DETAILED ACTION
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 .
Acknowledgement is made to Applicant’s response filed 05/28/2026.
Claims 1, 2, 4, 10, 13, 15, 19, 22, 25, 27, 30-32, 34, 35, and 38-40 are pending.
NOTE: claim 11 and 12 are not present in the instant claim set, said claimed are being interpreted as being cancelled.
Claims 3, 5-9, 11, 12, 14, 16-18, 20, 21, 23, 24, 28, 29, 33, 36, and 37 are cancelled.
Claims 4, 10, 13, 15, 19, 22, 25, 27, 30, 32, and 38-40 are currently amended.
Claims 15 and 38 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/28/2026.
Claims 1, 2, 4, 10, 13, 19, 22, 25, 27, 30-32, 34, 35, 39, and 40 are currently under consideration to the extent that they read upon Applicant’s elected species.
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(s) 1, 2, 4, 10, 13, 19, 22, 25, 27, 30-32, 34, 35, 39, and 40 (all claims currently under consideration) is/are rejected under 35 U.S.C. 103 as being unpatentable over Despen et al (US 2016/0280554).
Despen teaches a composition comprising 55% or more total carbon, 15% or less (and specifically names 3 and 8%) of hydrogen, 1% or less of nitrogen, 0.5% or less of phosphorus, 0.2% or less of sulfur, and up to 20% oxygen (see entire document, for instance, [0078]-[0082], [0147], and [0149]). The carbon is taught as being derived from renewable sources (see entire document, for instance, [0014]). Despen teaches that one can modify the process conditions and additives in the pyrolysis process (see entire document, for instance, [0006]), wherein it is noted that the instant specification indicates that modifications to the pyrolysis process of the components instantly claimed changes the naturally hydrophilic composition to have more hydrophobic components (see Instant Specification, [0112]). It is noted that the feedstock of the biomass includes a list that significantly overlaps with the feedstock taught in the instant specification (see entire document, for instance, [0037]). The moisture content of the composition is taught as being at least 1% (see entire document, for instance, [0153]). The composition is taught as comprising non-combustible material such as ash in an amount of 10% or less (see entire document, for instance, [0152]). Further, the composition is taught as comprising at least 50% volatile matter (See entire document, for instance, [0146]). The composition does not require the presence of mercury. The composition is in the form of fine powder (see entire document, for instance, [0155]). Despen teaches that the composition can vary in the pH, wherein further, the composition can comprise components that modify the pH, namely acids and bases (see entire document, for instance, [0074] and [0277]).
With regard to the cationic exchange capacity, the base-acid ratio, and the expanded base-acid ratio of the composition, it is noted that the prior art teaches the same components, in amounts that overlap the instantly claimed amounts, wherein the cationic exchange capacity, base-acid ratio, and expanded base-acid ratio are properties of the composition that flow from the components themselves, and as such, the prior art is deemed to read on the instantly claimed cationic exchange capacity and base-acid ratio. Further the components of the prior art are the same as those instantly claimed, and as such, the composition would be deemed biodegradable and compostable. It is noted that MPEP 2112.01 states: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).”
Despen, while teaching all of the instantly claimed elements in their instantly claimed orientations and in amounts that overlap the instantly claimed amounts, does not provide a singular example where all of said elements are exemplified to the extent that the teaching rises to the level of anticipation.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to utilize the components of Despen, in the amounts of Despen, and thereby arrive at the instantly claimed invention. One would have been motivated to do so since Despen directly teaches said components in amounts that overlap the instantly claimed amounts. There would be a reasonable expectation of success since one of ordinary skill in the art would merely be following the guidance of the prior art. It is noted that MPEP 2144.05 states: “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). Further, with regard to the pH of the composition, the prior art teaches the optimization of the pH and teaches the presence of acids or bases which are pH modifiers. It is noted that MPEP 2144.05 states: "Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TREVOR M LOVE whose telephone number is (571)270-5259. The examiner can normally be reached M-F typically 6:30-3.
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, Bethany Barham can be reached at 5712726175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TREVOR LOVE/Primary Examiner, Art Unit 1611
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