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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/03/2025 has been entered.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant has amended the claims to require that in step (b), the material retains at least about 50% of the crystallinity of the cellulose prior to step (b).
Applicant’s argues that they have support for this new limitation in [0034, 0070, and 0076]. The instant specification in [0034] states that some of the embodiments maintain at least 50% of the crystalline structure. The specification has 35 embodiments. Further on the instant specification states in [0068] says that the treatment can be physical or chemical. The only steam treatment discussed is in [0069 and 0170] with the introduction of steam explosion and embodiment 19 that simply says to can utilize steam explosion to physically remove the lignin but does not address the crystallinity of the structure. The instant specification does not provide any examples or teachings of a steam process that is not a steam explosion.
Their instant specification says in [0070] that the selective depolymerization occurs from the use of solvents. It says that prior art uses the same solvents but also dissolves the cellulose. There is no explanation as to what allows for the selective depolymerization that is claimed, only that it happens.
Paragraph [0076] simply states that in some cases any combination form 0.01%-99% of the crystallinity can remain with 50% being one of the many cited set points. While this is sufficient support to avoid a new matter rejection it is insufficient to support a written description of a steam process to have at least 50% crystallinity remaining after selective depolymerization.
It is the Examiner’s stance that there is insufficient discloser to support the written description requirements for selective depolymerization while maintain at least 50% of the starting crystallinity though the use of a steam process. The instant discloser is relying on the average artisans ability to produce this result through routine extermination as it is not disclosed as to how this outcome will occur.
This leaves two possibilities. The first is that there is the ability to produce a steam process to selective depolymerize the material without reducing the crystallinity by more than 50% is within the ability of the average artisan to optimize through routine experimentation.
The second is that the average artisan is unable to perform this optimization through routine actions.
The Examiner is persuaded by Applications arguments filed on 11/03/2025 about how the present invention taking an alternative approach without changing the crystallinity. With this in mind the Examiner is presented a 112 written description rejection as how this selective depolymerization occurs is not presented in an accessible manner to the average artisan.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 49, 51, 55, 57-67, and 69-72 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claims require the act of subjecting said cellulosic material to a steam process to effect selective depolymerization wherein the cellulose retains at least about 50% of the crystallinity of the cellulose prior to step (b).
The instant specification in [0034] states that some of the embodiments maintain at least 50% of the crystalline structure. The specification has 35 embodiments, and the only embodiments that address the ability to retain at least 50% of the crystalline structure are directed to embodiments that do not use a steam process but instead a solvent or other chemical means. One out of 35 embodiments that addresses steam processing is insufficient to apply a generic discloser of [0034] to include all of the ranges present. There is no teachings on how to achieve this selective depolymerization utilizing a steam process as claimed.
Further on the instant specification states in [0068] says that the treatment can be physical or chemical. The only steam treatment discussed is in [0069 and 0170] with the introduction of steam explosion and embodiment 19 that simply says to can utilize steam explosion to physically remove the lignin but does not address the crystallinity of the structure. The instant specification does not provide any examples or teachings of a steam process that is not a steam explosion.
Their instant specification says in [0070] that the selective depolymerization occurs from the use of solvents. It says that prior art uses the same solvents but also dissolves the cellulose. There is no explanation as to what allows for the selective depolymerization that is claimed, only that it happens.
Paragraph [0076] simply states that in some cases any combination form 0.01%-99% of the crystallinity can remain with 50% being one of the many cited set points. While this is sufficient support to avoid a new matter rejection it is insufficient to support a written description of a steam process to have at least 50% crystallinity remaining after selective depolymerization. These are listed as bade case to best case scenarios with not discloser of what allows for each of them to happen.
The claims lack proper written description to allow for the average artisan to be able to replicate the invention. As of the current form, the instant specification and claims do not provide a sufficient written description to allow for the average artisan to perform a steam process to produce the claimed results of “selectively depolymerization” and to allow for a retention of at least 50% of the cellulose crystallinity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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