DETAILED CORRESPONDENCE
Application Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Support for the amendments are within the instant application specification.
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/29/2025 has been entered.
Applicant’s amendment to the claims filed on 7/29/2025 in response to the Final Rejection mailed on 3/31/2025 is acknowledged. This listing of claims replaces all prior listings of claims in the application.
Claims 1-2, 4-9, 11-29, 31 are pending.
Claims 11-19, 21-22 stand withdrawn from consideration pursuant to 37 CFR 1.142(b).
Claims 1-2, 4-9, 20, 23-29, 31 are pending and examined on its merits.
Applicant’s remarks filed on 7/29/2025 in response to the Final Rejection mailed on 3/31/2025 have been fully considered and are deemed persuasive to overcome at least one of the rejections and/or objections as previously applied.
The text of those sections of Title 35 U.S. Code not included in the instant action can be found in the prior Office Action.
Withdrawn Rejections
The rejection of claims 1 (claims 3, 5-9 dependent thereof), 2, 4, 20 (claims 23, 25, 27-29 dependent thereof),24, 26, 31 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for the recitation of ‘about’ is withdrawn in view of Applicant’s deletion of the term ‘about’ in claims 1-2, 4, 20, 24, 26, 31.
The rejection of claims 5 and 27 under 35 U.S.C. 103 as being unpatentable over Lebaka et al (2014, Available online 15 November 2014. Bioresources and Bioprocessing, 10.1186/s40643-014-0022-8, cited on PTO-892 filed 10/16/2023) {herein Lebaka} in view of Burphan et al (2018, Available online 30 August 2018. Scientific Reports, 10.1038/s41598-018-31558-4, cited on PTO-892 filed 10/16/2023) {herein Burphan} as evidenced by Gouado et al. (2007, Available online 18 July 2007, EJCN, doi.org/10.1038/sj.ejcn.1602841, cited on PTO-892 filed 10/16/2023) {herein Gouado}, Medicinenet (2022, What Is Horse Gram, and Is It Good for Your Health,? https://www.medicinenet.com/what_is_horse_gram_and_is_it_good_for_your_health/article.htm, examiner cited) {herein Medicinenet} and Crop Trust (2024, Finger millet, https://www.croptrust.org/pgrfa-hub/crops-countries-and-genebanks/crops/finger-millet/, cited on PTO-892 filed 3/13/2024) {herein Finger Millet} is withdrawn in view of Applicant’s recitation of ‘at least one synthetic antioxidant is selected from the group consisting of tert- butylhydroquinone (TBHQ), butylated hydroxytoluene (BHT), or blends thereof’ in claims 5 and 27.
New Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 (claim 5 dependent thereof), 8, 26 (claim 27 dependent thereof) are newly rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant). The new rejections is necessitated to address Applicant’s lack of antecedent basis for the recitation of ‘at least one synthetic antioxidant’ in claims 4, 8, 26.
Claims 4, 26 recites the limitation "at least one synthetic antioxidant" in line 2. There is insufficient antecedent basis for this limitation in the claim. In the interest of compact prosecution, it is suggested Applicant amend the claim to recite ‘further comprising at least one synthetic antioxidant.’
Claim 8 recites the limitation "the composition is added to a mixture of grain, water, and yeast" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Correction is suggested.
New Claim Rejections – Improper Markush Grouping
Claims 1 (claims 2, 4, 6-9 dependent thereof), 5, 20 (claims 23, 24, 26 dependent thereof) 25, 28-29 dependent thereof), 27, 31 are newly rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117. This new grounds of rejection is necessitated by Applicant’s recitation of ‘or blends thereof’ in claims 1, 5, 20, 25, 27, 31.
The Markush groupings of Claims 1 (claims 2, 4, 6-9 dependent thereof), 5, 20 (claims 23, 24, 26 dependent thereof) 25, 28-29 dependent thereof), 27, 31 are improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: The recitation ‘group consisting of lutein, spearmint extract. green tea extract, rosemary extract, acerola extract, tocopherols, or blends thereof’ (claims 1, 5, 20, 25, 27, 31) is sufficiently broad. The recitation ‘or blends thereof’ is open ended. Accordingly, one of ordinary skill in the art would not recognize the alternatives set forth in the claims to share substantial structural feature and a common use.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use. It is suggested that Applicant amend claim to recite ‘group consisting of lutein, spearmint extract. green tea extract, rosemary extract, acerola extract, tocopherols, and blends thereof.’
