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 .
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.
Claims 16-18, 20, 22-24, 26-30 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Karnofsky US 3,970,764 as evidenced by Copeland US 2004/0253354 in view of Anderson WO 2017035012 (US 20180296940 cited as equivalent) in view of Beckel US 2,445,931.
Regarding claim 16, Karnofsky discloses a method comprising performing a first extraction process (it is known to extract flaked seeds first with a solvent such as hexane to remove oil content) of extracting a solid material with a first solvent (hexane) thereby generating a first extracted solid material (defatted flakes) and a first miscella (removed oil content) formed via extraction of extractable components (col. 1, lines 11-50).
Karnofsky discloses desolventizing the first extracted solid material (defatted flakes) discharged from the first extractor by at least heating the first extracted solid material to vaporize the first solvent in the from the first extracted solid material and thereby produce a desolventized extracted solid material (the de-oiled white flakes are made by extracting oil from dehulled flakes followed by desolventizing the extracted flakes i.e. removing solvent from the extracted flakes by heating) (col. 1, lines 11-50).
Karnofsky discloses extracting the desolventized extracted solid material with a second solvent (ethanol) thereby generating a second extracted solid material and a second miscella (white flakes are further extracted aqueous alcohols such as ethanol to make a soy protein concentrate. It is known that carbohydrates can be extracted from de-oiled flakes with little extraction of protein using strong alcohol solutions) (col. 1, lines 35-50).
Copeland discloses that in conventional solvent extraction, solvent partitions oil, phosphatides and other solvent miscible components into a liquid miscella phase leaving a de-oiled seed meal ([0018], [0017]). Therefore, providing additional evidence that the each of the above extraction processes taught by Karnofsky generate a separate liquid miscella phase.
Claim 16 differs from Karnofsky in view of Copeland in the recitation that the method specifically comprises carrying out each of the first and second extraction processes in an extractor that introduces a solid material into a feed inlet and a solvent into a solvent inlet and discharges the extracted material from a feed outlet and discharges the miscella through a miscella outlet.
Anderson discloses that extraction processes of soybean material and solvent can be carried out in an extractor (12) that introduces a solid material into a feed inlet (18) and a solvent into a solvent inlet (22) and discharges the extracted material from a feed outlet (20) and discharges the miscella through a miscella outlet (24) (see Fig 1, [0018], [0019], [0020]).
It would have been obvious to one of ordinary skill in the art to carry out the known first and second extraction processes of Karnofsky in view of Copeland in a known extractor as taught by Anderson in order to suitably perform the extraction processes with a suitable extractor. It has been held that “Combining prior art elements according to known methods to yield predictable results” and “Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results” supports a conclusion of obviousness (MPEP 2143.I.A,D).
Therefore, Karnofsky as evidenced by Copeland in view of Anderson makes obvious the method steps of:
introducing a solid material (flaked seed material/flaked soybeans) into a feed inlet of a first extractor and introducing a first solvent (hexane) through a solvent inlet of the first extractor; conveying the solid material through the first extractor and extracting the solid material (flaked seed material/flaked soybeans) with the first solvent (hexane), thereby generating a first extracted solid material (defatted soybean flakes) and a first miscella formed via extraction of extractable components from the solid material;
discharging the first extracted solid material (defatted soybean flakes) from the first extractor through a feed outlet of the first extractor and discharging the first miscella from the first extractor through a miscella outlet of the first extractor;
desolventizing the first extracted solid material discharged from the first extractor through the feed outlet of the first extractor by at least heating the first extracted solid material to vaporize the first solvent from the first extracted solid material and thereby produce a desolventized extracted solid material (‘764, col.1, lines 30-35);
conveying the desolventized extracted solid material (deoiled white soybean flakes) through a second extractor and extracting the desolventized extracted solid material with a second solvent (ethanol), thereby generating a second extracted solid material (soybean protein concentrate) and a second miscella formed via extraction of extractable components from the desolventized extracted solid material.
