DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt of the Request for Continued Examination (RCE under 37 CFR 1.114), the Response, and Amendment filed 04/28/2026 is acknowledged.
Applicant has overcome the following rejections by cancellation of the claims: the 35 U.S.C. §103 rejection of claim 46 over Fakhfakh, Namdar, Singer, and Çakaloğlu as evidenced by present specification has been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 41-45, 49-51, 68-71
Withdrawn claims: 49-51, 68-69, 71
Previously cancelled claims: 1-40, 47-48, 52-67, 72
Newly cancelled claims: 46
Amended claims: 41, 45
New claims: None
Claims currently under consideration: 41-45, 70
Currently rejected claims: 41-45, 70
Allowed claims: None
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/28/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 41-45 and 70 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 41 recites that pressing comprises “pressing a non-fruit tissue of a date palm offshoot against a filter to separate the oil from the solids” wherein “said pressing against said filter breaks down structures of said tissue and releases a juice” and wherein “said pressing forces said juice […] through said filter”. However, the present specification states “the term "pressing" encompasses any application of pressure to a plant tissue15 which filitates release of oil from the tissue; including e.g., squeezing, grinding, cutting,
reaming, and centrifugation. In exemplary embodiments, pressing is effected by a rotating screw-like pole. Facilitating release of oil may optionally comprise breaking down the structure of the plant tissue (e.g., breaking cell walls to release cellular contents and/or the connections between cells), for example, by squeezing, grinding, reaming and/or cutting; and/or separating oil from plant solids (and optionally also aqueous liquids), for example, by forcing the oil (e.g., using one or more rotating screws, centrifugation, and/or hydraulic pressure) through a filter which blocks solids (e.g., fiber, screen and/or perforated barrier) and/or by separating oil from plant solids (and optionally also aqueous liquid) according to specific gravity (e.g., by centrifugation) at page 8, lines 14-24. This disclosure mentions pressing comprising any application of pressure to plant tissue to facilitate the release of oil; and mentions a filter in relation to the separation of liquids from solid material. This disclosure does not mention pressing against a filter to break down structures of the plant tissue or to release juice from the tissue. The disclosure at page 9 in lines 20-25 of the present specification only mentions a filter in relation to an apparatus comprising a filter wherein the filter blocks solids from leaving through small openings. As such, neither the present specification nor originally-filed claims disclose “pressing a non-fruit tissue of a date palm offshoot against a filter to separate the oil from the solids” wherein “said pressing against said filter breaks down structures of said tissue and releases a juice” and wherein “said pressing forces said juice […] through said filter”. Therefore, claim 41 recites new matter.
Claim 45 recites that the plant tissue, juice and oil are maintained at a temperature of less than 40°C. Prior to the present amendment of claim 45, claim 45 stated that pressing comprises cold pressing. The present specification at page 9, lines 1-2 states that “ “cold pressing” refers to pressing wherein the plant tissue is at a temperature of less than 40 °C for the duration of the pressing process”. Neither the present specification nor claims as originally filed mentions maintaining the juice and oil at a temperature of less than 40°C. Therefore, this limitation presents new matter.
Claims 42-44 and 70 are rejected by reason of dependency from claim 41.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 41-45 and 70 are rejected under 35 U.S.C. 103 as being unpatentable over Fakhfakh (Fakhfakh et al., “Chapter 7 Different Extraction Methods, Physical Properties and Chemical Composition of Date Seed Oil”, 2019, Sustainable Agriculture Reviews 34, pages 125-153; previously cited) in view of Namdar (Namdar et al., “The Social and Economic Complexity of Ancient Jerusalem as Seen Through Choices in Lighting Oils”, 2018, Archaeometry, 60(3), pages 571-593; IDS citation), Çakaloğlu (Çakaloğlu et al., “Cold press in oil. A review”, 2018, Ukrainian Food Journal, vol. 7, issue 4, pages 640-654; previously cited), and Singer (Singer et al., “Abiotic factors influence plant storage lipid accumulation and composition”, 2016, Plant Science, 243, pages 1-9; previously cited) as evidenced by Anderson (“Screw Press”, 2025, Anderson Process, https://www.andersonprocess.com/products/general-processequipment/screw-press/; previously cited) and admitted prior art filed 03/01/2023.
