DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6 and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Berlin (WO 2012/129652) in view of Burke et al. (Biomass and Bioenergy, Volume 35, Issue 1, 2011, Pages 391-401) and Turunen et al. (US 2019/0112623).
Considering Claims 1, 4, 6, and 13: Berlin teaches a process for separating solids from an enzymatic hydrolysis product comprising adding a polymeric (4:26-5:7) flocculant to an enzymatic hydrolysis product after a enzymatic hydrolysis (8:3-20, Fig. 1); and separating the solid and liquids of the mixture to solid and liquid streams by centrifuge (6:2-7). Berlin teaches adding a flocculant to an enzymatic hydrolysis reaction mixture. Berlin teaches the flocculant as being a cationic polyacrylamide (Abstract).
Berlin teaches that the solid and liquid streams can be separated by centrifuge (6:1-7). Berlin does not teach the centrifuge as being one of the claimed species of centrifuge. However, Burke et al. teaches separating solids and liquid prepared from an enzymatic hydrolysis of lignocellulose after adding a flocculant using a decanting centrifuge (Abstract). Berlin and Burke et al. are analogous art as they are concerned with same field of endeavor, namely separation of the products of enzymatic hydrolysis of lignocellulose. It would have been obvious to a person of ordinary skill in the art to have used the decanting centrifuge of Burke et al. in the separation step of Berlin, and the motivation to do so would have been, as Burke et al. suggests, it allows for continuous separation (pg. 392), and the combination of the use of flocculant and decanting centrifuge results in a improvement in throughput (Abstract).
Berlin does not teach a second hydrolysis step. However, Turunen et al. teaches a two stage enzymatic hydrolysis where there is a first enzymatic hydrolysis step followed by separation to form a solid and a liquid stream (¶0019); and the solid stream is re-slurried and passed to a second enzymatic reaction (¶0019). When combined with the flocculation step of Berlin, this reads on the claimed process. Berlin and Turunen et al. are analogous art as they are concerned with the same field of endeavor, namely enzymatic hydrolysis reactions. It would have been obvious to a person of ordinary skill in the art to have used the multiple hydrolysis steps of Turunen et al. in the process of Berlin, and the motivation to do so would have been, as Turunen et al. suggests, to increase the yield of the enzymatic hydrolysis (Example 3).
Considering Claims 2 and 3: Berlin teaches reslurrying the solids with a diluent followed by treatment with a flocculant to separate additional supernatent (5:21-30).
Considering Claim 5: Berlin teaches reslurrying the solids with a diluent followed by treatment with a flocculant to separate additional supernatent (5:21-30).
Considering Claims 9 and 10: Berlin teaches adding a flocculant to the supernatant to recover additional solids (5:21-23).
Considering Claim 11: Berlin teaches filtering the solid fraction after the decantation step (Example 2).
Considering Claim 12: Berlin teaches reslurrying the solids with a diluent followed by treatment with a flocculant to separate additional supernatent (5:21-30).
Considering Claim 14: Berlin teaches recycling a portion of the liquid stream to the enzymatic hydrolysis (Fig. 1).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Berlin (WO 2012/129652) in view of Turunen et al. (US 2019/0112623) as applied to claim 1 above, and further in view of Gallop et al. (US 2015/0182882).
Considering Claim 7: Berlin teaches the process of claim 1 as shown above.
Berlin does not teach the means of adding the flocculant. However, Gallop et al. teaches adding a flocculant to a mixture of suspended solvents in a liquid in an inline mixer (¶0065). Berlin and Gallop et al. are analogous art as they are concerned with a similar technical difficulty. It would have been obvious to a person of ordinary skill in the art to have used the inline mixer of Gallop et al. in the process of Berlin, and the motivation to do so would have been, as Gallop et al. suggests, to provide sufficient agitation to distribute the flocculant in the slurry (¶0065).
Response to Arguments
Applicant's arguments filed June 1, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that the prior art of record does not teach the use of a flocculant and decanting apparatus is not persuasive. Newly added Burke et al. teaches separating solids and liquid prepared from an enzymatic hydrolysis of lignocellulose after adding a flocculant using a decanting centrifuge (Abstract). Burke et al. teaches that the combination results in high throughput and sugar recovery.
B) The applicant’s argument of unexpected results is not persuasive. A showing of unexpected results must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). See MPEP § 716.02(e). The applicant has not compared the process to that of Berlin, which adds the cationic flocculant to the hydrolyzed material as claimed. As such, the applicant has not met the burden required for establishing unexpected results.
Further, newly added Burke et al. teaches that the combination of a flocculant and decanting centrifuge results in high sugar recover, and low solid content in the clarified centrate (Fig. 5 and 6). "Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967). See MPEP § 716.02(c).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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