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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/29/2025 was filed after the mailing date of the Final Rejection on 07/29/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
In response to the amendment received on 09/29/2025:
claims 2-10 are currently pending;
claims 7-10 are withdrawn; and
all prior art grounds of rejection are withdrawn in light of Applicant’s argument that Varvemaa does not explicitly teach the claimed “sieving step” (see Applicant’s arguments at page 5 paragraph 3 to page 6 paragraph 2), which is persuasive; however, new grounds of rejection are presented based on the same references as set forth herein.
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.
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 2-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Bode et al. (US 2015/0344737 A1) (“Bode” hereinafter) in view of Varvemaa et al. (US 2015/0068112 A1) (“Varvemaa” hereinafter) and Welchdry (Dry Roller Compaction Vs. Wet Granulation Processes, 2013) (“Welchdry” hereinafter).
Regarding claim 2, Bode teaches a process for preparing a coating composition (see Bode at [0009] teaching the coating compositions may be prepared by a method), the process comprising the steps of:
the step of mixing a lignin (see Bode at [0009]),
d) dissolving the product of step c) in the organic solvent to form the solution (see Bode at [0009] teaching comprising the step of mixing… a solvent, see Bode at [0019] teaching the solvent used in the mixtures may comprise… an organic solvent or a mixture thereof, and see Bode at [0029] teaching were stirred to form a uniform solution); and
e) mixing the solution of step d) with the crosslinker to obtain the coating composition (see Bode at [0009] teaching the coating compositions may be prepared by a method comprising the step of mixing a lignin, a solvent and a crosslinker).
Bode does not explicitly teach a) compacting lignin to provide a compacted lignin, wherein the compacted lignin is agglomerated and has a particle size distribution such that at least 80 wt-% of the agglomerated lignin has a diameter within a range of from 0.2 mm to 5.0 mm, and wherein the compact lignin has a moisture content of from 1 wt-% to 45 wt-%, wherein the compact lignin is agglomerated by roll compaction with rolls, wherein the rolls have cavities and wherein a depth of each cavity used in the roll compaction is from 0.1 mm to 10 mm; b) subjecting the compacted lignin from step a) to a milling step; followed by c) a sieving step, wherein the product of step b) is subjected to sieving to remove particles having a particle diameter below 100 µm, to produce a final agglomerated lignin with a controlled particle size distribution in which a particle size distribution is governed by a porosity of sieving screens used in the sieving step; and wherein less than 10 wt-% of the particles retained after step c) have a particle diameter below 100 µm.
However, Bode teaches various processing steps are used to help break down the biomass to produce lignins… all customary preparation methods are likely suitable for use in the current disclosure (see Bode at [0017])… lignins suitable for use in the current disclosure are not limited (see Bode at [0018]).
Like Bode, Varvemaa teaches lignin (see Varvemaa at [0001] teaching this disclosure relates to a product comprising lignin and a method and a system for manufacturing product comprising lignin, see Varvemaa at [0022]-[0023] teaching the lignin powder may be used, for example, as an additive). Varvemaa also teaches that lignin has typically been used as a cake or a clump because lignin dust is explosive material and, hence, grinding of lignin agglomerates into small particles has been very challenging (see Varvemaa at [0006]). Further, Varvemaa teaches if the lignin powder comprises big agglomerates, it may be impossible to mix the lignin powder uniformly to other raw materials (see Varvemaa at [0007]).
Moreover, Varvemaa teaches the method for processing lignin comprises the following steps… feeding lignin material to the system… decreasing particle size of the lignin material in a grinding device in order to manufacture lignin powder having particle size distribution wherein at least 85 wt. % of the lignin agglomerates and particles are less than 300 microns (see Varvemaa at [0009]- [0011])… advantageously, the grinding device is a rotor mill (see Varvemaa at [0015]). Lignin powder having particle size distribution wherein at least 85 wt. % of the lignin agglomerates and particles are less than 300 microns (or 0.3 mm) is taken to meet the claimed “a)… lignin is agglomerated and has a particle size distribution such that at least 80 wt-% of the agglomerated lignin has a diameter within a range of from 0.2 mm to 5.0 mm” (see MPEP 2144.05(I)). Feeding lignin material to a grinding device is taken to meet the claimed “b) subjecting the compacted lignin from step a) to a milling step”.
