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 .
Claims 1-14, 16-19, 21, 22 are pending and have been considered on the merits herein.
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No.15545988 (and PCTFI2016/050075), fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Parent application ‘988 does not describe the subject matter of instant claims 10 and 21, specifically there is no disclosure of a “viscosity…below 18000 mPas at 12% dry matter…at about 53°C…”.
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, 14, 19, 21 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.
The term “indefinable particles” of claims 1 and 21 fails to distinctly claim the particles of applicants’ invention. The specification does not describe or define the term “indefinable particle” and thus the metes and bounds of the claimed invention cannot be ascertained.
The terms “small” and “clean” in claim 14 are relative terms which renders the claim indefinite. The terms “small” and “clean” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 19 recites the limitation "wherein the liquid fraction formed by separating the liquid fraction from the lignocellulosic material before enzymatic hydrolysis" and “wherein the solid fraction formed by separating the solid fraction from the lignocellulosic material before enzymatic hydrolysis" in claim 1. There is insufficient antecedent basis for this limitation in the claim. Claim 1 does not contain a solid or liquid fraction formed by separation before the enzymatic hydrolysis. Claim 12 contains a solid-liquid separation stage before enzymatic hydrolysis and thus it is suggested applicants amend claim 19 to depend from claim 12 or properly amend claim 1 to include a separation step prior to enzymatic hydrolysis.
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 1-14, 16-19, 21, 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10858673. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed inventions are drawn to nearly identical inventions and overlap in scope. The claims of US’673 are mapped below.
1. A method for treating plant based raw material with an enzymatic hydrolysis, in which the plant based raw material is treated to form lignocellulosic material, and the lignocellulosic material or a solid fraction thereof is subjected to the enzymatic hydrolysis, wherein the method comprises: treating the plant based raw material in at least one treatment stage by at least one of a physical treatment, chemical treatment, and/or physico-chemical treatment such that the plant based raw material is treated at least by hydrolysis and steam explosion, for forming the lignocellulosic material including over 80% fine solid particles, which are fiber-like or indefinable particles smaller than 0.2 mm, defined by an optical measurement device, subjecting the lignocellulosic material or at least one solid fraction of the lignocellulosic material into the enzymatic hydrolysis for forming a lignin based material, and subjecting the lignin based material into at least one solid-liquid separation stage after the enzymatic hydrolysis and separating a lignin fraction and a soluble carbohydrate containing fraction. (Corresponding to instant claim 1, and differing only in that instant claim 1 includes the plant material to be a wood material (also claimed in US’673 claim 15) and reference claim 1 includes treating with steam explosion and hydrolysis, which is found in instant claims 6 and 7).
2. The method according to claim 1, wherein the treatment stage comprises at least one pretreatment step including physical treatment, chemical treatment, physico-chemical treatment, biological treatment, or any combination thereof, wherein the physical treatment includes milling, extrusion, microwave treatment, ultrasound treatment, or freeze treatment, the chemical treatment includes acid treatment, alkaline treatment, ionic liquid treatment, organosolv treatment or ozonolysis, and the physico-chemical treatment includes steam explosion treatment, ammonia fiber explosion treatment, CO.sub.2 explosion treatment, liquid hot water treatment or wet oxidation. (Corresponding to instant claim 2)
3. The method according to claim 1, wherein the plant based raw material is treated using the steam explosion treatment in presence of a chemical agent at the pretreatment step. (Corresponding to instant claims 3 and 4)
4. The method according to claim 3, wherein the chemical agent is a non-alkaline agent. (Anticipating instant claim 5)
5. The method according to claim 3, wherein the chemical agent is an acid. (Corresponding to instant claim 5)
6. The method according to claim 1, wherein the lignocellulosic material is treated by soaking. (Corresponding to instant claim 2, i.e., chemical treatments)
7. The method according to claim 1, wherein the lignocellulosic material is diluted for the soaking. (Corresponding to instant claim 2, i.e., chemical treatments)
8. The method according to claim 1, wherein the optical measurement device is Metso FS5. (Corresponding to instant claim 8)
9. The method according to claim 1, wherein the optical measurement device is Coulter LS230. (Corresponding to instant claim 9)
10. The method according claim 1, wherein the viscosity of the lignocellulosic material is below 18000 mPas at 15% dry matter content, measured by Brookfield viscosity device at 45° C. with 10 rpm and spindel type Vane. (Corresponding to instant claim 22 and overlapping with instant claim 21)
