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, 4-5, 7, 10-16, 19-20 and 33 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.
Regarding claim 1, the examiner does not find any teaching in the original disclosure or claims of “the unrefined biological material is not coated with silicone”. Paragraph 51 of Applicant’s published application indicates that examples of possible treatments that are excluded include “addition of synthetic compounds, such as silicone,”. This teaching is with respect to defining an unrefined biological material used as a component to form the claimed bio-based binder composition. There is no discussion of coating. “Addition” does not require coating, for example if the silicone is added as an aqueous solution, dispersion or emulsion which only mixes with the unrefined biological material and does not coat it. Thus Applicant was not in possession of “the unrefined biological material is not coated with silicone” at the time the application was filed.
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.
Claims 1-2, 4-5, 7, 10-12, 15-16, 19-20 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Morel (WO 2017/055555 A1).
Regarding claim 1, Morel teaches a bio-based binder composition (page 5, lines 8-9; page 9, lines 31-35; page 10, lines 1-8; page 11) comprising an unrefined biological material, satisfied by ground seeds and/or fruits of plants (page 4, lines 4-6, 12-13 and 31-32) or ground meal which has been partially defatted by crushing or pressing (page 1, line 26 to page 3, line 5; page 5, lines 1-7). Note that Morel teaches fat containing meal is produced by a crushing or pressing operation which removes some of the oil, i.e. the crushing or pressing partially defats the biological material (page 2, lines 16-33). Morel also teaches the unrefined biological material may comprise such fat-containing meal (page 5, lines 1-2). Morel further teaches the bio-based binder composition comprises a liquid medium satisfied by water (page 9, line 33); and a reactive prepolymer (page 9, lines 34-35). The unrefined biological material may be oilseeds, beans, or a combination thereof (page 1, lines 13-21; page 4, lines 4-6 and 28-33). As to the limitation of “wherein the unrefined biological material is not coated with silicone”, it is noted that the broadest reasonable interpretation of this limitation is a functional limitation indicating that the initial unrefined biological material is not coated with silicone. This interpretation is consistent with paragraph 51 of Applicant’s published application, which teaches the exclusion of added silicone to the unrefined biological material which is a component of the claimed bio-based binder composition. This limitation does not require that the overall bio-based binder composition is free of silicone. Morel adds silicone after providing the unrefined biological material and thus the initial unrefined biological material is not coated with silicone (page 4, lines 4-9). The examiner must give the claims their broadest reasonable interpretation.
Morel differs from claim 1 in that:
i. Morel does not explicitly recite the unrefined biological material has not been defatted or has been partially defatted removing no more than 50% of the lipid content.
(i) Morel teaches the partially defatted meal may contain as much as 20% oil. The starting material may have about 35% oil or less (page 2, lines 5-11 and 33; page 5, lines 1-7). This suggests the pressing may remove about 43% or less of the oil ((35-20)/35×100), which is within less than approximately 50% of the lipid content, i.e. the oils or fat. Moreover, it is also clear that none, i.e. 0% of the lipid content needs to be removed, since the biological material may comprise ground seeds and/or fruits which have not been defatted (page 4, lines 4-6 and 28-33). These combined teachings alternatively suggest that from anywhere from 0 to about 43% of the oil may be removed to provide a suitable material, which includes values within the claimed range of less than approximately 50% of the lipid content being removed. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05.
Regarding claim 2, Morel teaches oilseeds including sunflower seeds, rapeseeds, cotton seeds, flax seeds, soybeans and combinations thereof (page 1, lines 13-21; page 4, lines 4-33).
Regarding claim 4, Morel teaches the unrefined biological material is comminuted to a particle size of 1 to 250 µm, preferably 20 to 40 µm, with additional preferred ranges within the claimed range (page 7, line 20 to page 8, line 4). Any of these ranges are considered to anticipate the claimed range. Alternatively, it is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. The recitation of being measured with a granulometer does not appear to distinguish the structure of the claimed particles over this teaching of Morel. In any event, Morel clearly determines particle size with a granulometer (page 15, lines 12-19).
Regarding claim 5, this claim is drawn to a composition, not a method of making the composition. The composition does not preclude hull material in view of the transitional phrase “comprising”. In any event, Morel teaches hulled unrefined biological material may be used in the production of useful fat-containing meal (page 1, lines 28-30; page 2, lines 29-33; page 5, lines 1-7).
Regarding claim 7, Morel teaches the claimed heat treatment (page 2, lines 20-22).
Regarding claim 10, as noted above, Morel teaches about 5 wt% unrefined biological matter on a dry basis. It is also noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05.
Regarding claim 11, Morel further teaches water as the liquid medium (page 9, line 33).
