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 .
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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3 June 2026 has been entered.
Amendments
Applicant’s amendments to the claims filed 3 June 2026 have been entered and considered for this action. These amendments overcome the prior claim objection, which is withdrawn.
Claim Objections
Claims 1, 6, 7, 8, 17, 19, 20, and 21 are objected to because the claims use the terms “biomass” and “cellulosic biomass” interchangeably with the more complete term “waste cellulosic biomass”; only one term should be used to refer to a single composition. Appropriate correction is required.
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.
Claim 22 is 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 22 recites the limitation “the concentration of said hydrogen peroxide". There is insufficient antecedent basis for this limitation in the claim. In particular, it is unclear if this limitation refers to the concentration of hydrogen peroxide during the required treatment “before or after step (a)” wherein the cellulosic biomass is put in contact with hydrogen peroxide, as is recited by claim 1, or if it refers to a concentration of hydrogen peroxide during step (a), as the concentration recited in claim 22 is measured relative to the weight of water used in step (a). Support for an interpretation where “the concentration” refers to a concentration during step (a), as opposed to a concentration before or after step (a), is that claim 22 appears to allow for a concentration of hydrogen peroxide that it 0%, but such a concentration of the hydrogen peroxide used in the treatment of claim 1 would mean no hydrogen peroxide at all, which would appear to fail to meet the limitations of claim 1.
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.
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 1, 14, 16-17, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Kallioinen et al. (WO 2011/061400 A1) in view of Bule et al. (US 2015/0184212 A1) and as evidenced by Vassilev et al. (Fuel 2010, 89, 913-933), and with respect to claim 22 as further evidenced by Fisher Scientific (“Hydrogen Peroxide, 30%” product description, Retrieved from the Internet: <URL: https://www.fishersci.com/shop/products/hydrogen-peroxide-30-certified-acs-thermo-scientific/H3254>; and, “Hydrogen Peroxide, 3%” product description, Retrieved from the Internet: <URL: https://www.fishersci.com/shop/products/hydrogen-peroxide-3-certified-fisher-scientific/H325400>; collectively “Fisher”).
Regarding claim 1, Kallioinen discloses a process for the production of C5-C6 sugars (glucose, mannose, xylose; p. 6, line 6) from waste cellulosic biomass containing impurities comprising nitrogen (subjecting cellulosic or lignocellulosic raw material to a treatment carried out in alkaline aqueous medium…raw-material can be derived from biomass…municipal wastes can be used, particularly organic, solid, or liquid waste; p. 4 lines 5-7 and p. 6, lines 19 and 22-23) comprising the steps of:
(a) placing said biomass in contact with a basic aqueous solution of pH at least 11.8 at a temperature of about 50 °C to 200 °C (p. 7, lines 21 and 26), at atmospheric pressure (the pressure is typically ambient (normal) pressure (p. 7, lines 30-31), obtaining a mixture containing ca. 4 to 20% dry weight of said cellulosic biomass in relation to total weight of the solution (most preferably ca. 4 to 20% dw/w; p. 7, lines 6-37);
(b) separating said mixture into a solid fraction comprising cellulose and a liquid fraction (cellulose being present as a [solid] polymer…the aqueous slurry can be fractionated into separate portions. Solid and liquid fractions can be separated; p. 8, lines 25-26 and p. 9, lines 10-11; see also p. 12, lines 15-16)
(c) subjecting said solid fraction to one or more washes with water (the solid fibrous fraction was washed with water; p. 15, line 17)
(d) subjecting the solid fraction resulting from step c) to a hydrolysis treatment resulting in a hydrolysate comprising C5-C6 sugars (the material is subjected to hydrolysis… By extended hydrolysis of the polysaccharides and oligosaccharides, the yield of monosaccharides is increased. The monosaccharides, [include] xylose and glucose and galactose; p. 9, lines 16-17 and 22-24),
Regarding the pH of the basic aqueous solution in step (a), Kallioinen teaches that the biomass is contacted with an aqueous solution at pH of at least 11.8, which overlaps with claimed range of a pH > 12. Furthermore, these ranges are sufficiently close that one of ordinary skill in the art would expect similar results. Additionally, Kallioinen teaches in Example 6 (Tables 2 and 3, p. 16-17), that pHs of 12.8 (NaOH), 13.5 (KOH), and 11.7 (Na2CO3) all are similarly effective at generating high yields of mono- and poly-saccharides in the washed solids.
Regarding the temperature, Kallioinen teaches a temperature range of about 50 °C to about 200 °C (p. 7, line 26), which overlaps with the instantly claimed range of ≥60 °C and <100 °C. Kallioinen further teaches that if lower temperature are selected one can simply increase the reaction time (As is well known, reaction rate increases as temperature increases. Higher treatment temperature can be combined with shortened reaction time and vice versa; p. 8, lines 4-5). Therefore it would have been obvious to one of ordinary skill in the art to select the overlapping portion of the temperature range taught by Kallioinen and the instant claim, and to correspondingly optimize the reaction time by routine experimentation, as taught by Kallioinen.
Generally, differences in concentration and 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." It is also noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art,” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). See MPEP 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Therefore the claimed ranges of pH and temperature are considered an obvious variants and/or routine optimization of the values of the cited prior art.
Regarding the limitation that the waste cellulosic biomass be a post-consumer biomass, Kallioinen teaches that the raw-material can be organic, solid or liquid municipal wastes, or municipal waste slurries (p. 6, lines 19-25 and 31-32) which are interpreted as being sources of post-consumer biomass, consistent with the instant specification, which states that post-consumer biomass can come from the sorting of waste or sewage treatment plants ([0003] of PG Pub 2023/0271991 A1).
