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.
Claim Amendments
Applicant’s amendments to claim 1 and 19, cancellation of claims 14 and 31, and entry of new claim 33 are acknowledged. It is noted that page 7 of Applicant’s reply filed 14 February 2026 references cancellation of claim 30, but this appears to be a typographical error in view of the concurrently filed claim set.
The prior objection to claim 31 and rejections of claim 14 under 35 USC § 112 are withdrawn as moot.
Claim Interpretation
As previously set forth, claims 17 and 18 reference a transmittance value obtained in the UV-visible spectra of the wood-derived carbohydrate composition, but are silent on the path length for which the transmittance is measured. However, the specification (p. 9 line 31 to p. 10 line 4) defines transmittance as being based on the absorbance spectrum for a 1 cm path length sample, and this is the interpretation that will be used.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1 limits the soluble lignin content of the carbohydrate composition to at most 0.4 wt% based on the total dry matter content of the carbohydrate composition, while the additional limitation recited in claim 5 limits the carbohydrate composition to at most 1 weight-% based on the total dry matter content of the carbohydrate composition. Claim 5 therefore does not further limit the subject matter of claim 1 and the claim is rejected.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-3, 5-13, 16-18, and 33 are rejected under 35 U.S.C. under 35 U.S.C. 103 as unpatentable over Jansen et al. (US 2015/0136121 A1).
Regarding claim 1, Jansen discloses a wood-derived carbohydrate composition (cellulose sugars from pine wood; [0706]) comprising monomeric C6 sugars (mannose, glucose, galactose and fructose; [0707]) and monomeric C5 sugars (xylose and arabinose; [0707]) in a total amount of 96.7 weight-% based on the total dissolved sugars of the carbohydrate composition, wherein the weight ratio of the monomeric C5 sugars to the monomeric C6 sugars is 0.08 (7.22 to 90.97; from [0707]), which falls in the instantly claimed range of 0.01 to 0.1. Jansen further that their purification method typically will produce a sugar stream with typically less than 1%, 0.8%, 0.6%, 0.5%, 0.4%, 0.2% weight/weight or less impurities that include soluble lignin ([0230]). Even assuming the highest typical impurity level of 1%, then the stream of [0707], then he stream will contain 95.7 weight-% monomeric C6 and C5 sugars based on the total dry matter of the carbohydrate composition, meeting the limitations of the instant claim.
Alternatively, if the composition of [0707] did not contain the impurities at the level of 1% or below, it would have been obvious to one of ordinary skill in the art before the filing date of the instantly claimed invention to further purify the composition until it did, thereby arriving at the instantly claimed invention, per the analysis above. One of ordinary skill in the art would have been motivated to do so in order to have more pure materials suitable for fermentation of catalytic processes [0240]).
Regarding the composition comprising soluble lignin in an amount of 0.01-0.4 weight% based on the total dry matter content of the carbohydrate composition, as noted above, Jansen teaches that the carbohydrate composition may have impurities that include soluble lignin at 0.4 wt% or less ([0230]), which will necessarily have soluble lignin at 0.4 wt% or less, which overlaps with the instantly claimed range of 0.01-0.4 wt% or less. Additionally, one of ordinary skill in the art would not expect any significant difference between a composition containing 0.01 wt% soluble lignin and one containing less than 0.01 wt% soluble lignin.
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 lignin content merely represents an obvious variant and/or routine optimization of the impurity levels of the cited prior art. See also MPEP 2144.04(VII) regarding purifying a known product.
Regarding claim 2, Jansen teaches the wood-derived carbohydrate composition of claim 1, wherein the composition comprises monomeric C6 sugars (mannose, glucose, galactose and fructose; [0707]) and monomeric C5 sugars (xylose and arabinose; [0707]) in a total amount of 95.7 weight-% based on the total dry matter content of the carbohydrate composition, as analyzed above, which meets the claim limitations of being at least 94-99.8 weight-% based on the total dry matter of the carbohydrate composition.
