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/SE2022/050694 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 SWEDEN 2150944-3 07/15/2021 filed on 01/12/24.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 01/12/24, 05/22/25, 05/23/25 have 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 3-5, 7, 11-14, 17-26 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.
Claims 3, 17, 18, each recites a lignin content percentage (at least 10%, at least 5%, no more than 5%) without stating whether it is weight percent, volume percent, or percentage of more than one basis (dry, solid, total stream mass etc.). Percentage limitation without a stated basis are a recognized definiteness problem (MPEP 2173.05(b)) because the actual numerical boundary of the claim shifts depending on the (unstated) basis.
In claim 20, the term “valuable” of ‘valuable organic compounds’ in is a relative term which renders the claim indefinite. The term “valuable” 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. “Valuable” is a term of degree with no objective standard given (valuable to whom, by what measure – market price, process yield, purity?).
In claim 21, the term “purified” is a relative term which renders the claim indefinite. The term “purified” 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. Purified standing alone, with no stated end point, threshold, or removed impurity metric.
In claim 26, the term “rich” of ‘organic-rich char’ in is a relative term which renders the claim indefinite. The term “rich” 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. No stated threshold or organic content distinguishing “rich” from ordinary char.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance,
Claims 4-5, 7, 11-14, 17-19, 21-22, 24-25 recites the broad limitation followed by narrow limitations designated by “preferably X,” and/or “more preferably Y,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 23 depends from rejected claim 22.
Appropriate correction is required.
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.
Claims 1-5, 7-15, 19, 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Furusjo (E. Furusjo et al, Mixing of fast pyrolysis oil and black liquor: preparing an improved gasification feedstock Energy Fuels 2016, 30, 10575−10582) in view of Lake (US 2011/0294991).
Regarding claims 1-2, 15, 19, Furusjo discloses mixing fast-pyrolysis oil from biomass with Kraft black liquor implicitly have heterogeneous stream, wherein acids contained in the pyrolysis oil cause precipitation of dissolved lignin from black liquor (abstract, experimental, result and discussion). Thus, Furusjo teaches the combination black liquor and acidic pyrolysis oil result in lignin precipitation.
Lake discloses acidifying black liquor so that lignin becomes insoluble and the resulting material separates into a dense lignin-rich liquid phase, and a light lignin-depleted phase containing cooking chemical such as NaOH (para [0012]-[0014], [0029]) read on separation by density differences of claim 15. Lake further discloses recovering the dense phase separately and returning the light phase to the pulp-mill recovery process (para [0032]).
A person of having ordinary skill in the art seeking to recover lignin from the pyrolysis-oil/black-liquor mixture of Furusjo would have had reason to employ the established liquid-lignin phase-separation process of Lake because the prior arts address complementary portions of the same process problem. Furusjo teaches that acidic pyrolysis oil mixed with black liquor precipitates lignin and Lake teaches that acidified black liquor can form a dense lignin rich phase and a light lignin-depleted phase and that those phases can be separated.
The proposed combination therefore does not require discovering an unknown chemical interaction. It uses the known acidic character of pyrolysis oil for the known purpose of causing lignin precipitation and then applies a known lignin-phase separation technique to the resulting mixture. The combination is accordingly a combination of known elements according to their established functions with the expected result of recovering a lignin-rich phase.
Regarding claim 3, Furusjo discloses lignin content 40-70% (page 10579, para 3), fall into claimed range of at least 10%.
Regarding claim 4, Furusjo discloses fast pyrolysis oil having CAN 55 and TAN 146 (table 2), fall into claimed range of CAN more than 20 and TAN more than 145.
Regarding claim 5, Furusjo discloses mixing of five different fast pyrolysis oil, at least one having CAN 55 and TAN 146 (table 2, page 10576, para 3), fall into claimed range of CAN more than 20 and TAN more than 145.
Regarding claims 7-8, Furusjo discloses fast pyrolysis oil having CAN 55 and TAN 146 (table 2), fall into claimed range of CAN 20-200 and TAN20-210.
Regarding claim 9, Furusjo discloses biogenic gas (page 10579, para 3; carbon dioxide).
