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 .
Response to Amendment
This is the response to amendment filed for application 17932160 filed 01/02/2026.
Claims 47-48, and 54-69 are currently pending and have been fully considered.
Claims 47 and 57 have been amended.
Claims 1-46 and 49-53 have been cancelled.
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 47-48, and 54-69 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.
Parent claim 47 has been amended to state “wherein the amount of water is reduced in step b) by flash drying under 2-30 mm Hg to achieve said water level.”
There is insufficient disclosure for conducting flash drying under 2-30 mm Hg as originally filed.
Parent claim 47 has also been amended to state “non-enzymatic acid or base catalysts that are immobilized on a cross-linked polymeric solid resin selected from sulfonated polystyrene-divinylbenzene or quaternary ammonium base resins, wherein said immobilized catalyst is operated in a packed resin bed having a height of at least one meter and a superficial velocity of 0.1-2 bed volumes per hour.”
There is insufficient disclosure for non-enzymatic acid or base catalysts that are immobilized on a cross-linked polymeric solid resin selected from sulfonated polystyrene-divinylbenzene or quaternary ammonium base resins, wherein said immobilized catalyst is operated with a superficial velocity of 0.1-2 bed volumes per hour as originally filed.
Claim Objections
Claim 58 objected to under 37 CFR 1.75 as being a substantial duplicate of claim 57. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 57 has been amended to state acid or base catalysts and claim 58 also states acid catalyst or base catalyst.
Claim Interpretation
It is noted that parent claim 47 teaches in step c) reacting said free fatty acids with a second alcohol in the presence of one or more liquid lipolytic enzymes and/or one or more non-enzymatic catalysts to produce fatty acid alkyl esters. Step c) may only employ one or more liquid lipolytic enzymes.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 47-48, 54-56, and 60-69 is/are rejected under 35 U.S.C. 103 as being unpatentable over RODEN et al. (USPGPUB 2010/0175312) in view of HOLM (WO 2012/130961).
RODEN et al. teach a method for producing biodiesel.
The general method is taught in paragraphs 72-81.
A feedstock is provided. The feedstock is taught in paragraph 1 to comprise waste fat feedstock from crude vegetable oils, animal fats and/or waste oils. The feedstock is taught in paragraph 8 to comprise free fatty acids.
The feedstock is pretreated. Pretreatment is taught in paragraphs 11 and 18 to include acid catalysis reaction of fatty acid with methanol followed by alkali catalysis.
Acid catalysis reaction of fatty acid with methanol is taught in paragraphs 17-18 to produce water which stops the reaction from reaching completion.
Another pretreatment is taught in paragraph 95 to include dewatering the feedstock.
It would be well within one of ordinary skill in the art to subject the feedstock to acid catalysis reaction with methanol followed by alkali catalysis and then dewatering the feedstock.
RODEN et al. teach in paragraph 20 that one approach for resolving the issue of water formation during acid catalysis reaction of fatty acid with methanol is to boil off excess alcohol and water.
RODEN et al. teach adding glycerol and a caustic base to the pretreated feedstock and heating the resulting mixture to perform a glycerolysis reaction.
RODEN et al. also teach that water vapor is removed by a vacuum.
Removing water through other well-known methods would be obvious to one of ordinary skill in the art.
RODEN et al. teach in paragraph 111 that flashing water is known.
It would be obvious to one of ordinary skill in the art to explicitly employ water flashing to remove water vapor.
Given that RODEN et al. teach that water is detrimental, one of ordinary skill in the art would be led to remove as much of the water as possible such as close to 0% and about 200-600 ppm.
RODEN et al. further teach in paragraph 111 that temperature and pressure conditions for flashing water off includes a pressure of between 5 to 15 mm Hg total pressure.
It would be well within one of ordinary skill in the art to employ flash drying with a total pressure of between 5 to 15 mmHg to remove the water.
The reaction products from the glycerolysis reaction are combined with a slight excess of alcohol and catalyst, and performing a transesterification reaction, resulting in an alkyl ester reaction product.
HOLM teach in lines 12-24 of page enzymatic processes have been developed wherein lipases is used to catalyze a triglyceride feedstock with a lower alcohol to produce fatty acid methyl esters.
It would be obvious to one of ordinary skill in the art to apply the enzymatic process for transesterification for the reaction produced from the glycerolysis reaction of RODEN et al.
RODEN et al. teach in paragraphs 11 and 13 that enzymatic pretreatment is known in the art but remarks that enzymes may be expensive.
However, HOLM teaches that new technology has enabled developments new cost effective treatments with enzymes.
The advantages of using the enzymes in HOLM that are immobilized are taught in lines 31-36 of page 3 of HOLM.
The immobilized enzymes are taught to be easy to recover and reuse.
Glycerol is taught in paragraphs 56-58 of RODEN et al. to be separated from the alkyl ester reaction product through the differences in densities between the ester and glycerol phases.
It is stressed that parent claim 47 teaches in step c) reacting said free fatty acids with a second alcohol in the presence of one or more liquid lipolytic enzymes and/or one or more non-enzymatic catalysts to produce fatty acid alkyl esters. Step c) may only employ one or more liquid lipolytic enzymes.
Regarding claim 48, although RODEN et al. do not specifically state the amount of water present after pretreatment with acid catalysis, RODEN et al. teach in paragraph 23 and 86 that there exists water in the feedstock and that water is formed as a byproduct from esterification of an acid with an alcohol.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 54, HOLM teaches an esterification process for the production of biodiesel. HOLM teaches in lines 29-35 of page 6, and lines 1-31 of page, an enzymatic production of biodiesel. HOLM teaches using lipase in an enzymatic transesterification.
