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 .
Detailed Action
Applicant’s election of Group I, encompassing claims 1-13 without traverse in the reply filed on 09/10/2025 is acknowledged. Thus, claims 1-16 are pending in this application; elected Group I, encompassing claims 1-13 is now under consideration for examination; and claims 14-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
Priority
Acknowledgment is made of applicants’ claim for foreign priority under 35 U.S.C. 119(a)-(d). This application is a 371 of PCT/EP2021/084982 filed on 12/09/2021 and claims the priority date of EPO application 20213392.2 filed on 12/11/2020.
Information disclosure statement
The information disclosure statements (IDS) submitted on 06/05/2023 and 07/19/2023 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS statements are considered and initialed by the examiner.
Objections-Abstract/Specification
The Abstract of the disclosure is objected to because, Abstract should be on a separate sheet of paper. The abstract of the disclosure is objected to because the abstract is presented as part of the first page of a WO publication. The abstract should be presented as a single sheet apart from all other bibliographic material including the information included on the first page of a WO publication. If EFS is used to submit a replacement abstract, the appropriate abstract (ABST) document code should be used for the one-page document. Correction is required. See MPEP § 608.01 (b).
Claims Objections
Claim 1 and claims 2-13 depending therefrom are objected: Recitation of “and/or” in claims 1, 6-8 and 10-11 makes the claim indefinite, as it is not clear what limitations must be present. Correction and clarification is required. Examiner suggests amending the claim to recite “…or …”.
Claim Rejections: 35 USC § 112(b)
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.
I. Claim 1 and claims 2-13 depending therefrom 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 pre-AIA the applicant regards as the invention.
Claims 1-13 is 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 pre-AIA the applicant regards as the invention; recitation of “and/or” in claims 1, 6-8 and 10-11 makes the claim indefinite, as it is not clear what limitations must be present. Correction and clarification is required. Examiner suggests amending the claim to recite “…or …”.
II. Claim 1 and claims 2-13 depending therefrom is 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 pre-AIA the applicant regards as the invention.
Regarding claim 1, recites the phrase "degree of pretreatment", “average size of the lignocellulosic particles”, “controlling said mechanical refining in response to said first data set” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Recitation of the phrases "degree of pretreatment", “average size of the lignocellulosic particles”, “controlling said mechanical refining in response to said first data set” in claim 1 renders the claim indefinite and considered to be a relative term which renders the claim indefinite and the specification does not provide a standard for ascertaining the requisite degree of “degree of pretreatment", “average size of the lignocellulosic particles”, “controlling said mechanical refining in response to said first data set” or any other metric, and one of ordinary skill in the art would not be able to reasonably determine the metes and bounds, as "degree of pretreatment", “average size of the lignocellulosic particles”, “controlling said mechanical refining in response to said first data set” varies widely depending on the individual situation as well as the person making the determination and is dependent upon set of conditions defined by the individual situation. It is not clear to the examiner as to what type of and metric as regards to "degree of pretreatment", “average size of the lignocellulosic particles”, “controlling said mechanical refining in response to said first data set” is encompassed in the above phrases. Thus, the scope of the claim is unclear. A perusal of the specification does not provide any support for claim 1, as written "degree of pretreatment", “average size of the lignocellulosic particles”, “controlling said mechanical refining in response to said first data set”, the specification does not recite the specific conditions/metric/percentage of "degree of pretreatment", “average size of the lignocellulosic particles”, “controlling said mechanical refining in response to said first data set” and the method of detection, the applicants' intend to encompass. Clarification and correction is required. For examination purposes degree of pretreatment", “average size of the lignocellulosic particles”, “controlling said mechanical refining in response to said first data set” is any undefined quantity/ratio/percentage.
