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 .
Status of the Application
Claims 10-20 are pending, of which claims 17-18 are withdrawn because of earlier restriction.
Claims 10-16 and 19-20 are under current examination.
Amendment necessitated new claim rejection as set forth below.
Claim Rejections - 35 USC § 112
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.
Claims 11 is 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.
Claim 11 is indefinite as Claim 11 recites “salts of magnesium ---preferentially ---sulfate”, i.e., broader and narrower limitations within the same claim. Therefore, making scope of the claim unclear. For compact prosecution, the claim has been interpreted as with any magnesium or calcium salt.
Appropriate correction required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 10-16 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Henan (CN102550937A; machine translation is used for this rejection) and Govender (MSc Thesis; The Purification of Corn Steep Liquor as a Fermentation Feedstock by Ultrafiltration; 2010; although Govender thesis provides date as 2008, the Examiner provides date of publishing as 2010 based on applicant’s acknowledgement in instant specification, paragraph 0016) in combination.
Determining the scope and contents of the prior art
Henan teaches a process for treating corn steep solution comprising at room temperature or 25C (a) treating with divalent metal ion source, milk of lime (Ca(OH)2); (b) adjusting pH to neutralization, i.e., pH=7; (c) separating solid and liquids using ultrafiltration membrane filter system; (d) drying separated liquid at 100C using spray drying method (i.e., atomization) to prepare corn steep powder (entire article). The cited prior art further teaches advantages of using divalent ion Calcium to make phytic acid calcium deposit thereby easing filtration step.
Ascertaining the differences between the prior art and the claims at issue
Henan teaches a process for treating corn steep solution comprising at room temperature or 25C (a) treating with divalent metal ion source, milk of lime (Ca(OH)2); (b) adjusting pH to neutralization, i.e., pH=7; (c) separating solid and liquids using ultrafiltration membrane filter system; (d) drying separated liquid at 100C using spray drying method (i.e., atomization) to prepare corn steep powder (entire article). The cited prior art further teaches advantages of using divalent ion Calcium to make phytic acid calcium deposit thereby easing filtration step. However, the cited prior art fails to teach adjusting pH using ammonium hydroxide; calcium source as calcium sulfate; filtration by plate centrifugation; and amount of calcium to dry matter of the corn steep solution.
Resolving the level of ordinary skill in the pertinent art
With regards to the difference of adjusting pH using ammonium hydroxide; calcium source as calcium sulfate- Henan teaches using divalent metal ion source, milk of lime (Ca(OH)2); (b) adjusting pH to neutralization, i.e., pH=7 and advantages of using divalent ion Calcium to make phytic acid calcium deposit thereby easing filtration step. Thus, with the guidance provided by the cited prior art, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success to either (1) use Ca(OH)2 as taught by the cited prior art to accomplish both (a) having a source of divalent metal ion source of calcium and (b) neutralization step to desired pH of the solution thereby making phytic acid calcium deposit or (2) use another salt of calcium to provide source of calcium and another alkaline source for adjusting pH, such NaOH, KOH, NH4OH thereby making phytic acid calcium deposit. This deficiency is further cured by Govender.
In the same field of endeavor of treating corn steep solution, Govender teaches adjusting the pH of corn steep solution using non-toxic base, such as hydroxides of calcium and sodium, NH4OH and final step of filtration using different filtration devices, such as ultrafiltration membrane filter system, plate centrifugation etc. (entire thesis, especially pages 66-78). Thus, with the guidance provided by the cited prior art, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success to either (1) use Ca(OH)2 as taught by Henan to accomplish desired pH of the solution and to make phytic acid calcium deposit or (2) use another salt of calcium to provide source of calcium to make phytic acid calcium deposit as suggested by Henan and another alkaline source for adjusting pH, such NaOH, KOH, NH4OH or Ca(OH)2 as suggested by both Henan and Govender.
Further, Case law has established that it is prima facie obvious to substitute one known element for another to obtain predictable results. KSR Int'I Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
With regards to the difference of separation liquid and solids using plate centrifugation-Henan teaches using ultrafiltration membrane filter system for separating solids and liquids. Govender teaches step of filtration using different filtration devices, such as ultrafiltration membrane filter system, plate centrifugation etc. (entire thesis, especially pages 66-78). Thus, with the guidance provided by the cited prior art, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that separation of solids and liquids obtained from the treatment of corn steep liquid may be achieved either by ultrafiltration membrane filter system or plate centrifugation.
Case law has established that it is prima facie obvious to substitute one known element for another to obtain predictable results. KSR Int'I Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
With regards to the difference of amount of calcium source to dry matter of the corn steep solution- Henan teaches using divalent metal ion source, milk of lime (Ca(OH)2); (b) adjusting pH to neutralization, i.e., pH=7 and advantages of using divalent ion Calcium to make phytic acid calcium deposit thereby easing filtration step and adjustment of pH. Thus, based on the guidance provided by Henan, it would have been prima facie obvious to a person of ordinary skill in the art that source of calcium amount may be adjusted according to phytic acid content (dry content) in corn steep solution + amount needed for neutralization.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Moreover, it is noted that all of the recited reaction parameters are recognized as result-effective variables, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
Therefore, combination reads applicants claims.
