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 .
Application Status
In response to Non-Final Office Action mailed on 09/25/2025, applicants’ response and amendments dated 03/24/2026 is acknowledged; in said amendment applicants’ have amended claims 1, 3 and 6-9 and cancelled claim 10. Thus, amended claims 1-9 are pending in this application and is now under consideration for examination. Rejections and/or objections not reiterated from previous office action are hereby withdrawn.
Maintained-Priority
Applicants’ claim for the benefit of priority under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. This application is a 371 of PCT/US2023/016586 filed on 03/28/2023, which claims benefit of Provisional application 63/304,027 filed on 01/28/2022. However, note that the instant claims are given the priority date of 371 of PCT/US2023/016586 filed on 03/28/2023, as the subject-matter of the instant claims are only disclosed in the 371 of PCT/US2023/016586 filed on 03/28/2023.
Applicants’ have traversed the above priority with the following arguments: (see pages 1-3 of Applicants’ REMARKS dated 03/24/2026).
Applicants’ argue: “…Here, the provisional application provides explicit, repeated, and detailed support for each of the core elements of the pending claims. First, the provisional expressly identifies the invention using the same core terminology as the claims, namely a "system and method to create a water-soluble mixture of oligosaccharides for facile conversion to fermentable sugars," as set forth in the title and field of the invention ([0001]). This language directly mirrors the claimed subject matter, including both the intermediate product (water-soluble oligosaccharides) and the intended downstream function (enzymatic conversion to fermentable sugars)…
Sixth, the provisional discloses specific reaction conditions and process parameters, including temperature ranges (50-160°C), pressure ranges (25,000-125,000 psi), catalyst compositions (e.g., kaolin), and particle size ranges, as set forth in the working example ([00028]). These details further confirm that the inventors were in possession of a complete and operable system for achieving the claimed transformation.
Reply: Applicants’ arguments have been fully considered but are not deemed persuasive for the following reasons. Examiner is maintaining the rejection for reasons made of record in the Office-action dated 09/25/2025 and additionally for the following reasons: Provisional application 63/304,027 was filed on 01/28/2022, whereas 371 of PCT/US2023/016586 filed on 03/28/2023, much later than the deadline date of 12 months period.
211.01(a) Claiming the Benefit of a Provisional Application [R-07.2022]
I. IN GENERAL
When a later-filed application is claiming the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the nonprovisional application must be filed not later than 12 months after the date on which the provisional application was filed, unless the benefit of the provisional application has been restored. See 37 CFR 1.78(a)(1) and (b) and subsection II, below. If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or federal holiday within the District of Columbia, the nonprovisional application may be filed on the next succeeding business day. See 35 U.S.C. 21(b), 37 CFR 1.7(b), and MPEP § 201.04 and § 505.
Withdrawn-Claim Rejections: 35 USC § 112(b)
Previous rejection of claims 7-9 rejected under 35 U.S.C. 112(b), is being withdrawn due to claim amendments.
Withdrawn-Claim Rejections: 35 USC § 103
Previous rejection of claims 1-10 are rejected under 35 U.S.C. 103(a) as being unpatentable over Slager et al., (US 10,994,255) and further in view of Rarbach et al., (US 2014/0045227 A1), is being withdrawn due to claim amendments.
Maintained-Double Patenting rejection
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-15 (dated 07/25/2023) of co-pending Application No. 18/226,039 (US 2023/0392218 A1) and in view of Rarbach et al., (US 2014/0045227 A1).
Applicants’ have traversed the above ODP rejection with the following arguments: (see page 4 of Applicants’ REMARKS dated 03/24/2025).
Applicants’ argue: “…Nonstatutory Double-Patenting Applicants respectfully traverse the nonstatutory double patenting rejection over co- pending Application No. 18/226,039. The presently amended claims are patentably distinct. The claims are directed to a system and method emphasizing controlled solid-solid reactions using mechanically induced micro-mixing via independently controlled grinding elements and the formation of a fully water-soluble oligosaccharide mixture prior to enzymatic conversion. These features are not disclosed or claimed in the cited co-pending application, which does not recite the combination of solid-solid mechanochemical processing, controlled micro-mixing via independently operated grinding elements, and the resulting transformation pathway that produces water-soluble oligosaccharides prior to enzymatic conversion.”
