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
Receipt of the Response and Amendment after Non-Final Office Action filed July 1, 2026 is acknowledged.
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
1-2, 5-9, 11-15, 17-18, 20-21
Withdrawn claims:
None
Previously canceled claims:
3, 4, 10, 16, 19
Newly canceled claims:
None
Amended claims:
1, 17, 18
New claims:
None
Claims currently under consideration:
1-2, 5-9, 11-15, 17-18, 20-21
Currently rejected claims:
1-2, 5-9, 11-15, 17-18, 20-21
Allowed claims:
None
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 6-9, 11, 13, 15, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Jackisch et al. (DE 10339010A) in view of Schroder et al. (US PGPub 2003/0017575 A1).
Regarding claim 1, Jackisch teaches a process for producing olive oil (process for olive oil extraction, [0009]) comprising adding an enzyme composition to an olive paste (providing a mass of olives then adding an enzyme mixture, [0030]) and incubating the obtained mixture (mixture is incubated, [0030]), wherein the enzyme composition comprises a polygalacturonase, a pectin methyl esterase, a pectin lyase, an arabinofuranosidase, a cellulase, a xylanase (examples of enzymes used in the invention include polygalacturonase [0013] and [0017], pectin esterase (which is understood to be the same as pectin methyl esterase) [0013], pectin lyase [0022], arabinosidases (which is understood to be the same as arabinofuranosidase) [0037], cellulase [0021], and xylanase, [0023]). Jackisch also teaches wherein the enzyme composition is added after the crushing (providing an olive mass, then adding an enzyme mixture and mixing the olive mass and enzyme mixture [0030], wherein the mass of olives is usually pre-crushed, [0031]).
Although Jackisch teaches adding the enzyme after crushing, MPEP §2144.04(IV)(C) states “Selection of any order of mixing ingredients is prima facie obvious.” In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Therefore, absent a showing of unexpected results, it would have been obvious to add the enzymes during the crushing of the olive component rather than after the crushing has occurred.
Jackisch does not teach a second enzyme composition comprising a rhamnogalacturonase and a mannanase.
Regarding the enzyme composition comprising a rhamnogalacturonase and a mannanase, Schroder teaches a rhamnogalacturonase, and a mannanase (invention can further comprise enzymes such as a rhamnogalacturonase or a mannanase [0211] where the present invention can be used to improve the extraction of oil from plant material, such as olive oil from olives [0234]). Additionally, Schroder teaches the same enzymes as taught by Jackisch (invention may further comprise one or more of polygalacturonase, pectin methyl esterase, pectin lyase, arabinanases (which is understood to be the same as arabinofuranosidase), cellulase, and xylanase, [0211]) in combination with the rhamnogalacturonase and mannanase.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the enzymes taught by Jackisch with the additional enzymes taught by Schroder. Schroder teaches that rhamnogalacturonase and mannanase, along with many other enzymes that are also used by Jackisch, can be used to improve the extraction of olive oil from olives. It is prima facie obvious to combine two or more compositions when each of which is taught in the art to be useful for the same purpose, see MPEP § 2144.06.
Although the cited prior art does not teach adding the enzymes in a first enzyme composition and a second enzyme composition separately, MPEP §2144.04(IV)(C) states “Selection of any order of mixing ingredients is prima facie obvious.” In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Furthermore, because both the first and second enzyme mixture are added during the same processing step, it logically follows that the first enzyme composition and second enzyme composition are intermediate products that do not result in a patentably different process compared to the cited prior art.
Regarding claim 2, Jackisch also teaches wherein the enzyme composition further comprises a beta-glucanase (enzyme mixture further contains β-1,3-glucanase, [0020]). Although Jackisch does not teach adding beta-glucanase to the first enzyme mixture, MPEP §2144.04(IV)(C) states “Selection of any order of mixing ingredients is prima facie obvious.” In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Thus, there would not be a patentable difference between a process adding beta-glucanase in the first enzyme mixture vs. a process where beta-glucanase is added in a second enzyme mixture.