Regarding claim 41, Fakhfakh teaches a method of preparing a composition comprising a vegetable oil containing fatty acids from the date palm Phoenix dactylifera (page 126, 2nd paragraph under “Introduction” – page 127, 2nd paragraph; pages 127-128, section 7.2.1; page 141, 1st paragraph of section 7.3.4). Fakhfakh discloses that a promising alternative in the production of vegetable oil is extracting the oil from the agricultural waste of the date palm; and exemplifies date palm seeds as being a type of agricultural waste (page 127, 1st paragraph). Fakhfakh discloses that the method comprises cold pressing the agricultural wastes using mechanical methods such as expelling or pressing (pages 127-128, section 7.2.1). It is known in the art that expellers function by squeezing material (e.g., oilseeds) under high pressure by turning a screw to release liquid from the material, wherein the liquid subsequently flows through a filter (corresponding to screen or filter media) that surrounds the screw in the expeller as evidenced by Anderson (3rd paragraph).
As explained in the previous paragraph, Fakhfakh discloses that the plant material is pressed using a screw to break down structures of the plant material and release juice prior to filtration of the juice instead of disclosing that the act of pressing against a filter performs the steps of pressing and filtration simultaneously to break down structures of the plant tissue, release juice, and separate liquids from solids. However, performing pressing and filtration simultaneously as claimed versus performing such steps separately as recited in the prior art would be obvious as the difference between these steps amounts to making the steps integral or separable. Making integral/separable is deemed obvious, particularly in light of there being no evidence provided by Applicant that such a difference has any effect on achieving a juice comprising oil and polysaccharides. MPEP 2144.04.V. B-C. Also, mechanical cold pressing with an expeller is considered to release any liquids in the plant material including oils, water, and compounds dissolved in the oil and the water, so that expeller pressing disclosed in Fakhfakh is considered to produce a juice comprising oil and water-soluble polysaccharides. Therefore, Fakhfakh is considered to render the pressing against a filter as recited in lines 3-7 of present claim 41 obvious.
Furthermore, the method of Fakhfakh does not require solvent extraction (page 127, 2nd paragraph under section 7.2.1) as presently claimed.
Fakhfakh does not teach that the method: (1) further comprises centrifuging the juice obtained from the pressing step to obtain a supernatant comprising oil and polysaccharides; and (2) produces an oil containing at least 50 wt.% of a combination of palmitic acid and linolelaidic acid and at least 10 wt.% linolelaidic acid based on the total combined weights of fatty acids in the oil.
However, Namdar teaches that a composition comprising vegetable oil (corresponding to date palm oil) and polysaccharides (corresponding to saccharides) may be obtained from a non-fruit tissue of a date palm offshoot (page 580, 2nd paragraph - page 581, 1st paragraph), which may be discarded as agricultural waste of date palm cultivation as evidenced by the present specification (page 1, lines 29-32). Namdar teaches a method of extracting the oil comprising cold pressing the date palm offshoot tissue (corresponding to crushing manually) to produce a juice followed by solvent extraction and then filtering the tissue to separate the oil from the solids (corresponding to separating extracted liquid from the mashed palm heart), to thereby obtain vegetable oil containing fatty acids (page 580, 2nd paragraph - page 581, 1st paragraph).
Namdar also discloses that the oil is used as a reference oil to identify date palm oil from excavated samples (page 574, paragraph 6) and discloses that such excavated oils are found to contain palmitic acid (page 576, Table 1; page 582, 1st-3rd paragraphs). Therefore, Namdar discloses that date palm oil contains palmitic acid. Oil from non-fruit tissue of date palm also contains linolelaidic acid in addition to being rich in palmitic acid as evidenced by the present specification (page 12, lines 13-15). Therefore, the date palm oil of Namdar may contain palmitic acid and linolelaidic acid.
It would have been obvious for a person of ordinary skill in the art prior to the effective filing date of the present invention to have modified the method of Fakhfakh to use a date palm offshoot as the raw material for oil extraction as taught by Namdar. Since Fakhfakh discloses that there are multiple sources of agricultural wastes besides date palm seeds (i.e., “agricultural wastes […] from which we can distinguish date palm seeds) (page 127, 1st paragraph), but only discloses one type of agricultural waste from date palm, a skilled practitioner would have been motivated to consult an additional reference such as Namdar in order to determine a suitable additional option for agricultural waste from date palm from which to extract oil, thereby rendering the claimed usage of non-fruit tissue of a date palm offshoot as a raw material to perform the method of present claim 41 obvious.
