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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-12, in the reply filed on June 8, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 13-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 8, 2026.
Claim Objections
Claims 1-12 are objected to because of the following informalities:
Regarding claim 1, in lines 12 and 13, the claim recites “35 wt.% by weight” as a typo This phrase should be amended to be either 35 wt.% or 35% by weight.
Regarding claim 9, in line 9, there is a bracket at the end of “claim 1” which should be removed.
Regarding claims 2-8 and 10-12, these claims depend from an objected to claim and include all of the limitations thereof. Therefore, they are also subject to the objection.
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.
Claims 1-12 are 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.
Regarding claim 1, claim 1 recites the limitation "the arabinose" in line 6 and the limitation “the xylose” in line 9. There is insufficient antecedent basis for these limitations in the claim. For the purpose of further examination, the claim will be interpreted as reciting “hydrolyzing an agricultural fiber comprising arabinose and xylose” so that the compounds are affirmatively named.
Regarding claim 2, claim 2 recites the limitation "the first hydrolyzing step, the second hydrolyzing step, or both" in lines 1 and 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, the first hydrolyzing step is interpreted to be the step of hydrolyzing an agricultural fiber; and the second hydrolyzing step is interpreted to be the step of hydrolyzing the arabinose-deficient hydrolyzed product.
Regarding claims 3 and 4, these claims also recite “the first hydrolyzing step” and “the second hydrolyzing step.” However, since they depend from claim 2, if the antecedent basis is fixed for claim 2, then there is no problem with claims 3 and 4.
Regarding claim 5, claim 5 recites the limitation “the first hydrolyzing step” in lines 1 and 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, the first hydrolyzing step is interpreted to be the step of hydrolyzing an agricultural fiber.
Regarding claim 6, claim 6 recites the limitation “the second hydrolyzing step” in lines 1 and 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, the second hydrolyzing step is interpreted to be the step of hydrolyzing the arabinose-deficient hydrolyzed product.
Regarding claim 8, claim 8 recites the limitation "the modified fiber composite" in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted to refer to the modified fiber composite feedstock of claim 1.
Regarding claim 9, claim 9 recites the limitation “the elastic modulus" in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted as an increase in an elastic modulus.
Claim 9 recites the limitation "the modified fiber composite" in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted to refer to the modified fiber composite feedstock of claim 1.
Additionally, in lines 4 and 5, the claim recites that there is an increase in the elastic modulus of the modified fiber composite of at least about 10% to 50%. This range is unclear because of the use of a range with the phrase “at least.” Is the elastic modulus increased about 10% to about 50%, at least about 10%, or at least about 50%? For the purpose of further examination, this limitation will be given its broadest reasonable interpretation of at least about 10%.
Regarding claim 10, claim 10 recites the limitation “the toughness" in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted as an increase in a toughness value.
Claim 10 recites the limitation "the modified fiber composite" in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted to refer to the modified fiber composite feedstock of claim 1.
Additionally, in lines 4 and 5, the claim recites that there is an increase in the toughness of the modified fiber composite of at least about 10% to 30%. This range is unclear because of the use of a range with the phrase “at least.” Is the toughness increased about 10% to about 30%, at least about 10%, or at least about 30%? For the purpose of further examination, this limitation will be given its broadest reasonable interpretation of at least about 10%.
Regarding claim 11, claim 11 recites the limitation "the modified fiber composite" in lines 1 and 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted to refer to the modified fiber composite feedstock of claim 1.
Regarding claim 12, claim 12 recites the limitation "the arabinose-deficient hydrolysate" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this will be interpreted as the arabinose-deficient hydrolyzed product of claim 1.
Claim 12 recites the limitation "the xylose-containing solution" in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this will be interpreted as the hydrolyzed fiber material of claim 1, step (b).
Claim 12 recites the limitation "the concentrated xylose-containing solution" in lines 6-7. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this will be interpreted as the product made from concentrating the xylose-containing solution (which is the hydrolyzed fiber material) of step (d).
Additionally, in lines 9 and 10, the claim recites “wherein the comprises xylose.” It is unclear what is to comprise the xylose. For the purpose of further examination, this phrase will be interpreted that the precipitate of line 9 comprises the xylose.
Regarding claim 7, this claim depends from a rejected claim and include all of the limitations thereof. Therefore, it is also rejected.
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, 2, and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Satyavolu et al. (US 2016/0297845) in view of Mohanty et al. (US 2018/0127554) and Shaler et al. (US 2011/0294925).