Regarding the limitation that the biomass contain impurities comprising nitrogen, as nitrogen is not a constituent of cellulose, any nitrogen in the biomass would necessarily be from impurities. Vassilev provides evidence that all sources of biomass contain at least some nitrogen content (minimum 0.1% N, Table 5, p. 920), as would be expected to one of ordinary skill in the art given the presence of nitrogen in natural and waste materials. The biomass sources taught by Kallioinen will therefore certainly contain impurities comprising nitrogen.
Kallioinen does not teach that the cellulosic biomass is put in contact with hydrogen peroxide before or after step (a), and instead relies only upon oxygen (p. 25, line 25) as the required oxidizing agent (contacting the biomass in the mixture with an oxidizing agent; claim 1).
However, Bule teaches a similar method for conversion of cellulosic biomass into fermentable sugars (obtaining sugars from lignocellulosic biomass and utilizing said sugars for fermentation to biofuel; [0001]), and Bule further teaches that the cellulosic biomass can undergo a pretreatment with an oxidant such as hydrogen peroxide in order to be activated and more easily hydrolyzed (in some of the epitome process to improve the lignin modification or destruction step of the pretreatment process by the means of utilizing highly reactive reagents (such as hydrogen peroxide including but not limited to) in first step and improve efficiency of second step; [0008]).
Therefore, in conjunction with Kallioinen’s teaching that an oxidizing agent is to be present to during the alkali treatment, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the method of Kallioinen a step before step (a) where the cellulosic biomass is contacted with hydrogen peroxide. One of ordinary skill in the art would have been motivated to do so because Bule teaches that hydrogen peroxide can serve as an oxidant to increase the efficiency of the hydrolysis process and because Kallioinen teaches that an oxidant, such as hydrogen peroxide, should be present during step (a). It is further noted that one of ordinary skill in the art would have found it obvious to either use the hydrogen peroxide as a supplement to or as replacement for to the oxygen-containing atmosphere used by Kallioinen, as the oxygen and hydrogen peroxide both serve the same purpose of activating and solubilizing the lignin components. MPEP 2144.06.
Further regarding the requirement that the hydrogen peroxide be introduced before or after step (a), it is noted that the courts have held that any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)). See MPEP §2144.04 IV C. Thus, any claimed order of steps is an obvious variant of the suggestion in the prior art to contact the biomass with hydrogen peroxide, whether the art is considered as teaching introducing the hydrogen peroxide before, during, or after step (a).
Regarding claim 14, modified Kallioinen teaches the method of claim 1, and Kallioinen further teaches subjecting the C5-C6 sugars to conversion by biochemical means into chemical intermediates (these embodiments can be applied to the production of any chemical that can be prepared by fermentation from monosaccharides; p. 10, line 31-33).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to first grow the microbial strain capable of fermenting the monosaccharides, and Kallioinen provides examples on page 11. One of ordinary skill in the art would have been motivated to do so because having the strain grown is a prerequisite for using it in the fermentation processes taught by Kallioinen.
Regarding claim 16, Kallioinen teaches the method of claim 1, and also teaches a mechanical comminution treatment prior to step (a) (bring the raw material into a more homogenized form for example by milling or crushing before it is contacted with the alkaline agent; p. 12, lines 25-26).
Regarding claim 17, modified Kallioinen teaches the method of claim 1, where the biomass is placed in contact with a basic aqueous solution for a time of 20 hours (p. 13, line 9), which lies in the instantly claimed range of between 30 min and 24 hours.
Regarding claim 22, modified Kallioinen teaches the method of claim 1, where Bule teaches pre-treatment of the cellulosic biomass with hydrogen peroxide. Bule further teaches that the concentration of hydrogen peroxide is to be 3% to 30% by weight per volume ([0019]). The density of 3% hydrogen peroxide is approximately 1.0 g/mL and the density of 30% hydrogen peroxide is approximately 1.11 g/mL, as evidenced by Fisher. Therefore, a concentration of 3% w/v corresponds to 3 g of hydrogen peroxide per 100 grams of solution (97 g water), and a 30% w/v peroxide solution will contain 30 g of hydrogen peroxide per 111 grams of solution (81 grams water); i.e., Bule teaches a concentration range of 3% to 37% by weight of hydrogen peroxide relative to the weight of water in the peroxide solution, which overlaps with the instantly claimed concentration of 0% to 3% by weight. Because Kallioinen teaches the oxidant being present in step (a), it would have been obvious to mix the hydrogen peroxide at these concentrations with the water used in step (a).
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art,” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). Therefore, the claimed range of concentration merely represents an obvious variant and/or routine optimization of the values of the cited prior art. It is again noted that, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Claims 2, 5, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kallioinen et al. (WO 2011/061400 A1) in view of Bule et al. (US 2015/0184212 A1), as applied to claim 1, and further in view of Ninomiya et al. (JP 2013202021 A). The previously provided English machine translation of Ninomiya et al. (JP 2013202021 A) is used in the analysis below.
Regarding claims 2 and 5, modified Kallioinen teaches the method of claim 1, as analyzed above, but does not specifically teach the production of C5-C6 sugars from waste cellulosic biomass that is derived from a hygiene product.
However, Ninomiya teaches the production of C5-C6 sugars (saccharification) of cellulose-containing waste containing super-absorbent polymers, such as disposable diapers ([0002]), which are a hygiene product. Ninomiya also teaches that there has been an increasing need to recover and recycle the materials from such products due to environmental considerations ([0004]).
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 in the method of Kallioinen biomass derived from a hygiene product and which contains a superabsorbent polymer, as taught by Ninomiya, thereby arriving at the claimed invention meeting the limitations of claims 2 and 5. One of ordinary skill in the art would have been motivated to do so in order to recover and recycle the materials contained therein and thereby address environmental problems associated with their disposal, as taught by Ninomiya.
