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 § 102
Claim Rejections - 35 USC § 103
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 1, 2 and 15 are rejected under 35 U.S.C. 102(a) (2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Genta et al ‘574 (US 2010/0285574). No distinction is seen between the apparatus disclosed by Genta et al ‘574, and that recited in claims 1, 2 and 15. Genta et al ‘574 discloses a biomass hydrothermal decomposition apparatus wherein a biomass feeder feeds a biomass material under increased pressure into a conveyor screw. (See Paragraph [0048].) Genta et al ‘574 teaches in Paragraph [0065] that the biomass material is compressed and serves as a material seal for keeping the pressure inside the hydrothermal decomposition apparatus. The compressed biomass material is fed to device main body 42, which is a screw unit. (See Paragraphs [0022], [0065] and FIG.1.) Genta et al ‘574 also teaches in Paragraph [0020] that the decomposition device has a reaction temperature of 180C to 240C. Accordingly Genta et al ‘574 anticipates claims 1, 2 and 15, since the screw unit in device main body 42 of Genta et al ‘574 would impart kinetic energy to no less extent than the stator body and rotator disclosed in applicant’s specification, and Genta et al ‘574 specifically discloses that heat and pressure are applied to the biomass. In any event, it would be obvious to simultaneously include heat, pressure and kinetic energy in the apparatus of Genta et a ‘574l, since Genta et al ‘574 discloses each of those parameters at the aforementioned passages.
Regarding claim 15, the chemical reactions disclosed in Paragraph [0025] of Genta et al would include breakage of chemical bonds.
Claim Rejections - 35 USC § 103
Claims 3-10 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Genta et al ‘574. Genta et al ‘574 is relied upon as discussed hereinbefore
Regarding claim 3, the screw unit disclosed in FIG. 1 of Genta et al would constitute a stator and a rotator. Genta et al ‘574 also disclose a reaction temperature of 180C to 240C in Paragraph [0056] and that hot compressed water is fed into the apparatus in Paragraph [0059]. It would be obvious to provide cold compressed water in the apparatus of Genta et a ‘574l, since one of ordinary skill in the art would appreciate that the cold water would be heated at the disclosed reaction temperatures.
Regarding claims 4 and 5, Genta et al ‘574 discloses a reaction time of preferably three to ten minutes in Paragraph [0057], because a longer reaction time increases the ratio of excessively decomposed products and is not preferable. It would be obvious from such teaching of Genta et al ‘574 to provide a reaction time of less than one minute or less than 5 seconds, since Genta et al recognize the correlation between reaction time and the degree of decomposition, and the disclosed time of three to ten minutes is merely “preferable”.
Regarding claim 6, Genta et al ‘574 discloses a reaction time as low as three minutes in Paragraph [0057].
Regarding claims 7 and 8, the apparatus of Genta et al ‘574 would result in crystallization of biomass between 50% and 100% and crystallization of inorganic components of biomass between 50% and 100%, since Genta et al ‘574 discloses the pressure, kinetic energy and heat that would result in such amounts of crystallization.
Regarding claims 9 and 10, it would be obvious to apply kinetic energy, heat and pressure which results in polyaromatic hydrocarbon of less that 1 mg/kg or less than 10 mg/kg in the apparatus of Genta et al ‘574, since Genta et al ‘574 discloses various products in Paragra[ph [0075] which are not polyaromatics.
Regarding claim 13, it would be obvious to set operational parameters independently of the biomass feed being fed, since there is no indication in Genta et al ‘574 that operational parameters are based on the type of biomass being fed.
Regarding claims 14 and 15, the decomposition disclosed in Paragraph [0060] of Genta et al ‘574 would result in breakage of chemical bonds.