Regarding claim 3, Jansen teaches the wood-derived carbohydrate composition of claim 1, as analyzed above, and further teaches that the ratio of monosaccharides to total dissolved sugars can be larger than 0.95 or 0.99 ([0250]) which will correspond to oligomeric C6 and oligomeric C5 sugars at a level of 1 to 5 weight-% based on the total dissolved sugars, which overlaps with the instantly claimed range of 0.1 weight-% to 2 weight-% based on the total dry matter content of the carbohydrate composition, at an impurity level of 1%.
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).
The courts have also found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II.
Therefore, the claimed ranges of oligomeric content merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Regarding claim 5-7, Jansen teaches the wood-derived carbohydrate composition of claim 1, as analyzed above, and further teaches that soluble lignin and organic acids (carboxylic acids) are among the total impurities that typically comprise less than 1 weight-% ([0230]) of the sugar stream, thereby meeting the limitations of claims 5, 6, and 7.
Regarding claim 8, Jansen discloses the wood-derived carbohydrate composition of claim 1, wherein the composition comprises 2.7 ppm of sulfur, which is equivalent to 2.7 mg/kg and meets the limitations of at most 50 mg/kg required by the instant claim.
Regarding claim 9, Jansen teaches the wood-derived carbohydrate composition of claim 1, but does not explicitly teach the chloride amount in the composition described in paragraphs [0706] and [0707]. However, Jansen also teaches that the high concentration C6 sugar mixtures, of which the example in [0706] and [0707] is one, may optionally have a chloride concentration in the range of 10-100 ppm ([0015] and [0252]), which falls within the instantly claimed range of less than 100 mg/kg. Other disclosed ranges of chloride for the C6-rich sugar stream (1-200 ppm; [0249]) overlap with the instantly claimed range.
It is again 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.
Therefore, the claimed range of chloride concentration merely represents an obvious variant and/or routine optimization of the values of the cited prior art.
Regarding claim 10, Jansen discloses the wood-derived carbohydrate composition of claim 1, wherein the composition comprises <2 ppm of iron, which is equivalent to <2 mg/kg and meets the limitations of at most 50 mg/kg required by the instant claim.
Regarding claim 11, Jansen teaches the wood-derived carbohydrate composition of claim 1, but does not explicitly teach the total heavy metal content or the nitrogen content of the composition described in paragraphs [0706] and [0707]. However, the non-alkali metals that Jansen does teach (Ca, Cu, Fe, Mg, Mn) are each present at less than 2 ppm, and Jansen further teaches that metal cations can be removed by ion-exchange ([0239]).
Therefore, it is inferred that the heavy metals will also be present in a total amount of at most 100 mg/kg. Alternatively, if heavy metals were not present at these levels it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further remove them to below this level. One of ordinary skill in the art would have been motivated to do so because Jansen teaches a method of metal removal and heavy metals are known to be toxic.
Regarding claim 12, Jansen teaches the wood-derived carbohydrate composition of claim 1, but does not explicitly teach the nitrogen content of the composition described in paragraphs [0706] and [0707]. However, Jansen does teaches that amines (nitrogen-containing molecules) can be removed by ion-exchange ([0239]), and further teaches that granular carbon can also remove nitrogen compounds, which have the potential to inhibit fermentation ([0405])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to lower the nitrogen content of the sugar stream by ion-exchange and removal with granulated carbon to as low a level as possible, including below 200 mg/kg. One of ordinary skill in the art would have been motivated to do so because Jansen teaches a method to remove these molecules and because they may interfere with fermentation of the isolated sugars.
Regarding claim 13, Jansen discloses the wood-derived carbohydrate composition of claim 1, wherein the monomeric C6 sugars (mannose, glucose, galactose and fructose) are present in an amount of 90.97 weight-%, based on the total dissolved sugar content of the carbohydrate composition, which corresponds to 90 weight-% based on the total dry matter contents of the carbohydrate composition at a 1% impurity level, thereby meeting the limitations of the instant claim.
Regarding claims 16, 17, and 33, Jansen discloses the wood-derived carbohydrate composition of claim 1, wherein the composition is described a “colorless viscous liquid.” The fact that the composition is colorless means that will have an ICUMSA color value of less than 1000 as well as a transmittance of a 45 weight-% aqueous solution of composition in the range 50-99.9% when measured at 420 nm, thereby meeting the limitations of claims 16, 17, and 33.
