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 .
Applicant’s response to the restriction requirement of 1/30/26 is acknowledged. Applicant elected Group I (claims 1-6 and 8-10) and species A (drawn to a composition comprising composition A) only, without traverse.
Claims 7, and 11-20 and species B-C are hereby withdrawn as drawn to non-elected subject matter.
Upon further review of the restriction requirement, it appears that claim 2 was unfortunately grouped with Claims 1, 2-6 and 8-10 due to an inadvertent error. This is because the composition of claim 2 comprises cellulose, hemicellulose and lignin, which is a patentably distinct composition than that of Group I (which comprises only cellulose and hemicellulose). Therefore claim 2 is also withdrawn as drawn to non-elected invention.
DETAILED ACTION
Claims 1, 3-6, 8-10 and species A only, are under examination on the merits.
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 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. In claim 1 (and its dependent claims 3-6, 8-10) it is unclear what the substrate is. Since the delignification process was applied to a substrate (such as hardwood etc.) to produce instantly claimed composition, and obviously, the composition of said substrate impacts the instantly claimed composition, said substrate should be specified and recited in at least claim 1. Appropriate clarification is required. Claims 3-6 and 8-10 are merely rejected for depending from claim 1.
Claims 1, 3-6, 8-10 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. In claim 1 (and its dependent claims 3-6, 8-10), it is unknown which composition (the cellulosic composition or composition A) is referred to when reporting sulfuric acid concentration (see lines 6-7 of claim 1). To inquire in another way, it is unclear if the “wt% “ reported in claim 1, is before or after “delignification process”.
In addition, it is totally vague as to how much “modifier component” and how much “peroxide “ is used in said “delignification process” recited in line 2 of claim 1. Appropriate clarification is required. Claims 3-6 and 8-10 are merely rejected for depending from claim 1.
Claims 1, 3-6, 8-10 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. In claim 1 (and its dependent claims 3-6, 8-10) it is unclear what exactly constitutes “a modified Caro’s acid”. 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 etc. 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.
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 are 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).
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.
Claim(s) 1, 3-6, 8-10 are 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 2022/0195665, 6/2022, which will be used to cite relevant text, see also its corresponding US patent No. 12,071,724).
Purdy in claim 1 recites the following:
1. A composition comprising: an acid; a modifying agent selected from the group consisting of: sulfamic acid; imidazole; N-alkylimidazole; taurine; a taurine derivative; a taurine-related compound; alkylsulfonic acid; arylsulfonic acid; triethanolamine; and combinations thereof; a metal salt; and a peroxide.
Said publication in claim 13 recites:
13. The composition according to claim 1, wherein the acid is sulfuric acid.
Purdy in claim 14, recites a delignification process using lignocellulose feedstock which inherently has cellulose and hemicellulose and lignin. According to Purdy, said process results in 90% removal of lignin.
In [0115-0116], Purdy discloses that the ability of a composition to remove lignin from a wood sample was evaluated by performing a number of experiments with varying molar ratios of several components. A desirable result is one which dissolves all of the lignin in the wood and leaves behind only high-quality cellulose. The ability of the tested composition to remove lignin was evaluated against a sample of lignin as well as a sample of cellulose fibers. Ideally, a composition must not dissolve/destroy more than 20% of the cellulose present in the sample. Preferably, a composition must not dissolve more than 15% of the cellulose present in the sample. More preferably, a composition must not dissolve more than 10% of the cellulose present in the sample.
[0116] Ideally, as well, a treated sample of wood should not contain more than 20% by mass of residual lignin. Preferably, a treated sample of wood should not contain more than 10% by mass of residual lignin. More preferably, a treated sample of wood should not contain more than 5% by mass of residual lignin.
Therefore, it is believed that the teachings of Purdy anticipate this invention or in the least render it 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.
Claim(s) 1, 3-6, 8-10 are 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 2022/0186435, 6/16/22, which will be used to cite relevant text, see also its corresponding US patent No. 11,668,047).
Purdy * in [0107], refers to table 8, which reports experiments of delignification of lignocellulosic feedstock (which may be made of cellulose, hemicellulose and lignin, see [0079]) using an aqueous composition of sulfuric acid, hydrogen peroxide and a modifying agent (namely taurine) in various ratios in a 2-phase system comprising HT-40 as holding phase solvent at room temperature and atmospheric pressure and reports cellulose recovery of 97.4%.
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.
Therefore, once again, it is believed that the teachings of Purdy* anticipate this invention or in the least render it obvious.
Claim(s) 1, 3-6, 8-10 are 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 2022/0186436, 6/16/22, which will be used to cite relevant text, see also its corresponding US patent No. 11,821,139).
In [0019-0020], according to said publication, there still exists a need for a composition capable of performing delignification on lignocellulosic biomass under reduced temperatures and pressures versus what is currently in use without requiring any major additional capital expenditures, and adapted to preserve the lignocellulosic biomass constituents as much as possible for further applications. Purdy** further recites: when heat and pressure are removed from the process the capital expenditures are greatly reduced as plastics, such as high-density polyethylene (HDPE) can be utilized versus metals for piping, reactors and associated equipment.
Purdy** in [0070-0071], goes on to teach a composition prepared by a delignification test comprising dissolving 1 molar equivalent of taurine into sulfuric acid and subsequently adding hydrogen peroxide to lignocellulose biomass. Once this step was completed, a metal oxide was added to the composition to obtain a modified Caro's acid composition with a metal compound. According to Purdy **, one of the advantages of the composition used in the process according to the present invention was the decreased reactivity of the composition as it is being prepared and upon exposure to the lignocellulosic feedstock.
In [0082], Purdy ** recites that the ability of a composition to remove lignin from a wood sample was evaluated by performing a number of experiments with varying molar ratios of several components. A desirable result is one which dissolve all of the lignin in the wood and leaves behind only high-quality cellulose. The ability of the tested composition to remove lignin was evaluated against a sample of lignin as well as a sample of cellulose fibers. Ideally, a composition must not dissolve/destroy more than 20% of the cellulose present in the sample. Preferably, a composition must not dissolve more than 15% of the cellulose present in the sample. More preferably, a composition must not dissolve more than 10% of the cellulose present in the sample. Ideally as well, a treated sample of wood should not contain more than 20% by mass of residual lignin. Preferably, a treated sample of wood should not contain more than 10% by mass of residual lignin. More preferably, a treated sample of wood should not contain more than 5% by mass of residual lignin.
Therefore, once again, it is believed that the teachings of Purdy** anticipate this invention or in the least render it 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.
Claim(s) 1, 3-6, 8-10 are 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).
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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-6, 8-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,846,067. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of said claims which recite a modified aqueous composition comprising sulfuric acid, peroxide and taurine does not exclude the presence of cellulose and hemicellulose and optionally lignin etc., and hence, the scope of said claims overlaps with the scope of instant claims.
No claim is allowed
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/MARYAM MONSHIPOURI/Primary Examiner, Art Unit 1651