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
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 1, 2, 4-9, 12-19, 21, and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fang et al. (Green Chem. 2021, 23, 412, available 12/8/20).
Considering Claim 1: Fang et al. teaches a process for depolymerizing lignin comprising oxidizing a lignin to form an oxidized lignin compound (pg. 420); and electrochemically reducing the oxidized lignin compound (pg. 420) to cleave the lignin polymer, i.e. reduce the molecular weight (pg. 413).
Considering Claim 2: Fang et al. teaches the lignin as being chemically oxidized (pg. 420).
Considering Claim 4: Fang et al. teaches the lignin as being isolated via copper catalyzed alkaline hydrogen peroxide pretreatment (pg. 420).
Considering Claim 5: Fang et al. teaches the lignin as having β-O-4 linkages (pg. 413).
Considering Claims 6 and 7: 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 reduction in linkages and molecular weight, 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.
Considering Claim 8: Fang et al. teaches the product following depolymerization as having a molecular weight of 600-1000 Da (pg. 418), and thus the starting material must have a molecular weight above 400 Da.
Considering Claim 9: 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 reduction in linkages and molecular weight, 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.
Considering Claims 12 and 13: Fang et al. teaches the lignin product as comprising monomers such as syringic acid, vanillin, and phenol (Fig. 7).
Considering Claim 14: Fang et al. teaches the lignin product as being 24% ethyl acetate soluble (Fig. 6) and the ethyl acetate soluble fraction as being 27% monomer (S22). Thus the amount of monomer is about 6% of the original lignin.
Considering Claim 15: Fang et al. teaches the combined weight of the ethyl acetate soluble and water-soluble fractions as being 46% or 62% in examples (Fig. 6).
Considering Claim 16: Fang et al. teaches reducing the oxidized lignin in an aqueous electrolyte medium (pg. 417).
Considering Claim 17: Fang et al. teaches the electrolyte medium as comprising a phosphate buffer (which comprises water), isopropanol and a LiBF4 electrolyte (pg. 420).
Considering Claim 18: Fang et al. teaches lignin as being present in an amount of 100 mg/40 mL of solvent (pg. 420) or 2.5 g/L.
Considering Claim 19: Fang et al. teaches reducing the lignin in the cathode compartment of a divided cell (Fig. 1).
Considering Claim 21: Fang et al. teaches the reduction as occurring at room temperature at 2.5 mA/cm2 for 1.5 hours (Abstract).
Considering Claim 22: Fang et al. teaches example without added thiol compounds (pg. 420).
Claims 10 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fang et al. (Green Chem. 2021, 23, 412, available 12/8/20), as applied to claim 1 above, and further in the view of the evidence of Bhalla et al. (Biotechnol Biofuels (2016) 9:34).
Considering Claim 10: Fang et al. teaches the process of claim 1 as shown above. Fang et al. teaches the lignin as being produced by the process of Bhalla et al. (pg. 420). Bhalla et al. teaches the lignin as having a weight average molecular weight of 22,000 (Abstract).
Considering Claim 11: 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 reduction in linkages and molecular weight, 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 23-29, 32-39, 41, and 42 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fang et al. (Green Chem. 2021, 23, 412, available 12/8/20).
Considering Claims 23 and 24: Fang et al. teaches a process for depolymerizing lignin comprising oxidizing a lignin to form an oxidized lignin compound (pg. 420); and electrochemically reducing the oxidized lignin compound (pg. 420) to cleave the lignin polymer, i.e. reduce the molecular weight (pg. 413). Fang et al. teaches the lignin as being isolated via copper catalyzed alkaline hydrogen peroxide pretreatment (pg. 420).
Considering Claim 25: Fang et al. teaches the lignin as having β-O-4 linkages (pg. 413).
Considering Claims 26 and 27: 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 reduction in linkages and molecular weight, 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.
Considering Claim 28: Fang et al. teaches the product following depolymerization as having a molecular weight of 600-1000 Da (pg. 418), and thus the starting material must have a molecular weight above 400 Da.
Considering Claim 29: 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 reduction in linkages and molecular weight, 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.
Considering Claims 32 and 33: Fang et al. teaches the lignin product as comprising monomers such as syringic acid, vanillin, and phenol (Fig. 7).
Considering Claim 34: Fang et al. teaches the lignin product as being 24% ethyl acetate soluble (Fig. 6) and the ethyl acetate soluble fraction as being 27% monomer (S22). Thus the amount of monomer is about 6% of the original lignin.