Regarding claim 6, modified Kallioinen teaches the method of claim 5, where Ninomiya further teaches that the super-absorbent polymer comprises 15% by weight of the content of the biomass (SAP component: approximately 15%; [0036]), thereby meeting the limitations of claim 6.
Claims 3, 4, 9, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kallioinen et al. (WO 2011/061400 A1) in view of Bule et al. (US 2015/0184212 A1), as applied to claim 1, and further in view of Honda et al. (J. Mat. Cycles Waste Manag. 2002, 4, 46-50).
Regarding claims 3, 4, 9, and 20, modified Kallioinen teaches the method of claim 1, and Kallioinen also teaches that municipal waste slurries are a potential source of cellulosic biomass (p. 6, line 25). While one of ordinary skill in the art might recognize this class of waste to include biomass from wastewater treatment plants, Kallioinen does not specifically mention them.
However, Honda teaches that sludge from wastewater treatment plant contains considerable amounts of cellulose and that such cellulose can be recovered for biomass utilization (abstract, first and last sentences). Honda further teaches that the wastewater sludge can be concentrated and purified to level of more than 70% purity (cellulosic sludge with a purity of more than 70% can be recovered; Conclusions), which corresponds to an impurity content of less than 30% by weight.
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 in the method of Kallioinen the purified wastewater treatment sludge of Honda with an impurity contents of less than 30%, thereby arriving at the invention of claims 3, 4, 9 and 20.
One of ordinary skill in the art would have been motivated to do so because Kallioinen teaches that municipal waste slurries can be a source of cellulosic biomass to be used in their method, and Honda teaches that wastewater sludge is one such slurry that is high in cellulose and a good biomass resource, including conversions like those taught by Kallioinen (the production of organic compounds such as glucose and ethanol by biological conversion; p. 49, column 1, paragraph 2).
Claims 7 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Kallioinen et al. (WO 2011/061400 A1) in view of Bule et al. (US 2015/0184212 A1), as applied to claim 1, and further in view of Nishimura et al. (Waste Manag. 2017, 67, 86-94).
Regarding claim 7, modified Kallioinen teaches the method of claim 1, but does not specifically teach the nitrogen content of the waste cellulosic biomass materials being treated.
However, Nishimura also teaches the saccharification and fermentation of waste materials, waste paper and kitchen waste (title), that are post-consumer biomass (waste paper and kitchen waste are rich in carbohydrates (cellulose and starch), and thus increasing attention has been given to the conversion of kitchen waste and waste paper to ethanol; p. 86, col. 2, ¶ 2) in a process that is analogous to that of Kallioinen. Nishimura further teaches that the mixture of waste paper and kitchen waste used in their method has a nitrogen content of 1.0 wt% relative to the dry weight of the biomass (Table 2), and that mixing kitchen waste with waste paper provides a nutrient source for the fermentation of sugars derived from waste paper cellulose (Kitchen waste can serve as a nutrient source … by mixing it with waste paper for ethanol production; p. 87, ¶ 1).
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 in the method of Kallioinen the waste cellulosic biomass source taught by Nishimura, which has a total nitrogen content of 1wt% relative to the dry weight of the cellulosic biomass, thereby arriving at the invention of claim 7. One of ordinary skill in the art would have been motivated to do so because Nishimura teaches that such a mixed waste source allows for the saccharification and fermentation of cellulosic waste materials, which is the same goal as Kallioinen, without the need for expensive nutrients (p.87, ¶ 2).
Regarding claim 21, modified Kallioinen teaches the method of claim 1, but does not specifically teach a waste cellulosic biomass materials with a lignin content not exceeding 15%.
However, Nishimura also teaches the saccharification and fermentation of waste materials, waste paper and kitchen waste (title), that are post-consumer biomass (waste paper and kitchen waste are rich in carbohydrates (cellulose and starch), and thus increasing attention has been given to the conversion of kitchen waste and waste paper to ethanol; p. 86, col. 2, ¶ 2) in a process that is analogous to that of Kallioinen. Nishimura further teaches that the mixture of waste paper and kitchen waste used in their method has a lignin content of 6.5 wt% relative to the dry weight of the biomass (Table 2), and that mixing kitchen waste with waste paper provides a nutrient source for the fermentation of sugars derived from waste paper cellulose (Kitchen waste can serve as a nutrient source … by mixing it with waste paper for ethanol production; p. 87, ¶ 1).
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 in the method of Kallioinen the waste cellulosic biomass source taught by Nishimura, which has a total lignin content of 6.5 wt% relative to the dry weight of the cellulosic biomass, thereby arriving at the invention of claim 21. One of ordinary skill in the art would have been motivated to do so because Nishimura teaches that such a mixed waste source allows for the saccharification and fermentation of cellulosic waste materials, which is the same goal as Kallioinen, without the need for expensive nutrients (p.87, ¶ 2).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kallioinen et al. (WO 2011/061400 A1) in view of Bule et al. (US 2015/0184212 A1), as applied to claim 1, and further in view of Honda et al. (J. Mat. Cycles Waste Manag. 2002, 4, 46-50) and Vassilev et al. (Fuel 2010, 89, 913-933).
Regarding claim 8, modified Kallioinen teaches the method of claim 1, and also teaches that municipal waste slurries are a potential source of cellulosic biomass (p. 6, line 25). Kallioinen does not specifically teach the phosphorus content of the waste cellulosic biomass materials being treated.
Honda teaches that sludge from wastewater treatment plants (sewage sludge), a type of municipal waste slurry, is a waste biomass resource that contains considerable amounts of cellulose (abstract) and that through biological conversion, cellulose recovered from sewage sludge can be used in the production of glucose, ethanol, and organic acids (p. 49, col, 1, ¶ 2), the same processes being taught by Kallioinen. Honda also does not teach the phosphorus concentration in the sewage sludge waste cellulosic biomass.
