DETAILED CORRESPONDENCE
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 .
Response to Arguments
Applicant’s arguments, see pages 9-22, filed 2 February 2026, with respect to claims 1-23 have been fully considered and are persuasive. The rejection of claims 1-23 has been withdrawn.
Applicant's arguments filed 2 February 2026 regarding claim 24 rejected under 35 USC§102 in view of US’750 and claims 1-24 have been fully considered but they are not persuasive.
Regarding claims 1-24 rejected on the ground of nonstatutory double patenting, applicant has elected to defer a formal response until an indication of allowability of the claims.
(OLD) Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bleyer et al. (US Pub. 2015/0191750, hereafter US Pub’750).
Claim 24 recites, in substance, a method of extracting oil from a biorefinery process stream comprising: providing a biorefinery process stream having a total solids content in a range from 15 to less than 35% (wt/wt), wherein the stream comprises at least grain oil, grain protein, grain fiber, and an aqueous carrier; physically disrupting the biorefinery process stream, wherein the physical disruption comprises pressing, milling, or combinations thereof; and separating the biorefinery process stream into at least one liquid fraction comprising grain oil and at least one solids fraction.
US’750 teaches a method for processing whole stillage from a grain-based biorefinery process to improve oil recovery. As acknowledged in Applicant’s remarks, US’750 discloses processing stillage having higher solids than conventional thin stillage and states that the stillage processed in the method can be whole stillage containing approximately 8–15% suspended solids, corresponding to about 11–18% total solids. This disclosure includes embodiments falling within the claimed total-solids range of 15 to less than 35% (wt./wt.). Because the whole stillage of US’750is derived from grain processing, it inherently comprises grain oil, grain protein, grain fiber, and water as the aqueous carrier.
US’750 also teaches the recited physical disruption of the biorefinery process stream. Applicant expressly acknowledges that US’750 reports that whole stillage is subjected to a shear device or particle size reduction device and that Figure 8 and paragraphs 0111–0112 describe size reduction and solids washing to influence stillage composition and liberate oil from wet cake. A particle size reduction device, including an attrition mill or other milling device, constitutes “physically disrupting” the stream, and the disclosed size-reduction treatment reads on the claim limitation requiring that physically disrupting comprises pressing, milling, or combinations thereof.
US’750 further teaches separating the processed stream into liquid and solids fractions. As set forth in the prior Office Action, US’750 discloses applying pressure to whole stillage by centrifugation to separate a liquid fraction from a solid fraction and recovering oil from the liquid fraction. Applicant likewise acknowledges that US’750describes solids separation in one or more steps and discusses whole stillage, thin stillage, and wet cake as resulting process fractions. Such disclosure meets the limitation of separating the biorefinery process stream into at least one liquid fraction comprising grain oil and at least one solids fraction.
Applicant’s arguments have been considered but are unpersuasive. Applicant argues that the Office Action does not show that US’750 teaches or suggests the claimed biorefinery process stream, the claimed physical disruption, and the claimed separation. However, Applicant’s own discussion of US’750 acknowledges that US’750 discloses whole stillage within the relevant solids regime, subjects that stillage to a shear device or particle size reduction device, and uses size reduction and solids washing to liberate oil from wet cake. US’750is not required to use the exact claim wording so long as the reference discloses the claimed subject matter arranged as in the claim.
Here, US’750 discloses a grain-derived biorefinery stream within the claimed solids range, physical disruption by size reduction including milling, and separation into liquid and solids fractions with oil present in the liquid fraction. Accordingly, the rejection of claim 24 is maintained.
(OLD) Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-24 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 11, 14-15, 18-19 of U.S. Patent No. 10,584,304. Although the claims at issue are not identical, they are not patentably distinct from each other because both utilize the same process steps to extract oil from a plant material that is processed resulting in the formation of beer and whole stillage.
Claims 1-24 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14, 17-19, 21 of U.S. Patent No. 11,345,875. Although the claims at issue are not identical, they are not patentably distinct from each other because both utilize the same process steps to extract oil from a plant material that is processed resulting in the formation of beer and whole stillage.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH D CARR whose telephone number is (571)272-0637. The examiner can normally be reached on Monday-Friday (10:30 am -6:30 pm).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached on 572-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEBORAH D CARR/ Primary Examiner, Art Unit 1691
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