II. Claim 9 is rejected under of 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 applicant regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
In the present instance, claim 9 recites the broad recitation “…at least 50%” and also recites “e.g. (stands for example) at least 70 %, preferably at least 80 %”, which is the narrower statement of range/limitation (range within range). It is not clear what the applicants’ intend to encompass in the rejected claims and the metes and bounds of the claims are unclear and as being indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. Correction and clarification is required. Examiner suggests applicants’ consider writing additional new claims as dependent claims.
Double Patenting rejection
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting over amended claims 1-15 (dated 06/15/2023) of co-pending Application No. 18/256,004 (US 2024/0011063 A1). This is a provisional double patenting rejection because the patentably indistinct claims have not in fact been patented.
The subject matter claimed in the instant application is fully disclosed in the referenced co-pending application and would be covered by any patent granted on that co-pending application amended claims 1-15 (dated 06/15/2023) of co-pending Application No. 18/256,004 (US 2024/0011063 A1), since the referenced co-pending application and the instant application are claiming common subject matter, as follows: “A method for controlling the pretreatment and/or enzymatic hydrolysis of a lignocellulosic material comprising: a) pretreating a lignocellulosic material to form a first slurry comprising lignocellulosic particles, b) analyzing the lignocellulosic particles of said first slurry to obtain a first data set reflecting the degree of the pretreatment, c) subjecting said first slurry to mechanical refining to form a second slurry comprising lignocellulosic particles, wherein the average size of the lignocellulosic particles of said second slurry is smaller than the average size of the lignocellulosic particles of said first slurry, d) controlling said mechanical refining in response to said first data set; and e) subjecting said second slurry to enzymatic hydrolysis…wherein at least 50 %, e.g. at least 70 %, preferably at least 80 % of the lignocellulosic particles of said second slurry has an average diameter in the range of from 0.1 to 500 mm, preferably from 0.1 to 200 mm…” as claimed in claims 1-13 of the instant application and falls entirely within the scope 1-15 (dated 06/15/2023) of co-pending Application No. 18/256,004 (US 2024/0011063 A1). This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claim Rejections: 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 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.
Claims 1-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over South et al., (WO 2008/131229 A1, in IDS) and further in view of Wallberg al., (US 9,580,763 B2), Ottonello et al., (US 10,233,570 B2), Corbett et al., (Ind. Eng. Chem. Res., 2018, Vol. 57: 14648-14655) and Alvarez et al., (Chem. Eng. Transactions., 2015, Vol. 43: 625-630).
South et al., (WO 2008/131229 A1, in IDS) discloses in page 2, lines 10-18; page 5, lines 1-9; page 8, lines 1-8; page 10, line 13- to page 12, line 3; Example 1; Table 1; claims 1-28; Fig. 1-7; and entire document: a method of processing lignocellulosic material, comprising the steps of: (a) placing a sample of lignocellulosic material in a pre-treatment reactor; (b) injecting steam into said pre-treatment reactor, at a temperature, a steam pressure, and fora time, thereby producing pretreated lignocellulosic material with an average particle size; and (c) processing said pretreated lignocellulosic material in a refiner to give a refined lignocellulosic material, wherein the average particle of said pretreated lignocellulosic material is greater than the average particle size of said refined lignocellulosic material and exposing said refined lignocellulose to a saccharification enzyme to produce a saccharified product mixture and further subjecting said saccharified product mixture to an organism that produces ethanol as a metabolite. The example provided shows an enzymatic hydrolysis run with lignocellulosic material pretreated using steam hydrolysis and passed through a refiner. Hardwood chips were subjected to steam hydrolysis at 160 psig between the resident time of 5 to 10 minutes in a mechanical pulping system from Andritz. The pretreated lignocellulosic material was reduced in size at the outlet of the system at an elevated temperature of about 188°C at 160 psig. The refined lignocellulosic materials were then released and depressurized into a separate collection vessel. Subsequently the materials were subjected to enzymatic hydrolysis using cellulase and xylanase enzymes. The maximum theoretical sugar yield of the trial (Method 1) is compared to various pretreatment methods as listed in Table 1. Thus, South et al., (WO 2008/131229 A1, in IDS) discloses a method of processing lignocellulosic biomass using a refiner combined with mild pretreatment conditions, which provides high ethanol yields while minimizing or eliminating the need to recover and recycle acid or other added catalysts, and simultaneously reduces the amount of unwanted by-products. Use of a refiner is believed to improve ethanol yield and/or rate by breaking the pretreated cellulose material into smaller particles, which increases susceptibility to enzymatic hydrolysis, thereby increasing the effectiveness of enzymatic hydrolysis and ultimately resulting in greater yield of ethanol and/or increased reactions rates.
