Detailed Office Action
The communication dated 11/7/2025 has been entered and fully considered.
Claims 15-20 have been canceled. Claims 21-26 are new. Claims 1 and 8-11 have been amended. Claims 1-14 and 21-26 are pending with claim 14 withdrawn from consideration.
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 .
Election/Restrictions
Applicant’s election of Group I in the reply filed on 11/7/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Response to Arguments
In light of amendment the rejection towards LUCKENBAUGH, McKNIGHT, and KHAN have been withdrawn.
The prior art applied does not suggest black liquor.
Claim Interpretation
In claim 11 the applicant claims both black liquor and water. Black liquor itself comprises water. There is no per se rule against double inclusion [MPEP 2173.05(o)]. The Examiner finds claim 11 to be definite under 112(b).
In claim 11, the applicant claims active compounds and then lists 3 active compounds each with a range ending on 0. This means that the active compounds can be “0” and therefore the claim would read on black liquor/water itself.
Allowable Subject Matter
Claims 1-10 and 22-23 are allowed.
Claims 24-26 are rejected under 112(b) only.
Claim Objections
Claim 11 objected to because of the following informalities: A ‘comma’ is needed after ‘black liquor’. Appropriate correction is required.
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.
Claim 12 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.
Instant claim 12 claims a composition of claim 11 with specific concentrations for water and active compounds. The applicant had support for these ranges of a composition that was not mixed with black liquor. That is the original composition prior to amendment contained 40-80% water and 20 to 60% actives. Now, as amended the overall composition including black liquor would comprise 20-60% active compounds. This is both not supported and would not be done in practice.
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.
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 24-26 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 24 the applicant claims the composition is effective of a dosage of 25 to 5,000 ppm based on black liquor solids. However, the composition as amended already comprises the black liquor solids.
In claims 25 the applicant claims the composition maintains activity at a pH greater than 12 and a temperature greater than 120 degrees C. However, it is only the black liquor treatment agents that would maintain activity not the black liquor itself.
In claim 26, the applicant claims the composition excludes multiple compounds. The Examiner believes the applicant meant for the active components to exclude this. Black liquor comprises thiosulfate, nitrogen compounds and phosphorous compounds. The applicant should model this claim like instant claims 8-10.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 11, 13, and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2008/0277083 SHEVENKO et al., hereinafter SHEVENKO.
As for claim 11 and 21, SHEVENKO discloses black liquor (which comprises water) [abstract]. Black liquor itself is enough to anticipate the claim because the active components all have “0” as part of their range. Nevertheless, SHEVENKO at least discloses 1000 ppm of sodium xylene-sulfonate [Example 5/Table 5] which meets range for anionic sulfonate surfactant. Again the anionic sulfonate dispersant and nonionic ethoxylated surfactant can be ‘0’.
As for claim 13, SHEVENKO discloses ‘0’% of each of the named active compounds of the claim [Example 5/Table 5].
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 ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 PM.
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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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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748