Regarding claims 10-11, Furusjo discloses Smurfit Kappa Kraftliner Piteå pulp
Mill (page 10576, para 2; read on Kraft).
Regarding claim 12, Furusjo discloses pyrolysis oil 20% to 50% by mass (abstract; black oil remains 70% to 50% by mass), fall into claimed ratio of black oil to acidic biomass in the ratio of 1.0.2 to 1:10.
Regarding claim 13, Furusjo discloses pyrolysis oil 20% to 50% by mass (abstract; black oil remains 70% to 50% by mass) and the acid number TAN 127-176, fall into claimed ratio of black oil to acidic biomass in the ratio of 1.0.2 to 1:2 and acid number 210 to 20.
Regarding claim 14, Furusjo discloses mixing temperature 90 0C (page 10576, para 7), fall into claimed range of 20 to 120 0C.
Regarding claim 21-24, Lake provides additional purification and washing steps in which a dense lignin rich phase is first recovered and then acidified with strong acid followed by washing to remove acidic residue, wherein purified black liquor contains 30-40% aqueous phase, wherein the thermochemical conversion produces a bio char product, thereby generating solid purified lignin (para [0029]-[0033], [0043], [0045], claims, examples).
It would have been obvious to one with ordinary skill, in the art at the time of invention, to apply Lake’s acidification, washing, and thermochemical conversion to the, Furusjo. Such modification would have been predictable application of a known lignin purification technique to remove residual inorganic material, acid, salts, and metals cations from recovered lignin, thereby obtain purified lignin.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Furusjo in view of Lake as applied to claim 1 above, and further in view of Bjorklund (US 9266917).
Furusjo includes the features of claim 1 above.
Regarding claim 6, Furusjo does not disclose combining the black liquor with another mill stream having pH below 7 before addition of the acidic biomass.
However, Bjorklund discloses a two stage acidification of black liquor, a first mild acidifier charge that lowers pH while avoiding significant precipitation, followed by second charge that drives the bulk of the precipitation, wherein mill generated waste flows as first stage acidifier to solve the waste disposal problem and lessen environmental impact, having lime kiln flue gas as specific example (claims, column 1, lines 27-36).
It would have been obvious to one with ordinary skill, in the art at the time of invention, to apply in Furusjo staged acidification technique to reacidify with an available mill stream before adding the primary acidic biomass stream, as taught by Bjorklund. The rationale to do so would have been motivation provided by Bjorklund that to do so would conserve the primary acidifying agent and solve a waste disposal problem.
Claim 16 , 25 are rejected under 35 U.S.C. 103 as being unpatentable over Furusjo in view of Lake as applied to claim 1 above, and further in view of Naae (US 2013/0212930).
Furusjo includes the features of claim 1 above.
Regarding claims 16, 25, Furusjo does not disclose the separated lignin containing heavy stream has a total acid number 1-10.
However, Naae discloses a pyrolyzed lignin bio-oil having a total acid number of 7 (para [0039], example 2, claims), fall into claimed range of 1-10.
It would have been obvious to one with ordinary skill, in the art at the time of invention, to select a pyrolyzed lignin derived acidic material having total acid number 7 in the modified Furusjo, as taught by Naae. The selection would have involved applying a known acidity parameter to a known lignin derived material for the same purpose of controlling the acidity of lignin containing system. Accordingly, the combination of modified Furusjo and Naae would have rendered obvious the instantly claimed subject matter.
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Furusjo in view of Lake as applied to claim 1 above, and further in view of Valkonen (US 2015/0203522).
Furusjo includes the features of claim 1 above.
Regarding claim 17, Furusjo does not disclose the aqueous light phase stream has a lignin content of at least 5% at a pH level of at least 4.
However, Valkonen discloses an aqueous lignin containing phase associated with lignin separation having a disclosed lignin content of at least 5 wt%, and further teaches operation at pH range 3-4 (para [0014]-[0016], [0026]-[0033]), overlapping the claimed range at least 4 at end point.