Regarding claim 16, Genta et al ‘574 discloses in Paragraph [0067] that changing the pressure from increased pressure to reduced pressure causes breakage of the fiber structure. Such breakage would also be expected to cause breakage of deoxyribonucleic acid causing removal of one or more genetically modified organism present in the biomass material being fed.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Genta et al ‘574 as applied to claim 1 above, and further in view of Genta et al ‘057 (US 20110124057). It wold be further obvious from Genta et al ‘057 to include a controller in the apparatus of Genta et al ‘574. One of ordinary skill in the art would be motivated to do so, since Genta et al ‘057 discloses an apparatus almost identical to that of Genta et al ‘574, and teaches in Paragraph [0104] that control of the solid to liquid weight ratio in the reactor and the retention time of the hot water can be controlled. It would be obvious to include a controller to provide such control. It is further noted that the apparatus of Genta et al ‘574 includes feeding mechanism 32. (See Paragraph [0065].)
Claims 17 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Genta et al ‘574 in view of Genta et al ‘057 as applied to claim 11 above, and further in view of Harmon et al. It would be further obvious from Harmon et al to use the apparatus of Genta et al ‘574 to form a soil amendment. One of ordinary skill in the art would be motivated to do so, since Harmon et al disclose a biomass decomposition apparatus for producing a plethora of products, and teach in Paragraph [1056] that the process can be used to form a soil amendment. One would expect from such disclosure of Harmon et al that the apparatus of Genta et al ‘574 could also be used to form a soil amendment, since the processes of Genta et al ‘574 and Harmon et al are analogous in that both form various organic compounds resulting from biomass decomposition.
Regarding claim 22, Genta et al ‘574 discloses in Paragraph [0059] that the biomass material is solid.
Claims 18 - 21 are rejected under 35 U.S.C. 103 as being unpatentable over Genta et al ‘574 as applied to claim 2 above, and further in view of Harmon et al (US 2017/0107478). It would be obvious from Harmon et al to use the apparatus of Genta et al ‘574 to form a soil amendment. One of ordinary skill in the art would be motivated to do so, since Harmon et al disclose a biomass decomposition apparatus for producing a plethora of products, and teach in Paragraph [1056] that the process can be used to form a soil amendment. One would expect from such disclosure of Harmon et al that the apparatus of Genta et al ‘574 could also be used to form a soil amendment, since the processes of Genta et al ‘574 and Harmon et al are analogous in that both form various organic compounds resulting from biomass decomposition. It would be further expected that the apparatus of Genta et al ‘574 would prevent or limit repolymerization or aromatization, since the conditions of kinetic energy, pressure and heat are all present in the apparatus.
Regarding claim 21, Genta et al,’574 discloses a reaction time of 3-10 minutes in Paragraph [0057]. Such reaction time would inherently be controlled.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2014/074534 A1 in view of Genta et al ‘574. WO 2014/074534 A1 discloses an apparatus for destructuring pretreated biomass comprising a housing connectible to a source of pressurized pretreated biomass and a stator and rotor mounted within the housing. (See the Abstract and page 6, lines 8-24.) The tangential shear occurring in the apparatus of WO 2014/074534 A1 would constitute kinetic energy. The difference between the apparatus disclosed by WO 2014/074534 A1, and that recited in claims 1-16, is that WO 2014/074534 A1 does not disclose that heat should be present. Genta et al ‘574 discloses a biomass hydrothermal decomposition apparatus wherein a biomass feeder feeds a biomass material under increased pressure into a conveyor screw. (See Paragraph [0048].) Genta et al ’574 teaches in Paragraph [0065] that the biomass material is compressed and serves as a material seal for keeping the pressure inside the hydrothermal decomposition apparatus. The compressed biomass material is fed to device main body 42, which is a screw unit. (See Paragraphs [0022], [0065] and FIG.1.) Genta et al ‘574 also teaches in Paragraph [0020] that the decomposition device has a reaction temperature of 180C to 240C. It would be obvious from Genta et al ‘574 to include heat in the apparatus of WO 2014/074534 A1. One of ordinary skill in the art would be motivated to do so, since the apparatus of WO 2014/074534 A1 and Genta et al ‘574 are analogous in that both entail destruction of biomass with the use of pressure and kinetic energy, and Genta et al ‘574 teaches in Paragraph [0056] that the decomposition should be conducted at a temperature of 180 C to 240 C., and WO 2014/074534 A1 suggests on page 6, lines 30-34 that temperature and pressure are result-effective variables.
