Detailed Office Action
The communication dated 10/1/2025 has been entered and fully considered.
Claims 1, 6, 10-12 have been amended. Claims 2-4, 8-9, and 16-20 have been canceled. Claims 21-30 are new. Claims 1, 5-7, 10-15, and 21-30 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 .
Election/Restriction
Applicant’s election of Group I in the reply filed on 10/10/2025 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)).
Allowable Subject Matter
Claim 21 and 24 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The closest prior art JOHANSSON teaches polymerized naphthalene sulfonate with an average MW of 300 to 2,000 g/mol which is much less than the claimed MW of 6,000 to 8,000 grams per mole.
The applicant can overcome the 112(b) reject and obtain allowable subject matter by deleting “fresh” from the independent claim.
Claim 28 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The closest prior art JOHANSSON while teaching a formaldehyde condensation polymer of naphthalene does not teach the condensation product of beta-naphthalene. The process of using beta-naphthalene over other substituted naphthalene will affect the final structure of the formaldehyde condensation polymer of naphthalene.
The applicant can overcome the 112(b) reject and obtain allowable subject matter by deleting “fresh” from the independent claim.
Claim 6 and 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The prior art does not suggest the ratio of white liquor to wood as claimed. Typically, the L:W ratio as shown in the prior art includes moisture and black liquor. The claimed percentage of 70-90% white liquor would typically only be present in a lab setting not an industrial setting.
The applicant can overcome the 112(b) reject and obtain allowable subject matter by deleting “fresh” from the independent claim.
Response to Arguments
In light of amendment the rejection towards claims 6 and 10 have been withdrawn.
Applicant argues against the interpretation of dispersant.
In response the Examiner interpreted the mixture as a whole to be the dispersant because it included an anionic surfactant (and black liquor itself comprises lignosulfonates which act as dispersants). This is why the Examiner cited in the non-final rejection “The instant specification states the dispersant is an anionic surfactant [instant spec 0057].” To simplify the issues the Examiner will solely interpret the anionic surfactant of AHLUWAKLIA as the dispersant (anionic sodium alpha-sulfo ethyl laurate) and not he mixture that comprises the anionic surfactant.
Applicant argues that AHLUWAKLIA cannot be combined with JOHANSSON as there is a teaching away.
A teaching away requires that the prior art leads the person away from the combination. The primary reference teaches anionic surfactant and does not limit other surfactants. A teaching away in a disclosure must disparage, discredit, or otherwise discourage the solution.
Furthermore, "the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…."
In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004)
Applicant argues there is not a reasonable expectation of success.
In response both references teach anionic surfactants and both references teach the use of surfactants to improve pulping. The secondary reference gives specific teaching showing that it is a successful surfactant.
Applicant argues unexpected results and a long-felt need. Specifically, the applicant argues that the Table 1 and Figures 1-3 show synergistic effects using a 50:50 mixture.
In response unexpected result/long felt need must form a nexus with the claims.
In other words, in order for evidence of secondary considerations to be accorded substantial weight, there must be a nexus, i.e., a legally and factually sufficient connection or correspondence between the submitted evidence and the claimed invention.
Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373, 2019 USPQ2d 483355 (Fed. Cir. 2019), cert. denied, 141 S.Ct. 373 (2020)
Independent claim 1 does not claim the ratio or amounts of penetrant/dispersants used. In Figure 1 TSN alone showed similar rejects to 75/25 mixture. In figures 2 TSN showed higher residual alkali than the 25/75 blend ratio. As for kappa ratio TSN showed lower kappa number than everything but the 50:50 blend ratio. As of currently the intendent claim 1 reads on a 99:1 ratio. In instant claim 12, the ratio is still broad and the applicant odes not claim any specific type of penetrant/dispersant.