It would have been obvious to one with ordinary skill, in the art at the time of invention to apply the teaching of Valkonen to Furusjo to get the aqueous lignin contenet at least 5 wt% at pH 3-4 which address the same black liquor lignin separation environment and provides known technique for processing the lignin containing aqueous filtrate remaining after lignin precipitation and separation. Applying this known filtrate processing technique would have provided the predictable result of obtaining and processing an aqueous lignin containing phase having the disclosed lignin concentration and pH conditions.
The examiner takes note of the fact that the prior art range of pH 3-4 overlaps the claimed range of at least 4 at an end point. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Regarding claim 18, Furusjo discloses pyrolysis oil 20% to 50% by mass (abstract; black oil remains 70% to 50% by mass), fall into claimed ratio of black oil to acidic biomass in the ratio up to 1:10. Furusjo does not disclose the aqueous light phase stream has a lignin content of no more than 5% at a pH level of below 4.
However, Valkonen discloses an aqueous lignin containing phase associated with lignin separation having a disclosed lignin content of at least 5 wt%, and further teaches operation at pH range 3-4 (para [0014]-[0016], [0026]-[0033]), overlapping the claimed range no more than 5 wt% at end point.
It would have been obvious to one with ordinary skill, in the art at the time of invention to apply the teaching of Valkonen to Furusjo to get the aqueous lignin contenet at least 5 wt% at pH 3-4 which address the same black liquor lignin separation environment and provides known technique for processing the lignin containing aqueous filtrate remaining after lignin precipitation and separation. Applying this known filtrate processing technique would have provided the predictable result of obtaining and processing an aqueous lignin containing phase having the disclosed lignin concentration and pH conditions.
The examiner takes note of the fact that the prior art range of at least 5 wt% overlaps the claimed range of no more than 5 wt% an end point. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Claims 20, 26 are rejected under 35 U.S.C. 103 as being unpatentable over Furusjo in view of Lake as applied to claim 1 above, and further in view of Li (K. Li et al, Membrane separation of the base-catalyzed depolymerization of black liquor retentate for low-molecular-mass compound production, Membranes 2019, 9, 102, page 1-16).
Furusjo includes the features of claim 1 above.
Regarding claim 20, Furusjo does not disclose water-soluble valuable
organic compounds with a molecular weight below 200 g/mole are at least partially isolated from the aqueous light phase stream before said stream comprising cooking
chemicals are recycled.
However, Li discloses black liquor was depolymerized and then subjected to the membrane separation to isolate low mass compound organic compound in the range of 200-1000 Da (page 2, para 2-3), overlapping at end point claimed range below 200 g/mol.
It would have been obvious to one with ordinary skill, in the art at the time of invention to apply membrane separation technique of Li to the aqueous light phase of modified Furusjo’s process to recover valuable water soluble low molecular weight organic compounds before recycling the remaining aqueous phase. Such separation would have been a predictable application of known membrane fractionation technique for recovering valuable low molecular weight organic compounds for black liquor drived aqueous phase.
The examiner takes note of the fact that the prior art range of 200-1000 Da overlaps the claimed range of below 200 g/mol at an end point. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Regarding claim 26, Furusjo does not disclose the aqueous light phase stream is subjected to wet thermochemical treatment at sub- or supercritical temperatures and pressures where an organic-rich char is produced.
However, Li discloses subjecting a black liquor derived lignin containing material to thermochemical treatment in an aqueous medium at elevated temperature and pressure, wherein the insoluble high molecular weight material and char product through lignin repolymerization formed during thermochemical treatment (page 2, para 3, page 3, para 1).
It would have been obvious to one with ordinary skill, in the art at the time of invention to subject the aqueous lignin containing phase of modified Furusji’s process to the aqueous thermochemical treatment, taught by Li, thereby further processing the lignin containing stream and producing known thermochemical products, including char. The modification would have involved applying a known thermochemical treatment to a known lignin containing aqueous material under the disclosed elevated temperature and pressure.
Conclusion
References Schinski (US 2009/0218062), Zhu (CN 100445464), da Silva ("Organic acids as a greener alternative for the precipitation of hardwood kraft lignins from the industrial black liquor", In: International Journal of Biological Macromolecules, 2019, Nov., Vol. 142, pp. 583- 591), and Ge (CN 102733230) were cumulative in nature to the above rejection and thus not set forth.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RANDY P GULAKOWSKI can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
