DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 19 only requires the hydrolysate of claim 7, rather than all the limitations of the process of claim 7. The claim does not require all the method steps of claim 7, as currently written. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1-6, and 62 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Forster et al. (US Pat. 4,237,110).
Considering Claims 1-6: Forster et al. teaches a process for producing a sugar mixture comprising hydrolyzing a lignocellulose material with concentrated hydrochloric acid at 34-45 weight percent at 15-30ºC (3:15-30). Forster et al. teaches a process comprising preparing a mixture of hydrochloric acid and a sugar mixture (3:1-31), and extracting the hydrochloric acid with a C5-9 alcohol (2:25-44) at 15 to 30 ºC (4:57-64).
Forster et al. does not teach the make-up of the sugar mixture produced by the process. However, the process of Forster et al. is substantially similar to the process disclosed in the original specification for producing the claimed sugar mixture (Examples 5-7). The original specification teaches the lignocellulose material as being hydrolyzed with a concentrated hydrochloric acid at 42% at a temperature of 10-15ºC (Example 5). The hydrolysate is then extracted (Example 5) with hexanol or 2 ethylhexanol/C6 and C8 alcohols at a temperature of less than 60 ºC (pg. 19-21, claim 15-17). As the process of the prior art and the original specification are substantially similar, the process of Forster et al. would inherently produce a product having the claimed saccharide composition.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 7 and 63 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Forster et al. (US Pat. 4,237,110).
Considering Claims 7 and 63: Forster et al. teaches a process for producing a sugar mixture comprising hydrolyzing a lignocellulose material with concentrated hydrochloric acid at 34-45 weight percent at 15-30ºC (3:15-30). Forster et al. teaches a process comprising preparing a mixture of hydrochloric acid and a sugar mixture (3:1-31), extracting the hydrochloric acid with a C5-9 alcohol (2:25-44) at 15 to 30 ºC (4:57-64), and removing lignin from the raffinate/adjusting the composition (5:15-42). Forster et al. teaches an example comprising 12.4 parts of glucose and 56.1 parts of water (or a ratio of 0.18) in the hydrolysate and 33.2 parts of glucose and 53.8 parts of water (or a ratio of 0.38) in the raffinate in the example (Table II).
Forster et al. does not teach the make-up of the sugar mixture produced by the process. However, the process of Forster et al. is substantially similar to the process disclosed in the original specification for producing the claimed sugar mixture (Examples 5-7). The original specification teaches the lignocellulose material as being hydrolyzed with a concentrated hydrochloric acid at 42% at a temperature of 10-15ºC (Example 5). The hydrolysate is then extracted (Example 5) with hexanol or 2 ethylhexanol/C6 and C8 alcohols at a temperature of less than 60 ºC (pg. 19-21, claim 15-17). As the process of the prior art and the original specification are substantially similar, the process of Forster et al. would inherently produce a product having the claimed saccharide composition.
Forster et al. does not teach the total saccharide of the hydrolysate of the example, but rather only disclosed the amount of glucose. However, Forster et al. teaches the amount of saccharide in the hydrolysate as being 3 to 36 weight percent in the broader disclosure (6:18-40). In the case where the claimed ranges "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). It would have been obvious to a person of ordinary skill in the art to have selected a sugar content within the overlapping portion of the claimed range, and the motivation to do so would have been, Forster et al. suggests, to control the extraction efficiency during the acid removal (6:18-40).
Claim 18 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Forster et al. (US Pat. 4,237,110) in view of Wahnon (US 2008/0041366).
Considering Claim 18: Forster et al. teaches a process for producing a sugar mixture comprising hydrolyzing a lignocellulose material with concentrated hydrochloric acid at 34-45 weight percent at 15-30ºC (3:15-30). Forster et al. teaches a process comprising preparing a mixture of hydrochloric acid and a sugar mixture (3:1-31), and extracting the hydrochloric acid with a C5-9 alcohol (2:25-44) at 15 to 30 ºC (4:57-64).
