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 .
Election/Restrictions
Applicant's election with traverse of claims 1-11, 15-17, 20-22, and 25 in the reply filed on 5/8/2026 is acknowledged. The traversal is on the ground(s) that there is no search burden, and that all the claims ultimately depend from claim 1. This is not found persuasive because the fiber of claim 27 can have the exact same claimed composition and be made via a different method (Poursorkhabi et al teach the same composition, but instead of spinning into a coagulant they electrospin the same composition). Assuming, arguendo, that the coagulation step makes claim 1 allowable, then claim 27 would still be bound by the nature of product-by-process claims (see MPEP 2113) and the fiber of Poursorkhabi would anticipate the fiber of claim 27. The same logic holds true for claim 28. Therefore there is a search burden.
Regarding the independent/dependent argument:
While it is correct for fee purposes claims 27 and 28 are treated as a dependent claims, for examination purposes they are treated as independent claims since they are directed to separate and distinct statutory categories of invention. Additionally (since the instant application is a 371), from MPEP 1850 II, 6th paragraph: "Unity of invention has to be considered in the first place only in relation to the independent claims in an international application and not the dependent claims. By "dependent" claim is meant a claim which contains all the features of one or more other claims and contains a reference, preferably at the beginning, to the other claim or claims and then states the additional features claimed (PCT Rule 6.4 ). The examiner should bear in mind that a claim may also contain a reference to another claim even if it is not a dependent claim as defined in PCT Rule 6.4. One example of this is a claim referring to a claim of a different category (for example, "Apparatus for carrying out the process of Claim 1 ---," or "Process for the manufacture of the product of Claim 1 ..."). "). Similarly, a claim to one part referring to another cooperating part, for example, "plug for cooperation with the socket of Claim 1 is not a dependent claim." Thus claims 27 and 28 are independent claims under PCT guidelines.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 7 is objected to because of the following informalities: in the last line of claim 7 there needs to be a comma after polyoxymethylene.
Claim 11 is objected to because of the following informalities: in the line 5 of claim 11 there needs to be a comma after formate ([HCOO]-).
Claim 25 is objected to because of the following informalities: claim 25 depends on canceled claim 24. For examination purposes claim 25 will be treated as if it depended on claim 1. Appropriate correction is required.
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 2-6, 9, 10, 15-17, and 20-22 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. Dependent claims are rejected due to their dependency.
Regarding claim 2, the phrases "for example", “preferably”, and “more preferably” render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation 6-60 wt%, and the claim also recites seven narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 4, the phrases "for example", “preferably”, and “more preferably” render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation 5-50 wt%, and the claim also recites three narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 6, the phrase “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 9, the phrases “preferably”, and “more preferably” render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 10, the phrase “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 15, the phrase “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 16, the phrase “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 17 recites the broad recitation “no more than 60 wt%”, and the claim also recites other narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 17, the phrases “preferably”, and “more preferably” render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 20, the phrase “preferably” (used in two difference circumstances in lines 2 and 8) renders the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 21, the phrase “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
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 1, 4, 5, 7, 8, 10, 17, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP S49100328 (herein ‘328, with machine translation). Regarding claim 1, ‘328 teaches:
Examples 1, 2, and 3 in lines 87-117 teach making a spinning dope comprising lignin and PVA (the claimed additional polymer) dissolved in an aqueous sodium or potassium solution (which is the claimed ionic liquid and water) and spinning the dope into a coagulation bath to make a fiber.
Regarding claim 2, '382 teaches:
Wherein the water content in the dope solvent is at least 5 wt% (In Example 3 (lines 109-117), two solutions are mixed in a 1:1 ratio. The first solution has 83.4 wt% water and 16.6 wt% PVA. The second solution has 34.4 wt% lignin, 4 wt% sodium hydroxide, and 61.6 wt% water. When the two solutions are combined there is 72.5 wt% water, 8.3 wt% PVA, 17.2 wt$ lignin, and 2 wt% sodium hydroxide. Thus there is at least 5 wt% water)
Regarding claim 3, '382 teaches:
Wherein the spinning dope has a total loading of lignin and additive polymer of 6-60 wt%, relative to the mass of the spinning dope, excluding the mass of lignin and additive polymer (In Example 3 (lines 109-117), the total loading (based on Applicant's calculation) of lignin and PVA is 34.2 wt%)
Regarding claim 4, '382 teaches:
Wherein the weight ratio of lignin to additive polymer in the spinning dope is at least 2:1 or at least 3:1 (The weight ration of lignin to PVA in Example 3 is 2.0964:1, '382 states the ratio is 2:1)
Regarding claim 5, '382 teaches:
Wherein lignin is present in the spinning dope at a loading of at least 5 wt%, relative to the total mass of dope solvent (The total loading of lignin is 23.1 wt% in Example 3)
Regarding claims 7 and 8:
As previously discussed '382 teaches PVA.
