DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 08/06/2025 is acknowledged.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1, 4
Withdrawn claims: None
Previously cancelled claims: 2-3
Newly cancelled claims: None
Amended claims: None
New claims: None
Claims currently under consideration: 1, 4
Currently rejected claims: 1, 4
Allowed claims: None
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 1 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over IQ I (“Optisteep”, 2016, Water IQ International; IDS citation) in view of Ganiyu (Ganiyu et al., “Coupling of membrane filtration and advanced oxidation processes for removal of pharmaceutical residues: A critical review”, 2015, Separation and Purification Technology, 156, pages 891-914; previously cited), Spittle (US 2013/0175222; previously cited), and Morimoto (US 3,998,739; previously cited), as evidenced by Goudot (EP 3679119; previously cited) and Bhattacharyya (Bhattacharyya, K.G., Gupta, S.S., “Adsorption of a few heavy metals on natural and modified kaolinite and montmorillonite: A review”, 2008, Advances in Colloid and Interface Science, vol. 140, pages 114-141; previously cited).
Regarding claim 1, IQ I discloses a method named “OPTISTEEP®” (page 1) which is a method for producing malt from cereals (corresponding to barley) via steeping followed by germination (page 1, 2nd column). Malting of cereals also includes kilning after germination as evidenced by Goudot [0002]. The “OPTISTEEP®” steeping process comprises only one immersion step in which the cereals are immersed in water and in which the water is continuously purified as evidenced by Goudot [0020]. IQ I discloses that water purification comprises an adsorption process which purifies the water by eliminating cationically charged molecules and volatile organic compounds from the water (page 2, 2nd column). IQ I discloses that the adsorption process is followed by a membrane filtration step which removes organic polymers and microorganisms from the steeping water (page 2, 2nd column).
IQ I does not teach: (a) that the adsorption process is followed by an oxidation process comprising injecting hydrogen peroxide and oxygen into the water; (b) that the adsorption process uses a first carrier material having a ceramic open structure to enable binding of non-charged polymeric organic molecules including a fraction of polyphenolic compounds and molecular compounds leaking from the grain in the water; (c) using a ceramic filter bed in the oxidation process as a second carrier material for an immobilized catalyst comprising a complex of metal ions comprising copper, iron, cobalt, and/or palladium; or (d) the water entering at least one oxidation column via a perforated injection tube extending vertically upwards in the oxidation column during the oxidation process.
However, Ganiyu discloses that combined membrane separation-advanced oxidation processes (AOPs) is a promising technology that eliminates the drawbacks of both membrane filtration and AOPs while also complementing the advantages of each one. Ganiyu discloses that AOPs oxidize organic compounds in the water by injecting hydrogen peroxide (corresponding to H2O2) and oxygen (corresponding to O3) into the water (page 902, 1st column, 1st-2nd paragraphs under “5. Conclusions”). Ganiyu discloses that it is well-known that the application of oxygen to the water also removes microorganisms (page 898, 2nd column, 1st paragraph under “4.1.1. Ozonation – basic principle”).
It would have been obvious for a person of ordinary skill in the art to have modified the method of IQ I by incorporating an oxidation process as taught by Ganiyu. Since IQ I discloses that its adsorption step is followed by membrane filtration step which removes organic polymers and microorganisms from the steeping water (page 2, 2nd column), but does not disclose specifics of a membrane filtration step that achieves such a purpose, a skilled practitioner would have been motivated to consult an additional reference such as Ganiyu in order to determine a suitable membrane filtration step which removes organic polymers and microorganisms from the steeping water. In consulting Ganiyu, the practitioner would find that coupling membrane filtration with an oxidation process improves the performance of membrane filtration, thereby providing motivation for the practitioner to incorporate into the membrane filtration step an oxidation process comprising injecting hydrogen peroxide and oxygen into the water. Therefore, the claimed following of the adsorption process by an oxidation process comprising injecting hydrogen peroxide and oxygen into the water is rendered obvious.
The combination of IQ I and Ganiyu does not teach: that the adsorption process uses a first carrier material having a ceramic open structure to enable binding of non-charged polymeric organic molecules including a fraction of polyphenolic compounds and molecular compounds leaking from the grain in the water; using a ceramic filter bed in the oxidation process as a second carrier material for an immobilized catalyst comprising a complex of metal ions comprising copper, iron, cobalt, and/or palladium; or the water entering at least one oxidation column via a perforated injection tube extending vertically upwards in the oxidation column during the oxidation process.