Maintained 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 rejection of claims 1-2, 4, 6-9, 20, 24-26, 28-29 under 35 U.S.C. 103 as being unpatentable over Lebaka et al (2014, Available online 15 November 2014. Bioresources and Bioprocessing, 10.1186/s40643-014-0022-8, cited on PTO-892 filed 10/16/2023) {herein Lebaka} in view of Burphan et al (2018, Available online 30 August 2018. Scientific Reports, 10.1038/s41598-018-31558-4, cited on PTO-892 filed 10/16/2023) {herein Burphan} as evidenced by Gouado et al. (2007, Available online 18 July 2007, EJCN, doi.org/10.1038/sj.ejcn.1602841, cited on PTO-892 filed 10/16/2023) {herein Gouado}, Medicinenet (2022, What Is Horse Gram, and Is It Good for Your Health,? https://www.medicinenet.com/what_is_horse_gram_and_is_it_good_for_your_health/article.htm, examiner cited) {herein Medicinenet} and Crop Trust (2024, Finger millet, https://www.croptrust.org/pgrfa-hub/crops-countries-and-genebanks/crops/finger-millet/, cited on PTO-892 filed 3/13/2024) {herein Finger Millet} is maintained. The rejection has been modified to remove claims 5, and 27 from the rejection due to the recitation of ‘at least one synthetic antioxidant is selected from the group consisting of tert- butylhydroquinone (TBHQ), butylated hydroxytoluene (BHT), or blends thereof.’
As amended, claims 1-2, 4, 6-9 are drawn to a method of increasing ethanol yield comprising adding a composition that contains at least one plant-based antioxidant in an amount effective to increase ethanol yield by at least 0.5% during an ethanol production process, wherein the at least one plant-based antioxidant is selected from the group consisting of lutein, spearmint extract. green tea extract, rosemary extract, acerola extract, tocopherols, or blends thereof and wherein the at least one plant-based antioxidant counteracts heat and/or ethanol stress in yeast during fermentation of at least 37°Cor above.
As amended, claims 20, 24-26, 28-29 are drawn to a method of increasing ethanol yield comprising adding a composition that contains at least one plant-based antioxidant in an amount ranging from 1 mg/L to 5000 mg/L to a fermentation vessel that contains a mixture of only grain, water, and yeast undergoing heat stress at temperatures of at least 37°C or above wherein the composition is in an amount sufficient to counteract heat stress of the yeast at temperatures of at least 37°C or above, wherein the at least one plant-based antioxidant is selected from the group consisting of lutein. spearmint extract, green tea extract, rosemary extract. acerola extract. tocopherols. or blends thereof.
With respect to claims 1, 25 Lebaka teaches a method of increasing ethanol production during fermentation by the addition of fruit pulp antioxidants (page 2, column 2, para 2) from tropical fruit pulps mango (Mangifera indica), banana (Musa paradisiaca), and sapota (Achras sapota), which are frequently attributed to antioxidant, metal ion-chelating, and/or free radical scavenging activity (page 4, column 2, paragraph 1). Said fruit pulps showed a significant effect in enhancing ethanol production during the fermentation process (page 2, column 1, paragraph 2). Examiner is interpreting ‘a composition’ recited in claim 1 to be the fruit pulp antioxidants taught by Lebaka. Evidentiary reference of Gouado et al. is cited to demonstrate that mangoes contain the antioxidant lutein (page 1184, columns 1 and 2, paragraph 2), which is recited in claim 1. In the presence of 4% fruit pulp (abstract and page 2, column 2, para 2), ethanol production went from 2.5 ± 0.3 (control) to 4.5 ± 0.5 (mango fruit pulp) (page 3, table 1). The 4% fruit pulp supplementation led to a significant increase in ethanol production, and the final concentration reached 14.5% (w/v) in a shorter time (72 h) with a productivity of 2.1 g/h/L (page 3, column 2, paragraph 1). Lebaka further teaches yeast strain S. cerevisiae 3215 was used in all fermentation experiments (page 2, column 1, paragraph 3). In addition, Lebaka teaches during heat and osmotic stress, yeast cells release trehalose which serves to protect cells against osmotic, oxidative and heat stresses during cellular growth (page 4, column 2, para 2). In medium supplemented with the fruit pulp, trehalose concentrations were decreased thereby indicating cells were protected against heat and osmotic stresses (page 4, column 2, para 2 and page 5, column 1, para 1). As such, Examiner is interpreting the teaching of said fruit pulp, which contains leutin, as ‘protecting’ yeast cells against heat and osmotic stress. Examiner is further interpreting the teaching by Lebaka of ‘protecting’ yeast cells against heat and osmotic stress as being the same as counteracting heat and osmotic stresses, as recited in claim 1 of the instant application, as both result in a decrease of said stresses.
With respect to claims 2, 24, Lebaka teaches an increase of ethanol production during fermentation with the supplementation of tropical fruit pulps mango (Mangifera indica), banana (Musa paradisiaca), and sapota (Achras sapota) (page 5, column 2, paragraph 1), which resulted in a significant effect of enhancing the ethanol production by yeast (page 2, column 1, paragraph 2). Evidentiary reference of Gouado is cited to demonstrate that mangoes contain the antioxidant lutein (page 1184, columns 1 and 2, paragraph 2). Although the reference of Lebaka does not explicitly teach the limitations of claims 2, 24 (wherein the composition contains the at least one plant-based antioxidant in an amount ranging from 1 mg/L to 5000 mg/L (claim 2); wherein the composition contains the at least one plant-based antioxidant in an amount ranging from 1 mg/L to 2000 mg/L (claim 24)), MPEP 2144.05 states"[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) (MPEP 2144.05 IIA)." One of ordinary skill would desire to optimize the amount of plant based antioxidant added to the fermentation depending on the particular application. It would be routine for one to arrive at the amount of plant based antioxidant for the application they intend on using the fermentation method. Therefore, the above invention would have been prima facie obvious.
