Detailed Office Action
The communication dated 9/15/2025 has been entered and fully considered.
Claims 2-5, 8-9, 11, and 13-15 have been amended. Claims 1-20 are pending with claims 16-20 withdrawn from consideration
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 .
Response to Arguments
The claim objections have been withdrawn.
The 112(b) rejections have been withdrawn except for claims 6 and 7 which the applicant did not address.
Art Rejections
Applicant argues hindsight knowledge and argues that SPEAKS shows at most 65% extraction with acetone and water at 80/20% split and at most 78.2% with pure acetone. The applicant points to U.S. 5,698,667 SPEAKS. The applicant argues that it would not be clear that the same amount of fatty acids are removed.
It is not hindsight to refer to the actual definition of pitch which states that pitch comprises fatty acids.
PNG
media_image1.png
100
320
media_image1.png
Greyscale
In response the SPEAKS reference applied by the Examiner U.S. 2002/0062935 is a CIP of the U.S. 5,698,667. Furthermore, the applicant’s own argument of 78.2% removal meets the claimed range.
The applied SPEAKS disclosers 40-80% removable [0047] which overlaps with the claimed range. SPEAKS additionally shows up to 100% removal of VOCs [0046]. SPEAKS uses substantially the same extractant (acetone) which would be expected to have substantially the same fatty acid removal amount. Further, the Examiner showed that extractant removal is a result effective variable based upon time and the type of extractant used.
Applicant argues that SPEAKS does not teach non-wood biomass.
In response speaks teaches treatment of whole logs and 100% bark removal is not possible as evidenced by BOHM. The claims use the comprising language and therefore wood can be present in addition to non-wood bark.
Applicant argues that BOHM is after the filing date and should not apply.
BOHM is not combined with the instant references. It is only cited to provide evidence that debarking does not remove 100% of the bark from logs and there will be remaining bark with the logs.
The applicant admits on the record that wood-based products comprise small amounts of bark and leaves [applicant’s arguments 9/15/2025 pg. 10 par. 3].
Wood comprises non-wood bark as evidenced by BOHM and admitted by applicant.
The claims use the comprising language.
The claims specify bark (claim 6).
The claims do not exclude wood, wood leaves, or wood bark.
Applicant argues the time between references.
In response to applicant's argument based upon the age of the references, contentions that the reference patents are old are not impressive absent a showing that the art tried and failed to solve the same problem notwithstanding its presumed knowledge of the references. See In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977).
Applicant argues that RYDHOLM shows that non-woods are different that wood and therefore it would not be obvious to perform a substitution.
RYDHOLM gives specific reasons to pulp non-woods and is a clear motivation to combine. SPEAKS claims the process works on all woods and RYDHOLM provides evidence that hardwoods and non-woods are chemically similar. While non-woods may have more silica present the cellulose, lignin, and extractives would be expected to react in substantially the same way with the extractant of SPEAKS.
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 6 and 7 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.
Regarding claim 6 the phrase "in particular" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Regarding claim 7, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
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 1-10 and 13-15 are rejected under 35 U.S.C. 103 as obvious U.S. 2002/0062935 SPEAKS et al., hereinafter SPEAKS, in view of, if necessary, Pulping Processes by RYDHOLM, hereinafter RYDHOLM, as evidenced by The effect of processor debarking on wood quality deterioration during interim storage of Norway logs, by BOHM et al., hereinafter BOHM.
As for claims 1, 4, and 6, SPEAKS discloses treating wood in the form of particles (wood chips, shavings, sawdust) [0043]. SPEAKS discloses extracting (256) the wood particles with an organic solvent including ethanol or acetone (248) [Figure 2, 0055]
The ethanol/acetone is miscible with water and forms a water/organic mixture [0018, 0055]. Furthermore, during evaporative recovery a part of the water will go with the ethanol because of forming an azeotrope. SPEAKS also discloses 80% acetone and 20% water [Table 1]
The process extracts VOC and pitch from the wood [0043]. Pitch comprises fatty acids of the wood as defined by Handbook of Pulp and Paper Terminology by SMOOK.
PNG
media_image1.png
100
320
media_image1.png
Greyscale
SPEAKS discloses 88% extractives removal which falls within the claimed range [Table 4]. It is the examiners position that removing 88% of extractives also removes a similar amount of fatty acids which are extractives [Table 5A]. Furthermore, SPEAKS shows that increasing the time increases the amount extracted [Table 3] or increasing the number of extractive stages increases the amount extracted [Table 2]. Therefore SPEAKS could optimize the amount of fatty acids/pitch extracted through routine optimization.