The disclosure of South et al., is described in the rejection above. However, South et al., et al., does not explicitly teach in a step in which b) analyzing the lignocellulosic particles of said first slurry to obtain a first data set reflecting the degree of the pretreatment, c) subjecting said first slurry to mechanical refining to form a second slurry comprising lignocellulosic particles, wherein the average size of the lignocellulosic particles of said second slurry is smaller than the average size of the lignocellulosic particles of said first slurry, d) controlling said mechanical refining in response to said first data set (as in claim 1); wherein said step d) of controlling said mechanical refining comprises controlling at least one parameter of said mechanical refining; said parameter being selected from:- the energy input, specific edge load or the electrical power to be used during mechanical refining (as in claim 5); wherein the step(s) of analyzing the lignocellulosic particles of said first and/or said second slurry comprises:- evaluating the amount of sugar and/or sugar degradation biproducts, - evaluating the proportion between different sugars and/or sugar biproducts, - evaluating the amount of pseudo-lignin formed,- evaluating the size, shape and/or degree of darkness of the lignocellulosic particles of said first and/or second slurries (as in claims 6-8).
Regarding claims 1 and 6-8, Wallberg al., (US 9,580,763 B2) discloses a method of producing a hydrolysate containing sugar from a lingocellulosic biomass, comprising the steps of: a) pretreating the lingocellulosic biomass in a pretreatment process to form a slurry comprising cellulosic particles; b) saccharification of the slurry obtained in step a) in the presence of hydrolytic enzymes in an enzymatic hydrolysis process to obtain a hydrolysate containing sugar; c) analyzing cellulosic particles present in the slurry obtained in step a) and/or cellulosic particles present in the enzymatic hydrolysis process during step b) using an image analysis method to obtain a data set; and d) controlling at least one process parameter of the pretreatment process in step a) and/or enzymatic hydrolysis process in step b) in response to the data set obtained in step c); and a corresponding system is also provided in the reference (see Abstract; Fig. 1-4; and entire document); said reference provides teaching, suggestion and motivation for c) subjecting said first slurry to mechanical refining to form a second slurry comprising lignocellulosic particles, wherein the average size of the lignocellulosic particles of said second slurry is smaller than the average size of the lignocellulosic particles of said first slurry, d) controlling said mechanical refining in response to said first data set (as in claim 1); see col. 2, lines 26-36 (reproduced below): “enzymatic availability of a pretreated lignocellulose biomass can be monitored online using an image analysis method and that the data received from the image analysis can be used to feedback control a pretreatment of a lignocellulosic biomass. The enzymatic availability of the biomass will influence the efficiency of the enzymatic hydrolysis. For example a low enzymatic availability might require higher enzyme concentrations. Thus the present inventors have also realized that the image analysis data also can be used to feed-forward control the enzymatic hydrolysis process” and the process parameter controlled is selected from “in one embodiment the process parameter controlled in step d) is selected from: a pH-value of the pretreatment process; a residence time of the cellulosic material in the pretreatment process; a temperature of the pretreatment process; a pressure of the pretreatment process; an amount of hydrolytic enzymes added in the enzymatic hydrolysis process; a residence time of the cellulosic material in the enzymatic hydrolysis process; a biomass composition of the lingocellulosic biomass pretreated in step a); and a degree of disintegration of the biomass prior to the pretreatment in step a) (col. 6, lines 20-35); said reference also discloses “If the pretreatment is too harsh sugars can be degraded in the pretreatment and higher amounts of fermentation inhibitors and hydrolysis inhibitors might be formed. If too harsh pretreatment is detected using the