Furthermore, “Rationale may be in a reference, or reasoned from common knowledge in the art, scientific principles, art-recognized equivalents, or legal precedent”. MPEP §2144.I. Furthermore, “The expectation of some advantage is the strongest rationale for combining references”. “The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006)”. MPEP §2144.II. Fakhfakh discloses benefits to cold pressing plant material to obtain oil versus using solvent extraction to obtain oil as well as disclosing a worldwide interest in cold pressed oil (page 127, 1st paragraph under section 7.2.1). Namdar discloses another option for an agricultural waste of Fakhfakh while Fakhfakh discloses a cold pressing as a beneficial and desirable alternative to the solvent extraction in Fakhfakh. Therefore, Fakhfakh suggests a more desirable oil extraction process for date palm offshoots, thereby providing additional motivation to combine the teachings of Fakhfakh and Namdar.
Since Namdar as evidenced by the present specification also discloses that oil from date palm offshoot may contain palmitic acid and linolelaidic acid, the presence of palmitic and linolelaidic acid in the extracted oil is rendered obvious.
The combination of Fakhfakh and Namdar teaches that the method comprises cold pressing to extract oil which excludes the use of solvent extraction (Fakhfakh, pages 127-128, section 7.2.1). Namdar discloses that the oil extracted from date palm offshoots contains polysaccharides that may be removed through the use of solvent extraction (page 581, 1st paragraph). Although Namdar uses solvent extraction in its method of separating a polysaccharide-containing fraction from an oil-containing fraction, the prior art does not teach that the method further comprises separating a polysaccharide-containing fraction from an oil-containing fraction subsequent to the pressing wherein the method does not comprise solvent extraction.
The combination of Fakhfakh and Namdar does not teach that the method further comprises centrifuging the juice to obtain a supernatant comprising oil and polysaccharides; and that the method produces an oil containing at least 50 wt.% of a combination of palmitic acid and linolelaidic acid and at least 10 wt.% linolelaidic acid based on the total combined weights of fatty acids in the oil.
However, Çakaloğlu discloses that cold-pressed oils may be purified with washing with water, filtration, and centrifugation (page 641, 8th paragraph).
It would have been obvious for a person of ordinary skill in the art to have modified the method of modified Fakhfakh to separate a polysaccharide-containing fraction from an oil-containing fraction in the juice produced by pressing disclosed in modified Fakhfakh by centrifuging the juice as taught by Çakaloğlu. Since (1) Fakhfakh discloses that the oil is cold-pressed and that the cold-pressed oil is absent of solvents (pages 127-128, section 7.2.1) and (2) Namdar discloses separating polysaccharides from oil but only discloses a method of separating the polysaccharides using solvent extraction (page 581, 1st paragraph), a skilled practitioner would have been motivated to consult an additional reference such as Çakaloğlu in order to determine a suitable method of separating the polysaccharides from the oil without using solvent extraction, thereby rendering the claimed centrifugation step to obtain a supernatant comprising oil and polysaccharides obvious.
The combination of Fakhfakh, Namdar, and Çakaloğlu does not teach that the method produces an oil containing at least 50 wt.% of a combination of palmitic acid and linolelaidic acid and at least 10 wt.% linolelaidic acid based on the total combined weights of fatty acids in the oil.
However, Singer teaches that plant lipid biosynthesis is largely influenced by multiple environmental factors such as temperature, drought, light availability, and soil nutrients of the area in which the plant is grown (abstract). Since plant lipid biosynthesis determines what oils are stored in the plant, the lipid composition of oil extracted from the plant is influenced by the same multiple environmental factors. Singer also teaches that plant lipids have various uses such as vegetable oil in food applications, renewable feedstocks, and industrial chemicals (page 1, 1st-2nd columns).
As the lipidomic profile (i.e., amounts of linolelaidic acid and palmitic acid) is a variable that can be modified, among others, by adjusting multiple environmental factors such as temperature, drought, light availability, and soil nutrients of the area in which the plant is grown, the relative amount of linolelaidic acid and the combined relative amount of palmitic acid and linolelaidic acid would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed relative amount of linolelaidic acid and the combined relative amount of palmitic acid and linolelaidic acid cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the environment and the environmental factors in which the date palm is grown in order to obtain the desired relative amount of linolelaidic acid and the combined relative amount of palmitic acid and linolelaidic acid to achieve the desired effect in the product (e.g., food, feedstock, industrial chemicals) in which the oil is used as taught by Singer (abstract; page 1, 1st-2nd columns) (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). MPEP § 2144.05.II.
