Patent Application 16089918 - METHOD OF PRODUCING SUGAR LIQUID

Title: METHOD OF PRODUCING SUGAR LIQUID

Application Information

Invention Title: METHOD OF PRODUCING SUGAR LIQUID
Application Number: 16089918
Submission Date: 2025-05-20T00:00:00.000Z
Effective Filing Date: 2018-09-28T00:00:00.000Z
Filing Date: 2018-09-28T00:00:00.000Z
National Class: 435
National Sub-Class: 209000
Examiner Employee Number: 87899
Art Unit: 1638
Tech Center: 1600

Rejection Summary

102 Rejections: 1
103 Rejections: 2

Cited Patents

No patents were cited in this rejection.

Office Action Text

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 17,20-25,27-40 are under examination. Claim 41 is withdrawn.

Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 14, 2025 has been entered.

Election by Original Presentation
Newly submitted claim 41 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Unlike the claims previously examined, the invention of claim 41 includes recycling/recirculation of the third alkaline filtrate. This process is different structurally and functionally from the group of claims originally examined because it includes a recirculation step that alters the flow of the alkaline solutions. Had this claim been proposed initially, examiner would have had applicant choose between no recirculation/recycling and recirculation in the process.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 41 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.

Response to Applicants Arguments/Amendments

The claim amendments have better clarified the invention. Therefore, the former 112 rejection is withdrawn. The amendments have also distinguished the invention from the references present in the previous art rejections dated December 16, 2024. Therefore, the former art rejections dated December 16, 2024 are withdrawn. However, new art rejections and a 112(b) rejection is now presented.

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 17,20-25,27-40 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. Independent claims 1 and 31 recite an alkaline aqueous medium treated cellulose containing biomass and a treated material. It is not clear the way the claims are drafted that these two materials are the same thing. This needs to be clarified in the claims. For purposes of examination, examiner will interpret treated material as being the same as an alkaline aqueous medium treated cellulose containing biomass. The dependent claims fail to resolve this discrepancy.
Claim 31 recites in line 13 that the alkaline aqueous medium treated cellulose containing biomass is obtained from step 9C. There is no mention of step 9C in instant Claim 31 or any other claim. There is insufficient antecedent basis for this limitation in the claim. The dependent claims do not remedy this deficiency.

The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

Claims 36 and 38 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Independent claims 17 and 31 recite “a step (C) of allowing, in the first filtration unit, the alkaline filtrate obtained by the step (B) to pass through a cellulose-containing biomass.” Their dependent claims 36 and 38 recite that “the alkaline filtrate obtained by step (C) is not used for the recirculation filtration step” and “the alkaline filtrate obtained by step(C) is not used for the steps (A) and (B)” respectively. These dependent claims are broadening the invention. Dependent claims 36 and 38 are not further limiting the independent claims because claims 36 and 38 are contradicting the recirculation process in Step C of independent claims 17 and 31.
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims complies with the statutory requirements.

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 17,20-21,25,27-28,31-38 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Borden (US 20150047629)

Borden discloses a method of producing a sugar liquid, the method comprises providing at least a three-unit filtration apparatus having a first filtration unit, at least one second filtration unit, and a third filtration unit in fluid communication to facilitate opposed cyclical flow, wherein an alkaline aqueous medium flows sequentially from the third filtration unit to the second filtration unit to the first filtration unit, and the biomass material flows in an opposite direction from the first filtration unit to the second filtration unit to the third filtration unit (Figure 1; Paragraph 12; Paragraph 44); a step (A) of allowing, in the third filtration unit an alkaline aqueous medium to pass through an alkaline aqueous medium treated cellulose containing biomass obtained from step (B), resulting in an alkaline filtrate and obtaining a cellulose-containing solid component (Figure 1, Paragraph 12, Paragraph 44), a step (B) of allowing in the second filtration unit, the alkaline filtrate obtained by the step (A) to pass through an alkaline aqueous medium treated cellulose containing biomass obtained from step (C), resulting in an alkaline filtrate (Figure 1, Paragraph 12, and Paragraph 44), and step (C) allowing in the first filtration unit, the alkaline filtrate obtained by the step (B) to pass through a cellulose-containing biomass (Figure 1, Paragraph 12, and Paragraph 44), a step of hydrolyzing the cellulose-containing solid component obtained in step (A) to a yield a sugar liquid (glucose sugars in a liquid are produced by hydrolyzing solid cellulose containing biomass from the stream) (Figure 1, Abstract, Paragraph 57) as in instant claims 17, 31-32
Borden further teaches wherein the alkaline aqueous medium supplied to step (A) and the alkaline filtrate obtained by the steps (A) and (B) are maintained substantially at the same temperature (Paragraph 53) as in instant Claim 20, Borden teaches that the alkaline filtrate has a temperature of about 100°C which can include a temperature greater or less than 100°C (Paragraph 53) as in instant Claim 21. Borden teaches wherein the cellulose containing biomass supplied to the step C is a herbaceous biomass (Paragraph 85) as in instant Claim 25. Borden teaches wherein the alkaline aqueous medium and the alkaline filtrate are alkaline aqueous solutions (Paragraph 43) as in instant Claim 27. Borden teaches wherein the period of time during sequences of step A to C is about one minute to about 90 minutes (Paragraphs 51-52) as in instant Claim 28. Borden teaches that the alkaline filtrate obtained by steps A and B is allowed to pass through the cellulose containing biomass by self-weight filtration in the direction of gravity (Paragraph 66) as in instant Claim 33. Borden teaches wherein the alkaline aqueous medium is a sodium hydroxide aqueous solution or a potassium hydroxide aqueous solution (Paragraph 43) as in instant Claim 34. Borden teaches wherein step B is a step of allowing the alkaline filtrate obtained by the step B to repeatedly pass through the alkaline aqueous medium treated cellulose containing biomass obtained from step B through two or more of the least one second filtration unit arranged in series (Figure 1) as in instant Claims 35 and 37. Borden teaches that the alkaline filtrate obtained by the step C is not used for recirculation (Figure 1) as in instant Claims 36 and 38.

