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 10/29/25. Claims 1-7, 12, 14-19, and 22-28 are pending and are considered on the merits.
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.
Claim(s) 1-3 remain rejected under 35 U.S.C. 102(a)(1) as being anticipated by Baldwin et al. (US 7303899 in IDS 7/1/21).
Baldwin et al. teach a method comprising the following steps (see Fig 11 and col 5, lines 40-50).
Milled Granular Starch (a grain feedstock) is provided to a reactor with glucoamylase and amylase;
The action of the glucoamylase and amylase in the reactor produces a solubilized sugar stream of glucose (a sugar composition comprising a monosaccharide);
This sugar stream is separated from its solids into a dextrose syrup (i.e. glucose syrup) and other components (residual starch, fat, and protein);
A 1st portion of the dextrose syrup, which has the solids previously removed, is converted to high fructose corn syrup (a 1st use);
A 2nd portion of the dextrose syrup is fermented to produce a beer and ethanol (a 2nd use); and
The other components can also be fermented (the 2nd use).
It is noted that claim 3 does not limit that the fermentation of the 2nd portion and solids of the other components occur in the same fermentation reactor, only that they introduced to the 2nd use. In this case, the 2nd use is fermentation, which both components (2nd portion and other components) are destined.
Therefore the invention as a whole is anticipated by the reference.
Response To Applicant’s Arguments
Applicant's arguments have been fully considered but they are not persuasive. The Applicant argues that Baldwin:
does not teach or even remotely suggest saccharifying a grain feedstock at an ethanol fermentation facility to form a sugar composition that includes at least one monosaccharide, and then providing separate portions of the monosaccharide to different uses, as featured in claim 1 (Response, pg. 7, middle).
In response to this, Fig. 11 of Baldwin is reproduced below, which has been annotated to correspond with steps a)-f) of the above rejection.
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In particular, step c) the separator produces dextrose syrup which comprises glucose (monosaccharides) to the left. From there a portion of that syrup is separated into three portions to make refining products, high fructose syrup, and fermentation. The 1st Portion for the 1st Use includes high fructose corn syrup (step d)), while the 2nd Portion for the 2nd Use includes fermentation that produces beer and ethanol (a biochemical) (step e).
Therefore the rejection remains.
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) 1-7, 12, 14, and 15 is/are 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).
Baldwin et al. teach a method comprising the following steps (see Fig 11 and col 5, lines 40-50).
Milled Granular Starch from corn (a grain feedstock) is provided to a reactor with glucoamylase and amylase;
The action of the glucoamylase and amylase in the reactor produces a solubilized sugar stream of glucose (a sugar composition comprising a monosaccharide);
This sugar stream is separated from its solids into a dextrose syrup and other components (residual starch, fat, and protein);
A 1st portion of the dextrose syrup, which has the solids previously removed, is converted to high fructose corn syrup (a 1st use);
A 2nd portion of the dextrose syrup is fermented to produce a beer and ethanol (a 2nd use); and
The other components can also be fermented (the 2nd use).
Baldwin et al. does not expressly teach the other components and 2nd portion are combined and fermented together. However this would be obvious in view of Galli et al. (see Fig 3 and col 5, lines 25-50) who teach whole corn can be milled #102 to a composition comprising #110 granular starch (grits), germ and bran. This composition is then separated #112 into solids (germ and residual bran) #114 and granular starch #116. The granular starch is then fermented #101. The solids #114 are further processed #128 and added to the fermentation #101.
Therefore it would be obvious to add the processed solids #128 with the granular starch #112 prior to, simultaneously, or after fermentation begins since both of these are suitable substrates for fermentation and obviously one substrate can begin fermentation alone or with the other. And since they are both suitable for fermentation, then adding either one to the fermentor after the reaction has begun would also be obvious since this is simply adding more fermentable sugars to the reaction. Furthermore it would be obvious to use whole corn since both Baldwin et al. and Galli et al. teach this is a suitable cereal for producing ethanol and dextrose syrup. One of ordinary skill in the art would recognize that Galli et al. is an obvious improvement to Baldwin et al. since it simplifies the fermentation of the different substrates (solids and starch) from two separate fermentations into one (MPEP 2141 III (A), (C), (D)).