Regarding claim 42, Fakhfakh teaches the invention as described above in claim 41, including the non-fruit tissue is an agricultural waste material (page 127, 1st paragraph). Although the prior art discloses this feature, this feature does not impose any particular structure to the claimed non-fruit tissue or any manipulative difference in the claimed method as it merely speaks to the intended use of the non-fruit tissue. Statements in the preamble reciting the purpose or intended use of the claimed invention which do not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art apparatus (or process). See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02, §2112.02 and 2114-2115.
Regarding claims 43 and 44, modified Fakhfakh teaches the invention as described above in claim 41, including at least a portion of the non-fruit tissue is a meristematic tissue (corresponding to palm heart); and that the method further comprises removal of non-meristematic tissue prior to the processing (corresponding to peeling off palm fronds) (Namdar, page 580, 2nd paragraph - page 581, 1st paragraph).
Regarding claim 45, Fakhfakh teaches the invention as described above in claim 41, including the pressing comprises maintaining the temperature of the plant tissue, juice, and oil at a temperature at or below 50°C (pages 127-128, section 7.2.1). This temperature range of at or below 50°C encompasses the claimed temperature range. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.I.
Regarding claim 70, Fakhfakh teaches the invention as described above in claim 41, including the date palm is Phoenix dactylifera (page 126, 2nd paragraph under “Introduction” – page 127, 2nd paragraph).
Response to Arguments
Applicant arguments regarding Examiner Interview Summary: Applicant argued that Applicant does not have a burden to prove “how active pressing changes the composition of the oil in the offshoot paste” as the present specification provides an enabling disclosure with quantitative results showing that the fatty acid profile of the oil obtained from a date palm offshoot by the presently claimed method is distinct from the fatty acid profile of oil obtained when the same date palm tissue is subjected to different processing and organic solvent extraction (Applicant’s Remarks, pages 5-6, section labeled with heading beginning “First Paragraph”).
However, whenever Applicant is asserting a specific outcome to occur (i.e., active pressing changes the composition of the oil of the offshoot paste), Applicant is responsible for providing evidence that the asserted specific outcome occurs. Applicant’s arguments cannot take the place of evidence. MPEP §716.01(c).I-II. As described above in the 35 U.S.C. §112(a) rejection, the present specification does not disclose pressing non-fruit tissue of a date palm offshoot against a filter to physically break down structures and release juice that contains oil and polysaccharides. Therefore, the asserted “active pressing” by pressing against a filter is not demonstrated by the Applicant, let alone any results stemming from the asserted pressing.
Furthermore, the fatty acid profiles shown in Table 1 of the present specification are from date palm heart extracted with solvent (i.e., water, oil) whereas the method of claim 41 uses date palm offshoot and no solvent. Therefore, the method used in Table 1 and the fatty acid profiles resulting from such method are moot in relation to the presently claimed method. The fatty acid profile shown in Table 4 of the present specification for the cold-pressed date palm tree is obtained from fruit of palm trees as stated in page 28, lines 7-9 of the present specification. Therefore, the method used in Table 4 and the fatty acid profiles resulting from such method are moot in relation to the presently claimed method.
Applicant then argued that the claims do not recite separating polysaccharides from oil in the juice from the date palm offshoot. Applicant argued that Example 1 of the present specification recites using solvent extraction to separate polysaccharides from oil of the juice, followed by recovery of the oil fraction, evaporation of the solvent, and chemical analysis of the oil. Applicant argued that the present specification discloses embodiments which do not use solvent extraction (Applicant’s Remarks, pages 6-7, section labeled with heading beginning “Second Paragraph”).
The Examiner recognizes that methods of the present specification may not require solvent extraction. That is why claim 41 was not rejected as reciting new matter regarding the method not comprising solvent extraction. However, the present specification does not actually show the lipid profile which Applicant asserts to be produced by the Cold Press Extraction method of Example 1 of the present specification, let alone show a lipid profile resulting from a method not comprising solvent extraction. The Cold Press Extraction method of Example 1 states that chemical analysis was performed after solvent extraction. Therefore, any chemical analysis performed on the juice obtained from this method would necessarily be the result of a method comprising solvent extraction. Claim 41 does not allow solvent extraction. Therefore, the results of the Cold Press Extraction method of Example 1 are moot even if such results were shown in the present specification.
