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 .
Response to Arguments
Applicant's arguments filed 6/22/2026 have been fully considered but they are not persuasive.
The claims have been amended to include the limitations from dependent claim 13 into the independent claims.
Applicant argues that the rejections without the Groubner reference do not teach the amended limitations. This will be addressed by incorporating the rejection of claim 13 into claim 1 for further dependent claims and will be addressed in the rejections below.
Applicant argues that the sequence of Lund does not teach that the claimed sequence. Applicant states that “an analysis of the amino acid sequence” of the Lund SEQ ID NO 3 only has a 46% sequence identify to the claimed sequence.
However, arguments presented by applicant cannot take the place of factually supported objective evidence (See MPEP 2145). It is unclear as to where the specific 46% sequence match comes from.
Applicant further argues that the Lund reference does not teach a single embodiment of all four steps but teaches each of the steps in two different embodiments.
This is not held to be persuasive as Lund teaches all of the claimed steps as possible actions throughout the body of the specification. The fact that there is no single example that includes each of the steps is not a teaching away from all of the steps being present. At the very least it would be obvious to combine sequential steps of different embodiments to arrive at the predictable end result of the benefits of each step. This is not hindsight reasoning but an obviousness of combine two explicitly taught features that are taught in the same reference and highlighted in two different embodiments.
The arguments by application that there are examples that show a haloperoxidase has inferior brightness compared to a control. This is not a teaching away of combining taught steps when each of the steps are directly taught by the references. An example is not a teaching away. It is the overall discloser of the reference that is taken into consideration.
Applicant further argues that the inclusion of the Graubner reference teaching a SEQ ID NO2 form of the xylanases as claimed. It is argues that a sequence analysis shows that the SEQ ID NO 2 of Graubner shares only about 52% of the of the claimed identity. As stated above the applicant’s argument does not take the place of provided evidence. A declaration to provide the supporting evidence must be presented in order for this arguments to be supported.
The argument that the references utilize different originating species is not held to be persuasive as this is not a requirement form the claims. The claims only require a xylanase, as both references teaches a xylanase the claimed requirements are met and a simple substitution of one known element for another to arrive at the same end results would be obvious to the average artisan.
Applicant also argues that Graubner fails to teach the claimed high pH and high temperature requirements. This is not found persuasive as Graubner explicitly teaches that the polypeptide of the invention is to be used in pulp bleaching [0096-0098] and that in pulp bleaching temperatures rise to above 80 C and pH raised to above 10 [0007].
The arguments are not found to be persuasive.
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.
Claim(s) 1-7, 10, and 12-18 are rejected under 35 U.S.C. 103 as obvious over Lund et al, US Patent Publication 2016/0177503 in view of Graubner et al, US Patent Publication 2021/0071161.
Regarding claims 1 and 12-16, Lund teaches a bleaching process comprising:
providing pulp (see abstract and [0083]);
performing a delignification of the pulp [0018] by carrying out in the following sequence:
a) an enzymatic treatment step (X) (see example 3) comprising contacting the pulp with a glycoside hydrolase family GH11 xylanase enzyme [0055-0057] at a pH of at least 9.5 (up to 11 [0087]) and a temperature of at least 85 °C (up to 90 [0086]);
b) an oxidation step (D), wherein a bleaching agent is added [0111];
c) an alkaline extraction step (E) [0111], wherein an alkaline agent is added [0111]; and
d) recovering bleached pulp (see claims and [0114]).
Lund teaches all of the actively claimed method steps of the claims. Lund does not provide a singular example of every limitations, but teaches each limiting individually. It is the Examiner's stance that these teachings are sufficient for a showing of anticipation, as the same claimed order of operations is shown (Example 3 and [0055-0065]) teaches the addition of xylanase before the HAP treatment step and that after the HAP treatment step (as shown in example 4) is an oxidization step followed by an alkaline extraction step. Lund teaches the addition of the xylanase is optional but if it were added to do it before the HAP treatment.
It would have been obvious to one of ordinary skill in the art at the time of the invention to add the optional limitations as taught in example 3 to the total treatment of the pulp as taught in example 4 for the benefit of improving the Kappa number and aiding in the removal of the HexA components (see example 3 [0107]). As combining two embodiments of the same teaching would have been obvious to one of ordinary skill in the art a the time of the invention.
Lund teaches many different sequences of xylanase to be based on and specified the ammino acids sequences [0055-0066], but is simply silent on specifically at least 79% amino acid sequence identity with amino acids 3-180 of SEQ ID no 2.
In the same field of endeavor of pulp bleaching [0007], Graubner teaches that the preferred GH 11 xylanase enzyme is SEQ ID No 2 or 3 (3 being the preferred sequence of Lund) with the polypeptide having a sequence that matches at least 75% [0074] and preferred at least 90% [0108 and 0113].