image analysis method according to the present invention the pretreatment process can be feedback controlled by decreasing the severity of the pretreatment. Furthermore, if the pretreated lignocellulosic biomass has a very high enzymatic availability it might be possible to use less enzyme in the enzymatic hydrolysis process. This is desirable since the enzymes are quite expensive and stands for a large proportion of the costs in the production of sugars from lignocellulosic biomass. Thus, in one embodiment the size and/or degree of darkness of cellulosic particles is determined in step c) and compared to a reference value and if the size is smaller than the reference value and/or if the degree of darkness of the cellulose particles are higher than the reference value at least one of the following process adjustments are performed: decrease of the severity of the pretreatment process; decrease of the efficiency of the enzymatic hydrolysis process; and decrease a degree of disintegration of the biomass prior to the pretreatment in step a) If the pretreatment is too harsh sugars can be degraded in the pretreatment and higher amounts of fermentation inhibitors and hydrolysis inhibitors might be formed. If too harsh pretreatment is detected using the image analysis method according to the present invention the pretreatment process can be feedback controlled by decreasing the severity of the pretreatment. Furthermore, if the pretreated lignocellulosic biomass has a very high enzymatic availability it might be possible to use less enzyme in the enzymatic hydrolysis process. This is desirable since the enzymes are quite expensive and stands for a large proportion of the costs in the production of sugars from lignocellulosic biomass. Thus, in one embodiment the size and/or degree of darkness of cellulosic particles is determined in step c) and compared to a reference value and if the size is smaller than the reference value and/or if the degree of darkness of the cellulose particles are higher than the reference value at least one of the following process adjustments are performed: decrease of the severity of the pretreatment process; decrease of the efficiency of the enzymatic hydrolysis process; and decrease a degree of disintegration of the biomass prior to the pretreatment in step a)” (col. 8, lines 4-26).
Regarding claim 5, Ottonello et al., (US 10,233,570 B2) discloses a process for increasing the enzymatic accessibility of a thermally treated ligno-cellulosic biomass feedstock which has been thermally treated at a severity factor; the process comprises a step of fiber shives reduction, for reducing the amount of long shives; the thermally treated ligno-cellulosic biomass after fiber shives reduction is characterized by having an increased glucans accessibility and by forming a slurry having a low viscosity (Abstract; Fig. 2-5: and entire document); “It is disclosed a process for increasing the enzymatic accessibility of a thermally treated ligno-cellulosic biomass feedstock which has been thermally treated at a severity factor, wherein said thermally treated ligno-cellulosic biomass comprises xylans, glucans and lignin and is in the physical forms of at least fibres, fines and fiber shives, wherein: the fibres each have a width of 75 μm or less, and a fibre length greater than or equal to 200 μm; the fines each have a width of 75 μm or less, and a fine length less than 200 μm (Summary; col. 4, lines 25-33; and claims) i.e., provides teaching, suggestion and motivation for wherein said step d) of controlling said mechanical refining comprises controlling at least one parameter of said mechanical refining; said parameter being selected from:- the energy input, specific edge load or the electrical power to be used during mechanical refining (as in claim 5 of the instant invention).
Similarly, Corbett et al., (Ind. Eng. Chem. Res., 2018, Vol. 57: 14648-14655) also suggest optimization of severity factor and reaction conditions such as “specific refining energy (SRE) and “specific edge load (SEL)” that includes first pass and second pass refining of lignocellulosic biomass, i.e., economically optimum degree of refining and change in color of lignocellulosic biomass during mechanical refining (see Introduction; col 2, page 146648; Fig. 1-7, pages 14651-14654; and entire document).