Claim(s) 1-3 and 16-19 is/are 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).
Baldwin et al. teach a method comprising the following steps (see Fig 11 and col 5, lines 40-50).
Milled Granular Starch from corn (a grain feedstock) is provided to a reactor with glucoamylase and amylase;
The action of the glucoamylase and amylase in the reactor produces a solubilized sugar stream of glucose (a sugar composition comprising a monosaccharide);
This sugar stream is separated from its solids into a dextrose syrup and other components (residual starch, fat, and protein);
A 1st portion of the dextrose syrup, which has the solids previously removed, is converted to high fructose corn syrup (a 1st use);
A 2nd portion of the dextrose syrup is fermented to produce a beer and ethanol (a 2nd use); and
The other components can also be fermented (the 2nd use).
What Baldwin et al. does not teach is recycling the enzymes after step a). However this would be obvious in view of Langhauser et al. who teach recycling steepwater comprising amylase and glucoamylase to cleave and solubilize more substrate (Langhauser , col 7, lines 5-25). This enzyme containing steepwater is separated from the sugar composition using a screen (a filter) at the top of the reactor (Langhauser, col 8 lines 1-10) Therefore it would be obvious to remove the enzymes form the sugar composition including the 1st or 2nd portion for further use in the reaction. This will obviously reduce the need for new enzyme and use what otherwise would be disposed.
Response To Applicant’s Arguments
Applicant's arguments have been fully considered but they are not persuasive. The Applicant argues that Galli et al. fails to teach or even remotely suggest saccharifying a grain feedstock at an ethanol fermentation facility to form a sugar composition that includes at least one monosaccharide, and then providing separate portions of the monosaccharide to different uses, as featured in claim 1. However this feature was already taught by Baldwin et al. and further detailed in the annotated Fig. 11 presented above in this office action. The prior response for Claim(s) 1-3 remain rejected under 35 U.S.C. 102(a)(1) by Baldwin et al. applies to this rejection as well.
Claim(s) 22 is/are 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:
Milled corn is placed in an aqueous slurry tank with amylase (Fig 1A);
This slurry is then liquified over two stages with amylase to make starch (Fig 1A);
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]);
The saccharified liquid is then fermented to produce a beer which is distilled to various chemicals including ethanol (Batie, Fig 1A, [0086]); and
The saccharified liquid with glucose can be process 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. reference merely reports that glucose can be prepared for fermentation or alternatively used in other products which is differs from providing a 1st and 2nd portions of the liquefied sugar stream to their respective and different 1st and 2nd uses. However 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 is/are 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 is/are 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
Claims 1-7, 12, 14-19, and 22-28 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:
Providing a grain feedstock including ground corn;
Saccharifying the feedstock to produce a stream comprising at least one monosaccharide sugar;
Taking a portion of the monosaccharide sugar stream and providing it for a 1st use including a chemical production process; and
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 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:
Providing a grain feedstock including ground corn;
Saccharifying the feedstock to produce a stream comprising at least one monosaccharide sugar;
Taking a portion of the monosaccharide sugar stream and providing it for a 1st use including a chemical production process; and
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 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:
Providing a grain feedstock including ground corn;
Saccharifying the feedstock to produce a stream comprising at least one monosaccharide sugar;
Taking a portion of the monosaccharide sugar stream and providing it for a 1st use including a chemical production process; and
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.
Request for Interview
The Examiner believes an interview would be useful in progressing this case. The Applicant is encourage to contact Thane Underdahl at (303) 297-4299 to discuss the claims/claim amendments to place this case in condition for allowance prior to replying to this Office Action.
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.
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