DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicant’s election of the method claims 1-13, 17-24 and 26-35, made without traverse in the reply of 12/12/2024, has been acknowledged. Accordingly, claim 36 has been withdrawn from further consideration under 37 CFR 1.142(b), as being drawn to the non-elected inventions.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 1-13, 17-24 and 26-35 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 pre-AIA the applicant regards as the invention.
With respect to claim 1, it is unclear from the claim language how the steps of ‘heating’ the composition within the temperature ranges as recited, can be performed in the absence of any temperature sensors and associated steps of controlling the temperature. The same consideration applies to the steps directed to adjusting the pH. Similarly, it is unclear how a person of ordinary skills would determine whether or not the composition is demulsified ‘sufficiently’, without any active, positive steps drawn to measuring the level of demulsification. Moreover, in steps (g), (h), the claim language is conclusory, and it is not clear from such language in what sense ‘separating’ is supposed to be different from ‘recovering’. In claim 3, again, the language is conclusory, and it is not clear what active, positive steps must result in adjusting this parameter for steps (a), (b), as well as how those adjustments must be inter-related with the adjustments in steps [d] and [e]. In claims 4-5, it is unclear how the ‘temperature shock’ as recited, must be inter-related with the steps of heating as recited in claim 1. Claim 6 is indefinite, since, first, the claim language fails to set forth the amount of the entire composition, and, second, it is unclear whether or not the salt should be added in step (e), the step having been evaluated as optional and, therefore, not having patentable moments. It is also unclear in steps (d), (e), how adding a salt must be inter-related with adding an acid and adding a base, as recited. In claim 8, it is unclear what active, positive steps must ensure that the cells are ‘unwashed’. The same consideration applies to claims 9, 11-13, 17-22 23, 28-35, since those claims fail to set forth any active positive steps of the claimed method, that would result in the conditions recited. Note that the features recited beyond the context of active, positive steps of the claimed invention, are not accorded patentable weight when evaluated for patentability. Further note that it is applicants’ responsibility to locate and correct all instances of the raised clarity issues, including those in dependent claims. Additionally, in claims 10, 22, 26, ‘the ‘demulsified lysed cell composition’ lacks antecedent basis. In this connection, note that step (f) of claim 1 is optional. Furthermore, in5laim 28, it is unclear what is meant by ‘crude lipid’. Perhaps, ‘crude oil’ was actually meant.
Double Patenting
5 The non-statutory 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. See 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); and 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) may be used to overcome an actual or provisional rejection based on a non-statutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
6. Claim 1 is rejected under the judicially created doctrine of obviousness-type
double patenting s being unpatentable over claims 1-41 of US 11124736. Although the conflicting claims are not identical, they are not patentably distinct from each other because all features of the instant claim recited within active, positive steps of the claimed method, are entirely within the scope of claims 1-41 of US 11124736.
7. Claim 1 is rejected under the judicially created doctrine of obviousness-type
double patenting s being unpatentable over claims 1-20 of US 11352651. Although the conflicting claims are not identical, they are not patentably distinct from each other because all features of the instant claim recited within active, positive steps of the claimed method, are entirely within the scope of claims 1-20 of US 11352651.
Claim Rejections - 35 USC § 103
8. The following is a quotation of 35 U.S.C. 103(a) 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 of this title, 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.
9. Claims 1-13, 17-24 and 26-35 are rejected under 35 U.S.C. 103 (a) as being unpatentable over TRIPLETT et al. [US 20160319217].
With respect to claim 1, TRIPLETT discloses methods directed to obtaining a lipid from a composition comprising microbial cells, the process comprising a step of heating the composition comprising the microbial cells to a temperature of about 60° C. to about 80° C.; a step of adding one or more enzymes capable of disrupting the cell wall of the microbial cells for a time sufficient for lysis of the microbial cells and heating the microbial cells up to 80° C.; a step of heating the lysed cell composition to a temperature of about 80° C. to about 90° C.; a step of adjusting the pH of the composition to a pH of about 10 to about 12 by adding a base and maintaining the pH of about 10 to about 12 for at least 1 hour; and the steps of separating/and recovering the lipids as recited [see, for example, Claims 1-48 of TRIPLETT].
TRIPLETT does not teach adding an acid as recited. However, acids are routine for regulating pH levels, and it would have been clearly within the ordinary skills of an artisan before the effective filing date of the claimed invention to have modified the invention of TRIPLETT n by adding acids, to have additional means to adjust pH levels within broad ranges of values, including those recited, in order to optimize process conditions depending on particular goals of processing, to diversify the methods to be performed.
It is further emphasized that the features recited beyond the context of active, positive steps of the claimed invention, are not accorded patentable weight when evaluated for patentability.
Drawings
10. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims, as well as any structural detail that is essential for a proper understanding of the disclosed invention. Therefore, the inter-relationships between the method steps, as recited, must be clearly shown and properly referenced as such. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Conclusion
11 Any inquiry concerning this communication or earlier communications from the examiner should be directed to Natalia Levkovich whose telephone number is (571)272-2462. The examiner can normally be reached on Monday-Friday, 2.00 pm-10:00 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jill A Warden can be reached on 571-272-1267. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NATALIA LEVKOVICH/ Primary Examiner, Art Unit 1798
Prosecution Insights