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.
Priority
3. This application is a 371 of PCT/EP2022/068997 07/07/2022.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application EP 21184161.4 07/07/2021 filed on 01/05/24.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 01/05/24 has been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
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 1-11 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 1, the recitation “A method of obtaining from a solution comprising solubilized lignin, a fraction of lignin which is enriched in aliphatic OH, content, in phenolic OH content, or in a molecular weight range” is unclear. There are different interpretations, for instance, the preamble is interpreted as a method of obtaining ‘a fraction of lignin which is enriched in aliphatic OH, content, in phenolic OH content, or in a molecular weight range’ from a solution comprising solubilised lignin.’ If the body of the claim is considered then it is interpreted as the method is directed to obtaining insoluble lignin (please See step b)). If the purpose requires it, a proper link must be established. Such as “a method of obtaining insoluble lignin” and ‘the insoluble lignin is a fraction which is enriched in aliphatic OH, content, in phenolic OH content, or in a molecular weight range.’
In claim 1, the recitation “in a molecular weight range” is unclear because there is nothing in the claim and/or specification to show for what the “in a molecular weight range” represents?
In claims 1-3, 5-6, 10 the recitation “Solubilsed lignin” is unclear and what exactly the ‘Solubilsed’ represent? There is nothing in the claim and/or specification to defines the “Solubilsed lignin.” It has been noted that example 1 states “Freeze dried lignin.” Accordingly, in current Office action, no weightage given to the term “solublised.” Applicants are required to either define “solubilized” or delete it.
Claims 2-11 depends from rejected claim 1.
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 11 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.
Claim 11 provides use of the method according to claim 1, for enriching from a crude fraction of lignin, a fraction of lignin which is enriched in aliphatic OH content, in phenolic OH content, or in a molecular weight range, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim Rejections - 35 USC § 101
9. Claim 11 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
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.
11. Claims 1, 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (L. Chen et al, Rapid and near-complete dissolution of wood lignin at <80°C by a recyclable acid hydrotrope, Science Advances, 2017, 3, e1701735, pages 1-11; and Supplementary materials of the same article (hereinafter called “Supplementary Materials Science Advances, 2017, 3, e1701735”).
Regarding claim 1, Chen discloses a method for separating lignin fractions by diluting a lignin solution comprising a hydrotrope (p-TsOH) (see in particular para "Separation of dissolved lignin" on page 4, Figures 1 and 2 and Table 1). In Table 2 the effect of the method on the molecular weight range is reported. Chen discloses on page 8 that the spent liquor after the first treatment with p-TsOH can be diluted (page 8 under Figure 6). Supplementary Materials Science Advances, 2017, 3, e1701735 show that at least 2 cycles were repeated, wherein p-TsOH is diluted twice (see also Tables S1 and S2) and lignin is precipitated and isolated. Thus, the two steps a) and b) of present claim 1 are disclosed by Chen.
Regarding claim 11, since the process is known in prior art Chen, the enrichment in aliphatic OH, phenolic OH or molecular weight range after treatment are implicit in Chen- thus the use of such process for enriching a fraction of lignin in aliphatic OH, phenolic OH or molecular weight range cannot be new.
12. Claims 1, 4, 6-8, 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Korpinen (R. Korpinen et al, Lignin extraction from wood biomass by a hydrotropic solution, Popel, 2009, 70(5), 69-82).
Regarding claims 1, 7, Korpinen discloses a method of obtaining insoluble lignin, the method comprising the steps of adding water to a solution comprising lignin and a hydrotrope such sodium xylenesulfonate (SXS) thereby lowering the hydrotrope concentration, until a part of the lignin becomes insoluble, and b) isolating the insoluble lignin, repeating steps a) and b) one or more times wherein the hydrotrope concentration is further lowered by the addition of water (page 71, para 2-, page 72, para -2, page 73, para -2, page 78, -para 4).
Regarding claim 4, Korpinen discloses step a) is performed at 5 0C (table 3), fall into claimed range of below 40 0C.