However, Vassilev teaches that on a dry basis, sewage sludge is comprised of approximately 46.3% ash content (Table 5, entry 85), and that this ash fraction is comprised of 15.88% P2O5 (Table 6, entry 85); P2O5 is 43.6% P by mass, and so the sewage sludge ash is 6.93% phosphorus. The amount of phosphorus in the sewage sludge is therefore 6.93% of 46.3%, or 3.2%, which is equivalent to 32,000 g/Kg. Such phosphorus will be in the impurities because cellulose and saccharides do not contain phosphorus.
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 sewage sludge as the waste cellulosic biomass in the method of Kallioinen, as taught by Honda. One of ordinary skill in the art would have been motivated to do so because Kallioinen suggest using municipal wastes, which sewage sludge is, and because Honda teaches that such biomass is cellulose rich and appropriate for the very type of processes being performed by Kallioinen. Vassilev teaches sewage sludge waste cellulosic biomass has a typical phosphorus content of 32,000 mg/kg, which is greater than the 500 mg/kg required by the instant claim. 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 such sludges in the method of Kallioinen, thereby arriving at the instantly claimed invention. One of ordinary skill in the art would have been motivated to do so because Vassilev teaches that such compositions are typical of this waste cellulosic biomass.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kallioinen et al. (WO 2011/061400 A1) in view of Bule et al. (US 2015/0184212 A1), as applied to claim 1, and further in view of Honda et al. (J. Mat. Cycles Waste Manag. 2002, 4, 46-50) and Ruiken et al. (Water Res. 2013, 47, 43-48).
Regarding claims 10 and 11, modified Kallioinen teaches the method of claim 1, and Kallioinen also teaches that municipal waste slurries are a potential source of cellulosic biomass (p. 6, line 25). Kallioinen does not specifically teach the nitrogen or phosphorus content of the solid fraction obtained at the end of step (c).
Honda teaches that sludge from wastewater treatment plants (sewage sludge), a type of municipal waste slurry, is a waste biomass resource that contains considerable amounts of cellulose (abstract) and that through biological conversion, cellulose recovered from sewage sludge can be used in the production of glucose, ethanol, and organic acids (p. 49, col, 1, ¶ 2), the same processes being taught by Kallioinen. Honda is silent with respect to the nitrogen and phosphorus in both the unpurified sewage sludge and in their purified cellulose samples.
Ruiken also teaches a method of recovering cellulose from sewage sludge (until now a major fraction of wastewater (cellulose fibres from toilet paper) have hardly been studied…. Sieves can be used to remove this fraction; Section 4), that their method optimizes wastewater treatment and leads to cost efficiency (leads to an overall energy optimization and more cost efficient wastewater system; Section 4), and that the recovered cellulose can be used as feedstock in a fermentation process to generate ethanol (the cellulose could be used as feed stock in the fermentation industry for production of for instance biofuels like ethanol; Section 3.3), just like the waste cellulosic biomass in the processes of Honda and Kallioinen.
Ruiken further teaches that their process of recovering cellulose traps ~1% of the nitrogen and less than 1% of the phosphorus in the treated stream (average influent-based removal efficiencies over the sieve were … approx. 1% for nitrogen and <1% for phosphorus. Based on the pilot research it was found that a sieve <0.35 mm removes most of the cellulose fibres; Section 3.1).
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 sewage sludge as the waste cellulosic biomass in the method of Kallioinen, as taught by Honda. One of ordinary skill in the art would have been motivated to do so because Kallioinen suggest using municipal wastes, which sewage sludge is, and because Honda teaches that such biomass is cellulose rich and appropriate for the very type of processes being performed by Kallioinen.
It would have also been obvious to substitute the cellulose recovery method of Honda with the method of Ruiken, thereby arriving at a cellulosic biomass being fed to the method of Kallioinen that was already very low in nitrogen and phosphorus impurities. One of ordinary skill in the art would have been motivated to do so because Ruiken teaches that their method of cellulose recovery is energy efficient and optimizes wastewater treatment.
Because the method of modified Kallioinen is substantially identical to that of the instant invention, and because the phosphorus and nitrogen content of the waste cellulosic biomass taught by Ruiken that is being fed to the method are already quite low, one of reasonable skill in the art would conclude that the fraction obtained at the end of step (c) from the method of modified Kallioinen would have a nitrogen content of less than 0.35% by weight and a phosphorus content of less than 500 mg/Kg by weight as an inherent property.
It is noted that once a reference teaching a product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of [their] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 4380, 483-34 (CCPA 1977)), see MPEP 2112.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kallioinen et al. (WO 2011/061400 A1) in view of Bule et al. (US 2015/0184212 A1), as applied to claim 1, and further in view of Medoff et al. (US 2014/0004427 A1).
Regarding claims 12 and 13, modified Kallioinen teaches the method of claim 1, but does not explicitly teach separating the C5-C6 sugars from the hydrolysate.
However, Medoff teaches a similar process of converting cellulosic biomass to C5-C6 sugars (abstract and [0079]), and also teaches that after conversion to hydrolysis (saccharification) C5-C6 sugars (xylose and glucose) can be isolated by methods that include crystallization and chromatography.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to separate the C5-C6 sugars after step (e) in the method of modified Kallioinen by chromatography or crystallization, as taught by Medoff, thereby arriving at the invention of claims 12 and 13. One of ordinary skill in the art would have been motivated to do so in order to have pure sugars available for any number of applications that may require them, such as the fuel cells taught by Medoff ([0009]).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kallioinen et al. (WO 2011/061400 A1) in view of Bule et al. (US 2015/0184212 A1), as applied to claim 1, and further in view of Bastioli et al. (US 2015/0111258 A1).