11. The method according to claim 1, wherein the method comprises more than one solid-liquid separation stage. (Corresponding to instant claim 11)
12. The method according to claim 1, wherein the lignocellulosic material is subjected to a solid-liquid separation stage in which a liquid fraction and a solid fraction are separated before the enzymatic hydrolysis, and the solid fraction is subjected to the enzymatic hydrolysis. (Corresponding to instant claim 12)
13. The method according to claim 1, wherein the solid-liquid separation is made using filtration, centrifugal treatment, or a combination thereof. (Corresponding to instant claim 13)
14. The method according to claim 1, wherein the solid-liquid separation stage comprises a washing in which a displacement washing is carried out with a small amount of clean water in which ratio of washing water to solid is below 6. (Corresponding to instant claim 14)
15. The method according to claim 1, wherein the plant based raw material comprises wood-based material or a mixture comprising wood-based material. (Corresponding to instant claim 1)
16. The method according to claim 1, wherein the soluble carbohydrate containing fraction is used as a source material in a fermentation, hydrolysis, chemical treatment, catalytic treatment, polymerization process, depolymerization process, degradation process, enzymatic treatment, manufacture of binder, manufacture of feed, manufacture of food, or any combination thereof. (Corresponding to instant claim 16)
17. The method according to claim 1, wherein the lignin fraction is used as a source material in a hydrolysis, polymerization process, depolymerization process, degradation process, chemical treatment, manufacture of a composite material, manufacture of binder, manufacture of feed, manufacture of food, combustion process, or any combination thereof. (Corresponding to instant claim 17)
18. The method according to claim 1, wherein the lignin-based material is used as a source material in a hydrolysis, polymerization process, depolymerization process, degradation process, chemical treatment, manufacture of a composite material, manufacture of binder, manufacture of feed, manufacture of food, combustion process, or any combination thereof. (Corresponding to instant claim 18)
19. The method according to claim 1, wherein the liquid fraction formed by separating the liquid fraction from the lignocellulosic material before the enzymatic hydrolysis is used as a source material in a fermentation, hydrolysis, chemical treatment, catalytic treatment, polymerization process, depolymerization process, degradation process, enzymatic process, manufacture of binder, manufacture of feed, manufacture of food, or any combination thereof. (Corresponding to instant claim 19)
20. The method according to claim 1, wherein the solid fraction formed by separating the solid fraction from the lignocellulosic material before the enzymatic hydrolysis is used as a source material in a hydrolysis, polymerization process, depolymerization process, degradation process, chemical treatment, manufacture of a composite material, manufacture of binder, combustion process, or any combination thereof. (Corresponding to instant claim 12 and 16)
21. The method according to claim 1, wherein the liquid mixture comprising a soluble carbohydrate containing fraction and a liquid fraction separated from the lignocellulosic material before the enzymatic hydrolysis is used as a source material in a fermentation, hydrolysis, chemical treatment, catalytic treatment, polymerization process, depolymerization process, degradation process, enzymatic treatment, manufacture of binder, manufacture of feed, manufacture of food, or any combination thereof. (Corresponding to instant claim 16 and 19)
Thus, the instant claims would be anticipated by the reference claims.
Claims 1-14, 16-19, 21, 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12098408. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed inventions are drawn to nearly identical inventions and overlap in scope. The claims of US’408 are mapped below.
1. A method for treating plant based raw material with an enzymatic hydrolysis, in which the plant based raw material is treated to form lignocellulosic material, and the lignocellulosic material or a solid fraction thereof is subjected to the enzymatic hydrolysis, wherein the method comprises; treating the plant based raw material in at least one treatment stage for forming the lignocellulosic material including over 80% fine solid particles which are fiber-like particles smaller than 0.2 mm, defined by an optical measurement device, and the viscosity of the lignocellulosic material is below 18000 mPas at 15% dry matter content, measured by Brookfield viscosity device at 45° C. with 10 rpm and spindel type Vane; subjecting the lignocellulosic material or at least one solid fraction of the lignocellulosic material into the enzymatic hydrolysis for forming a lignin based material; and subjecting the lignin based material into at least one solid-liquid separation stage after the enzymatic hydrolysis and separating a lignin fraction and a soluble carbohydrate containing fraction. (Corresponding to instant claim 1, and differing only in that instant claim 1 includes the plant material to be a wood material (also claimed in US’408 claim 14) and reference claim 1 includes viscosity and measuring device, which is found in instant claims 22).
