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 .
Status of the Application
Claims 1-20 are pending and under current examination.
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 1-20 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 1-20 are indefinite as:
Claim 1 recites “produced from a reductive---fractionation using a Co/Mn/Br----autooxidation system”. This is because it is unclear how reductive catalytic fractionation is produced using an autooxidation system. In other words, how oxidation system is working as reduction system.
Since the dependent claims don’t cure the deficiencies, these claims are also indefinite.
Claims 7, 14 and 15 are indefinite as these claims lacks antecedent basis for lignin oligomers; and oligomers.
Appropriate correction required.
Claim Rejections - 35 USC § 103
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 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 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 of this title, 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
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 1-17, 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Beckham (US20160017381A1), Stahl (US 20220127217A1) and Yuan (Journal of Catalysis, 2016, 339, 284-291) in combination.
Determining the scope and contents of the prior art
Beckham teaches a process of depolymerizing lignin using thermal, biological and/or catalytic processes to monomers, such as p-hydroxybenzoic acid, vanillin, vanillic acid, syringic acid etc., followed by metabolization by genetically modified bacterium Pseudomonas species to cis, cis-muconic acid (entire application, especially abstract, figures, paragraph 0058-0088).
Stahl teaches method of depolymerizing lignin to monomers, such as p-hydroxybenzoic acid, vanillin, vanillic acid, syringic acid, ferulic acid, coumaric acid etc., using catalyst combination, such as Mn (OAC)2 and Co (OAC)2 in contact with O2 gas, such as 1%v/v to 10 v/v, partial pressure about 5bar or more at temperature from about 100-240C, such as 125C, for 0.5hr, 1hr etc., to obtain desired product in presence of polar solvent, aprotic solvent, nonpolar solvent etc. (entire application, especially abstract, figures, paragraphs 0006-0069)
Yuan teaches oxidation and method of producing aromatic acids by oxidation of aldehydes, alcohols ester and cleavage of C-C bond using combination of Mn (OAC)2. Co (OAC)2. KBr in presence of oxygen, acetic acid and/or methanol (entire article).
Ascertaining the differences between the prior art and the claims at issue
Beckham teaches a process of depolymerizing lignin using thermal, biological and/or catalytic processes to monomers, such as p-hydroxybenzoic acid, vanillin, vanillic acid, syringic acid etc., followed by metabolization by genetically modified bacterium Pseudomonas species to cis, cis-muconic acid, but fails to teach specific step of depolymerizing lignin.
Stahl teaches method of depolymerizing lignin to monomers, such as p-hydroxybenzoic acid, vanillin, vanillic acid, syringic acid, ferulic acid, coumaric acid etc., using catalyst combination, such as Mn (OAC)2 and Co (OAC)2 in an amount, such as 1%, 5%, 10% etc., in contact with O2 gas, such as 1%v/v to 10 v/v, partial pressure about 5bar or more at temperature from about 100-240C, such as 125C, for 0.5hr, 1hr etc., to obtain desired product in presence of polar solvent, aprotic solvent, nonpolar solvent etc., but fails to teach metabolizing lignin monomers by genetically modified bacterium Pseudomonas species to cis, cis-muconic acid; and Br salt with the catalyst.
Yuan teaches oxidation and method of producing aromatic acids by oxidation of aldehydes, alcohols ester and cleavage of C-C bond using combination of Mn (OAC)2. Co (OAC)2. KBr (or NaBr) in presence of oxygen, acetic acid and/or methanol, but fails to teach using catalyst in processing of lignin.
Resolving the level of ordinary skill in the pertinent art
Thus, with the guidance provided by combination of Beckham, Stahl and Yuan, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that lignin depolymerization to monomers, such as p-hydroxybenzoic acid, vanillin, vanillic acid, syringic acid, ferulic acid, coumaric acid etc., may be carried out using catalyst combination, such as Mn (OAC)2.Co (OAC)2.KBr (or NaBr) followed by metabolization by genetically modified bacterium Pseudomonas species to cis, cis-muconic acid. This is because Beckham teaches depolymerizing lignin using thermal, biological and/or catalytic processes to monomers, such as p-hydroxybenzoic acid, vanillin, vanillic acid, syringic acid etc., followed by metabolization by genetically modified bacterium Pseudomonas species to cis, cis-muconic acid and Stahl and Yuan provides specific catalytic process that may be useful to obtain such monomers, which can be metabolized by bacterium.
With regards to limitation acetylated oligomers produced from reductive catalytic fractionation; lignin RCF oils – Since the cited prior art teaches producing monomers from any lignin fractionation and catalyst is same as in the instant claims, it would have been prima facie obvious that the catalyst of the cited prior art may produce monomers from reductive catalytic fraction and derived from any lignin or RCF oils.