Regarding claim 6, Jackisch also teaches wherein the olive paste is made from an olive having a maturity index of 2 or 3 (Example 2 uses olives in the 3rd stage of maturity, [0098]).
Regarding claim 7 Jackisch also teaches wherein the process further comprises subjecting the obtained mixture to malaxation. While Jackisch does not explicitly teach malaxation in the steps of the embodiment laid out in [0030], Jackisch does teach that it is known in the art to subject the olive paste to maceration, which is understood to be a synonym for malaxation, in order to further break down the olive paste ([0003]).
It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of producing olive oil as taught by Jackisch by adding the step of maceration after the incubation step in the inventive process as described in [0030]. One of ordinary skill in the art would have been motivated to make this modification because, as taught by Jackisch to be known in the art, further maceration of the olive paste and enzyme composition would further break down the crushed olives, which would then increase the yield of olive oil.
Regarding claim 8, Jackisch also teaches wherein the process further comprises a solid-liquid separation after malaxation (after maceration, liquid is extracted by pressure and/or centrifugal force, [0003]; separation of oil phase from olive mass, step e, [0030]).
Regarding claim 9, Jackisch also teaches wherein the solid-liquid separation is performed by at least one of application of pressure, a percolation, and/or a centrifugation technique, or combinations thereof (after maceration, liquid is extracted by pressure and/or centrifugal force, [0003]; examples include centrifugation of olive mass and enzyme mixture, [0083], [0094], [0097], [0098], [0100], [0106], [109]).
Regarding claim 11, Jackisch also teaches wherein the obtained mixture is incubated for 10 to 200 minutes at a temperature ranging from 5[Symbol font/0xB0]C to 70[Symbol font/0xB0]C (incubation time preferably 30 to 90 minutes and incubation temperature between 20 and 50[Symbol font/0xB0]C, [0034], where “30 to 90 minutes” falls within the claimed range “10 to 200 minutes” and where “between 20 and 50[Symbol font/0xB0]C” falls within the claimed range “from 5[Symbol font/0xB0]C to 70[Symbol font/0xB0]C.”).
Regarding claim 13, Jackisch also teaches wherein the enzyme composition is liquid (enzyme can be liquid, [0032]).
Claim 14 is a product-by-process claim. MPEP §2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product.”
Claim 14 recites the method steps of an olive paste being formed by separately adding a first and second enzyme composition during crushing of olives. The structure imparted by the process of claim 14 is an olive paste comprising polygalacturonase, a pectin methyl esterase, a pectin lyase, a arabinofuranosidase, a cellulase, a xylanase, rhamnogalacturonase, and a mannanase. Although claim 14 recites that the enzymes are added in two separate enzyme compositions, adding the enzymes separately during process would not result in a patentably distinct product.
Regarding claim 14, Jackisch teaches an olive paste (a mass in which the olives have been crushed, [0011], if the olives are crushed, it would necessarily follow that the olive mass is a paste), a polygalacturonase, a pectin methyl esterase, a pectin lyase, an arabinofuranosidase, a cellulase, a xylanase (examples of enzymes used in the invention include polygalacturonase [0013] and [0017], pectin esterase (which is understood to be the same as pectin methyl esterase) [0013], pectin lyase [0022], arabinosidases (which is understood to be the same as arabinofuranosidase) [0037], cellulase [0021], and xylanase, [0023]).
Jackisch does not teach an enzyme comprising a rhamnogalacturonase and a mannanase or wherein the enzyme composition is added in an amount ranging from 100 ppm to 300 ppm.