Regarding claim 18, Jansen teaches the wood-derived carbohydrate composition of claim 1 but is silent with respect to the transmittance of a 45 weight-% aqueous solution of the composition when measured at 280 nm. However, based upon the low levels of furfurals and phenols in the composition (~0.02 wt%; [0707]), as well as the generally low impurity levels including lignin ([0230]), one can conclude that the composition disclosed by Jansen will have the required transmittance at 280 nm.
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further purify the composition to obtain even lower levels of these impurities, for example using granular carbon as described in [0405]. One of ordinary skill in the art would have been motivated to do so in order to afford more pure product and to remove impurities which may inhibit fermentation, as taught by Jansen ([0405]).
Claims 15 is rejected under 35 U.S.C. 103 as being unpatentable over Jansen et al. (US 2015/0136121 A1), as applied to claim 1 above, and further in view of Kojo (JP 2020078360 A). The previously provided English machine translation of Kojo (JP 2020078360 A) is referenced in the analysis below.
Regarding claim 15, Jansen teaches the wood-derived carbohydrate composition of claim 1, but does not explicitly teach the conductivity of the composition as 30% aqueous solution. However, Jansen does teach that cations and anions can be removed by ion-exchange resins ([0406]) and such treatment would be expected to result in solutions with low conductivity, including below 200 μS/cm.
Furthermore, Kojo teaches the saccharification of cellulose-containing biomass ([0001]) and that following purification by ion-exchange resin that the conductivity can be reduced to preferably below 10 μS/cm ([0027]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to ensure that the wood-derived carbohydrate composition of Jensen have a conductivity below 10 μS/cm, as taught by Kojo. One of ordinary skill in the art would have been motivated to do so because both Kojo and Jansen teach purification by ion-exchange resin and Kojo teaches that this level of conductivity is preferable for a purified saccharide solution.
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 1-3, 5-6, and 12-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/009,574. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘574 patent and the instant claims contain limitations with overlapping ranges, and are the instant claims are therefore considered obvious variants and/or routine optimizations of the values in the claims of the ‘574 patent.
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).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments, see page 8 of the reply filed 14 February 2026, with respect to the rejections of claims 1-2, 5-8, 10-11, 13-14, and 16-18 under 35 USC § 102 have been fully considered and are persuasive in that Jansen does not anticipate the amended claim. However, upon further consideration, a rejection under 35 USC § 103 is still warranted as the claimed composition remains obvious over the teachings of Jansen.
While Jansen does not disclose the precise soluble lignin levels of the composition recited in [0707], they do teach typical impurity levels that include soluble lignin at concentrations that overlap with the claimed range. Even if the soluble lignin content of the composition resulting from Jansen’s method was below the 0.01 wt% threshold of the claim, Applicant has not demonstrated any significant difference in properties that is expected between compositions with 0.01 wt% lignin and those with less than 0.01 wt% lignin.
Regarding the ICUMSA color value, firstly, there is no ICUMSA color value recited in amended claim 1, though one is noted on page 8. Secondly, any solution will have a color value; if the solution is absolutely colorless that value would simply be zero, and fall within the claimed range of less than 1000 IU required by claims 16 and 33. However, even highly refined white sugars that one of ordinary skill would describe as “colorless” will have color values of ~45 IU, as supported by Global Sugar Supply (ICUMSA Ratings Explained for Bulk Buyers – Sugar Purity Levels, <URL: https://globalsugarsupply.com/sugar-purity-levels/>, Retrieved 8 April 2026; p. 2 and 6-7 of the PDF file provided). Additionally, there is no evidence that soluble lignin levels at the low levels required by the instant claims would necessarily generate compositions that could not be described as colorless, and therefore there is no basis to conclude that the composition of Jansen has strictly zero lignin content. In fact, lignin itself in its natural state is nearly colorless, as evidenced by Mota et al. (Int. J. Mol. Sci. 2023, 24, 15941; Introduction ¶ 1).
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
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