DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2 and 4-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the claimed limitation “wherein the content of lipids with respect to the dry mass is maintained throughout the process” renders the claim indefinite because it is unclear where the content of lipids with respect to dry mass is being measured (i.e., the content of lipids in the first liquid? The content of lipids in the biomass?). One having ordinary skill in the art would be unable to determine the full metes and bounds of the claim because they would be unable to ascertain where the claimed “content of lipids” must be maintained. Put another way, the claim as drafted does not describe a whole, part of which must be lipids (i.e., 4 above 4 percent of what must be lipids?)
Regarding claim 7, the claim is rendered indefinite because it depends on claim 1, which is indefinite as described above. Claim 7 is further rendered indefinite because it contains exemplary language. It is unclear whether the “preferred” amounts are intended to further limit the claim. Description of preferences is properly set forth in the specification rather than the claims (See MPEP 2153.05(d)).
Regarding claims 2, 4-6 and 8-16, the claims are rendered indefinite because they depend, either directly or indirectly, on claims 1 and/or 7, which are indefinite as described above.
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 1 and 4-16 are rejected under 35 U.S.C. 103 as being unpatentable over Walsh (US Patent No. 1,966,604)) in view of Zheng (CA 3075080 A1, hereinafter referring to US Patent No. 11,667,670 B2 as the United States equivalent).
Regarding claim 1, Walsh teaches a method for producing zein compositions (p. 1, lines 61-74), comprising:
Providing a corn gluten source and a first liquid phase comprising an organic solvent (p. 2, lines 91-93), which reads on the claimed “mixing a biomass containing prolamins, such as a grain source or a water insoluble fraction of a grain, having prolamins and lipids, and an organic solvent” because the instant Specification states that corn and corn gluten are suitable biomass products containing prolamins ([0024]).
Extracting the solvent-soluble components of the corn gluten source into a liquid phase (p. 2, lines 87-91). Which reads on the claimed “extracting said dissolved components into a first liquid and extracting undissolved components in a first solid.” Walsh does not require heating or pressurization during the extraction step. Therefore, the temperature and pressure are approximately ambient (~25°C and 1.01 bar, respectively), which fall within the claimed ranges, establishing prima facie cases of obviousness. Walsh does not mention the dielectric constant of the liquid solution, but does teach precautions against solvent evaporation, prefers the use of high-boiling solvents, and contemplates a desire to prevent solvent volatilization (p. 2, lines 93-94, p. 3, claim 6, and p. 1, lines 51-58). Walsh therefore contemplates an extraction process wherein the solvent concentration will remain substantially consistent throughout the extraction process. Walsh also teaches that the extraction solvent may be ethanol (p. 2, lines 19-26). The combination of corn extractants and ethanol reads on the claimed limitation wherein the dielectric constant is maintained within the claimed range because the instant Specification states that ethanol is a suitable solvent.
Walsh is silent with regard to the claimed extraction time parameter. However, given the above temperature, pressure, and dielectric constant, the range of times described by the claimed formula ranges from about 5.1 minutes (using minimum Ke values and a minimum dielectric constant) to about 169.6 minutes (using maximum Ke values and a maximum dielectric constant).
In the same field of endeavor, Zheng teaches a method of maximizing corn protein yield during extraction (abstract), involving extraction with ethanol and water (abstract), wherein the extraction is assumed to reach equilibrium after 60 minutes at 25°C (the same temperature as discussed above in regard to the teachings of Walsh, see Zheng col. 5, lines 47-54 and col. 6, lines 3-5). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to conduct the extraction of Walsh for 60 minutes as taught by Zheng, as Zheng recognizes this time scale as suitable for reaching equilibrium within a corn gluten extraction procedure with ethanol and water. 60 minutes falls within the claimed range within the conditions of the teachings of Walsh (5.1 – 169.6 minutes), establishing a prima facie case of obviousness.
Precipitating at least one solid phase out of the extracted material (p. 1, line 95), which reads on the claimed “separating the first solid from the first liquid.”
Recovering a flexible plastic material from the second liquid phase by precipitation/drying (p. 1, lines 93-98), which reads on the claimed “recovering said thermoplastic material from the first liquid.” Walsh is silent with regard to the conditions under which the precipitation/drying occurs, however Zheng exemplifies the drying of a similar slurry (col. 6, lines 49-51), wherein the sample is dried simply by placing the wet cake into a fume hood. No heating or pressure are applied in this case, and as such the temperature and pressure are expected to be approximately ambient (~25°C and 1.01 bar, respectively). Walsh also teaches that the extraction solvent may be ethanol (p. 2, lunes 19-26) which reads on the claimed limitation wherein the dielectric constant is maintained within the claimed range because the instant Specification states that ethanol is a suitable solvent. Walsh and Zheng are both silent with regard to the claimed time scale of drying. However, given the conditions of the drying as described by Walsh and Zheng, the claimed formula requires a recovering time which is no longer than a maximum time of approximately 81,394 minutes (corresponding to the maximum Ke values, alongside a maximum dielectric constant value, and the aforementioned conditions of drying as taught by Walsh in view of Zheng, above). This equates to approximately 56.5 days of drying. It is expected that a fume hood as described by Zheng would inherently dry an already-centrifuged (extracted) sample of a wet cake within this time frame, as ethanol is recognized as a volatile solvent (Walsh, p. 1, line 51-58). Therefore, the teachings of Walsh in view of Zheng meet the claimed limitation of recovery time.
Walsh as modified is silent with regard to the claimed lipid content range. Nevertheless, as described above, Walsh as modified teaches a process which is identical to the claimed process, using all of the same components. Specifically, Walsh as modified teaches the use of ethanol (p. 2, lines 19-26) and corn gluten (p. 2, lines 92-94). Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed “content of lipids” ranges, will therefore necessarily be present in Walsh as modified and as applied to claim 1, above.