Regarding the enzyme composition comprising a rhamnogalacturonase and a mannanase, Schroder teaches a rhamnogalacturonase, and a mannanase (invention can further comprise enzymes such as a rhamnogalacturonase or a mannanase [0211] where the present invention can be used to improve the extraction of oil from plant material, such as olive oil from olives [0234]). Additionally, Schroder teaches the same enzymes as taught by Jackisch (invention may further comprise one or more of polygalacturonase, pectin methyl esterase, pectin lyase, arabinanases (which is understood to be the same as arabinofuranosidase), cellulase, and xylanase, [0211]) in combination with the rhamnogalacturonase and mannanase.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the enzymes taught by Jackisch with the additional enzymes taught by Schroder. Schroder teaches that rhamnogalacturonase and mannanase, along with many other enzymes that are also used by Jackisch, can be used to improve the extraction of olive oil from olives. It is prima facie obvious to combine two or more compositions when each of which is taught in the art to be useful for the same purpose, see MPEP § 2144.06.
Regarding claim 15, Jackisch also teaches wherein the enzyme further comprises a beta-glucanase (enzyme mixture further contains β-1,3-glucanase, [0020]).
Regarding claim 17, Jackisch also teaches after incubation with enzymes, performing solid/liquid separation (i.e., separating oil from a pomace) using a decanter (i.e., subjecting the mixture to decantation; [0100]; [0106]).
Regarding claim 18, Jackisch also teaches that following decantation, the residual oil content of the deoiled olive mass (i.e., pomace) was measured to determine yield ([0100]).
Claims 5 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Jackisch et al. (DE 10339010A) in view of Schroder et al. (US 2003/0017575 A1) as applied to claim 1 above, and further in view of Catania et al. (“An oxygen monitoring and control system inside a malaxation machine to improve extra virgin olive oil quality”, 2013).
Regarding claim 5, Jackisch modified by Schroder does not teach wherein the olive paste is made from an olive having a maturity index of 0 or 1.
However, in the same field of endeavor, Catania teaches wherein the olive paste is made from an olive having a maturity index of 0 or 1 (maturity index of olives varying from 0 to 7, section 2.3, paragraph 2, where “0 to 7” overlaps with the claimed range of “0 or 1”). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process for making olive oil as taught by Jackisch by substituting the olives to make the olive mass in Jackisch with the olives with a maturity index from 0 to 7 as taught by Catania. The claim would have been obvious because one of ordinary skill in the art would have been able to make this simple substitution of one known element for another and yield predictable results to one of ordinary skill in the art, see MPEP §2143(B).
With respect to the above overlapping numerical ranges, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by Catania because selection of overlapping ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05(I).
Regarding claim 12, Jackisch modified by Schroder does not teach wherein the obtained mixture is incubated in a container having a volume ranging from 0.5 m3 to 5000 m3.
However, in the same field of endeavor, Catania teaches wherein the obtained mixture is incubated in a container having a volume ranging from 0.5 m3 to 5000 m3 (malaxer capacity of 500L, or 0.5 m3, page 3, col. 1, paragraph 2, where “500L”, or 0.5 m3, falls within the claimed range of “0.5 m3 to 5000 m3”). Although Catania does not teach incubating in the malaxer, Jackisch teaches that the olive paste is incubated with horizontal stirring for additional maceration ([0003]), which is understood in the art to be how a malaxer functions.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the malaxer having capacity of 500L of Catania in the process for making olive oil as taught by Jackisch modified by Schroder. The claim would have been obvious because the claimed elements were known in the art prior to the effective filing date and one skilled in the art could have combined the known methods with no change to their respective function, and the combination would have yielded nothing more than predictable results. See MPEP § 2143(I)(A). Further, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the malaxer of modified Jackisch as the incubation container for the incubation step of the invention taught in Jackisch in [0030] because Jackisch teaches that it is known in the art for incubation to occur with horizontal stirring for additional maceration [0003]. Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious, see MPEP §2143(D).
Claims 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Jackisch et al. (DE 10339010A) in view of Schroder et al. (US PGPub 2003/0017575 A1) and Sharma et al. (“Improving the olive oil yield and quality through enzyme-assisted mechanical extraction, antioxidants, and packaging”, 2013).
