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 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 (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 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.
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 1-2 are ejected under 35 U.S.C. §103 as being unpatentable over Humphreys (US 2011/0209387 A1) in view of Harmer et al. (US 2010/0024810 A1), EP0005536B2, and Chum et al. (US 4,942,269).
Humphreys teaches production of renewable oil from lignocellulosic biomass, including • comminuting biomass feedstock (¶¶[0028]–[0033]);• forming a biomass slurry or wetted biomass mixture (¶¶[0034]–[0038]);• heating and subjecting the mixture to elevated temperature and pressure conditions (¶¶[0045]–[0053]);• cooling the reaction mixture after treatment (¶[0054]);• separating solid cellulose-containing residues from a liquid product fraction by filtration or solid-liquid separation (¶¶[0055]–[0058]); and• recovering a liquid oil-containing fraction (¶¶[0059]–[0062]).
Humphreys teaches swelling and solvent penetration into biomass pore spaces (¶111; ¶188–189) and recognizes that enhanced contact between solvent and biomass improves processing efficiency. Although Humphreys does not expressly use the term “high shear mixing tank,” it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ high shear mixing to reduce particle size and enhance solvent penetration into biomass pore structures, because high shear mixing is a well-known technique for increasing mass transfer and solvent accessibility in biomass processing systems. The use of high shear mixing represents a predictable optimization of mixing intensity to improve solvent infiltration as already taught by Humphreys.
Humphreys does not teach a 20 mesh screen as claimed.
Harmer teaches reducing biomass particle size such that the material “was knife milled to pass through a 20 mesh screen.” (Pall ¶[0072].)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to size-reduce the biomass of Humphreys to pass through a 20-mesh screen as taught by Harmer because selecting a known comminution screen size to improve surface area and process uniformity is a routine biomass preparation optimization.
Humphreys does not teach 0.5 micron absolute filter. However, Humphreys teaches filtering to remove cellulose-containing solids (¶¶[0055]–[0058]) but does not specify pore size.
EP0005536B2 teaches filter media having absolute particle removal ratings of 0.1 micrometer to 5 micrometers (¶[0023]) and further states such membranes “preferably have absolute removal ratings within the range from 0.1 micrometer to 5 micrometers” (¶[0026]) with working examples of absolute-rated filtration media (¶[0050]). A 0.5-micron absolute rating falls squarely within the expressly disclosed 0.1–5 µm range.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ a 0.5-micron absolute filter of the EP reference in Humphreys’ filtration step because selecting a known absolute-rated microfiltration cutoff within a disclosed range to enhance removal of suspended solids is a predictable design choice.
Humphreys does not teach a step of water wash / countercurrent extraction as claimed. Chum teaches:
• washing the solvent-soluble pyrolysis oil fraction with water to remove water-soluble materials (Col. 5, lines 28–36);
• further extracting with an aqueous alkali metal bicarbonate solution to remove strong organic acids and highly polar compounds (Col. 3, lines 41–54; Col. 6, lines 1–16);
• using water:oil ratios of 1:6 to 1:1 (Col. 5, lines 31–36);
• performing extraction in a countercurrent configuration in continuous operation(Col. 7, lines 33–48).
Chum therefore teaches washing and countercurrent extraction of biomass-derived oil streams to remove impurities including acids and polar compounds.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate Chum’s water washing and extraction techniques into Humphreys’ renewable oil process to remove impurities from the oil stream because Chum expressly teaches that such washing improves purity and downstream performance of biomass-derived oils. Applying a known purification technique to a similar biomass-derived oil stream constitutes the predictable use of prior art elements according to their established functions.
Claim 2. The modified process of Humphreys produce an oil product.
Claim 2 drawn to a product-by-process claim. It is reminded that a product-by-process claim is a product, NOT a process. In re Bridgeford, 357 F2d 679 USPQ 55 (CCPA 1966). It is patentability of the product claimed and NOT of the recited process steps which must be established. In re Brown, 459 F2d 531; 173 USPQ 685 (CCPA 1972).
In the event any differences can be shown for the product of the product-by-process claim 2, as opposed to the product taught by the references cited above, such differences would have been obvious to one having ordinary skill in the art as a routine modification of the product in the absence of a showing of unexpected results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAM M NGUYEN whose telephone number is (571)272-1452. The examiner can normally be reached Mon - Frid.
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/TAM M NGUYEN/Primary Examiner, Art Unit 1771