However, Spittle teaches a carrier material having a ceramic open structure (corresponding to porous ceramic particles) [0005], [0032] which adsorbs positively and negatively charged substances [0083]-[0085]. Spittle also teaches that clay is used to make the ceramic [0085]. Spittle discloses a ceramic filter bed [0091] as a carrier material for a catalyst for removing micro-organisms, wherein the catalyst comprises a complex of metal ions (corresponding to the ceramic particles being charged with metal ions) comprising at least one of copper [0063] and iron (corresponding to iron oxide) [0086].
It would have been obvious for a person of ordinary skill in the art to have modified the method of IQ I by using porous ceramic as a first carrier material during the adsorption process as taught by Spittle. Since IQ I discloses that the adsorption process removes cationically charged molecules and volatile organic compounds from the water (page 2, 2nd column), but does not disclose a structure for performing such a function, a skilled practitioner would have been motivated to consult an additional reference such as Spittle in order to determine a suitable structure. Since the porous ceramic of Spittle comprises clay [0085] and clay adsorbs non-polar substances (corresponding to non-ionic) as well as negatively charged substances (corresponding to anions) and positively charged substances (corresponding to cations) as evidenced by Bhattacharyya (page 115, column 1, paragraph 4), the ceramic material of Spittle enables binding of non-charged polymeric organic molecules including a fraction of polyphenolic compounds and molecular compounds leaking from the grain in the water as claimed. Therefore, the combination of prior art renders the claimed first carrier material in the adsorption process having a ceramic open structure capable of binding non-charged polymeric organic molecules including a fraction of polyphenolic compounds and molecular compounds leaking from the grain in the water obvious.
Furthermore, in consulting Spittle, the practitioner would also find that the immobilized catalyst comprising a complex of metal ions comprising at least one of copper [0063] and iron [0086] in the ceramic filter bed [0091] is a suitable second carrier material with an immobilized catalyst for the elimination of microorganisms from water. Therefore, the claimed ceramic filter bed as a second carrier material containing an immobilized catalyst comprising a complex of metal ions comprising copped or iron used in the oxidation process is rendered obvious.
The combination of IQ I, Ganiyu, and Spittle does not disclose the water entering at least one oxidation column via a perforated injection tube extending vertically upwards in the oxidation column during the oxidation process.
However, Morimoto teaches a liquid filtration column which provides high filtering efficiency per unit quantity of filter bed material and prevents the suspended matter from accumulating mainly in the surface zone of the filter bed, leading to abrupt degradation of the filter bed (column 1, lines 5-11, 19-26, 56-58). Morimoto describes its filtration column as comprising an inner cylindrical compartment surrounded by an outer jacket compartment and a filter bed formed of granular material filling the space interposed between the outer jacket compartment and the inner cylindrical compartment (column 2, lines 3-11). Morimoto discloses that untreated liquid is fed into the inner cylindrical compartment and that the liquid leaves the inner cylindrical compartment through perforations in the inner cylindrical compartment (column 2, lines 12-20; Figs. 2-3). This disclosed perforated inner cylindrical compartment extending vertically upwards in the column corresponds to the claimed perforated injection tube through which the water enters the column.
It would have been obvious for a person of ordinary skill in the art to have modified the method of modified IQ I by using a perforated injection tube to introduce the untreated water into the oxidation column as taught by Morimoto. Since Spittle teaches that the column may contain a diffuser for diffusing the untreated water onto the ceramic particles in the filter bed and that the diffuser may be in contact with the ceramic particles [0065], but does not disclose a diffuser structure that puts the diffuser in contact with the ceramic particles, a skilled practitioner would have been motivated to consult an additional reference in order to determine a suitable diffuser structure that would be in contact with the particles while providing high filtering efficiency per unit quantity of filter bed material (Morimoto, column 1, 56-58; Spittle [0057]). Therefore, the claimed water entering at least one oxidation column via a perforated injection tube extending vertically upwards in the oxidation column during the oxidation process is rendered obvious.
Regarding claim 4, IQ I teaches the invention as described above in claim 1, including the water travels through a plurality of serially-arranged columns during the oxidation process (Spittle [0005], [0037-[0038]). Therefore, the water enters at least two of the oxidation columns during the oxidation process as presently claimed.
Response to Amendment
The Declaration under 37 CFR 1.132 filed 08/06/2025 is insufficient to overcome the rejection of claims 1 and 4 based upon IQ I, Ganiyu, Spittle, and Morimoto as evidenced by Goudot and Bhattacharyya as set forth in the last Office action.
