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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-5, 7, 9-11, 18-20, 23-24) in the reply filed on 21 October 2025 is acknowledged.
Claims 13, 15-16 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 21 October 2025.
Newly added claims 50-56 read on the elected invention and have been examined.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1–5, 7, 10, 18–20, 24, 52, 54, and 56 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by GB 1,557,752 (hereafter GB’752).
GB’752 (claim 1; Figures 1–2; Table 1) discloses a method comprising conveying oleaginous material through an extractor in a conveyance direction while conveying an alcohol solvent counter-currently, thereby generating an extracted solids stream and a miscella stream. GB’752 further discloses cooling the miscella stream to form a solvent-rich phase and an oil-rich phase, separating the phases (e.g., by decanting), and recycling the solvent-rich phase back to the extractor.
With respect to claim 1, GB’752 discloses recycling the separated solvent-rich stream into the extractor at a location different from the location at which fresh solvent is introduced (see Fig. 1, fresh solvent inlets at points 2 and 14; recycle inlets at points 13 and 17). Thus, all limitations of claim 1 are disclosed.
With respect to claims 2-5, GB’752 expressly discloses multiple solvent entry points, including distinct fresh solvent and recycled solvent entry locations. Table 1 further shows that the recycled miscella stream has a composition substantially similar to the removed miscella stream, within the claimed tolerances.
With respect to the dependent claims:
Claim 7: solvent-to-solid ratio disclosed in Table 1 (page 3, lines 64–65);
Claim 10: phase separation by decanting disclosed in Figures 1 and 2;
Claim 18: ethanol solvent disclosed (claim 4);
Claim 19: ethanol/water weight percentages disclosed (page 2, lines 45–46);
Claim 20: drying/desolventizing extracted material disclosed (claim 1(g));
Claim 24: pretreatment/drying of material disclosed (page 2, lines 37–42);
Claim 52: soybean feedstock disclosed;
Claim 54: percolation extractor disclosed;
Claim 56: solvent balance ratios shown in Table 1.
Claim(s) 1–5, 7, 11, 18, and 20 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Grimsby (US Pat. 4,457,869, hereafter US’869).
US’869 (Figure 1; Example; column 5, lines 1–6; column 8, lines 4–9) discloses a multi-stage countercurrent extraction of soybeans using an alcohol solvent, forming an extracted material stream and a miscella stream. US’869 further discloses cooling the miscella stream to form a solvent-rich stream and an oil-rich stream, separating the streams, and recycling the solvent-rich stream to an upstream stage of the extractor.
Countercurrent operation as disclosed in US’869 inherently requires that fresh solvent be introduced downstream and recycled solvent be introduced upstream. Thus, the recycled solvent necessarily enters the extractor at a location different from that of the fresh solvent, as required by claim 1.
The remaining claims are anticipated as follows:
Claim 7: solvent-to-solid ratio disclosed (column 5, lines 1–6);
Claim 11: miscella cooling temperature disclosed (Example, lines 37–39);
Claim 18: ethanol disclosed as alcohol solvent (column 4, line 18);
Claim 20: drying/desolventizing zones disclosed (Figure 1, Zones II).
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Anderson (US Pub. 2018/296940, hereafter USPub’940) in view of GB 1,557,752 (hereafter GB’752) or Grimsby (US Pat. 4,457,869, hereafter US’869).
USPUB’940 discloses countercurrent soybean extraction in a percolation reactor with recycled solvent introduced upstream and fresh solvent introduced downstream (paragraphs [0026]–[0028]). USPUB’940 does not disclose cooling the recycled miscella prior to recycle.
GB’752 and US’869 teach cooling miscella to remove oil prior to recycle, thereby improving solvent extraction capacity. A person of ordinary skill in the art would have been motivated to apply the cooling and phase-separation teachings of GB’752 or US’869 to the recycled miscella of USPUB’940, with a reasonable expectation of success. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Accordingly, claims 1–5 would have been obvious.
Claim(s) 9 & 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over GB 1,557,752 (hereafter GB’752).
GB’752 discloses solvent recycle ratios and miscella cooling temperatures that differ only slightly from the ranges recited in claims 9 and 11. The selection of a particular recycle ratio or cooling temperature within or near a disclosed range constitutes routine optimization of result-effective variables. See In re Aller, 220 F.2d 454 (CCPA 1955); In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003). No unexpected results are disclosed.
Claim(s) 9, 10, 23, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grimsby (US Pat. 4,457,869, hereafter US’869).
US’869 discloses solvent recycle ratios and process conditions close to those recited in claim 9, rendering the claimed upper limit an obvious design choice. Although US’869 does not explicitly disclose decanting (claim 10), decanting is a well-known and commonly used phase separation technique, as evidenced by GB’752, and would have been an obvious choice.
US’869 further discloses pretreatment of soybeans by flaking (column 3, lines 18–21). Adjusting moisture content or drying prior to extraction (claims 23–24) constitutes a routine process optimization well within the ordinary skill in the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH D CARR whose telephone number is (571)272-0637. The examiner can normally be reached Monday-Friday (10:30 am -7:00 pm).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at 572-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEBORAH D CARR/Primary Examiner, Art Unit 1691