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 .
Priority
This application is a 371 of PCT/FI2021/050495 which claims the benefit of FI 20205682 as reflected in the filing receipt mailed on 18 April 2023.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Claim Objections
Claims 1, 5, 7, 8, 12, and 13 are objected to because of the following informalities:
Claim 1 step a. states “a. dissolving black liquor soap to alcohol”, which appears to include a typographical mistake. Examples 1 and 2 of the instant specification state “tall oil soap … was dissolved in MeOH”. Therefore, claim 1, step a. is best interpreted to state “a. dissolving black liquor soap in
Claim 1 step d. states “d. incubating under mixing to selectively esterify at least part of fatty acids”, which appears to include grammatical mistakes. Claim 1, step d. is best interpreted to state “d. incubating under mixing to at least partly selectively esterify
Claim 5 states “further comprising adding an acid form solid catalyst in connection of step c”, which appears to include grammatical mistakes. Claim 5 is best interpreted to state “further comprising adding an acid form solid catalyst in
Claim 7 states “further comprising adding NaI catalyst in connection of step c”, which appears to include grammatical mistakes. Claim 7 is best interpreted to state “further comprising adding NaI catalyst in
Claim 8 states “wherein the incubation at step d. is performed at temperature 20 to 80° C. for 2 to 48 hours”, which appears to include grammatical mistakes. Claim 8 is best interpreted to state “wherein the incubation in a temperature range of 20 to 80° C. for 2 to 48 hours”.
Claim 12 states “h3. evaporating said organic solvent to recover a resin acids fraction to provide the resin acids fraction”, which appears to include grammatical mistakes. Claim 12 is best interpreted to state “h3. evaporating said organic solvent to recover a resin acids fraction
Claims 12 and 13 state “comprises .
Appropriate correction is required.
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 1-17 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.
If the language of the claim is such that a person of ordinary skill in the art could
not interpret the metes and bounds of the claim so as to understand how to avoid
infringement, a rejection of the claim under 35 USC 112(b) is appropriate, see MPEP
2173.02.
Claim 1 step g. states “g. extracting a product with an organic solvent to collect the fatty acid esters to the separated organic solvent”, which lacks clarity and appears to include grammatical mistakes. The instant specification page 6, lines 29-30 state “[t]he fatty acid esters are recovered in step g. The recovery is carried out by extracting the product obtained in step f. with an organic solvent to collect the fatty acid esters to the separated organic solvent.” Therefore, claim 1, step g. is best interpreted to state “g. extracting a product from the fraction of step f. with an organic solvent to collect and separate the fatty acid esters into the
Claims 2-17 depend from base claim 1 and are included in this rejection as they
do not correct the informalities identified in base claim 1.
Claim 15 recites the limitation “during esterification process in step d”. There is insufficient antecedent basis for this limitation in the claim. Claim 15 is best interpreted to state “during the selective esterification
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6, 8, 10, 12-14, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Reaney (US20010049452) in view of Morgan (US20090056201).
Reaney teaches the limitations of claims 1, 3, 4, 8, 16, and 17 of methods for acidification of soapstock to quantitatively recover lipids, water-soluble organic compounds, and water-soluble inorganic compounds, such as acidulated fatty acids that are converted to fatty acid alkyl ester, see Abstract, Paras. [0011];[0015]-[0016], Claim 1, Figs. 1-2, where the soapstock is dissolved in alcohol, such as n-propanol, isopropanol, n-butanol, isobutanol, t-butanol, and an acid, such as nitric, acetic, hydrochloric, sulfuric, phosphoric, citric, and combinations thereof, is added to obtain a pH of between 0 and 5, followed by mixing under heating at 60° C and then settling for about 8 hours at room temperature in order to obtain a phase separation of an organic oil and alcohol phase and an aqueous phase, see Paras. [0015]-[0016];[0023]-[0024], Claims 1, 4, Fig. 2. The phases are separated to obtain a solid phase and two liquid phases, where volatiles, such as alcohol, are separated from the liquid phases by evaporation, see Paras. [0015];[0024], Fig. 1. As depicted in Fig. 2, fatty acyl ester rich oils are produced by extraction with an organic extraction solvent, such as the initial alcohol, see Fig. 2; Paras. [0011];[0016], meeting:
The method of producing and recovering fatty acid esters, most of step a., step b., step c., step d., step e., and step g. in instant application claim 1;
The specific acid in instant application claim 3 and in instant application claim 17;
Within the pH range in instant application claim 4;
Within the temperature and time range in instant application claim 8;
Within the pH range in instant application claim 16; and,
Reaney further teaches processing the aqueous phase to recover water soluble components, processing the lipid alcohol phase to recover acidulated soapstocks, enriched lipid fractions, or synthetic lipid compounds, see Claim 1, and the aqueous phase of the present invention may be efficiently deionized using conventional methods, see Para. [0015].