Reply: Applicants’ arguments have been fully considered but are not deemed persuasive for the following reasons. Examiner is maintaining the rejection for reasons made of record in the Office-action dated 09/25/2025. The subject-matter and the scope of the instant claims 1-9 overlap with the claims 1-15 (dated 07/25/2023) of co-pending Application No. 18/226,039 (US 2023/0392218 A1) and in view of Rarbach et al., (US 2014/0045227 A1); furthermore, applicants’ arguments are directed at limitations not recited in the claims, examiner maintains the position that identity of terminology is not required and invention using different terminology, provided the technical disclosure is the same.
New-Claim Rejections: 35 USC § 103
Necessitated by claim amendments
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 1-9 are rejected under 35 U.S.C. 103(a) as being unpatentable over Slager et al., (US 10,994,255) and further in view of Liu et al., (ACS Sust. Chem. Eng., 2020, Vol. 8: 2399-2408), Meine JK., (PhD., Thesis, 2012, pages 1-193, Vorgelegt der Fakultät für Chemie und Biochemie der Ruhr-Universität Bochum, Germany) and Rarbach et al., (US 2014/0045227 A1).
Claims 1-9 as interpreted are directed to “a system for generating a water-soluble mixture of oligosaccharides for facile conversion to fermentable sugars, the system comprising: a reaction chamber; a crusher assembly configured to receive a mixture of a cellulose feedstock and a solid acid catalyst, wherein the crusher assembly is configured to grind the mixture under pressure to induce a solid-solid interaction between the cellulosic feedstock and the solid acid catalyst to induce a chemical reaction to produce a grinded reacted mixture, wherein the crusher assembly comprises rollers configured to apply pressure and shear to the cellulose feedstock and the solid acid catalyst; wherein the crusher assembly is configured to induce a mechanochemical reaction comprising depolymerization and repolymerization of cellulose to form the water-soluble mixture of oligosaccharides comprising linear and branched saccharides including alpha-linked oligomers…enzymatically converted to fermentable sugars…”.
Regarding claims 1-9, Slager et al., (US 10,994,255; priority 01/16/2018) discloses a system for generating a water-soluble mixture of oligosaccharides; said reference system is identical to the system claimed in the instant invention (Abstract; Fig. 1-6; Claims; and entire document); said reference system includes device/mill for converting cellulose to sugar comprising a reaction chamber, comprises a crusher for receiving a mixture of cellulose feedstock and solid acid catalyst to optimize sugar production (col. 3, lines 4-67 to col. 4, lines 1-60). Slager et al., provide teaching, suggestion and motivation for the use of reference system to overcome recalcitrance of cellulose and said reference system and reference method is utilized to convert cellulosic materials into sugar that is cost effective and provides the greatest yield of sugar over time (see Background, col. 1, lines 35-67 to col. 2, lines 1-35) and the examiner interprets said reference system of Slager et al., i.e., the crusher assembly is configured to induce a mechanochemical reaction comprising depolymerization and repolymerization of cellulose to form the water-soluble mixture of oligosaccharides comprising linear and branched saccharides including alpha-linked oligomers in the presence of and solid acid catalyst.
The disclosure of Slager et al., as applied to claims 1-9 is described rejection above. However, Slager et al., does not explicitly teach in that “a mechanochemical reaction comprising depolymerization and repolymerization of cellulose to form the water-soluble mixture of oligosaccharides comprising linear and branched saccharides including alpha-linked oligomers” and “for facile conversion to fermentable sugars, …enzymatically converted to fermentable sugars…”.
