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 .
Claim status
The examiner acknowledged the amendment made to the claims on 11/30/2025.
Claims 1, 4-8, 10-12, 14-17, 23-24, 27-28 and 32 are pending in the application. Claim 1, 7 and 15-17 are currently amended. Claims 2-3 and 22 are newly cancelled. Claims 4-6, 8, 12, 14, 19, 23-24 and 27-28 are withdrawn without traverse in view of the restriction requirement (see “Election/Restriction” above). Claim 10-11 are previously presented. Claim 32 is newly presented. Claims 1, 7, 10-11, 15-17 and 32 are hereby examined on the merits.
Examiner Note
Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.
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 1, 7, 10-11, 15-17 and 32 are 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), regards as the invention.
Claim 1 recites in step (iv) at least partially removing water from said fermentation broth and/or from said clarified fermentation broth to form a concentrated clarified fermentation broth. It is unclear, in the case that the water is removed from said fermentation broth, how a concentrated “clarified” fermentation broth is formed, given that the fermentation broth of step (ii) is not clarified. Claims 7, 10-11, 15-17 and 32 ultimately depend from claim 1 and therefore necessarily incorporate the indefinite subject matter therein. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 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 1, 7, 10-11 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kang US Patent Application Publication No. 2013/0164801 A1 (hereinafter referred to as Kang) in view of Tong US Patent Application Publication No. 2018/0125092 A1 (hereinafter referred to as Tong).
Regarding claims 1, 7, 10 and 16, Kang teaches a method for manufacturing a butyrate product (0017; Fig. 2), comprising (i) providing a carbon-source-comprising fermentation feedstock (e.g., carbohydrate such as sugar cane juice; 0030; 0055), (ii) fermenting said feedstock with a Clostridia class bacterium which natively produces butyric acid (Fig. 2; 0031; 0055, which uses Clostridium tyrobutryricum as an example), while maintaining a pH of about 5 to 7 (0033, which teaches a pH of 5.5-6.5; 0055, which teaches using ammonia to adjust the pH to 6, and whereby a fermentation broth is formed comprising ammonium butyrate (Fig. 2; 0029; 0033), biomass and a fermentation byproduct (0055-0057, the fermentation produces both butyric acid and acetic acid, thus given that the ammonia is present in the broth, the acetic acid necessarily exists as ammonium acetate); (iii) separating said biomass from said fermentation broth to form separated biomass and a clarified fermentation broth (0056), wherein said clarified fermentation broth comprises said ammonium butyrate and said fermentation byproduct (0056); and (iv) adding to said clarified broth a mineral acid (e.g., an inorganic acid such as sulfuric acid, 0017; 0058; Fig. 2), whereby said butyrate product (e.g., butyric acid, 0017) and an ammonium salt (for example ammonium sulfate. Fig. 2; 0036) are formed in said clarified broth. Kang further teaches separating butyric acid in free acid form from said clarified broth by liquid-liquid extraction (e.g., solvent extraction, 0017; 0059-0060; Fig. 2-3). Kang further teaches providing a alkanol (e.g., C1-C4 alcohol), reacting the butyric acid in free acid form with the alkanol to form a butyrate ester (0017; Fig. 2; 0053), and separating the ester by distillation (0049; 0081).
Kang teaches a method of producing butyric acid comprising fermenting a feedstock that comprises carbohydrate with a Clostridia class bacterium such as Clostridium tyrobutryricum followed by clarification to form a fermentation broth, but is silent regarding at least partially removing water from the clarified fermentation broth to obtain a concentrated fermentation broth.
In the same field of endeavor, Tong teaches a method of preparing a feedstuff comprising butyric acid and/or butyrate, comprising fermenting a feedstock that comprises carbohydrate (e.g., light corn steepwater) with a Clostridia class bacterium such as Clostridium tyrobutryricum to form a fermentation broth, followed by subjecting the fermentation broth to evaporation-condensation so as to increase the concentration of butyric acid through the evaporation of water (0009; 0021; 0036; 0077-0079).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Kang by including the step of evaporation-condensation after fermentation but prior to extraction so as to increase the concentration of butyric acid. The action of evaporation-condensation reads on the limitation about at least removing water from the (clarified) fermentation broth.