Based on the above established facts, it appears that the combination of teachings of above cited prior art read applicants’ process.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Henan teaches a process for treating corn steep solution comprising at room temperature or 25C (a) treating with divalent metal ion source, milk of lime (Ca(OH)2); (b) adjusting pH to neutralization, i.e., pH=7; (c) separating solid and liquids using ultrafiltration membrane filter system; (d) drying separated liquid at 100C using spray drying method (i.e., atomization) to prepare corn steep powder and Govender teaches adjusting the pH of corn steep solution using non-toxic base, such as hydroxides of calcium and sodium, NH4OH and final step of filtration using different filtration devices, such as ultrafiltration membrane filter system, plate centrifugation etc. So, the combination of prior art read applicants claims.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is a reasonable expectation of success that the separation of solids and liquids obtained from the treatment of corn steep liquid may be achieved either by ultrafiltration membrane filter system or plate centrifugation and can be made by combination of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited references and to make the instantly claimed process with a reasonable expectation of success. Modifying such parameters is prima facie obvious because an ordinary artisan would be motivated to develop an alternative process for economic reasons or convenient purposes from a known individual reaction steps, and to arrive applicants process with a reasonable expectation of success, since it is within the scope to modify the process through a routine experimentation.
Response to Arguments
Applicant’s remarks and amendment, as filed on 10/02/2025, have been fully considered but not found persuasive.
Applicant argued over rejection under 112b that the amendment of claim 11 obviates the rejection.
This is not found persuasive as no such amendment of claim 11 was made.
Applicant argued over rejection under 103 that Ca(OH)2 salt of Henan does not qualify as neutral divalent salt. Applicant referred to paragraph of Henan and argued that the cited prior art does not teach adjusting pH to 7:
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and made comments on what neutralization by Henan might mean, reaction of acidic species in corn steep solution thus teaches away and Govender doesn’t cure the above deficiency:
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This is not found persuasive and the instant claims stand rejected under 103. This is because (1) the Examiner acknowledges that Ca(OH)2 is not a neutral divalent salt and this is why the rejection was obviousness rejection and not anticipation rejection; (2) Henan teaches using divalent metal ion source, milk of lime (Ca(OH)2); (b) adjusting pH to neutralization, i.e., pH=7 and advantages of using divalent ion Calcium to make phytic acid calcium deposit thereby easing filtration step. Thus, with the guidance provided by the cited prior art, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success to either (1) use Ca(OH)2 as taught by the cited prior art to accomplish both (a) having a source of divalent metal ion source of calcium and (b) neutralization step to desired pH of the solution thereby making phytic acid calcium deposit or (2) use another salt of calcium to provide source of calcium and another alkaline source for adjusting pH, such NaOH, KOH, NH4OH thereby making phytic acid calcium deposit.
With regards to applicant’s argument that Henan does not teach step of adjusting pH to 7, is again not found persuasive. This is because the paragraph of Henan cited by the applicant:
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cannot be clearer than that it does requires adjusting pH to neutral, i.e., 7. “lime milk to carry out a neutralization reaction” means that pH of resultant solution is 7. That may mean by neutralizing H+ cations, which is a neutralization reaction and/or other acids such as phytic acid. However, Applicant’s other interpretation that Ca(OH)2 addition of Henan increase pH is completely unfounded in view of specific teaching of Henan that Ca(OH)2 is added to carry out neutralization reaction opposite to increasing pH. Thus, Henan teaching is not teaching away but teaching of both steps a and b of the instant claims, i.e., providing divalent calcium source and adjusting pH.
Applicant argues that Henan requires addition of maltodextrin before the drying operation and thus does not teach separation step c) directly succeeded by drying step d) of the instant claims.
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This is again not found persuasive and the instant claims stand rejected under 103. This is because the instant claims recite “comprising of” and thus open to inclusion of any step including maltodextrin or any other step.
Applicant argued over advantages of the instant claim by equating addition of MgO or NH4OH to Ca(OH)2 of Henan with respect to insoluble amount of MgO left over or processing difficulties with NH4OH.
This is again not found persuasive and the instant claims stand rejected under 103. This is because Henan specifically teaches using source of calcium Ca(OH)2, which is a highly soluble salt in water and its benefits for making precipitate with phytic acid Vs MgO a sparingly soluble salt (therefore expected to leave insoluble portion) or NH4OH not a source of divalent metal ion. Thus, the comparison is not a true comparison.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Conclusion
No Claim is allowed.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623