Regarding claim 12, it is clear from Morel’s teaching of the biological material being ground seeds or fat-containing meal that rapeseed oil, sunflower oil, soybean oil or a combination thereof may be present when using the corresponding seeds (page 4, lines 4-6 and 28-33; page 5, lines 1-7; page 1, lines 13-21). Such satisfies the liquid medium of claim 12.
Regarding claim 15-16 and 19, Morel clearly teaches these additional limitations (page 10, line 5; page 5, lines 19-34; page 6, lines 1-8).
Claim 20 is satisfied for the reasons provided above. Morel teaches about 5 wt% biological material on a dry basis (page 22, Table 3).
Regarding claim 33, as to having one or more of the recited FTIR-ATR features, it is clear from Applicant’s specification that this is implicit from using unrefined biological material which has not been substantially completely defatted, for example by solvent extraction. As noted above Morel teaches unrefined biological material which has not been defatted, i.e. ground seed and/or fruit material, as well as unrefined biological material which has been partially defatted only by crushing, i.e. fat-containing meal. Accordingly, the one or more recited FTIR-ATR features is considered implicit in Morel’s bio-based binder composition.
Regarding claim 33, to the extent that satisfying the claimed one or more recited FTIR-ATR features requires a particular amount of unrefined biological material in the binder composition, Morel suggests about 5 wt% biological material on a dry basis (page 22, Table 3). This is considered a reasonably suggested amount of biological material for the various biological materials taught by Morel, and this amount falls within the claimed range of about 1 to 90 wt% on a dry basis as seen in paragraph 106 of Applicant’s published application. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide the unrefined biological material in an amount within Applicant’s suggested range in the binder of Morel because one having ordinary skill in the art would have been motivated to use a biological material amount suggested by Morel, the claimed one or more recited FTIR-ATR features naturally flowing from such amount for the reasons provided above.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Morel as applied to claims 1-2, 4-5, 7, 10-12, 15-16, 19-20 and 33 above, and further in view of Parker (US 2010/0310877 A1).
Regarding claim 13, while this limitation is not recited by Morel, in a similar binder composition comprising biological material, a liquid medium and a reactive prepolymer, Parker suggests the liquid medium may comprise oil in water or water in oil, with an example of 86 parts water and 14 parts oil which is about a 1:6 ratio of oil to water. Also, the oil may be vegetable oil (paragraphs 3-5, 23 and 33), and the amount of oil may be varied over a very wide range (paragraph 33). The teaching of oil in water or water in oil suggests that either water or oil may be predominant. Combined, these teachings suggest oil to water of 1:6 to greater than 1:1, which overlaps and/or falls within the claimed range. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this limitation in Morel’s composition because one having ordinary skill in the art would have been motivated to use a known suitable liquid medium for the binder, as suggested by the teachings of Parker.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Morel as applied to claims 1-2, 4-5, 7, 10-12, 15-16, 19-20 and 33 above, and further in view of Brady (US 2009/0098387 A1).
Regarding claim 14, while this limitation is not recited by Morel, in a similar binder composition comprising biological material, a liquid medium and a reactive material such as an isocyanate, Brady teaches adhesives may be provided with a solids content of about 5 to 75 wt%, suggesting a liquid medium content of about 25 to 95 wt%, which substantially overlaps with the claimed range (paragraphs 4, 10, 22-24, 38, 41, 49 and 55-56). It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. Moreover, Brady suggests that the water liquid medium content should be selected to provide a suitable flowable viscosity (paragraphs 55-56). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide a liquid medium content in the claimed range because one having ordinary skill in the art would have been motivated to select a known suitable liquid medium content as suggested by Brady in a similar binder composition and/or to select such a liquid medium content as a matter of routine experimentation to achieve suitable viscosity, as suggested by the teachings of Brady.
Response to Arguments
Applicant's arguments filed 12 May 2026 have been fully considered but they are not persuasive.
Applicant’s arguments are drawn to the newly amended claims. The arguments are moot in view of the new grounds of rejection applied above which address the amendment to claim 1. It is emphasized that the examiner has taken the position that the broadly recited limitation of “wherein the unrefined biological material is not coated with silicone” does not exclude silicone from the claimed bio-based binder composition. Rather, the broadest reasonable interpretation of this limitation is a functional limitation indicating that the initial unrefined biological material is not coated with silicone. This interpretation is consistent with paragraph 51 of Applicant’s published application, which teaches the exclusion of added silicone to the unrefined biological material which is a component of the claimed bio-based binder composition. This limitation does not require that the overall bio-based binder composition is free of silicone. Morel adds silicone after providing the unrefined biological material and thus the initial unrefined biological material is not coated with silicone (page 4, lines 4-9). The examiner must give the claims their broadest reasonable interpretation.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A TOLIN whose telephone number is (571)272-8633. The examiner can normally be reached 9:30 am - 6 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip C. Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745
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