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.
Claim 57 is rejected under 35 U.S.C. 103 as being unpatentable over Taran et al. (Catalysis in Industry, 2020, Vol. 12, No. 4, pp. 330–342).
Considering Claim 57: Taran et al. teaches a process comprising subjecting a wood/lignocellulosic material in an ethanol medium comprising hydrogen gas and a ruthenium catalyst (pg. 332), where the reaction occurs at 250 ºC, under 40 bar of hydrogen pressure for 1 hour.
The original specification teaches that the use of ruthenium catalyst, the claimed catalyst, and the claimed reaction time result in the claimed compounds in the claimed ratios (28:35-30:14; 32:22-35).
Huang et al. does not teach adding the lignocellulose mixture to the catalyst medium. However, the selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). It would have been obvious to a person of ordinary skill in the art to have added the catalyst mixture to the lignocelluose mixture following the heating step, and the motivation to do so would have been, a person of ordinary skill in the art would have expected the resultant product to be substantially similar.
Claim 59 is rejected under 35 U.S.C. 103 as being unpatentable over Taran et al. (Catalysis in Industry, 2020, Vol. 12, No. 4, pp. 330–342) as applied to claim 57 above, and further in view of Hartwig et al. (WO 2019072386).
Considering Claim 59: Huang et al. teaches the process of claim 57 as shown above.
Huang et al. does not teach using a nickel catalyst. However, Hartwig et al. teaches hydrogenation of lignin with a nickel or ruthenium catalyst (74:17-23). Huang et al. and Hartwig et al. are analogous art as they are concerned with the same field of endeavor, namely lignin hydrogenation. It would have been obvious to a person of ordinary skill in the art to have used a nickel catalyst in the process of Huang et al., as in Hartwig et al., and the motivation to do so would have been, as Hartwig et al. suggests, they are functional equivalents (74:17-23).
Huang et al. does not teach using a softwood lignin. However, Hartwig et al. teaches using softwood in a lignin hydrogenation reaction (81:16-28). It would have been obvious to a person of ordinary skill in the art to have used a softwood in the process of Huang et al., as in Hartwig et al., and the motivation to do so would have been, as Hartwig et al. suggests, to increase the number of biphenyl products in the reaction product (81:16-28).
Claims 40, 41, 43-46, 49-56, 60, and 61 are rejected under 35 U.S.C. 103 as being unpatentable over Taran et al. (Catalysis in Industry, 2020, Vol. 12, No. 4, pp. 330–342) in view of Gao et al. (International Journal of Biological Macromolecules 162, 2020, 1642-1652).
Considering Claim 40, 41, 43-46, 49-56: Taran et al. teaches a process comprising subjecting a wood/lignocellulosic material in an ethanol medium comprising hydrogen gas and a ruthenium catalyst (pg. 332), where the reaction occurs at 250 ºC, under 40 bar of hydrogen pressure for 1 hour.
The original specification teaches that the use of ruthenium catalyst, the claimed catalyst, and the claimed reaction time result in the claimed compounds in the claimed ratios (28:35-30:14; 32:22-35).
Taran et al. is silent towards the molecular weight, dispersity, and OH content of the lignin material. However, Taran et al. teaches the same processing conditions and starting materials as disclosed in the original specification. "Products of identical chemical composition can not 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 § 2144.05.
Taran et al. does not teach producing a flame retardant from the product mixture. However, Gao et al. teaches phosphorylating a lignin product to produce a flame retardant (Abstract). Taran et al. and Gao et al. are analogous art as they are concerned with the same field of endeavor, namely lignin degradation products. It would have been obvious to a person of ordinary skill in the art to have phosphorylated the lignin product of Taran et al., as in Gao et al., and the motivation to do so would have been, it is a means of producing a useful product from green materials (Abstract).
Considering Claim 60 and 61: Gao et al. teaches phosphorylating a lignin product with a phosphorous compound to produce a flame retardant (Abstract).
Claims 40, 41, 43-46, 49-56, 60, and 61 are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (Sustainable Energy Fuels, 2018, 2, 637) in view of Gao et al. (International Journal of Biological Macromolecules 162, 2020, 1642-1652).
Considering Claims 40, 41, 43-46, 49-56: Huang et al. teaches a process comprising a mixture comprising wood/lignocellulose feedstock, methanol, a ruthenium catalyst, and hydrogen gas to a temperature of 250 ºC at a pressure of 1 MPa/10 bar for 3 hours (Section 2.4).
The original specification teaches that the use of ruthenium catalyst, the claimed catalyst, and the claimed reaction time result in the claimed compounds in the claimed ratios (28:35-30:14; 32:22-35).
Huang et al. is silent towards the molecular weight, dispersity, and OH content of the lignin material. However, Huang et al. teaches the same processing conditions and starting materials as disclosed in the original specification. "Products of identical chemical composition can not 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 § 2144.05.
Huang et al. does not teach producing a flame retardant from the product mixture. However, Gao et al. teaches phosphorylating a lignin product to produce a flame retardant (Abstract). Huang et al. and Gao et al. are analogous art as they are concerned with the same field of endeavor, namely lignin degradation products. It would have been obvious to a person of ordinary skill in the art to have phosphorylated the lignin product of Huang et al., as in Gao et al., and the motivation to do so would have been, it is a means of producing a useful product from green materials (Abstract).
Considering Claims 52-56: Huang et al. teaches the composition as being the result of degradation of lignin materials into aromatic monomers and oligomers by a ruthenium catalyst (Fig. 1).
Considering Claim 60 and 61: Gao et al. teaches phosphorylating a lignin product with a phosphorous compound to produce a flame retardant (Abstract).
Response to Arguments
Applicant's arguments filed January 23, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that the process of Huang et al. would not result in the claimed properties is not persuasive. The original specification teaches the 10 bar hydrogen pressure of Huang et al. as being sufficient to achieve the desired properties (Table 4 of the instant specification).
Huang et al. teaches a process comprising a mixture comprising wood/lignocellulose feedstock, methanol, a ruthenium catalyst, and hydrogen gas to a temperature of 250 ºC at a pressure of 10.5 MPa/105 bar for 3 hours (Section 2.4). The original specification teaches that the use of ruthenium catalyst, the claimed catalyst, and the claimed reaction time result in the claimed compounds in the claimed ratios (28:35-30:14; 32:22-35).
The data relied upon by the applicant does not measure the claimed properties, namely the dispersity index and mmol of OH per gram. As such, it is not sufficient to establish that the claimed properties are not inherent to the process of Huang et al.
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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/LIAM J HEINCER/Primary Examiner, Art Unit 1767