Regarding claims 1-9, Alvarez et al., (Chem. Eng. Transactions., 2015, Vol. 43: 625-630) provides teaching, suggestion and motivation for optimization of different milling size/particles ranging from 110 mm-500 mm, pre-treatment temperature and a kinetic model showing the effect of particle size on the pretreatment process and the production of desirable sugars/monosaccharides and control of degradation products/inhibitors of enzymes such as furfural (see Abstract; Table 1-5; Fig. 1-4, pages 626-630; Conclusions, page 630).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the South et al., a process of industrial significance and incorporate the modification to the claimed process in that, involves analyzing cellulosic particles present in the slurry obtained and/or cellulosic particles present in the enzymatic hydrolysis process and using an image analysis method to obtain a data set; and controlling at least one process parameter of the pretreatment process and/or enzymatic hydrolysis process in response to the data set obtained in first step and optimization of severity factor and reaction conditions such as “specific refining energy (SRE) and “specific edge load (SEL)” that includes first pass and second pass refining of lignocellulosic biomass, i.e., economically optimum degree of refining and change in color of lignocellulosic biomass during mechanical refining as suggested by Wallberg et al., Ottonello et al., Corbett et al., and Alvarez et al. A person of ordinary skill in the art is motivated to make such change, because will result in better utilization of substrates and in the production of desirable sugars/monosaccharides and control of degradation products/inhibitors of enzymes such as furfural and a skilled artisan would realize such a modification would be useful to increase the production of desirable sugars/monosaccharides and further downstream process. One of ordinary skill in the art has a reasonable expectation of success at adding the additional steps as suggested in the teachings of Wallberg et al., Ottonello et al., Corbett et al., and Alvarez et al., and the additional steps are well known in the art. Therefore, the inventions as a whole lack an inventive step over the prior art. The expectation of success is high, because the combined teachings of South et al., Wallberg et al., Ottonello et al., Corbett et al., and Alvarez et al., also provide the structural and functional elements of the instant invention (Teaching, Suggestion and Motivation).
Regarding specific choice of particle size, concentration, pretreatment conditions are also provided/suggested in the combination of references, and examiner also takes the position the following position; optimization of known variables, and the examiner finds support in: MPEP 2144.05 [R-5]: A. Optimization Within Prior Art Conditions or Through Routine Experimentation Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation". As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F2d 454,456,105 USPQ 233,235 (CCPA 1955). Furthermore, "it is prima facie obvious to combine two compositions or two methods each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition or third method to be used for the very same purpose....[T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980)”. Therefore, the above invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Given this extensive teaching in prior art (South et al., Wallberg et al., Ottonello et al., Corbett et al., and Alvarez et al.,) i.e., a method for controlling the pretreatment and/or enzymatic hydrolysis of a lignocellulosic material comprising: a) pretreating a lignocellulosic material to form a first slurry comprising lignocellulosic particles, b) analyzing the lignocellulosic particles of said first slurry to obtain a first data set reflecting the degree of the pretreatment, c) subjecting said first slurry to mechanical refining to form a second slurry comprising lignocellulosic particles, wherein the average size of the lignocellulosic particles of said second slurry is smaller than the average size of the lignocellulosic particles of said first slurry, d) controlling said mechanical refining in response to said first data set; and e) subjecting said second slurry to enzymatic hydrolysis…, as taught by the instant invention and as claimed in claims 1-13 is not of innovation but of ordinary skill in the art and the expectation of success is extremely high i.e., “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at, 82 USPQ2d at 1397”.
Hence, claims 1-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over South et al., (WO 2008/131229 A1, in IDS) and further in view of Wallberg et al., (US 9,580,763 B2), Ottonello et al., (US 10,233,570 B2), Corbett et al., (Ind. Eng. Chem. Res., 2018, Vol. 57: 14648-14655) and Alvarez et al., (Chem. Eng. Transactions., 2015, Vol. 43: 625-630).
Allowable Subject Matter/Conclusion
None of the claims are allowable.
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/GANAPATHIRAMA RAGHU/ Primary Examiner, Art Unit 1652