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 .
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.
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, 7-12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al. (CN 103131022) in view of Sudo et al. (US Pat. 5,344,921).
Considering Claims 1, 2, 9-11, and 15: Zhao et al. teaches a lignin degradation process comprising reacting lignin, phenol, and an acid catalyst at a temperature of 230 to 300 ºC (¶0006) in a ratio of phenol to lignin of 100:30 (¶0029) to provide a modified lignin with a number average molecular weight of 500 to 800 and a weight average molecular weight of 1,200 to 1,600 (¶0013).
Zhao et al. is silent towards the means of providing the lignin material. However, Sudo et al. teaches using steam blasted/steam exploded lignin in a reaction with phenol (3:18-22). Zhao et al. and Sudo et al. are analogous art as they are concerned with the same field of endeavor, namely lignin phenolation. It would have been obvious to a person of ordinary skill in the art to have used an steam explosion to prepare the lignin of Zhao et al., and the motivation to do so would have been, as Sudo et al. suggests, it is a commercially available means of isolating lignin.
Considering Claims 3 and 4: Zhao et al. teaches the catalyst as being 2.3% by weight in an example (¶0029).
Considering Claim 5: Zhao et al. does not teach the process as being performed without a catalyst. However, Sudo et al. teaches that the reaction of lignin and phenol can proceed with or without a catalyst. Zhao et al. and Sudo et al. are analogous art as they are concerned with the same field of endeavor, namely lignin phenolation. It would have been obvious to a person of ordinary skill in the art to have performed the process of Zhao et al. without a catalyst, as in Sudo et al., and the motivation to do so would have been, as Podschun et al. suggests, to prevent condensation during the depolymerization reaction (Section 3.1).
Considering Claims 7 and 8: Zhao et al. teaches the reaction as being at 250 ºC for 2 hours (¶0029).
Considering Claim 12: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the total reactive sites (2H+G), would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al. (CN 103131022) in view of Sudo et al. (US Pat. 5,344,921) as applied to claim 1 above, and further in view of Podschun et al. (European Polymer Journal 67, 2015, 1-11).
Considering Claim 13: Zhao et al. and Sudo et al. collectively teach the process of claim 1 as shown above.
Zhao et al. does not teach a solid-liquid separation step. However, Podschun et al. teaches isolating the lignophenol from the reaction mixture by solid-liquid separation (Section 2.2). It would have been obvious to a person of ordinary skill in the art to have isolated the reaction product of Zhao et al. with the step of Podschun et al., and the motivation to do so would have been, to produce a lignin product that can be used in further processing.
Response to Arguments
Applicant’s arguments with respect to claims 1-5, 7-13, and 15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767