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 .
DETAILED ACTION
Claims 1-20 are pending in the application. Claims 1-20 are rejected.
Response to Amendment / Argument
The rejection of claims under 35 USC 112(b) has been withdrawn in view of Applicant’s amendment.
Applicant’s amendments have necessitated changes to the rejection under 35 USC 103; however, Applicant’s remarks will be addressed as they relate to the rejection below. Applicant asserts on page 7 of the response that the references do not suggest “5 wt% or less having the particle size of 75 microns or less, and an average aspect ratio of 0.5 or more”. Applicant refers individual teachings of the prior art and, regarding Ammala, states that it “relates to method of calculation and describes the general proposition that excessive grinding increases energy consumption.” Ammala, however, provides a motivation to avoid generating samples with small particle size and the rejection addresses using a particular screening method that would remove small particles.
On pages 7 and 8 of the response, Applicant discusses the average aspect ratio and states “Ammala is cited as teaching a method of calculating average aspect ratios, and Gil is cited as providing a definition of aspect ratio.” Applicant then generally makes an allegation of hindsight bias and states that the claimed limitations were particularly chosen by Applicant. Regarding particle size, this issue has been addressed above in that the prior art provides a clear reason to avoid small particle size. Regarding aspect ratio, Applicant does not challenge the method of calculating or the definition found in the cited references. Gil particularly states “AR equals one for circles and squares, and it is greater than one otherwise, the more elongated the greater.” There is no definition in the instant application to contradict this definition or provide some alternative method of calculating an aspect ratio that would be less than one.
On page 8 of the response, Applicant addresses the teachings of Fan relative to claim 2. Applicant asserts that Fan “does not teach or suggest blanketing in a collection vessel prior to reactor transfer.” As discussed in the rejection, the term “collection” does not impart any particular active step.
On page 8 of the response, Applicant discusses claim 10 and 18 relative to Fan and asserts that “Fan’s disclosure is merely a generic description of known reaction pathways in furfural production and does not disclose or suggest performing such steps in the context of Applicant’s claimed process.” The reference, however, teaches that both steps occur including in the approach taken by Applicant.
On page 9 of the response, Applicant discusses claim 11 and 19 and asserts an alleged lack of “reasoned basis to modify Wang to include multiple reactors arranged as claimed.” First, there are no limitations to reactors “arranged as claimed” since the claims only require two or more reactors. Furthermore, the rejection addresses the motivation of increasing overall production.
On page 9 of the response, Applicant refers to claim 20 and asserts that the rejection is proper under 35 USC 112(d) and that the “Office Action does not identify any reference disclosing or suggesting such derivatives in the context of the cited process, nor does it establish that they would inherently result.” Parent claim 1, however, recites the production of “furfural, or derivatives of furfural, or both”. Limiting the scope of “derivatives” does not negate the fact that claim 1 recites furfural in the alternative. If claim 20 were converted to independent form, it would encompass, a process for producing “furfural, or furfural derivatives comprising…” the list of claim 20, i.e. claim 20 still embraces producing only furfural.
For these reasons, Applicant’s arguments are not found persuasive regarding the rejection below.
Claim Objections
In claims 1 and 12, the word “a” should be added before “collection vessel”.
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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. Renewable Energy 2019, 144, 139-146 in view of Mueller Steam Specialty, Screen and Basket Facts, 2019 and in further view of WO 2013/013318 A1 by Dottori et al. and in further view of CN 114315769 A by Fan et al. (where a machine translation is appended to the reference and will be referred to herein) and in further view of U.S. Patent PGPub No. 2011/0144359 A1 by Heide et al. and in further view of Ämmälä et al. Industrial Crops & Products 2018, 122, 384-391 and in further view of Gil et al. Fuel 2014, 116, 328-340.