Furthermore, Table 1 of the present specification are the results of a method comprising date palm heart extracted with solvent (i.e., water, oil); Tables 2 and 3 of the present specification are the results of a method comprising growth points of date palm wherein the actual method steps are unclear; Table 4 of the present specification are the results of a method comprising fruit of palm trees wherein the actual method steps are unclear; and Table 5 are the results of a method comprising date palm kernels (page 24, lines 25-26; page 27, lines 1-6; page 28, lines 7-9). Therefore, the Applicant has not demonstrated any lipid profile resulting from the presently claimed method (i.e., a method comprising date palm offshoots and no solvent extraction).
Claim Rejections – 35 U.S.C. §103 of claims 41-45 and 70 over Fakhfakh, Namdar, and Singer as evidenced by present specification: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant argued that the cited combination of prior art does not disclose the claimed composition comprising the recited amounts of palmitic acid and linolelaidic acid as recited in present claim 41. Applicant argued that Fakhfakh does not disclose obtaining oil from date palm offshoot or disclose a method yielding the presently claimed oil. Applicant argued Namdar fails to cure the deficiencies of FakhFakh as Namdar: (1) discloses a different tissue processing method (as previously discussed in the Declaration filed 11/29/2024); (2) discloses solvent extraction; (3) does not disclose the use of a filter; (4) disclose an oil having the presently claimed composition (Applicant’s Remarks, page 7, 1st paragraph under “Claim Rejections” – page 10, 4th paragraph).
In response to Applicant’s assertion that Fakhfakh does not disclose obtaining oil from date palm offshoot or disclose a method yielding the presently claimed oil, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The combination of cited prior art references renders the claimed lipid profile obvious.
In response to Applicant’s assertion that Namdar discloses a different tissue processing method since the presently claimed method comprises “pressing” wherein Namdar discloses “crushing”, page 8, lines 14-15 of the present specification states “the term “pressing” encompasses any application of pressure to a plant tissue which facilitates release of oil from the tissue, including e.g., squeezing, grinding, cutting, reaming, and centrifugation”. The phrase “Facilitates release of oil from the tissue” does not mean that the application of pressure, i.e., pressing, results in the immediate drippage of oil from the plant tissue as the term “facilitates” means “to make easier”. Namdar discloses crushing and grinding (page 581, 1st paragraph) which makes obtaining oil from the offshoot easier than obtaining oil from a whole intact offshoot. Therefore, the crushing and grinding of Namdar is considered to be “pressing”.
Furthermore, as recited above in the rejection of amended claim 41, Fakhfakh discloses that the method comprises cold pressing the agricultural wastes using mechanical methods such as expelling or pressing (pages 127-128, section 7.2.1). It is known in the art that expellers function by squeezing material (e.g., oilseeds) under high pressure by turning a screw to release liquid from the material, wherein the liquid subsequently flows through a filter (corresponding to screen or filter media) that surrounds the screw in the expeller as evidenced by Anderson (3rd paragraph). Therefore, Fakhfakh renders the claimed step of pressing obvious.
In response to Applicant’s assertion that Namdar discloses solvent extraction, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Fakhfakh discloses that the method does not comprise solvent extraction (page 127, 2nd paragraph under section 7.2.1), thereby rendering this feature of claim 41 obvious.
In response to Applicant’s assertion that Namdar does not disclose the use of a filter, as recited above in the rejection of amended claim 41, Fakhfakh discloses that the method comprises cold pressing the agricultural wastes using mechanical methods such as expelling or pressing (pages 127-128, section 7.2.1). It is known in the art that expellers function by squeezing material (e.g., oilseeds) under high pressure by turning a screw to release liquid from the material, wherein the liquid subsequently flows through a filter (corresponding to screen or filter media) that surrounds the screw in the expeller as evidenced by Anderson (3rd paragraph). Therefore, Fakhfakh renders the claimed filter obvious.
In response to Applicant’s assertion that Namdar does not disclose an oil having the presently claimed composition, as recited above in the rejection of amended claim 41, as the lipidomic profile (i.e., amounts of linolelaidic acid and palmitic acid) is a variable that can be modified, among others, by adjusting multiple environmental factors such as temperature, drought, light availability, and soil nutrients of the area in which the plant is grown, the relative amount of linolelaidic acid and the combined relative amount of palmitic acid and linolelaidic acid would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed relative amount of linolelaidic acid and the combined relative amount of palmitic acid and linolelaidic acid cannot be considered critical.
