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 .
This Office action is in response to the amendment filed June 11, 2026 in which claims 1-5 were amended.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Lynd (US 5258293-appears on PTO-1449).
Lynd teaches a method of continuously producing ethanol from lignocellulosic substrates is provided. The method involves providing a suitable microbial system within a reaction vessel and adding fermentable substrate to the reactor to form a reaction mixture (see abstract). As the reaction proceeds, there results within the reaction vessel the formation of at least three clearly defined zones. The uppermost zone in the reaction vessel is a gaseous region while the intermediate zone comprises a clarified liquid containing the produced ethanol (see col. 1, lines 67 through col. 2, lines 1-4), Lynd meets the limitations of the claims other than the differences that are set forth below.
Lynd does not teach that the GC/MS analysis of the ethanol of his invention has at least one peak with a retention time as set forth in the claims, nor does Lynd teach from where the peaks are derived or their concentrations. However, no unobviousness is seen in these differences because ethanol has a specific chemical formula and the prior art teaches that ethanol of this specific chemical formula is produced in this method. It is the examiner’s position that the ethanol of the instant claims is not patentably distinct by virtue of its method of production. Notwithstanding, the prior art cited teaches ethanol derived from waste sources (see col. 7, lines 24-28) and as such it would be reasonable to expect that the ethanol would possess the claimed GC/MS analysis or in the least overlap the retention times of the instantly claimed features. No evidence has been presented to establish that the properties of the ethanol of the instant claims will materially differ from the ethanol of the cited prior art.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hoge(US 4,009,075- appears on previous PTO-892) .
Hoge teaches a process for making alcohol from cellulosic material by hydrolyzing the material to sugars and subjecting the resultant reaction mixture to digestion and fermentation to convert the sugars to alcohol (see abstract). Various microbiological systems for fermenting the sugars to form alcohol can be used with this invention. For example, certain strains of bacteria are known to produce alcohol from sugars (see col. 5, lines 3-6).
Alcohol forms a useful fuel and may be utilized in admixture with other fuels, for example, gasoline to produce a low cost fuel. Ethyl alcohol, as produced from cellulosic waste materials in accordance with the present invention, also is useful as a solvent; extractant; antifreeze; intermediate in the synthesis of innumerable organic chemicals, and as an essential ingredient of alcoholic beverages and pharmaceuticals (see col. 1, lines 29-36). Hoge meets the limitations of the claims other than the differences that are set forth below.
Hoge does not teach that the GC/MS analysis of the ethanol of his invention has at least one peak with a retention time as set forth in the claims, nor does Hoge teach from where the peaks are derived or their concentrations. However, no unobviousness is seen in these differences because ethanol has a specific chemical formula and the prior art teaches that ethanol of this specific chemical formula is produced in this method. It is the examiner’s position that the ethanol of the instant claims is not patentably distinct by virtue of its method of production. Notwithstanding, the prior art cited teaches ethanol derived from waste sources (see col. 7, lines 24-28) and as such it would be reasonable to expect that the ethanol would possess the claimed GC/MS analysis or in the least overlap the retention times of the instantly claimed features. No evidence has been presented to establish that the properties of the ethanol of the instant claims will materially differ from the ethanol of the cited prior art.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that the product of the present invention and that of the Lynd and Hoge differ in the purification process and that it cannot be assumed that substantially the same ethanol composition is produced. Applicant argues that unexpectedly advantageous effects are achieved with use of the present ethanol composition wherein trace amounts of alkanes are present. Applicant refers to Tables B1 to B3, C1 to C3 and D1 to D3.
The examiner has reviewed the data in the tables. The results are not markedly better such that the results would be unexpected. Although applicant compared the claimed invention to prior art ethanol compounds, the examiner finds this evidence insufficient to rebut the prima facie case of obviousness because the evidence did not show relative effectiveness over ethanol made from lignocellulosic materials such as used in Lynd and Hoge. The examiner cannot ascertain if the same results would be obtained when Lynd and Hoge are compared to the ethanol composition of the present invention. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
THIS ACTION IS MADE FINAL. 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 CEPHIA D TOOMER whose telephone number is (571)272-1126. The examiner can normally be reached Monday-Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached on 571-272-6368. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 19028770/20260807
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