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 .
Claims 2, 7, 11-20 and species B-C remain withdrawn as drawn to non-elected invention.
Claims 1, 3-6 and 8-10 (species A only) are still at issue and are present for examination.
Applicants' arguments filed on 7/17/26, have been fully considered and are deemed to be persuasive to overcome some of the rejections previously applied. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.
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, 3-6, 8-10 remain 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, according to previous office action. In claim 1 (and its dependent claims 3-6, 8-10) it is unclear what exactly constitutes “a modified Caro’s acid” according to previous office action. It is unknown in what way “Caro’s acid” has been modified. No explicit definition for said phrase can be found in the disclosure. As applicant is aware, modification can occur by addition of extra ingredients into composition A or by derivatizing of composition A components beyond taurine etc. Applicant needs to clarify what he/she means by “modified”. Appropriate clarification is required. Claims 3-6 and 8-10 are merely rejected for depending from claim 1.
This rejection was not addressed by applicant is his/her response. Hence, it remains for applicant to consider.
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.
Claims 1, 3-6 and 8-10 are 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. The examiner could not find explicit support for the phrase “wherein said composition does not require exposure to a hemicellulose ….” at the end of claim 1. Therefore, said amendment is considered New Matter. Applicant is advised to refer the examiner to where said “wherein phrase” at the end of claim 1 is found, in the body of the disclosure.
Claims 3-6 and 8-10 are rejected merely for depending from claim 1.
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.
Claims 1, 3-6, 8-10 remain rejected under 35 U.S.C. 103 as being obvious over Weissenberger et al., “Weissenberger” (US 2022/0412001, 12/2022, which will be used to cite relevant text, see also its corresponding US patent No. 11,982,051), according to previous office action.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Weissenberger in [0062] teachs about a delignification method and its downstream products, said method comprising providing biomass comprising lignin, hemicellulose and cellulose fibers into said vessel; [0065] providing a modified Caro's acid composition selected from the group consisting of: composition A; composition B and Composition C; [0066] wherein said composition A comprises: [0067] sulfuric acid in an amount ranging from 20 to 70 wt % of the total weight of the composition; [0068] a compound comprising an amine moiety and a sulfonic acid moiety selected from the group consisting of: taurine; taurine derivatives; and taurine-related compounds; and [0069] a peroxide. [0078] exposing said biomass to said modified Caro's acid composition, creating a reaction mass; [0079] allowing said modified Caro's acid composition to come into contact with said biomass for a period of time sufficient to a delignification reaction to occur and remove over 90 wt % of said lignin and hemicellulose from said biomass; and [0080] controlling the temperature of the delignification reaction to maintain it below 55° C, by a method selected from the group consisting of: adding water into said vessel; adding more biomass (than the initial amount) into said vessel; and using a heat exchanger.
Said downstream compositions (products) of Weissenberger inherently have cellulose/hemicellulose ratio(s) of 6:1 or 7:1, or more and inherently have a substantially hemicellulose-free cellulosic component, rendering claims 1, 3-6, 8-10 readily obvious.
Regarding the specific concentrations of sulfuric acid used in composition A recited in claim 1, as stated above said concentrations are unclear and therefore the impact of said concentrations on the patentability of this invention cannot be determined.
In response to this rejection, applicant argues that in the specification, it is stated, see [0033-0035], the following:
“[0033] According to an aspect of the present invention, there is provided a method of increasing the efficiency of cellulose fermentation into bioethanol by removing or substantially reducing the amount of hemicellulose present in the biomass. By removing most of the hemicellulose from a lignocellulosic biomass material, the amount of ethanol from pure cellulose (not from the cellulose+hemicellulose mixture) is thus maximized. This leads to lower costs in the production of bioethanol since the fermentation is simpler and does not require genetically modified organisms. A genetically modified yeast would need to be present to ferment the pentose sugars (xylose) when such a cellulose/hemicellulose blend is present, as a standard fermentative yeast will not be as efficient. The presence of hemicellulose/xylose does not benefit the production of bioethanol using a standard yeast, so the overall yields of biomass conversion to bio-ethanol will suffer.
