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 10/23/2025, applicants’ response and amendments dated 03/20/2026 is acknowledged; in said amendment applicants’ have amended claims 1-2, 5, 7, 9, 17 and 31 and cancelled claims 4, 23 and 25. Thus, amended claims 1-2, 5, 7, 9, 13, 16-17, 20 and 26-33 are pending in this application; elected Group I, encompassing claims 1-2, 5, 7, 9, 13, 16-17, 20 and 26-31 and as species Cellobionic acid (claim 2) is now under consideration for examination; and claims 32-33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. and is now under consideration for examination. Rejections and/or objections not reiterated from previous office action are hereby withdrawn.
Withdrawn-Claim Rejections: 35 USC § 112(b)
Previous rejection of claim 1 and claims 2, 4-5, 7, 9, 13, 16-17, 20, 23 and 25-31 depending therefrom rejected under 35 U.S.C. 112(b), is being withdrawn due to claim amendments.
Withdrawn-Claim Rejections: 35 USC § 112(a)
Previous rejection of claims 1-2, 4-5, 7, 9, 13, 16-17, 20, 23 and 25-31 rejected under 35 U.S.C. 112(a) for written-description and enablement, is being withdrawn due to claim amendments.
Withdrawn-Claim Rejections: 35 USC § 102 (AIA )
Previous rejection of claims 1-2, 4-5, 7, 9, 13, 16-17 and 27-31 rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Han et al., (Biores. Technol., 2020, Vol. 307, 123200, pages 1-7), is being withdrawn due to claim amendments.
Withdrawn-Claim Rejections: 35 USC § 103
Previous rejection of claims 1-2, 4-5, 7, 9, 13, 16-17, 20, 23 and 25-31 rejected under 35 U.S.C. 103(a) as being unpatentable over Han et al., (Biores. Technol., 2020, Vol. 307, 123200, pages 1-7) as applied to claims 1-2, 4-5, 7, 9, 13, 16-17 and 27-31 (see 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) rejection above) and further in view of Gu et al., (Appl Biochem. Biotechnol., 2022, Vol. 194: 2919-2930, published online 03/17/2022), Fan et al., (US 10,358,668) and Datta et al., (Ind. Eng. Chem. Res., 2013, Vol. 52: 13777-13784), is being withdrawn due to claim amendments.
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) 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.
Claims 1-2, 5, 7, 9, 13, 16-17, 20 and 26-31 are rejected under 35 U.S.C. 103(a) as being unpatentable over Gladden et al., (US 10,934,568 B2) and further in view of Han et al., (Biores. Technol., 2020, Vol. 307, 123200, pages 1-7), Gu et al., (Appl Biochem. Biotechnol., 2022, Vol. 194: 2919-2930, published online 03/17/2022), Fan et al., (US 10,358,668) and Datta et al., (Ind. Eng. Chem. Res., 2013, Vol. 52: 13777-13784).
Regarding claims 1-2, 5, 7, 9, 13, 16-17and 27-31, Gladden et al., (US 10,934,568 B2) disclose and provide teaching, suggestion and motivation for method for producing a fuel or a commodity chemical from a cellulosic biomass, the method comprising: (a) pretreating a composition comprising the cellulosic biomass with a sugar acid, thereby producing a pretreated composition; (b) fermenting at least some of the pretreated composition in a first fermentation process, thereby producing a first fermented composition, wherein the first fermented composition comprises the sugar acid; and (c) separating the first fermented composition into a first fraction and a second fraction, wherein the first fraction comprises at least some of the sugar acid and the second fraction comprises at least some of the sugar acid; wherein at least some of the sugar acid present in the first fraction separated in step (c) is used in subsequent cellulosic biomass pretreatment; and (d) fermenting the second fraction isolated in step (c) in a second fermentation process, thereby producing the fuel or commodity chemical; wherein the sugar acid is present at a concentration of up to 99% by volume during the pretreatment in step (a); wherein the sugar acid comprises an oligosaccharide aldonic acid, a disaccharide aldonic acid, a monosaccharide aldonic acid, a heteropolysaccharide aldonic acid, or a combination thereof; or wherein the sugar acid is selected from the group consisting of cellobionic acid (CBA), gluconic acid (GA), glucuronic acid, xylonic acid, glucaric acid, and a combination thereof wherein the pretreatment in step (a) is performed at a temperature of about 0 °C to about 220 °C; or wherein the pretreatment in step (a) is performed at a pressure of about 0 bar to about 500 bar; or wherein the pretreatment in step (a) is performed in batch, semi-batch, or continuous mode; wherein the composition is pretreated in step (a) for about 1 minute to about 2 days.