Applicant argued that disclosures in the present specification cannot be used to address the deficiencies of Namdar as proposed in paragraph 14 of the Final Office Action (Applicant’s Remarks, page 10, 5th paragraph).
However, the present specification at page 12, lines 13-15 states “linolelaidic acid is a fatty acid which is uncommon in nature, but is present in characteristically large proportions (largely in esterified form) in oil derived from non-fruit tissue of date palm, which is also rich in palmitic acid” wherein such statement is provided in the present specification as a statement of fact. Statements of fact and statements regarding the knowledge in the field of the art may be used as evidentiary references, including statements found in the specification (i.e., admitted prior art). Applicant has not provided any argument that the cited disclosure in the present specification is not a statement of fact or a statement regarding the knowledge in the field of the art. Therefore, the Examiner maintains that the disclosure may be used as an evidentiary reference and Applicant’s arguments regarding using statements in the present specification in prior art rejections are unpersuasive.
Applicant then argued that Singer does not cure the deficiencies of Namdar and Fakhfakh. Applicant argued that Singer is cited to erroneously assert that “Since plant lipid biosynthesis determines what oils are stored in the plant, the lipid composition of oil extracted from the plant are influenced by the same multiple environmental factors” in the Final Office Action (Applicant’s Remarks, page 11, 1st-2nd paragraphs).
However, in the new grounds of rejection necessitated by the amendment of the claims, the combination of Fakhfakh, Namdar, Çakaloğlu, and Singer as evidenced by Anderson and admitted prior art has been shown to render the present claims obvious.
In response to Applicant’s assertion that Singer is cited to erroneously assert that “Since plant lipid biosynthesis determines what oils are stored in the plant, the lipid composition of oil extracted from the plant are influenced by the same multiple environmental factors”, Singer states in the abstract “substantial differences in seed oil traits among years and field locations have indicated that plant lipid biosynthesis is also influenced to a large extent by multiple environmental factors such as temperature, drought, light availability and soil nutrients”. Applicant has not provided any reasoning as to why it would be incorrect to presume that differences in the lipid biosynthesis, and consequently the lipid profile resulting from the lipid biosynthesis, of parts of the plant other than the seed would also be affected by these same environmental factors. Therefore, Applicant’s argument regarding Singer is unsupported and thus unpersuasive.
Applicant then argued that there is no motivation to combine the teachings of Fakhfakh with the teachings of Namdar as Fakhfakh: (1) only discloses obtaining oil from date seeds and is silent on other types of agricultural waste; (2) discloses methods that do or do not include solvent extraction of seed material; and (3) does not express dissatisfaction with the lipid profiles of the disclosed oils. Applicant argued that the Final Office Action erroneously interprets the silence of Fakhfakh on other types of agricultural waste as a reason to combine Fakhfakh with Namdar. Applicant argued that a skilled practitioner could have consulted Namdar as a reference disclosing obtaining oil from Phoenix dactylifera plant material, but the Final Office Action does not establish why the practitioner would have selected Namdar; how the practitioner would have modified the method of Fakhfakh in view of Namdar; or what the expected outcome of the modified method would be. Applicant argued that none of the references indicate a desirability or possibility of an oil having the claimed fatty acid composition (Applicant’s Remarks, pages 11, 1st paragraph under heading beginning “Failure to establish” – page 12, 1st paragraph).
However, in response to Applicant’s assertions that Fakhfakh only discloses obtaining oil from date seeds and is silent on other types of agricultural waste and that the Final Office Action erroneously interprets the silence of Fakhfakh on other types of agricultural waste as a reason to combine Fakhfakh with Namdar, Fakhfakh states on page 127, 1st paragraph “One of the most promising alternatives is the use of agricultural wastes as a new source of edible oils from which we can distinguish date palm seeds”. This statement means that Fakhfakh recognizes that there are multiple types of agricultural wastes but focuses on date palm seeds. Fakhfakh does not disclose those other types of agricultural wastes. Therefore, it would be reasonable for a skilled practitioner to consult another reference, including the reference of Namdar to determine other types of agricultural wastes from which oil may be produced. “Rationale may be in a reference, or reasoned from common knowledge in the art, scientific principles, art-recognized equivalents, or legal precedent”. MPEP §2144.I.