The reference anticipates the claim limitations.

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 17,20-22,25,27-28,31-40 are rejected under 35 U.S.C. 103 as being unpatentable over Borden (US 20150047629) in view of Mlayah (US 20110105737)

Borden applies as above to teach claims 17,20-21,25,27-28,31-38. Borden teaches hydrolyzing diffuser units that can be used in order to pretreat cellulosic containing biomass materials (Figure 1). Figure 1 of Borden shows that biomass moves from one unit to the other. Borden teaches that alkaline solution and the biomass material can be circulated throughout the system, moving in opposite directions through the various units (Figure 1 and Paragraphs 44, 65-66). Borden does not teach biomass material is moved from one unit to the next with a mesh/porous belt.
Mlayah teaches that biomass can be moved during a pretreatment process using a conveyer belt which is perforated and porous (Paragraphs 41-45 of Mlayah). It would have been obvious to an artisan of ordinary skill at the time of effective filing to have used the conveyer belt of Mlayah in the process of Borden. An artisan would have been motivated to have used such a conveyer belt because it can effectively move biomass material to other units while separating the biomass from the alkaline solution present in that particular chamber (Paragraphs 41-45 of Milayah). Because the perforated belt can successfully move biomass material in the system, there would be a high expectation for success (Paragraphs 41-45 of Milayah) as in instant Claims 39-40.
Dependent Claim taught by Borden
Borden teaches that an acetic acid may be included to break down pretreatment. It would have been obvious to have added acetic acid with the alkaline solution because it would be helpful to break down cellulosic material (Paragraph 42) as in instant Claim 22
Dependent Claim taught by Milayah
Milayah teaches that the liquid solution used in pretreatment can be maintained at a temperature of 95-110°C (Paragraph 68) as in instant Claim 21.
Borden teaches a diffuser (a series of pretreatment units) that is used to break down biomass materials. Borden does not teach that the cellulosic biomass material that is being broken down is transported throughout the units using a porous belt. However, an artisan would have been motivated to have used such a belt taught by Milayah because it allows for just the cellulosic biomass material to be successfully transported from one unit to the next without transporting large amounts of alkaline solutions. Given the teachings of the cited references and the level of skill of an ordinary skilled artisan at the time of applicants’ invention, it must be considered, absent evidence to the contrary, that the ordinary skilled artisan would have had a reasonable expectation of success in practicing the claimed invention.

All the claimed elements were known in the prior art, and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combinations would have yielded predictable results to one of ordinary skill in the art at the time of the invention (See KSA International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007). People of ordinary skill in the art will be highly educated individuals, possessing advanced degrees, including M.D.s and Ph.D.s. They will be medical doctors, scientists, or engineers. Thus, these people most likely will be knowledgeable and well-read in the relevant literature and have the practical experience in biofuel production and fermentation reactions. Therefore, the level of ordinary skill in this art is high.

Claims 17,20-25,27-38 are rejected under 35 U.S.C. 103 as being unpatentable over Borden (US 20150047629) in view of Medoff (20100112242)

Borden applies as above to teach claims 17,20-21,25,27-28,31-38. Borden does not teach grinding the biomass or breaking it down into a particular size. Medoff teaches that the biomass can initially be grinded in a dry state ((Paragraphs 100-102) It would have been obvious to an artisan of ordinary skill at the time of effective filing to have used the dry grinding method taught in Medoff. An artisan would have been motivated to have used the dry grinding method taught in Medoff because it exposes the internal fibers of the biomass material so that they to can be exposed for further treatment (Paragraph 11 of Medoff). Because such a pretreatment method is able to more effectively break down biomass material, there would have been a high expectation for success) as in instant Claim 24.
Medoff also teaches that the size of the biomass can be reduced using sieving with screens, each screen having different size apertures (Paragraph 104) of Medoff). Medoff teaches an example where the biomass can be sieved to a size of 1/8 of an inch (Paragraph 69 of Medoff) which is less than the claimed sieved size.
MPEP 2144.04 addresses changes in size.
Changes in Size/Proportion
In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package “of appreciable size and weight requiring handling by a lift truck” were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) (“mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled.” 531 F.2d at 1053, 189 USPQ at 148.).
In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.

