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 .
This office action was written in response to the Applicants Remarks filed 5/29/26. Claims 1-21 are pending and have been examined on the merits. Claims 19 and 20 were previously withdrawn. Claim 21 is new.
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claim 19 been renumbered 21.
Withdrawn Rejections
The 102(a)(1) rejections of claims 1, 4, 5, 6, 8, 12, and 14 as being anticipated by Laws et al. (EP0169068) have been withdrawn due to the amendments to the claims.
The 103(a) rejections of claims 2, 3, and 9 over Laws et al. (EP0169068) have been withdrawn due to the amendments to claim 1.
The 103(a) rejection of claim 7 over Laws et al. (EP0169068) and in further view of Mackay (US 2015/0189900) has been withdrawn due to the amendments to claim 1.
The 103(a) rejections of claims 10 and 11 over Laws et al. (EP0169068) and in further view of Jager et al. (US 5,888,569) have been withdrawn due to the amendments to claim 1.
The 103(a) rejection of claim 13 over Laws et al. (EP0169068) and in further view of Showmaker et al. (DK 3092312) has been withdrawn due to the amendments to claim 1.
The 103(a) rejections of claims 15 and 16 over Laws et al. (EP0169068) and in further view of Celus et al. 2007 “Enzymatic Hydrolysis of Brewer’s Spent Grain Proteins…” Journal of Agricultural and Food Chemistry vol. 55 pages 8703-8710 have been withdrawn due to the amendments to claim 1.
The 103(a) rejection of claim 17 over Laws et al. (EP0169068) and in further view of Manchuliantsau et al. (US 2019/0183155) has been withdrawn due to the amendments to claim 1.
The 103(a) rejection of claim 18 over Laws et al. (EP0169068) and in further view of Jimenez et al. US 20190200640) and Lee (WO 2019/079491) have been withdrawn due to the amendments to claim 1.
Trademarks
The use of the term “Cellic CTec 2”, “Cellic CTec3”, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 1-6, 8, 9, 12, 14, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Laws et al. (EP0169068) in view of Petry et al. (US 2020/0138065).
Regarding Claim 1: Laws discloses a method of utilizing spent grains and waste products to convert them into valuable materials [abstract]. Laws discloses first treating spent grains with boiling water for a heated preservation treatment [pg. Ex. 6]. Laws discloses treating spent grains under alkaline conditions and then applying a cellulase treatment, followed by and a filtering step after treatment to produce a broth and solid residue [pg. 2, lines 31-36; pg. 3, lines 1-5; pg. 4, lines 13-24; pg. 8, lines 19-35; pg. 9, lines 1-10; claim 6].
Laws does not disclose reducing the particle size.
Petry discloses comminuting spent grains to reduce the particle size [abstract]. Petry discloses comminuting and heating spent grains and that these steps can be performed in any sequence [0009-0012]. Petry discloses comminuting for increasing the surface area for further treatment and for achieving desirable sensory properties of the end product [0021]. Petry discloses heating for decontaminating [0015]. Petry also discloses that the heating step (preservation) can occur before comminution [0022].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the method of Laws to include reducing the particle size of the spent grains in order to increase the surface area for the subsequent treatments and to aid in the achieving desirable sensory attributes in the end product.
Regarding Claims 2 and 3: Laws discloses as discussed above in claim 1. Laws further discloses collecting wet spent grains and then milling using a disc mill and therefore discloses wet milling grains [Ex. 5, pg. 14 lines 27-30].
Laws does not disclose milling the preserved spent grains.
Although the Laws discloses milling before the preservation treatment, the selection of any order of performing process steps is prima facie obvious and milling in general would have been obvious in that it makes the makes the grains more accessible for treatment. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F. 2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in absence of new or unexpected results); In re Gibson, 39 F. 2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.
Regarding Claim 4: Laws discloses as discussed above in claim 1. Laws further discloses supplying wet spent grains before treating with alkaline solution [pg. 16, lines 15-25].
Regarding Claim 5: Laws discloses as discussed above in claim 1. Laws further discloses treating with an alkaline solution [pg. 8, lines 19-20; pg. 16, lines 15-25].
Regarding Claim 6: Laws discloses as discussed above in claim 1. Laws further discloses wherein the alkaline solution can be sodium hydroxide (caustic soda) [pg. 8, lines 25-27; pg. 16, lines 15-25].
Regarding Claim 8: Laws discloses as discussed above in claim 1. Laws further discloses wherein the spent grains are treated by boiling (high temperature water) [pg. 8, lines 25-27].
Regarding Claim 9: Laws discloses as discussed above in claim 8. Laws does not disclose applying an alkaline treatment after the heating preservation treatment. However, Laws does disclose boiling and treating with alkaline solution as discussed above.
Although Laws does not disclose an alkaline treatment following a heating step, Laws discloses that heating and alkaline treatment are performed together. However, the selection of any order of performing processes steps is prima facie obvious. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F. 2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in absence of new or unexpected results); In re Gibson, 39 F. 2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious. Since Laws discloses boiling and treating with alkaline solution, Laws renders the steps of heating followed by alkaline treatment obvious.
