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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 22, 2026 has been entered.
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 9 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 9. 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 an organic 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 utilizes hexane as the organic solvent in the step corresponding to instantly claimed step (b) rather than acetone, ether, or methyl tert-butyl ether. However, Ibáñez González teaches hexane is provided as the organic solvent in step (b) for the purposes of extracting carotenoids/algae pigments (see Extraction of unsaponifiables sections on Page 1736). Ibáñez González further teaches ethyl ether as another solvent for extraction carotenoids/algae pigments (see Carotenoid determination. section on page 1436). Ethyl ether is alternatively referred to as ether by persons of ordinary skill in the art. It would consequently be the Office’s position that, 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 hexane in the process described in the Extraction of unsaponifiables section of Ibáñez González with ether. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Ibáñez González describes both hexane and ether as organic solvents for extraction carotenoids/algae pigments, thus providing obviousness of substituting one for the other for this function.
While Ibáñez González does not expressly teach the washing step results in the removal of one or more algae pigments including chlorophyll or a degradation product thereof, a microalga biomass would be reasonably expected to contain such compounds. Furthermore, the proposed modification of Ibáñez González results in a step identical to instantly claimed step (b) in which a soap composition is washed with an organic solvent which may correspond to ether. The claimed effect, i.e. removal of chlorophyll or a degradation product thereof, would then 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)
The Office additionally 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))
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 10 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 10. 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]).
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 6 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.
Response to Arguments
Applicant's arguments filed June 22, 2026 have been fully considered but they are not persuasive because:
A) Applicant argues that the composition disclosed as having been contacted with ether in Ibáñez González is an aliquot taken from the alcoholic solution solely for carotenoid determination. Applicant notes that no further steps are performed on this aliquot, nor is there any further motivation to perform such steps.
However, the present rejection details the Office’s position that it would have been obvious to a person of ordinary skill in the art to substitute hexane in the process described in the Extraction of unsaponifiables section of Ibáñez González with ether. Thus, the rejection is not proposing additional steps be performed on the aliquot taken for carotenoid determination. Rather, the rejection suggests it would have been obvious to a provide ether in place of hexane as the organic solvent in the method described in the Extraction of unsaponifiables section of Page 1736 of the reference. After this step is performed, a step of 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) is performed, corresponding to instantly claimed step (c). The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Ibáñez González describes both hexane and ether as organic solvents for extraction carotenoids/algae pigments, thus providing obviousness of substituting one for the other for this function.
B) Applicant argues that Ibáñez González only teaches the use of hexane for extracting unsaponifiables and ether for extracting carotenoids. However, carotenoids themselves were determined by the reference as a measure of the unsaponifiable extraction yields (see first sentence of Carotenoid determination. Section on Page 1736). Thus, a solvent which is described as a solvent for extraction of carotenoids (i.e. ether) necessarily corresponds to a solvent for extraction of unsaponifiables. Further, Ibáñez González expressly teaches apolar solvents may be used to extract unsaponifiables (see first paragraph of second column on Page 1737), thus providing additional evidence that there is a reasonable expectation of success in the use of the apolar solvent, ether, for extraction of unsaponifiables.
C) In response to applicant’s argument that Ibáñez González does not expressly teach the washing step results in the removal of one or more algae pigments including chlorophyll or a degradation product thereof, a microalga biomass would be reasonably expected to contain chlorophyll or a degradation product thereof. Furthermore, the proposed modification of Ibáñez González results in the claimed step (b) comprising washing a soap composition with one of the instantly claimed organic solvents, namely ether. The claimed effect, i.e. removal of chlorophyll or a degradation product thereof, would then 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)
Correspondence
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/MELISSA A RIOJA/ Primary Examiner, Art Unit 1764
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