Regarding claims 1, 2, and 5-7, Satyavolu et al. teaches a two-stage dilute acid hydrolysis of a hemicellulose-rich agricultural biomass, wherein the agricultural biomass is generated by agricultural processing and includes soy hulls from soybean processing, rice hulls from rice milling, and corn fiber from wet milling or dry milling (an agricultural fiber, a crop residue, and a grain hull fiber from a plant selected from soybean, corn, and rice) (¶42; Table 1; Table 2). In a first hydrolyzing step, the agricultural biomass is hydrolyzed with 0.2% by weight of H2SO4 at 110 °C, and in a second hydrolyzing step the product thereof is thereafter hydrolyzed with 0.4% by weight H2SO4 at 140 °C (¶45; Table 3, footnotes b and c). Both hydrolyzing steps therefore employ an acid, and the first hydrolyzing step employs a lower concentration of acid than the second hydrolyzing step. Satyavolu et al. further teaches that the first stage liberates arabinose in preference to xylose, and that the second stage liberates the xylose, reporting in Table 3 an arabinose concentration of 5.41 mg/mL and a xylose concentration of 1.23 mg/mL for the first stage and an arabinose concentration of 2.52 mg/mL and a xylose concentration of 14.46 mg/mL for the second stage. The product of the first hydrolyzing step is accordingly an arabinose-deficient hydrolyzed product, and Satyavolu et al. states expressly that the two-stage hydrolysis also reduced the level of arabinose in the hydrolysate (¶45). The reaction conditions of the two-stage hydrolysis were optimized to provide higher selectivity to C5 sugars (D-xylose) (¶45).
From the values reported in Table 3, the first hydrolyzing step removes 68.2% of the arabinose and 7.8% of the xylose (calculated by Examiner; 5.41/(5.41+2.52) = 0.682 and 1.23/(1.23+ 14.46) = 0.078), and the second hydrolyzing step removes 92.2% of the xylose remaining in the arabinose-deficient hydrolysis product (calculated by Examiner; 14.46/(1.23+14.46) = 0.922). Claims 5 and 6 each recite their two conditions in the alternative ("and/or"), such that either condition satisfies the claim. Satyavolu et al. therefore meets claim 5 under both the arabinose condition (at least about 40%, 50%, or 60%) and the xylose condition (less than 25%, 20%, 15%, or 10% ), and meets claim 6 under the xylose condition (greater than 70%, 75%, 80%, 85%, or 90%).
Satyavolu et al. does not teach combining a thermoplastic copolyester (TPC) with up to 35% by weight of the hydrolyzed fiber material. However, Mohanty et al. teaches a biodegradable composite comprising a polymeric matrix and a filler/reinforcing agent, wherein the biodegradable polymers of the matrix are selected from the group consisting of poly(butylene adipate-co-terephthalate) (PBAT), poly(lactic acid) (PLA), poly(butylene succinate) (PBS), poly(butylene succinate-co-adipate) (PBSA), polycaprolactone (PCL) and polyhydroxyalkanoates (PHA) (¶62). PBA T and PBSA are each a thermoplastic copolyester. Mohanty et al. teaches that the filler/reinforcing agent is present in from 0.01 to 60% by weight of the composite (¶153), and exemplifies a PBS-based composite containing 30% by weight of a lignocellulosic filler (Table 7). Mohanty et al. further teaches that the biomass filler may be pre-treated before use, stating that all biomass shown in Table 1 may undergo pre-treatments, which are common for natural fibers prior to composite production, including water washing (¶129, 131).
Shaler et al. teaches that removing hemicellulose from a cellulosic material prior to forming a composite therefrom improves the properties of that composite. Shaler et al. teaches that the wettability of hot water extracted wood decreases due to the reduction of hydroxyl content, as a result of the extraction of the hemicellulose polymers (¶55), and that the thickness swell of the extracted material is improved as a result of the reduction in the hemicellulosic amorphous polymers (¶56). Shaler et al. additionally teaches that the water absorption of the extracted material was significantly lower than that of the control (¶57, 58), that the dry modulus of elasticity increased by up to 19.7% (¶61), and that the removal of hemicellulose and acetic acid play an important role in volatile organic compounds (VOC) emissions, with a 37% reduction in emissions resulting from the extraction (¶52).
Satyavolu et al., Mohanty et al., and Shaler et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of the chemical treatment of lignocellulosic biomass and the preparation of natural fiber-polymer composite materials therefrom. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add the hydrolyzed fiber material remaining after the two-stage hydrolysis, as taught by Satyavolu et al., to a thermoplastic copolyester in an amount of 0.01 to 60% by weight, as taught by Mohanty et al., and would have been motivated to do so because Mohanty et al. teaches that natural fiber fillers are commonly pretreated prior to composite production (¶129), and because Shaler et al. teaches that a cellulosic material from which hemicellulose has been removed provides a composite having reduced wettability, reduced thickness swell, reduced water absorption, an increased modulus of elasticity, and reduced volatile organic compound emissions (¶52, 55-58, 61).