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize either the SEQ 2 GH 11 enzymes as they have been shown as functional equivalents to each other by Graubner and Lund is merely silent to the use of SEQ 2 options while providing a laundry list of enzyme options with different nomenclature. It would have been a simple substitution of one known element for another to arrive at the predictable end result of improved bleaching of pulp.
Furthermore, the claims also provide a passive limitation of "wherein the GH11 xylanase enzyme has an ability to cause at least 20 % reduction in viscosity of a xylan- containing mixture at 90 °C, pH 10.5 and at a concentration of 3.0 µg or less of the GH11 xylanase enzyme protein per gram of said xylan-containing mixture, when compared to the xylan-containing mixture without any xylanase enzyme, wherein the xylan-containing mixture comprises 0.07 g/ml or less of xylan."
It is the Examiner's stance that this limitations is a property of the xylanase enzyme being utilized, as it is claimed to have the ability to perform the claimed function and not actively claimed the function to occur as part of the method.
While no other reference will present the exact comparison against another mixture without xylanase but has a xylan containing mixture of 0.07 g/ml or less of xylan, it must be understood that the specifically claimed xylanase enzyme must be what allows for this potential ability to occur. As long as the claims require the same enzyme in the claimed amount, it will be understood that the end result will be the same.
Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claims 2-3, Lund remains as applied above.
Regarding claim 4, Lund teaches that the pH can be as high as 11 [0087] and a temperature of at least 85 °C (up to 90 [0086]).
While there is not a showing in any of the examples of the specific claimed range, the body of the discloser does include it as an overlapping range.
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), see MPEP 2144.05.
Regarding claim 5, Lund teaches in Example 3 that 6 mg of enzyme is added per 1000 kg of ODP [0104]. This equates to 6 grams per 1000 kg of pulp.
Regarding claim 6, Lund further teaches that an optional oxygen delignification step can be performed [0018] where oxygen is added [0006 and 0041]. Examples 2-4 show that the pulp had the O stage occur prior to the oxidation step.
Regarding claim 7, Lund further teaches that the Stage D includes an oxygen containing oxidizing agent [0114].
Regarding claim 10, Lund further teaches that the xylanase is a family 11 [0056] and formed form bacteria [0057].
Regarding claims 17 and 18, Lund further teaches that the pulp is cellulosic pulp (see abstract).
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Lund et al, US Patent Publication 2016/0177503 in view of Graubner et al, US Patent Publication 2021/0071161 and in further view of Fagerstrom et al, USP 5,922,579.
Regarding claim 8, Lund further teaches that the bleaching agent is hydrogen peroxide [0038] but is silent on the use of a metal chelation step.
In the same field of endeavor of bleaching pulp, Fagerstrom teaches that when bleaching pulp, it is best to do a Q stage chelation after the addition of the Xylanase and before further bleaching (see example 7 column 18). Fagerstrom further teaches that it is a good idea to add this chelation stage for the benefit of removing metals to improve the bleaching process (see columns 7 and 8).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the Q stage as taught by Fagerstrom in the Lund process for the benefit of adding a conventional additive for further removal of metal ions in a known manner.
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over Lund et al, US Patent Publication 2016/0177503 in view of Graubner et al, US Patent Publication 2021/0071161 and in further view of Tolan et al, US Patent Publication 2005/0150619.
Regarding claim 9, Lund teaches that the alkaline extraction step includes the use of O, but is silent on the specific use of the claimed chemicals.
In the same field of endeavor of beaching pulp treated with Xylanase (see abstract), Tolan teaches the benefits of performing a mild alkaline extraction that requires less NaOH [0157] to arrive at the same extraction process for the benefit of reducing the number of chemicals needed in the process [0016-0025 and 0067].
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the alkaline extraction step detailed by Tolan in the Lund method for the benefit of reducing costs and environmental waste with a known process that uses less NaOH.
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Lund et al, US Patent Publication 2016/0177503 in view of Graubner et al, US Patent Publication 2021/0071161 and in further view of Sung, US Patent Publication 2009/0148923.
Regarding claim 11, Lund remains as applied above but is simply silent on the molecular mass of the family 11 xylanase used int eh bleaching process.
In the same field of endeavor of bleaching pulp [0004], Sung teaches that he the preferred enzymes is a Family 11 xylanase [0050] and that they have lower molecular weight with examples provided at 20 kDa and 32 kDa [0050].
It would have been obvious o one of ordinary skill in the art at the time of the invention to utilize the known low molecular massed of conventional family 11 xylanase enzymes in pulp bleaching as taught by Sung in the Lund reference as Lund is merely silent of the mass/weight of the enzymes utilized and Sung is provided to show the conventional mas/weight of these same enzymes.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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