Regarding claim 3, the screw unit disclosed in FIG. 1 of Genta et al ‘574 would constitute a stator and a rotator. Genta et al ‘574 also discloses a reaction temperature of 180C to 240C in Paragraph [0056] and that hot compressed water is fed into the apparatus in Paragraph [0059]. It would be obvious to provide cold compressed water in the apparatus of Genta et al ‘574, since one of ordinary skill in the art would appreciate that the cold water would be heated at the disclosed reaction temperatures.
Regarding claims 4, 5 and 20, Genta et al ‘574 discloses a reaction time of preferably three to ten minutes in Paragraph [0057], because a longer reaction time increases the ratio of excessively decomposed products and is not preferable. It would be obvious from such teaching of Genta et al ‘574 to provide a reaction time of less than one minute or less than 5 seconds, since Genta et al ‘574 recognizes the correlation between reaction time and the degree of decomposition, and the disclosed time of three to ten minutes is merely “preferable”.
Regarding claim 6, Genta et al’574 discloses a reaction time as low as three minutes in Paragraph [0057].
Regarding claims 7 and 8, the apparatus of Genta et al ‘574 would result in crystallization of biomass between 50% and 100% and crystallization of inorganic components of biomass between 50% and 100%, since Genta et al ‘574 discloses the pressure, kinetic energy and heat that would result in such amounts of crystallization.
Regarding claims 9 and 10, it would be obvious to apply kinetic energy, heat and pressure which results in polyaromatic hydrocarbon of less than 1 mg/kg or less than 10 mg/kg in the apparatus of Genta et al ‘574, since Genta et al ‘574 discloses various products in Paragra[ph [0075] which are not polyaromatics.
Regarding claim 13, it would be obvious to set operational parameters independently of the biomass feed being fed, since there is no indication in Genta et al ‘574 that operational parameters are based on the type of biomass being fed.
Regarding claims 14 and 15, the decomposition disclosed in Paragraph [0060] of Genta et al ‘574 would result in breakage of chemical bonds.
Regarding claim 16, Genta et al ‘574 discloses in Paragraph [0067] that changing the pressure from increased pressure to reduced pressure causes breakage of the fiber structure. Such breakage would also be expected to cause breakage of deoxyribonucleic acid causing removal of one or more genetically modified organism present in the biomass material being fed.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2014/074534 A! in view of Genta et al ‘574, as applied to claim 1 above, and further in view of Genta et al ‘057. It would be further obvious from Genta et al ‘057 to include a controller in the apparatus of Genta et al ‘574. One of ordinary skill in the art would be motivated to do so, since Genta et al ‘057 discloses an apparatus almost identical to that of Genta et al ‘574 and teaches in Paragraph [0104] that control of the solid to liquid weight ratio in the reactor and the retention time of the hot water can be controlled. It would be obvious to include a controller to provide such control. It is further noted that the apparatus of Genta et al ‘574 includes feeding mechanism 32. (See Paragraph [0065].)
Regarding claim 12, the controlling step of Genta et al ‘574 would affect the profile of pressure and temperature.
Claims 17 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2014/074534 A1 in view of Genta et al ‘574, further in view of Genta et al ‘057, as applied to claim 11 above, even further in view of Harmon et al. It would be further obvious from Harmon et al to use the apparatus of WO 2014/074534 A1 to form a soil amendment. One of ordinary skill in the art would be motivated to do so, since Harmon et al disclose a biomass decomposition apparatus for producing a plethora of products, and teaches in Paragraph [1056] that the process can be used to form a soil amendment. One would expect from such disclosure of Harmon et al that the apparatus of WO 2014/074534 A1 could also be used to form a soil amendment, since the processes of Genta et al ‘574 and Harmon et al are analogous in that both form various organic compounds resulting from biomass decomposition.
Regarding claim 22, Genta et al ‘574 disclose in Paragraph [0059] that the biomass material is solid.
