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 24-27, 32-34, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Gargulak et al. (US Pat. 6,238,475).
Considering Claims 24, 26, 27: Gargulak et al. teaches a process for producing oxidized lignin comprising bringing into contact a lignosulfonate, ammonium hydroxide, and oxygen/an oxidation agent; mixing the components thoroughly, and allowing an oxidation to take place, where the reaction occurs for one hour (Example 1).
Gargulak et al. teaches that generally the oxidation reaction occurs at a temperature of 90 to 180 ºC for 0.25 to 20 hours (4:7-14). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have optimized the oxidation conditions through routine experimentation, and the motivation to do so would have been to control the degree of oxidative degradation of the lignosulfonate.
Considering Claim 25: Gargulak et al. teaches premixing components (i) and (ii) (Example 1).
Considering Claim 32: Gargulak et al. teaches an example with a pH of 10.5 (Example 2).
Considering Claims 33 and 34: Gargulak et al. teaches mixing the components until the components are thoroughly mixed. Gargulak et al. does not teach the time and temperature of the mixing step. However, "where 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.) See MPEP § 2144.05. As the time and temperature would affect the degree of mixing of the composition, a person of ordinary skill in the art would consider these to be result effective variables. It would have been obvious to a person of ordinary skill in the art to have optimized the mixing time and temperature through routine experimentation, and the motivation to do so would have been to ensure thorough mixing of the components.
Considering Claim 36: Gargulak et al. does not teach the process as being continuous. However, it is obvious to make batch processes continuous. See MPEP § 2144.04(V)(E). It would have been obvious to a person of ordinary skill in the art to have made the batch process of Gargulak et al. continuous, and the motivation to do so would have been, to allow for more uniform production.
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Gargulak et al. (US Pat. 6,238,475) as applied to claim 24 above, and further in view of Detroit (US Pat. 5,446,133).
Considering Claim 35: Gargulak et al. teaches the process of claim 24 as shown above.
Gargulak et al. does not teach the viscosity of the oxidized lignin. However, Detroit teaches oxidizing a lignin to a viscosity of 19-45 cps (Table 2). Gargulak et al. and Detroit are analogous art as they are concerned with the same field of endeavor, namely oxidized lignin. It would have been obvious to a person of ordinary skill in the art to have formed an oxidized lignin with the viscosity of Detroit in the process of Gargulak et al., and the motivation to do so would have been, as Detroit suggests, to allow it to function as a dispersant.
Claims 24-28, 31-34, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Kiljunen et al. (WO 2011/042610).
Considering Claim 24 and 26-28: Kiljunen et al. teaches a method for producing oxidized lignin comprising mixing, with stirring, a kraft lignin, sodium hydroxide, hydrogen peroxide, and a polyol (Example 5), followed by oxidation of the mixture for one hour (Example 5).
Kiljunen et al. teaches the temperature of the oxidation as being 100 ºC. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have optimized the oxidation conditions through routine experimentation, and the motivation to do so would have been to control the degree of oxidative degradation of the lignin.
Considering Claim 25: Kiljunen et al. teaches premixing components (i), (ii), and (iii).
Considering Claim 31: Kiljunen et al. teaches providing the lignin as an aqueous solution of 10 weight percent lignin, adjusting the pH with sodium hydroxide, adding the polyol and adding the hydrogen peroxide with stirring (Example 5).
Considering Claim 32: Kiljunen et al. teaches the lignin solution as having a pH above 11 (9:21-23).
Considering Claims 33 and 34: Kiljunen et al. teaches mixing the components until the components are thoroughly mixed. Kiljunen does not teach the time and temperature of the mixing step. However, "where 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.) See MPEP § 2144.05. As the time and temperature would affect the degree of mixing of the composition, a person of ordinary skill in the art would consider these to be result effective variables. It would have been obvious to a person of ordinary skill in the art to have optimized the mixing time and temperature through routine experimentation, and the motivation to do so would have been to ensure thorough mixing of the components.
Considering Claim 36: Kiljunen et al. does not teach the process as being continuous. However, it is obvious to make batch processes continuous. See MPEP § 2144.04(V)(E). It would have been obvious to a person of ordinary skill in the art to have made the batch process of Kiljunen et al. continuous, and the motivation to do so would have been, to allow for more uniform production.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Kiljunen et al. (WO 2011/042610) as applied to claim 24 above, and further in view of Passauer et al. (US 2015/0175882).
Considering Claim 29: Kiljunen et al. teaches the process of claim 29 as shown above.
Kiljunen et al. does not teach adding a transition metal catalyst to the mixture. However, Passauer et al. teaches adding a transition metal catalyst to hydrogen peroxide for oxidizing lignin (¶0024). Kiljunen et al. and Passauer et al. are analogous art as they are concerned with the same field of endeavor, namely lignin oxidation. It would have been obvious to a person of ordinary skill in the art to have added the catalyst of Passauer et al. to the mixture of Kiljunen et al., and the motivation to do so would have been, as Passauer et al. suggests, to increase the reactivity and hydrophilicity of the lignin (¶0026).
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Kiljunen et al. (WO 2011/042610) as applied to claim 24 above, and further in view of Detroit (US Pat. 5,446,133).
Considering Claim 35: Kiljunen et al. teaches the process of claim 24 as shown above.
Kiljunen et al. does not teach the viscosity of the oxidized lignin. However, Detroit teaches oxidizing a lignin to a viscosity of 19-45 cps (Table 2). Kiljunen et al. and Detroit are analogous art as they are concerned with the same field of endeavor, namely oxidized lignin. It would have been obvious to a person of ordinary skill in the art to have formed an oxidized lignin with the viscosity of Detroit in the process of Kiljunen et al., and the motivation to do so would have been, as Detroit suggests, to allow it to function as a dispersant.
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 24-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 7-13 of U.S. Patent No. 12,202,851. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claims 24, 25, 27, 28, and 30: Claim 1 of Patent ‘851 teaches a method for producing oxidized lignins, wherein the method comprises contacting a component (i) comprising one or more lignins, a component (ii) comprising ammonia, a component (iii) comprising one or more oxidizing agents which include hydrogen peroxide, a component (iv) comprising one or more plasticizers which include polyethylene glycol, mass ratios of lignin, ammonia, hydrogen peroxide and polyethylene glycol being such that based on 1 part by weight of dry lignin an amount of ammonia is from 0.01 to 0.5 parts by weight, an amount of hydrogen peroxide, 30 weight % solution in water, is from 0.025 to 1.0 parts by weight, and an amount of polyethylene glycol is from 0.03 to 0.60 parts by weight.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have optimized the oxidation conditions through routine experimentation, and the motivation to do so would have been to control the degree of oxidative degradation of the lignin.
Considering Claims 26, 29, and 31-36: Claims 2 and 7-13 of Patent ‘851 correspond to instant claims 26, 29, and 31-36.
Response to Arguments
Applicant’s arguments with respect to claims 24-36 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