Furthermore, “The expectation of some advantage is the strongest rationale for combining references”. “The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) ("Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves."). MPEP §2144.II. Fakhfakh discloses benefits to cold pressing plant material to obtain oil versus using solvent extraction to obtain oil as well as disclosing a worldwide interest in cold pressed oil (page 127, 1st paragraph under section 7.2.1). Namdar discloses another option for an agricultural waste of Fakhfakh while Fakhfakh discloses a cold pressing as a beneficial and desirable alternative to the solvent extraction in Fakhfakh. Therefore, Fakhfakh suggests a more desirable oil extraction process for date palm offshoots, thereby providing additional motivation to combine the teachings of Fakhfakh and Namdar.
For at least the same reasons discussed in the previous two paragraphs, the Final Office Action also establishes why the practitioner would have selected Namdar; and how the practitioner would have modified the method of Fakhfakh in view of Namdar.
In response to Applicant’s assertion that Fakhfakh discloses methods that do or do not include solvent extraction of seed material, "[t]he prior art' s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).” MPEP §2123.II. The fact that Fakhfakh discloses multiple types of oil extraction processes does not teach away from the use of the disclosed cold press process as Fakhfakh does not criticize, discredit, or otherwise discourage cold pressing in favor of any other oil extraction process.
In response to Applicant’s assertion that Fakhfakh does not express dissatisfaction with the lipid profiles of the disclosed oils, Fakhfakh does not disclose a lipid profile for date palm offshoot. Therefore, Fakhfakh does not express satisfaction or dissatisfaction with the lipid profile of date palm offshoot. Also, it is known in that art that oil from any source has a lipid profile. Therefore, it would be reasonable for a skilled practitioner to consult additional resources (e.g., Namdar) to determine a lipid profile for date palm offshoot.
In response to Applicant’s assertion that the Final Office Action does not disclose what the expected outcome of the modified method of Namdar and Fakhfakh would be, the present grounds of rejections rely on the combination of Fakhfakh, Namdar, Çakaloğlu, and Singer as evidenced by Anderson and admitted prior art. As described above in the rejection of amended claim 41, Fakhfakh and Çakaloğlu disclose the steps of pressing and centrifugation which are steps well-known and used in cold press oil extraction and in the separation of oils and polysaccharides from other constituents of a liquid obtained from cold press oil extraction. Therefore, it would be expected that the outcome of the modified method provided by the combination of prior art would result in producing a supernatant comprising oil and polysaccharides. Furthermore, oil necessarily has a lipid profile. Therefore, the oil produced by the modified method would have a lipid profile.
In response to Applicant’s assertion that none of the references indicate a desirability or possibility of an oil having the claimed fatty acid composition, as stated above, an oil would necessarily have a lipid profile. Namdar discloses that date palm oil contains palmitic acid (page 576, Table 1; page 582, 1st-3rd paragraphs). Oil from non-fruit tissue of date palm also contains linolelaidic acid in addition to being rich in palmitic acid as evidenced by the present specification (page 12, lines 13-15). Therefore, the date palm oil of the prior may contain amounts of palmitic acid and linolelaidic acid including in the amounts presently claimed. As such, the prior art discloses the possibility of an oil having the claimed fatty acid composition.
As for the desirability of the claimed fatty acid composition, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The prior art discloses the well-known steps of cold pressing and centrifugation of plant material and oil from the plant material. The lipid profile resulting from performing those well-known steps cannot be the basis for patentability.
Applicant then argued that the Final Office Action does not disclose the expected outcome of the proposed combination; and does not establish a definition of “success” or provide a reasonable expectation of success (Applicant’s Remarks, page 12, section labeled “Expectation of success”).
However, as discussed in the Examiner’s responses above, the combination of the cited prior art references discloses a method comprising pressing and centrifugation for obtaining oil and polysaccharides through cold pressing and centrifugation of date palm offshoots. The steps of pressing and centrifugation are well-known steps used in cold press oil extraction and in the separation of oils and polysaccharides from other constituents of a liquid obtained from cold press oil extraction. Therefore, the oil and polysaccharides obtained through the proposed method is the “reasonable expectation of success”.
Applicant then argued that the Final Office Action does not establish that the claimed lipid profile is a ‘result-effective variable’ that can be achieved by routine optimization. Applicant argued that the cited references do not disclose a method that yields a composition containing polysaccharides and oil wherein the oil contains linolelaidic acid as the references do not disclose that Phoenix dactylifera tissues contain linolelaidic acid (Applicant’s Remarks, page 12, 1st paragraph under heading beginning “Failure to establish” – page 13, 4th paragraph).
