovering a part of ethanolamine using vacuum distillation; introducing (recycling) at least part of the recovered ethanolamine to the first reaction mixture. The cited prior art further teaches hydrolysis of mixture comprising lignin with cellulases using microbes, bacterium or fungus (includes yeast) and examples of microbe that produces cellulase. However, the cited prior art is silent about examples of specific yeast of the instant claims 26 and 27.
Resolving the level of ordinary skill in the pertinent art
With regards to the above difference- Since the cited prior art teaches hydrolysis of mixture comprising lignin with cellulases using microbes, bacterium or fungus (includes yeast) and examples of microbe that produces cellulase, it would have been prima facie obvious to a person of ordinary skill in the art with reasonable expectation of success that any fungus that produces cellulase may be useful in the hydrolysis process.
Thus, the cited prior art meets all limitations of the instant claims.
Based on the above established facts, it appears that the teachings of above cited prior art read applicants’ process and prima facie obvious to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Karstens discloses a method to obtain cellulose, hemicellulose, sugars from a biomass comprising treating (and therefore Providing) a mixture (equivalent to first reaction mixture) comprising solubilized biomass and an alkanolamine with example of ethanolamine; separating and recovering a part of ethanolamine using vacuum distillation; introducing (recycling) at least part of the recovered ethanolamine to the first reaction mixture, hydrolysis with cellulases and fermentation.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
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. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. ”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is a reasonable expectation of success to that any fungus that produces cellulase may be useful in the hydrolysis process and can be made by teachings of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited references and to make the instantly claimed process with a reasonable expectation of success.
Response to Arguments
Applicant’s remarks and amendment, filed on 12/23/2025, have been fully considered but not found persuasive.
Applicant’s argument is moot in view of new rejection as set forth above.
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.
Conclusion
No Claim is allowed.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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