Varvemaa further teaches the lignin material can also be separated using lignin separation process… typically, the separated lignin is in a form of a lignin cake or lignin clump… the lignin cake or the lignin clump to be powdered preferably has a size between 5-150 mm, but the size may vary (see Varvemaa at [0081]). And, Varvemaa teaches the lignin material… to be powdered may be in a form of pressure filtered lignin cakes or clumps… the lignin material… has dry solids content (before the grinding process) between 40 and 90% (see Varvemaa at [0085]). One of ordinary skill in the art would appreciate that the moisture content of the pressure filtered lignin cakes or clumps is 10% (or 100 – 90) to 60% (or 100 – 40). The pressure filtered lignin cakes or clumps with moisture content of 10% to 60% is taken to meet the claimed “a) compacting lignin, wherein the compacted lignin is agglomerated… wherein the compact lignin has a moisture content of from 1 wt-% to 45 wt-%” (see MPEP 2144.05(I)).
Varvemaa also teaches the particle size distribution of lignin and starch is shown in Fig. 8, shown below… for the pilot scale trial, the particle size distribution of the Rotor mill 3 dried lignin was modified by 100 microns sieve… about 25% of material was rejected and milled further… the modified particle size distribution is seen in Fig. 9, shown below (see Varvemaa at [0178]). As illustrated below, after modification by the 100 microns sieve (from Fig. 8 to Fig. 9), the particle size distribution of lignin is less than 10 wt-% of the particles have a particle diameter below 100 µm.
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The particle size distribution of lignin modified by 100 microns sieve is taken to meet the claimed “followed by c) a sieving step, wherein the product of step b) is subjected to sieving to remove particles having a particle diameter below 100 µm, to produce a final agglomerated lignin with a controlled particle size distribution in which a particle size distribution is governed by a porosity of sieving screens used in the sieving step; and wherein less than 10 wt-% of the particles retained after step c) have a particle diameter below 100 µm”.
As such, one of ordinary skill in the art would appreciate that Varvemaa teaches lignin powder having particle size distribution wherein at least 85 wt. % of the lignin agglomerates and particle size less than 300 microns modified by 100 microns sieve with moisture content of 10% to 60% so as to mix lignin powder agglomerates uniformly with other raw materials, and seek those advantages by using the lignin powder agglomerates as taught by Varvemaa in the coating composition comprising lignin as taught by Bode.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to use lignin powder having particle size distribution wherein at least 85 wt. % of the lignin agglomerates and particle size less than 300 microns modified by 100 microns sieve with moisture content of 10% to 60% as taught by Varvemaa in the coating composition comprising lignin as taught by Bode so as to mix lignin powder agglomerates uniformly with other raw materials.
With respect to the claimed “a)… wherein the compact lignin is agglomerated by roll compaction with rolls, wherein the rolls have cavities and wherein a depth of each cavity used in the roll compaction is from 0.1 mm to 10 mm”, one of ordinary skill in the art would appreciate that the claimed “depth of each cavity used in the roll compaction is from 0.1 mm to 10 mm” would result in agglomerated/compacted lignin with the size of from 0.1 mm to 10 mm.
Varvemaa teaches the lignin material can also be separated using lignin separation process… typically, the separated lignin is in a form of a lignin cake or lignin clump… the lignin cake or the lignin clump to be powdered preferably has a size between 5-150 mm, but the size may vary (see Varvemaa at [0081]). Lignin cake or clump with a size between 5-150 mm overlaps with the claimed depth of each cavity used in the roll compaction is from 0.1 mm to 10 mm.
Bode in view of Varvemaa does not explicitly teach “a)… lignin is agglomerated by roll compaction with rolls”. However, MPEP states that “examples of rationales that may support a conclusion of obviousness include… (C) Use of known technique to improve similar devices (methods, or products) in the same way” (see MPEP 2143.I)…. “Office personnel must articulate the following… (1) a finding that the prior art contained a "base" device (method, or product) upon which the claimed invention can be seen as an "improvement” (see MPEP 2143.I.C).
Welchdry teaches dry roller compaction vs. wet granulation processes (see Welchdry at Title). Welchdry also teaches that dry roller compaction… eliminates the need for liquid binders and drying equipment associated with wet granulation… offers the economy of continuous operation and greater throughput… wet granulation often requires batch processing with stop-and-go operating cycles… produces the more precise granule size and bulk density preferred as an intermediate material in tableting or a final, flowable powder product (see Welchdry at page 1, bullets 1-3). Dry roller compaction is taken to meet the claimed “a)… lignin is agglomerated by roll compaction with rolls”.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to use dry roller compaction as taught by Welchdry for lignin cake or clump with a size between 5-150 mm as taught by Bode in view of Varvemaa because it is known technique to improve on the wet granulation method, wherein dry roller compaction eliminates the need for liquid binders and drying equipment associated with wet granulation, offers the economy of continuous operation and greater throughput, produces the more precise granule size and bulk density preferred as an intermediate material in tableting or a final, flowable powder product.
