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 .
Detailed Action
This Office Action is in response to the Applicant’s reply received 5/18/26. Claims 1, 3-7, 12, 14-19, and 22-28 are pending and are considered on the merits.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/18/26 has been entered.
Response to Applicant’s Arguments and Amendments
In the response submitted by the Applicant the following 35 U.S.C § 102 rejections are withdrawn:
o Claim(s) 1-3 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Baldwin et al. (US 7303899 in IDS 7/1/21).
The following 35 U.S.C § 103 (a) rejections are withdrawn:
o Claim(s) 1-7, 12, 14, and 15 were rejected under 35 U.S.C. 103 as being unpatentable over Baldwin et al. (US 7303899) in view of Galli et al. (US 7138257, in IDS 7/12/23);
o Claim(s) 1-3 and 16-19 were rejected under 35 U.S.C. 103 as being unpatentable over Baldwin et al. (US 7303899 in IDS 7/1/21) in view of Langhauser (US 7452425 in IDS 7/1/21)
The Applicant’s amendments of separating solids from the first portion necessitated the above withdrawals. All arguments drawn to these rejections are now considered moot.
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.
Claim(s) 22 remains rejected under 35 U.S.C. 103 as being unpatentable over Batie et al. (US 2008/0299256).
Batie et al. teach a process for grain liquefaction and fermentation comprising:
a) Milled corn is placed in an aqueous slurry tank with amylase (Fig 1A);
b) This slurry is then liquified over two stages with amylase to make starch (Fig 1A);
c) Prior to fermentation, the liquified starch is saccharified by starch-digesting enzymes including glucoamylase to produce a saccharified liquid comprising the monosaccharide glucose (Batie [0073]);
d) The saccharified liquid is then fermented to produce a beer which is distilled to various chemicals including ethanol (Batie, Fig 1A, [0086]); and
e) The saccharified liquid with glucose can be processed into alternative products including sweeteners, intravenous solutions, or other chemicals rather than fermentation (Batie, [0105-0106].
While Batie et al. does not expressly teach separating the saccharified liquid into a 1st and 2nd portion to produce glucose and ethanol respectively. However this would be obvious to one of ordinary skill since Batie et al teach that making ethanol and glucose as a sweeter or intravenous solution are alternatives for the saccharified liquid. Therefore it would be obvious to diversify and divide the saccharified liquid into two portions and make a larger variety of products.
One of ordinary skill would see this as an improvement to create a more robust process with different options for the end-products (MPEP 2141 III (C-D)).
Response To Applicant’s Arguments
Applicant's arguments have been fully considered but they are not persuasive. The Applicant argues the Batie et al. does not suggest using a fermentation facility to produce a liquified composition then providing separate portions of that liquified composition for separate uses. However this appears to be what [0105-0106] suggest. The fermentation facility produces glucose from the liquified composition by saccharification. That glucose can be used for either fermentation or the other products. One of ordinary skill recognizing the liquified composition can saccharified to produced glucose to make a variety of different products, then it would be obvious to guide portions of the liquified composition to any one or all of those processes to make the products (ethanol, sweeteners, intravenous solutions, etc) based on demand or profit. One of ordinary skill would recognize this partitioning of the liquified composition to different products as obviously making the method more robust by providing options for the fermentation facility.
As mentioned in the previous office action, it is obvious for one of ordinary skill to partition a common resource to several alternatives. The motivation being that the method can expand from a single product to several diversified products. Furthermore the claims do not limit that the ‘providing steps’ are simultaneous. It would be just as obvious to provide some of the monosaccharide to fermentation then switch to an alternative product with another portion of the monosaccharide. The rational being that one of ordinary skill can produce alternative products with the same process.
Claim(s) 23, 24, 25, 27 and 28 remain rejected under 35 U.S.C. 103 as being unpatentable over Batie et al. (US 2008/0299256) as applied to claim 22 above, and further in view of Kalinowski et al. (WO 2014/100685).
Batie et al. teach the method of claim 22, using milled corn to produce ethanol and glucose as a sweetener or intravenous solutions from a saccharified liquid. What they do not teach is the separation of the solids comprising corn oil and fiber from the saccharified liquid. However this would be obvious in view of Kalinowski et al. who teach the processing of biomass, including corn (Kalinowski, Fig 1 and [0033]), hydrolyzed with enzymes in a slurry. This hydrolyzed slurry is sent to a filter or membrane (Fig1, part A and [0066]) that separates the solids from the saccharified liquid. These solids can be further processed and incorporated into a downstream fermentation process (Kalinowski, [0112]).
