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 .
Detail Action
Claims 1-22 are pending for examination.
Applicants’ election of group I (claims 1-7) on 6/30/2026 with traverse is acknowledged. Traversal on the ground that no burden on examiner to search all the claims. Since claims involve method steps comprise different substance which require different search strategy and will be burden on examiner to search wide array of subject matters. Claims (8-22) of groups II-IV are withdrawn. . Restriction requirement of 5/5/26 made final.
Claims 1-7 will be examined.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/19/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the IDS statement.
Claim Rejections: 35 USC § 112(b)
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.
Claim 1-7 ( depends on claim 1) 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.
Claim 1 is rejected because it recites the limitation “less than about 4%”. The limitations “less than” and “about” render the claims indefinite because the metes and bounds of the claim is indefinite.
Claim 1 is rejected because it recites the limitation “from about 10 to about 12”. The limitations “from ” and “about” render the claims indefinite because the metes and bounds of the claim is indefinite.
Claim 3 is rejected because it recites the limitation “from about 40 kg to about 100 kg”. The limitations “from ” and “about” render the claims indefinite because the metes and bounds of the claim is indefinite.
Claim 4 is rejected because it recites the limitation “from about 80 0C to about 100 °C”. The limitations “from ” and “about” render the claims indefinite because the metes and bounds of the claim is indefinite.
Claim 5 is rejected because it recites the limitation “screw-type”. The limitations “screw-type” render the claims indefinite because the metes and bounds of the claim is indefinite.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Sugiura et al. (US 2011/0207177. IDS) in view of in view of Jena ( ( WO2020/152178, IDS).
Sugiura discloses a method for treating lignocellulosic biomass for ethanol production and method of producing a sugar including: a sugar producing method which produces sugar from tree bark, Para. [0041]; method of producing ethanol comprising: a fermentation step which ferments the sugar produced by the methods, Para. [0048]; lignocellulosic biomass, Para. [0084]), comprising: (i) reacting the lignocellulosic biomass with a first alkali to produce a first stage biomass (an alkali treatment step which immerses bark in a solution of an alkali compound solution, Para. [0062]); (ii) dewatering the first stage biomass to Isolate a first stream of first stage solids (the alkali solution is concentrated by dewatering after the alkali treatment, Para. [0111]; the washed product which Is solid content, Para. 0217).
Sugiura further discloses further comprising isolating sugars from the enzymatically hydrolyzed isolated solids from step (vi) (a method of producing sugars from tree bark by an alkali kneading treatment step and an enzyme glycosylation treatment step, Para. [0149]; method of producing ethanol comprising: a fermentation step which ferments the sugar produced by the methods, Para. [0048]). Sugiura teach pH of Alkali is 12 and used Sodium hydroxide ( see para 0070-0071) and 1-4% of alkali by mass ratio and though did not mention the pH 4% sodium hydroxide would yield pH greater than 12 )
However Sugiura falls to explicitly disclose (lll) reacting the first stage solids with a second alkali to produce a second stage biomass; (iv) dewatering the second stage biomass to Isolate a stream of second stage solids; and (v) mechanically refining the second stage solids and not also teach lignocellulosic biomass comprises xylan, galactan and arabinan.
Jena ( ( WO2020/152178) in the field of producing Improved cellulose pulp (Abstract) and teaches (lll) reacting the first stage solids with a second alkali to produce a second stage biomass (a method by which all main components of lignocellulose can be liberated, separated, and purified, Pg. 5, Lines. 2-3; adding a bleaching agent, and keeping said cellulose fiber fraction In suspension for 60-180 minutes, Pg. 6, Lines. 1-4; bleaching may be continued after ...treatment ...for a selected period of time, Pg. 21, Lines. 7-8); (iv) dewatering the second stage biomass to Isolate a stream of second stage solids (separating the material obtained in step (v) Into a bleached-refined solid cellulose fiber fraction and an aqueous bleaching liquor fraction, Pg. 26, Line. 13-14); and (v) mechanically refining the second stage solids (adding a bleaching agent, and keeping said cellulose fiber fraction in suspension for 60-180 minutes ...subjecting the bleached material obtained In step (iv) to a wet mechanical treatment, Pg. 25, Lines. 13-14; wet refining or milling may be repeated as many times as desired, Pg. 14, Lines. 35-36) Teach that sugar ( cellulose) greater than 75 to 96% and lignin content 2-10% ( see lines 1-4,line 14-16 page 29) and lignin more than 60% ( see page 30). Jena also teaches that the alkali treatment use alkali to attain pH 10-11.5 , 7-12 (page 19-20.