Regarding claim 11, the language “said butyrate is a feed ingredient” is not considered to further limit the said butyrate. It is the examiner’s position that the intended use recited in the present claims do not result in a structural difference between the presently claimed butyrate (e.g., butyric acid) and the prior art butyric acid and further that the butyric acid of the prior art is capable of performing the intended uses. Given that Kang in view of Tong teaches the same method as the claimed method and the method of Kang in view of Tong results in a same product as the claimed invention (e.g., butyric acid)., it is clear that the butyric acid as disclosed by prior art would be capable of performing the intended use, i.e., as a feed ingredient.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kang in view of Tong as applied to claim 1 above, and further in view of Belsky US Patent No. 4,349,418 (hereinafter referred to as Belsky).
Regarding claim 15, Kang as recited above teaches a clarified and spent fermentation broth that comprises ammonium sulfate (0036; Fig. 2), but is silent regarding crystallizing ammonium sulfate from the broth.
Belsky teaches that a coal tar extraction process results in a by-product which is an aqueous stream that comprises ammonium sulfate, wherein crystallization can be applied to recover ammonium sulfate which is useful as a fertilizer (column 4, line 4-22).
Both Kang and Belsky are directed to extraction processes that result in a by-product which is an aqueous stream that comprises ammonium sulfate. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Kang by subjecting the clarified and spent fermentation broth comprising ammonium sulfate to a crystallization process for the benefit of recovering ammonium sulfate for fertilizer use.
Claims 17 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Kang in view of Tong as applied to claim 1 above, and further in view of Tyson US Patent No. 3,026,176 (hereinafter referred to as Tyson).
Regarding claim 17, Kang as recited above teaches a clarified and spent fermentation broth that comprises ammonium sulfate (0036; Fig. 2), but is silent regarding reacting ammonium sulfate with a calcium base to liberate ammonia and form a precipitate of calcium sulfate.
Tyson teaches a method of recovering a Friedel-Crafts catalyst, in which ammonium sulfate is produced as a by-product, and the ammonium sulfate can be reacted with calcium hydroxide so as to regenerate ammonia (column 2, line 20-49; column 3, line 26-29).
Both Kang and Belsky are directed to processes that result in a by-product that comprises ammonium sulfate. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Kang by subjecting the broth that comprises ammonium sulfate to a reaction with calcium hydroxide so as to regenerate ammonia. Reaction of ammonium sulfate with calcium hydroxide in an aqueous environment necessarily forms calcium sulfate as a precipitate, beside the liberation of ammonia (e.g., (NH4)2SO4 + Ca(OH)2 → CaSO4 + 2NH3 + 2H2O).
Regarding claim 32, Kang in view of Tong and Tyson as recited above teaches regenerating ammonia from the salt of ammonia sulfate, but is silent regarding reusing the regenerated ammonia for pH control in the fermentation. However, Kang teaches that the solvent recovered from esterification reaction of butyric acid with an alcohol can be recycled back to the column used separating butyric acid from the clarified broth by solvent extraction (Fig. 2-3; 0015), establishing the suitability of reusing an ingredient recovered from the downstream step in a upstream step. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have reused the regenerated ammonia for pH control in the fermentation step with reasonable expectation of success, for the reason that prior art has established that it is suitable to recycle an ingredient recovered from the downstream step back in a upstream step.
Claims 1, 7, 10-11 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Sevenier WO 2019/068642 A1 (cited in the IDS submitted 09/18/2024, hereinafter referred to as Sevenier) in view of Kang US Patent Application Publication No. 2013/0164801 A1 (hereinafter referred to as Kang) and Tong US Patent Application Publication No. 2018/0125092 A1 (hereinafter referred to as Tong).
Regarding claims 1, 7 and 16, Sevenier teaches a method for manufacturing a butyrate product (Abstract; page 3, line 24- page 4 line 15), comprising (i) providing a carbohydrate-comprising fermentation feedstock (page 11, line 26-32), (ii) fermenting said feedstock with a Clostridia class bacterium which natively produces butyric acid (page 7, line 28-35; page 10, line 32-33), while maintaining the pH at a sufficient level through using ammonia (page 16, line 1-3) and whereby necessarily a fermentation broth is formed comprising ammonium butyrate formed by the reaction of butyric acid with ammonia, biomass and a fermentation byproduct (page 27, Table 2); (iii) separating said biomass from said fermentation broth to form separated biomass and a clarified fermentation broth (page 13, line 25-30; page 27, Table 2), wherein said clarified fermentation broth necessarily comprises said ammonium butyrate and said fermentation byproduct; and (iv) adding to said clarified broth a mineral acid (e.g., sulfuric acid, phosphoric acid or nitric acid, page 14, line 4-7) such that the pH of the clarified broth is below the pKa of the butyric acid (page 13, line 31-33), whereby necessarily butyric acid and an ammonium salt are formed in said clarified broth (at a pH that is below the pKa of butyric acid, the butyrate will exist in free acid form, and a mineral acid such as sulfuric acid will react with ammonium cation present in the broth to form ammonium sulfate). Sevenier further teaches separating butyric acid from the clarified broth by distillation (page 16, line 12-17).
