DETAILED ACTION
The communication dated 12/21/2023 has been entered and fully considered. Claims 1-12 are pending.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-12 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 “period of time sufficient” in claims 1, 3-7, and 10, is a relative term which renders the claim indefinite. The term “period of time sufficient” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The claim limitation places undue burden onto one of ordinary skill in the arts to experiment with the variables of the process (optional reagents, starting materials, temperature, and residence time).
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.
Claim(s) 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over COMBS (US 2015203723 A1) in view of FALLON (US 20140113826 A1) and NELSON (US 20170210827 A1).
For claim 1, COMBS teaches a process for treating cellulosic material and derivatives [abstract]. This teaches the limitations of “A method for removing the constituents of a biomass into separate streams, where said method comprises the following steps”. COMBS teaches the introduction of cellulose material including lignin and cellulose [Fig 1 and 0022]. This teaches the limitation of “Step 1: providing a biomass feedstock comprising: cellulose; hemicellulose; and lignin;. COMBS teaches the cellulosic material is activated by esterification with an oxoacid (organic acid) [Fig 1]. COMBS teaches the esterified cellulosic is redissolved in following steps [0047]. The Examiner understands the term “redissolve” means the esterified cellulosic material is dissolved in a previous step as well. This teaches the limitation of “Step 2: exposing said biomass to a first acidic composition comprising an acid selected from the group consisting of: mineral acids; organic acids; modified acids; synthetic acids; and combinations thereof; for a first period of time sufficient to dissolve at least 50% of the hemicellulose present in said biomass;”. COMBS does not teach the separation of the hemicellulose from the solution before hydrolysis. FALLON teaches a similar esterification of cellulosic materials [abstract]. FALLON teaches the introduction of polysaccharide (cellulose, hemicellulose, and lignin) to an organic acid (acetic acid) to form an ester polysaccharide derivative [0042]. FALLON teaches the resulting esterified polysaccharide is filtered to remove unreacted polysaccharide (hemicellulose) [0043]. This teaches the limitation of “Step 3: separating and recovering into a first liquid stream, the dissolved hemicellulose from the remaining biomass;”. FALLON teaches the filtration removes unwanted materials including the unreacted starting material [0049]. It would be obvious to one skilled in the arts to substitute the filtration of FALLON into the process of COMBS. One would be motivated to substitute in the filtration based on the removal of unwanted material before treatment as taught by FALLON.
FALLON teaches the filtered polysaccharide ester then undergoes hydrolysis [0049] using inorganic ester substituents that include methane sulfonic acid (sulfonic acid moiety), nitrate (amine moiety) [0032], and additives (active pharmaceuticals) [0037 and 0088] that include hydrogen peroxide [0092]. The Examiner notes that the combination meets the limitation of composition C. This teaches the limitation of “Step 4: exposing the remaining biomass mixture to a modified Caro's acid selected from the group consisting of: wherein said composition C comprises: - sulfuric acid; - a compound comprising an amine moiety; - a compound comprising a sulfonic acid moiety; and - a peroxide;”.
FALLON does not teach the kappa number of the solution after treatment. NELSON teaches a similar separation and acid hydrolysis of cellulosic material like COMBS and FALLON. NELSON also teaches that lignin presence is proportional to the kappa number increase and that lignin is further removed by bleaching (longer exposure to delignification material) [0155]. NELSON also teaches an example where partial bleaching (partial lignin removal) is completed resulting in a Kappa number of 8 [0294]. It would be obvious to one skilled in the arts to expect the Kappa value of less than 8 based on the complete lignin removal from COMBS given the teaching from NELSON. One skilled in the arts would expect the complete removal (dissolution) of lignin to decrease the Kappa number of the resulting solution. This teaches the limitation of “for a first period of time sufficient to dissolve enough of the lignin present in said remaining biomass mixture to obtain a kappa number for the cellulose of less than 5”.
For step 5, the Examiner notes that COMBS in view of FALLON has a similar composition as claimed by applicant, (i.e. delignification by acid contact and the use of Caro’s acid) which would result in the claimed property (pulp solution with at most 10% hemicellulose). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
This teaches the limitation of “Step 5: recovering into a second liquid stream the dissolved lignin from the resulting reaction mixture, wherein said solid portion comprises cellulose fibers with, at most, 10 wt% hemicellulose”.
For claim 2, COMBS, FALLON, and NELSON teach the method according to claim 1, as above. COMBS teaches the use of methanesulfonic acid [0017]. This teaches the limitation of “wherein said first acidic composition comprises an acid selected from the group consisting of: H2SO4; HCl; methanesulfonic acid; toluenesulfonic acid; HCl:amino acid; and HCl: alkanolamine”.
For claim 3, COMBS, FALLON, and NELSON teach the method according to claim 1, as above. COMBS teaches the acid is present at 0.1 wt% relative to the cellulosic component [0043] and a reaction temperature of 55°C. This value is within the claim range of “wherein said first acidic composition is added to the biomass in a concentration ranging from 0.1 to 10 % and the biomass mixture is heated to a temperature ranging from 50°C to 150°C”.