Regarding claim 15, modified Kallioinen teaches the method of claim 14, but does not specifically teach growing a microbial strain capable of producing 1,4-butanediol in the presence of a carbon source comprising the C5-C6 sugars hydrolyzed in step (d).
However, Bastioli teaches a similar process for the production of C5-C6 sugars to that of Kallioinen (abstract), and also teaches that such sugars can be fed to a microbial strain of E. coli for the production of 1,4-butanediol (butandiol; [0076]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to grow the microbial strain taught by Bastioli for producing said 1,4-butanediol and use it for the fermentation of the sugars produced by the method of Kallioinen. One of ordinary skill in the art would have been motivated to do so because Kallioinen teaches that such microbial processes can be used with their C5-C6 feedstock to give certain chemical products (p. 10, lines 31-33), while Bastioli teaches that 1,4-butanediol is an additional chemical that can be produced by analogous method.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Kallioinen et al. (WO 2011/061400 A1) in view of Bule et al. (US 2015/0184212 A1) and Ninomiya et al. (JP 2013202021 A), as applied to claim 2, and further in view of Espinosa-Valdemar et al. (Sustainability 2015, 7(5), 6033-6045).
Regarding claim 19, modified Kallioinen teaches the method of claim 2, where Ninomiya teaches that the biomass can be derived from a disposable diaper as the hygiene product. Neither Kallioinen nor Ninomiya teaches the impurity content of the biomass when the biomass is derived from a hygiene product.
However, Espinosa-Valdemar teaches that disposable diapers are on average 50.2% cellulose pulp (Figure 3), meaning that they contain less than 50% impurity content, where impurity content is interpreted as non-cellulose content.
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 in the method of modified Kallioinen a waste cellulosic biomass derived from hygiene products with an impurity content of less than 50%. One of ordinary skill in the art would have been motivated to do so because the method of modified Kallioinen seeks to isolate the cellulose and convert it to sugars, and therefore sources that are high in cellulose and low in impurities would be desirable. Furthermore, Espinosa-Valdemar teaches that such biomass sources are available, the average disposable diaper will have this composition, and that therefore there are also sources that will have more than this level of cellulose and lower impurity levels, which would be even more suitable.
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 1, 14, 16-17 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No.10, 138,505 in view of Kallioinen et al. (WO 2011/061400 A1) and Bule et al. (US 2015/0184212 A1).
Regarding instant claim 1, the claims of the ‘505 patent teach a process for the production of C5-C6 sugars from cellulosic biomass containing impurities comprising nitrogen (oleaginous herbaceous plants) comprising the steps of:
(a) placing said biomass in contact with a basic aqueous solution at a temperature of 10-95 °C, which overlaps with the instantly claimed range of ≥60°C and <100°C, obtaining a mixture containing 10%-50% dry weight of said cellulosic biomass in relation to total weight of the solution (claim 1, step (b));
(b) separating said mixture into a solid fraction comprising cellulose and a liquid fraction (claim 1, step c)
(c) subjecting said solid fraction to one or more washes with water (claim 4)
(d) subjecting the solid fraction resulting from step c) to a hydrolysis treatment (claim 1, step d) resulting in a hydrolysate comprising C5-C6 sugars (claim 1, preamble)
Regarding the pH of the basic aqueous solution in step (a), claim 1 of the ‘505 patent teaches that the solution is basic, which includes pH values from 7-14, a range which overlaps with the instantly claimed range of pH >12. Generally, differences in concentration and temperature, like the pH range, 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." See MPEP 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The ’505 patent does not teach the cellulosic biomass being a post-consumer biomass nor does the ‘505 patent explicitly teach performing the basic treatment at atmospheric pressure or contacting the biomass with hydrogen peroxide..
However, Kallioinen teaches a largely similar process for the production of C5-C6 sugars (glucose, mannose, xylose; Table 1, p. 15, column V2) from waste cellulosic biomass, including municipal wastes, which are sources of post-consumer cellulosic biomass sources (p. 6, lines 22-25 and 31-32). Kallioinen also teaches that the basic treatment should be conducted at pH >11.8 (p. 7, line 21) and can be conducted at atmospheric pressure (ambient pressure, p. 7, line 30-31)
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 in the method of the ‘505 patent post-consumer biomass at atmospheric pressure, as taught by Kallioinen, thereby arriving at the instantly claimed invention. One of ordinary skill in the art would have been motivated to use these biomass sources in order to decrease the carbon footprint in an ethanol production process, as well as to improve the economics of the process, as taught by Kallioinen (p. 2, lines 5-8).
Regarding contacting the biomass with hydrogen peroxide before or after step (a), Bule teaches a similar method for conversion of cellulosic biomass into fermentable sugars (obtaining sugars from lignocellulosic biomass and utilizing said sugars for fermentation to biofuel; [0001]), and Bule further teaches that the cellulosic biomass can undergo a pretreatment with an oxidant such as hydrogen peroxide in order to be activated and more easily hydrolyzed (in some of the epitome process to improve the lignin modification or destruction step of the pretreatment process by the means of utilizing highly reactive reagents (such as hydrogen peroxide including but not limited to) in first step and improve efficiency of second step; [0008]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the method of the ‘505 patent a step where the cellulosic biomass is contacted with hydrogen peroxide. One of ordinary skill in the art would have been motivated to do so because Bule teaches that hydrogen peroxide can serve as an oxidant to increase the efficiency of the hydrolysis process.