Reaney does not teach:
The claim 1 limitations of a method of producing and recovering resin acids from a soap produced within pulping of softwood, the processing of black liquor in step a., step f., and step h.; and,
The limitations of claims 2, 5, 6, 10, and 12-14.
Morgan relating to the liquid-liquid extraction of fatty and/or rosin acids produced from the Kraft process, where black liquor is separated from the desired cellulose fiber by filtration, then acidifying the black liquor with sulfuric acids causes the fatty and/or rosin acid soaps contained in black liquor to precipitate out as a separate, oily phase and this oily phase is then recovered by physical means, such as skimming, as “tall oil” from softwood, see Abstract, Paras. [0011];[0029];[0044]-[0057], Fig. 2. The fatty esters and/or rosin acids are separated from the black liquor tall oil through a cyclic liquid-liquid extraction process comprising a hydrolysis/saccharification operation containing a variety of process stages, such as an alkaline aqueous solution process, an alcohol process, such as ethanol, an acidification process with an acid, such as sulfuric acid or a solid acid catalyst, concentration, a hydrothermal process, etc., see Paras. [0056];[0058]-[0061];[0075];[0077];[0087];[0092]-[0104];[0118], Figs. 1-2. Following the hydrolysis/saccharification operation the effluent is subjected to acidification, then phase separation, where the heavy aqueous phase and the rag layer water emulsion containing rosin acid are directed back to the hydrolysis/saccharification operation, i.e., contacted with alcohol, alkaline, and/or acidified again, if the light phase contains the optimal concentration of rosin acids, alcohol extractant is then added to the light phase, followed by esterification and refining, such as by evaporative concentration, see Paras. [0078];[0092]-[0113];[0118], Figs. 1-2, Claims 1, 5, meeting:
The method of producing and recovering resin acids from a soap produced within pulping of softwood, the processing of black liquor, the remainder of step a., step f., and step h. in instant application claim 1;
The specific soap in instant application claim 2;
The solid acid catalyst in instant application claim 5;
The specific alcohol in instant application claim 10;
The solid acid catalysts is removed and recovered, see Paras. [0087]-[0089], meeting the recovering in instant application claim 6;
As depicted in Fig. 2, heavy phase 17, i.e., aqueous bottom phase, and rag phase (not depicted), i.e., water-in-oil emulsion middle phase, containing fatty and/or rosin material is recycled back through the process of hydrolysis/saccharification that includes acidification and alkali phase separation, then through additional acidification with an acid, such as sulfuric acid or a solid acid catalyst, then through liquid-liquid extraction with a solvent to obtain a light oil phase 18, i.e., top phase, rich in fatty and/or rosin acid that is separated with solvent extraction then the solvent is removed, such as through solvent evaporation, in order to obtain a rosin acid suitable for refining, see Fig. 2; Paras. [0078];[0107]-[0113], meeting:
The further steps h. in instant application claim 12;
The further steps h. in instant application claim 13; and,
The rosin acids are in the top/light fraction when they are removed, i.e., not in the precipitated ionized/salt form, meeting the further steps h. in instant application claim 14.
Base claim 1 of the instant application states “comprising the steps of: …”. MPEP 2111.03 I. states “[t]he transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps” and MPEP 2144.04 IV.C. states “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”. Therefore, the instantly claimed steps do not “exclude additional, unrecited elements or method steps” and the instant claims also do not exclude the “selection of any order of performing [the] process steps”.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified Reaney to rearrange the “selection of any order of performing [the] process steps”, see 2144.04 IV.C., and to further modify and process the aqueous phase and the lipid phase of Reaney by applying the liquid-liquid extraction of fatty and/or rosin acids produced from the Kraft process as taught by Morgan with a reasonable predictability of success for the purpose of reducing carbon emissions by efficiently extracting and producing valuable chemicals from renewable starting materials such as tall oil, see Morgan, Paras. [0002];[0022];[0030];[0056];[0073]-[0078].
