DETAILED ACTION
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.
Claims 1, 5-14, 17 and 20-23 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Independent claim 1 recites the limitation "the corn kernels" in line 6. There is insufficient antecedent basis for this limitation in the claim. Claims 5-14, 17 and 20-23 are rejected as being dependent on claim 1.
Claim 7 recites the limitation "said hydrolytic enzyme" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 1 does not include the term “hydrolytic enzyme”, but rather more specifically requires “at least one GH5 xylanase”.
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 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.
Claims 1, 5-14, 20, 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Gibbons (WO 2019023222) in view of Cao (WO 2018095408).
With respect to claims 1 and 5, Gibbons discloses a wet milling process in which corn kernels are soaked in water (“After cleaning the corn kernels, they are typically softened by soaking in water or in a dilute SO2 solution under controlled conditions of time and temperature”). The soaked kernels are then grinded to release germs from the kernels (“Then, the kernels are grinded to break down the pericarp”). Germs are then separated out (“the germ is separated from the rest of the kernel”) and subjected to enzymatic treatment with at least one GH5 xylanase (“Admixing corn kernels or a fraction of the corn kernels with an enzyme composition comprising an effective amount of one or more hydrolytic enzymes, wherein at least one of said hydrolytic enzymes is selected from the group consisting of a GH30 polypeptide, a GH5 polypeptide and a combination thereof” and “the GH5 polypeptide of the present invention has xylanase activity”). The germ is admixed with the GH5 xylanase during the separation step or after the separation step (“the corn kernels are preferably admixed with said one or more hydrolytic enzymes during steeping during grinding and/or during germ separation. In one embodiment, said corn kernels or a fraction of said corn kernels is admixed with said one or more hydrolytic enzymes, after the step of subjecting the corn kernel mass to a fiber washing procedure”). Gibbons, however, states that the enzymatic milling method is done to improve total starch and/or gluten yields, but does not specifically discuss an improved oil yield.
Cao discloses a method for improving oil yield from germ in a wet milling process. The method includes the steps of: a) soaking corn kernels in water to produce soaked kernels; b) grinding the soaked kernels; c) and treating the soaked kernels or a fraction of said kernels in the presence of an effective amount of polypeptide having xylanase activity. See the abstract and page 3, lines 1-6. Cao states that an improved total starch yield and an improved total gluten yield is obtain. The method also provides for an improved oil yield (“After the corn kernels are steeped they are cracked open to release the germ. The germ contains the valuable corn oil” and “wet milling can be used to produce, without limitation, corn steep liquor, corn gluten feed, germ, corn oil, corn gluten meal, corn starch, modified corn starch, syrups such as corn syrup, and corn ethanol”). Cao teaches that a similar method is used on palm fruit to obtain an improved oil yield.
Before the effective filing date of the claimed invention, it would have been obvious to ensure that the Gibbons method is used to obtain an increased oil yield. Cao is evidence that xylanase and xylanase enzyme mixtures will produce this effect – i.e., enhanced oil separation from the germ – when applied during a wet milling process. Cao demonstrates how the soaking, grinding, separation and hydrolytic steps disclosed by Gibbons will produce improved yields of each corn kernel product, including corn oil. Cao further demonstrates that the same milling process will also generate improved palm oil yields when it is applied to palm fruit.
With respect to claim 6, Gibbons and Cao disclose the combination as described above. Gibbons states that GH5 xylanase enzyme is allowed to react with the corn kernels for at least 45 minutes. See page 13.
With respect to claim 7, Gibbons and Cao disclose the combination as described above. Gibbons states on page 26 that the hydrolytic enzyme is present in an amount of approximately 0.0005 to 1.5 mg enzyme protein per g DS kernels. See pages 22 and 23.
With respect to claims 8 and 20, Gibbons and Cao disclose the combination as described above. Gibbons teaches that the hydrolytic enzymes may include cellulases, xylanases and arabinofuranosidases. Cao likewise teaches that the hydrolytic enzymes include GH62 arabinofuranosidase and xylanase.
With respect to claim 9-13, Gibbons and Cao disclose the combination as described above. Gibbons states that the hydrolytic enzymes also include cellobiohydrolase I and II, beta-glucosidase, beta-glucanases and cellobiosidase. See pages 6 and 23. Cao teaches that the hydrolytic enzymes may additionally include endoglucanse, a cellobiohydrolase I, a cellobiohydrolase II, a GH 61 polypeptide, a beta-glucanase and cellulase. See pages 3, 24 and 25.
With respect to claim 14, Gibbons and Cao disclose the combination as described above. Gibbons and Cao each state that the cellulases are derived from an organism such as Trichoderma reesei.
With respect to claim 22, Gibbons and Cao disclose the combination as described above. Gibbons and Cao each state that the germ may be dewatered and/or dried.
With respect to claim 23, Gibbons and Cao disclose the combination as described above. Gibbons and Cao each teach that oil is extracted from the germ.
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 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.
Claims 17 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Gibbons (WO 2019023222) in view of Cao (WO 2018095408) as applied to claims 1 and 9, and further in view of Aureli (WO 2019121930) and Simmons (US 20210392931).
Gibbons and Cao disclose the combination as described above, however do not expressly state that the xylanase is a GH5_21 xylanase or that the beta-glucanase is a GH5_15 beta-glucanase.
Aureli discloses a method for treating animal feed compositions derived from milled corn. Aureli states that the compositions are incubated with hydrolytic enzymes, including GH5_21 xylanases. See, for example, page 18.
Simmons discloses a method for milling and digesting a biomass composition. The composition is subjected to hydrolytic enzymes, including GH5 xylanases and beta-glucanases, including beta-glucanases belonging to the GH5 family. This is taught in paragraph [0443].
Before the effective filing date of the claimed invention, it would have been obvious to digest the Gibbons corn germ using enzymes from a variety of different families, including GH5_21 xylanases and GH5_15 beta-glucanases. As evidenced by Aureli and Simmons, those of ordinary skill would have recognized that the incorporation of different enzymes during incubation would improve digestion of the corn germ and oil yield. Gibbons and Cao already suggest utilizing different xylanases and beta-glucanases, as well as many other enzymes, and therefore the incorporation of other known xylanases and beta-glucanases into the enzymatic treatment would be understood to generate predictable and improved results.
Response to Arguments
In response to Applicant’s amendment filed 09 February 2026, the previous rejections have been withdrawn. However, upon further consideration, a new ground of rejection is made in view of the Gibbons reference.
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 NATHAN ANDREW BOWERS whose telephone number is (571)272-8613. The examiner can normally be reached M-F 7am-5pm.
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/NATHAN A BOWERS/Primary Examiner, Art Unit 1799
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