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.
Amendments
Applicant’s amendments to the claims and the abstract overcome the prior claim objections and the objection to the specification set forth in the prior office action; these objections are withdrawn.
Claim Objections
Claim 21 is objected to because of the following informalities:
Claim 21 should be amended to read: “…wherein the waste cellulosic biomass has a lignin content that does not exceed 15%.”
Appropriate correction is required.
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, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kallioinen et al. (WO 2011/061400 A1), as evidenced by Vassilev et al. (Fuel 2010, 89, 913-933).
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) 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.
Regarding claim 14, Kallioinen teaches the method of claim 1, and 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, 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.
Claims 2, 5, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kallioinen et al. (WO 2011/061400 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, 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), 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, 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). 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), as applied to claim 1, and further in view of Nishimura et al. (Waste Manag. 2017, 67, 86-94).
Regarding claim 7, 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, 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), 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, 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), 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, 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 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), as applied to claim 1, and further in view of Medoff et al. (US 2014/0004427 A1).
Regarding claims 12 and 13, 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 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), as applied to claim 1, and further in view of Bastioli et al. (US 2015/0111258 A1).
Regarding claim 15, 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) 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, and 16-17 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).
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.
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). 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 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).
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).
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.
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 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).
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.
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).
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), 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), 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), 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), 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 with respect to the rejections of claims 4, 9, and 19-20 under 35 USC § 112(b), page 6 of the reply files 30 January 2026, have been fully considered and are persuasive. The rejection of these claims under 35 SUC § 112(b) have been withdrawn.
Applicant's arguments, pages 7-9, with respect to the rejection of claim 1 over Kallioinen under 35 USC § 103 have been fully considered and they are persuasive in that the specific Examples and sections of Kallioinen previously cited as teaching the limitations of instant claim 1 do not teach all the limitations of amended claim 1. However, upon further consideration, different portions of the Kallioinen disclosure are identified which teach all the limitations of the amended claim.
In particular, Applicant argues, page 7, against Kallioinen based upon the pressure, and temperature used in Example 1, and the fact that spruce saw dust used in many examples of Kallioinen is high in lignin. However, the teachings of Kallioinen are not limited to those previously referenced from Example 1, and are in fact much broader and encompass reactions conditions that overlap with those instantly claimed, as analyzed above. Furthermore, Kallioinen’s teaching are also not limited to high lignin raw materials, and Kallioinen specifically envisions cellulosic materials in addition to lignocellulosic ones (p. 4, line 5). It is additionally noted that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). MPEP 2123.
Applicant further argues that Kallioinen is different than the present invention based upon the types of waste biomass used by Kallioinen, page 9. However, it is noted that Kallioinen suggests using some of the very same sources of post-consumer biomass (municipal and industrial wastes can be used, particularly organic, solid or liquid wastes, and they can be selected from … waste slurries (including industrial and municipal wastes); p. 6, paragraph 5) as those recited by Applicant (biomass may be post-industrial and/or post-consumer, and in the latter case comes from the sorting of waste or sewage treatment plants; [0003] of the PGPub).
Applicant’s arguments against Ninomiya, page 10, with respect to the rejections of claims 2, 5, and 6 have been fully considered but are not persuasive. Ninomiya is not teaching the saccharification of unused sanitary goods, as implied by Applicant on page 10 (“pure, bleached, clean, sanitized”), but rather is teaching the saccharification of used, post-consumer waste products ([0004] and [0012]).
With respect to the difficulties of using such waste products in a an enzymatic saccharification and fermentation processes, pages 10-11, it is noted that Ninomiya successfully carries out enzymatic saccharification ([0037]) and that none of claims 2, 5, or 6 require a fermentation step. Furthermore, Kallioinen also teaches using biomass sources that are not purified (p. 6, lines 19-25).
Applicant’s arguments against Honda in the rejection of claims 3 and 20, pages 11-12, have also been fully considered but are not persuasive.
Applicant’s arguments against Honda seem to focus on the fact that the method of Honda would be expensive. This reason alone does not render the combination of Honda with Kallioinen non-obvious, especially in view of the fact that Honda suggest carrying out a process very similar to that of Kallioinen.
The argument that Honda does not provide the details of such a process themselves is an argument against the reference piecemeal and is not persuasive: one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Honda suggests carrying out a certain transformation, and Kallioinen provides the details on how to do so. Therefore, their combination is obvious, as obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so. In re Kahn, 441 F.3d 977, 986, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006). MPEP 2143.01.
Applicant’s remaining arguments with respect to the prior art rejections, pages 11-13, are predicated on the assertion that none of Medoff, Bastioli, or Espinosa-Valdemar cure the deficiencies of Kallioinen in teaching the limitations of claim 1. However, Kallioinen does teach the limitations of claim 1, as analyzed above, and so these arguments are not persuasive.
Applicant’s arguments with respect to the non-statutory double patenting rejections, pages 14-15 have been fully considered and are not persuasive.
In particular, Applicant argues that independent claim 1 of the instant application is distinguished from claim 1 of the ‘505 patent in that instant claim 1 specifies that “step (a) is conducted at a temperature of ≥60°C and <100°C and at atmospheric pressure”. However, claim 1 of the ‘505 patent recites a temperature range of 10-95°C, which overlaps with the instantly claimed range, and one of ordinary skill in the art would find atmospheric pressure the most obvious pressure at which to perform a chemical reaction.
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). Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values in the ‘505 patent.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735