With respect to claims 6, 28, Lebaka teaches the supplementation of fruit pulp led to an increase in the rate of fermentation and ethanol yield through the extended growth phase of cells (page 3, column 2, paragraph 3). Although the reference of Lebaka does not explicitly teach the limitations of claims 6, 28 (wherein the composition is added during the fermentation step) it would be obvious to one of ordinary skill in that art to add fruit pulp during fermentation as Lebaka teaches when fruit pulp (mango (Mangifera indica), banana (Musa paradisiaca), and sapota (Achras sapota) (page 5, column 2, paragraph 1) is added to fermentation, it leads to a significant increase in ethanol production (page 3, column 2, para 1). In fermentation without fruit pulp, a good amount of residual sugars were left incompletely fermented by yeast thereby resulting in a lower production of ethanol (page 3, column 1, para 4). As such, it would be obvious to one of ordinary skill in the art that supplementing the fermentation by adding fruit pulp during fermentation would result in better fermentation (i.e. an increased yield of ethanol) as the yeast would be able to better utilize the sugar within the fermentation for the production of ethanol since the fruit pulp with the plant based antioxidants would be readily available to serve as a ‘protectant’ for the yeasts against stresses during fermentation.
With respect to claims 7, 29, Lebaka teaches fermentation was initiated with the addition of yeast inoculum into the fermentation mixture (claim 7) (page 2, column 2, paragraph 2). It is known by those of ordinary skill in the art that in order for fermentation to take place, yeast must be added prior to fermentation as they convert sugars into alcohols, acids and gases through a process where they consume carbohydrates and produce byproducts such as ethanol. It is known by those of ordinary skill in the art that without yeast, the conversion of sugars into organic compounds such as ethanol will not occur. As such, it is the Examiner’s interpretation that yeast is added to the composition prior to fermentation since said yeast are required for fermentation to take place (page 2, column 2, paragraph 2).
With respect to claim 8, Lebaka teaches yeast strain S. cerevisiae 3215 was used for fermentation (page 2, column 1, paragraph 3). The yeast culture was maintained on a defined medium and inoculated into liquid medium (page 2, column 1, paragraph 3). Examiner is interpreting the liquid medium to comprise water. Lebaka further teaches the utilization of finger millet and horse gram powder in fermentation experiments (page 2, column 1, paragraph 2). Evidentiary reference of Medicinenet is cited to demonstrate that horse gram is a type of grain (page 1, paragraph 3). Evidentiary reference of Crop Trust is cited to demonstrate that finger millet is a grain (page 1, paragraph 2).
With respect to claim 9, Lebaka teaches a method of increasing ethanol production by the addition of fruit pulp antioxidants from mango (Mangifera indica), banana (Musa paradisiaca), and sapota (Achras sapota) (page 5, column 2, paragraph 1) which are frequently attributed to antioxidant, metal ion-chelating, and/or free radical scavenging activity (page 4, column 2, paragraph 1). Examiner is interpreting the composition to be the fruit pulp antioxidants from mango (Mangifera indica), banana (Musa paradisiaca), and sapota (Achras sapota) (page 5, column 2, paragraph 1). Evidentiary reference of ABC Fruits is cited to demonstrate that fruit pulp is a product produced by processing fresh fruit (page 1, paragraph 1). As such, Examiner is interpreting Applicant’s recited ‘liquid solution’ (instant application claim 9) to be the fruit pulp taught by Lebaka since Lebaka teaches the fruit pulp retains all off the juice and pulp and only the excess fiber is removed (page 1, paragraph 1).