Considering Claim 35: Fang et al. teaches the combined weight of the ethyl acetate soluble and water-soluble fractions as being 46% or 62% in examples (Fig. 6).
Considering Claim 36: Fang et al. teaches reducing the oxidized lignin in an aqueous electrolyte medium (pg. 417).
Considering Claim 37: Fang et al. teaches the electrolyte medium as comprising a phosphate buffer (which comprises water), isopropanol and a LiBF4 electrolyte (pg. 420).
Considering Claim 38: Fang et al. teaches lignin as being present in an amount of 100 mg/40 mL of solvent (pg. 420) or 2.5 g/L.
Considering Claim 39: Fang et al. teaches reducing the lignin in the cathode compartment of a divided cell (Fig. 1).
Considering Claim 41: Fang et al. teaches the reduction as occurring at room temperature at 2.5 mA/cm2 for 1.5 hours (Abstract).
Considering Claim 42: Fang et al. teaches example without added thiol compounds (pg. 420).
Claims 30 and 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fang et al. (Green Chem. 2021, 23, 412, available 12/8/20), as applied to claim 23 above, and further in the view of the evidence of Bhalla et al. (Biotechnol Biofuels (2016) 9:34).
Considering Claim 30: Fang et al. teaches the process of claim 23 as shown above. Fang et al. teaches the lignin as being produced by the process of Bhalla et al. (pg. 420). Bhalla et al. teaches the lignin as having a weight average molecular weight of 22,000 (Abstract).
Considering Claim 31: 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 reduction in linkages and molecular weight, 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 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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Fang et al. (Green Chem. 2021, 23, 412, available 12/8/20) as applied to claim 1 above, and further in view of Du et al. (ChemSusChem 2020, 13, 4318-4343).
Considering Claim 3: Fang et al. teaches the process of claim 1 as shown above.
Fang et al. does not teach the oxidation as being anodic oxidation. However, Du et al. teaches using an anodic oxidation to oxidize lignin for depolymerization (pg. 4319). Fang et al. and Du et al. are analogous art as they are concerned with the same field of endeavor, namely lignin depolymerization. It would have been obvious to a person of ordinary skill in the art to have oxidized the lignin of Fang et al. with the anodic oxidation of Du et al., and the motivation to do so would have been, as Du et al. suggests, electrochemical depolymerization is low cost, reagent free, environmentally friendly and is carried out at milder conditions (pg. 4319).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Fang et al. (Green Chem. 2021, 23, 412, available 12/8/20) as applied to claim 1 above, and further in view of Yang et al. (J. Org. Chem. 2021, 86, 15927−15934, available 6/10/21).
Considering Claim 20: Fang et al. teaches the process of claim 1 as shown above.
Fang et al. does not teach the reduction as occurring in an undivided electrochemical cell. However, Yang et al. teaches reducing lignin model compounds in an undivided electrochemical cell (pg. 15931). Fang et al. and Yang et al. are analogous art as they are concerned with the same field of endeavor, namely lignin depolymerization. It would have been obvious to a person of ordinary skill in the art to have used the undivided electrochemical cell of Yang et al. in the place of the divided cell of Fang et al., and the motivation to do so would have been, as Yang et al. suggests, the use of the undivided cell simplifies the reaction setup with minimal yield decrease (pg. 15931).
Claim 40 is rejected under 35 U.S.C. 103 as being unpatentable over Fang et al. (Green Chem. 2021, 23, 412, available 12/8/20) as applied to claim 23 above, and further in view of Yang et al. (J. Org. Chem. 2021, 86, 15927−15934, available 6/10/21).
Considering Claim 40: Fang et al. teaches the process of claim 23 as shown above.
Fang et al. does not teach the reduction as occurring in an undivided electrochemical cell. However, Yang et al. teaches reducing lignin model compounds in an undivided electrochemical cell (pg. 15931). Fang et al. and Yang et al. are analogous art as they are concerned with the same field of endeavor, namely lignin depolymerization. It would have been obvious to a person of ordinary skill in the art to have used the undivided electrochemical cell of Yang et al. in the place of the divided cell of Fang et al., and the motivation to do so would have been, as Yang et al. suggests, the use of the undivided cell simplifies the reaction setup with minimal yield decrease (pg. 15931).
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