Sevenier teaches that during fermentation, the produced organic acids accumulate in the fermentation medium which will negatively affect the growth of the microorganism, thus ammonia is added to the fermentation medium to maintain the pH at a sufficient level to permit the continued growth of microorganism (the para. that bridges pages 16 and 17). Sevenier is silent regarding the pH during the fermentation.
In the same field of endeavor, Kang teaches a method of producing butyric acid through fermentation with a Clostridia class bacterium (0017; 0031). Kang further teaches that butyric acid in the broth produced from the butyric acid production strain is provided in the form of a butyrate salt coupled with a monovalent or divalent cation, rather than the form of a free acid. This is because the activity of microorganisms may be lowered when pH of the broth decreases due to accumulation of butyric acid in the broth, and thus a basic material is typically added to uniformly maintain pH of the broth. Accordingly, butyric acid of the broth is provided in the form of a butyrate salt coupled with a cation, for example, ammonia to form ammonium butyrate or calcium butyrate coupled with a monovalent or divalent cation, but is not limited thereto, and may further include any inorganic material typically used to adjust pH depending on predetermined purposes. The pH of the broth may be 4 to 6.5, and preferably 5.5 to 6.5 (0033; 0055).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Sevenier by adjusting the pH of the fermentation medium to 5.5-6.5 with reasonable expectation of success, for the reason that prior art has established that such a pH range is suitable in growing Clostridia class bacterium that could produce butyric acid.
Sevenier teaches a method of producing butyric acid comprising fermenting a feedstock that comprises carbohydrate with a Clostridia class bacterium followed by clarification to form a fermentation broth, but is silent regarding at least partially removing water from the clarified fermentation broth to obtain a concentrated fermentation broth.
In the same field of endeavor, Tong teaches a method of preparing a feedstuff comprising butyric acid and/or butyrate, comprising fermenting a feedstock that comprises carbohydrate (e.g., light corn steepwater) with a Clostridia class bacterium to form a fermentation broth, followed by subjecting the fermentation broth to evaporation-condensation so as to increase the concentration of butyric acid through the evaporation of water (0009; 0021; 0036; 0077-0079).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Sevenier by including the step of evaporation-condensation after fermentation but before distillation so as to increase the concentration of butyric acid. The action of evaporation condensation reads on the limitation about at least removing water from the (clarified) fermentation broth.
Regarding claim 10, Sevenier teaches acetic acid is formed (page 27, Table 2), which will necessarily react with ammonia present in the fermentation medium to form ammonium acetate.
Regarding claim 11, Sevenier teaches that butyric acid is a feed ingredient (page 1, line 22-26).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Sevenier in view of Kang, and Tong as applied to claim 1 above, and further in view of Belsky US Patent No. 4,349,418 (hereinafter referred to as Belsky).
Regarding claim 15, Sevenier as recited above teaches a fermentation broth that comprises ammonium sulfate, but is silent regarding crystallizing ammonium sulfate from the broth.
Belsky teaches that a coal tar extraction process results in a by-product which is an aqueous stream that comprises ammonium sulfate, wherein crystallization can be used to recover ammonium sulfate which is useful as a fertilizer (column 4, line 4-22).
Both Sevenier and Belsky are directed to an aqueous stream that comprises ammonium sulfate. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Sevenier by subjecting the fermentation broth comprising ammonium sulfate to a crystallization process for the benefit of recovering ammonium sulfate for fertilizer use.
Claim 17 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Sevenier in view of Kang and Tong as applied to claim 1 above, and further in view of Tyson US Patent No. 3,026,176 (hereinafter referred to as Tyson).
