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 28-29 and 34 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Bjorkman (Lignin and Lignin-Carbohydrate Complexes, Industrial and Engineering Chemistry, 1957, vol. 49, No. 9, pages 1395-1398) (cited in the IDS filed on 10/08/2025).
Regarding claims 28-29, Bjorkman teaches lignin and lignin carbohydrate complexes (Title) which has a slightly cream-color in the form of a powder. (page 1396, middle column). The disclosure of a “cream color” is sufficient to meet the limitation of a “white lignin” as claimed in the preamble and the lignin satisfies (c) because Bjorkman teaches that the lignin is soluble in acetic acid. (page 1396, center column and page 1398, left column). While Bjorkman does not specifically teach the solubility index of the lignin in deuterated acetic acid, given that Bjorkman teaches dissolving the lignin therein, the lignin is implied to be fully soluble, giving a solubility index value that would be as high as possible and would therefore inherently lie within the presently claimed range of 50 or more.
Alternatively, given the fact that Bjorkman dissolves the lignin in acetic acid in order to precipitate it later in water (page 1396, center column), one of ordinary skill in the art would have found it obvious to optimize the degree of solubility of the lignin in the acetic acid. "Where 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 (CCPA 1955). MPEP 2144.05 (II). One of ordinary skill in the art would have found it obvious to optimize the solubility index of the lignin in order to ensure that the lignin sufficiently dissolves in the acetic acid to perform the synthesis as disclosed in Bjorkman.
Regarding claim 34, given that the lignin disclosed in Bjorkman is disclosed as a cream color, the white hue would contribute to reflection, absorption or scattering of UV rays.
Claim 33 is rejected under 35 U.S.C. 103 as obvious over Bjorkman (Lignin and Lignin-Carbohydrate Complexes, Industrial and Engineering Chemistry, 1957, vol. 49, No. 9, pages 1395-1398), further in view of Forsman et al. (U.S. App. Pub. No. 2023/0220193).
Bjorkman is relied upon as described in the rejection of claim 28, above.
Regarding claim 33, Bjorkman teaches dispersing the lignin in water but does not disclose the zeta potential thereof.
Forsman et al. teaches a composition including colloidal lignin particles which are mixed with an epoxy compound. (Abstract). Forsman et al. teaches that the colloidal lignin should have a zeta potential in the range of -100 to 50 mV for controlling how much the particles aggregate with one another, which overlaps with the presently claimed range. (par. [0059]).
It would have been obvious to one of ordinary skill in the art to optimize the zeta potential of the lignin material disclosed in Bjorkman in view of the teachings of Forsman et al.
One of ordinary skill in the art would have found it obvious to optimize the zeta potential in order to control the degree of aggregation of the lignin in solution.
Claims 28-29, 31 and 34 are rejected under 35 U.S.C. 103 as obvious over Shikinaka et al. (JP2021-017582) (cited in the IDS filed on 04/26/2024) in view of Balakshin et al. (U.S. App. Pub. No. 2017/0044328 and Falkehag (U.S. Pat. No. 3,763,139).
Regarding claims 28-29, Shikinaka et al. teaches a method of making decolorized, white lignin. (par. [0001]). Shikinaka et al. teaches that the white lignin has a L* value of 80 or more (par. [0052]), which overlaps with the range of a Hunter’s whiteness of 60 or more as claimed.
Shikinaka et al. does not disclose requirements (A) or (B) under (b) as presently claimed. Shikinaka et al. teaches that the content phenolic hydroxyl groups (which is indicative of the oxidation degree of the lignin) alters the overall color (dark vs light) of the lignin material. (par. [0018]-[0020]).
Balakshin et al. teaches a method of functionalizing lignin including a phenolic hydroxy content of less than about 70 and a beta-O-4 content of at least 10, overlapping with the presently claimed ranges. (par. [0008]and [0085]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would have been obvious to one of ordinary skill in the art to optimize the beta-O-4 content as well as the phenolic hydroxy content (i.e. oxidation value) of the lignin in Shikinaka et al. based on the teachings of Balakshin et al.
One of ordinary skill in the art would have found it obvious to optimize the beta-O-4 content and phenolic hydroxy content of the lignin material in order to control the material properties thereof including the overall coloration/darkness of the material. Furthermore, based on the teachings of Balakshin et al. that such a beta-O-4 content and phenolic hydroxy content are achievable and workable for lignin materials, one of ordinary skill in the art would have a reasonable expectation of success that adjusting the values into the disclosed ranges would result in a lignin having useful properties that may be commercialized.
Regarding claim 31, the lignin material of Shikinaka et al. is provided in the form of nanoparticles having a size of 30-40 nm, overlapping with the presently claimed range. (see Example 1).
Regarding claim 34, given that the lignin disclosed in Shikinaka is disclosed as a white color, the white hue would contribute to reflection, absorption or scattering of UV rays.
Claim 30 is rejected under 35 U.S.C. 103 as obvious over Shikinaka et al. (JP2021-017582) (cited in the IDS filed on 04/26/2024) in view of Balakshin et al. (U.S. App. Pub. No. 2017/0044328 and Falkehag (U.S. Pat. No. 3,763,139), further in view of Xiong et al. (ACS Sustainable Chem. Eng., 2017, 5, 2273-2281).
Shikinaka in view of Balakshin is relied upon as described in the rejection of claim 28, above.
Shikinaka et al. does not teach a self-assembled body of hollow spherical particles.
Xiong et al. teaches a formation of self-assembled spherical structure including a hollow region. (Abstract). Xiong et al. that these structures are known in the art and are of interest due to their enhanced uptake capacity, diffusivity and catalytic performance.
It would have been obvious to one of ordinary skill in the art to make self-assembled body of hollow spherical particles from the lignin material disclosed in Shikinaka et al.
One of ordinary skill in the art would have found it obvious to make self-assembled body of hollow spherical particles from the lignin material in view of their known enhanced properties such as uptake capacity, diffusivity and catalytic performance.
Claim 33 is rejected under 35 U.S.C. 103 as obvious over Shikinaka et al. (JP2021-017582) (cited in the IDS filed on 04/26/2024) in view of Balakshin et al. (U.S. App. Pub. No. 2017/0044328 and Falkehag (U.S. Pat. No. 3,763,139), further in view of Forsman et al. (U.S. App. Pub. No. 2023/0220193).
Shikinaka in view of Balakshin et al. is relied upon as described in the rejection of claim 28, above.
Shikinaka et al. does not disclose the zeta potential of the lignin.
Forsman et al. teaches a composition including colloidal lignin particles which are mixed with an epoxy compound. (Abstract). Forsman et al. teaches that the colloidal lignin should have a zeta potential in the range of -100 to 50 mV for controlling how much the particles aggregate with one another, which overlaps with the presently claimed range. (par. [0059]).
It would have been obvious to one of ordinary skill in the art to optimize the zeta potential of the lignin material disclosed in Shikinaka in view of the teachings of Forsman et al.
One of ordinary skill in the art would have found it obvious to optimize the zeta potential in order to control the degree of aggregation of the lignin in solution.
Allowable Subject Matter
Claim 32 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 03/05/2026