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 .
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.
Election/Restrictions
Applicant’s election without traverse of Group II, claims 13 – 18 and 29 - 41 in the reply filed on 4/17/26 is acknowledged.
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.
Claim(s) 13 – 18, 29 – 31, 36 – 38 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over US 20110024168 A1 to Okabe et al. hereinafter “Okabe”.
Okabe is directed to biomass – derived epoxy resin compositions [0008].
Regarding claims 13, 17,18, 29 – 31 and 36 - 38, Okabe teaches a process for epoxidizing biomass materials comprising wood chips, grass and rice straw [0035]. The lignin used is plant biomass which are extracted from scrap wood with alcohol (organosolv extraction) after applying steam explosion treatment [0036]. The MW of the lignin is in the range of 300 to 5000 [0036].
The process is outlined in paragraphs [0039 – 0050] comprising the steps of
Providing 100g of low MW lignin and 300g of a 10% aqueous tetramethylammonium hydroxide solution (TMAH),
Stirring for 30 minutes,
Providing 300g of epichlorohydrin (ECH) and heating under reflux to 120C for 1 hour (glycidation reaction),
Cooling the reaction to RT and washing with water,
Removing the water and adding 50g of a 20% aqueous tetramethylammonium hydroxide solution with heating under reflux at 120C for 1 hour followed by washing with water (quenching reaction),
Evaporating 80% of the epichlorohydrin, water and combining the residue with ethyl alcohol (solvent).
TMAH is a base and a phase – transfer catalyst. The reaction produced epoxidized low molecular weight lignin [0046]. Okabe teaches that 300g ECH (3.24 mol) are used and 80% of the ECH is evaporated off indicating an excess was used. Therefore, using the formula of [0007] of the specification to calculated epoxide functionality and a lignin MW of 500 g/mol, 20% * 3.24 mol = 0.648 mol / 100g lignin * 500 g/mol (MW of lignin) = 3.24. . Using a lignin MW of 900 g/mol, 20% * 3.24 mol = 0.648 mol / 100g lignin * 900 g/mol (MW of lignin) = 5.83. Using a lignin MW of 1000 g/mol, 20% * 3.24 mol = 0.648 mol / 100g lignin * 1000 g/mol (MW of lignin) = 6.48. Also, Okabe teaches that dimethylformamide (DMF) is one of a number of solvents used to dissolve the epoxidized lignin polymer to make the curable product [0055]. Okabe discloses that the MW of the lignin is in the range of 300 to 5000 [0036].
Therefore, it would have been obvious to one of ordinary skill that the epoxidize lignin made by the claimed process could have the required epoxide functionality based on the amount of ECH and lignin used in the reaction and the lignin’s MW. It would have been obvious to use DMF as a solvent as it is directly taught for this use by Okabe.
As to claim 41, as Okabe does not teach or suggest that the epoxidized lignin polymer is crosslinked unless a curing agent [0053] is added.
Regarding claims 14 – 16, Okabe is silent as to the claimed reaction times and temperatures. With regard to Applicant’s limitations regarding the reaction times and temperatures, it is the position of the Examiner that one of ordinary skill in the art, at the time of the invention, would through routine and normal experimentation determine the optimization of these limitations to provide the best effective variable depending on the results desired. Because, Okabe teaches that the glycidation reaction and quenching reaction are both completed at 120C for 1 hour, the Examiner asserts that reaction times and temperatures are art recognized result-effective variables. Thus it would be obvious in the optimization process to adjust the reaction temperature and times to achieve the desired production rate of product needed. In addition, merely modifying the process conditions such as temperature and concentration is not a patentable modification absent a showing of criticality, since the applicant does not show any unusual and/or unexpected results for the limitation stated (In re Aller, 220 Fo2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Note that the prior art provides the same effect desired by the Applicant, the formation of a epoxidized lignin polymer.
Allowable Subject Matter
Claims 32 – 35, 39 and 40 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.
Conclusion
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/PAS/ 5/14/26
/PETER A SALAMON/Primary Examiner, Art Unit 1759
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