Gladden et al., (US 10,934,568 B2) disclose methods for preparing sugar compositions. The methods include: i) forming a mixture including polysaccharide biomass and an ionic liquid solution, wherein the ionic liquid solution contains water and an ionic liquid, and the ionic liquid contains a) a cation and b) a sugar acid anion or a ketoacid anion; ii) maintaining the mixture under conditions sufficient to dissolve at least a portion of the polysaccharide present in the polysaccharide biomass; iii) adding at least one glycoside hydrolase to the mixture; and iv) maintaining the mixture containing the glycoside hydrolase under conditions sufficient to hydrolyze at least a portion of the dissolved polysaccharide, thereby forming the sugar compositions. The sugar compositions contain at least one monosaccharide or oligosaccharide (see Abstract; and entire document);
wherein the sugar acid is selected from the group consisting of an aldaric acid, an aldonic acid, a uronic acid (col. 2, lines 38-41); wherein step ii) comprises maintaining the mixture of step i) at a temperature of at least about 100°C. for at least about 30 minute (col. 4, lines 14-18); the ionic liquid solutions used in the methods of the invention contain from about 0.1% water (99.9% solids including sugar acid; col. 12, lines 48-50); and Gladden et al., suggest amounts of water and ionic liquid can be used in the methods of the invention, depending in part on factors such as the type of biomass material to be treated and the particular cations and anions to be included in the ionic liquid (col. 13, lines 27-31).
Gladden et al., teach pretreatment mixture can contain about 1, 5, 10, 15, 20, 25, 30, 35, 40, 45, or 50% biomass by weight of the pretreatment mixture (col. 13, lines 62-63); and pretreatment temperatures “Pretreatment can be conducted for about 1, 1.5, 2, 2.5, 3, 3.5, 4, 4.5, 5, 5.5, 6, 9, 12, 15, 18, 21, 24, 36, 48, 60, or about 72 hours. Pretreatment is generally conducted at a temperature ranging from about 20° C. to about 200° C. Pretreatment can be conducted, for example, at a temperature ranging from about 20° C. to about 100° C., or from about 40° C. to about 80° C., or from about 100° C. to about 200° C., or from about 120 CC to about 180° C., or from about 140° C. to about 160° C., or from about 40° C. to about 180° C., or from about 60° C. to about 160° C., or from about 80° C. to about 140° C. or from about 100 to about 120° C. Pretreatment can be conducted at about 25, 30, 35, 40, 45, 50, 55, 60, 65, 70, 75, 80, 85, 90, 95, 100, 105, 110, 115, 120, 125, 130, 135, 140, 145, 150, 155, 160, 165, 170, 175, 180, 185, 190, 195, or about 200° C (col. 14, lines 8-25);
Pretreatment pressure “Pretreatment can be conducted at atmospheric pressure or elevated pressures. Pretreatment can be conducted, for example, at a pressure (Pg) ranging from about 14 psi to about 4000 psi, or from about 14 psi to about 3500 psi, or from about 14 psi to about 2500 psi, or from about 14 psi to about 1500 psi in certain embodiments, the pretreatment is conducted at around atmospheric pressure (i.e. 14.696 psi) (col. 14, lines 26-32);
Gladden et al., teach “methods of the invention provide sugar compositions containing one or monosaccharides and/or oligosaccharides. Monosaccharides present in the sugar compositions can include, but are not limited to, fucose, arabinose, rhamnose, galactose, mannose, xylose, glucose, glucuronic acid, and galacturonic acid. The oligosaccharides in the sugar compositions contain monosaccharide subunits (e.g., fucose, arabinose, rhamnose, galactose, mannose, xylose, glucose, glucuronic acid, and galacturonic acid) linked together via glycosidic bonds. Sugar compositions obtained using the methods of the invention can be used as carbon sources for host cells to produce useful organic compounds such as biofuels. The sugar compositions can be used for the production of fermentation products (e.g., ethanol, tartaric acid, itaconic acid, succinic acid, propanediol, butanol, glycerol, and the like)” (col. 17, lines 34-40).