Claims 18 - 21 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2014/074534 A1 in view of Genta et al ‘574, further in view of Harmon et al. It would be obvious from Harmon et al to use the apparatus of WO 2014/074534 A1 to form a soil amendment. One of ordinary skill in the art would be motivated to do so, since Harmon et al disclose a biomass decomposition apparatus for producing a plethora of products, and teach in Paragraph [1056] that the process can be used to form a soil amendment. One would expect from such disclosure of Harmon et al that the apparatus of WO 2014/074534 A1 could also be used to form a soil amendment, since the processes of Genta et al ‘574 and Harmon et al are analogous in that both form various organic compounds resulting from biomass decomposition. It would be further expected that the apparatus of Genta et al ‘574 would prevent or limit repolymerization or aromatization, since the conditions of kinetic energy, pressure and heat are all present in the apparatus.
Claim Rejections - 35 USC § 102
Claim Rejections - 35 USC § 103
Claims 1 and 2 are rejected under 35 U.S.C. 102(a) (2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Roberts et al ‘862 (US 11,667,862). No distinction is seen between the apparatus disclosed by Roberts et al ‘862, and that recited in claims 1 and 2. Roberts et al ‘862 discloses a reactor for biomass processing, including a rotor disposed inside a stator resulting in kinetic energy, a temperature of 180C to 250 C, and pressure of 20-40 bar. (Se col. 1, lines 51-62 column 4, lines 1-8.) Accordingly Roberts et al ‘862 anticipates claims. In any event, it would be obvious to include the stator and rotor arrangement of Roberts et al ‘862 in combination with the disclosed pressure and temperature conditions, since Roberts et al ‘862 would suggest such combination at the aforementioned passages.
Claim Rejections - 35 USC § 103
Claims 3-22 are rejected under 35 U.S.C. 103 as being unpatentable over Roberts et al ‘862. The limitations recited in claims 3-21 are obvious variations of the method and apparatus disclosed by Roberts et al ‘862 ,
Regarding claims 17-21, Roberts et al ‘862 suggests at col. 1, lines 43-47 that the apparatus is useful for breaking down biomass into a form which is beneficial to the soil and crop growth. Such disclosure would suggest that the apparatus could be used to form a soil amendment.
Regarding claims 4-6, Roberts et al ‘862 teaches at col. 4, lines 39-49 that the process can be performed in less than 1 minute.
Regarding claims 11 and 12, Roberts et al ‘862 discloses in the paragraph bridging columns 4 and 5 that the system includes a control box which carries out the operation of the system’s various components.
Regarding claims 7-10 and 14-16, the limitations recited therein would be expected from Roberts et al ‘862, since Roberts et al ‘862 teaches at col. 4, lines 4-11 that the rotational force and kinetic energy combine to break down the biomass through shear force, friction and radial force, which breaks the biomass down both physically and molecularly and causing breakage of the chemical bonds.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 11,667,862. Although the claims at issue are not identical, they are not patentably distinct from each other because the apparatus recited in the claims of US 11,667,862 would impart kinetic energy, heat and pressure to biomass.
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 1-22 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. It is indefinite as to what the metes and bounds of the apparatus structure would be, since the limitations of “kinetic energy”, “heat” and “pressure” would be method limitations and would not affect the apparatus structure.
In claims 2-22, it is indefinite as to whether the phrase “such as” would require all the limitations of the claims from which they depend, i.e., claims 2-22 are improper dependent claims.
In claim 3, it is indefinite as to whether “allows” would require that the limitations being allowed actually occur, or whether they are merely optional. The terms “cold” and “hot” are indefinite since these are relative terms. The temperature of 10C to 300 C is a method limitation and would not affect the apparatus structure.
The limitations in claims 5-10 are method limitations which would not affect the apparatus structure.
In claim 12, there is no antecedent basis for “the controller”.
In claims 13-22 are indefinite in that the recited limitations are method limitations and would not be ascertainable when considering the apparatus structure.
In claim 16, there is no antecedent basis for “biomass material being fed”.
Medoff et al (US 9,534,242) is made of record for disclosing a process and apparatus for converting biomass feedstocks into useful products such as fuels.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAYNE A LANGEL whose telephone number is (571) 272-1353. The examiner can normally be reached Monday through Friday from 8:15 am to 4:15 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WAYNE A LANGEL/Primary Examiner, Art Unit 1736