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 .
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.
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.
Claim 1 is 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. It is unclear what material the structure of formula (1) represents. Carbon is known to have a valence of 4 and as such forms 4 covalent bonds. The central carbon atom in the structure has only 3 covalent bonds. Additionally, the carbon atoms comprising the phenyl rings to which the central section is to be bonded to already comprise 4 covalent bonds. It is unclear where the additional bonds will be formed. Additionally, it is unclear what the limitation “the total amount of the compound is 0.06% by mass or more” means. The claim states that the lignin compound comprises two or more kinds of compounds. Which of the two or more lignin compounds is 0.06% by mass or more?
Claims 4 - 15 are rejected as being dependent on a rejected independent claim.
Claim 2 is 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. It is unclear what material the structure of formula (1) represents. Carbon is known to have a valence of 4 and as such forms 4 covalent bonds. The central carbon atom in the structure has only 3 covalent bonds. Additionally, the carbon atoms comprising the phenyl rings to which the central section is to be bonded to already comprise 4 covalent bonds. It is unclear where the additional bonds will be formed.
Additionally, for claims 1 – 2, at least two of the groups R11 – R15, RC1, R16 – 19 and RC2 have to also be a covalent bond to the central carbon atom.
Claim 10 recites the limitation "the following compound (2)" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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(s) 1 – 2 and 4 – 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by the NPL titled Improving base catalyzed lignin depolymerization by avoiding lignin repolymerization, Toledano et al., Fuel 116, (2014) 617-624, hereinafter “Toledano”.
Toledano is directed to improved base catalyzed lignin depolymerization focusing in avoiding repolymerization (Abstract).
Toledano teaches 5 di phenol compounds at Figure 3 of which o-(o-hydroxybenzyl)phenol comprise 1.92 wt. % (Table 3). Compound o-(o-hydroxybenzyl)phenol meets the structural requirements for formula (1) where Ra = H and RC1 = RC2 = -OH (hydroxyl group) and comprises 1.92 wt. % (Table 3). Compound o-(p-hydroxybenzyl)phenol meets the structural requirements for formula (1) where Ra = H and RC1 = -OH (hydroxyl group) and R19 = -OH (hydroxyl group). These two compounds represent the two compounds of formula 1. A third compound 4-4’-ethylidenediphenol is a polyol.
As to claim 4, Toledano teaches 1.92 wt. % Compound o-(o-hydroxybenzyl)phenol to 0.43 wt. % 4-4’-ethylidenediphenol. This is equivalent to 446.5 o-(o-hydroxybenzyl)phenol / 100 4-4’-ethylidenediphenol.
Regarding claims 5 -6, the molecular weight (MW) of 4,4'-ethylidene diphenol (also known as Bisphenol E) is 214.26 g/mol. Its chemical formula is C₁₄H₁₄O₂. 4,4'-ethylidene diphenol is an aromatic polyol.
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.
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over the NPL titled Improving base catalyzed lignin depolymerization by avoiding lignin repolymerization, Toledano et al., Fuel 116, (2014) 617-624, hereinafter “Toledano”.
Toledano is directed to improved base catalyzed lignin depolymerization focusing in avoiding repolymerization (Abstract).
Regarding claim 3, Toledano teaches the combination of a lignin component and a polyol. See paragraph 12 supra. Although the prior art fails to teach the distribution value, it is axiomatic that one who performs the steps of a combining the two must necessarily produce all of its advantages. The discovery of a new property or use of a previously known composition, even if unobvious from the prior art, cannot impart patentability to claims to a known composition. In re Spada 15 USPQ 2d 1655 (CAFC 1990). "The absence of a disclosure relating to function does not defeat a finding of anticipation.” It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product". In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431(Fed Cir 1997).
Cited Art of Interest
US 4647704 to Engels at al. teaches at Example 2 a method of hydrocracking lignin comprising phenol, lignin, hydrogen at a pressure of 100 atm and a temperature of 400C for 1 hour.
JP 2020050815 A to Go, Yoshiyuki teaches at synthesis of resin material A comprising phenol, oxalic acid which is heated and combined with lignin to yield a modified lignin resin.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER A. SALAMON whose telephone number is 571-270-3018. The examiner can normally be reached M-F: 9AM - 6PM.
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, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
PAS 6/11/26
/PETER A SALAMON/Primary Examiner, Art Unit 1759
Prosecution Insights