Claim 16 differs from Karnofsky as evidenced by Copeland in view of Anderson in the recitation that the method includes conveying the second miscella through at least one heat exchanger and cooling the second miscella to produce a cooled miscella stream, wherein cooling causes impurities of the second miscella to solidify and/or grow in size and specifically passing the cooled miscella stream through the mechanical separation device to separate solid material from the cooled miscella stream, thereby producing a separated solids stream and a purified miscella stream.
Beckel discloses cooling miscella to produce a cooled miscella stream obviously using a heat exchanger wherein cooling causes impurities of the miscella to solidify and grow in size (the alcohol solution remaining after separating the vegetable oil and containing the dissolved lecithin, carbohydrates, coloring matter and so forth is cooled until the temperature of the solution is 20 °C or less or 0° C or less. Gentle stirring causes the separated solid to agglomerate whence the separation of solid and liquid is facilitated) (Example I-II). Beckel discloses passing the cooled miscella stream through a mechanical separation device to separate solid material from the cooled miscella stream (a solid material separates which can be removed by centrifugation, decantation or any other usual methods) (col. 2, lines 25-41) thereby producing a separated solids stream (separated solids) and a purified miscella stream (liquid separated from solids) (Examples I- III). Beckel discloses that the purpose of the invention is to refine the miscella to allow alcohol (solvent) from the miscella to be repeatedly used (col. 1, lines 8-24, col. 4, lines 7-12)
It would have been obvious to one of ordinary skill in the art to modify Karnofsky as evidenced by Copeland in view of Anderson such that the method includes conveying the second miscella through at least one heat exchanger and cooling the second miscella to produce a cooled miscella stream, wherein cooling causes impurities of the second miscella to solidify and/or grow in size and specifically passing the cooled miscella stream through the mechanical separation device, thereby producing a separated solids stream and a purified miscella stream as taught by Beckel in order to refine the second miscella to allow repeated use of the alcohol from the second miscella to extract fresh batches of vegetable material. It has been held that “Combining prior art elements according to known methods to yield predictable results” and “Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results” supports a conclusion of obviousness (MPEP 2143.I.A,D).
Regarding claim 17, claim 17 differs from Modified Karnofsky in the recitation that the method specifically comprises receiving, at a press, the separated solids stream and the second extracted solid material having undergone extraction to provide a received material, and pressing the received material to remove a portion of the solvent from the received material and form a pressed stream.
However, Karnofsky discloses that to minimize the heat required for desolventizing it is known to press solid material leaving an extractor prior to desolventizing (col. 3, lines 48-50).
It is noted that Anderson already discloses that the solid material having undergone extraction (particulate matter having undergone extraction in second extractor 14) is subjected to desolventization, and discloses combining the solid material with other solid material prior to desolventization (‘940, [0022]).
Therefore, it would have been obvious to one of ordinary skill in the art to combine the separated solid stream and the second extracted solid material having undergone extraction for further processing by pressing to remove solvent in order to efficiently process all of the solid material obtained after the extraction process and thereby forming a pressed stream.
Regarding claim 18, Karnosky discloses that to minimize the heat required for desolventizing it is known to press solid material leaving an extractor prior to desolventizing (col. 3, lines 48-50). Therefore, it would have been obvious to one of ordinary skill in the art to further heat the pressed stream to thermally evaporate solvent from the pressed stream in order to recover solvent from the separated solids stream and second extracted solid material.
Regarding claim 20, claim 20 differs from Modified Karnofsky in the recitation that the method comprises combining the separated solids stream with a dried solids stream, however, Anderson also discloses combining multiple solids streams obtained during processing for further processing together (‘940, [0022], [0039]), therefore it would have been obvious to one of ordinary skill in the art to modify the method of Karnofsky in view of Copeland in view of Anderson in view of Beckel to include combining the separated solids stream with a dried solids stream in order to efficiently process different solids streams.