With respect to claim 20, Lebaka teaches a method of increasing ethanol production by the addition of fruit pulp antioxidants from mango (Mangifera indica), banana (Musa paradisiaca), and sapota (Achras sapota) (page 5, column 2, paragraph 1), which are frequently attributed to antioxidant, metal ion-chelating, and/or free radical scavenging activity (page 4, column 2, paragraph 1). Examiner is interpreting the composition to be the fruit pulp antioxidants of mango (Mangifera indica), banana (Musa paradisiaca), and sapota (Achras sapota) (page 5, column 2, paragraph 1). Fermentations were conducted in Erlenmeyer flasks (page 2, column 2, paragraph 2). Examiner is interpreting the fermentation vessel to be the Erlenmeyer flask since said fermentation is taking place within the vessel. Tropical fruit pulps mango (Mangifera indica), banana (Musa paradisiaca), and sapota (Achras sapota), showed a significant effect in enhancing the ethanol production during the fermentation process (page 2, column 1, paragraph 2). Evidentiary reference of Gouado et al. is cited to demonstrate that mangoes contain the antioxidant lutein (page 1184, columns 1 and 2, paragraph 2). Lebaka further teaches that In the presence of 4% fruit pulp (abstract and page 2, column 2, para 2), ethanol production went from 2.5 ± 0.3 (control) to 4.5 ± 0.5 (mango fruit pulp) (page 3, table 1). Although the reference of Lebaka does not explicitly teach the limitations of claim 20 (at least one plant-based antioxidant in an amount ranging from 1 mg/L to 5000 mg/L), MPEP 2144.05 states"[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) (MPEP 2144.05 IIA)." One of ordinary skill would desire to optimize the fermentation depending on the particular application. It would be routine for one to arrive at the amount of plant based antioxidant for the application they intend on using the fermentation method. Therefore, the above invention would have been prima facie obvious. Lebaka further teaches during heat and osmotic stress, yeast cells release trehalose which serves to protect cells against said stresses during cellular growth (page 4, column 2, para 2). In medium supplemented with the fruit pulp, trehalose concentrations were decreased thereby indicating cells were protected against heat and osmotic stresses (page 4, column 2, para 2 and page 5, column 1, para 1). As such, Examiner is interpreting the teaching of Lebaka to be an indication that the fruit pulp, which contains lutein, protects the cells from heat and osmotic stresses. Examiner is further interpreting the teaching by Lebaka of ‘protecting’ yeast cells against heat and osmotic stress as being the same as counteracting heat and osmotic stresses, as recited in claim 20 of the instant application, as both result in a decrease of said stresses. Lebaka further teaches the utilization of finger millet and horse gram powder in fermentation experiments (page 2, column 1, paragraph 2). Evidentiary reference of Medicinenet is cited to demonstrate that horse gram is a type of grain (page 1, paragraph 3). Evidentiary reference of Crop Trust is cited to demonstrate that finger millet is a grain (page 1, paragraph 2). The supplemented batch fermentation experiments yielded only 9% (w/v) of alcohol in 300 g/L, and a good amount of residual sugars was left and incompletely fermented by S. cerevisiae. Examiner is interpreting the fermentation batch without fruit to be indicative of the absence of an antioxidant since Lebaka teaches the antioxidative properties of said fruit (abstract). In addition, Lebaka teaches, the 4% fruit pulp supplementation led to a significant increase in ethanol production, and the final concentration reached 14.5% (w/v) in a shorter time (72 h) with a productivity of 2.1 g/h/L (page 3, column 2, paragraph 1). Lebaka further teaches the yeast culture was maintained on a defined medium and inoculated into liquid medium (page 2, column 1, paragraph 3). Examiner is interpreting the liquid medium to comprise water.
However, Labaka does not teach the method of claims 1, 20 of a fermentation temperature of at least 37°C or above (claims 1, 20).The method of claims 4, 26, wherein the composition contains at least one synthetic antioxidant in an amount ranging from 0.0001 mg/L to 100 mg/L (claims 4, 26).
With respect to claims 1, 20, Burphan teaches a method wherein ethanol yield is increased by adding an antioxidant to a culture of yeast within media at a temperature of 40C (Figure 7 and page 8, para 6). For heat stress, plates were incubated at 37 °C (page 2, para 3).
With respect to claims 4, 26, Burphan teaches a method wherein ethanol yield is increased by adding 30mM of synthetic antioxidant NAC (N-acetylcysteine) to a culture of yeast within media (Figure 7 and page 8, para 6). Examiner is interpreting 30mM to fit within the claimed ranges of 0.0001 mg/L to 100 mg/L (claims 4, 26) as 30mM = 30mg/L.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to apply the teachings of Lebaka et al of a method of increasing ethanol production during fermentation by the addition of fruit pulp antioxidants (page 2, column 2, para 2), which are frequently attributed to antioxidant, metal ion-chelating, and/or free radical scavenging activity (page 4, column 2, paragraph 1) or combine the teachings of Burphan because Burphan teaches a method wherein ethanol yield is increased by adding a synthetic antioxidant to a culture of yeast within media at a temperature of 40C (Figure 7 and page 8, para 6). Burphan further teaches, for heat stress, plates were incubated at 37 °C (page 2, para 3).
One of ordinary skill in the art would be motivated to either use the teachings of Lebaka et al. by itself or combine the teachings of Burphan because Burphan provides the motivation for Lebaka to perform the fermentation at 37C as Burphan teaches said temperature induces heat stresses (page 2, para 3). In addition, Lebaka would be motivated to conduct the fermentation at 37C as it would provide a better indication of the role of plant based antioxidants from tropical fruit pulps mango (Mangifera indica), banana (Musa paradisiaca), and sapota (Achras sapota) in increasing ethanol yield during fermentation and would allow Lebaka to better characterize the plant based antioxidants roles in reducing heat stresses during fermentation. Furthermore, Lebaka would be motivated to add a synthetic antioxidant to the fermentation as Burphan teaches ethanol yield is increased by adding 30mM of synthetic antioxidant NAC to a culture of yeast during fermentation (Figure 7 and page 8, para 6). As such, one of ordinary skill in the art would expect that adding the synthetic antioxidant taught by Burphan and the plant based antioxidant taught by Lebaka would result in fermentation wherein significantly more ethanol is produced by yeast as the yeast would be protected against heat stresses by the plant-based and synthetic antioxidants taught by Lebaka and Burphan. One of ordinary skill in the art knowing the benefit of antioxidants both natural and synthetic based on the teachings of Lebaka and Burphan would have a reasonable expectation of success that utilizing the synthetic antioxidant taught by Burphan at 37C would enhanced the fermentation process as Burphan teaches fermentation at high temperatures (Burphan: abstract), of which Burphan is defining high temperature as being a temperature of 37C or 40C by yeast (Burphan: Figure 7 and page 8, para 6). In addition, utilizing a synthetic antioxidant would reduce the costs associated with fermentation as synthetic antioxidants typically have longer shelf-lives, thereby result in a more cost effective fermentation process.
