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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on October 2, 2025 has been entered.
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.
Claims 1-3, 7-8, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (Polymer Degradation and Stability 135, 2017, 54-60).
Considering Claim 1-3: Liu et al. teaches a process for producing a crude lignin oil comprising mixing lignin and isopropanol in the absence of a catalyst at a ratio of 1 g: 16 ml (Section 2.2) and treating the mixture at 100 to 180 ºC for 5-60 minutes (Section 2.2, Fig. 1).
Liu et al. is silent towards the pressure used in the reaction system. However, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. The pressure would control the solubility of the hydrogen produced from the hydrogen donating isopropanol, and thus would be considered to be a result effective variable. It would have been obvious to a person of ordinary skill in the art to have optimized the pressure through routine experimentation, and the motivation to do so would have been, to control the hydrogenation step of the depolymerization (Section 4).
Liu et al. teaches the solvent as being isopropanol. This has a close structural similarity with the claimed ethanol solvent, differing by a single CH2 group. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Isopropanol and ethanol have similar solvating properties due to the same functional group (hydroxyl group with a hydrocarbon chain), and both are hydrogen donating solvents in the lignin solvation process due to the hydroxyl group. As such, a person of ordinary skill in the art would expect the compounds to function in a substantially similar manner. It would have been obvious to a person of ordinary skill in the art to have substituted ethanol for the isopropanol of Liu et al., and the motivation to do so would have been, they would be expected to function similarly due to their similar structure and utility.
Liu et al. teaches a ratio of 1 g:16 ml, which is sufficiently close to the claimed range that a person of ordinary skill in the art would expect substantially similar properties. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See MPEP § 2144.05.
Alternatively, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have optimized the ratio of the lignin and solvent through routine experimentation, and the motivation to do so would have been to control the dissolution of the lignin fragments will minimizing the amount of solvent, and thus cost, needed in the process.
Considering Claims 7 and 18: Liu et al. does not teach the addition of water in the reaction system, and teaches the use of isopropanol, which is liquid at room temperature.
Considering Claim 8: Liu et al. teaches removing the solids remaining the system from the isopropanol, followed by the addition of tetrahydrofuran (Fig. 1).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (Polymer Degradation and Stability 135, 2017, 54-60).
Considering Claim 21: Liu et al. teaches a process for producing a crude lignin oil comprising mixing lignin and isopropanol in the absence of a catalyst at a ratio of 1 g: 16 ml (Section 2.2) and treating the mixture at 100 to 180 ºC for 5-60 minutes (Section 2.2, Fig. 1).
Liu et al. is silent towards the pressure used in the reaction system. However, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. The pressure would control the solubility of the hydrogen produced from the hydrogen donating isopropanol, and thus would be considered to be a result effective variable. It would have been obvious to a person of ordinary skill in the art to have optimized the pressure through routine experimentation, and the motivation to do so would have been, to control the hydrogenation step of the depolymerization (Section 4).
Liu et al. teaches the solvent as being isopropanol. This has a close structural similarity with the claimed ethanol solvent, differing by a single CH2 group. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Isopropanol and ethanol have similar solvating properties due to the same functional group (hydroxyl group with a hydrocarbon chain), and both are hydrogen donating solvents in the lignin solvation process due to the hydroxyl group. As such, a person of ordinary skill in the art would expect the compounds to function in a substantially similar manner. It would have been obvious to a person of ordinary skill in the art to have substituted ethanol for the isopropanol of Liu et al., and the motivation to do so would have been, they would be expected to function similarly due to their similar structure and utility.
Liu et al. teaches a ratio of 1 g:16 ml, which is sufficiently close to the claimed range that a person of ordinary skill in the art would expect substantially similar properties. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See MPEP § 2144.05.
Alternatively, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have optimized the ratio of the lignin and solvent through routine experimentation, and the motivation to do so would have been to control the dissolution of the lignin fragments will minimizing the amount of solvent, and thus cost, needed in the process.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (Polymer Degradation and Stability 135, 2017, 54-60).
Considering Claim 22: Liu et al. teaches a process for producing a crude lignin oil comprising mixing lignin and isopropanol in the absence of a catalyst at a ratio of 1 g: 16 ml (Section 2.2) and treating the mixture at 100 to 180 ºC for 5-60 minutes (Section 2.2, Fig. 1).
Liu et al. is silent towards the pressure used in the reaction system. However, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. The pressure would control the solubility of the hydrogen produced from the hydrogen donating isopropanol, and thus would be considered to be a result effective variable. It would have been obvious to a person of ordinary skill in the art to have optimized the pressure through routine experimentation, and the motivation to do so would have been, to control the hydrogenation step of the depolymerization (Section 4).
Liu et al. teaches the solvent as being isopropanol. This has a close structural similarity with the claimed ethanol or butanol solvent, differing by a single CH2 group. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Isopropanol, ethanol, and butanol have similar solvating properties due to the same functional group (hydroxyl group with a hydrocarbon chain), and both are hydrogen donating solvents in the lignin solvation process due to the hydroxyl group. As such, a person of ordinary skill in the art would expect the compounds to function in a substantially similar manner. It would have been obvious to a person of ordinary skill in the art to have substituted ethanol for the isopropanol of Liu et al., and the motivation to do so would have been, they would be expected to function similarly due to their similar structure and utility.
Liu et al. teaches a ratio of 1 g:16 ml, which is sufficiently close to the claimed range that a person of ordinary skill in the art would expect substantially similar properties. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See MPEP § 2144.05.
Alternatively, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have optimized the ratio of the lignin and solvent through routine experimentation, and the motivation to do so would have been to control the dissolution of the lignin fragments will minimizing the amount of solvent, and thus cost, needed in the process.
Response to Arguments
Applicant’s arguments with respect to claims 1-4, 6-8, 18, 21, and 22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767