Detailed Office Action
The communication dated 6/21/2024 has been entered and fully considered.
Claims 1-11 are pending.
Drawings
The drawings are objected to because the replacement drawings filed 8/22/2024 are less clear than the ones filed 6/21/2024. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined 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 § 2146 et seq. 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).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/750,761 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim modified Caro’s acid treatment of lignocellulose at a temperature of less than 55 degrees C to a kappa less than 10 [copending claim 1] followed by alkali extraction to remove hemicellulose [copending claim 2].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claims 1 and 8 the applicant claims “molar ratio no less than 1:1:1” and “molar ratio no less than 1:1:” multiple times. It is not clear to the Examiner what ratios would be less than 1:1:1 and which ratios would be more than 1:1:1.
Regarding claim 1, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 2-4 depend from claim 1 and are similarly rejected.
Regarding claims 5 and 6, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 6 recites the limitation "the removal of hemicellulose" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 5 does not require a removal of hemicellulose from the caustic liquid phase.
Claim 6 recites the limitation "hemicellulose containing caustic solution " in line 1. There is insufficient antecedent basis for this limitation in the claim. In claim 5 the applicant uses the language “said caustic liquid phase comprising said dissolved hemicellulose”.
In claims 7 and 8, the applicant claims the acid concentration in said modified Caro’s acid is less than 40%. It is not clear if this is molar, weight, or volumetric concentration. The Examiner interprets it as by weight in light of the instant specification. Further, it is not clear if “the acid” refers to just H2SO5 or is all acids present (H2SO5, sulfuric, and others).
Claims 9-11 depend from claim 7 and are similarly rejected.
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.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over CA323131A1, WEISSENBERGER et al., hereinafter WEISSEN, in view of Pulping Processes by RYDHOLM, hereinafter RYDHOLM, or in the alternate, RYDHOLM in view of WEISSEN.
CA323131A1 was published on 12/18/2022 is more than 1 year prior to the foreign-priority document of the instant case of 12/21/2023.
As for claim 1, WEISSEN discloses providing lignocellulose biomass comprising lignin, hemicellulose, and cellulose [pg. 6 par. 2]. WEISSEN discloses exposing the biomass to a delignification step with modified Caro’s acid at a temperature of below 55 degrees C [pg. 7 par. 3 and pg. 8 par. 8]. WEISSEN discloses the specific modified Caro’s acid of sulfuric acid, heterocyclic compound, and peroxide [pg. 8 par 8] which is instantly claimed composition D. WEISSEN discloses not less than 1:1 [pg. 12 par. 5]
The delignification of WEISSEN takes place to a Kappa number of 4.2 or less [pg. 8 par. 7]. WEISSEN discloses the reaction mixture (delignified pulp) is recovered by washing [pg. 19 par. 3 and Figure 6] a kappa number of 10 or less is equal to a lignin percent of about 0.63% (% lignin ~ 0.15* kappa).
WEISSEN fails to disclose an alkali extraction of the produced pulp.
RYDHOLOM discloses alkali purification of pulp with cold alkali [pg. 993 last par.] to remove hemicellulose to give high alpha-cellulose at the highest purity [pg. 995 last par.]. RYDHOLM discloses that the final yield and ultimate hemicellulose removal are inversely related [pg. 1011 Figure 15.16]; therefore the person of ordinary skill in the art optimizes hemicellulose removal based on desired purity. RYDHOLM discloses that the spent cold alkali comprising hemicelluloses can be removed with presses and washing [pg. 996 par. 3]. RYDHOLM suggests purifying the spent cold alkali by dialysis prior to reuse which will recover and remove the hemicellulose [pg. 997 par. 1]. At the time of the invention it would be obvious to apply the cold alkali purification of RYDHOLM to the pulp of WEISSEN. The person of ordinary skill in the art would be motivated by RYDHOLM to obtain a pulp to increase opacity, bulk, softness and brightness stability [pg. 992] or alternatively make dissolving pulps (nota bene dissolving pulps are high alpha cellulose pulps used for various chemical production and regenerated celluloses) for further use.
In the alternate, RYDHOLM discloses sulfite and kraft pulps from treatment but does not disclose modified Caro’s acid pulps. WEISSEN discloses pulps produced by modified Caro’s acid. At the time of the invention it would be obvious top substitute the kraft/sulfite pulping of RYDHOLM with the modified Caro’s acid pulping of WEISSEN. The person of ordinary skill in the art would be motivated to do so by WEISSEN who states that the modified Caro’s acid pulp production has the advantage of low temperature and less energy intensive [pg. 5 par. 3].
As for claim 2, WEISSEN discloses composition ‘A’ (peroxide, sulfuric, compound with sulfonic and amine moiety) [pg. 9] at no less than 1:1:1 [pg. 10 par. 2].
As for claim 3, WEISSEN discloses composition ‘C’ (peroxide and alkylsulfonic acid) [pg. 9] at no less than a 1:1:1 ratio [pg. 12 par. 3].
As for claim 4, WEISSEN discloses composition ‘B’ (peroxide, sulfuric acid, amine moiety, sulfonic acid moiety) [pg. 9] at no less than a 1:1 ratio [pg. 12 par. 2]
As for claim 5, WEISSEN discloses providing lignocellulose biomass comprising lignin, hemicellulose, and cellulose [pg. 6 par. 2]. WEISSEN discloses exposing the biomass to a delignification step with modified Caro’s acid at a temperature of below 55 degrees C [pg. 7 par. 3 and pg. 8 par. 8]. WEISSEN discloses composition ‘A’ (peroxide, sulfuric, compound with sulfonic and amine moiety) [pg. 9] at no less than 1:1:1 [pg. 10 par. 2]. WEISSEN discloses taurolidine [pg. 11 par. 2]
The delignification of WEISSEN takes place to a Kappa number of 4.2 or less [pg. 8 par. 7]. WEISSEN discloses the reaction mixture (delignified pulp) is recovered by washing [pg. 19 par. 3 and Figure 6] a kappa number of 10 or less is equal to a lignin percent of about 0.63%.