Forster et al. does not teach the make-up of the sugar mixture produced by the process. However, the process of Forster et al. is substantially similar to the process disclosed in the original specification for producing the claimed sugar mixture (Examples 5-7). The original specification teaches the lignocellulose material as being hydrolyzed with a concentrated hydrochloric acid at 42% at a temperature of 10-15ºC (Example 5). The hydrolysate is then extracted (Example 5) with hexanol or 2 ethylhexanol/C6 and C8 alcohols at a temperature of less than 60 ºC (pg. 19-21, claim 15-17). As the process of the prior art and the original specification are substantially similar, the process of Forster et al. would inherently produce a product having the claimed saccharide composition.
Forster et al. does not teach fermenting the sugar mixture. However, Wahnon teaches fermenting a deacidified aqueous sugar stream from a lignocellulose hydrolysis process (¶0100). Forster et al. and Wahnon are analogous art as they are concerned with the same field of endeavor, namely lignocellulose hydrolysate mixtures. It would have been obvious to a person of ordinary skill in the art to have fermented the hydrolysate of Forster et al., as in Wahnon, and the motivation to do so would have been, as Wahnon suggests, to provide ethanol from the sugar stream (¶0008).
Claim 19 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Forster et al. (US Pat. 4,237,110) in view of Wahnon (US 2008/0041366).
Considering Claim 19: Forster et al. teaches a process for producing a sugar mixture comprising hydrolyzing a lignocellulose material with concentrated hydrochloric acid at 34-45 weight percent at 15-30ºC (3:15-30). Forster et al. teaches a process comprising preparing a mixture of hydrochloric acid and a sugar mixture (3:1-31), extracting the hydrochloric acid with a C5-9 alcohol (2:25-44) at 15 to 30 ºC (4:57-64), and removing lignin from the raffinate/adjusting the composition (5:15-42). Forster et al. teaches an example comprising 12.4 parts of glucose and 56.1 parts of water (or a ratio of 0.18) in the hydrolysate and 33.2 parts of glucose and 53.8 parts of water (or a ratio of 0.38) in the raffinate in the example (Table II).
Forster et al. does not teach the make-up of the sugar mixture produced by the process. However, the process of Forster et al. is substantially similar to the process disclosed in the original specification for producing the claimed sugar mixture (Examples 5-7). The original specification teaches the lignocellulose material as being hydrolyzed with a concentrated hydrochloric acid at 42% at a temperature of 10-15ºC (Example 5). The hydrolysate is then extracted (Example 5) with hexanol or 2 ethylhexanol/C6 and C8 alcohols at a temperature of less than 60 ºC (pg. 19-21, claim 15-17). As the process of the prior art and the original specification are substantially similar, the process of Forster et al. would inherently produce a product having the claimed saccharide composition.
The product of the process of Forster et al. reads on the claimed de-acidified preparation. With regard to the hydrolysate of claim 7, Forster et al. does not teach the total saccharide of the hydrolysate of the example, but rather only disclosed the amount of glucose. However, Forster et al. teaches the amount of saccharide in the hydrolysate as being 3 to 36 weight percent in the broader disclosure (6:18-40). In the case where the claimed ranges "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). It would have been obvious to a person of ordinary skill in the art to have selected a sugar content within the overlapping portion of the claimed range, and the motivation to do so would have been, Forster et al. suggests, to control the extraction efficiency during the acid removal (6:18-40). Thus Forster et al. teaches or renders obvious both alternatives for step (b).
Forster et al. does not teach fermenting the sugar mixture. However, Wahnon teaches fermenting a deacidified aqueous sugar stream from a lignocellulose hydrolysis process (¶0100). Forster et al. and Wahnon are analogous art as they are concerned with the same field of endeavor, namely lignocellulose hydrolysate mixtures. It would have been obvious to a person of ordinary skill in the art to have fermented the hydrolysate of Forster et al., as in Wahnon, and the motivation to do so would have been, as Wahnon suggests, to provide ethanol from the sugar stream (¶0008).
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.
Claim 1-6, 18, 19, and 62 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 12 of U.S. Patent No. 9,410,216. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claims 1 and 2: Claim 2 of Patent ‘216 teaches a sugar mixture comprising monosaccharides; oligosaccharides in a ratio to total saccharides of less than 0.2; a ratio of disaccharide hydrolysates to total saccharides of ≧0.05 on a weight by weight basis; a ratio of pentose to total saccharides of ≧0.05 on a weight by weight basis; at least one alpha-bonded di-glucose; and at least one beta-bonded di-glucose.
Considering Claims 3-6 and 62: Claims 3-6 of Patent ‘216 correspond to instant claims 3-6 and 62.