Regarding Claim 12: Laws discloses as discussed above in claim 1. Laws further discloses wherein after the alkaline treatment, the grains are subjected to cellulase treatment after the adjustment of the pH, and performing the cellulase treatment at a specified temperature, and for a specified time [pg.16, lines 23-29].
Regarding Claim 14: Laws discloses as discussed above in claim 1. Laws further discloses wherein after the cellulase treatment the treated spent grains are filtered to produce solids (retentate) and a broth (filtrate) [pg.8, lines 30-36].
Regarding Claim 21: Laws discloses a method of utilizing spent grains and waste products to convert them into valuable materials [abstract]. Laws discloses first treating spent grains with hot water for a heated preservation treatment [Ex. 5]. Laws discloses treating spent grains under acidic conditions and then applying a cellulase treatment where it discloses a combination of treatments, followed by and a filtering step after treatment to produce a broth and solid residue [pg. 2, lines 31-36; pg. 3, lines 1-5; pg. 4, lines 13-24; pg. 8, lines 19-35; pg. 9, lines 1-10; claim 6].
Laws does not disclose reducing the particle size.
Petry discloses comminuting spent grains to reduce the particle size [abstract]. Petry discloses comminuting and heating spent grains and that these steps can be performed in any sequence [0009-0012]. Petry discloses comminuting for increasing the surface area for further treatment and for achieving desirable sensory properties of the end product [0021]. Petry discloses heating for decontaminating [0015]. Petry also discloses that the heating step (preservation) can occur before comminution [0022].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the method of Laws to include reducing the particle size of the spent grains in order to increase the surface area for the subsequent treatments and to aid in the achieving desirable sensory attributes in the end product.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Laws et al. (EP0169068) and Petry et al. (US 2020/0138065) as applied to claim 6 above and in further view of Mackay (US 2015/0189900).
Regarding Claim 7: Laws discloses as discussed above in claim 6. Laws further discloses wherein the alkaline solution can be sodium hydroxide (caustic soda) [pg. 8, lines 25-27; pg. 16, lines 15-25].
Laws does not explicitly disclose that the pH is >10.
Mackay discloses a method of making spent grains into a high value protein product [abstract]. Mackay discloses milling distillers grain to reduce the particle size [0020; 0031]. Mackay discloses treating milled grains with a basic aqueous solution having a pH of at least 11; or 10 to 12 [0021; 0035]. Mackay discloses using calcium hydroxide (slaked lime), and sodium hydroxide (caustic soda) [0035]. Mackay discloses the grains as wet or dry during milling [claims 9, 11-14].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the method of Laws to provide the pH of the alkaline food reagent/NaOH of Laws as a pH of 11; or 10 to 12 as in Mackay in order to effectively extract proteins from the spent grains and to enable the utilization of the spent grains for additional food or feed purposes.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Laws et al. (EP0169068) and Petry et al. (US 2020/0138065) as applied to claim 1 above and in further view of Jager et al. (US 5,888,569).
Regarding Claims 10 and 11: Laws discloses as discussed above in claim 1. Laws does not disclose wherein applying a preservation treatment comprises applying a preservative to the spent grains (claim 10); wherein the preservative comprises sodium or potassium metabisulfite or sorbate (claim 11).
Jager discloses a method of preserving spent grains [abstract]. Jager discloses applying potassium sorbate to the spent grains in order to preserve the grains in a manner that is harmless and food safe [abstract]. Jager discloses that the potassium sorbate does not negatively affect the nutritional value of the feed [col. 3, lines 33-44]. Jager discloses that the potassium sorbate improves the stability of the grains [col. 4, lines 14-17].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the method of Laws to include the step of preservation by using potassium sorbate as in Jager since Laws discloses preservation steps and since Jager discloses that potassium sorbate improves the stability of spent grains without negatively effecting its nutritional value.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Laws et al. (EP0169068) and Petry et al. (US 2020/0138065) as applied to claim 12 above and in further view of Showmaker et al. (DK 3092312).
Regarding Claim 13: Laws discloses as discussed above in claim 12. Laws does not disclose wherein the cellulase is Cellic Ctec2 or CTec3.
Showmaker discloses using CELLIC® CTec2 and CELLIC® CTec3 as cellulases for the treatment of fermentation broth [0131-0136; 0141; 0142]. Showmaker discloses steam treated and alkaline treated cellulosic material as the substrate [0043; 0148; 0150]. Showmaker discloses distillers grain and spent grains as a substrate [0043].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art at to modify the method of Laws to include as cellulase the CELLIC® CTec2 and CELLIC® CTec3 of Showmaker since it would have been within the discretion of one ordinary skill to utilize cellulase sources that are preferable to one of ordinary skill, cost effective, or available and since Laws uses cellulase in general.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Laws et al. (EP0169068) and Petry et al. (US 2020/0138065) as applied to claim 14 above and in further view of Celus et al. 2007 “Enzymatic Hydrolysis of Brewer’s Spent Grain Proteins…” Journal of Agricultural and Food Chemistry vol. 55 pages 8703-8710.