WEISSEN fails to disclose an alkali extraction of the produced pulp.
RYDHOLOM discloses alkali purification of pulp with cold alkali [pg. 993 last par.] to remove hemicellulose to give high alpha-cellulose at the highest purity [pg. 995 last par.]. RYDHOLM discloses that the final yield and ultimate hemicellulose removal are inversely related [pg. 1011 Figure 15.16] therefore the person of ordinary skill in the art optimizes hemicellulose removal based on desired purity. RYDHOLM discloses that the spent cold alkali comprising hemicelluloses can be removed with presses and washing [pg. 996 par. 3]. RYDHOLM suggests purifying the spent cold alkali by dialysis prior to reuse which will recover and remove the hemicellulose [pg. 997 par. 1]. At the time of the invention it would be obvious to apply the cold alkali purification of RYDHOLM to the pulp of WEISSEN. The person of ordinary skill in the art would be motivated by RYDHOLM to obtain a pulp to increase opacity, bulk, softness and brightness stability [pg. 992] or alternatively make dissolving pulps for further use.
In the alternate, RYDHOLM discloses sulfite and kraft pulps from treatment but does not disclose modified Caro’s acid pulps. WEISSEN discloses pulps produced by modified Caro’s acid. At the time of the invention it would be obvious top substitute the kraft/sulfite pulping of RYDHOLM with the modified Caro’s acid pulping of WEISSEN. The person of ordinary skill in the art would be motivated to do so by WEISSEN who states that the modified Caro’s acid pulp production has the advantage of low temperature and less energy intensive [pg. 5 par. 3]
As for claim 6, RYDHOLM adds water during washing to remove hemicellulose prior to dialysis. The claims do not require ethanol.
As for claims 7 and 8, WEISSEN discloses providing lignocellulose biomass comprising lignin, hemicellulose, and cellulose [pg. 6 par. 2]. WEISSEN discloses exposing the biomass to a delignification step with modified Caro’s acid at a temperature of below 55 degrees C [pg. 7 par. 3 and pg. 8 par. 8]. WEISSEN discloses composition ‘A’ (peroxide, sulfuric, compound with sulfonic and amine moiety) [pg. 9] at no less than 1:1:1 [pg. 10 par. 2]. WEISSEN discloses taurolidine [pg. 11 par. 2]. WEISSEN discloses 20 to 70% sulfuric acid by weight which overlaps the instant claimed range making a prima facie case of obviousness [pg. 10 comp ‘A’]
The delignification of WEISSEN takes place to a Kappa number of 4.2 or less [pg. 8 par. 7]. WEISSEN discloses the reaction mixture (delignified pulp) is recovered by washing [pg. 19 par. 3 and Figure 6] a kappa number of 10 or less is equal to a lignin percent of about 0.63%.
WEISSEN fails to disclose an alkali extraction of the produced pulp.
RYDHOLOM discloses alkali purification of pulp with cold alkali [pg. 993 last par.] to remove hemicellulose to give high alpha-cellulose at the highest purity [pg. 995 last par.]. RYDHOLM discloses that the final yield and ultimate hemicellulose removal are inversely related [pg. 1011 Figure 15.16] therefore the person of ordinary skill in the art optimizes hemicellulose removal based on desired purity. RYDHOLM discloses that the spent cold alkali comprising hemicelluloses can be removed with presses and washing [pg. 996 par. 3]. RYDHOLM suggests purifying the spent cold alkali by dialysis prior to reuse which will recover and remove the hemicellulose [pg. 997 par. 1]. At the time of the invention it would be obvious to apply the cold alkali purification of RYDHOLM to the pulp of WEISSEN. The person of ordinary skill in the art would be motivated by RYDHOLM to obtain a pulp to increase opacity, bulk, softness and brightness stability [pg. 992] or alternatively make dissolving pulps for further use.
In the alternate, RYDHOLM discloses sulfite and kraft pulps from treatment but does not disclose modified Caro’s acid pulps. WEISSEN discloses pulps produced by modified Caro’s acid. At the time of the invention it would be obvious top substitute the kraft/sulfite pulping of RYDHOLM with the modified Caro’s acid pulping of WEISSEN. The person of ordinary skill in the art would be motivated to do so by WEISSEN who states that the modified Caro’s acid pulp production has the advantage of low temperature and less energy intensive [pg. 5 par. 3]
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over WEISSEN and RYDHOLM, as applied to claim 7 above, and further in view of Handbook for Pulp and Paper Technologists by SMOOK, hereinafter SMOOK.
As for claims 9-11 WEISSEN discloses woodchips [pg. 23 par. 1] but does not disclose their size. SMOOK discloses 10 to 30 mm (1 to 3 cm) in length [pg. 30 col. 1 par. 1] which falls within or overlaps the instant claimed ranges. At the time of the invention it would be obvious to apply the known pulping chip size of SMOOK to the known pulping of WEISSEN/RYDHOLM. The person of ordinary skill in the art would be motivated to do so by SMOOK who states that these sizes are prime materials for pulping [pg. 30 col. 1 par. 1]
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571)270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/ Primary Examiner, Art Unit 1748
Prosecution Insights