One of skill in the art would have a reasonable expectation of success to make and use the claimed method for increasing ethanol yield at 37C with a synthetic antioxidant because Lebaka provides the basic method of increasing ethanol yield utilizing a plant-based antioxidant and its uses and methods of making it. Reference of Burphan provides the teachings for a method of increasing ethanol yield during fermentation at 37C by utilizing a synthetic antioxidant. Therefore there would be a reasonable expectation of success to arrive at the above invention. Therefore, the above invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
RESPONSE TO REMARKS: Beginning on p. 6 of Applicant’s remarks, Applicant in summary contends that neither Lebaka, Burphan, or Martinez-Gomez, taken alone or in combination, teach or suggest the presently claimed invention, the rejection should be withdrawn. Applicant contends that these references do not provide any information as to the impact of plant-based antioxidants on heat-stressed yeast.
This argument is found to be not persuasive in view of the modified rejection set forth. Examiner contends that Lebaka explicitly teaches, during heat and osmotic stress, yeast cells release trehalose which serves to protect cells against osmotic, oxidative and heat stresses during cellular growth (page 4, column 2, para 2). Examiner contends that Lebaka teaches in medium supplemented with the fruit pulp, trehalose concentrations were decreased thereby indicating cells were protected against heat and osmotic stresses (page 4, column 2, para 2 and page 5, column 1, para 1). As such, Examiner is interpreting the teaching of said fruit pulp that contains leutin as ‘protecting’ yeast cells against heat and osmotic stress as being the same as counteracting heat and osmotic stresses as both result in a decrease of said stresses, thereby demonstrating the impact of plant-based antioxidants on heat-stressed yeast.
Applicant contends that Lebaka notes that heat stress can dramatically change the production pattern of protein synthesis for yeast, but it does not provide any guidance for addressing or counteracting heat stress.
This argument is found to be not persuasive in view of the modified rejection set forth. Examiner contends that Lebaka teaches in medium supplemented with the fruit pulp of mango (Mangifera indica), banana (Musa paradisiaca), and sapota (Achras sapota) (page 5, column 2, paragraph 1), trehalose concentrations were decreased thereby indicating cells were protected against heat and osmotic stresses (page 4, column 2, para 2 and page 5, column 1, para 1). Examiner contends that said teaching provides ‘guidance’ for a POSA that increased trehalose levels are an indication of heat and osmotic stresses, as such is a good indicator of heat stress. Examiner contends that Lebaka further teaches that tropical fruit pulps mango (Mangifera indica), banana (Musa paradisiaca), and sapota (Achras sapota) fruit increased ethanol production during fermentation (page 5, column 2, paragraph 1) and decreased trehalose levels thereby indicating cells were protected against heat and osmotic stresses (page 4, column 2, para 2 and page 5, column 1, para 1). As such, Examiner contends that said teaching would provide ‘guidance’ for addressing or counteracting heat stress during fermentation.
Applicant contends that the testing in Lebaka was completed at a temperature of 30°C, well below the temperature needed to induce heat stress. Applicant contends thus, a POSA would not have considered Lebaka when looking for strategies to manage heat stress.
This argument is found to be not persuasive in view of the modified rejection set forth. Examiner contends that although Lebaka teaches 30C, since the intention is to increase ethanol production, it would be obvious to one of skill in the art to test different temperatures in spite of Lebaka teaching 30C because Lebaka does not specifically state that heat stress will not occur above 30 degrees.
Applicant contends that when the conversion factor is added to the Examiner's calculations, it becomes clear that the amount of lutein added to the fermentation process in Lebaka is well below the threshold of the claimed ranges. Applicant contends that because adding lutein at such a low level would not have affected the fermentation process, coupled with the fact that the yeast were not heat stressed in Lebaka, the claim limitations were not taught by the cited references, alone or in combination.
This argument is found to be not persuasive in view of the modified rejection set forth. Examiner contends that although the reference of Lebaka does not explicitly teach the limitations of claims 2, 24 (wherein the composition contains the at least one plant-based antioxidant in an amount ranging from 1 mg/L to 5000 mg/L (claim 2); wherein the composition contains the at least one plant-based antioxidant in an amount ranging from 1 mg/L to 2000 mg/L (claim 24)), MPEP 2144.05 states"[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) (MPEP 2144.05 IIA)." One of ordinary skill would desire to optimize the fermentation depending on the particular application. It would be routine for one to arrive at the amount of plant based antioxidant for the application they intend on using the fermentation method. Therefore, the above invention would have been prima facie obvious.