The appropriate level/aperture to sieve the cellulose containing biomass is going to be dependent upon the equipment used to carry out the pretreatment and hydrolysis operations. The size of the biomass pieces will be dependent upon the chemicals and treatments used to break down the biomass. Altering the size of the biomass material does not materially affect the structure and/or function of the biomass material. The biomass material can still be used as a substrate to make sugar liquid. Applicant failed to provide evidence of the criticality of the recited range of an aperture size of 30mm or more. Therefore, the aperture proportions listed in claim 23 would have been obvious.
Borden does not teach a precise pH to keep the alkaline solution at. However, Medoff teaches raising the pH to exceed 10 which encompasses the pH range between 10 to 12 (Paragraphs 317 and 339 of Medoff). Medoff teaches a preferred pH range of 9-11 (Paragraph 317). It would have been obvious to an artisan of ordinary skill at the time of effective filing to have raised the pH to above 10 as taught by Medoff. An artisan would have been motivated to have raised the pH to such a level because Medoff teaches that raising the pH to over 10 followed by a subsequent lowering of the pH afterwards can help to precipitate unwanted toxins that are inhibitory to further processing (Paragraph 339 of Medoff). Because Medoff teaches that this process can produce a better quality product there would have been a high expectation for success as in instant Claim 29.
The hydrolysis operation of Borden is responsible for helping to break down the cellulose containing biomass material into sugars (Paragraph 19 of Borden). Borden does not expressly teach that enzymes are added to the hydrolysis process. Medoff teaches that hydrolysis can be accomplished by adding a group of enzymes to the cellulose containing biomass material (Paragraph 337 of Medoff). It would have been obvious to an artisan of ordinary skill in the art to have added enzymes of Medoff to further break down the biomass material in the hydrolysis operation of Borden. An artisan would have been motivated to have added such enzymes because Medoff teaches “Cellulases are a group of enzymes that act synergistically to hydrolyze cellulose. Commercially available Accellerase.RTM. 1000 enzyme complex, which contains a complex of enzymes that reduces lignocellulose biomass into sugars can be used (Paragraph 337).” There would have been a high expectation for success because Medoff teaches that the addition of such cellulases can help break down the biomass material into useful sugars in the hydrolysis operation as in instant Claim 30.
Dependent Claims taught by Borden
Borden teaches that an acetic acid may be included to break down biomass during pretreatment (Paragraph 42 of Borden). It would have been obvious to have added acetic acid because it would be helpful to break down cellulosic material (Paragraph 42) as in instant Claim 22
Dependent Claims taught by Medoff
Medoff teaches that acetic acid may be used in a pretreatment stream (Paragraph 12 of Medoff) as in instant Claim 21. Medoff teaches that aqueous alkaline pretreatment solutions used can include sodium hydroxide and potassium hydroxide (Paragraph 311 of Medoff) as in instant Claim 34.

Borden teaches a diffuser (a series of pretreatment units) that is used to break down biomass materials. Borden does not teach a physical pretreatment operation that breaks down the biomass material into smaller pieces. Medoff teaches that more interior portions of the biomass material can be available for hydrolysis and other operations such as fermentation by better exposing such interior fibrous biomass material by dry grinding and sieving. An artisan would have been motivated to have used these techniques taught by Medoff because they provide more biomass material available to be converted into sugars. Given the teachings of the cited references and the level of skill of an ordinary skilled artisan at the time of applicants’ invention, it must be considered, absent evidence to the contrary, that the ordinary skilled artisan would have had a reasonable expectation of success in practicing the claimed invention.

All the claimed elements were known in the prior art, and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combinations would have yielded predictable results to one of ordinary skill in the art at the time of the invention (See KSA International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007). People of ordinary skill in the art will be high educated individuals, possessing advanced degrees, including M.D.s and Ph.D.s. They will be medical doctors, scientists, or engineers. Thus, these people most likely will be knowledgeable and well-read in the relevant literature and have the practical experience in biofuel production and fermentation reactions. Therefore, the level of ordinary skill in this art is high.

Conclusion

All claims stand rejected.

Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN K VAN BUREN whose telephone number is (571)270-1025. The examiner can normally be reached M-F:9:30am-5:40pm; 9:00-10:00pm.
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, Tracy Vivlemore can be reached at 571-272-2914. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LAUREN K. VAN BUREN
Examiner
Art Unit 1638

/Tracy Vivlemore/Supervisory Primary Examiner, Art Unit 1638