Regarding the hemicellulose remaining, the Examiner notes that COMBS in view of FALLON has a similar composition as claimed by applicant, (i.e. delignification by acid contact and the use of Caro’s acid at the required temperature/concentration) which would result in the claimed property (pulp solution with at most 50% hemicellulose). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
This teaches the limitation of “for a period of time sufficient to remove at least 50% of the hemicellulose present in said biomass”.
For claim 4, COMBS, FALLON, and NELSON teach the method according to claim 1, as above. the Examiner notes that COMBS in view of FALLON has a similar composition as claimed by applicant, (i.e. delignification by acid contact and the use of Caro’s acid) which would result in the claimed property (pulp solution with at least 60% hemicellulose). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977). This teaches the limitation of “wherein the period of time is sufficient to remove at least 60% of the hemicellulose present in said biomass.
For claim 5, COMBS, FALLON, and NELSON teach the method according to claim 3, as above. the Examiner notes that COMBS in view of FALLON has a similar composition as claimed by applicant, (i.e. delignification by acid contact and the use of Caro’s acid) which would result in the claimed property (pulp solution with at least 70% hemicellulose). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977). This teaches the limitation of “wherein the period of time is sufficient to remove at least 70% of the hemicellulose present in said biomass”.
For claim 6, COMBS, FALLON, and NELSON teach the method according to claim 3, as above. the Examiner notes that COMBS in view of FALLON has a similar composition as claimed by applicant, (i.e. delignification by acid contact and the use of Caro’s acid) which would result in the claimed property (pulp solution with at least 80% hemicellulose). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977). This teaches the limitation of “wherein the period of time is sufficient to remove at least 80% of the hemicellulose present in said biomass”.
For claim 7, COMBS, FALLON, and NELSON teach the method according to claim 3, as above. the Examiner notes that COMBS in view of FALLON has a similar composition as claimed by applicant, (i.e. delignification by acid contact and the use of Caro’s acid) which would result in the claimed property (pulp solution with at least 90% hemicellulose). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977). This teaches the limitation of “wherein the period of time is sufficient to remove at least 90% of the hemicellulose present in said biomass”.
For claim 8, COMBS, FALLON, and NELSON teach the method according to claim 1, as above. the Examiner notes that COMBS in view of FALLON has a similar composition as claimed by applicant, (i.e. delignification by acid contact and the use of Caro’s acid) which would result in the claimed property (pulp solution with less than 2wt% lignin remaining). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977). This teaches the limitation of “wherein the lignin remaining after the delignification step is less than 2 wt. % of the solid portion”.
For claim 9, COMBS, FALLON, and NELSON teach the method according to claim 1, as above. the Examiner notes that COMBS in view of FALLON has a similar composition as claimed by applicant, (i.e. delignification by acid contact and the use of Caro’s acid) which would result in the claimed property (pulp solution with less than 1 wt% lignin remaining). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977). This teaches the limitation of “wherein the lignin remaining after the delignification step is less than 1 wt.% of the solid portion.
For claim 10, COMBS, FALLON, and NELSON teach the method according to claim 2, as above. COMBS teaches the acid is present at 0.1 wt% relative to the cellulosic component [0043] and a reaction temperature of 55°C. This value is within the claim range of “wherein said first acidic composition is added to the biomass in a concentration ranging from 0.1 to 10 % and the biomass mixture is heated to a temperature ranging from 50°C to 150°C”.
Regarding the hemicellulose remaining, the Examiner notes that COMBS in view of FALLON has a similar composition as claimed by applicant, (i.e. delignification by acid contact and the use of Caro’s acid at the required temperature/concentration) which would result in the claimed property (pulp solution with at most 50% hemicellulose). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
This teaches the limitation of “for a period of time sufficient to remove at least 50% of the hemicellulose present in said biomass”.
For claim 11, COMBS, FALLON, and NELSON teach the method according to claim 2, as above. the Examiner notes that COMBS in view of FALLON has a similar composition as claimed by applicant, (i.e. delignification by acid contact and the use of Caro’s acid) which would result in the claimed property (pulp solution with less than 2 wt% lignin remaining). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977). This teaches the limitation of “wherein the lignin remaining after the delignification step is less than 2 wt. % of the solid portion”.
For claim 12, COMBS, FALLON, and NELSON teach the method according to claim 3, as above. the Examiner notes that COMBS in view of FALLON has a similar composition as claimed by applicant, (i.e. delignification by acid contact and the use of Caro’s acid) which would result in the claimed property (pulp solution with less than 2 wt% lignin remaining). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977). This teaches the limitation of “wherein the lignin remaining after the delignification step is less than 2 wt. % of the solid portion”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN M RUSSELL whose telephone number is (571)272-6907. The examiner can normally be reached Mon-Fri: 7:30 to 4:30 EST.
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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.
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/S.M.R./Examiner, Art Unit 1748 /JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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