The rejection of claim 23 under 35 U.S.C. 103 as being unpatentable over Lebaka et al (2014, Available online 15 November 2014. Bioresources and Bioprocessing, 10.1186/s40643-014-0022-8, cited on PTO-892 filed 10/16/2023) {herein Lebaka} in view of Burphan et al (2018, Available online 30 August 2018. Scientific Reports, 10.1038/s41598-018-31558-4, cited on PTO-892 filed 10/16/2023) {herein Burphan}, as applied to claims 1-2, 4, 6-9, 20, 24-26, 28-29, and further in view of Martinez-Gomez et al. (2020, Available online 4 March 2020. Biomolecules, doi.org/10.3390/biom10030400, cited on PTO-892 filed 10/16/2023) {herein Martinez-Gomez} as evidenced by Gouado et al. (2007, Available online 18 July 2007, EJCN, doi.org/10.1038/sj.ejcn.1602841, cited on PTO-892 filed 10/16/2023) {herein Gouado}, Medicinenet (2022, What Is Horse Gram, and Is It Good for Your Health,? https://www.medicinenet.com/what_is_horse_gram_and_is_it_good_for_your_health/article.htm, examiner cited) {herein Medicinenet} and Crop Trust (2024, Finger millet, https://www.croptrust.org/pgrfa-hub/crops-countries-and-genebanks/crops/finger-millet/, cited on PTO-892 filed 3/13/2024) {herein Finger Millet} is maintained.
Claim 23 is drawn to the method of claim 20, wherein the grain is corn mash.
The teachings of Burphan and Lebaka as applied to claims 1-2, 4, 6-9, 20, 24-26, 28-29 are set forth in the 103 rejection above.
However, Burphan in view of Lebaka do not teach wherein the grain is corn mash (claim 23)
With respect to claim 23, Martinez teaches corn is an adjuvant for fermentation (page 1, paragraph 1).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to apply the teachings of Lebaka et al of a method of increasing ethanol production during fermentation by the addition of fruit pulp antioxidants (page 2, column 2, para 2), which are frequently attributed to antioxidant, metal ion-chelating, and/or free radical scavenging activity (page 4, column 2, paragraph 1) or combine the teachings of Burphan and Martinez because Martinez teaches corn is an adjuvant for fermentation (page 1, paragraph 1). Whereas, Burphan teaches a method wherein ethanol yield is increased by adding a synthetic antioxidant to a culture of yeast within media at a temperature of 40C (Figure 7 and page 8, para 6). Burphan further teaches, for heat stress, plates were incubated at 37 °C (page 2, para 3).
One of ordinary skill in the art would be motivated to either use the teachings of Lebaka et al. by itself or combine the teachings of Burphan and Martinez because Martinez provides the motivation for Lebaka to use corn in the fermentation process as Martinez teaches corn is a raw material chemical source for fermentation (page 1, para 1) and corn is readily utilized in the field for fermentation. One of ordinary skill in the art knowing the benefit of antioxidants both natural and synthetic based on the teachings of Lebaka, Burphan and Martinez would have a reasonable expectation of success that utilizing corn as an adjuvant in fermentation would result in an increase in ethanol product in the presence of an antioxidant since Martinez teaches corn as a raw material source of chemicals for fermentation (page 1, para 1). Furthermore, corn is readily available and has a long shelf-life, when stored appropriately, therefore its use as an energy source (source of sugar) would be cost effective.
One of skill in the art would have a reasonable expectation of success to make and use the claimed method for increasing ethanol yield with an antioxidant and corn because Lebaka provides the basic method of increasing ethanol yield utilizing a plant-based antioxidant and its uses and methods of making it. Reference of Burphan provides the teachings for a method of increasing ethanol yield during fermentation at 37C utilizing a synthetic antioxidant. Whereas, Martinez teaches corn is an adjuvant for fermentation (page 1, paragraph 1). Therefore there would be a reasonable expectation of success to arrive at the above invention. Therefore, the above invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
RESPONSE TO REMARKS: Beginning on p. 6 of Applicant’s remarks, Applicant in summary contends that neither Lebaka, Burphan, or Martinez-Gomez, taken alone or in combination, teach or suggest the presently claimed invention, the rejection should be withdrawn.
This argument is found to be not persuasive in view of the rejection set forth. Examiner contends that Martinez provides the motivation for Lebaka to use corn in the fermentation process as Martinez teaches corn is a raw material source of chemical for fermentation (page 1, para 1) and is readily utilized in the field for fermentation.
