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 without traverse of Group I (claims 1-11) in the reply filed on 24 June 2026 is acknowledged.
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 1-11 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. The claims are rejected for the following reasons.
Claim 1 recites the limitation “a crusher assembly configured to receive a mixture of the cellulose feedstock, a solid acid catalyst or a grinding agent, or a mixture of the solid acid catalyst and the grinding agent” which renders the claim indefinite because it is unclear from the claim language as to the particular components intended to constitute the mixture. It is unclear from the claim language if both the solid acid catalyst and grinding agent are optional components.
Claim 1 also recites the limitation “wherein the crusher assembly is configured to grind the mixture under pressure to induce a reaction between the cellulosic feedstock, the grinding agent, or the mixture of the solid acid catalyst and the grinding agent produce a grinded mixture and sugar” which is confusing and unclear. It is unclear as to how the grinding agent produce a grinded mixture and sugar. It is also unclear from the claim language as to the particular components between which a reaction is induced. It is further unclear from the claim langue whether or not a solid acid catalyst is required for converting the cellulosic feedstock to sugar.
Claim 5 recites the limitation "the inlet hopper" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the mixing apparatus" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation “wherein the feedline is configured to feed the feedstock and catalyst into the reaction chamber” which renders the claim indefinite because it is unclear from the claim language whether or not the term “catalyst” is referring to the solid acid catalyst recited in claim 1, upon which claim 5 depends, or another catalyst substance distinct from the solid acid catalyst recited in claim 1.
Claim 9 recites the limitation "the solid acids" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1, 5, 6, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Blair et al. (US 2013/0233307) in view of Bristol (US 3,679,141).
Regarding claim 1, the reference Blair et al. teaches a system for converting cellulosic feedstock to sugar comprising: a reaction chamber (102, 104) (see paras. [0052]; [0071]; Fig. 1); a crusher/grinder assembly (104) configured to receive a mixture of the cellulose feedstock, a solid acid catalyst, and a grinding agent (see para. [0071]; Fig. 1); wherein the crusher/grinder assembly (104) is configured to grind the mixture under pressure to induce a mechanocatalytic reaction between the cellulosic feedstock and the solid acid catalyst to produce a grinded mixture and sugar (see paras. [0011]; [0071]-[0073]; Fig. 1). The reference Blair et al. is, however, silent with respect to the crusher/grinder assembly comprising a plurality of rollers.
The reference Bristol teaches a crusher/grinder assembly (10) configured to receive a mixture of solid particles and produce a grinded mixture of solid particles (see Abstract; col. 3, lines 31-75; Figs. 1-5). The reference Bristol further teaches that the crusher/grinder assembly comprises a plurality of rollers for grinding the mixture of solid particles (see col. 4, lines 1-7; Figs. 2-5).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Blair et al. and Bristol, and substituted the crusher/grinder assembly (10) taught by Bristol for the crusher/grinder assembly of Blair et al., since the reference Blair et al. teaches that intimate contacting between the cellulose feedstock and the solid acid catalyst and agitation needed to perform the mechanocatalytic reaction between the cellulosic feedstock and the solid acid catalyst can be conducted using any suitable milling or grinder device (see paras. [0011]; [0052]; [0071]).
Regarding claim 5, the reference Blair et al. is silent with respect to the system further comprising a feedline coupled to an inlet hopper, wherein the feedline is configured to feed the feedstock and solid catalyst into the reaction chamber. However, the reference Bristol teaches that the crusher/grinder assembly can be provided with an inlet hopper for feeding a mixture of solid particles into the crusher/grinder assembly (10) (see col. 3, lines 67-68; Fig. 2). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Blair et al. and Bristol to include an inlet hopper as well as a feedline configured to feed the cellulose feedstock and solid acid catalyst into the reaction chamber of Blair et al. and Bristol, since the reference Blair et al. suggests mixing the cellulose feedstock with the solid acid catalyst to perform the mechanocatalytic reaction between the cellulosic feedstock and the solid acid catalyst (see paras. [0011]; [0052]; [0071]).
Regarding claim 6, the references Blair et al. and Bristol disclose the system, wherein the crusher/grinder assembly comprises at least one pair of roller assemblies (see Bristol: col. 4, lines 1-7; Figs. 2-5).
Regarding claim 8, the references Blair et al. and Bristol disclose the system, wherein the ratio of the cellulosic feedstock to solid acid catalyst is 2:1 by weight (see Blair et al.: paras. [0022]; [0069]).
Regarding claim 9, the references Blair et al. and Bristol disclose the system, wherein the solid acid catalyst comprises kaolin, bentonite, and montmorillonite (see Blair et al.: para. [0058]).
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Blair et al. in view of Bristol as applied to claim 1 above, and further in view of Verhoff et al. (US 2002/0047058).
Regarding claims 10 and 11, the references Blair et al. and Bristol do not specifically disclose wherein the grinding agent comprises silicon carbide and aluminum oxide as recited in claim 10, and wherein the grinding agent has a Mohs hardness of between 8 and 9.5, and a particle size between 10 and 600 microns, as recited in claim 11. The reference Verhoff et al. teaches a grinding agent comprising silicon carbide and aluminum oxide (see para. [0105]), and having a Mohs hardness of 9 (see Table 1) and a particle size between 0.05 to 20 mm (50 to 20000 microns) (see para. [0154]). Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Blair et al. and Bristol to include a grinding agent as taught by Verhoff et al., since the reference Verhoff et al. teaches that the grinding agent advantageously provides for more rapid attainment of smaller solid particles during milling of solid particles (see para. [0006]; [0044]).
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,994,255. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-9 of the instant application are taught by claims 1-20 of U.S. Patent No. 10,994,255.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,484,858. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-9 of the instant application are taught by claims 1-19 of U.S. Patent No. 11,484,858.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,318,749. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-9 of the instant application are taught by claims 1-19 of U.S. Patent No. 12,318,749.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lessanework T Seifu whose telephone number is (571)270-3153. The examiner can normally be reached M-T 9:00 am - 6:30 pm; F 9:00 am - 1:00 pm.
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/LESSANEWORK SEIFU/Primary Examiner, Art Unit 1774
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