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 Response after Non-Final Office Action filed 11/06/2025 is acknowledged.
The status of the claims stands as follows:
Pending claims: 41-46, 49-51, 68-71
Withdrawn claims: 49-51, 68-69, 71
Previously cancelled claims: 1-40, 47-48, 52-67, 72 (*the claims do not mention claim 48 at all, but claim 48 is considered to be cancelled per page 5, paragraph 2 of Applicant’s remarks filed 06/16/2025.)
Newly cancelled claims: None
Amended claims: None
New claims: None
Claims currently under consideration: 41-46, 70
Currently rejected claims: 41-46, 70
Allowed claims: None
Claim Interpretation
Claim 41 recites that the method comprises “pressing a non-fruit tissue of a date palm offshoot against a filter to separate the oil from solids” and that “the method does not comprise solvent extraction”. These features are interpreted as meaning that the claimed method merely comprises a step of filtering the liquid portion from the solid portion, especially wherein the present specification states that the term “pressing encompasses any application of pressure to a plant tissue which facilitates release of oil from the tissue” on page 8, lines 14-15.
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 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) 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 specification filed 03/01/2023.
Regarding claim 41, Fakhfakh teaches a method of preparing 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). The method of Fakhfakh does not require solvent extraction. Fakhfakh does not teach that the method: (1) comprises pressing a non-fruit tissue of a date palm offshoot against a filter to separate the oil from solids; or (2) produces an oil containing at least 50 wt.% palmitic and linolelaidic acid based on the total combined weights of fatty acids.
However, Namdar teaches that vegetable oil (corresponding to date palm oil) may be obtained from a non-fruit tissue of a date palm offshoot (page 580, 2nd paragraph - page 581, 1st paragraph 1), 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) followed by solvent extraction and then filtering the tissue to separate the oil from the solids (corresponding to filtering the 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 to have modified the method of Fakhfakh to use a date palm offshoot as the raw material for oil extraction and to press the tissue of the offshoot against a filter to separate the oil from solids 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 pressing of a non-fruit tissue of a date palm offshoot against a filter to separate the oil from the solids obvious.
Furthermore, Fakhfakh discloses that cold-pressed oils are attracting more attention due to their nutritional and health benefits; and that cold-pressed oils are safer due to the exemption of any trace of extraction solvent (pages 127-128, section 7.2.1).
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 does not teach that the oil contains the claimed amount of palmitic acid and linolelaidic acid relative to the total fatty acid content.
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 are 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 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 combined 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 combined 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 type of oil extraction and the type of solvent in the oil extraction of Namdar to obtain the desired combined amount of palmitic acid and linolelaidic acid in order to obtain 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 cold pressing (pages 127-128, section 7.2.1).
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).
Claim 46 is 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) 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 specification filed 03/01/2023 as applied to claim 41 above, and further in view of Çakaloğlu (Çakaloğlu et al., “Cold press in oil. A review”, 2018, Ukrainian Food Journal, vol. 7, issue 4, pages 640-654; previously cited).
Regarding claim 46, Fakhfakh teaches the invention as described above in claim 41, including the method comprises cold pressing to extract oil which excludes the use of solvent extraction (pages 127-128, section 7.2.1). Namdar discloses that the oil extracted from date palm offshoots contains saccharides 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.
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 using washing with water, filtration, or centrifugation as taught by Çakaloğlu. Since Fakhfakh discloses that the oil is cold-pressed oil that is absent of solvents (pages 127-128, section 7.2.1) and Namdar 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 claim obvious.
Response to Amendment
The Declaration under 37 CFR 1.132 filed 11/06/2025 is insufficient to overcome the rejections of claims 41-46 and 70 based upon the combination of Fakhfakh, Namdar, and Singer or the combination of Fakhfakh, Namdar, Singer, and Çakaloğlu as set forth in the last Office action.
Applicant stated that Fakhfakh mentioned Gecgal in Fakhfakh’s disclosure so that the method of Gecgal is the method of Fakhfakh. Applicant subjected a date palm offshoot to the method of Gecgal/Fakhfakh and stated that the method of Gecgal/Fakhfakh did not yield any oil. For this reason, Applicant disagreed with the statement in the rejections regarding the method of Fakhfakh being employed on a date palm offshoot to arrive at the claimed oil. Applicant attached a copy of the paper of Gecgal to the end of the Declaration (Declaration, page 2, 1st paragraph – page 4, 2nd paragraph).
However, it is unclear as to how the Applicant arrived at the conclusion that the method of Fakhfakh is limited to the method of Gecgal since: (a) Fakhfakh mentions several different authors of papers concerning cold pressing (e.g., Codex Alimentarius Commission, Lutterodt et al., Parry et al., Siger et al.,); and (b) Fakhfakh explicitly discloses that cold pressed oils are obtained by a mechanical process without the application of heat above 50°C or the use of solvents, wherein the mechanical process may include pressing or expelling (page 127, 1st paragraph under section 7.2.1 – page 128, 1st paragraph). For these reasons, Fakhfakh does not limit its cold pressing process to merely the screw press process disclosed in Gecgal, but the method of Fakhfakh encompasses any cold pressing process which uses mechanical pressing without solvent and without a temperature above 50°C.