Additionally, the closest prior art shows a 50:50 ratio. The applicant would need to show that naphthalene sulphonate-formaldehyde condensate polymers in a 50:50 ratio are what performs the alleged unexpected results as compared to anionic sodium alpha-sulfo ethyl laurate
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, 5-7, 10-15, and 21-30 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 “fresh” in claims 1 and 12 is a relative term which renders the claim indefinite. The term “fresh” 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 specification gives no scope to the term “fresh” which suggest a certain amount of time between making the white liquor and using the white liquor. The specification only states that it is “freshly prepared”. The term could also be interpreted as preparing the white liquor directly from mixing sodium hydroxide, sodium sulfide and water instead of the normal causticizing cycle [see typical causticizing cycle from Handbook for Pulp and Paper Technologists by SMOOK; Figure 10-27]. However, this is not disclosed in the instant specification either and would only apply to lab scale testing if it was.
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The claims dependent therefrom are similarly rejected.
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.
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 1, 5, 7, 11-15, 21-23, 25-27, 29, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 5,032,224 AHKUWAKLIA, hereinafter AHKUWAKLIA, in view of WO 2008/076055A1 JOHANSSON, hereinafter JOHANSSON.
As for claim 1, AHLUWAKLIA discloses kraft pulping of lignocellulose [abstract] with white liquor [col. 1 lines 29-35]. AHLUWAKLIA discloses adding a mix of anionic surfactants [col. 6 lines 58-69] including xylene sulfonate [col. 7 lines 7-10] and sodium alpha-sulfo ethyl laurate [col. 7 lines 5-8] at a 50/50 ratio which falls within the claimed range col. 7 lines 15-18] which falls within the instant claimed range. The Examiner interprets the xylene sulfonate as the penetrant. The Examiner interprets the other anionic surfactant under BRI as the dispersant. The instant specification states the dispersant is an anionic surfactant [instant spec 0057].
AHLUWAKLIA does not disclose polymerized naphthalene sulfonate or that the white liquor is fresh.
JOHANSSON discloses anionic surfactants and chelants added to pulp digestion [abstract]. JOHANSSON discloses white liquor and kraft pulping [pg. 6 lines 31-32 and pg. 7 lines 5-6]. JOHANSSON discloses naphthalene sulphonate-formaldehyde condensate polymers as one embodiment of anionic surfactants [pg. 4 lines 8-12]. JOHANSSON discloses a decrease in shives [Table 1] which means a decrease in rejects.
At the time of the invention it would be obvious to substitute the anionic naphthalene sulphonate-formaldehyde condensate polymers of JOHANSSON for the anionic sodium alpha-sulfo ethyl laurate. It is prima facie obvious to substitute one known chemical for another known chemical intended for the same purpose. In the instant case one known anionic surfactant is being substituted/combined with another known anionic surfactant intended to assist kraft pulping. [MPEP 2144.06 (I) or (II)]. Further, the person of ordinary skill in the art would be motivated to add the chemical of JOHANSSON as they show a decrease in rejects (shives), increase in strength, viscosity, and brightness [Table 1]
The person of ordinary skill in the art would expect success as both AHLUEAKLI and JOHANSSON disclose kraft pulping with white liquor of lignocellulose and the addition of anionic surfactants. Both references state that mixtures of anionic surfactants can be used. Finally, both references disclose that surfactant decrease rejects.
The Examiner takes the position that the “freshness” of white liquor is a product by process limitation that does not change the composition of the white liquor and therefore should be given minimal patentable weight. In the alternative in the same are of pulping JOHANSSON discloses fresh white liquor [“fresh digestion liquid” pg. 2 lines 30-31]. At the time of the invention it would be obvious to the person of ordinary skill in the art to substitute one known white liquor for another known white liquor intended for the same purpose of digesting lignocellulose [MPEP 2144.06 (II)].
As for claim 5, AHLUWAKLIA discloses 1 to 2 pounds of surfactant additive per ton of wood (0.5-1 kg/metric ton) which falls within the claimed range [col. 5 lines 15-18].
As for claim 6, AHLUWAKLIA discloses a liquor to wood ratio of 4:1 or 20% dry wood leaving 80% liquor which falls within the claimed range [Table 1]
As for claims 7, 15, and 30, the additional surfactants are optional in AHLUWAKLIA. AHLUWAKLIA discloses that the added surfactants can consist essentially of anionic surfactants [col. 5 lines 42-44].
