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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 4/3/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 4/3/2026. In particular, claim 1 has been amended to add and limit the carrier liquid, and claims 63-71 are new. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
Claims 43-53 and 63-71 are rejected under 35 U.S.C. 103 as being unpatentable over Samec (US 10,030,147) in view of Wilmott (US 2015/0230487).
With respect to claims 43, 44, 47, 48, 51, 52, 63-65, and 67-70, Samec discloses a composition comprising a lignin derivative having at least one hydroxyl group substituted with ester groups and a carrier liquid (abstract) that includes esterified fatty acids, crude oil, mineral oil, and/or hydrocarbon oils (col. 4, lines 28-31). Samec teaches that 99% or more of the hydroxyl groups are substituted (col. 24, lines 1-3). Samec discloses that a second fatty acid can be used to esterify the lignin (col. 9, lines 34-39) and teaches that olive oil may be used as the second fatty acid (col. 7, lines 14-18).
Samec is silent regarding the amount of saturated, unsaturated, and polyunsaturated fatty acids derived from olive oil.
Wilmott discloses in the table after paragraph 0119 that olive oil includes 16 wt % saturated, 71 wt % monosaturated, and 11 wt % polyunsaturated fatty acids.
Given that Samec teaches esterifying lignin with olive oil and further given that these olive oil provides for fatty acid compositions having saturated, monounsaturated, and polyunsaturated fatty acid amounts that overlap with the claimed ranges as described by Wilmott, it would have been obvious to one of ordinary skill in the art to prepare a composition of functionalized lignin derived from olive oil having relative amounts of fatty acid like claimed.
With respect to claim 45, Samec teaches using vegetable oils (col. 7, lines 14-18) but fails to explicitly disclose one that has 5-10 wt % saturated, 55-75 wt % monounsaturated, and 5-35 wt % polyunsaturated fatty acids.
Wilmott discloses in the table after paragraph 0119 that canola (i.e., vegetable) oil includes 6 wt % saturated, 62 wt % monounsaturated, and 32 wt % polyunsaturated fatty acids.
Given that Samec teaches that vegetable oils are an appropriate source of fatty acids, it would have been obvious to one of ordinary skill in the art to utilize canola oil which has claimed amounts of saturated, nonounssaturated, and polyunsaturated fatty acids as shown by Wilmott.
With respect to claim 46, Wilmott discloses that olive oil has 11 wt % polysaturated fatty acid which does not overlap with claimed 2-10 wt %. Even so, it is the examiner’s position that the values are close enough that one of ordinary skill in the art would have expected the same properties. Case law holds that a prima facie case of obviousness exists where 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 the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Also, evidence is provided in Applicant’s own specification as originally filed which teaches that olive oil includes 2-20 wt % polyunsaturated fatty acid.
Therefore, it would have been obvious to one of ordinary skill in the art to treat lignin with a fatty acid composition derived from olive oil having an amount of polyunsaturated fatty acid that overlaps with claimed 2-10 wt %.
With respect to claims 49, 50, and 66, Samec teaches adding mixtures of fatty acids (col. 7, lines 10-18) and teaches that natural sources of fatty acids include olive oil, soybean, tall, and corn oil.
While Samec does not explicitly disclose a mixture of two oils, it is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Lindner 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972). Therefore, it would have been obvious to one of ordinary skill in the art to utilize a mixture of two natural oils as the source of the fatty acid mixture.
With respect to claims 53 and 71, Samec teaches that when the ester groups are unsaturated, the lignin is readily dissolved in the carrier solvent at room temperature which allows for easier transporatation and storage(col. 9, lines 58-67). Samec also teach that substituting the hydroxyl groups on the lignin increases solubility in organic solvents to form a one phase system (col. 10, lines 1-11).
Because Samec teaches that the lignin-soluble composition is advantageously storage stable at room temperature, one of ordinary skill in the art would have expected that the same composition would be stable at 150°C for 2 days or at 100°C for 64 days.
Response to Arguments
Applicant's arguments filed 4/3/2026 have been fully considered but they are moot in view of the new grounds of rejection set forth above.
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.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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