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since both Reaney and Morgan teach the acidification of tall oil soapstock, recovery of acidulated fatty acids, and the further processing of the extracted phases, a person of ordinary skill in the art has good reason to recover additional valuable chemicals from tall oil, by pursuing the known options within their technical grasp for the benefit of reducing carbon emission by efficiently extracting and producing valuable chemicals from renewable starting materials such as tall oil, see Morgan, Paras. [0002];[0022];[0030];[0056];[0073]-[0078] and MPEP 2141.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Selection of a known material, such as acid catalysts, mineral acids, and extraction solvents, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as the acidulation pH, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.” In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929), see MPEP 2144.05.
Claims 7, 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Reaney (US20010049452) in view of Morgan (US20090056201), as applied to claims 1-6, 8, 10, 12-14, 16, and 17 in the 35 USC 103 rejection above, in further view of Turhanen et al. (“Green and Efficient Esterification Method Using Dried Dowex H+/NaI Approach”, 22 May 2019, ACS Omega, Vol. 4, Pgs. 8974-8984, hereinafter Turhanen).
Reaney teaches volatiles, such as alcohol, are separated from the liquid phases by evaporation, see Paras. [0015];[0024], Fig. 1, meeting most of the limitations in instant application claim 9.
Reaney does not teach:
The in vacuo limitation in instant application claim 9; and,
The limitations of instant application claims 7 and 11.
Turhanen relating to the acid catalytic extraction of unsaturated fatty acids and resin acids from tall oil, where the acid catalysts is NaI, the extraction solvent is EtOAc aka ethyl acetate evaporated in vacuo, see the entirety of Pg. 8979, Table 3, Fig. 3, Pg. 8983, Example of the Selective Esterification of Fatty Acids (49) over Resin Acids (50) and Their Isolation from the Reaction Mixture, meeting:
The NaI catalysts in instant application claim 7;
The in vacuo evaporation in instant application claim 9; and,
The specific solvent in instant application claim 11.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified Reaney to further modify and process the aqueous phase and the lipid phase of Reaney by applying the catalysts and solvent extraction of fatty and/or rosin acids produced from tall oil as taught by Turhanen with a reasonable predictability of success for the purpose of applying “green” chemistry to efficiently extract and produce valuable esterified chemicals and resin acids from renewable starting materials such as tall oil, see Turhanen, Pg. 8975, Col. 1, the entirety of Pg. 8979.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since both Reaney and Turhanen teach the acidification of tall oil soapstock, recovery of acidulated fatty acids, and the further processing of the extracted phases, a person of ordinary skill in the art has good reason to recover additional valuable chemicals from tall oil, by pursuing the known options within their technical grasp for the benefit of applying “green” chemistry to efficiently extract and produce valuable esterified chemicals and resin acids from renewable starting materials such as tall oil, see Turhanen, Pg. 8975, Col. 1, the entirety of Pg. 8979 and MPEP 2141.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Selection of a known material, such as acid catalysts and extraction solvents, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Reaney (US20010049452) in view of Morgan (US20090056201), as applied to claims 1-6, 8, 10, 12-14, 16, and 17 in the 35 USC 103 rejection above, in further view of Orte et al. (US20180155387, hereinafter Orte).
Reaney does not teach the limitations of instant application claim 15.
Orte relating to recovering sterols from tall oil pitch which contains lower alkyl fatty acid esters, free sterols, and at least some unreacted steryl esters, see Abstract. The method comprises subjecting the tall oil pitch to a transefterification reaction with a lower alcohol and catalysts, cooling the effluent, removing the alcohol by vacuum evaporation, removing fatty acid alcohol esters by evaporation, then the residue after the evaporation is sterol rich fraction 7, which contains unreacted steryl esters in addition to free sterols, see Paras. [0020]-[0024];[0087]-[0098], Figs. 1-3, meeting the sterol precipitation and separation in instant application claim 15.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Reaney to further modify and process the aqueous phase and/or the lipid phase of Reaney by applying the sterol extraction from tall oil as taught by Orte with a reasonable predictability of success for the purpose of efficiently recovering free sterols together with the production of lower alkyl fatty acid esters in a straightforward and sustainable manner from renewable starting materials such as tall oil, see Orte, Paras. [0002]-[0004];[0029].
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since both Reaney and Orte teach the recovery of fatty acids, and the further processing of the extracted phases, a person of ordinary skill in the art has good reason to recover additional valuable chemicals from tall oil, by pursuing the known options within their technical grasp for the benefit of efficiently recovering free sterols together with the production of lower alkyl fatty acid esters in a straightforward and sustainable manner from renewable starting materials such as tall oil, see Orte, Paras. [0002]-[0004];[0029] and MPEP 2141.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Conclusion
No claims are allowed.
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/YO/Examiner, Art Unit 1692
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691