[0034] According to an aspect of the present invention, there is provided a method of increasing the fermentation yield of cellulose by first treating the biomass to a delignification reaction and then collecting the remaining solids in large part comprised of cellulose and fermenting said cellulose in an appropriate biodigester wherein said cellulose is fermented into ethanol. Preferably, the absence of hemicellulose in the cellulose resulting in a favorable ethanol yield compared to cellulose containing hemicellulose.
[0035] It is to be understood that the presence of a low amount of hemicellulose (0.5 to 15 wt. %) will have generally much improved yields in comparison to conventional cellulose which contains larger percentages (15-25 wt. %) of hemicellulose therein. For instance, since hemicellulose is in general, the second most common constituent of lignocellulosic biomass, it is expected that it be present in a range of 15-25% in a conventional pulp after delignification using the kraft process.”.
Therefore, said art shown above, alone or in combination does not render this invention obvious. To go even further, according to applicant, claim 1 as amended also recites that “wherein said composition does not require exposure to a hemicellulase when treated with an enzyme in said saccharification to yield glucose”. Hence, applicant concludes, said addition “wherein …. “clause is a limitation that is not remotely taught or suggested by Weissenberger.
These arguments were fully considered but were found unpersuasive. This is because, firstly, Weissenberger utilizes an identical “modified Caro’s acid” as instant invention. Thus, there is no reason to expect the delignification product obtained by treating biomass with such acid would have a hemicellulase /cellulose ratio that is different than that of this invention.
Secondly, the examiner cannot even find explicit support for the “wherein phrase” recited at the end of claim 1.
Thirdly, in [0062] Weissenberger explicitly mentions: “ by exposing its biomass to its modified Caro's acid composition and allowing said modified Caro's acid composition to come into contact with said biomass for a period of time sufficient to a delignification reaction, removal over 90 wt % of said lignin and hemicellulose from said biomass is achieved”. Therefore, the examiner finds no reason to withdraw this rejection.
Claim(s) 1, 3-6, 8-10 remain rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Purdy*** et al., “Purdy*** ” (US 2023/0416985, 6/3/25 which will be used to cite relevant text, see also its corresponding US patent No. 12,320,066), according to previous office action.
Purdy *** teaches a method of use of a composition (see claims) for delignifying plant biomass (which may be wood pulp or woody biomass (see [0004]) said biomass inherently comprising hemicellulose, cellulose and lignin), wherein said compositions may comprise composition A, said composition A comprising sulfuric acid, taurine and a peroxide (see claim 1 of said publication), when added to said biomass and its downstream products (compositions).
Said downstream products (composition) of Purdy *** inherently have cellulose/hemicellulose ratio(s) of 6:1 or 7:1, or more and inherently has a substantially hemicellulose-free cellulosic component, rendering claims 1, 3-6, 8-10 readily obvious.
Regarding the specific concentrations of sulfuric acid used in composition A recited in claim 1, as stated above, said concentrations are unclear and therefore the impact of said concentrations on the patentability of this invention cannot be determined.
Again, in traversal of this rejection applicant relies on the same arguments summarized above. However, said arguments are unpersuasive here because:
As mentioned above, firstly, Purdy*** utilizes an identical “modified Caro’s acid” as instant invention. Thus, there is no reason to expect the delignification product obtained by treating biomass with such acid would have a hemicellulase /cellulose ratio that is different than this invention.
Secondly. The examiner cannot even find explicit support for the “wherein phrase” recited at the end of claim 1.
Therefore, this rejection is also maintained.
No claim is allowed.
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 MARYAM MONSHIPOURI whose telephone number is (571)272-0932. The examiner can normally be reached full-flex.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melenie L Gordon can be reached at 571-272-8037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARYAM MONSHIPOURI/Primary Examiner, Art Unit 1651
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