Regarding instant claim 14, Kallioinen teaches further teaches subjecting the C5-C6 sugars to conversion by biochemical means into chemical intermediates (these embodiments can be applied to the production of any chemical that can be prepared by fermentation from monosaccharides; p. 10, line 31-33).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to first grow the microbial strain capable of fermenting the monosaccharides, and Kallioinen provides examples on page 11. One of ordinary skill in the art would have been motivated to do so because having the strain grown is a prerequisite for using it in the fermentation processes taught by Kallioinen.
Regarding instant claim 16, claim 14 of the ‘505 patent teaches a comminution of the biomass before step (a), and it would have been obvious to one of ordinary skill in the art to perform this comminution mechanically, that being the most common technique referred to by the term comminution.
Regarding instant claim 17, claim 1 step b of the ‘505 patents teaches a time frame of 1 min to 24 hours, which overlaps with the instantly claimed times of 30 min to 24 hours. It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
Regarding instant claim 22, Bule further teaches using concentrations of hydrogen peroxide from 3% to 37% by weight, as analyzed above, and therefore it would have been obvious to use such concentrations in the modified method of the ‘505 patent, as these are taught to be successful at pre-treating the biomass and could be used as the oxidant suggested by Kallioinen.
Claims 1, 2, 5, and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No.10, 138,505 in view of Ninomiya et al. (JP 2013202021 A) and Bule et al. (US 2015/0184212 A1).
Regarding instant claims 1, 2, and 5, the claims of the ‘505 patent teach a process for the production of C5-C6 sugars from cellulosic biomass containing impurities comprising nitrogen (oleaginous herbaceous plants) comprising the steps of:
(a) placing said biomass in contact with a basic aqueous solution at a temperature of 10-95 °C, which overlaps with the instantly claimed range of ≥60°C and <100°C, obtaining a mixture containing 10%-50% dry weight of said cellulosic biomass in relation to total weight of the solution (claim 1, step (b));
(b) separating said mixture into a solid fraction comprising cellulose and a liquid fraction (claim 1, step c)
(c) subjecting said solid fraction to one or more washes with water (claim 4)
(d) subjecting the solid fraction resulting from step c) to a hydrolysis treatment (claim 1, step d) resulting in a hydrolysate comprising C5-C6 sugars (claim 1, preamble)
Regarding the pH of the basic aqueous solution in step (a), claim 1 of the ‘505 patent teaches that the solution is basic, which includes pH values from 7-14, a range which overlaps with the instantly claimed range of pH >12. Generally, differences in concentration and temperature, like the pH range, 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." See MPEP 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
While the ‘505 patent does not teach performing the basic treatment at atmospheric pressure, in the absence of a requirement to alter the pressure, one of ordinary skill in the art would have found it obvious to perform this treatment at atmospheric pressure as it is the simplest conditions to operate under.
The ’505 patent does not teach the cellulosic biomass being a post-consumer biomass, including those which are derived from a hygiene product or contain super absorbent polymers, nor does the ‘505 patent teach contacting the biomass with hydrogen peroxide.
However, Ninomiya teaches the production of C5-C6 sugars (saccharification) of cellulose-containing waste containing super-absorbent polymers, such as disposable diapers ([0002]), which are a post-consumer hygiene product. Ninomiya also teaches that there has been an increasing need to recover and recycle the materials from such products due to environmental considerations ([0004]).
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 in the method of modified Bastioli biomass derived from a hygiene product and which contains a superabsorbent polymer, as taught by Ninomiya. One of ordinary skill in the art would have been motivated to do so in order to recover and recycle the materials contained therein and thereby address environmental problems associated with their disposal, as taught by Ninomiya ([0004]).
Regarding contacting the biomass with hydrogen peroxide before or after step (a), Bule teaches a similar method for conversion of cellulosic biomass into fermentable sugars (obtaining sugars from lignocellulosic biomass and utilizing said sugars for fermentation to biofuel; [0001]), and Bule further teaches that the cellulosic biomass can undergo a pretreatment with an oxidant such as hydrogen peroxide in order to be activated and more easily hydrolyzed (in some of the epitome process to improve the lignin modification or destruction step of the pretreatment process by the means of utilizing highly reactive reagents (such as hydrogen peroxide including but not limited to) in first step and improve efficiency of second step; [0008]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the method of the ‘505 patent a step where the cellulosic biomass is contacted with hydrogen peroxide. One of ordinary skill in the art would have been motivated to do so because Bule teaches that hydrogen peroxide can serve as an oxidant to increase the efficiency of the hydrolysis process.
Regarding instant claim 6, modified ‘505 patent teaches the method of claim 5, where Ninomiya further teaches that the super-absorbent polymer comprises 15% by weight of the content of the biomass (SAP component: approximately 15%; [0036]), thereby meeting the limitations of the instant claim.
Claims 1, 3, 4, 9, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No.10, 138,505 in in view of Honda et al. (J. Mat. Cycles Waste Manag. 2002, 4, 46-50) and Bule et al. (US 2015/0184212 A1).
The claims of the ‘505 patent teach a process for the production of C5-C6 sugars from cellulosic biomass containing impurities comprising nitrogen (oleaginous herbaceous plants) comprising the steps of:
(a) placing said biomass in contact with a basic aqueous solution at a temperature of 10-95 °C, which overlaps with the instantly claimed range of ≥60°C <100°C, obtaining a mixture containing 10%-50% dry weight of said cellulosic biomass in relation to total weight of the solution (claim 1, step (b));
(b) separating said mixture into a solid fraction comprising cellulose and a liquid fraction (claim 1, step c)
(c) subjecting said solid fraction to one or more washes with water (claim 4)
(d) subjecting the solid fraction resulting from step c) to a hydrolysis treatment (claim 1, step d) resulting in a hydrolysate comprising C5-C6 sugars (claim 1, preamble)
Regarding the pH of the basic aqueous solution in step (a), claim 1 of the ‘505 patent teaches that the solution is basic, which includes pH values from 7-14, a range which overlaps with the instantly claimed range of pH >12. Generally, differences in concentration and temperature, like the pH range, 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." See MPEP 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
While the ‘505 patent does not teach performing the basic treatment at atmospheric pressure, in the absence of a requirement to alter the pressure, one of ordinary skill in the art would have found it obvious to perform this treatment at atmospheric pressure as it is the simplest conditions to operate under.