However, as discussed in the Examiner’s responses above, the present specification at page 12, lines 13-15 states “linolelaidic acid is a fatty acid which is uncommon in nature, but is present in characteristically large proportions (largely in esterified form) in oil derived from non-fruit tissue of date palm, which is also rich in palmitic acid” wherein such statement is provided in the present specification as a statement of fact. Statements of fact and statements regarding the knowledge in the field of the art may be used as evidentiary references, including statements found in the specification (i.e., admitted prior art). Applicant has not provided any argument that the cited disclosure in the present specification is not a statement of fact or a statement regarding the knowledge in the field of the art. Therefore, the Examiner maintains that the disclosure may be used as an evidentiary reference in the prior art rejections. As such, it is known in the art that Phoenix dactylifera tissues contain linolelaidic acid so it would be reasonable to expect that the oil obtained by the method disclosed by the prior art may contain linolelaidic acid.
Applicant then argued that there is no basis for asserting that the “lipodemic profile” of an unidentified object can be modified by adjusting multiple environmental factors so that the lipid profile cannot be considered critical. Applicant argued that the lipid profile recited in the present claims could not have been identified as a result-effective variable to optimized so that the Applicant has no burden to show unexpected result for this critical element (Applicant’s Remarks, page 13, 5th paragraph – page 14, 1st paragraph).
However, it is unclear as to why Applicant refers to the “lipodemic profile” of an “unidentified object” as Singer explicitly discusses environmental factors influencing the biosynthesis of oils in oilseeds. Oilseeds are grown from the oilseed plant. The plant is subjected to the environmental factors (e.g., the plant’s roots bring nutrients into the plant and thus into the oilseed and other structures of the plant). Therefore, the whole plant is affected by the environmental factors and these environmental factors determine lipid profile of the all parts of the plant. Therefore, the “unidentified object” asserted by the Applicant is all parts of the plant and any and all oils produced by the plant. Applicant has not provided any reasonable evidence to refute the teachings of Singer so that it is maintained that the lipid profile is a result-effective variable, particularly in light of the fact that Applicant has not provided any evidence showing that the presently claimed method produces an oil comprising the claimed profile.
In response to Applicant’s assertion that the Applicant has no burden to show unexpected results for this critical element, Applicant has not demonstrated criticality of any element of the claimed invention. The claimed invention is a method comprising pressing and centrifugation to obtain a composition comprising oil and polysaccharides. The prior art discloses that the steps of pressing and centrifugation are well-known steps used in cold press oil extraction and in the separation of oils and polysaccharides from other constituents of a liquid obtained from cold press oil extraction. Furthermore, the Applicant has not demonstrated that the presently claimed method produces an oil comprising the claimed profile as for reasons such as Table 1 of the present specification are the results of a method comprising date palm heart extracted with solvent (i.e., water, oil); Tables 2 and 3 of the present specification are the results of a method comprising growth points of date palm wherein the actual method steps are unclear; Table 4 of the present specification are the results of a method comprising fruit of palm trees wherein the actual method steps are unclear; and Table 5 are the results of a method comprising date palm kernels (page 24, lines 25-26; page 27, lines 1-6; page 28, lines 7-9).
Furthermore, the Examiner pointed out in paragraph 29 of the Final Office Action that there is a contradiction between the attempt to demonstrate criticality of the method in the Declaration filed 11/06/2025 and in the method used in Example 1 of the present specification in paragraph 29 of the Final Office Action (there is no mention of centrifugation in the method used in the Declaration, of polysaccharides in the extracted liquid of the Declaration, or of the lipid profile of the extract of the Declaration so that the method used in the Declaration is not considered to correspond to the presently claimed method but merely serves as Applicant’s attempt to demonstrate some level of criticality). However, Applicant has not reasonably addressed why the same process yielded different results. Due at least to the Applicant’s failure to address such contradiction and the Applicant’s failure to demonstrate that the presently claimed method produces an oil having the claimed lipid profile, Applicant as not identified criticality of any element of the presently claimed invention.
Since the prior art has been shown to render the present claims obvious and Applicant’s arguments have been shown to be unpersuasive, the rejections of the claims stand as written herein.
Claim Rejections – 35 U.S.C. §103 of claim 46 over Fakhfakh, Namdar, Singer, and Çakaloğlu as evidenced by present specification: Applicant canceled claim 46. Therefore, its rejection is moot.
Conclusion
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/KELLY P KERSHAW/Examiner, Art Unit 1791