Regarding claim 17, Sevenier as recited above teaches a fermentation broth that comprises ammonium sulfate, but is silent regarding reacting ammonium sulfate with a calcium base to liberate ammonia and form a precipitate of calcium sulfate.
Tyson teaches a method of recovering a Friedel-Crafts catalyst, in which ammonium sulfate is produced as a by-product, and the ammonium sulfate can be reacted with calcium hydroxide so as to regenerate ammonia (column 2, line 20-49; column 3, line 26-29).
Both Sevenier and Belsky are directed to a process that results in a by-product that comprises ammonium sulfate. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Sevenier by subjecting the broth that comprises ammonium sulfate to a reaction with calcium hydroxide so as to regenerate ammonia. Reaction of ammonium sulfate with calcium hydroxide in an aqueous environment necessarily forms calcium sulfate as a precipitate, beside the liberation of ammonia (e.g., (NH4)2SO4 + Ca(OH)2 → CaSO4 + 2NH3 + 2H2O).
Regarding claim 32, Sevenier in view of Kang, Tong and Tyson as recited above teaches regenerating ammonia from the salt of ammonia sulfate, but is silent regarding reusing the regenerated ammonia for pH control in the fermentation. However, Kang teaches that the solvent recovered from esterification of butyric acid with an alcohol can be recycled back to the column used separating butyric acid from the clarified broth by solvent extraction (Fig. 2-3; 0015), establishing the suitability of reusing an ingredient recovered from the downstream step in a upstream step. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have reused the regenerated ammonia for pH control in the fermentation step with reasonable expectation of success, for the reason that prior art has established that it is suitable to recycle an ingredient recovered from the downstream step back in a upstream step.
Response to Arguments
Applicant's arguments filed 11/30/2025 have been fully considered and the examiner’s response is shown below:
Applicant argues on page 7 of the Remarks that claim 1 as currently amended requires that an alkanol is added to the clarified and concentrated broth, from which alkyl butyrate is formed, which is different from Kang which includes an additional step of extracting butyric acid.
The examiner disagrees. The exaction step is on the fermentation broth, which reasonably results in a fermentation broth, under a broadest reasonable interpretation. Further, the examiner notes that in the claim 1 as currently amened, the esterification is now in alternative form with the step of separating butyric acid from the broth, indicating the scope of the claim does not require the presence of reacting the butyric acid with alkanol.
Applicant argues on page 7 of the Remarks that example of Kang uses tributylamine, which is irrelevant with regard to the claimed invention since no mineral acid is used.
The argument is considered. Applicant is reminded that Kang incudes the embodiment teaching adding mineral acid. Further, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Applicant argues on pages 7-8 of the Remarks that Kang fails to teach the limitation that water is removed from the broth before adding acid.
The argument is considered but found moot over the new ground of rejection set forth in the instant office action.
Regarding Sevenier, applicant alleges on pages 8-9 of the Remarks that Sevenier describes distilling ammonium salt of the acid, rather the acid itself. The examiner notes that applicant cited Table 3 and Fig. 1-5 of the Sevener to support the allegation.
The allegation is considered but found unpersuasive. Applicant is invited to review more relevant portion of Sevenier in particular page 13 bottom para. and page 16, line 1-9, which clearly teaches that upon acidification the acid, ammonium organic acid and water are separated from the salt. Acidification of the broth with a mineral acid to lower the pH below of organic acid unlikely results in the ammonium salt of the acid. Additionally, the ammonium salt of the acid is not that volatile as applicant had thought. Further, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Further, it is puzzling why applicant has the opinion that distilling the acidified broth of the claimed invention will result in the distillation of free butyric acid, but distilling the acidified broth of Sevenier which has the same compositions as the claimed invention will result in the distillation of the ammonium salt of the acid. Applicant is invited to shed more light on that.
Applicant argues on page 9 of the Remarks that Sevenier does not teach an acid or evaporation of an acid.
The argument is considered but found not accurate. Sevenier teaches acid and evaporation of acid. See page 16 line 1-9.
The arguments on page 9 of the Remarks regarding Lin is considered but found moot, since Lin is not relied upon in instant office action.
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 CHANGQING LI whose telephone number is (571)272-2334. The examiner can normally be reached 9:00-5:00.
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/CHANGQING LI/Primary Examiner, Art Unit 1791