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
Wang et al. teach the following general method of converting corncob (a biomass feed) to furfural (abstract):
The present work investigated corncob conversion in a diluted sulfuric acid-toluene biphasic system with extremely low water/solid ratios (<1). It was found that a high furfural yield (65.67 mol%) was achieved in a very short time (10 min) under a high solid loading of 200% (in the aqueous phase) under the conditions of 1.5 MPa N2, 0.5:1 water/solid ratio (v/w), 10:1 toluene/solid ratio (v/m), and 3.85 wt% H2SO4 (in the aqueous phase). After the reaction, no aqueous phase existed, and furfural was completely accumulated in the toluene phase. Further research showed that the majority of the furfural content (84.73%, GC-MS detection) was in the toluene phase, which is beneficial for its recovery.
Regarding the starting material, Wang et al. teach the following on page 140 (Section 2.1):
Corn cob was collected from Shandong Province in China. After the corn cob was machine-milled and screened to a size between 40- and 60-mesh and dried overnight in an oven at 45 °C, the particles were stored at room temperature in a desiccator. […]
Mueller reports that 40-mesh has openings of 0.4 mm and that 60-mesh has openings of 0.25 mm corresponding to particle sizes within the range of claim 1. Wang et al. further teach on page 140 (Section 2.2):
All reactions were conducted in a 100-mL Hastelloy autoclave reactor (Anhui Kemi Machinery Technology Co., Ltd., Anhui, China; Haster) equipped with a double helical ribbon and screw impeller. […]
Accordingly, the prior art teaches reacting a biomass feed in a reactor in the presence of a solvent and an acid catalyst (sulfuric acid, a mineral acid embraced by instant claims 8 and 16) to form a product mixture comprising furfural wherein the solvent comprises water and a water immiscible solvent (toluene, recited in claims 9 and 17). Regarding “separating the furfural … from the reaction product mixture” of instant claims 1 and 12, Wang et al. teach on page 144:
[…] Further, distillation can be used to recover the furfural from the toluene phase [12,26]. […]
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
Wang et al. do not characterize the starting biomass, i.e. whether the prior art has a moisture content of 25 wt% or less. Wang et al. further do not teach the instantly claimed steps of grinding or blanketing as recited in claims 1 and 12. Additional limitations of dependent claims are addressed below.
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2141.02)
Regarding the limitation of instant claims 1 and 12 of “providing a biomass feed having a moisture content of 25 wt% or less;” or “providing a biomass feed having a moisture content of 5 to 15 wt%;” Wang et al. do not teach the initial moisture content of the corn cob; however, Dottori et al. teaches the following on page 6:
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Accordingly, a person having ordinary skill in the art would expect that corn cobs obtained from various sources would overlap with the instantly claimed moisture content percentages of instant claims 1, 3 and 12. At least drying in the field would correspond to the limitations of claims 4, 5 and 13. Furthermore, since Wang et al. teach a low water to solids ratio, a person having ordinary skill in the art would have been motivated to use sources having lower moisture contents.
Regarding the steps of “grinding” and “blanketing” in claims 1 and 12, Fan et al. teach (paragraph [n0001]) “a method and apparatus for pretreatment of corn cob raw materials for furfural production.” Fan et al. note that the presence of oxygen is detrimental in the production of furfural as follows (paragraph [n0006]):
Corn cobs have many pores and are rich in oxygen. During the acid-catalyzed hydrolysis of furfural, oxygen participates in the reaction and produces a large number of byproducts, mainly organic acids such as acetic acid. These byproducts not only reduce the yield of furfural, but are also major components of "three wastes" (waste gas, wastewater, and solid waste), which have adverse effects on the environment.
Fan et al. teach the following steps in paragraphs [n0010]-[n0012]:
[n0010]
The crushing step involves crushing the corn cobs and taking the corn cob fragments that have passed through a 40-mesh sieve.
[n0011]
The drying step involves placing the corn cob fragments in a drying room at 115-120 degrees Celsius and drying them for 3-5 hours.
[n0012]
The deoxygenation step involves baking the dried corn cob fragments in an oxygen-free environment for 30-60 minutes, followed by cooling in an oxygen-free environment.