It would be obvious to incorporate the process solids into the fermentation process of Batie et al. since Kalinowski et al. teach that this is a suitable use for them. One of ordinary skill would recognize that this would improve the method by producing more substate to ferment to ethanol. Therefore it would be obvious to use a filter or membrane to separate the solids from the milled corn in Batie et al. and use those solids to increase the production of the ethanol.
It would be obvious to add the solids to the saccharide liquid of Batie before, during, or after fermentation has begun. Kalinowski et al. teach that these processed solids are suitable for fermentation and therefore they can be added to begin and/or continue a fermentation process.
Response To Applicant’s Arguments
Applicants rely on the arguments used in traversing the above 35 U.S.C. 103 rejection of claim 22 over Batie et al. to also traverse this rejection without additional arguments. However, as explained above, the previous rejection stands. Therefore, the response set forth above to arguments also applies to this rejection.
Claim(s) 26 remain rejected under 35 U.S.C. 103 as being unpatentable over Batie et al. (US 2008/0299256) and Kalinowski et al. (WO 2014/100685) as applied to claims 23, 24, 25, 27 and 28 above, and further in view of Lee (US 2012/0244590).
Batie et al. and Kalinowski et al. render obvious the method of claims 23 and 25. They do not teach the separation and processing of stillage after distilling ethanol. However this would be obvious in view of Lee who teaches a method of producing ethanol from milled corn (Fig 1). Lee continues to teach that the whole stillage can be centrifuged #26 to produce thin stillage. This thin stillage can be evaporated #28 to separate oil from syrup.
It would be obvious for one of ordinary skill to process the distillation stillage of Batie et al. with the method of Lee since this will produce additional products from the method (MPEP 2141 III (C-D)).
Response To Applicant’s Arguments
Applicants rely on the arguments used in traversing the above 35 U.S.C. 103 rejection of claim 22 over Batie et al. to also traverse this rejection without additional arguments. However, as explained above, the previous rejection stands. Therefore, the response set forth above to arguments also applies to this rejection.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7, 12, 14-19, and 22-28 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,233,466. Although the claims at issue are not identical, they are not patentably distinct from each other because both claims are drawn to methods of:
a) Providing a grain feedstock including ground corn;
b) Saccharifying the feedstock to produce a stream comprising at least one monosaccharide sugar;
c) Taking a portion of the monosaccharide sugar stream and providing it for a 1st use including a chemical production process; and
d) Taking a portion of the monosaccharide sugar stream and providing it for a 2nd use including fermentation.
While US 10,233,466 reverses the middle steps by first dividing the feedstock into a 1st and 2nd portion which are then independently saccharified. This is an obvious reversal of steps since both scenarios achieve the same result.
Claims 1-7, 12, 14-19, and 22-28 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11060116. Although the claims at issue are not identical, they are not patentably distinct from each other because both claims are drawn to methods of:
a) Providing a grain feedstock including ground corn;
b) Saccharifying the feedstock to produce a stream comprising at least one monosaccharide sugar;
c) Taking a portion of the monosaccharide sugar stream and providing it for a 1st use including a chemical production process; and
d) Taking a portion of the monosaccharide sugar stream and providing it for a 2nd use including fermentation.
Claims 1-7, 12, 14-19, and 22-28 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12084706. Although the claims at issue are not identical, they are not patentably distinct from each other because both claims are drawn to methods of:
a) Providing a grain feedstock including ground corn;
b) Saccharifying the feedstock to produce a stream comprising at least one monosaccharide sugar;
c) Taking a portion of the monosaccharide sugar stream and providing it for a 1st use including a chemical production process; and
d) Taking a portion of the monosaccharide sugar stream and providing it for a 2nd use including fermentation.
While US 12084706 reverses the middle step by first dividing the feedstock into a 1st and 2nd portion which are then independently saccharified. This is an obvious reversal of steps since both scenarios achieve the same result of producing streams of monosaccharide sugars.
In response to this office action the applicant should specifically point out the support for any amendments made to the disclosure, including the claims (MPEP 714.02 and 2163.06).
CONTACT INFORMATION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THANE E UNDERDAHL whose telephone number is (303) 297-4299. The examiner can normally be reached Monday through Thursday, M-F 8-5 MST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at (571) 272-3311.The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THANE UNDERDAHL/Primary Examiner, Art Unit 1699
