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 VI, claims 15-18 and 20 in the reply filed on March 30, 2026 is acknowledged. The traversal is on the ground(s) that Group I-V teach a common technical feature that is not taught in the art. This is not found persuasive because these groups do not share a common technical feature with the elected group, and thus are distinct from the elected invention.
The applicant further argues that groups II, VI, and VII all require the lignin of claim 7. However, this is not persuasive because groups VI and VII only recite the lignin as an optional component, and thus do not require the lignin of claim 7. After further consideration, groups VI and VII have been determined to be suitable for examination together.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 March 30, 2026.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 15-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zijlstra et al. (Polymers 2019, 11, 1913, pg. 1-17).
Considering Claims 15 and 16: Zijlstra et al. teaches a lignin having 65-70% of β-O-4 linkages (pg. 7) that is soluble in an 80% ethanol solution (pg. 6). Zijlstra et al. teaches precipitating the lignin to form a particulate material, which would read on self-assembly in water (pg. 4).
Considering Claims 17 and 18: Zijlstra et al. teaches the body of claim 15.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the composition is a phosphor or has anti-Stokes fluorescence, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "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. 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 the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Claims 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zijlstra et al. (Polymers 2019, 11, 1913, pg. 1-17).
Considering Claims 19 and 20: Zijlstra et al. teaches a lignin having 65-70% of β-O-4 linkages (pg. 7) that is soluble in an 80% ethanol solution (pg. 6).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the composition is a ultraviolet absorber or has anti-Stokes fluorescence, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "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. 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 the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Claims 15-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tarasov et al. (Biotechnol Biofuels (2018) 11:269).
Considering Claims 15 and 16: Tarasov et al. teaches a particle/self assembled body (pg. 17) comprising lignin-polysaccharide complex (Abstract) comprising γ-esters (Table 1).
Considering Claims 17 and 18: Tarasov et al. teaches the body of claim 15.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the composition is a phosphor or has anti-Stokes fluorescence, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "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. 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 the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Claims 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tarasov et al. (Biotechnol Biofuels (2018) 11:269).
Considering Claims 15 and 16: Tarasov et al. teaches a particle/self assembled body (pg. 17) comprising lignin-polysaccharide complex (Abstract) comprising γ-esters (Table 1).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the composition is a ultraviolet absorber or has anti-Stokes fluorescence, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "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. 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 the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Olkowski et al. (US 2014/0200335). Olkowski et al. teaches treating a biomass to remove lignin with a mixture of an organic acid and a peracid (¶0018). As Olkaowski et al. teaches the process of the original claim 1, it would inherently produce a lignin with the claimed β-O-4 ether content and solubility properties.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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