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 § 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 15-20 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.
Considering Claim 15: Claim 15 recites the limitation "the lignin" in lines 5-6. There is insufficient antecedent basis for this limitation in the claim. The claim recites two lignin compounds, the lignin of claim 7 and the lignin of the lignin-polysaccharide complex, without a clear indication that these materials are the same. It is not clear if the term refers to the lignin of claim 7, the lignin of the complex, or if the lignin materials are the same. Based on the applicant’s argument, the applicant’s intention is that the lignin material of the complex is the same as that recited in claim 7, and the claim will be interpreted for examination based on this intention.
Considering Claim 19: Claim 19 recites the limitation "the lignin" in lines 5-6. There is insufficient antecedent basis for this limitation in the claim. The claim recites two lignin compounds, the lignin of claim 7 and the lignin of the lignin-polysaccharide complex, without a clear indication that these materials are the same. It is not clear if the term refers to the lignin of claim 7, the lignin of the complex, or if the lignin materials are the same. Based on the applicant’s argument, the applicant’s intention is that the lignin material of the complex is the same as that recited in claim 7, and the claim will be interpreted for examination based on this intention.
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 as measured by HSQC NMR with a correction (pg. 7 and 12) 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).
Zijlstra et al. teaches the lignin as being soluble in 80:20 ethanol at 25 mg/g at 105 ºC (pg. 6), and would inherently have some degree of solubility at 25 ºC. Alternatively, Zijlstra et al. teaches a lignin with a β-O-4 linkage number of 64, a weight average molecular weight of 1.9 kDa, and a condensation content of less than 5% (Appendix A), which are the preferred ranges 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 § 2112.01. As Zijlstra et al. teaches the same structural features for the lignin, the solubility properties would be the same.
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.
Claim 19 is 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: Zijlstra et al. teaches a lignin having 65-70% of β-O-4 linkages as measured by HSQC NMR with a correction (pg. 7 and 12) that is soluble in an 80% ethanol solution (pg. 6).
Zijlstra et al. teaches the lignin as being soluble in 80:20 ethanol at 25 mg/g at 105 ºC (pg. 6), and would inherently have some degree of solubility at 25 ºC. Alternatively, Zijlstra et al. teaches a lignin with a β-O-4 linkage number of 64, a weight average molecular weight of 1.9 kDa, and a condensation content of less than 5% (Appendix A), which are the preferred ranges 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 § 2112.01. As Zijlstra et al. teaches the same structural features for the lignin, the solubility properties would be the same.
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.
Claim 20 is 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 20: Zijlstra et al. teaches a lignin having 65-70% of β-O-4 linkages as measured by HSQC NMR with a correction (pg. 7 and 12) that is soluble in an 80% ethanol solution (pg. 6).
Zijlstra et al. teaches the lignin as being soluble in 80:20 ethanol at 25 mg/g at 105 ºC (pg. 6), and would inherently have some degree of solubility at 25 ºC. Alternatively, Zijlstra et al. teaches a lignin with a β-O-4 linkage number of 64, a weight average molecular weight of 1.9 kDa, and a condensation content of less than 5% (Appendix A), which are the preferred ranges 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 § 2112.01. As Zijlstra et al. teaches the same structural features for the lignin, the solubility properties would be the same.
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.
Response to Arguments
Applicant's arguments filed July 27, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Zijlstra et al. does not teach measuring the β-O-4 linkages by TAF-corrected HSQC NMR spectroscopy is not persuasive. Zijlstra et al. teaches a lignin having 65-70% of β-O-4 linkages as measured by HSQC NMR with a correction (pg. 7 and 12).
B) The applicant’s argument that Zijlstra et al. does not teach the claimed solubility at 25 ºC in 80% ethanol is not persuasive. Zijlstra et al. teaches the lignin as being soluble in 80:20 ethanol at 25 mg/g at 105 ºC (pg. 6), and would inherently have some degree of solubility at 25 ºC. Alternatively, Zijlstra et al. teaches a lignin with a β-O-4 linkage number of 64, a weight average molecular weight of 1.9 kDa, and a condensation content of less than 5% (Appendix A), which are the preferred ranges 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 § 2112.01. As Zijlstra et al. teaches the same structural features for the lignin, the solubility properties would be the same.
C) In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., pi-stacking and an efficient thermal energy utilization channel) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Further, arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). See MPEP § 2145. The criticality of the above features is not discussed in the original specification, as the original specification is silent towards these features. Thus, the criticality of the these features has not been established by evidence of the record.
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
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.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LIAM J HEINCER/Primary Examiner, Art Unit 1767
Prosecution Insights