The following references provide evidence that mechanochemical reaction of cellulose results in depolymerization and repolymerization of cellulose to form the water-soluble mixture of oligosaccharides comprising linear and branched saccharides including alpha-linked oligomers:
Regarding claims 1-9, (i) Liu et al., (ACS Sust. Chem. Eng., 2020, Vol. 8: 2399-2408), teach a mechanocatalytic saccharification process comprising cellulosic feed-stock, solid acid catalyst (P2O5) and combines mix-milling/griding of cellulosic residues resulting in accelerated hydrolysis to glucose and subsequent enzymatic conversion to ethanol/biofuel (see Abstract; Scheme 1, page 2400; Table 1, page 2401; and entire document); said reference discloses fermentability of hydrolysates obtained from said reference method (Fig. 2, page 2404) and said reference method results in balance between depolymerization and repolymerization by mix-milling and solid-acid catalyst (see ¶ 1, page 2406; and Conclusion); and
(ii) Meine JK., (PhD., Thesis, 2012, pages 1-193, Vorgelegt der Fakultät für Chemie und Biochemie der Ruhr-Universität Bochum, Germany) also provide teaching, suggestion and motivation regarding “a mechanochemical reaction comprising depolymerization and repolymerization of cellulose to form the water-soluble mixture of oligosaccharides comprising linear and branched saccharides including alpha-linked oligomers” utilizing solid-acid catalyst and mix-milling/griding of cellulosic residues; see Chapter 5, pages 70-115; ¶ 5.4, page 79-84; ¶ 5.6, pages 91-96 and Fig. 5.23, page 91; Fig. 5.24, page 92, Fig. 5.25, page 93; Table 5.2, page 95 provides evidence for depolymerization of glucose and repolymerization with DP ≥3.
Regarding claims 1-9, “for facile conversion to fermentable sugars, …enzymatically converted to fermentable sugars…”, Rarbach et al., (US 2014/0045227 A1) in Abstract; paragraphs [0001-0007], [0015-0017], [0058], [0136]; and entire document provides Teaching, Suggestion and Motivation for a method of degradation of lignocellulosic mass to generate fermentable sugars and the use of enzymes amylases, cellulases and hemi-cellulases to utilize the generated sugars for fermentation and production of ethanol/biofuel.
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 claimed process of Slager et al., of industrial significance and incorporate the modification to the claimed process in that “for facile conversion to fermentable sugars, …enzymatically converted to fermentable sugars…”, as suggested by Rarbach et al., and to modify the teachings of Slager et al. A person of ordinary skill in the art is motivated to make such change, because “facile conversion to fermentable sugars, …enzymatically converted to fermentable sugars…” and utilization of produced sugars in the production of alcohols/biofuel and a skilled artisan would realize such a modification would be useful to increase the production of alcohols/biofuel and the references of Liu et al., and Meine JK., disclosing a mechanocatalytic saccharification process comprising cellulosic feed-stock, solid acid catalyst (P2O5) and combines mix-milling/griding of cellulosic residues resulting in accelerated hydrolysis to glucose and subsequent enzymatic conversion to ethanol/biofuel and said reference methods results in balance between depolymerization and repolymerization by mix-milling and solid-acid catalyst. One of ordinary skill in the art has a reasonable expectation of success at adding the step i.e., “for facile conversion to fermentable sugars, …enzymatically converted to fermentable sugars…” as suggested in the teachings of Rarbach et al., and 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 Slager et al., Liu et al., and Meine JK., and Rarbach et al., also provide the structural and functional elements of the instant invention (Teaching, Suggestion and Motivation).
Given this extensive teaching in prior art (Slager et al., Liu et al., and Meine JK., and Rarbach et al.,) “a system for generating a water-soluble mixture of oligosaccharides for facile conversion to fermentable sugars, the system comprising: a reaction chamber; a crusher assembly configured to receive a mixture of a cellulose feedstock and a solid acid catalyst, wherein the crusher assembly is configured to grind the mixture under pressure to induce a solid-solid interaction between the cellulosic feedstock and the solid acid catalyst to induce a chemical reaction to produce a grinded reacted mixture, wherein the crusher assembly comprises rollers configured to apply pressure and shear to the cellulose feedstock and the solid acid catalyst; wherein the crusher assembly is configured to induce a mechanochemical reaction comprising depolymerization and repolymerization of cellulose to form the water-soluble mixture of oligosaccharides comprising linear and branched saccharides including alpha-linked oligomers…enzymatically converted to fermentable sugars…” as taught by the instant invention and as claimed in claims 1-9 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 1-9 are rejected under 35 U.S.C. 103(a) as being unpatentable over Slager et al., (US 10,994,255) and further in view of Liu et al., (ACS Sust. Chem. Eng., 2020, Vol. 8: 2399-2408), Meine JK., (PhD., Thesis, 2012, pages 1-193, Vorgelegt der Fakultät für Chemie und Biochemie der Ruhr-Universität Bochum, Germany) and Rarbach et al., (US 2014/0045227 A1).
Applicants’ have traversed the above 35 U.S.C. 103(a) rejection following claim amendments and said arguments are relevant to the new rejection (see pages 4-6 of Applicants’ REMARKS dated 03/24/2026).