Regarding claim 22, Modified Karnofsky discloses that the solid material is soy and the second solvent is ethanol (‘764, col. 1, lines 11-50).
Regarding claim 23, Modified Karnofsky discloses that the cooling the second miscella comprises cooling the second miscella to a temperature less than 30 °C (20 °C or less) (‘931, examples 1-3).
Regarding claim 24, Modified Karnofsky discloses that the first solvent is hexane (‘764, col. 1, lines 11-50).
Regarding claim 26, Modified Karnofsky discloses that the desolventizing of the first extracted solid material comprises desolventizing the first extracted solid material in a desolventizer toaster (‘764, col. 1, lines 25-35) (‘354, [0018], [0019]).
Regarding claim 27, Modified Karnofsky discloses that the mechanical separation device comprises a centrifuge (‘931, col. 2, lines 30-33) (‘940, [0020]).
Regarding claim 28, Modified Karnofsky discloses that conveying the desolventized extracted solid material through the second extractor and extracting the desolventized extracted solid material with the second solvent comprises conveying the desolventized extracted solid material through the second extractor in a countercurrent direction from a flow direction of the second solvent (‘940, [0017], [0019], [0022], [0030]).
Regarding claim 29, Modified Karnofsky discloses that the second extractor (second extractor 14) has a feed inlet (28), a feed outlet (30), a solvent inlet (32), and a solvent outlet (34); the feed inlet receives the desolventized extracted solid material; the feed outlet discharges the second extracted solid material having undergone extraction; the solvent inlet receives the second solvent; and the solvent outlet discharges the second miscella (‘940, Fig. 1, [0021]).
Regarding claim 30, Modified Karnofsky discloses that the cooling of the second miscella comprises cooling the second miscella to a temperature to 20 °C or below (‘931, Example 2, 3), overlapping the claimed range.
Regarding claim 34, Modified Karnofsky discloses cooling the second miscella to produce the cooled miscella stream comprises causing impurities dissolved in the second miscella to solidify (‘931, col. 2, lines 25-41, Examples 1-3, col. 4, lines 42-60, col. 5, limes 3-10).
Claims 19 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Karnofsky US 3,970,764 as evidenced by Copeland US 2004/0253354 in view of Anderson WO 2017035012 (US 20180296940 cited as equivalent) in view of Beckel US 2,445,931 in view of Sullivan US 4,515,726.
Regarding claim 19, claim 19 differs from Modified Karnofsky in the recitation that the method further comprises conveying the cooled miscella stream to a settling tank positioned between the heat exchanger and the mechanical separation device and gravity separating at least a portion of solids from the cooled miscella stream from a remainder of the liquid.
Sullivan discloses that cooling of an ethanol extracted miscella produces a precipitate of non-oil substances which is recovered from either solvent or oil by settling and/or centrifugation (col. 2, lines 15-21).
It is additionally noted that Anderson already discloses that the separation device can be implemented using a number of different pieces of separation equipment, such as a centrifuge and a settling tank, in some examples multiple separation devices are used to increase removal efficiency of entrained particulate matter from the miscella stream (‘940, [0020]).
Therefore, it would have been obvious to one of ordinary skill in the art to modify the method of Modified Karnofsky to comprise conveying the cooled miscella stream to a settling tank positioned between the heat exchanger and the mechanical separation device and gravity separating at least a portion of solids from the cooled miscella stream from a remainder of the liquid as suggested by Sullivan in order to increase removal efficiency of the solids from the miscella stream.
Regarding claim 31, claim 31 differs from Modified Karnofsky in the recitation that the method comprises conveying the cooled miscella stream to a settling tank positioned between the heat exchanger and the mechanical separation device and gravity separating at least a portion of solids from the cooled miscella stream from a remainder of the liquid to form a gravity separated solids stream and a residual liquid stream, wherein passing the cooled miscella stream through the mechanical separation device comprises passing the gravity separated solids stream through the mechanical separation device to produce the separated solids stream and the purified miscella stream.