Regarding claim 10, '382 teaches:
Wherein the weight average molecular weight (Mw) of the additive polymer is from 60 to 200 kDa (In Example 3 the PVA has a degree of polymerization of 1700. PVA has a monomer molecular weight of 44.05. Thus the polymer molecular weight (which is 1:1 as Dalton) is 44.05x1700 which equals 74.885 kDa)
Regarding claim 17, '382 teaches:
Wherein the coagulant comprises water and comprises water (the first option) and sodium sulfate (the third option) (Example 3 uses the same processing as Example 2 (lines 99-108) and which uses a coagulation bath comprising water and sodium sulfate)
Regarding claim 20, '382 teaches:
'382 teaches heat-drawing the fiber at 220 C, this meets the requirements of the second and third options in claim 20.
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.
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over ‘382. Regarding claim 6:
Wherein the additive polymer loading is present in the spinning dope at a loading of 1-10 wt%
Based on the composition of Example 3. as previously discussed and Applicant's calculation. '382 teaches 11.1 wt% PVA. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have the additional polymer within the 10%, since it has been held that when there are similar ranges one skilled in the art would expect them to have the same properties (MPEP 2144.05 I)
Claims 11 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over ‘382, in view of Lehmann et al (EP 2524980; already of record, herein Lehmann, using US 2014/0194603 as the English equivalent). Regarding claims 11 and 15:
As previously discussed ‘382 teaches an ionic liquid, but not those as defined by claims 11 or 15.
In the same field of making lignin fibers, Lehmann also teaches using an ionic liquid in the spinning solution, which can be an imidazolium compound or an alkyammonium compound (paragraph 0030).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to use a needed ionic liquid since the prior art teaches the use of ionic liquids, as a class, in spinning dope for making lignin fiber, thus the selection of a specific material for a specific purpose would be obvious (MPEP 2144.07).
Claims 9 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over ‘382, in view of Zhang et al (US 9190222; herein Zhang). Regarding claim 9, ‘382 is silent to:
Wherein the PVA is partially hydrolysed, having a degree of hydrolysis (DH) of 80-95%
In the same field of endeavor Zhang teaches spinning lignin and PVA together, and that the PVA can have a degree of hydrolysis of 87-89% (column 17, lines 26-31)
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have the needed degree of hydrolysis when the art already teaches the use of PVA with lignin, since it has been held that the selection of a known material for a desired use is obvious (MPEP 2144.07)
Regarding claim 16, ‘382 is silent to:
Wherein the dope solvent further comprises ethanol
In the same field of endeavor Zhang teaches using water (as taught by Zhang) and ethanol as the solvent for lignin (column 9, line 62 through column 10, line 12).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to use ethanol with water, since it helps dissolve the lignin in spinning dopes.
Claims 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over ‘382, in view of Li et al (CN 102677510; herein Li, with machine translation). Regarding claims 21 and 22:
‘382 is silent to the processing required to obtain the lignin. In the same field of endeavor Li teaches the process of claims 21 and 22 in the Abstract.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to use such processing, since it enables one to extract a lignin solution from biomass.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over ‘382, in view of Follmer et al (FR 3072976; herein Follmer, with machine translation). Regarding claim 25, ‘382 is silent to:
Weaving the fibres to form a fabric
In the same field of lignin fibers, Follmer teaches weaving them into a fabric for further processing (page 8, paragraph 6).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to weave the lignin fibers as taught by Follmer, since doing so allows for further processing of the lignin fibers, such as making a carbon fiber fabric in the example of Follmer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Gifford (US 2010/0163018), Edye (US 2010/0196967), Bissett (US 2012/0003471), Koide (US 2015/0148458), and Jansen (CA 2911042).
These references disclose methods of obtaining lignin and methods of making lignin fibers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY J KENNEDY whose telephone number is (571)270-7068. The examiner can normally be reached Mon-Fri 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Galen Hauth can be reached at 571-270-5516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY KENNEDY/ Primary Examiner, Art Unit 1743
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