Gladden et al., teach recycling of sugar acids “The methods of the invention allow for simple recycling of the ionic liquid from one form to another for re-use. This is particularly true for embodiments wherein the same acid (e.g., mucic acid) is used in the pretreatment step and the pH reduction step… after extraction, the IL-phase can be recycled to pretreat another batch of biomass” (col. 17, lines 43-53).
However, Gladden et al., are silent regarding wherein the first fermentation process in step (b) comprises an aerobic fermentation process (as in claim 20); and wherein the separation performed in step (c) comprises using electrodeionization (EDI; as in claim 26).
Regarding claims 1-2, 5, 7, 9, 13, 16-17and 27-31 the following references also provide teaching, suggestion and motivation for the use of sugar-acids in the pretreatment process:
(i) Han et al., (Biores. Technol., 2020, Vol. 307, 123200, pages 1-7) disclose an integrated biorefinery process for the production of xylooligosaccharides (XOS) and glucose from corncob (cellulosic biomass) utilizing gluconic acid (aldonic acid) as a pretreatment agent, separation of solid-liquid fraction and enzymatic hydrolysis/fermentation (Abstract; Fig. 4, reproduced below; and entire document) and further downstream process to utilize xylooligosaccharides (XOS) and glucose to produce ethanol and glucose-based products (col. 1, ¶ 2, page 2); optimization of pretreatment process (Table 1, page 2) and Enzymatic hydrolysis and yield of furfural, xylose potential inhibitors of enzymes, and efficient production of XOS (Fig. 1-3, pages 3-5; and entire document).
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Similarly, (ii) Gu et al., (Appl Biochem. Biotechnol., 2022, Vol. 194: 2919-2930, published online 03/17/2022) also provide teaching, suggestion and motivation to a skilled artisan for the optimization of the process in the production of xylooligosaccharides (XOS) from corncob (cellulosic biomass) utilizing gluconic acid (aldonic acid) as a pretreatment agent; gluconic acid and optimization of pretreatment process for the production of xylooligosaccharides (XOS) and effectively control the by-product yields of xylose and furfural/inhibitor (see Abstract; Table 1, page 2921; Fig. 1-4, pages 2924-2927; Conclusions & entire document).
Regarding claim 20 and the elected species cellobionic acid (CBA) of claim 2, the following reference, Fan et al., (US 10,358,668) disclosure relates to biological platforms for the conversion of cellulosic biomass into fuels and chemicals; more specifically, the disclosure relates to the conversion of cellulosic materials into sugar acids or their salts, which may then be used to produce commodity chemicals (Abstract; and entire document); the conventional steps used in the production of gluconic acid and isobutanol from cellulosic biomass, which involves the production of cellulase and a step of aerobic fermentation (Fig. 1A); but is instead based on the direct enzymatic hydrolysis of cellulose to produce sugar acids, such as cellobionic acid (see also FIG. 2), and subsequent downstream products; said fermentation process is a an aerobic fermentation process (col. 18, lines 12-22).