Regarding claims 20 and 21, Jackisch and Schroder do not teach wherein the first enzyme composition is added to the olive paste in an amount ranging from 100 to 300 ppm (claim 20) or wherein the second enzyme composition is added to the olive paste in an amount ranging from 100 to 300 ppm (claim 21).
However, in the same field of endeavor, Sharma teaches wherein the enzyme is added in an amount ranging from 100 to 300 ppm (in experiments, enzymes were applied at a rate of 0.01 and 0.03 (or 100 ppm and 300 ppm, respectively), page 158 col. 2, paragraph “Extraction and Storage of Oil”, where “0.01 and 0.03” both fall within the claimed range of “each added… from 100 to 300 ppm.”).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of producing olive oil taught by Jackisch modified by Schroder to use the enzyme amounts taught by Sharma. One of ordinary skill would have been motivated to make this modification because Sharma teaches that addition of enzymes at the rates provided resulted in a higher oil yield than the control that did not have an enzyme treatment (p. 160, Table 1).
Response to Arguments
Claim Rejections - 35 U.S.C. §112(a): Applicant has overcome the 35 U.S.C. § 112(a) rejections of claims 1, 2, 5-9, 11-15, 17, 18, 20, 21 based on amendments to the claims and/or cancelation. Accordingly, the 35 U.S.C. § 112(b) rejections have been withdrawn.
Claim Rejections – 35 U.S.C. §103 of claims 1, 2, 6-9, 11, 13-15, 17 and 18 over Jackisch and Schroder: Applicant’s arguments filed July 1, 2026 have been fully considered but they are not persuasive.
Applicant argued that the Office’s reliance on MPEP §2144.04(IV)(C) for the order of adding the enzymes during crushing is misplaced because the cases cited address situations where the same ingredients are combined in different sequences. However, Jackisch teaches adding enzymes to previously deoiled olive paste, which is fundamentally different from the claimed invention where the enzyme is added during crushing (Remarks, p. 6, ¶ 5- p. 8, ¶ 1).
This argument has been considered. However, MPEP §2144.04(IV)(C) states “Selection of any order of mixing ingredients is prima facie obvious”, In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) and “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”, In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). Thus, absent any new or unexpected results, the Examiner maintains that it is prima facie obvious to add the enzymes to a fresh olive paste instead of a deoiled olive paste.
Applicant also argued that the prior art does not teach or suggest the requirement that the first and second enzyme compositions be separately added during crushing and that an adequate obviousness rejection has not been made (Remarks, p. 8, ¶ 2- p. 9, ¶ 1).
This argument has been considered. However, the Examiner maintains that although the cited prior art does not teach adding the enzymes in a first enzyme composition and a second enzyme composition separately, MPEP §2144.04(IV)(C) states “Selection of any order of mixing ingredients is prima facie obvious.” In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Furthermore, because both the first and second enzyme mixture are added during the same processing step, it logically follows that the first enzyme composition and second enzyme composition are intermediate products that do not result in a patentably different process compared to the cited prior art. The Applicant has not provided any data to demonstrate that adding the enzyme mixtures in two separate steps results in a patentable difference between the prior art and the claimed invention.
Applicant argued that Jackisch teaches away from adding enzymes during crushing because Jackisch teaches particularly good results when the material has already been de-oiled (Remarks, p. 9, ¶ 2).
This argument has been considered. However, MPEP §2123(I) states “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments.” Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989) and “The court held that the prior art anticipated the claims even though it taught away from the claimed invention. ‘The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.’” Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998). Although Jackisch discloses an advantage to adding enzymes on de-oiled olive material, Jackisch does not teach that adding the enzyme to a fresh olive paste would not work. The Examiner maintains that it would have been obvious to add the enzymes during crushing on a fresh olive paste because MPEP §2144.04(IV)(C) states “Selection of any order of mixing ingredients is prima facie obvious.” In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
Applicant also argued that the accepted wisdom in the art is that enzymes should be added during malaxation, not during crushing because the enzymes naturally present in olives are inactivated during incubation, so enzymes are added during malaxation to replace the inactive enzymes (Remarks, p. 10, ¶ 1).