Applicant argued that the presently claimed process was a major improvement over the previous process that is the subject of IQ I as the presently claimed process provided: a 26% improvement in germinated grains after 24 hours processing takes; and a 2-4% water uptake of the grains which reduced malting losses by 2%. Applicant stated that the process of the present claims and the process of described in IQ I do not share much commonality besides the Optisteep® name. Applicant argued that a skilled practitioner would not have combined IQ I with Ganiyu, Spittle, and Morimoto since none of Ganiyu, Spittle, and Morimoto relate to malt production (Declaration, paragraphs 4-8).
However, the Examiner points out that while the present invention relates to a method for producing malt from cereals via steeping, germination, and kilning, the present invention also recites water purification steps (i.e., “the immersion step comprising continues purification of the water; the purification comprises an adsorption process followed by an oxidation process; the adsorption process purifies water” as recited in present claim 1). Therefore, the present invention is also related to the technical field of water purification such as that described in Ganiyu, Spittle, and Morimoto.
Applicant then argued that the mention of O3 in Ganiyu does not correspond to the oxygen used in the claimed method (Declaration, paragraph 9).
However, the Examiner points out that “oxygen” as used in the present claims is considered to refer to the chemical element since there is no specific definition for “oxygen” provided in the present specification or the present claims. Since ozone (O3) contains three molecules of oxygen, it is considered to read on the claimed “oxygen”.
Applicant then argued that synergistic improvements in yield and quality were observed using the claimed process. Applicant pointed to the experimental results in Appendix A comparing various malting processes (Applicant’s Remarks, paragraphs 10-20).
The Declaration does not contain an Appendix A. Therefore, Applicant’s assertions of synergistic improvements are not supported. As such, the Declaration does not overcome the prior art rejections based upon IQ I, Ganiyu, Spittle, and Morimoto as evidenced by Goudot and Bhattacharyya as set forth in the last Office action
Response to Arguments
Claim Rejections – 35 U.S.C. §103 of claims 1 and 4 over IQ I, Ganiyu, Spittle, and Morimoto as evidenced by Goudot and Bhattacharyya: Applicant’s arguments have been fully considered and are considered moot or unpersuasive.
Applicant stated that Ganiyu is related to removal of pharmaceutical residues; Spittle relates to purification of drinking water; and Morimoto relates to an apparatus for filtration while the present invention is related to a method for producing malt from cereals via steeping, germination, and kilning. Applicant argued that it is clear that none of these cited references relates to the stated technical field of the present invention so that a skilled practitioner would appreciate that the process parameters of water-related technologies are specific to each chemical environment and would not expect these processes to reliably improve a purification process for steep liquor (Applicant’s Remarks, page 4, 1st paragraph under section III – page 6, 3rd paragraph).
However, the Examiner points out that while the present invention relates to a method for producing malt from cereals via steeping, germination, and kilning, the present invention also recites water purification steps (i.e., “the immersion step comprising continues purification of the water; the purification comprises an adsorption process followed by an oxidation process; the adsorption process purifies water” as recited in present claim 1). Therefore, the present invention is also related to the technical field of water purification.
In response to the assertion that a skilled practitioner would appreciate that the process parameters of water-related technologies are specific to each chemical environment and would not expect these processes to reliably improve a purification process for steep liquor, Ganiyu discloses that combined membrane filtration and AOPs combine filtration and degradation of pollutants such as natural organic matter (corresponding to NOM) (page 898, 1st column, 1st – 2nd paragraphs under “4. Coupling of membrane filtration and AOPs”). Ganiyu also discloses that it is well-known that the application of oxygen to the water also removes microorganisms (page 898, 2nd column, 1st paragraph under “4.1.1. Ozonation – basic principle”). Therefore, Ganiyu does not disclose water filtration methods that are solely directed to pharmaceutical compounds, but also discloses water filtrations methods directed to the removal of organic matter and microorganisms (e.g., organic compounds and microorganisms from steeped cereals). For at least these reasons, a skilled practitioner would recognize that water purification via filtration and oxidation may be applied to the removal of substances other than pharmaceuticals from water.
The present invention further requires adsorption in its water purification process while Spittle relates to adsorption in water purification; thus, Spittle is within the field of the present invention especially wherein the malted cereal of the present invention is used in food and beverages, thereby indicating that the water used in its malting process must be safe for human consumption (i.e., drinking water). Morimoto discloses that its apparatus is for filtering a liquid containing a suspended substance (1st column, lines 5-6) (e.g., water containing contaminants) and the present invention relates to purifying water (i.e., removing contaminants from water), Morimoto is within the field of the present invention. For at least these reasons, a skilled practitioner would recognize that water purification via filtration and adsorption may be applied to the removal of substances from drinking water.