As noted above 40-mesh sieves have openings of 0.4 mm corresponding to particle sizes embraced by the range 0.02 mm to 10 mm. Fan et al. further teach in paragraph [n0014] that the deoxygenation step is preferably carried out in “a nitrogen-filled environment for baking,” corresponding to the step of blanketing with an inert gas. Fan et al. do not specifically address “resulting in an oxidant or oxygen content of 3 mol% or less.” This limitation has been interpreted within the scope of the instant claims to define the mol% of O2 rather than, for instance, all oxygen atoms within the biomass. At least since Fan et al. teach the undesirability of oxygen and generating an “oxygen-free environment,” a person having ordinary skill in the art would have been motivated to minimize the presence of free oxygen. MPEP 2144.05(II)(A) states: ‘"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)’. The same rationale applies to claims 7 and 15.
Fan et al. teach the step of “crushing” the biomass to obtain particles. Since the instant claims are open-ended and do not exclude a variety of physical transformations, the step of “crushing” corresponds to the instant step “grinding” since it would involve pressing and causing the material to move between surfaces. Even if this were not the case, a person having ordinary skill in the art would have been familiar with methods that can be used to reduce particle sizes. Heide et al. teach the following on page 2:
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At least in the interest of determining which known methods of reducing particle size would result in optimum removal of oxygen during the steps of Fan et al., a person having ordinary skill in the art would have been motivated to test known methods including crushing and grinding. Regarding the limitation of “5 wt% or less having the particle size of 75 microns or less,” Ämmälä et al. teach on page 384: “A fine size with a partially deconstructed cell wall and high specific surface are advantageous, e.g., in the conversion of biomass into fuels and chemicals […]. Extensive grinding, however, causes high electric energy consumption because grinding energy increases rapidly with reducing particle size.” Accordingly, a person having ordinary skill in the art would have been motivated to only reduce particle size using minimum grinding and avoid generating significantly smaller particles than necessary. Furthermore, a person having ordinary skill in seeking to compare the modified procedure directly to the results of Wang et al. would have been motivated to use an analogous method where the particles are “screened to a size between 40- and 60-mesh” that would remove particles than 0.4 mm. The same rationale applies to instant claims 6 and 14.
Regarding the limitation of “average aspect ratio,” the instant specification does not define how aspect ratio should be calculated in order to obtain values less than 1. Ämmälä et al. teach a method of calculating average aspect ratios on page 385:
The aspect ratios were calculated from optical images obtained with a CCD camera from the tube flow of the diluted powder samples. Images were recorded in a cuvette having a rectangular cross section. The average aspect ratio of a sample was calculated by dividing the average length of the particles by the average width of the particles. […]
Similarly, Gil et al. teach on page 331:
Aspect Ratio (AR): is defined as the ratio between length and width of the particle. AR equals one for circles and squares, and it is greater than one otherwise, the more elongated the greater.
Accordingly, a person having ordinary skill in the art would expect to obtain an average aspect ratio embraced by the instant claims when determined by known methods.
Regarding instant claim 2, Fan et al. teach the use of deoxygenated baking equipment in paragraph [n0022] where the limitation of “collection” with respect to “vessel” is not considered to impart any structural features to any otherwise generic “vessel”. The same rationale applies to the term as recited in amended claims 1 and 12. Furthermore, Fan et al. teach in paragraph [n0048] that a mixture output can be further used for the preparation of furfural corresponding to transferring the material into a reactor of Wang et al.
Regarding instant claims 10 and 18, Fan et al. teach in paragraph [n0003] that hydrolysis and dehydration occur in both one and two-step furfural production methods using biomass.
Regarding instant claims 11 and 19, Wang et al. only explicitly refer to a singular reactor; however, the authors teach on page 139 that furfural has a variety of commercial applications. In the interest of developing a commercially viable production system, a person having ordinary skill in the art would have been motivated to employ multiple reactors to, for instance, allow for multiple batch processes to increase overall production.
Regarding instant claim 20, this claim only defines the derivatives rather than the requiring the production thereof.
Conclusion
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 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.
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/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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