The ’505 patent does not teach the cellulosic biomass being a post-consumer biomass, including those which are derived from wastewater treatment plants, nor does the ‘505 patent teach contacting the biomass with hydrogen peroxide.
Regarding contacting the biomass with hydrogen peroxide before or after step (a), Bule teaches a similar method for conversion of cellulosic biomass into fermentable sugars (obtaining sugars from lignocellulosic biomass and utilizing said sugars for fermentation to biofuel; [0001]), and Bule further teaches that the cellulosic biomass can undergo a pretreatment with an oxidant such as hydrogen peroxide in order to be activated and more easily hydrolyzed (in some of the epitome process to improve the lignin modification or destruction step of the pretreatment process by the means of utilizing highly reactive reagents (such as hydrogen peroxide including but not limited to) in first step and improve efficiency of second step; [0008]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the method of the ‘505 patent a step where the cellulosic biomass is contacted with hydrogen peroxide. One of ordinary skill in the art would have been motivated to do so because Bule teaches that hydrogen peroxide can serve as an oxidant to increase the efficiency of the hydrolysis process.
Regarding the cellulosic biomass being a post-consumer biomass, including those which are derived from wastewater treatment plants, Honda teaches that sludge from wastewater treatment plant contains considerable amounts of cellulose and that such cellulose can be recovered for biomass utilization (abstract, first and last sentences). Honda further teaches that the wastewater sludge can be concentrated and purified to level of more than 70% purity (cellulosic sludge with a purity of more than 70% can be recovered; Conclusions).
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 in the method of the ‘505 patent the purified wastewater treatment sludge of Honda with an impurity contents of less than 30% as the cellulosic biomass, thereby arriving at the invention of claims 1, 3, 4, 9 and 20. One of ordinary skill in the art would have been motivated to do so because Honda teaches that such biomass derived from wastewater treatment plants can be recovered for biomass utilization in a process analogous to that of the ‘505 patent.
Claims 7 and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No.10, 138,505 in view of Kallioinen et al. (WO 2011/061400 A1) and Bule et al. (US 2015/0184212 A1), as applied to claim 1 above, and further in view of Nishimura et al. (Waste Manag. 2017, 67, 86-94).
Regarding instant claims 7 and 21, the modified claims of the ‘505 patent render the method of instant claim 1 obvious, but they do not specifically teach the nitrogen or lignin content of the waste cellulosic biomass materials being treated.
However, Nishimura also teaches the saccharification and fermentation of waste materials, waste paper and kitchen waste (title), that are post-consumer biomass (waste paper and kitchen waste are rich in carbohydrates (cellulose and starch), and thus increasing attention has been given to the conversion of kitchen waste and waste paper to ethanol; p. 86, col. 2, ¶ 2) in a process that is analogous to that of Kallioinen and the ‘505 patent. Nishimura further teaches that the mixture of waste paper and kitchen waste used in their method has a nitrogen content of 1.0 wt% relative to the dry weight of the biomass and a lignin content of 6.5 wt% relative to the dry weight of the biomass (Table 2), and that mixing kitchen waste with waste paper provides a nutrient source for the fermentation of sugars derived from waste paper cellulose (Kitchen waste can serve as a nutrient source … by mixing it with waste paper for ethanol production; p. 87, ¶ 1).
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 in the method of ‘505 patent the waste cellulosic biomass source taught by Nishimura, which has a total nitrogen content of 1wt% and a lignin content of 6.5 wt% relative to the dry weight of the cellulosic biomass , thereby arriving at the invention of claims 7 and 21. One of ordinary skill in the art would have been motivated to do so because Nishimura teaches that such a mixed waste source allows for the saccharification and fermentation of cellulosic waste materials, which is the same goal as Kallioinen and the ‘505 patent, without the need for expensive nutrients (p.87, ¶ 2).
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No.10, 138,505 in view of Honda et al. (J. Mat. Cycles Waste Manag. 2002, 4, 46-50) and Bule et al. (US 2015/0184212 A1), as applied to claim 1 above, and further in view of and Vassilev et al. (Fuel 2010, 89, 913-933).
Regarding instant claim 8, the claims of the ‘505 patent render the method of instant claim 1 obvious in view of Honda, but neither the ‘505 patent nor Honda specifically recite the phosphorus content of the waste cellulosic biomass materials being treated.
However, Vassilev teaches that on a dry basis, sewage sludge is comprised of approximately 46.3% ash content (Table 5, entry 85), and that this ash fraction is comprised of 15.88% P2O5 (Table 6, entry 85); P2O5 is 43.6% P by mass, and so the sewage sludge ash is 6.93% phosphorus. The amount of phosphorus in the sewage sludge is therefore 6.93% of 46.3%, or 3.2%, which is equivalent to 32,000 g/Kg. Such phosphorus will be in the impurities because cellulose and saccharides do not contain phosphorus.
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 sludges with 32,000 g/Kg phosphorus in the method of the modified ‘505 patent, thereby arriving at the instantly claimed invention. One of ordinary skill in the art would have been motivated to do so because Vassilev teaches that such compositions are typical of this waste cellulosic biomass.
Claims 10 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No.10, 138,505 in view of Honda et al. (J. Mat. Cycles Waste Manag. 2002, 4, 46-50) and Bule et al. (US 2015/0184212 A1), as applied to claim 1 above, and further in view of Ruiken et al. (Water Res. 2013, 47, 43-48).
