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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 2, 4 – 6, 8, 11, 12, 18, 23, 24, 26, and 27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 now sets forth contacting an algae fatty acid hydrolysate with a base, thereby forming a solid soap composition and washing the solid soap composition. However, the original disclosure does not provide support for a solid soap composition. Applicant has cited [0176] in support of this amendment to the claim. This paragraph does teach contacting a hydrolysate formed from algae paste with KOH as a base. However, it does not provide any disclosure of a solid soap composition being formed.
As all remaining pending claims depend on Claim 1, they also contain this new matter and are consequently rejected under this statute.
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 (i.e., changing from AIA to pre-AIA ) 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, 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.
Claims 1, 4 – 6, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over “Optimization of Fatty Acid Extraction from Phaeodactylum tricornutum UTEX 640 Biomass” to Ibáñez González et al. (hereinafter Ibáñez González).
Regarding Claims 1, 4, 6, and 11. Ibáñez González teaches a method of isolating fatty acids from microalga (Abstract), i.e. a method for producing an algae free fatty acid composition. The method comprises:
(a) saponifying a wet biomass derived from microalga with 76 mL containing 1.6 grams KOH to provide a soap solution (see Direct saponification of wet biomass. and Extraction of unsaponifiables. sections on Page 1736), i.e. hydrolyzing an microalga biomass comprising fatty acid via saponification to thereby form a soap composition. Potassium hydroxide (KOH) is set forth as a base in instant Claim 4;
(b) washing the soap with hexane, an inorganic solvent, to remove unsaponifiables, such as carotenoids (Extraction of unsaponifiables. sections on Pages 1736 and 1737). Carotenoids are set forth as algae pigments in instant Claim 6; and
(c) contacting the washed soap solution with HCl, i.e. an acid, to form a purified fatty acid composition (Fig. 1 and Extraction of purified fatty acids. section on Page 1736), i.e. an algae free fatty acid composition.
Ibáñez González does not expressly teach the step of contacting the algae fatty acid hydrolysate with a base forms a solid soap composition. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Ibáñez González teaches a process employing the claimed step and processing conditions, as well as the claimed ingredients in the claimed amounts. Therefore, the claimed effects and physical properties, i.e. formation of a solid soap composition, would implicitly be achieved by a process employing the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties using only the claimed process employing the claimed step, processing conditions, and ingredients in the claimed amounts.
The Office recognizes that Ibáñez González teaches forming the algae fatty acid hydrolysate at the same time it is contacted with the base, rather than forming the algae fatty acid hydrolysate and then contacting with a base. However, it has been held that a selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See In Re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (MPEP 2144.04(IV)(C))
Regarding Claim 5. Ibáñez González teaches the method of Claim 5 wherein ethyl ether may be used to extract carotenoids/algae pigments (see Carotenoid determination. section on page 1436).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over “Optimization of Fatty Acid Extraction from Phaeodactylum tricornutum UTEX 640 Biomass” to Ibáñez González et al. (hereinafter Ibáñez González), as applied to Claim 1 above, and further as evidenced by US 2018/0078521 to Grundman et al. (hereinafter Grundman).
Regarding Claim 2. Ibáñez González teaches the method of Claim 1 wherein free fatty acids are extracted from Phaeodactylum tricornutum (see Abstract). Lapidot provides evidence that Phaeodactylum tricornutum contains palmitic (C16:0) and palmitoleic (C16:1) acid (Table 3). A person of ordinary skill in the art would thus reasonably expect that the algae free fatty acid composition obtained by the method of Ibáñez González would comprise C16 free fatty acids.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over “Optimization of Fatty Acid Extraction from Phaeodactylum tricornutum UTEX 640 Biomass” to Ibáñez González et al. (hereinafter Ibáñez González), as applied to Claim 1 above, and further in view of US 2003/027865 to Lee (hereinafter Lee).