Regarding claim 26, the following reference teaches wherein the separation performed in step (c) comprises using electrodeionization (EDI) of the instant invention: Datta et al., (Ind. Eng. Chem. Res., 2013, Vol. 52: 13777-13784) disclose a method for removal of acidic impurities from corn stover hydrolysate liquor by resin wafer electrodeionization (EDI) of the instant invention; in said process the sugar retention was greater than 98% and leading to an economically viable cellulosic biofuel and biobased chemical production process (see Abstract; Fig. 1, page 13778; Fig. 5, page 13781; Conclusions, page 13783; and entire document).
As such, disclosure of strategy and methods “comprises an aerobic fermentation process” and production of sugar-acid cellobionic acid (CBA) (as in claims 2 and 20); and “wherein the separation performed in step (c) comprises using electrodeionization” (EDI; as in claim 26), such as that of references of Fan et al., and Datta et al., teaching the advantages of said modifications, clearly suggests to a skilled artisan to modify the teachings of Gladden et al., Han et al., and Gu et al., and incorporate the structural and functional elements of Fan et al., and Datta et al., in the claimed method of use for the production of biofuel, ethanol from cellulosic biomass and as claimed in the instant invention. One of ordinary skill in the art would have a reasonable expectation of success, since the production of gluconic acid and isobutanol from cellulosic biomass, which involves the production of cellulase and a step of aerobic fermentation and separation performed using electrodeionization (EDI) and a method of production of biofuel, ethanol from cellulosic biomass are well known in the art.
Therefore, claims 1-2, 5, 7, 9, 13, 16-17, 20 and 26-31 are rejected under 35 U.S.C. 103(a) as being unpatentable over Gladden et al., (US 10,934,568 B2) and further in view of Han et al., (Biores. Technol., 2020, Vol. 307, 123200, pages 1-7), Gu et al., (Appl Biochem. Biotechnol., 2022, Vol. 194: 2919-2930, published online 03/17/2022), Fan et al., (US 10,358,668) and Datta et al., (Ind. Eng. Chem. Res., 2013, Vol. 52: 13777-13784).
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 10-11 of Applicants’ REMARKS dated 03/20/2026).
Applicants’ argue: “…Without conceding the propriety of the rejection, and in an earnest effort to expedite prosecution, claim 1 has been amended to require that at least some of the sugar acid present in the first fraction separated in step (c) is used in subsequent cellulosic biomass pretreatment”.
Reply: Applicants’ arguments have been fully considered but are not deemed persuasive for the following reasons. The reference of Gladden et al., (US 10,934,568 B2) teach recycling of sugar acids “The methods of the invention allow for simple recycling of the ionic liquid from one form to another for re-use. This is particularly true for embodiments wherein the same acid (e.g., mucic acid) is used in the pretreatment step and the pH reduction step… after extraction, the IL-phase can be recycled to pretreat another batch of biomass” (col. 17, lines 43-53). Examiner also holds the position Fan et al., (US 10,358,668) also teach two fermentation conditions wherein in the first fermentation sugar-acids such as cellobionic acid (CBA) is produced and a second fermentation aerobic fermentation gluconic acid is produced (see Fig. 1) and the use of engineered host cells that can utilize sugar-acids to produce biofuels (Fig. 3-24).
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 1-2, 5, 7, 9, 13, 16-17, 20 and 26-31 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
Claims 1-2, 5, 7, 9, 13, 16-17, 20 and 26-31 are rejected under 35 U.S.C. 103(a) as being unpatentable over Gladden et al., (US 10,934,568 B2) and further in view of Han et al., (Biores. Technol., 2020, Vol. 307, 123200, pages 1-7), Gu et al., (Appl Biochem. Biotechnol., 2022, Vol. 194: 2919-2930, published online 03/17/2022), Fan et al., (US 10,358,668) and Datta et al., (Ind. Eng. Chem. Res., 2013, Vol. 52: 13777-13784).
Claims 32-33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions
Conclusion
None of the claims are allowable. Claims 1-2, 5, 7, 9, 13, 16-17, 20 and 26-31 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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