Regarding claim 8, Satyavolu et al., Mohanty et al., and Shaler et al. teach the method of claim 1 as set forth above. The combination does not explicitly teach that the combining of the thermoplastic copolyester with the hydrolyzed fiber material results in a decrease in viscosity of the modified fiber composite as compared to the viscosity of the TPC absent the hydrolyzed fiber material. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., a decrease in viscosity relative to the thermoplastic copolyester alone, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
The Office further points out that the instant specification attributes the recited decrease in viscosity to the presence of soybean hull fibers in the thermoplastic copolyester matrix rather than to the hydrolysis of those fibers, reporting a considerable decrease in the viscosity of TPC with addition of CTSHF (chemically treated soybean hull fibers, ¶90 of the instant PG-PUB) and UTSHF (untreated soybean hull fibers, ¶90 of the instant PG-PUB), and that the viscosity decreased from 2700 Pa·s to a range between 1775 and 2100 Pa·s with addition of 5% by weight CTSHF and UTSHF (¶97 of the instant PG-PUB). The instant specification additionally states that this behavior indicates the existence of shear thinning of TPC, to some extent, in the presence of soybean hull fibers (¶98 of the instant PG-PUB).
Regarding claims 9 and 10, as stated above in the 35 U.S.C. 112(b) rejections, claim 9 is interpreted as claiming an increase in elastic modulus of at least about 10%, and claim 10 is interpreted as claiming an increase in toughness of at least about 10%. Mohanty et al. teaches that the tensile modulus of the composites was increased 3-fold with the addition of 30% by weight of filler/reinforcing agent (¶154), and that the impact strength was improved after addition of the filler/reinforcing agent compared to that of the matrix and was further improved with increasing the compatibilizer (¶155). Table 7 of Mohanty et al. reports a tensile modulus of 640 MPa and an impact strength of 28.4 J/m for the neat PBS matrix, and a tensile modulus of 2210 MP and an impact strength of 46.4 J/m for the corresponding composite containing 30% by weight of the filler/reinforcing agent. The composite therefore exhibits an increase in modulus of 245% and an increase in toughness of 63.4% relative to the matrix alone (calculated by Examiner; [(2210-640)/640]*100 = 245% and [(46.4-28.4)/28.4]*100 = 63.4%). At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add the hydrolyzed fiber material, as taught by Satyavolu et al., to the thermoplastic copolyester, as taught by Mohanty et al., and would have been motivated to do so as to obtain an increase in the elastic modulus and in the toughness of the resulting composite.
Regarding claim 11, Satyavolu et al., Mohanty et al., and Shaler et al. do not explicitly teach that the modified fiber composite exhibits less than 10% moisture uptake when immersed in distilled water for up to 7 days. The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., the composite having less than 10% moisture uptake when immersed in distilled water for up to 7 days, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Satyavolu et al. (US 2016/0297845) in view of Mohanty et al. (US 2018/0127554) and Shaler et al. (US 2011/0294925) as applied to claims 1 and 2 above, and further in view of Jiang et al. (CN 101824494). For convenience, the citations below for Jiang et al. are taken from an English language machine translation included herewith.
Regarding claim 3, Satyavolu et al., Mohanty et al., and Shaler et al. teach the method of claims 1 and 2 as set forth above. Satyavolu et al. does not teach that the first and second hydrolyzing steps are performed together or separately at the same temperature. However, Jiang et al. teaches a two-stage acid hydrolysis of an agricultural fiber in which both acid stages are performed at the same temperature. Jiang et al. teaches a first pickling step in which a corn cob is treated with a sulfuric acid solution having a mass concentration of 0.1-1.0% at 90-110 °C for 20-60 minutes, followed by a water wash, and then followed by an atmospheric pressure hydrolysis step in which the pretreated corn cob is treated with a sulfuric acid solution having a mass concentration of 1.0-2.0% at 100 °C for 2-6 hours (Page 1, lines 38-55; steps 1-3). In the worked example, the first acid step is performed with 0.3% sulfuric acid at 100 °C for 40 minutes and the second acid step is performed with 1.7% sulfuric acid at 100 °C for 4 hours, both at the same temperature of 100 °C (Page 2, lines 13-20). Jiang et al. teaches that performing the hydrolysis in this manner provides a low hydrolysis temperature, mild conditions, complete hydrolysis of polypentaose in the com cob, and no furfural and Maillard browning reaction, together with high light transmittance of the hydrolyzed solution and a high content of reducing sugar (Page 2, lines 1-7). Satyavolu et al. and Jiang et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of acid hydrolysis of agricultural fibers to recover pentose sugars. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to perform the first and second hydrolyzing steps with varying acid concentrations at the same temperature, as taught by Jiang et al., in the method, as taught by Satyavolu et al., and would have been motivated to do so because Jiang et al. teaches that hydrolysis at a low, constant temperature avoids the formation of furfural and Maillard browning products and increases the reducing sugar content of the hydrolysate (Page 2, lines 1-7).