Regarding Claim 8. Ibáñez González teaches the method of Claim 1 but does expressly teach a further step of removing one or more saturated fatty acids to form an algae unsaturated fatty acid composition. However, Lee teaches the concept of isolating and purifying unsaturated fatty acids, e.g. palmitoleic acid, from natural oils [0005] – [0007]. Isolation and purification of unsaturated fatty acids necessarily involves the removal of saturated fatty acids. Ibáñez González and Lee are analogous art as they are from the same field of endeavor, namely methods of producing fatty acid compositions from natural oils. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to remove saturated fatty acids from the algae free fatty acid composition of Ibáñez González. The motivation would have been that Lee teaches unsaturated fatty acids find great utility in food and medical applications [0005].
Claims 18, 23, 26, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over “Optimization of Fatty Acid Extraction from Phaeodactylum tricornutum UTEX 640 Biomass” to Ibáñez González et al. (hereinafter Ibáñez González) in view of US 2003/027865 to Lee (hereinafter Lee), as applied to Claim 8 above, and further in view of US 2011/0269979 to Benecke et al. (hereinafter Benecke).
Regarding Claims 18, 23, and 27. Ibáñez González in view of Lee teaches the method of Claim 8 but does not expressly teach a step of contacting an algae unsaturated fatty acid composition with ozone, followed by oxidation, to form an algae unsaturated dicarboxylic acid composition. However, Benecke teaches the concept of oxidative ozonolysis of unsaturated fatty acids derived from biobased oils to provide saturated carboxylic acids. The carboxylic acids may be subsequently converted into polyester polyols by contacting with primary polyols, which may specifically be diols [0131] – [0134]. Ibáñez González and Lee are analogous art as they are from the same field of endeavor, namely methods of producing fatty acid compositions from natural oils. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to perform oxidative ozonolysis to obtain a saturated dicarboxylic acid, as taught by Benecke, upon the algae unsaturated fatty acid arising from the combination of Ibáñez González with Lee. As the proposed combination of references teaches a method employing all of the instantly claimed steps and ingredients in the instantly claimed amounts, it is the Office’s position that it would be reasonably expected that a saturated dicarboxylic acid composition comprising heptanoic acid would be obtained following ozonolysis. It is additionally the Office’s position would have been obvious to a person of ordinary skill in the art to contact this saturated dicarboxylic acid with a diol to form a polyester polyol. The motivation would have been that Benecke teaches this allows for conversion of natural oil products from renewable resources into commercially useful compounds, e.g. for the production of polyurethanes [0002] – [0003].
Regarding Claim 26. Ibáñez González, in view of Lee and Benecke, teaches the method of Claim 23. As detailed in the rejection of Claim 23 above, it would be reasonably expected that a saturated dicarboxylic acid composition comprising heptanoic acid would be obtained following ozonolysis. Ibáñez González further teaches conversion of fatty acid into methyl esters (see Fatty acid determination. section on Page 1736). Thus, a heptanoyl methyl ester would be readily envisioned from the proposed combination of references.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over “Optimization of Fatty Acid Extraction from Phaeodactylum tricornutum UTEX 640 Biomass” to Ibáñez González et al. (hereinafter Ibáñez González) in view of US 2003/027865 to Lee (hereinafter Lee) and US 2011/0269979 to Benecke et al. (hereinafter Benecke), as applied to Claim 23 above, and further in view of “Hydrodecarboxylation of Carboxylic and Malonic Acid Derivatives via Organic Photoredox Catalysis: Substrate Scope and Mechanistic Insight” to Griffin et al. (hereinafter Griffin).
Regarding Claim 26. Ibáñez González, in view of Lee and Benecke, teaches the method of Claim 23. As detailed in the rejection of Claim 23 above, it would be reasonably expected that a saturated dicarboxylic acid composition comprising heptanoic acid would be obtained following ozonolysis.
