Detailed Office Action
The communication dated 8/12/2026 has been entered and fully considered.
Claims 17-35 are pending with claims 34 and 35 withdrawn from consideration
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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 8/12/2026 is acknowledged.
Allowable Subject Matter
Claims 25-27 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: It is known in the art to perform an alkaline extraction followed by pulping of bark alone (see rejections below). It is also known to do pulping of bark with wood chips (see e.g. MIRANDA or EINSPAHR cited by the Examiner). It is the Examiners position that it would also be obvious to add an alkali treatment prior to kraft pulping of this mixture (see.e.g. SIM cited by the Examiner). What neither of these three references suggest is alkali extraction of the bark followed by mixing with wood chips and then performing pulping. The combination of MIRANDA or EINSPAHR with SIM would suggest alkaline extraction of the mixture of bark and wood chips followed by cooking of the alkaline extracted bark and wood chips.
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.
Claim 20 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 claim 20 the applicant states the alkali can be NaOH, Na2S, or Na2CO3 and then states the charge of the alkali is as effective alkali. This makes sense for NaOH and Na2S, however, it does not make sense for Na2CO3. EA = NaOH + 1/2Na2S. The Na2CO3 no matter how much added would always be ‘0’ EA.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 17, 22, 24, 29, and 32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 3,817,826 HOYE et al., hereinafter HOYE
As for claims 17, 24, and 29, HOYE discloses treating wood bark [col. 1 lines 34-35 and 40-41] with sodium hydroxide [col. 1 lines 54-72], separating the residue and then digesting the pulp by known digestion liquors [col. 2 lines 5-11]. The pulp can then be bleached [col. 4 lines 10-13].
As for claim 22, HOYE disclose the alkaline treatment takes place at a temperature of 100 degrees C [col. 2 line 39]
As for claim 32, HOYE does not disclose hot water extraction.
Claims 17-19, 24, 29, and 32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2020/084196 TAMMINEN et al., hereinafter TAMMINEN.
As for claim 17 and 24, TAMMINEN discloses pre-extracting spruce bark with sodium carbonate and urea [0059, 0086]. The pre-extracted spruce bark solids are then subjected to soda or kraft cooking [0086].
As for claim 18, TAMMINEN discloses pre-extracting spruce bark [0086] without any additional components [0042]
As for claim 19, TAMMINEN discloses an optional pre-treatment step [0058]. TAMMINEN additionally disclosing that a chelating agent can be added to the urea/c sodium carbonate treatment step which acts as an additional pre-treatment before cooking [0059]
As for claim 29, TAMMINEN discloses a subsequent bleaching [0086].
As for claim 32, TAMMINEN discloses pre-extraction with urea/sodium carbonate instead of hot-water extraction [0059, 0086].
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 20, 21, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 3,817,826 HOYE et al., hereinafter HOYE.
As for claim 20, HOYE discloses alkali extraction with NaOH at 1.5 to 10% NaOH [col. 2 line 4] which abuts the claimed range making a prima facie case of obviousness.
As for claim 21, HOYE discloses 1 to 10% NaOH [col. 2 line 4] which is less than the claimed range. However, differences in concentration will not typically support non-obviousness absent evidence of criticality.
Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.);
In the instant case higher than 10% concentration of NaOH will lower time and temperature needed [col. 2 lines 25-31]. HOYE caveats that higher NaOH concentrations will affect subsequent acid sulfite cooking.
However, HOYE states that other cooking can be used which would include kraft [col. 2 lines 11-12 “sulphate” in this instance means kraft]. Kraft operates at alkali conditions and therefore higher NaOH would not be an issue.
As for claim 23, HOYE discloses 22 hours for 100 degrees C and discloses extraction time is decreased by half by increasing temperature by 10 degrees C At 120 degrees C the time would be 5.5 hours 330 minutes [col. 2 lines 25 to 40]. Further higher temperature allows for a lower time. At the time of the invention it would be obvious to optimize the time, concentration, and temperature through routine experimentation. The person of ordinary skill in the art would expect that increasing the temperature would lower the extraction time needed.
Claims 30 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 3,817,826 HOYE et al., hereinafter HOYE, in view of U.S. 5,302,249 MALHOTRA et al., hereinafter MALHOTRA.
As for claim 30 and 31, HOYE discloses that the bark pulp can be used to make absorbing paper [col. 2 lines 15-20] but does not disclose hardwood or softwood. MALHOTRA discloses using blends of hardwood and softwood for making absorbing paper [col. 9 lines 3-10 and claim 1]. At the time of the invention it would be obvious to the person of ordinary skill in the art to combine hardwood and softwood pulp with the bark pulp intended for making the same product,3 absorbing paper [MPEP 2144.06 (I)].
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over WO2020/084196 TAMMINEN et al., hereinafter TAMMINEN, in view of Alkaline Pulping edited by GRACE, hereinafter GRACE.
As for claim 25, TAMMINEN discloses that the kraft cooking uses 14-20% EA which falls within the claimed range [0044], at 150-178 degrees C which falls within the claimed range, for 60-140 minutes which falls within the claimed range [0044]. Kraft cooking liquor comprises sulfide, however, TAMMINEN does not disclose the percentage of sulfide (sulfidity).
GRACE discloses that sulfidity in alkaline kraft pulping is a result effective variable. GRACE shows that a higher sulfidity increases yield [pg. 105 Table 40] and that sulfidity increase the rate of lignin removal [pg. 106 col. 1 par .1; pg. 108 Table 42]. GRACVE discloses most mills operate at 20-30% sulfidity and up to 40% which abuts/overlaps the instant claimed range [pg. 113 col. 1 par. 2]. At the time of the invention it would be obvious to the person of ordinary skill in the art to optimize the sulfidity of pulping through routine optimization. A higher sulfidity allows for the removal of more lignin while not affecting cellulose. However, the person must balance the corrosion of the recovery boiler with higher sulfidity.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over WO2020/084196 TAMMINEN et al., hereinafter TAMMINEN, in view of Handbook for Pulp and Paper Technologists by SMOOK, hereinafter SMOOK.
As for claim 33, TAMMINEN discloses pulping including kraft pulping which produces black liquor. TAMMINEN does not disclose recycling the black liquor SMOOK discloses that pulping can be done in a process called displacement batch cooking which circulates used black liquor from a previous cook [pg. 88 col. 1 last par]. At the time of the invention it would be obvious to the person of ordinary skill in the art to apply the modified batch cooking of SMOOK to the kraft cooking of TAMMINEN. The person of ordinary skill in the art would be motivated to do so to by SMOOK remove more lignin, dissolve less cellulose, and use less chemical [pg. 88 col. 2 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
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