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 .
The amendments filed 7/7/26 overcome some of the rejections set forth under 35 USC 112(b) in the office action mailed 3/9/26. The amendments do not overcome the rejections set forth under 35 USC 103, or all of the grounds of rejection under 35 USC 112(b). New grounds of rejection under 35 USC 102, 103, and 112, necessitated by the amendments, are set forth below. Newly added claims 14-15 are also rejected below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 15 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Newly added claim 15 requires that the functionalized aggregates of claim 2 comprise organic and inorganic components selected from specific groups. However, the application as originally filed does not provide support for the specific organic and inorganic components recited in claim 15.
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 1-4 and 15 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.
The term “functional lignocellulose catalytic particle (FLCP)” is indefinite. The term is not generally used in the art, and while the specification refers to FLCP on numerous occasions, and makes broad statements about FLCP (“FLCPs can take multiple form factors, including solid, liquid, gel”, paragraph 59), but never clearly defines the term. It is unclear, for example, whether “functional” is meant to indicate that the lignocellulose material is functionalized, in the standard sense of having a functional group introduced, or whether it simply means that the lignocellulosic catalytic particle has a function of some sort.
Newly added claim 15 does not use proper Markush language. “selected from” should be “selected from the group consisting of” and “or” should be replaced by “and” before the final member of the groups, in order to clearly define the members of the groups from which the organic and inorganic components are selected from.
Additionally, the limitation “introduced functional groups (carboxyl, sulfonate, amine, etc.)” in claim 15 is indefinite since it is unclear whether the specific groups recited within the parentheses are claim limitations, and it is unclear which additional group are covered by “etc.” Also, the functional groups recited inside the parentheses do not contain C-C or C-H bonds and would not generally be considered as organic components by themselves.
Claim Rejections - 35 USC § 102
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kastner (U.S. PG Pub. No. 2010/0312008).
In paragraph 99 and the example that follows, Kastner discloses the development of carbon-supported porous acid catalysts using biochar generated from lignocellulosics. In paragraph 105 Kastner discloses that the porous carbon support is functionalized with an -SO3H group, and in paragraph 54 discloses acidic functional groups more broadly. The catalysts of Kastner, containing a functional group and a porous support derived from lignocellulosic material, therefore meets the limitations of the functional lignocellulose catalytic particle of claim 1. Additionally, since the catalysts of Kastner comprise both organic matter (the biochar) and inorganic matter (the acid groups), they meet the limitations of the functionalized aggregate materials of claims 2-4 which can catalyze a reaction, and .
Claims 1-4 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Malyala (U.S. PG Pub. No. 2017/0197192).
In paragraph 6 Malyala discloses a method for producing biochar aggregate particles. In paragraph 90 Malyala discloses that the biochar can be prepared from various lignocellulosic sources. In paragraphs 88, 95-104, 170-175, and throughout the disclosure and figures, Malyala discloses that the biochar is porous. In paragraph 7 Malyala discloses that the biochar aggregate particles can contain a mixture of biochar with binders, fillers, and various other additives. In paragraphs 197, 210-213, and 346-350 Malyala indicates that the binders and additives can be both organic and inorganic compounds, and the aggregate materials of Malyala can therefore be aggregates of organic and inorganic materials as recited in claims 2-4. In paragraph 212 Malyala discloses that the additives can include various fertilizers which are nutrient salts as recited for the inorganic component of claim 15, and in paragraph 346 Malyala discloses that the binder can be clay, also as recited for the inorganic component of claim 15. In paragraph 346 Malyala also discloses that the binder can be a lignin, meeting the limitations of the organic component of claim 15. In paragraph 315 Malyala discloses that the biochar can be inoculated with microbes, also forming an aggregate. In paragraph 398 Malyala discloses that the biochar can absorb ammonia, meeting the limitations of claims 3-4 regarding sorbing a fluid component.
While Malyala does not specifically disclose that the biochar aggregate particles are “catalytic”, since they meet the compositional limitations of the claims and contain a porous structure derived from a lignocellulosic material, they will be capable of acting as a catalytic particle. Claims 1-4 and 15 are therefore anticipated by Malyala.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mikova (RU 2393111 C1).
An English-language machine translation of Mikova, which is attached, has been used in setting forth this rejection, and the pages and paragraphs referred to herein are those of the translation.
In the first paragraph of the “Description” section on the first page of the reference, Mikova discloses the production of porous carbon materials from lignocellulosic raw materials, which can be used as sorbents for gases as well as for catalysis tasks. In the second-to-last paragraph of the sixth page of the reference, Mikova further teaches that the materials are useful for the preparation of catalysts and as adsorbents with a wide spectrum of action. The porous carbon materials of Mikova therefore meet the limitations of the claimed functional lignocellulose catalytic particles of claim 1, since they are lignocellulose-derived particles having a porous structure, and are useful in catalysis and as sorbents for fluid components such as gases.
Claim Rejections - 35 USC § 103
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.
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.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Malyala.
The discussion of Malyala in paragraph 8 above is incorporated here by reference. Malyala discloses a particle meeting the limitations of claim 1, and indicates, for example in paragraphs 6 and 10, that the particle is useful as a soil amendment, as recited in newly added claim 14. Malyala does not specifically disclose that the particles are micro-particles.
In paragraphs 93-94 and Table 1, Malyala disclose that the biochar particles have a particle size ranging from about 3/4 mesh to about 60/70 mesh (about 210 to about 6730 microns), or about 4/5 mesh to about 30/35 mesh (about 500 to about 4760 microns), overlapping the “micro-particle” range of 1 to 1000 microns. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” Claim 14 is therefore rendered obvious by Malyala.
Response to Arguments
Applicant's arguments filed 7/7/26 have been fully considered but they are not persuasive. Regarding the rejections set forth under 35 USC 112(b) in the office action mailed 3/9/26, applicant argues that the claims have been amended to clarify the language. However, the term functional lignocellulose catalytic particle (FLCP) is still indefinite for the reasons stated in the rejection. The only structure recited in the claim is a porous structure derived from a lignocellulose as a substrate; it is whether “functional” is meant to indicate that the lignocellulose material is functionalized, in the standard sense of having a functional group introduced, or whether it simply means that the lignocellulosic catalytic particle has a function of some sort.
Regarding the rejections set forth under 35 USC 102, applicant argues that the cited references do not disclose the “retention of lignocellulose character” in the support. However, the amended claims require that the porous structure be derived from lignocellulose; there is no indication that the porous structure must retain “lignocellulose character”. As discussed in the rejections, the porous supports disclosed in the cited references are derived from lignocellulosic materials. Applicant additionally alleges that the Kastner and Malyala references (the Miklova reference has only been applied to claim 1) do not contain functionalized aggregates of organic and inorganic materials, which relates to claim 2, but does not specifically address the discussion in the rejections of how Kastner and Malayala contain these aggregates, and the examiner therefore maintains the positions taken in the rejection. Applicant also asserts that Kastner and Malyala do not disclose a structure configured for both catalysis and sorption (“the recited dual functions” in applicant’s discussion of Malyala), but the claims recite that the functional lignocellulose is configured to catalyze a reaction or sorb a fluid component. As discussed in the rejections, Kastner discloses particles useful as a catalyst and Malyala discloses particles useful as a sorbent. Kastner also indicates in paragraph 69 that the biochar exhibits increased ammonia adsorption. Even if the claims required the particle to be configured for both catalysis and sorption, applicant has not explained why the particles of Kastner and Malyala would not qualify as being configured for both, since they meet the compositional and structural limitations of the claims.
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 JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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