The rejection of claim 31 under 35 U.S.C. 103 as being unpatentable over Lebaka et al (2014, Available online 15 November 2014. Bioresources and Bioprocessing, 10.1186/s40643-014-0022-8, cited on PTO-892 filed 10/16/2023) {herein Lebaka} in view of Burphan et al (2018, Available online 30 August 2018. Scientific Reports, 10.1038/s41598-018-31558-4, cited on PTO-892 filed 10/16/2023) {herein Burphan}, and in further view of Martinez-Gomez et al. (2020, Available online 4 March 2020. Biomolecules, doi.org/10.3390/biom10030400, cited on PTO-892 filed 10/16/2023) {herein Martinez-Gomez} as evidenced by Gouado et al. (2007, Available online 18 July 2007, EJCN, doi.org/10.1038/sj.ejcn.1602841, cited on PTO-892 filed 10/16/2023) {herein Gouado}, Medicinenet (2022, What Is Horse Gram, and Is It Good for Your Health,? https://www.medicinenet.com/what_is_horse_gram_and_is_it_good_for_your_health/article.htm, examiner cited) {herein Medicinenet} and Crop Trust (2024, Finger millet, https://www.croptrust.org/pgrfa-hub/crops-countries-and-genebanks/crops/finger-millet/, cited on PTO-892 filed 3/13/2024) {herein Finger Millet} is maintained.
Claim 31 is drawn to a method of increasing ethanol yield comprising adding a composition that contains at least one plant-based antioxidant in an amount ranging from 1 mg/L to 5000 mg/L and effective to increase ethanol yield to a fermentation vessel that contains a mixture of corn mash, water, and yeast undergoing heat stress at temperatures of at least 37°C or above as compared with an ethanol yield to a fermentation vessel without adding an antioxidant, wherein the composition is in an amount enough to counteract heat stress of the yeast at temperatures of at least 37°C or above, wherein the at least one plant-based antioxidant is selected from the group consisting of lutein, spearmint extract. green tea extract, rosemary extract, acerola extract, tocopherols. or blends thereof.
With respect to claim 31, Lebaka teaches a method of increasing ethanol production by the addition of fruit pulp antioxidants from mango (Mangifera indica), banana (Musa paradisiaca), and sapota (Achras sapota) (page 5, column 2, paragraph 1), which are frequently attributed to antioxidant, metal ion-chelating, and/or free radical scavenging activity (page 4, column 2, paragraph 1). Examiner is interpreting the composition to be the fruit pulp antioxidants from mango (Mangifera indica), banana (Musa paradisiaca), and sapota (Achras sapota) (page 5, column 2, paragraph 1). Lebaka further teaches fermentation was conducted in an Erlenmeyer flasks (page 2, column 2, paragraph 2). Examiner is interpreting the fermentation vessel to be the Erlenmeyer flask since said fermentation is taking place within the vessel. Tropical fruit pulps from mango (Mangifera indica), banana (Musa paradisiaca), and sapota (Achras sapota) show a significant effect in enhancing the ethanol production during the fermentation process (page 2, column 1, paragraph 2). Evidentiary reference of Gouado et al. is cited to demonstrate that mangoes contain the antioxidant lutein (page 1184, columns 1 and 2, paragraph 2). Lebaka further teaches that In the presence of 4% fruit pulp (abstract and page 2, column 2, para 2), ethanol production went from 2.5 ± 0.3 (control) to 4.5 ± 0.5 (mango fruit pulp) (page 3, table 1). Although the reference of Lebaka does not explicitly teach the limitations of claim 31 (at least one plant-based antioxidant in an amount ranging from 1 mg/L to 5000 mg/L), MPEP 2144.05 states"[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) (MPEP 2144.05 IIA)." One of ordinary skill would desire to optimize the fermentation depending on the particular application. It would be routine for one to arrive at the amount of plant based antioxidant for the application they intend on using the fermentation method. Therefore, the above invention would have been prima facie obvious. Lebaka further teaches during heat and osmotic stress, yeast cells release trehalose which serves to protect cells against said stresses during cellular growth (page 4, column 2, para 2). In addition, Lebaka teaches medium supplemented with the fruit pulp, trehalose concentrations were decreased thereby indicating cells were protected against heat and osmotic stresses (page 4, column 2, para 2 and page 5, column 1, para 1). As such, Examiner is interpreting the teaching of Lebaka to be that the fruit pulp, which contains lutein, protects the cells from heat and osmotic stresses. The supplemented batch fermentation experiments yielded only 9% (w/v) of alcohol in 300 g/L, wherein a good amount of residual sugars was left and incompletely fermented by S. cerevisiae. Examiner is interpreting the fermentation batch without fruit to be indicative of the absence of an antioxidant since Lebaka teaches the antioxidative properties of said fruit (abstract). However, the 4% fruit pulp supplementation led to a significant increase in ethanol production, and the final concentration reached 14.5% (w/v) in a shorter time (72 h) with a productivity of 2.1 g/h/L (page 3, column 2, paragraph 1). Lebaka further teaches yeast strain S. cerevisiae 3215 was used in all the experiments (page 2, column 1, paragraph 3). The yeast culture was maintained on a defined medium and inoculated into liquid medium (page 2, column 1, paragraph 3). Examiner is interpreting the liquid medium to comprise water.
However, Lebaka does not teach the method of claim 31 of a fermentation vessel that contains a mixture of corn mash and temperatures of at least 37°C or above (claim 31)
With respect to claim 31, Martinez teaches corn is an adjuvant for fermentation (page 1, paragraph 1).