Sullivan discloses that cooling of an ethanol extracted miscella produces a precipitate of non-oil substances which is recovered from either solvent or oil by settling and/or centrifugation (col. 2, lines 15-21).
It is additionally noted that Anderson already discloses that the separation device can be implemented using a number of different pieces of separation equipment, such as a centrifuge and a settling tank, in some examples multiple separation devices are used to increase removal efficiency of entrained particulate matter from the miscella stream (‘940, [0020]).
Therefore, it would have been obvious to one of ordinary skill in the art to modify the method of Modified Karnofsky to comprise conveying the cooled miscella stream to a settling tank positioned between the heat exchanger and the mechanical separation device and gravity separating at least a portion of solids from the cooled miscella stream from a remainder of the liquid to form a gravity separated solids stream and a residual liquid stream, wherein passing the cooled miscella stream through the mechanical separation device comprises passing the gravity separated solids stream through the mechanical separation device to produce the separated solids stream and the purified miscella stream as suggested by Sullivan in order to increase removal efficiency of the solids from the miscella stream.
Claim 31 differs from Modified Karnofsky in the recitation that the method specifically comprises combining the residual liquid stream from the settling tank with the purified miscella stream from the mechanical separation device.
However, Anderson already discloses combining different miscella streams for further processing ([0008], [0039]), it would have been obvious to one of ordinary skill in the art to modify Modified Karnofsky such that the method specifically comprises combining the residual liquid stream from the settling tank with the purified miscella stream from the mechanical separation device in order to more efficiently subject the streams to further processing to recover solvent from the streams.
Claim 31 differs from Modified Karnofsky in the recitation that the method comprises mechanically and/or thermally desolventizing the separated solid stream. However Anderson already teaches treating obtained solid materials after extraction by thermally desolventizing the solid materials in order to recover solvent from the solid materials (subjecting solid material to desolventizer-toaster) (‘940, [0039]), therefore it would have been obvious to one of ordinary skill in the art to modify the method of Modified Karnofsky such that the method comprises thermally desolventizing the separated solid stream in order to recover solvent from the separated solid stream.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Karnofsky US 3,970,764 as evidenced by Copeland US 2004/0253354 in view of Anderson WO 2017035012 (US 20180296940 cited as equivalent) in view of Beckel US 2,445,931 in view of Sullivan US 4,515,726 in view of Kemper US 2010/0160658.
Regarding claim 32, claim 32 differs from Modified Karnofsky in the recitation that the method comprises both mechanically and thermally desolventizing the separated solids stream which comprises pressing the separated solid stream followed by heating the separated solid stream.
Kemper discloses mechanically pressing solvent impregnated solid material to express solvent and oil therefrom and then further subjecting the solid material to a thermal desolventizing apparatus (‘658, [0012]). It would have been obvious to one of ordinary skill in the art to modify the method of Modified Karnofsky to comprise both mechanically and thermally desolventizing the separated solids stream which comprises pressing the separated solid stream followed by heating the separated solid stream as suggested by Kemper in order to recover solvent from the separated solids stream using conventional devices for removing solvent from solids and since it has been held that “Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results” supports a conclusion of obviousness (MPEP 2143.I.D).
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Karnofsky US 3,970,764 as evidenced by Copeland US 2004/0253354 in view of Anderson WO 2017035012 (US 20180296940 cited as equivalent) in view of Beckel US 2,445,931 as evidenced by Dobbins US 6,355,816.
Regarding claim 33, Modified Karnofsky discloses that the first miscella comprises oil extracted from the solid material and the second miscella comprises sugars and carbohydrates (‘764, col. 1, lines 11-50) (‘931, col. 4, lines 26-31, 44-50). Dobbins further evidences that the second miscella comprises sugars and carbohydrates as Dobbins discloses that soy protein concentrates and soy protein isolates are major articles of commerce widely manufactured by extracting hexane-defatted soybean meal with a solvent consisting of a mixture of ethanol and water (typically 75% ethanol by weight) at elevated temperatures. The purpose of this extraction is to separate lecithin, sugars, and complex carbohydrates from the proteins (‘816, col. 2, lines 11-17).