2. The method according to claim 1, wherein the treatment stage comprises at least one pretreatment step including physical treatment, chemical treatment, physico-chemical treatment, biological treatment, or any combination thereof, wherein the physical treatment is selected from milling, extrusion, microwave treatment, ultrasound treatment or freeze treatment, the chemical treatment is selected from acid treatment, alkaline treatment, ionic liquid treatment, organosolv treatment or ozonolysis, and the physico-chemical treatment is selected from steam explosion treatment, ammonia fiber explosion treatment, CO2 explosion treatment, liquid hot water treatment or wet oxidation. (corresponding to instant claim 2)
3. The method according to claim 2, wherein the plant based raw material is treated at least by means of a steam explosion treatment at the pretreatment step. (corresponding to instant claim 3)
4. The method according to claim 2, wherein the plant based raw material is treated using a steam explosion treatment in presence of a chemical agent at the pretreatment step. (corresponding to instant claim 4)
5. The method according to claim 4, wherein the chemical agent is an acid. (corresponding to instant claim 5)
6. The method according to claim 2, wherein the plant based raw material is treated in one-step hydrolysis and steam explosion process. (corresponding to instant claim 6)
7. The method according to claim 1, wherein the optical measurement device is Metso FS5. (corresponding to instant claim 8)
8. The method according to claim 1, wherein the optical measurement device is Coulter LS230. (corresponding to instant claim 9)
9. The method according claim 1, wherein the viscosity of the lignocellulosic material is below 10000 mPas at 12% dry matter content, measured by Brookfield viscosity device at 53° C. with 10 rpm and spindel type Vane. (corresponding to instant claim 10)
10. The method according to claim 1, wherein the method comprises more than one solid-liquid separation stage. (corresponding to instant claim 11)
11. The method according to claim 1, wherein the lignocellulosic material is subjected to a solid-liquid separation stage in which a liquid fraction and a solid fraction are separated before the enzymatic hydrolysis, and the solid fraction is subjected to the enzymatic hydrolysis. (corresponding to instant claim 12 )
12. The method according to claim 1, wherein the solid-liquid separation is made using filtration, centrifugal treatment or a combination thereof. (corresponding to instant claim 13)
13. The method according to claim 1, wherein the solid-liquid separation stage comprises a washing in which a displacement washing is carried out with washing water in which a ratio of washing water to solid is below 6. (corresponding to instant claim 14)
14. The method according to claim 1, wherein the plant based raw material comprises wood based material or a mixture comprising wood based material. (corresponding to instant claim 1)
15. The method according to claim 1, wherein the soluble carbohydrate containing fraction is used as a source material in a fermentation, hydrolysis, chemical treatment, catalytic treatment, polymerization process, depolymerization process, degradation process, enzymatic treatment, manufacture of binder, manufacture of feed, manufacture of food, or any combination thereof. (corresponding to instant claim 16)
16. The method according to claim 1, wherein the lignin fraction is used as a source material in a hydrolysis, polymerization process, depolymerization process, degradation process, chemical treatment, manufacture of a composite material, manufacture of binder, manufacture of feed, manufacture of food, combustion process, or any combination thereof. (corresponding to instant claim 17)
17. The method according to claim 1, wherein the lignin based material is used as a source material in a hydrolysis, polymerization process, depolymerization process, degradation process, chemical treatment, manufacture of a composite material, manufacture of binder, manufacture of feed, manufacture of food, combustion process, or any combination thereof. (corresponding to instant claim 18)
18. The method according to claim 11, wherein the liquid fraction formed by separating the liquid fraction from the lignocellulosic material before the enzymatic hydrolysis is used as a source material in a fermentation, hydrolysis, chemical treatment, catalytic treatment, polymerization process, depolymerization process, degradation process, enzymatic process, manufacture of binder, manufacture of feed, manufacture of food, or any combination thereof. (corresponding to instant claim 19)
19. The method according to claim 11, wherein the solid fraction formed by separating the solid fraction from the lignocellulosic material before the enzymatic hydrolysis is used as a source material in a hydrolysis, polymerization process, depolymerization process, degradation process, chemical treatment, manufacture of a composite material, manufacture of binder, combustion process, or any combination thereof. (corresponding to instant claim 12 and 16)
20. A method for treating plant based raw material with an enzymatic hydrolysis, in which the plant based raw material is treated to form lignocellulosic material, and the lignocellulosic material or a solid fraction thereof is subjected to the enzymatic hydrolysis, wherein the method comprises: treating the plant based raw material in at least one treatment stage for forming the lignocellulosic material including over 80% fine solid particles which are fiber-like particles smaller than 0.2 mm, defined by an optical measurement device, and the viscosity of the lignocellulosic material is below 18000 mPas at 12% dry matter content, measured by Brookfield viscosity device at about 53° C. and spindel type Vane; subjecting the lignocellulosic material or at least one solid fraction of the lignocellulosic material into the enzymatic hydrolysis for forming a lignin based material; and subjecting the lignin based material into at least one solid-liquid separation stage after the enzymatic hydrolysis and separating a lignin fraction and a soluble carbohydrate containing fraction. (corresponding to instant claim 21 and differing only in that instant claim 21 claims the plant raw material to comprise a wood-based material)
Thus, the instant claims would be anticipated by the reference claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIFFANY MAUREEN GOUGH whose telephone number is (571)272-0697. The examiner can normally be reached M-Thu 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melenie Gordon can be reached at 571-272-8037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIFFANY M GOUGH/Examiner, Art Unit 1651
/MELENIE L GORDON/Supervisory Patent Examiner, Art Unit 1651
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