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 .
Claim Objections
Applicant is advised that should claim 17 be found allowable, claim 20 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 102
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 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) 1-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Naskar et al. (US 2020/0032007), when taken with Nejad et al. (US 2024/0301125).
Regarding claims 1-8: Naskar et al. (US ‘007) discloses polyester lignin blends [0007; Ex. 2; 0062-0090], wherein Organosolv hardwood lignin (L) [0063] having a Tg of 79 oC and a weight average molecular weight (Mw) of 1486 g/mol [0073] was blended with polyethylene terephthalate (PET) containing 10 wt% plasticizer (tall oil fatty acid (TOFA) [0062]) (PETPL) at 10 wt% lignin loading (PETPL/10L) [Ex. 2; 0065]. The resulting (PETPL/10L) has a Tg of 86 oC {corresponding to a softening point 86 oC [0052; 0056]} [0085; Table 5, PETPL/10L].
Naskar et al. (US ‘007) does not specifically disclose an adhesive composition. However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Nejad et al. (US ‘125) provides evidence for Organosolv hardwood lignin having a Tg of 79 oC [0090; O-HW; Table 1, 7-O-HW].
Claim(s) 1 and 7-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Laleg et al. (WO 2019/153085).
Regarding claims 1 and 7-8: Laleg et al. (WO ‘085) discloses meltable lignin adhesive compositions [abstract], wherein the meltable lignin composition is further compounded with thermoplastic polymers [0041-0042]. Laleg et al. (WO ‘085) discloses the meltable lignin has a glass transition temperature of 30 oC to 120 oC [0044]. Laleg et al. (WO ‘085) discloses Example IX [Ex. IX; 00102] prepares a meltable lignin by combining lignin and propylene carbonate (60 wt% lignin; 40 wt% propylene carbonate) and mixes the meltable lignin with PLA 2000D (polylactic acid) at 60 wt% PLA and 40 wt% meltable lignin [Ex. IX; 00102; Table 5].
The claimed effects and physical properties, i.e. the composition exhibits a softening point at a temperature below 160 oC [instant claim 1]; the composition exhibits a softening point at a temperature below 120 oC [instant claim 7]; the composition exhibits a softening point at a temperature below 100 oC [instant claim 8] would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claim(s) 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Naskar et al. (US 2020/0032007) as applied to claim 1 above, when taken with Casad, JR. (US 2021/0246608).
Regarding claim 9: Naskar et al. (US ‘007) discloses the basic claimed composition as set forth above with respect to claim 1]; wherein Naskar et al. (US ‘007) discloses Organosolv hardwood lignin (L) (depolymerized lignin) [0063].
Casad, JR. (US ‘608) provides evidence for Organosolv lignin as depolymerized lignin [0082].
Claim(s) 12-13 and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Naskar et al. (US 2020/0032007), when taken with Nejad et al. (US 2024/0301125).
Regarding claims 12-13 and 18-19: Naskar et al. (US ‘007) discloses polyester lignin blends [0007; Ex. 2; 0062-0090], wherein Organosolv hardwood lignin (L) [0063] having a Tg of 79 oC and a weight average molecular weight (Mw) of 1486 g/mol [0073] was blended with polyethylene terephthalate (PET) containing 10 wt% plasticizer (tall oil fatty acid (TOFA) [0062]) (PETPL) at 10 wt% lignin loading (PETPL/10L) [Ex. 2; 0065]. The resulting (PETPL/10L) has a Tg of 86 oC {corresponding to a softening point 86 oC [0052; 0056]} [0085; Table 5, PETPL/10L].
Naskar et al. (US ‘007) does not specifically disclose an adhesive composition. However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Nejad et al. (US ‘125) provides evidence for Organosolv hardwood lignin having a Tg of 79 oC [0090; O-HW; Table 1, 7-O-HW].
Regarding claim 20: Naskar et al. (US ‘007) discloses (PETPL/30L) [Ex. 2; 0065] having a Tg of 98 oC {corresponding to a softening point 98 oC [0052; 0056]} [0085; Table 5, PETPL/30L], and a complex viscosity (η*) of ~ 10 Pa·s (~10,000 cP) at 240 oC and 10 rad/s [0018; 0069; 0088; Fig. 11A].