It is also unclear how the Applicant obtained oil by using a screw press (i.e., a device comprising a rotating screw-like pole and a nozzle diameter of 4 mm) without heat or prior crushing of the date palm offshoot in its “Cold press extraction” example (specification, page 23, lines 30-31), but Applicant did not obtain oil using this same method (i.e., the screw press method in the Declaration which purportedly mimics Gecgal) in the example of the Declaration. Applicant reportedly obtaining oil in its example in the present specification and reportedly not obtaining oil in the example of the Declaration while using the same method in both instances is contradictory.
It is also noted that the Applicant did not perform the method of Gecgal to the date palm offshoots as the Applicant pressed the offshoots at room temperature (i.e., about 21°C) while Gecgal used a temperature of 40-50°C (Gecgal, page 190, 1st column, paragraph under “Laboratory Cold-Pressing”). Therefore, it cannot be said that the method of Gecgal applied to date palm offshoot does not yield oil as asserted in the Declaration.
For at least these reasons, the Declaration is insufficient to overcome the rejections of claims 41-46 and 70 as set forth in the last Office action.
Response to Arguments
Claim Rejections – 35 U.S.C. §103 of claims 41-45 and 70 over Fakhfakh, Namdar, and Singer as evidenced by the specification: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant argued that the phrase “pressed against a filter” cannot be read as “pressing” followed by later filtration. Applicant stated that the Office’s interpretation of the phrase to comprises merely filtering a liquid portion from a solid portion omits the term “against” from the claim and expands the phrase to mean any sequence that happens to include filtration. Applicant stated that a proper reading of “pressing against” implies a single step and not sequential steps of pressing and then filtering. Under this proper reading, Applicant argued that Fakhfakh relying on the protocol of Gecgal discloses a two-step process of pressing followed by filtration; and Namdar discloses the use of a solvent for oil extraction so that neither reference discloses pressing the offshoot tissue against a filter (Applicant’s Remarks, page 2, section 1 – page 3, section 2).
However, the phrase “pressing against a filter” does not limit the claimed method to a single step; the phrase implies that the method at least requires a step of separating oil from solids of the offshoot since claim 46 further reads “against a filter to separate the oil from the solids” and claim 46 states “the method comprising pressing”. The Examiner points out that the “Cold press extraction” example in the present specification, which serves as the only basis of support for a filter in the presently claimed process, states that the method involved crushing the offshoot prior to squeezing out the juice. Since the example does not mention where the filter enters the process at all, it is presumable that the fruit juice maker crushed the offshoot into a paste and then squeezed the paste against a filter in order to produce the juice, wherein the step of squeezing out the juice corresponds to the claimed “pressing against a filter”. This step of squeezing paste against a filter amounts to nothing more than a step of filtration wherein the juice containing the oil is separated from the solids of the offshoot, especially wherein the Applicant has not shown that actively pressing paste against a filter provides a different lipid composition in the produced oil compared to the oil obtained from a process involving passively filtering the paste. Therefore, the phrase “pressing against a filter” amounts to nothing more than a step of filtration.
In response to Applicant’s assertion that the Examiner’s interpretation of “pressing against a filter” expands the phrase to mean any sequence that happens to include filtration, present claim 41 is so broad as to allow any number or type of additional steps to be included in the method as long as the additional steps do not involve solvent extraction.
In response to Applicant’s assertion that Fakhfakh, relying on the protocol of Gecgal, discloses a two-step process of pressing followed by filtration and that Namdar discloses the use of a solvent for oil extraction so that neither reference discloses pressing the offshoot tissue against a filter, even if Fakhfakh was limited to the method of Gecgal, Gecgal discloses using a screw press during its method. Screw pressing involves squeezing organic material against a filter (i.e., screened surface or other filter media) to separate liquid from the organic material as evidenced by Anderson (“Screw Press”, 2025, Anderson Process, https://www.andersonprocess.com/products/general-processequipment/screw-press/). Therefore, even if Fakhfakh was limited to the method of Gecgal, Fakhfakh would disclose “pressing against a filter” as is interpreted by the Applicant.
Applicant then argued that Fakhfakh teaches away from cold pressing when oil yield matters; and that Namdar shows that obtaining oil from offshoot tissue requires solvent partitioning. Applicant argued that a skilled practitioner would not have a reasonable expectation of success in obtaining oil from offshoot tissue through simple cold pressing or through the presently claimed press against-the-filter process, without the use of Namdar’s solvent partitioning of oil from the saccharides in the offshoot extract (Applicant’s Remarks, page 3, section 3).