Jena teach “A hemicellulose is any of several heteropolymers, such as xylan, glucuronoxylan, arabinoxylan, glucomannan, and xyloglucan, present along with cellulose in almost all plant cell walls------ ( page 2, lines 1-3)
Jena also teaches that lignocellulosic biomass comprises sugar monomers in hemicellulose can include xylose, mannose, glucose, galactose, rhamnose, and arabinose” Page 2, lines 6-7)
Jena also teaches “Xylose is in most cases the sugar monomer present in the largest amount, although in some plant material mannose can be the most abundant sugar” ( page 2, lines8-10).
It would have been obvious to one of ordinary skill in the art before the effective filing date combine the teaching of to combine Sugiura et al. (US 2011/0207177. IDS and Jena ( ( WO2020/152178 and in the teaching of Sugiura et al. to arrive the claimed invention instant claims 1-7.One would have been motivated to and would have had a reasonable expectation of success for using production method of Sugiura et al. (US 2011/0207177 the teaching of Jena.
Double Patenting Rejection
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. See 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); and 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) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
This case is a CON of US PAT 12129342. At least Claims 1- 7 of instant application are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-8 of the US PAT US PAT12129342. An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claim not is patentably distinct from the reference claim(s) because the examined 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). Although the conflicting claims are not identical, they are not patentably distinct from each other. Claims herein and claims US PAT 12129342 are both directed to method for treating lignocellulosic biomass for ethanol production, comprising: (i) reacting the lignocellulosic biomass with a first alkali to produce a first stage biomass; (ii) dewatering the first stage biomass to isolate a first stream of first stage solids; wherein first alkali has a pH of from about 10 to about 12,.
The instant application is a CON of US PAT12129342. The claims 1-8 of US PAT 12129342 are directed to method for treating lignocellulosic biomass for ethanol production, comprising: (i) reacting the lignocellulosic biomass with a first alkali to produce a first stage biomass; (ii) dewatering the first stage biomass to isolate a first stream of first stage solids; wherein first alkali has a pH of from about 10 to about 12. The Instant claims also are directed to method for treating lignocellulosic biomass for ethanol production, comprising: (i) reacting the lignocellulosic biomass with a first alkali to produce a first stage biomass; (ii) dewatering the first stage biomass to isolate a first stream of first stage solids; wherein first alkali has a pH of from about 10 to about 12; and wherein the lignocellulosic biomass comprises xylan, galactan and arabinan, and wherein less than about 4% of the xylan in the lignocellulosic biomass is solubilized in step (i). The specification that teach method for treating lignocellulosic biomass for ethanol production, comprising: (i) reacting the lignocellulosic biomass with a first alkali to produce a first stage biomass; (ii) dewatering the first stage biomass to isolate a first stream of first stage solids; wherein first alkali has a pH of from about 10 to about 12 and also teach lignocellulosic biomass comprises xylan, galactan and arabinan.
Though the none of the claims of reference patent mentioned the lignocellulosic biomass comprise xylan, galactan and arabinan, as shown the prior art of Jena ( ( WO2020/152178 ( use in 103 rejection above) that lignocellulosic biomass comprises xylan, galactan and arabinan. Therefore lignocellulosic biomass of reference patent inherently comprises xylan, galactan and arabinan .. It would have been obvious to one of ordinary skill in the art to select this specific embodiment of specification that teach method for treating lignocellulosic biomass for ethanol production, comprising: (i) reacting the lignocellulosic biomass with a first alkali to produce a first stage biomass; (ii) dewatering the first stage biomass to isolate a first stream of first stage solids; wherein first alkali has a pH of from about 10 to about 12 and also teach lignocellulosic biomass comprises xylan, galactan and arabinan that practiced for the claims of that patent to use for the method of instant claims 1-7. Therefore claims 1-7 of instant application are obvious over claims 1-8 US PAT12129342.
Terminal Disclaimers for the above patents would overcome the rejections
Conclusion
Claims 23,25,28-29,31,33,38-39 and 45 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMAD Y MEAH whose telephone number is (571)272-1261. The examiner can normally be reached on monday-friday (8-7).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Mondesi can be reached on 4089187584. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMMAD Y MEAH/ Examiner, Art Unit 1652
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