The claimed effects and physical properties, i.e. a viscosity of no greater than 100,000 cP at a temperature from 177 oC to 178 oC [instant claim 20], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claim(s) 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Naskar et al. (US 2020/0032007) as applied to claim 12 above, when taken with Casad, JR. (US 2021/0246608).
Regarding claim 14: Naskar et al. (US ‘007) discloses the basic claimed composition as set forth above with respect to claim 12]; wherein Naskar et al. (US ‘007) discloses Organosolv hardwood lignin (L) (depolymerized lignin) [0063].
Casad, JR. (US ‘608) provides evidence for Organosolv lignin as depolymerized lignin [0082].
Claim(s) 15-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Naskar et al. (US 2020/0032007), when taken with Nejad et al. (US 2024/0301125).
Regarding claims 15-17: Naskar et al. (US ‘007) discloses polyester lignin blends [0007; Ex. 2; 0062-0090], wherein Organosolv hardwood lignin (L) [0063] having a Tg of 79 oC and a weight average molecular weight (Mw) of 1486 g/mol [0073] was blended with polyethylene terephthalate (PET) containing 10 wt% plasticizer (tall oil fatty acid (TOFA) [0062]) (PETPL) at 30 wt% lignin loading (PETPL/30L) [Ex. 2; 0065]. The resulting (PETPL/30L) has a Tg of 98 oC {corresponding to a softening point 98 oC [0052; 0056]} [0085; Table 5, PETPL/30L], and a complex viscosity (η*) of ~ 10 Pa·s (~10,000 cP) at 240 oC and 10 rad/s [0018; 0069; 0088; Fig. 11A].
The claimed effects and physical properties, i.e. a viscosity of no greater than 100,000 cP at a temperature from 177 oC to 178 oC [instant claim 15], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Naskar et al. (US ‘007) does not specifically disclose an adhesive composition. However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Nejad et al. (US ‘125) provides evidence for Organosolv hardwood lignin having a Tg of 79 oC [0090; O-HW; Table 1, 7-O-HW].
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.
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) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naskar et al. (US 2020/0032007) as applied to claim 1 above, and further in view of Zhang et al. (CN 1121407). Zhang et al. (CN 1121407) English machine translation for citation.
Regarding claim 10: Naskar et al. (US ‘007) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Naskar et al. (US ‘007) discloses lignin [0028-0035] having various glass transition temperatures [0035].
Naskar et al. (US ‘007) does not disclose hydrogenated lignin. However, Zhang et al. (CN ’407) discloses hydrogenated lignin [abstract]. Naskar et al. (US ‘007) and Zhang et al. (CN ’407) are analogous art because they are concerned with a similar technical difficulty, namely lignin. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined hydrogenated lignin, as taught by Zhang et al. (CN ’407) in the invention of Naskar et al. (US ‘007), and would have been motivated to do so since Zhang et al. (CN ’407) suggests hydrogenated lignin reduces the softening point (glass transition temperature) of the lignin [abstract].
Claim(s) 5-6 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laleg et al. (WO 2019/153085) as applied to claim 1 above.
Regarding claims 5-6: Laleg et al. (WO ‘085) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Laleg et al. (WO ‘085) discloses the meltable lignin has a has a glass transition temperature of 30 oC to 120 oC [0044].
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) [See MPEP 2144.05].
Regarding claim 11: Laleg et al. (WO ‘085) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Laleg et al. (WO ‘085) discloses 60 wt% PLA and 40 wt% meltable lignin [Ex. IX; 00102; Table 5]. Laleg et al. (WO ‘085) discloses the composition can contain wax as a thermoplastic polymer [0042]
Laleg et al. (WO ‘085) does not specifically disclose Ex. IX containing wax. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included wax based on the invention of Laleg et al. (WO ‘085), and would have been motivated to do so since Laleg et al. (WO ‘085) suggests that the composition can contain wax [0042]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Laleg et al. (WO ‘085) does not specifically disclose 30 wt% PLA and 30 wt% wax. However, when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio (thereby affording 30 wt% PLA, 30 wt% wax and 40 wt% meltable lignin) a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference." (see In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)) [MPEP 2143].
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 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, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