However, in response to Applicant’s assertion that Fakhfakh teaches away from cold pressing when oil yield matters, Fakhfakh also discloses that cold pressed oils: (A) “retain their genuine flavor, aroma, and nutrients”; (B) are “much safer due to its emptiness of solvent residues”; and (C) “contain higher levels of natural antioxidants […] that improves shelf-life stability and safety without the requirement of the additional synthetic antioxidants” (page 128, 2nd-3rd paragraphs). Therefore, even if Fakhfakh discloses one disadvantage of cold pressed oils, Fakhfakh discloses several advantages of cold pressed oils and, for this reason, Fakhfakh is not considered to teach away from cold pressing. MPEP 2123.II.
In response to Applicant’s assertion that a skilled practitioner would not have a reasonable expectation of success in obtaining oil from offshoot tissue through simple cold pressing or through the presently claimed press against-the-filter process, without the use of Namdar’s solvent partitioning, the Examiner points out that the “Cold press extraction” example in the present specification uses solvent partitioning. Solvent partitioning is actually a type of solvent extraction; therefore, the “Cold press extraction” example in the present specification does not exclude solvent extraction as required by present claim 41. Furthermore, the present claims do not require a specific amount of oil to be recovered from the offshoot or from an extract of the offshoot; therefore, the process of obtaining oil from the offshoot is not required to have any particular level of efficiency.
Applicant then argued that the present specification supports unexpected results for oil produced using the claimed method that could not be predicted using optimization. Applicant argued that the seed-oil data relied on in Fakhfakh/Gecgal show date seed oil with 11 wt.% palmitic acid and no linolelaidic acid so that Fakhfakh/Gecgal does not suggest that an offshoot oil obtained without solvents contains at least 50 wt.% palmitic and linolelaidic acid based on the total content of fatty acids. Applicant argued that Singer provides a generic biosynthesis statement without specifically disclosing that the claimed solvent-free press-against-filter process would deliver the claimed content of palmitic acid and linolelaidic acid or that the claimed process is an art-recognized result-effective variable (Applicant’s Remarks, pages 4-5, section 4).
However, Applicant has not demonstrated that the results from the claimed pressing against a filter process are unexpected as it is known in the art that cold pressing (as disclosed in Fakhfakh which corresponds to the claimed pressing against a filter recited in present claim 41) retains more compounds (e.g., fatty acids) of the original source than solvent extraction as indicated by Fakhfakh (page 128, 2nd-3rd paragraphs). Applicant also has not demonstrated that the factors disclosed in Singer do not affect the content of palmitic and linolelaidic acid in the extracted oil.
Furthermore, the Examiner points out that the example labeled “Organic solvent extraction” underwent solvent extraction using a combination of dichloromethane and methanol prior to separating the liquid portion from the solids portion (i.e., decanting the supernatant) while the example labeled “Cold press extraction” underwent solvent partitioning using dichloromethane after filtration. Solvent partitioning is a type of solvent extraction. Therefore, both the “Organic solvent extraction” example and the “Cold press extraction” example underwent solvent extraction during preparation of the oil. Since both examples used “solvent extraction” to obtain the oil, Applicant has not demonstrated obtaining an offshoot oil containing at least 50 wt.% palmitic and linolelaidic acid based on the total content of fatty acids, wherein the oil was obtained without solvents as presently claimed. Therefore, the claims are not commensurate in scope with the data and Applicant’s arguments are not commensurate in scope with the data.
Applicant then argued that the Declaration describes the unexpected, method-dependent results of the claimed method (Applicant’s Remarks, page 4, section 5).
See the section above labeled “Response to Amendment”.
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 are maintained as written herein.
Claim Rejections – 35 U.S.C. §103 of claim 46 over Fakhfakh, Namdar, Singer, and Çakaloğlu as evidenced by the specification: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant pointed to the Declaration to rebut claim 41 and dependent claim 46. Applicant also argued that citing a generic seed-oil polishing step does not supply a reasonable expectation that offshoot saccharides can be separated without solvents after pressing, particularly wherein the data in the Declaration shows that the screw press method does not even produce oil from offshoots to polish (Applicant’s Remarks, page 4, last paragraph).
However, see the section above labeled “Response to Amendment” for responses to Applicant’s Declaration. Furthermore, in response to Applicant’s assertion that citing a generic seed-oil polishing step does not supply a reasonable expectation that offshoot saccharides can be separated without solvents after pressing, the Examiner points out that the “Cold press extraction” example in the present specification uses solvent partitioning. Solvent partitioning is actually a type of solvent extraction; therefore, the “Cold press extraction” example in the present specification does not exclude solvent extraction as required by present claim 41. As such, Applicant has not demonstrated a process of obtaining oil from date palm offshoot tissue without the use of solvent partitioning or solvent extraction of saccharides after pressing. Therefore, the data is not commensurate in scope with the claims and Applicant’s arguments are not commensurate in scope with the data.
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 are maintained as written herein.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/K.P.K./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791