With regards to limitation 17% increase in yield---reductive catalytic fractionation– Since the cited prior art teaches producing monomers from any lignin fractionation and catalyst is same as in the instant claims, the process of the cited prior art is also expected to produce same yield as in the instant process.
With regards to differences in concentration of catalyst to lignin oligomers, such difference, will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration 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). Moreover, it is noted that all of the recited reaction parameters are recognized as result-effective variables, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
Therefore, combination reads applicants claims.
Based on the above established facts, it appears that the combination of teachings of above cited prior art read applicants’ process.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Beckham teaches a process of depolymerizing lignin using thermal, biological and/or catalytic processes to monomers, such as p-hydroxybenzoic acid, vanillin, vanillic acid, syringic acid etc., followed by metabolization by genetically modified bacterium Pseudomonas species to cis, cis-muconic acid; Stahl teaches method of depolymerizing lignin to monomers, such as p-hydroxybenzoic acid, vanillin, vanillic acid, syringic acid, ferulic acid, coumaric acid etc., using catalyst combination, such as Mn (OAC)2 and Co (OAC)2 in contact with O2 gas, such as 1%v/v to 10 v/v, partial pressure about 5bar or more at temperature from about 100-240C, such as 125C, for 0.5hr, 1hr etc., to obtain desired product in presence of polar solvent, aprotic solvent, nonpolar solvent etc.; and Yuan teaches oxidation and method of producing aromatic acids by oxidation of aldehydes, alcohols ester and cleavage of C-C bond using combination of Mn (OAC)2. Co (OAC)2. KBr (or NaBr) in presence of oxygen, acetic acid and/or methanol.
So, the combination of prior art read applicants claims.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is a reasonable expectation of success that lignin depolymerization to monomers, such as p-hydroxybenzoic acid, vanillin, vanillic acid, syringic acid, ferulic acid, coumaric acid etc., may be carried out using catalyst combination, such as Mn (OAC)2.Co (OAC)2.KBr (or NaBr) followed by metabolization by genetically modified bacterium Pseudomonas species to cis, cis-muconic acid and can be made by combination of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention by taking advantage of the teaching of the above cited references and to make the instantly claimed process with a reasonable expectation of success. Modifying such parameters is prima facie obvious because an ordinary artisan would be motivated to develop an alternative process for economic reasons or convenient purposes from a known individual reaction steps, and to arrive at applicant’s process with a reasonable expectation of success, since it is within the scope to modify the process through a routine experimentation.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are provisionally rejected under the judicially created doctrine of double patenting over claims 1-20 of co-pending Application No.18/626205. This is a provisional double patenting rejection since the conflicting claims have not yet been patented.
The subject matter claimed in the instant application is fully disclosed in the referenced co-pending application and would be covered by any patent granted on that co-pending application since the referenced co-pending application and the instant application are claiming common subject matter, as follows:
Given the fact pattern of the instant case as well as the co-pending application the claims of the co-pending application are an obvious variation of the claims in the instant application. The step of – “reductive catalytic fractionation with a mixture of a cobalt salt, a manganese salt and a bromine salt”, in claim 1 of the instant application as compared to co-pending claim 1 – wherein “reductive catalytic fractionation uses a mixture of a manganese salt and a zirconium salt appear to be an obvious variation given the teachings in the co-pending application for the alternate use of the mixture(s) in reductive catalytic fractionation. See below [§0022] in co-pending application.
[0022] Despite these promising initial reports, additional systems are needed that can catalytically cleave C—C bonds in lignin to utilize lignin more effectively and offer product flexibility for downstream lignin valorization to useful products. To this end, autoxidation, the radical-chain propagated reaction involving oxygen, occurs throughout nature and has enormous industrial relevance (e.g., production of cumene, cyclohexanone and cyclohexanol, terephthalic acid and other aromatic carboxylic acids, and alkyd paints). Various metals (often Co and Mn) catalyze autoxidation by breaking down hydroperoxides via the Haber-Weiss reaction. Furthermore, the free radicals formed can undergo C—C bond cleavage via B-scission. Others have showed that the Co/Mn/Zr/Br system can cleave C—C bonds in several common plastics, and others demonstrated production of monomers from various lignin sources and aryl-ether model compounds. In companion studies to this work, we demonstrated C—C bond cleavage of both mixed plastics and an acetyl-protected poplar RCF oligomer substrate using Co and Mn autoxidation catalysis.
Conclusion
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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