Regarding instant claims 10 and 11, the claims of the ‘505 patent render the method of instant claim 1 obvious in view of Honda, but Honda and the ‘505 patent are silent with respect to the nitrogen and phosphorus in both the unpurified sewage sludge and in their purified cellulose samples.
However, Ruiken also teaches a method of recovering cellulose from sewage sludge (until now a major fraction of wastewater (cellulose fibres from toilet paper) have hardly been studied…. Sieves can be used to remove this fraction; Section 4), that their method optimizes wastewater treatment and leads to cost efficiency (leads to an overall energy optimization and more cost efficient wastewater system; Section 4), and that the recovered cellulose can be used as feedstock in a fermentation process to generate ethanol (the cellulose could be used as feed stock in the fermentation industry for production of for instance biofuels like ethanol; Section 3.3), just like the waste cellulosic biomass in the processes of Honda and Kallioinen.
Ruiken further teaches that their process of recovering cellulose traps ~1% of the nitrogen and less than 1% of the phosphorus in the treated stream (average influent-based removal efficiencies over the sieve were … approx. 1% for nitrogen and <1% for phosphorus. Based on the pilot research it was found that a sieve <0.35 mm removes most of the cellulose fibres; Section 3.1).
Therefore, it would have also been obvious to further modify the method of the ‘505 patent to substitute the cellulose recovery method of Honda with the method of Ruiken, thereby arriving at a cellulosic biomass being fed to the method of the ‘505 patent that was already very low in nitrogen and phosphorus impurities. One of ordinary skill in the art would have been motivated to do so because Ruiken teaches that their method of cellulose recovery is energy efficient and optimizes wastewater treatment.
Because the method of the ‘505 patent is substantially identical to that of the instant invention, and because the phosphorus and nitrogen content of the waste cellulosic biomass taught by Ruiken that is being fed to the method are already quite low, one of reasonable skill in the art would conclude that the fraction obtained at the end of step (c) from the method of modified Kallioinen would have a nitrogen content of less than 0.35% by weight and a phosphorus content of less than 500 mg/Kg by weight as an inherent property.
It is noted that once a reference teaching a product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of [their] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 4380, 483-34 (CCPA 1977)), see MPEP 2112.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No.10, 138,505 and Ninomiya et al. (JP 2013202021 A) and Bule et al. (US 2015/0184212 A1), as applied to claim 2, and further in view of Espinosa-Valdemar et al. (Sustainability 2015, 7(5), 6033-6045).
Regarding instant claim 19, modified ‘505 patent teaches the method of claim 2, where Ninomiya teaches that the biomass can be derived from a disposable diaper as the hygiene product. Neither the ‘505 patent nor Ninomiya teaches the impurity content of the biomass when the biomass is derived from a hygiene product.
However, Espinosa-Valdemar teaches that disposable diapers are on average 50.2% cellulose pulp (Figure 3), meaning that they contain less than 50% impurity content, where impurity content is interpreted as non-cellulose content.
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 in the method of modified ‘505 patent a waste cellulosic biomass derived from hygiene products with an impurity content of less than 50%. One of ordinary skill in the art would have been motivated to do so because the method of modified ‘505 seeks to isolate the cellulose and convert it to sugars, and therefore sources that are high in cellulose and low in impurities would be desirable. Furthermore, Espinosa-Valdemar teaches that such biomass sources are available, the average disposable diaper will have this composition, and that therefore there are also sources that will have more than this level of cellulose and lower impurity levels, which would be even more suitable.
Response to Arguments
Applicant’s arguments, see pages 6-7 of the remarks filed 3 June 2026, with respect to the rejection(s) of claim 1 under 35 USC § 102 have been fully considered and are persuasive in that Kallioinen does not teach contacting the cellulosic biomass with hydrogen peroxide before or after step (a). Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made over Kallioinen in view of Bule, as analyzed above.
It is further noted that while Applicant asserts on page 6 (¶ 6) that the discovery that contact with hydrogen peroxide allows one to reduce the content of organic contaminants present in the biomass is suprising, such a result is not unexpected. For example, Yamaki (US 2020/0399827 A1) teaches that oxidizing agents can help reduce the content of superabsorbent polymers in cellulosic waste (the oxidizing agent treatment device 19 performs oxidative decomposition for the superabsorbent polymers so as to dissolve into the treatment solution and be removed from the pulp fibers, and delivers the pulp fibers which do not include the superabsorbent polymers together with the treatment solution; [0043]), and Das et al. (Journal of Engineering Science and Technology Review 2015, 8(5), 141-165) teaches that chemical pretreatment with oxidants can be applied with the motive of destroying organic compounds (Section 6.4).
Applicant's arguments with respect to the nitrogen content and differing technical hurdles associated with using different biomass sources, page 7 of the remarks, have been fully considered but they are not persuasive. In particular, Applicant does not point to any particular barriers that one of ordinary skill in the art would face when adapting the method of Kallioinen to the other biomass sources, including municipal wastes, which are specifically suggested for treatment by Kallioinen.
Applicant’s remaining arguments with respect to the prior art rejections, pages 8-12 of the remarks, rely upon the asserted deficiency in Kallioinen and Vassilev to teach the limitations of claim 1. This deficiency having been addressed by the incorporation of Bule into the rejection of claim 1, these arguments are considered moot.
Applicant’s arguments, pages 12-14 of the remarks, with respect to the double patenting rejections have been fully considered and are persuasive in that the amended claims are not obvious over the claims of US Pat. 10,138,505 in view of the previously cited prior art alone. Therefore, the rejection has been withdrawn. However, upon further consideration, new grounds of rejection are made in further view of Bule, as analyzed above.
Conclusion
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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