It would be obvious to one of ordinary skill in the art to use the enzymatic lipase catalyzed step for the transesterification step taught in RODEN et al.
The advantages of using enzymes are taught in lines 31-36 of page 3 of HOLM.
Enzymes are taught to be easy to recover and reuse.
Regarding claim 55, HOLM teaches lipase.
Regarding claim 56, the amount of lipases added is taught in lines 15-22 of page 5 of HOLM to be 1 LU/g to 1000 LU/g fatty acid feedstock.
A prima facie case of obviousness exists wherein the claimed ranges overlap.
Regarding claim 60, Glycerol is taught in paragraphs 56-58 to be separated from the alkyl ester reaction product through the differences in densities between the ester and glycerol phases.
Regarding claim 61, the feedstock is taught in paragraph 1 to comprise waste fat feedstock from crude vegetable oils, animal fats and/or waste oils.
Regarding claims 62-63, RODEN et al. teach in paragraphs 43, 45 and 59 that soaps can be formed from free fatty acid by neutralization with acid and base catalysts. The soaps are taught to be removed as excessive soap is taught to later inhibit processing of biodiesel.
Regarding claim 64, the present claims state that glycerol is present a component of the water/heavy phase.
RODEN et al. teach in paragraph 20 that one approach for resolving the issue of water formation during acid catalysis reaction of fatty acid with methanol is to boil off excess alcohol and water. RODEN et al. also teach that water vapor is removed by a vacuum after the glycerolysis reaction. Alcohol and water would therefore, be separated from the glycerol.
Regarding claim 65, the stream of glycerol free methyl esters from the methanol recovery flash step is taught in paragraph 136 to then distilled in a methyl ester flash process step, resulting in a pure methyl ester biodiesel product.
Regarding claims 66-67, methanol is taught in paragraph 11 for acid catalysis.
Regrading claims 68-69, methanol is taught in paragraph 24 for transesterification.
Claim(s) 57-59 is/are rejected under 35 U.S.C. 103 as being unpatentable over RODEN et al. (USPGPUB 2010/0175312) in view of HOLM (WO 2012/130961) as applied to claims 47-48, 54-56, and 60-69 above, and further in view of GHOSH (USPGPUB 2014/0038249).
The above discussion of RODEN et al. in view of HOLM is incorporated herein by reference.
Regarding claims 57-59, the transesterification reaction is taught in paragraphs 103-105 of RODEN et al. to include base catalysts such as sodium hydroxide.
GHOSH is relied on to teach employing a solid resin selected from sulfonated polystyrene-dinvinylbenzene in a packed bed.
GHOSH teaches in paragraph 30 a macroporous cation exchange resin is employed to bring down the levels of sodium and potassium in a process for preparation of methyl esters from feedstock comprising free fatty acids.
GHOSH teaches in paragraphs 50 and 71 a base catalyst that includes sodium hydroxide is employed to trans esterify one part of the feedstock.
GHOSH teaches in paragraph 74 a macroporous cation exchange resin is prepared by using styrene-divinyl benzene copolymers and sulfuric acid.
It would be well within one of ordinary skill in the art to use known macroporous cation exchange resin supports, used in the same field of production of methyl esters from feedstocks comprising fatty acids, for the process taught in RODEN et al.
The macroporous cation exchange resins would be expected to immobilize a portion of the base catalyst of sodium hydroxide.
GHOSH does not teach a bed height of at least one meter.
GHOSH teach in paragraph 111 a resin bed height that is only 65 cm but allows for a service rate of 5 bed volumes/per hour.
It appears that given that GHOSH teaches in paragraph 95 minimum bed volume of resin employed, a resin bed height 1 meter appears to be within the workable ranges for one of ordinary skill in the art.
A resin height of 1 meter could be employed by modifying other dimensions to maximize height and minimize other dimensions.
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time of the invention.
Response to Arguments
Applicant's amendments filed 01/02/2026 have necessitated a new grounds of rejection based on the existing prior art.
Applicant’s amendments have appeared to introduce a matter of new matter as specific limitations presented do not appear to have been presented as originally filed.
Applicant argues that the combination of RODEN et al. and HOLM do not teach the claimed non-enzymatic resin bed (greater than 1 meter) under the claimed sequence and water windows.
This is not persuasive as the claims are still written such that the catalyst employed does not have to comprise a non-enzymatic acid or base catalyst on a resin bed.
Applicant argues that the prior art do not teach flash drying in RODEN et al. and that HOLM teaches distillation to achieve very low water of less than 200-500 ppm but applicant argues that HOLM is directed toward enzymatic catalysts.
This is not persuasive as RODEN et al. teach removal of water and also teaches that flash drying at a pressure of 5-15 mm Hg is known in the art.
It appears well within one of ordinary skill in the art to employ another recognized process for removing water that is taught in RODEN et al. in the process that RODEN teaches.
Given that RODEN et al. teach that water is detrimental, one of ordinary skill in the art would be led to remove as much of the water as possible such as close to 0% and about 200-600 ppm.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
BASHEER (USPGPUB 20150353970) teaches enzymatic transesterification/esterification with lipases immobilized on hydrophobic resins such as polystyrene-divinylbenzene-based resins.
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.
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/MING CHEUNG PO/ Examiner, Art Unit 1771
/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
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