SPEAKS states that the extraction process is run such that lignin and cellulose are preserved [0051] and the solvents are chosen to not cause significant dissolving of lignin and wood cellulosic components [0054].
SPEAKS discloses wood while the claim uses non-wood. During the processing of wood it would be expected that at least some leaf particles or bark residues would be present during processing as not all leaf and bark can be removed [BOHM Table 1 debarked wood has some remaining bark]. The claim uses the ‘comprising’ language and claims bark as a non-wood in instant claim 6.
In the alternative, RYDHOLM discloses that non-wood can be used for making pulp [pg. 677 last par.] RYDHOLM discloses non-woods including grasses and cereal straw [pg. 677 par. 2]. At the time of the invention it would be obvious to the person of ordinary skill in the art to substitute the known non-wood of RYDHOLM for the woods of SPEAKS. The person of ordinary skill in the art would be motivated to do so as non-woods are rich in carbohydrates, have lower lignin, easily cooked, and have a lower price [pg. 678 par. 1]. The person of ordinary skill in the art would expect success as non-woods chemical composition is similar to hardwood [pg. 681 par. 2] and therefore would expect similar results.
As for claim 2, SPEAKS discloses sawdust which has a size under 2 mm [0009].
As for claim 3, SPEAKS discloses sawdust which is a mechanical treatment [0009] and crushing which is a mechanical treatment prior to extraction. SPEAKS discloses a subsequent chemical pulping after treatment [0075].
As for claim 4, SPEAKS discloses acetone and discloses ethanol [0055]. SPEAKS discloses 80% acetone and 20% water [Table 1]. This range of 80% acetone and 20% water contains 0% ethanol and therefore meets the claimed range (0 to 95% ethanol). If the applicant means that there must be come ethanol present than it would be obvious to substitute the ethanol for the acetone in SPEAKS. SPEAKS discloses both ethanol and acetone can be used [0055].
As for claim 5, SPEAKS discloses removing minimal amount of lignin [0051]. Further, SPEAKS states that the process can be optimized to minimize the removal by choosing the correct solvent and mild conditions [0054]. It is the Examiners position that as substantially the same lignocellulose is treated with substantially the same solvent that substantially the same amount of lignin would be removed. In the alternative, it is the goal of SPEAKS to minimize lignin removal and it would be obvious to optimize the conditions and solvents as suggested by SPEAKS through routine optimization to do so [0051, 0054].
As for claim 7, SPEAKS discloses a single purification or more than one extraction [Table 2].
As for claim 8 and 9, SPEAKS discloses 88% extractives removal which falls within the claimed range [Table 4]. It is the examiners position that removing 88% of extractives also removes a similar amount of fatty acids which are extractives [Table 5A]. Furthermore, SPEAKS shows that increasing the time increases the amount extracted [Table 3]. Therefore SPEAKS could optimize the amount of fatty acids/pitch extracted through routine optimization.
As for claim 10, as SPEAKS treats the wood/non-wood in substantially the same way terpenes would also be expected to be extracted.
As for claim 13, SPEAKS does not disclose adding any chelating agents during the extraction treatment [whole document].
As for claim 14, SPEAKS disclose a regeneration/recirculation (solvent reclamation 274) to solvent storage 276) of the organic extracting agent [Figure 2].
As for claim 15, as SPEAKS treats the wood/non-wood particles in substantially the same way with substantially the same organic extracting agent it would be expected the pulp produced would have substantially the same properties. Furthermore, SPEAKS shows the pulp has an increased tensile index of 35% which falls within the claimed range [0093].
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over SPEAKS and, if necessary, RYDHOLM, in view of U.S. 2007/0270600 CHANDLER et al., hereinafter CHANDLER.
As for claims 11 and 12, SPEAKS discloses the features as per above separating the pitch (278) from the solvent in solvent reclamation (274) [Figure 2] which can be by distillation or other processes. As per above the solvent can be acetone. Furthermore, pitch comprises fatty acids. SPEAKS does not disclose the use of a membrane to separate the pitch from the acetone. CHANDLER discloses that extracted fatty acids can be separated from acetone using a nanofiltration membrane [abstract]. At the time of the invention it would be obvious to the person of ordinary skill in the art to substitute the known nanofiltration membrane separation of CHANDLER to the distillation or other process of SPEAKS. The person of ordinary skill in the art would expect success as CHANDLER works to separate acetone and fatty acids and the process of SPEAKS is separating acetone and fatty acids. CHANDLER gives additional advantages of nanofiltration membranes including high efficiency and not degrading fatty acids because of high temperature [0010]
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 PM.
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, Abbas Rashid can be reached at (571)270-7457. 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.
ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748