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
Claims 11-14 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 12, 2025.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 2 and 15 are rejected under 35 U.S.C. 101 the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the independent method claims fail to recite a specific method step of “using”.
Claim Rejections - 35 USC § 112
Claims 1, 2, 7, 8, 15 and 19 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.
Method claim 1 is indefinite in that no active steps are set forth which delimit the “using” limitation. MPEP 2173.05(q). The recitation “comprising using the aqueous lactam solution as a solvent for cross-linked phenolic polymers” does not constitute an active method step. It is unclear whether the method step involves contacting the aqueous lactam solution with a cross-linked phenolic polymer, wherein the former is a solvent for the latter.
Method claim 7 is indefinite in that no active steps are set forth which delimit the “using” limitation. MPEP 2173.05(q). The recitation “comprising using the aqueous lactam solution for producing homogeneous polyamide/lignin blends” does not constitute an active method step. It is unclear whether the method step involves polymerizing the aqueous lactam solution comprising lactam and cross-linked phenolic polymer to produce a homogeneous polyamide/lignin blend.
In claim 7, line 5, there is no express antecedent basis for lignin.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 3 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over US 2005/0038094 (Warrington).
Warrington discloses a solution comprising a pesticide (not precluded from present claims) and lignin (meets Applicants’ cross-linked phenolic polymer) dissolved in a solvent comprising a water miscible polar solvent such as N-methyl pyrrolidone (NMP) (meets Applicants’ lactam) and water (meets Applicants’ water) (e.g., abstract, [0005], [0010-0011], [0013-0019], examples, claims). Notably, inasmuch as the NMP is miscible with water (abstract), such would necessarily form a solution with the water (meets Applicants’ aqueous lactam solution).
Specifically, Warrington sets forth solution embodiments [0043] comprising:
(a) a pesticide;
(b) 1, 2 or 5% w/v lignin (meets Applicants’ cross-linked phenolic polymer);
(c) NMP (meets Applicants’ lactam); and
(d) water (meets Applicants’ water).
In essence, Warrington differs from claim 3 in not expressly disclosing the content of NMP, with respect to total weight of water and NMP. Inasmuch as the water is added to further dilute the solution [0019], it would have been within the purview of one having ordinary skill in the art to use at least 50 wt.% of NMP with respect to total water and NMP with the reasonable expectation of success in accordance with the degree of dilution desired. Accordingly, absent evidence of unusual or unexpected results for the presently claimed lactam content of 50 to 95 wt.%, no patentability can be seen in the presently claimed subject matter. It would be expected that Warrington’s above-described embodiments would necessarily contain the lignin in amounts falling within the scope of the present claims (1, 2 or 5% w/v lignin).
As to claim 16, Warrington discloses lignin.
Response to Arguments
Applicant’s arguments and amendments filed April 29, 2026 have been fully considered and are persuasive in overcoming the 35 U.S.C. 102 rejection of claim 1 over US 4848470 (Korpics), the 35 U.S.C. 103 rejection of claims 1 and 15 over US 2005/0038094 (Warrington) and the 35 U.S.C. 103 rejection of claims 1-10 and 15-19 over US 3882077 (Takita). These rejections have been withdrawn.
Applicant’s arguments filed April 29, 2026 have been fully considered but are found persuasive in overcoming the remaining 35 U.S.C. 101, 35 U.S.C. 112 and 35 U.S.C. 103 rejections.
With respect to the 35 U.S.C. 101 and 112 rejections, as explained hereinabove, the claimed method claims do not set not set forth active steps delimiting the “using” limitation.
With respect to the 35 U.S.C. 103 rejection, claim 3 has not been amended to recite that the lactam is unsubstituted. It is maintained that it would have been within the purview of one having ordinary skill in the art to use at least 50 wt.% NMP with respect to total water and NMP in Warrington’s composition with the reasonable expectation of success in accordance with the degree of dilution desired. The present claims do not preclude the additional materials required by Warrington.
Allowable Subject Matter
Claims 9 and 10 are allowed.
As argued by Applicants, Takita discloses carbonizing lignin fibers to produce carbon fibers, which carbon fibers are not a cross-linked lignin or cross-linked phenolic polymer. An updated search has failed to reveal any additional prior art that would fairly teach, suggest or provide motivation to arrive at the presently claimed subject matter.
Claims 4-6, 17 and 18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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, Heidi Kelley can be reached at 571-270-1831. 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.
/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
Prosecution Insights