Regarding claim 6, Korpinen discloses concentration of hydrotrope of 30% (page 71, para 4).
Regarding claim 8, Korpinen discloses concentration of hydrotrope of 40%, 30% to 10% by addition of water (page 71, para 4; read on stepwise or continuously decreased to down 10%).
Regarding claim 10, Korpinen discloses concentration of hydrotrope of 40% to 10% by addition of water (page 71, para 4) fall into on three fold to five fold dilution.
Regarding claim 11, since the process is known in prior art Korpinen, the enrichment in aliphatic OH, phenolic OH or molecular weight range after treatment are implicit in Korpinen - thus the use of such process for enriching a fraction of lignin in aliphatic OH, phenolic OH or molecular weight range cannot be new.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Chen as applied to claim 1 above.
Chen includes the features of claim 1 above.
Regarding claim 4, Chen discloses the step a), e.g. water addition in lignin and hydrotrope (p-TsOH) at 80 0C or lower (page 2-I, para 1; page 8-II, para 2 ), encompassing claimed range of below 40 0C.
A prima facie case of obviousness exists for the method, wherein Chen discloses 80 0C or lower, encompassing the requirement of claim 4. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Chen as applied to claim 1 above, and further in view of Eskelinen (US 2015/ 0183813).
Chen includes the features of claim 1 above.
Regarding claims 2-3, Chen does not disclose more than 93% lignin or the lignin is kraft lignin.
However, Eskelinen discloses a method of fractionation of lignin wherein the lignin is kraft lignin containing at least 90% pure lignin for various applications (para [0014]-[0018], [0040]-[0042]), encompassing claimed range of more than 93%. Chen and Eskelinen are pertinent to fractionation of lignin.
At the time of invention, it would have been obvious to one of ordinary skill in the art to use in Chen the kraft lignin containing the amount at least 90% pure lignin, as taught by Eskelinen. The rationale to do so would have been motivation provided by of Eskelinen that to do so would provide lignin in the high purity for the various applications.
A prima facie case of obviousness exists for the method, wherein Eskelinen discloses at least 90% pure lignin, encompassing the requirement of claim 2. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Korpinen as applied to claim 1 above, and further in view of Eskelinen (US 2015/ 0183813).
Korpinen includes the features of claim 1 above.
Regarding claims 2-3, Korpinen does not disclose more than 93% lignin or the lignin is kraft lignin.
However, Eskelinen discloses a method of fractionation of lignin wherein the lignin is kraft lignin containing at least 90% pure lignin for various applications (para [0014]-[0018], [0040]-[0042]), encompassing claimed range of more than 93%. Korpinen and Eskelinen are pertinent to fractionation of lignin.
At the time of invention, it would have been obvious to one of ordinary skill in the art to use in Korpinen the kraft lignin containing the amount at least 90% pure lignin, as taught by Eskelinen. The rationale to do so would have been motivation provided by of Eskelinen that to do so would provide lignin in the high purity for the various applications.
A prima facie case of obviousness exists for the method, wherein Eskelinen discloses at least 90% pure lignin, encompassing the requirement of claim 2. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Korpinen as applied to claim 1 above.
Korpinen includes the features of claim 1 above.
Regarding claim 5, Korpinen discloses lignin and hydrotrope concentration of 6.9 g/L to 24.3 g/L (Figure 3, page 78, para 3), close enough to claimed 25 to 100 g lignite/L. “The claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties.” In re Peterson, 315 F.3d at 1329, citing Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Closest prior arts are Chen, Korpinen, and Eskelinen.
Claim 9 require the hydrotrope is SCS and wherein the concentration of SCS is decreased stepwise or continuously down to 6 wl% SCS, typically stepwise decreased.
Closest prior arts Chen, Korpinen, and/or Eskelinen discloses fractionation of lignin in presence of hydrotropes but neither Chen, Korpinen, nor Eskelinen teaches or suggests the hydrotrope is SCS and wherein the concentration of SCS is decreased stepwise or continuously down to 6 wl% SCS, typically stepwise decreased.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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