Regarding claim 4, Satyavolu et al. teaches that in a first hydrolyzing step, the agricultural biomass is hydrolyzed with 0.2% by weight of H2SO4 at 110 °C, and in a second hydrolyzing step the product thereof is thereafter hydrolyzed with 0.4% by weight H2SO4 at 140 °C (¶45; Table 3, footnotes b and c). Both hydrolyzing steps therefore employ an acid, and the first hydrolyzing step employs a lower concentration of acid than the second hydrolyzing step.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Satyavolu et al. (US 2016/0297845) in view of Mohanty et al. (US 2018/0127554) and Shaler et al. (US 2011/0294925) as applied to claim 1 above, and further in view of Lindroos et al. (US 6,086,681).
Regarding claim 12, Satyavolu et al., Mohanty et al., and Shaler et al. teach the method of claim 1 as set forth above. Satyavolu et al. further teaches isolating the xylose removed from the arabinose-deficient hydrolysis product. Satyavolu et al. teaches combining a boron compound with the xylose-containing solution produced in the second hydrolyzing step, namely phenylboronic acid (PBA) complexation of xylose to form the furanose diester XDE (a xylose diester (XDE) boron derivative of the xylose) (¶47). Satyavolu et al. teaches trans-esterifying the XDE boron derivative, treating the toluene phase containing XDE with a 1,2-diol to effect transesterification and thereby precipitate the xylose (¶49), and teaches that propylene glycol is used as the XDE decomplexation agent, wherein an excess of propylene glycol was required to achieve near 100% liberation of xylose, and an optimal propylene glycol (PG) to XDE stoichiometry was established at 5 PG/XDE (¶50). Satyavolu et al. teaches that the precipitate comprises xylose, wherein the xylose precipitates as D-xylopyranose (¶51), teaches filtering the xylose (¶51), and teaches that the process includes collecting the resulting fine solids (e.g., D-xylopyranose) through filtration (¶38).
Satyavolu et al. does not teach concentrating the xylose-containing solution produced in the second hydrolyzing step to greater than about 100 g/L. However, Lindroos et al. teaches a method for crystallizing and recovering xylose from an aqueous solution of xylose comprising concentrating a xylose-containing solution having a xylose purity of 30-60%, based on xylose in the dry solids contained in the solution, under conditions effective to produce a solution of xylose that is supersaturated with xylose (Col. 3, lines 28-33), wherein the xylose-containing solution is a xylose-containing hydrolysate of biomass (Col. 5, lines 20-30), and wherein the xylose-containing solution is concentrated to a dry solids content of 75-95% by weight (Col. 3, line 60). A solution concentrated to a dry solids content of 75% by weight and having a xylose purity of 30% on dry solids (Col. 3, lines 59-65) contains 22.5% by weight xylose, which for an aqueous solution corresponds to at least 225 g/L (calculated by Examiner; (0.75 x 0.30)*100 = 22.5%, and one liter of an aqueous solution weighs at least 1000 g so 22.5%*1000g/L = 225 g/L). In Example 7, Lindroos et al. evaporates a solution having a dry solids content of 62.7% and a xylose purity of 53.0% to a dry solids content of 89.7%, corresponding to 47.5% by weight xylose, or at least 475 g/L (calculated by Examiner; (0.897 x 0.530)*100 = 47.5%; 47.5%*1000 g/L = 475 g/L). Each of these values is greater than about 100 g/L. Satyavolu et al. and Lindroos et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of the recovery of xylose from a biomass hydrolysate. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to concentrate the xylose-containing solution, as taught by Satyavolu et al., to an amount greater than about 100 g/L before combining it with the boron compound, as taught by Lindroos et al., and would have been motivated to do so because Satyavolu et al. teaches that it was possible to reduce the equivalents of PBA during complexation by increasing the concentration of xylose and that a hydrolysate further enriched in xylose would thus require less PBA equivalents for effective xylose complexation (¶47, 57).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
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