Regarding Claims 15 and 16: Laws discloses treating the alkaline treated spent grains with an acid before the cellulase treatment.
Laws does not disclose further comprising applying an acid treatment to the filtrate (claim 15); wherein the applying an acid treatment to the filtrate comprises adding phosphoric acid or citric acid to the filtrate (claim 16).
Celus discloses treating brewer’s spent grains with an alkaline solution followed by filtering the treated spent grains to produce a filtrate [pg. 8704; Materials and Methods]. Celus further discloses precipitating proteins present in the filtrate by acidification with citric acid [pg. 8704; Materials and Methods].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the method of Laws to treat the broth/filtrate with an acid as in Celus in order to precipitate any remaining protein in the broth.
Although Laws does disclose an acid treatment step, Laws discloses that it can be performed after the alkaline step and before filtering. However, the selection of any order of performing processes steps is prima facie obvious. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F. 2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in absence of new or unexpected results); In re Gibson, 39 F. 2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Laws et al. (EP0169068) and Petry et al. (US 2020/0138065) as applied to claim 14 above and in further view of Manchuliantsau et al. (US 2019/0183155).
Regarding Claim 17: Laws discloses as discussed above in claim 14 above. Laws does not disclose further comprising processing the retentate to produce meal replacement products.
Manchuliantsau discloses upcycling food wastes and byproducts to make them suitable for human consumption [abstract]. Manchuliantsau discloses the byproducts and solid wastes including distillers dried grains and spent grains [0030; 0044]. Manchuliantsau discloses food grade proteins being applied in meal replacements [0075].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the method of Laws in to include utilizing the retentate of Laws in a meal replacements as in Manchuliantsau since Laws discloses the retentate as being high in proteins and lipids which are essential for meals [Laws col. 6, lines 1, 2, and 24-30].
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Laws et al. (EP0169068) and Petry et al. (US 2020/0138065) as applied to claim 14 above and in further view of Jimenez et al. US 20190200640) and Lee (WO 2019/079491).
Regarding Claim 18: Laws discloses as discussed above in claim 14 above. Laws discloses using the broth to make food or for the production of beer [pg. 9, lines 2-10].
Laws does not explicitly disclose processing the filtrate to produce at least one of oils, fats, dyes, extracted protein or a dewatered biomass.
Jimenez discloses treating spent grains with cellulase [abstract; 0028; 0054-0056]. Jimenez discloses heat treating the spent grains to prevent spoilage [0058]. Jimenez discloses treating with cellulase [0059]. Jimenez discloses that the process can result in broth that is high in protein [0083-0086].
Lee discloses utilizing spent grains and taking a produced filtrate and processing the filtrate into a high purity protein meal [00087].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the method of Laws in to include utilizing the filtrate of Laws as a high protein product as in Jimenez and to further produce a protein extract as in Lee since Laws discloses the filtrate as being useful in the production of alcohol, food and fodder and since protein extracts are useful in food and fodder production.
Response to Arguments
The 102(a)(1) rejections of claims 1, 4, 5, 6, 8, 12, and 14 as being anticipated by Laws et al. (EP0169068) have been withdrawn due to the amendments to the claims.
The 103(a) rejections of claims 2, 3, and 9 over Laws et al. (EP0169068) have been withdrawn due to the amendments to claim 1.
The 103(a) rejection of claim 7 over Laws et al. (EP0169068) and in further view of Mackay (US 2015/0189900) has been withdrawn due to the amendments to claim 1.
The 103(a) rejections of claims 10 and 11 over Laws et al. (EP0169068) and in further view of Jager et al. (US 5,888,569) have been withdrawn due to the amendments to claim 1.
The 103(a) rejection of claim 13 over Laws et al. (EP0169068) and in further view of Showmaker et al. (DK 3092312) has been withdrawn due to the amendments to claim 1.
The 103(a) rejections of claims 15 and 16 over Laws et al. (EP0169068) and in further view of Celus et al. 2007 “Enzymatic Hydrolysis of Brewer’s Spent Grain Proteins…” Journal of Agricultural and Food Chemistry vol. 55 pages 8703-8710 have been withdrawn due to the amendments to claim 1.
The 103(a) rejection of claim 17 over Laws et al. (EP0169068) and in further view of Manchuliantsau et al. (US 2019/0183155) has been withdrawn due to the amendments to claim 1.
The 103(a) rejection of claim 18 over Laws et al. (EP0169068) and in further view of Jimenez et al. US 20190200640) and Lee (WO 2019/079491) have been withdrawn due to the amendments to claim 1.
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 FELICIA C TURNER whose telephone number is (571)270-3733. The examiner can normally be reached Mon-Thu 8:00-4:00 pm.
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/Felicia C Turner/Primary Examiner, Art Unit 1793
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