As for claim 10, AHLUWAKLIA discloses a liquor to wood ratio of 4:1 or 20% dry wood leaving 80% liquor which falls within the claimed range [Table 1]. AHLUWAKLIA discloses a 50%:50% anionic surfactant ratio. AHLUWAKLIA discloses 1 to 2 pounds of surfactant additive per ton of wood (0.5-1 kg/metric ton) which falls within the claimed range [col. 5 lines 15-18]. The additional surfactants are optional in AHLUWAKLIA. AHLUWAKLIA discloses that the surfactant reduces rejects and cooking liquor requirements [col. 6 lines 40-45].
As for claim 11, AHLUWAKLIA discloses blending fresh white liquor with spent black liquor in digesting [col. 5 lines 59-61].
As for claims 12-14, AHLUWALIA discloses kraft pulping of lignocellulose [abstract] with white liquor [col. 1 lines 29-35]. AHLUWAKLIA discloses adding a mix of anionic surfactants [col. 6 lines 58-69] including xylene sulfonate [col. 7 lines 7-10] and sodium alpha-sulfo ethyl laurate [col. 7 lines 5-8] at a 50/50 ratio which falls within the claimed range col. 7 lines 15-18] which falls within the instant claimed range. The Examiner interprets the xylene sulfonate as the penetrant. The Examiner interprets the other anionic surfactant under BRI as the dispersant. The instant specification states the dispersant is an anionic surfactant [instant spec 0057]. AHLUWAKLIA discloses 1 to 2 pounds of additive per ton of wood (0.5-1 kg/metric ton) which falls within the claimed range.
AHLUWAKLIA does not disclose polymerized naphthalene sulfonate or that the white liquor is fresh.
The Examiner takes the position that the “freshness” of white liquor is a product by process limitation that does not change the composition of the white liquor and therefore should be given minimal patentable weight. In the alternative in the same art of pulping JOHANSSON discloses fresh white liquor [“fresh digestion liquid” pg. 2 lines 30-31]. At the time of the invention it would be obvious to the person of ordinary skill in the art to substitute one known white liquor for another known white liquor intended for the same purpose of digesting lignocellulose [MPEP 2144.06 (II)].
JOHANSSON discloses anionic surfactants and chelants added to pulp digestion [abstract]. JOHANSSON discloses white liquor and kraft pulping [pg. 6 lines 31-32 and pg. 7 lines 5-6]. JOHANSSON discloses naphthalene sulphonate-formaldehyde condensate polymers as one embodiment of anionic surfactants [pg. 4 lines 8-12]. JOHANSSON discloses a decrease in shives [Table 1] which means a decrease in rejects.
At the time of the invention it would be obvious to substitute the anionic naphthalene sulphonate-formaldehyde condensate polymers of JOHANSSON for the anionic sodium alpha-sulfo ethyl laurate. It is prima facie obvious to substitute one known chemical for another known chemical intended for the same purpose. In the instant case one known anionic surfactant is being substituted/combined with another known anionic surfactant intended to assist kraft pulping. [MPEP 2144.06 (I) or (II)]. Further, the person of ordinary skill in the art would be motivated to add the chemical of JOHANSSON as they show a decrease in rejects (shives), increase in strength, viscosity, and brightness [Table 1]
The person of ordinary skill in the art would expect success as both AHLUEAKLI and JOHANSSON disclose kraft pulping with white liquor of lignocellulose and the addition of anionic surfactants. Both references state that mixtures of anionic surfactants can be used. Finally, both references disclose that surfactant decrease rejects.
As for claims 22-23, JOHANSSON discloses a MW of 300-2,000 which falls within the instant claimed range [pg. 4 lines 10-11].
As for claims 25 and 26, JOHANSSON discloses a formaldehyde-naphthalene sulfonate condensation polymer sodium salt [pg. 4 lines 8-10].
As for claim 27, JHANSSON discloses a formaldehyde-naphthalene sulfonate condensation polymer sodium salt [pg. 4 lines 8-10]. Sulfonate is the salt form of sulfonic acid.
As for claim 29, JOHANANSSON does not require alky substituents to be present [“when present” pg. 4 lines 11-12].
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.
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, 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