This argument has been considered. However, Jackisch teaches adding the enzyme composition prior to incubation ([0030]). The Examiner maintains that although Jackisch teaches adding the enzyme after crushing, MPEP §2144.04(IV)(C) states “Selection of any order of mixing ingredients is prima facie obvious.” In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Therefore, absent a showing of unexpected results, it would have been obvious to add the enzymes during the crushing of the olive component rather than after the crushing has occurred.
Applicant further argued that there would not have been a reasonable expectation of success adding the enzymes during extraction and pressing and that one of ordinary skill would have expected the enzyme added to be deactivated and that there would not be a reasonable expectation of success combining the enzymes of Jackisch and Schroder (Remarks, p. 10, ¶ 2- p. 11, ¶ 1).
This argument has been considered. However, the Examiner maintains that one of ordinary skill would have had a reasonable expectation of success at arriving at the claimed invention for the reasons described in the 35 USC §103 rejection above. Regarding adding the enzyme during crushing, MPEP §2144.04(IV)(C) states “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”, In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). The Applicant has failed to provide data demonstrating unexpected results of the process of Jackisch not working with the enzymes added during crushing. Additionally, the claims do not presently recite an efficiency of the enzyme mixtures. Thus, even if the enzymes were to be inactivated during the crushing step, the process of the prior art would still meet the limitations of the claimed invention.
Applicant further argued that the instant specification demonstrated unexpected synergistic results from the claimed combination (Remarks, p. 11, ¶ 2- p. 12, ¶ 2).
This argument has been considered. However, the Examiner maintains that the data provided is insufficient for a showing of unexpected results. MPEP §716.02(d) states that “Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)” and “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).” The data provided in the specification is not commensurate in scope with the claimed invention. The process of claim 1 does not presently recite many of the parameters specified in the examples of the specification. For example, claim 1 does not recite amounts of enzymes used or the incubation time and temperature. Thus, a showing of unexpected results has not been made.
Regarding Applicant’s arguments about claim 17 (Remarks, p. 13, ¶2), Applicant's arguments as related to claim 1 were determined to be unpersuasive as detailed previously herein. Examiner further maintains that the dependent claims are properly rejected in light of the cited combinations of prior art as described in the claim rejections.
Claim Rejections – 35 U.S.C. §103 of claims 5 and 12 over Jackisch, Schroder, and Catania: Applicant’s arguments filed July 1, 2026 have been fully considered but they are not persuasive.
Applicant argued that Jackisch, Schroder, and Catania fail to teach the limitations of claims 5 and 12 because Catania does not cure the deficiencies of Jackisch and Schroder (Remarks, p. 14, ¶ 2-6).
This argument has been considered. However, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Examiner maintains that Catania is adequate for all that is relied on in the present claim rejections, and the combination of references is adequate to deem the present claims obvious.
Applicant's arguments as related to claim 1 were determined to be unpersuasive as detailed previously herein. Examiner further maintains that the dependent claims are properly rejected in light of the cited combinations of prior art as described in the claim rejections.
Claim Rejections – 35 U.S.C. §103 of claims 20 and 21 over Jackisch, Schroder, and Sharma: Applicant’s arguments filed July 1, 2026 have been fully considered but they are not persuasive.
Applicant argued Sharma does not cure the deficiencies of Jackisch and Schroder (Remarks, p. 15, ¶ 4- p. 16, ¶ 1).
This argument has been considered. However, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Examiner maintains that Sharma is adequate for all that is relied on in the present claim rejections, and the combination of references is adequate to deem the present claims obvious.
Applicant's arguments as related to claim 1 were determined to be unpersuasive as detailed previously herein. Examiner further maintains that the dependent claims are properly rejected in light of the cited combinations of prior art as described in the claim rejections.
The rejections of claims 1-2, 5-9, 11-15, 17-18, 20-21 have been maintained herein.
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.
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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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