The references do not expressly teach a further step of decarboxylating the heptanoic acid. However, Griffin teaches the concept of decarboxylating carboxylic acids (see Abstract). Ibáñez González and Griffin are analogous art as they are from the same field of endeavor as they are both reasonably pertinent to the particular problem with which the inventor was concerned, namely the synthesis of monomer feedstocks for polymeric products from new sources and/or methods. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to decarboxylate, as suggested by Griffin, the heptanoic acid obtained from the method taught by the proposed combination of references. The motivation would have been that Griffin teaches excising carboxylic acid functionality via a hydrodecarboxylation strategy would allow for the use of carbonyls as traceless functional handles for assembling molecular complexity (see first paragraph of Introduction section on Page 11340), thereby providing new utilities for the algae composition obtained by Ibáñez González.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over “Optimization of Fatty Acid Extraction from Phaeodactylum tricornutum UTEX 640 Biomass” to Ibáñez González et al. (hereinafter Ibáñez González), as applied to Claim 1 above, and further in view of US 2010/0050502 to Wu et al. (hereinafter Wu).
Regarding Claim 12. Ibáñez González teaches the method of Claim 1 and uses Phaeodactylum tricornutum in the inventive example (see Microalgal biomass. Section on Page 1735), rather the one of the instantly claimed species. However, Ibáñez González does teach the method can be extended to other microalga (last sentence on Page 1740). Secondary Wu teaches the concept of obtaining a fatty acid composition of Phaeodactylum tricornutum, as well as algae from the genera of Nannochoropsis, Dunaliella, Chlamydomonas, Haematococcus, Scenedesmus ([0044] and [0046] – [0047]). Ibáñez González and Wu are analogous art as they are from the same field of endeavor, namely methods of processing algae to provide commercially useful materials. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to substitute Phaeodactylum tricornutum in the method of Ibáñez González with an algae from the genera of Nannochoropsis, Dunaliella, Chlamydomonas, Haematococcus, Scenedesmus as taught by Wu. The motivation would have been that Wu teaches algae from each of these genera to be a suitable source of fatty acids for the preparation of commercial products ([0044] and [0046] – [0047]).
Response to Arguments
Applicant's arguments filed January 12, 2026 have been fully considered but they are not persuasive.
Applicant argues that Gonzalez fails to teach or suggest washing a solid soap composition to remove all algae pigments. Applicant notes that Gonzalez reports a content of 48.7% of non-fatty acid contaminants in its final fatty acid extract (Page 1738, Left Column, Table 3 at Extraction Step 5).
However, the Office respectfully submits that there is no requirement in the instant claims that all algae pigments be removed. Independent Claim 1 simply requires the removal of one of more algae pigments. This step is met by Ibáñez González, which teaches a step of washing the soap with hexane, an inorganic solvent, to remove unsaponifiables, such as carotenoids (Extraction of unsaponifiables. sections on Pages 1736 and 1737). Carotenoids are set forth as algae pigments in instant Claim 6.
Applicant additionally argues that, in applicant’s process, the soap composition is allowed to solidify to form a solid soap composition, citing point 5 of the Declaration. The Office does note in point 3 of the declaration it is indicated that “[a]t the saponification step, the soap composition was first allowed to solidify and then washed with acetone…[t]he wash proved effective in complete removal of algae pigments.” However, the Office respectfully submits that this is not a step which is described in the original disclosure. Any beneficial or unexpected effects associated with allowing the soap composition to solidify are not evidence of unobviousness of the originally disclosed invention.
However, assuming arguendo that contacting an algae fatty acid hydrolysate with a base form as a solid composition as claimed, Ibáñez González also teaches such a step. Specifically, Ibáñez González teaches an identical step to that claimed in which an algae fatty acid hydrolysate is contacted with a base. Ibáñez González even uses one of the claimed species of base, potassium hydroxide, which is set forth in dependent Claim 4. Therefore, the claimed effects and physical properties, i.e. formation of a solid soap composition, would implicitly be achieved by a process employing the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties using only the claimed process employing the claimed step, processing conditions, and ingredients in the claimed amounts.
For these reasons, the outstanding rejections under 35 U.S.C. 103 have been maintained.
Conclusion
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764