Response to Arguments
Applicant’s arguments with respect to claim(s) have been fully considered but they have not been found persuasive.
On pg. 3 of the remarks Applicant argues that one of ordinary skill in the art would not have found it obvious to have modified Karnofsky as evidenced by Copeland in view of Anderson in further view of Beckel to arrive at the features claimed because Beckel relates to an entirely different miscella stream than the miscella stream the office action is proposing to modify in Karnosky. On pg. 4 Applicant argues that Beckel does not relate to a second miscella or disclose any processing steps associated with a second miscella. Applicant argues that the miscella of Beckel would be analogous to the alleged first miscella of Karnofsky. Applicant argues that the fatty oils and waxy solids being treated in Beckel would be removed in the hexane extraction step of Karnofsky and would be entirely inapplicable to the alleged second miscella of Karnofsky formed after the alcohol extraction
While Applicants remarks have been considered, and while it is acknowledged that the first extraction step with hexane is to remove oil from the soybean material, the cooling step taught by Beckel is not limited to only removing oil from the miscella. The cooling step also removes impurities that are in the miscella after ethanol extraction (see col. 1, lines 8-24, Example III see specifically col. 4, lines 26-57, also examples I and II discuss waxy solid removal), which is the second extraction step taught by Karnofsky, therefore one of ordinary skill in the art would have had motivation to apply the cooling step of Beckel to the second miscella obtained after the ethanol extraction in order to refine the second miscella to allow repeated use of the alcohol from the second miscella to extract fresh batches of vegetable material, as discussed in the 103 rejection above. It is noted that Beckel discloses that the invention is a process for refining the alcohol solvent characterized in that the continuous re-use of the alcohol does not result in building up the content of soluble impurities therein (col. 1, lines 25-30, col. 4, lines 7-10). It is noted that Applicant does not describe what the “impurities” actually are in the specification. It is noted that Applicants first extraction step is performed with hexane and the second extraction is performed with ethanol (see claims 22 and 24 and also paragraph [0008] of the PGPUB specification) which are the same extraction steps taught by Karnofsky.
It is additionally noted that as discussed in the 103 rejection Sullivan also discloses that cooling of an ethanol extracted miscella produces a precipitate of non-oil substances which is recovered from either solvent or oil by settling and/or centrifugation (col. 2, lines 15-21).
Therefore, while Beckel does not include a first extraction step with hexane to remove oil from the soybean prior to ethanol extraction, the cooling step is not only being utilized to remove oil from the miscella obtained after ethanol extraction, as discussed above the cooling step is also for removing other impurities to refine the second miscella to allow repeated use of the alcohol from the second miscella to extract fresh batches of vegetable material. Therefore, one of ordinary skill in the art would have been motivated to perform the cooling step taught by Beckel (cooling of miscella obtained after extraction of soybean with ethanol) on the second miscella of Karnofsky (miscella obtained after second extraction step performed with ethanol) in order to refine the second miscella to allow repeated use of the alcohol from the second miscella to extract fresh batches of vegetable material. It has been held that “Combining prior art elements according to known methods to yield predictable results” and “Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results” supports a conclusion of obviousness (MPEP 2143.I.A,D).
On pg. 5 of the remarks Applicant argues that the proposed modification would render Karnofsky unsuitable for its intended purpose. Applicant argues that Karnofsky requires a specific process for processing the alleged second miscella.
This argument has not been found persuasive, the process being modified is not the invention of Karnosfky itself, the process being relied upon and being modified is the well-known conventional process in the art that is described in the background of the invention. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." MPEP 2123.I
Conclusion
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 ASHLEY AXTELL whose telephone number is (571)270-0316. The examiner can normally be reached M-F 9:00- 5:30.
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/A.A/
Ashley AxtellExaminer, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
