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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Interpretation
Claim 20 will be interpreted as open ended (see claims 31-33, the method further comprising). The transitional term “comprising”, which is syn-onymous with “including,” “containing,” or “charac-terized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., >Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) [see MPEP 2111.03].
Claim Objections
Claim 23 is objected to because of the following informalities: etherbeing should be ether being. Appropriate correction is required.
Claim 34 is objected to because of the following informalities: 10with should be 10 with. Appropriate correction is required.
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 26 and 35 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.
Claim 26: it is unclear if there are undissolved residues present in the lignin/BADGE/solvent solution of claim 20 which are subsequently filtered after mixing. It is unclear if the filtering step of claim 26 is necessary if there aren’t undissolved residues present in the lignin/BADGE/solvent solution of claim 20. Accordingly, claim 26 is indefinite. Claim 26 will be interpreted as an optional step of filtering if residues are present in the solution.
Claim 35 recites the limitation "the covalent cationization" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 20-22, 25-28, and 31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ball et al. (US 3,149,085).
Regarding claims 20-22, 25 and 28: Ball et al. (US ‘085) discloses a method of making a lignin and epoxide resin [1:2-4], wherein lignin from soft wood [2:10-23] is recovered from an alkali pulping process by acid precipitation [2:37-3:6]. Ball et al. (US ‘085) discloses the diglycidyl ether of bisphenol A as an epoxy resin [3:60-4:5]. Ball et al. (US ‘085) discloses Example 19 [Ex. 19; 13:18-45] prepares a solution of 20 grams of acetone and 200 grams of the diglycidyl ether of bisphenol A (the diglycidyl ether of bisphenol A as the epoxy resin [3:60-4:5]; see MPEP 2131.02) and 50 grams of lignin. Ball et al. (US ‘085) discloses the solution was cooled and acetone had evaporated [Ex. 19; 13:18-45].
The claimed effects and physical properties, i.e. give rise to hybrid nanoparticles, would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 26: Ball et al. (US ‘085) discloses a solution [Ex. 19; 13:18-45]; i.e. no step of filtering undissolved residues is required {see above}.
Regarding claim 27: Ball et al. (US ‘085) discloses chemical linkages formed by reaction of the epoxide and lignin, as well as non-interactive molecules in lignin becoming chemically interlinked [5:23-55].
Regarding claim 31: Ball et al. (US ‘085) discloses curing the composition [Ex. 19; 12:56-60; 13:18-45].
Claim(s) 37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nypelö, T. E.; Carrillo, C. A.; Rojas, O. J. Soft Matter, 2015, 11, 2046, when taken with Biochoice™ Lignin: the Launch of a New Bio-Based Product Platform; Domtar Corporation; 2013.
Regarding claim 37: Nypelö et al. (Soft Matter, 2015, 11, 2046) discloses lignin nanoparticles [abstract], wherein lignin particles are prepared by dissolving low ash (0.5%) Kraft lignin (Domtar, Plymouth Pup Mill, NC; Southern Pine) in aqueous sodium hydroxide. The lignin solution was added to an octane solution, mixed, and epichlorohydrin (1-chloro-2,3-epoxypropane) was added. After crosslinking, the resulting particles were separated by the addition of water to afford lignin nanoparticles [§Experimental; Table 1].
Biochoice™ Lignin: the Launch of a New Bio-Based Product Platform provides evidence for low ash Kraft lignin isolated from pulp mill black liquor (Plymouth, NC mill; Southern Pine) [page 7].
Allowable Subject Matter
Claims 23-24, 29-30, 32-34 and 36 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 35 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.
The following is a statement of reasons for the indication of allowable subject matter: Ball et al. (US 3,149,085) discloses a mass ratio of lignin to diglycidyl ether of bisphenol A of 1:4 [Ex. 19; 13:18-45], there does not appear any motivation to employ mass ratios of lignin to diglycidyl ether of bisphenol A of 10:1 to 1:1. Ball et al. (US ‘085) does not disclose mixing the mixture into water. Ball et al. (US ‘085) does not disclose spray drying or freeze drying. Ball et al. (US ‘085) does not disclose covalent cationization.
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767