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 with traverse of Group I (claims 43-53) in the reply filed on 11/3/2025 is acknowledged. The traversal is on the ground(s) that there is no undue burden on the examiner to examine Groups II, III, and IV along with Group I. This is not found persuasive because the basis for the restriction is not under US practice. Rather the rejection is based on the shared technical feature of the Groups is not a special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claims 54-62 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/3/2025.
Claim Objections
Claims 43, 59, and 50 are objected to because of the following reasons:
With respect to claim 43, the phrase “hydroxyl groups of the lignin is functionalized” should have “is” replaced with --are-- to have proper subject verb agreement.
With respect to claim 49, there are duplicates of “rapeseed oil,” “olive oil,” and “used cooking oil” in the alternative expression.
With respect to claim 50, the phrase “at least one of the fatty acids are” should have “is” replaced with --are-- to have proper subject verb agreement.
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.
Claims 49, 52, and 53 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claim 49, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
With respect to claim 50, the term “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the term are part of the claimed invention. See MPEP § 2173.05(d).
With respect to claim 53, the property of stability is indefinite because neither the solvent nor the concentration of the esterified lignin in the test sample is provided. Both of these parameters are essential.
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 of this title, 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.
Claims 43-46 and 47-53 are rejected under 35 U.S.C. 103 as being unpatentable over Tamminen (US 2014/0243511).
With respect to claims 43-45, 47, 48, and 51, Tamminen discloses lignin esterified with tall oil fatty acid (abstract), wherein 60-100% of hydroxyl groups on the lignin are esterified (paragraph 0057). Tamminen teaches that typically fatty acid from tall oil includes 2-5 wt % saturated, 40-60 wt % monounsaturated, 30-70 wt % diunsaturated, and up to 10 wt % triunsaturated fatty acids (30-80 wt % polyunsaturated fatty acids) (paragraph 0035).
The amounts of fatty acids overlap with the claimed range but not with sufficient specificity so as to anticipate. Even so, it is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Therefore, it would have been obvious to one of ordinary skill in the art to utilize a mixture of fatty acids including 5 wt % saturated, 40-60 monounsaturated, and 30-80 wt % polyunsaturated fatty acids.
With respect to claims 49 and 50, Tamminen teaches that a mixture of sources of fatty acid can be used (paragraph 0009).
With respect to claim 52, during the molecular weight testing, the lignin esterified with a fatty acid is added to THF solvent (paragraph 0075). Also, during a coating procedure, the esterified lignin is mixed with acetone (paragraph 0083).
With respect to claim 53, Tamminen provides for a solid esterified lignin but does not therefore would not be expected to exhibit additional forming of insoluble particles. Also, it would have been obvious to one of ordinary skill in the art to select a solvent in which the esterified lignin is soluble and therefore meet the claimed stability property.
Claims 43-53 are rejected under 35 U.S.C. 103 as being unpatentable over Tamminen (US 2014/0243511) in view of Wilmott (US 2015/0230487).
With respect to claims 43-45, 47, 48, and 51, Tamminen discloses lignin esterified with a fatty acid composition such as tall oil fatty acid (abstract; claim 1), wherein 60-100% of hydroxyl groups on the lignin are esterified (paragraph 0057). Tamminen primarily discloses tall oil fatty acid but other suitable fatty acids can be obtained from canola and olive oils (paragraphs 0036 and 0060).
Tamminen is silent regarding the amount of saturated, unsaturated, and polyunsaturated fatty acids derived from canola oil or olive oil.
Wilmott discloses in the table after paragraph 0119 that canola oil includes 6 wt % saturated, 62 wt % monounsaturated, and 32 wt % polyunsaturated fatty acids. Also in the table, olive oil is disclosed as having 16 wt % saturated, 71 wt % monosaturated, and 11 wt % polyunsaturated fatty acids.
Given that Tamminen teaches sources of fatty acid composition other than tall oil such as canola oil and olive oil are used and further given that these oils provide 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 oil having relative amounts of fatty acid like claimed.
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 % polyunsaturate 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 and 50, Tamminen teaches that a mixture of sources of fatty acid can be used (paragraph 0009).
With respect to claim 52, during the molecular weight testing, the lignin esterified with a fatty acid is added to THF solvent (paragraph 0075). Also, during a coating procedure, the esterified lignin is mixed with acetone (paragraph 0083).
With respect to claim 53, Tamminen provides for a solid esterified lignin but does not therefore would not be expected to exhibit additional forming of insoluble particles. Also, it would have been obvious to one of ordinary skill in the art to select a solvent in which the esterified lignin is soluble and therefore meet the claimed stability property.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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