However, Martinez does not teach temperatures of at least 37°C or above (claim 31)
With respect to claim 31, Burphan teaches a method wherein ethanol yield is increased by adding an antioxidant to a culture of yeast within media at a temperature of 40C (Figure 7 and page 8, para 6). For heat stress, plates were incubated at 37 °C.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to apply the teachings of Lebaka et al of a method of increasing ethanol production during fermentation by the addition of fruit pulp antioxidants (page 2, column 2, para 2), which are frequently attributed to antioxidant, metal ion-chelating, and/or free radical scavenging activity (page 4, column 2, paragraph 1) or combine the teachings of Burphan and Martinez because Martinez teaches corn is an adjuvant for fermentation (page 1, paragraph 1). Whereas, Burphan teaches a method wherein ethanol yield is increased by adding an antioxidant to a culture of yeast within media at a temperature of 40C (Figure 7 and page 8, para 6). For heat stress, plates were incubated at 37 °C (page 2, para 3).
One of ordinary skill in the art would be motivated to either use the teachings of Lebaka et al. by itself or combine the teachings of Burphan and Martinez because Martinez provides the motivation for Lebaka to use corn in the fermentation process as Martinez teaches corn is a raw material source of chemical for fermentation (page 1, para 1). Whereas Burphan provides the motivation for Lebaka to perform the fermentation at 37C as Burphan teaches said temperature induces heat stress (page 2, para 3). Lebaka would desire to conduct the fermentation at 37C as it would provide a better indication of the role of plant antioxidants from tropical fruit pulps mango (Mangifera indica), banana (Musa paradisiaca), and sapota (Achras sapota) and would allow Lebaka to better characterize the plant antioxidants roles in reducing heat stress during fermentation. Furthermore, Lebaka would be motivated to add a synthetic antioxidant to the fermentation as Burphan teaches ethanol yield is increased by adding 30mM of synthetic antioxidant NAC to a culture of yeast during fermentation (Figure 7 and page 8, para 6). As such, one of ordinary skill in the art would expect that adding the synthetic antioxidant taught by Burphan and the plant antioxidant taught by Lebaka would result in fermentation wherein significantly more ethanol is produced by yeast. One of ordinary skill in the art knowing the benefit of antioxidants both natural and synthetic based on the teachings of Lebaka, Burphan and Martinez would have a reasonable expectation of success that utilizing the synthetic antioxidant taught by Burphan at 37C would enhanced the fermentation process as Burphan teaches fermentation at high temperatures (Burphan: abstract), of which Burphan is defining high temperature as being a temperature of 37C or 40C by yeast (Burphan: Figure 7 and page 8, para 6). In addition, utilizing a synthetic antioxidant would reduce the costs associated with fermentation as synthetic antioxidants typically have longer shelf-lives, thereby resulting in a more cost effective fermentation process and is a good source of sugar as it is a complex carbohydrate.
One of skill in the art would have a reasonable expectation of success to make and use the claimed method for increasing ethanol yield at 37C with an antioxidant and corn because Lebaka provides the basic method of increasing ethanol yield utilizing a plant-based antioxidant and its uses and methods of making it. Reference of Burphan provides the teachings for a method of increasing ethanol yield during fermentation at 37C utilizing a synthetic antioxidant. Whereas, Martinez teaches corn is an adjuvant for fermentation (page 1, paragraph 1). Therefore there would be a reasonable expectation of success to arrive at the above invention. Therefore, the above invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
RESPONSE TO REMARKS: Beginning on p. 6 of Applicant’s remarks, Applicant in summary contends that neither Lebaka, Burphan, or Martinez-Gomez, taken alone or in combination, teach or suggest the presently claimed invention, the rejection should be withdrawn.
This argument is found to be not persuasive in view of the modified rejection set forth. Examiner contends that Martinez provides the motivation for Lebaka to use corn in the fermentation process as Martinez teaches corn is a raw material source of chemical for fermentation (page 1, para 1). Whereas Burphan provides the motivation for Lebaka to perform the fermentation at 37C as Burphan teaches said temperature induces heat stress (page 2, para 3). Lebaka would desire to conduct the fermentation at 37C as it would provide a better indication of the role of plant antioxidants from tropical fruit pulps mango (Mangifera indica), banana (Musa paradisiaca), and sapota (Achras sapota) and would allow Lebaka to better characterize the plant antioxidant roles in reducing heat stress during fermentation. Furthermore, Lebaka would be motivated to add a synthetic antioxidant to the fermentation as Burphan teaches ethanol yield is increased by adding 30mM of synthetic antioxidant NAC to a culture of yeast (Figure 7 and page 8, para 6).
New 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.
Claims 5, 27 are newly rejected under 35 U.S.C. 103 as being unpatentable over Lebaka et al (2014, Available online 15 November 2014. Bioresources and Bioprocessing, 10.1186/s40643-014-0022-8, cited on PTO-892 filed 10/16/2023) {herein Lebaka} in