RESPONSE TO AMENDMENT
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 .
WITHDRAWN REJECTIONS
The 35 U.S.C. §103 rejection of the claims made of record in the office action mailed on 03/11/2026 based on Bjorkman (Industrial and Engineering Chemistry, 1967, vol. 49, No. 9, pp. 1395-1398) have been withdrawn due to Applicant’s argument in the response filed 07/13/2026.
REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
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).
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, 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), 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 allowed.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 07/13/2026 regarding the 35 U.S.C. §103 rejections based on Bjorkman, made of record in the office action mailed on 03/11/2026 have been considered but are moot since the rejections have been withdrawn.
Applicant’s arguments in the response filed 07/13/2026 regarding the 35 U.S.C. §103 rejections based on Shikinaka in view of Balakshin et al. of record have been carefully considered but are deemed unpersuasive.
Applicant argues that the lignin produced according to Shikinaka et al. would be unlikely to have a β-O-4 ether structure content in the range presently claimed due to the synthesis conditions thereof. However, the arguments are not supported by evidence in the record. Arguments presented by Applicant cannot take place of evidence in the record. Given that Balakshin et al. teaches that lignin can be functionalized such that the β-O-4 ether content is over 10, one of ordinary skill in the art would have a reasonable expectation of success of being able to achieve the β-O-4 ether content overlapping with the claimed range in Skikinaka et al. by the combination of the teachings. In order to further support Applicant’s position, evidence would need to be provided to support the position.
Applicant further argues that the newly amended limitation of the ratio “(G’/G ) or (S’/S)” oxidized lignin structures further defines over the prior art. However, (b-1) in claim 1 only requires one of (A) or (B) to be satisfied and is therefore considered an optional limitation. Therefore, the amendment does not overcome the cited prior art.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 09/11/2026
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