Considering Claims 18 and 19: Claim 12 of Patent ‘216 corresponds to instant claims 18 and 19.
Claim 1-6, 18, 19, and 62 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 11 of U.S. Patent No. 9,963,673. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claims 1 and 2: Claim 1 of Patent ‘673 teaches a sugar mixture comprising monosaccharides; oligosaccharides in a ratio to total saccharides of less than 0.2; a ratio of disaccharide hydrolysates to total saccharides of ≧0.05 on a weight by weight basis; a ratio of pentose to total saccharides of ≧0.05 on a weight by weight basis; at least one alpha-bonded di-glucose; and at least one beta-bonded di-glucose.
Considering Claims 3-6: Claims 2-5 of Patent ‘673 correspond to instant claims 3-6 and 62.
Considering Claims 18 and 19: Claim 11 of Patent ‘673 corresponds to instant claims 18 and 19.
Allowable Subject Matter
Claims 40, 47-52 are allowed.
The following is an examiner’s statement of reasons for allowance: The prior art of record does not teach or suggest the claimed process for producing a conversion process. The closest prior art of record is Forster et al., as discussed above. Forster et al. teaches a process for producing a sugar mixture comprising hydrolyzing a lignocellulose material with concentrated hydrochloric acid at 34-45 weight percent at 15-30ºC (3:15-30). Forster et al. teaches a process comprising preparing a mixture of hydrochloric acid and a sugar mixture (3:1-31), extracting the hydrochloric acid with a C5-9 alcohol (2:25-44) at 15 to 30 ºC (4:57-64), and removing lignin from the raffinate/adjusting the composition (5:15-42).
Forster et al. does not teach adding a enzyme that hydrolyzes alpha bonds with an activity of alpha-amylase of at least 5% with respect to alpha bonds. Further, the hydrolysis step of Forster et al. would readily hydrolyze the alpha bonds present in the biomass. As such, it would not have been obvious to a person of ordinary skill in the art to have added the claimed enzyme to the hydrozylate of Forster et al., as a person of ordinary skill in the art would not have expected a significant amount of alpha bonds to be present in the hydrozylate.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant's arguments filed May 21, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Forster et al. does not teach the claimed compositional features of the sugar mixture is not persuasive. Forster et al. teaches a process for producing a sugar mixture comprising hydrolyzing a lignocellulose material with concentrated hydrochloric acid at 34-45 weight percent at 15-30ºC (3:15-30). Forster et al. teaches a process comprising preparing a mixture of hydrochloric acid and a sugar mixture (3:1-31), and extracting the hydrochloric acid with a C5-9 alcohol (2:25-44) at 15 to 30 ºC (4:57-64).
Forster et al. does not teach the make-up of the sugar mixture produced by the process. However, the process of Forster et al. is substantially similar to the process disclosed in the original specification for producing the claimed sugar mixture (Examples 5-7). The original specification teaches the lignocellulose material as being hydrolyzed with a concentrated hydrochloric acid at 42% at a temperature of 10-15ºC (Example 5). The hydrolysate is then extracted (Example 5) with hexanol or 2 ethylhexanol/C6 and C8 alcohols at a temperature of less than 60 ºC (pg. 19-21, claim 15-17). As the process of the prior art and the original specification are substantially similar, the process of Forster et al. would inherently produce a product having the claimed saccharide composition.
The Office position is not based on any hydrochloric acid hydrolysis followed by alcohol extraction achieves the claimed compositional features. The process of Forster et al. uses the same starting material and substantially similar processing conditions including temperature and concentration of the treatment steps. Treating the same starting material under the same reaction conditions would inherently lead to the same product.
"[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255). See MPEP § 2112. The applicant has not provided evidence to support their position that the claimed composition is not inherent to the process of Forster et al.
B) The applicant’s argument that the examiner cannot rely upon the applicant’s specification in determining inherency is not persuasive. The MPEP includes several cases where the applicant’s specification is relied upon to establish inherency. See MPEP § 2112.
C) The applicant’s argument that the sugar of Forster et al. is not equivalent to the claimed saccharide is not persuasive. The sugars produced by Forster et al. are a species of saccharides, and thus read on the instant claim saccharide amount.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/ Primary Examiner, Art Unit 1767
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