Applicant then argued that the oxygen of the present invention does not equate to the ozone disclosed in Ganiyu. Applicant stated that oxygen and ozone are known in the art as being distinct chemical compounds with different properties and applications (Applicant’s Remarks, page 6, 4th-6th paragraphs).
However, the Examiner points out that “oxygen” as used in the present claims is considered to refer to the chemical element since there is no specific definition for “oxygen” provided in the present specification or the present claims. Since ozone (O3) contains three molecules of oxygen, it is considered to read on the claimed “oxygen”.
Applicant then argued that Morimoto relates to a liquid filtration column and does not mention oxidation at all. Applicant stated that the perforated injection tube of present claim 1 is used during the oxidation process so that a skilled practitioner would not have consulted Morimoto to improve an oxidation process (Applicant’s Remarks, page 6, 7th paragraph – page 8, 1st paragraph).
However, present claim 1 recites that “the oxidation process comprises […] using a ceramic filter bed as a second carrier material with an immobilized catalyst on it for removing micro-organisms, which catalyst comprises a complex of metal ions”. As described above in the rejection of present claim 1, Spittle discloses an immobilized catalyst comprising a ceramic filter bed [0091] and a complex of metal ions comprising at least one of copper [0063] and iron [0086] in the ceramic filter bed [0091], wherein the metals oxidize the water [0063]. Therefore, Spittle discloses a suitable second carrier material with an immobilized catalyst for the elimination of microorganisms from water during the oxidation process as presently claimed, thereby rendering the claimed feature obvious. Spittle also discloses that the filter bed may be held in columns (corresponding to cylinders and elongated cylinders) [0038]; and that a diffuser may be used to reduce the inflow energy of the untreated water onto the filter bed [0065]. Morimoto discloses a liquid filtration column which provides high filtering efficiency per unit quantity of filter bed material and prevents the suspended matter from accumulating mainly in the surface zone of the filter bed, leading to abrupt degradation of the filter bed (column 1, lines 5-11, 19-26, 56-58). Morimoto describes its filtration column as comprising an inner cylindrical compartment surrounded by an outer jacket compartment and a filter bed formed of granular material filling the space interposed between the outer jacket compartment and the inner cylindrical compartment (column 2, lines 3-11). Morimoto discloses that untreated liquid is feed into the inner cylindrical compartment and that the liquid leaves the inner cylindrical compartment through perforations in the inner cylindrical compartment (column 2, lines 12-20; Figs. 2-3). This disclosed perforated inner cylindrical compartment extending vertically upwards in the column corresponds to the claimed perforated injection tube through which the water enters the column.
Since Spittle discloses that the oxidation column may contain a diffuser for diffusing the untreated water onto the ceramic particles in the filter bed and that the diffuser may be in contact with the ceramic particles [0065], but does not disclose a diffuser structure that puts the diffuser in contact with the ceramic particles, a skilled practitioner would have been motivated to consult an additional reference in order to determine a suitable diffuser structure that would be in contact with the particles while providing high filtering efficiency per unit quantity of filter bed material and reducing the inflow energy of the untreated water onto the filter bed (Morimoto, column 1, 56-58; Spittle [0057]). Therefore, the claimed water entering at least one oxidation column via a perforated injection tube extending vertically upwards in the oxidation column during the oxidation process is rendered obvious.
Applicant then argued that the claimed method exhibits unexpectedly beneficial properties such as a lower chemical oxygen demand (COD); a lower total phenolic content (TPC); an improved moisture content; and an improved visual appearance which are not suggested by the cited prior art. Applicant argued that claim 4 is patentable by reason of dependency from claim 1 (Applicant’s Remarks, page 8, 2nd -5th paragraphs).
However, the present specification does not demonstrate that the claimed process has these asserted benefits and does not provide a basis of comparison on which to determine that the claimed method has “improved” COD, TPC, moisture content, or visual appearance. Therefore, Applicant’s assertion of unexpected results are not supported. MPEP §716.02(b).
For at least these reasons, Applicant’s arguments are not persuasive and the prior art is considered to render the present claims obvious. Therefore, the rejections of claims 1 and 4 are maintained as written herein.
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.
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/K.P.K./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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