Applicants’ argue: “Applicants respectfully traverse the rejection under 35 U.S.C. $103 over Slager et al. in view of Rarbach et al. Applicants note that Slager is commonly owned and generally relates to biomass processing technologies. However, as amended, claim 1 recites a specific mechanochemical system and transformation pathway that is not disclosed or suggested by the cited references, particularly with respect to the role and limitations attributed to Rarbach…”
Reply: Applicants’ arguments have been fully considered but are not deemed persuasive for the following reasons. Examiner notes that Slager et al., (US 10,994,255) has a priority date of 01/16/2018 and examiner has provided new references Liu et al., and Meine JK., disclosing a mechanocatalytic saccharification process comprising cellulosic feed-stock, solid acid catalyst (P2O5) and combines mix-milling/griding of cellulosic residues resulting in accelerated hydrolysis to glucose and subsequent enzymatic conversion to ethanol/biofuel and said reference methods results in balance between depolymerization and repolymerization by mix-milling and solid-acid catalyst.
Therefore, examiner continues to take the position that each and every element of the instant invention is taught in the combination of cited references and that the combined teachings in the cited prior art provides a reasonable expectation of success and predictability for the claimed method herein and the claimed benefits are very much expected and predictable.
The Supreme Court has acknowledged: When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation...103 likely bars its patentability...if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person's skill. A court must ask whether the improvement is more than the predictable use of prior-art elements according to their established functions ...... the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results (see KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 U.S. 2007) (emphasis added).
Examiner continues to hold the position that the cited references render claims 1-9 prima facie obvious to one of ordinary skill in the art when one applies the Teaching, Suggestion and Motivation (TSM) test under the rationale for arriving at a conclusion of obviousness as suggested by the KSR ruling. The rationale applied for this rejection is as follows:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try”–choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
The combined teachings in the cited prior art provides a reasonable expectation of success and predictability for the claimed invention. In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Summary of Pending Issues
The following is a summary of issues pending in the instant application
Instant claims are given the priority date of 371 of PCT/US2023/016586 filed on 03/28/2023, as the subject-matter of the instant claims are only disclosed in the 371 of PCT/US2023/016586 filed on 03/28/2023.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-15 (dated 07/25/2023) of co-pending Application No. 18/226,039 (US 2023/0392218 A1) and in view of Rarbach et al., (US 2014/0045227 A1).
Claims 1-9 are rejected under 35 U.S.C. 103(a) as being unpatentable over Slager et al., (US 10,994,255) and further in view of Liu et al., (ACS Sust. Chem. Eng., 2020, Vol. 8: 2399-2408), Meine JK., (PhD., Thesis, 2012, pages 1-193, Vorgelegt der Fakultät für Chemie und Biochemie der Ruhr-Universität Bochum, Germany) and Rarbach et al., (US 2014/0045227 A1).
Conclusion
None of the claims are allowable. Claims 1-9 are rejected for the reasons identified in the Rejections and Summary sections of this Office Action. Applicants’ must respond to the rejections in each of the sections in this Office Action to be fully responsive for prosecution.
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 extension fee 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.
Regarding filing an After Final amendment, Applicants are directed to MPEP 714.13, which states:
II. ENTRY NOT A MATTER OF RIGHT
It should be kept in mind that applicant cannot, as a matter of right, amend any finally rejected claims, add new claims after a final rejection (see 37 CFR 1.116) or reinstate previously canceled claims. Except where an amendment merely cancels claims, adopts examiner suggestions, removes issues for appeal, or in some other way requires ONLY A CURSORY REVIEW by the examiner (e.g., typographical errors), compliance with the requirement of a showing under 37 CFR 1.116(b)(3) is expected in all amendments after final rejection. An affidavit or other evidence filed after a final rejection, but before or on the same date of filing an appeal, may be entered upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e). See 37 CFR 41.33 and MPEP § 1206 for information on affidavit or other evidence filed after appeal. (Examiner's emphasis) If more than a cursory review is required, Applicants are referred to CFR §1.114.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GANAPATHIRAMA RAGHU whose telephone number is (571)272-4533. The examiner can normally be reached on M-F 8:30am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Mondesi can be reached on 408-918-7584. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GANAPATHIRAMA RAGHU/ Primary Examiner, Art Unit 1652
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