Regarding claim 3, Bode in view of Varvemaa and Welchdry teach the limitations as applied to claim 2 above, and Varvemaa further teaches wherein the lignin is agglomerated without addition of any additives (see Varvemaa at [0085] teaching the lignin material… to be powdered may be in a form of pressure filtered lignin cakes or clumps). One of ordinary skill in the art would appreciate that Varvemaa does not explicitly teach that lignin cakes or clumps or agglomerates comprises any additives.
Regarding claim 4, Bode in view of Varvemaa and Welchdry teach the limitations as applied to claim 2 above, and Varvemaa further teaches wherein the lignin used in step a) has a moisture content of from 5 wt-% to 10 wt-% (see Varvemaa at [0085] teaching the lignin material… to be powdered may be in a form of pressure filtered lignin cakes or clumps… the lignin material… has dry solids content (before the grinding process) between 40 and 90%). One of ordinary skill in the art would appreciate that the moisture content of the pressure filtered lignin cakes or clumps is 10% (or 100 – 90) to 60% (or 100 – 40). The pressure filtered lignin cakes or clumps with moisture content of 10% to 60% meets the claimed a moisture content of from 5 wt-% to 10 wt-% (see MPEP 2144.05(I)).
Regarding claim 6, Bode in view of Varvemaa and Welchdry teach the limitations as applied to claim 2 above, and Bode further teaches wherein the crosslinker is selected from a group consisting of… glycidyl methacrylate (see Bode at [0009] teaching a polymeric epoxy crosslinker comprising glycidyl (meth)acrylate).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Bode in view of Varvemaa and Welchdry as applied to claim 2 above, and further in view of Phillips (US 1,899,526) (“Phillips” hereinafter).
Regarding claim 5, Bode in view of Varvemaa and Welchdry teaches the limitations as applied to claim 1 above, and Bode further teaches the solvent used in the mixtures may comprise… an organic solvent or a mixture thereof (see Bode at [0019]).
However, Bode does not explicitly teach wherein the organic solvent is selected from a group consisting of: ketones, esters, alcohols, hydrocarbons, ethers or mixtures thereof.
Like Bode, Phillips teaches a coating composition comprising lignin and a solvent (see Phillips at page 1, left column, lines 17-21 teaching lignin when dissolved in a suitable solvent, as for example a mixture of alcohol and benzene… makes an excellent varnish). Phillips also teaches it (referring to lignin) is readily soluble in mixtures of any two or more organic solvents… for example… ethyl alcohol and acetone (see Phillips at page 1 left column, lines 38-44). Ethyl alcohol (specie of alcohol) and acetone (specie of ketone) is taken to meet the claimed wherein the organic solvent is selected from a group consisting of… ketone… alcohol… or mixtures thereof.
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that ethyl alcohol and acetone are suitable solvents for lignin.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to use the solvents ethyl alcohol and acetone as taught by Phillips in the coating composition comprising lignin and solvent as taught by Bode in view of Varvemaa and Welchdry because lignin is readily soluble in a mixture of ethyl alcohol and acetone.
Response to Arguments
Applicant’s argument that Varvemaa does not explicitly teach the claimed “sieving step” (see Applicant’s arguments at page 5 paragraph 3 to page 6 paragraph 2), filed 09/29/2025, with respect to the rejection(s) of independent claim 2 based on Bode in view of Varvemaa and Welchdry have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection based on the same references. Relevant arguments are addressed below.
Applicant discusses that Varvemaa does not explicitly teach the claimed “sieving step” (see Applicant’s arguments at page 5 paragraph 3 to page 6 paragraph 2).
Examiner acknowledges the arguments and respectfully agrees that the previous office action indicate that Varvemaa does not explicitly teach the claimed “sieving”. However, after consideration, Varvemaa teaches the particle size distribution of lignin and starch is shown in Fig. 8… for the pilot scale trial, the particle size distribution of the Rotor mill 3 dried lignin was modified by 100 microns sieve… about 25% of material was rejected and milled further… the modified particle size distribution is seen in Fig. 9 (see Varvemaa at [0178]), which is taken to meet the claimed “followed by c) a sieving step, wherein the product of step b) is subjected to sieving to remove particles having a particle diameter below 100 µm, to produce a final agglomerated lignin with a controlled particle size distribution in which a particle size distribution is governed by a porosity of sieving screens used in the sieving step; and wherein less than 10 wt-% of the particles retained after step c) have a particle diameter below 100 µm”, as outlined in the rejection above. As such, the rejection for independent claim 2 is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARITES A GUINO-O UZZLE whose telephone number is (571)272-1039. The examiner can normally be reached M-F 8am-4pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731
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