Regarding claim 4, Walsh teaches the use of corn gluten (p. 1, lines 93-94), which reads on the claimed limitations because corn is a naturally grown structure and therefore consist of natural lipid contents and distributions.
Regarding claim 5, Walsh as modified teaches the volatilization of solvent from the extracted composition, as described above. The removal of solvent during this process will modify the concentration of soluble materials within the composition, thereby increasing the viscosity of the composition, which therefore reads on the claimed limitation wherein the first liquid is “treated to increase viscosity.”
Regarding claim 6, Walsh teaches that ethanol containing 20% water by volume may be used (p. 2, lines 19-26); the solution therefore comprises 80% by volume of ethanol, which falls within the claimed range of “ethanol in amount of 50 to 90% (v/v), establishing a prima facie case of obviousness.
Regarding claims 7-11, Walsh as modified is silent with regard to the claimed contents and ranges. Nevertheless, as described above, Walsh as modified teaches a process which is identical to the claimed process, using all of the same components. Specifically, Walsh as modified teaches the use of ethanol (p. 2, lines 19-26) and corn gluten (p. 2, lines 92-94). Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed “content of lipids” ranges, “ratios among the lipids/fatty acids,” “protein content,” and “ratio between alpha helix and beta-sheet” characteristics will therefore necessarily be present in Walsh as modified and as applied to claim 1, above.
Regarding claim 12, Walsh teaches the incorporation of colors, dyes, other resins, pigments, and fillers (p. 3, lines 66-68) after the isolation of the dried product.
Regarding claim 13, Walsh teaches that the product may be used as a thermoplastic molding powder (p. 3, lines 54-58). Walsh is silent with regard to the rigidity of the molded article, however as described above the process taught by Walsh as modified is the same as the claimed process. Therefore, the product produced will also be the same as the claimed thermoplastic material. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed rigidity of the product will therefore necessarily be present in the teachings of Walsh as modified and as applied to claim 1, above.
Regarding claim 14, Walsh teaches that the optional additives such as colors, dyes, other resins, pigments, and fillers (p. 3, lines 66-68) are added alongside solvent to the product of the inventive process to produce a freely-flowing liquid coating (p. 3, lines 63-68), which reads on the claimed “dissolving the powder” and “adding additives” to the “dissolved powder.”
Regarding claim 15, Walsh is silent with regard to the claimed melt flow rate. Nevertheless, as described above, Walsh as modified teaches a substantially identical process which therefore results in a product which is substantially identical to the claimed. . Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed melt flow rate will therefore necessarily be present in Walsh as modified and as applied to claim 1, above.
Regarding claim 16, the claim is drawn to an intended use of the thermoplastic product produced from the process of claim 1. The intended use limitations do not require steps to be performed or limit the claims to a particular structure. These limitations do not limit the scope of the instant claims and need not be taught by the prior art in order to read on the claims. See MPEP 2111.02. Therefore, Walsh as modified and as applied to claim 1, above, also reads on claim 16.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Walsh (US Patent No. 1,966,604)) in view of Zheng (CA 3075080 A1, hereinafter referring to US Patent No. 11,667,670 B2 as the United States equivalent) as applied to claim 1, above, and further in view of Cheryan (US Patent No. 7,045,607 B2).
Regarding claim 2, Walsh as modified teaches all of the limitations of claim 1 . Walsh as modified differs from claim 2 because it is silent with regard to membrane filtration.
In the same field of endeavor, Cheryan teaches a process for extraction of zein from corn germ (Abstract). Cheryan teaches the filtration of an ethanol solution of the extracted product from the corn solids via filtration including membrane filtration (col. 2, lines 22-28), and teaches that the filtration is conducted at 50°C and 20 psi (1.4 Bar), both of which fall within the claimed temperature and pressure ranges, establishing prima facie cases of obviousness. Walsh also teaches that the extraction solvent may be ethanol (p. 2, lunes 19-26) which reads on the claimed limitation wherein the dielectric constant is maintained within the claimed range because the instant Specification states that ethanol is a suitable solvent.
Response to Arguments
Applicant's arguments filed November 26, 2025 regarding 35 USC 112(b) rejections of claims 1-3, 6, 8, 11, 13, and 15 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, a new 112(b) rejection of claims 1-2, 4-6 and 8-16 has been made in view of the newly amended limitation of claim 1, which includes the subject matter of the previous version of claim 7, which was indefinite as described in the previous office action (and as described in the 112(b) Rejections section, above).
Applicant’s arguments regarding the 35 USC 112(b) rejection of claim 7 have been fully considered but are not persuasive. Applicant has overcome the previous indefiniteness issue regarding where the content of lipids with respect to dry mass is being measured within claim 7, however the claim still includes exemplary language (i.e., “preferably” in line 3). Furthermore, claim 7 is now rendered indefinite by virtue of its dependence on claim 1, which is now indefinite as described above.
Applicant’s arguments with respect to the rejections of claims 1, 4, and 6 under 35 USC 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Applicant's arguments regarding 35 USC 103 have been fully considered but they are not persuasive.
Applicant argues that Walsh fails to disclose the claimed precisions within the inventive process, beyond extracting, precipitating, washing, drying, etc. Applicant particularly argues that there is no direct disclosure at all within Walsh to maintain a temperature below 80°C and a pressure below 2 bar.
However, as described above, Walsh does not require heating or pressurization during the inventive process. One having ordinary skill in the art would therefore not be led to apply pressure to or heat the mixture during the process. Likewise, Walsh is silent regarding a cooling or de-pressurization during the inventive process. One having ordinary skill in the art would therefore not be led to reduce either heat nor pressure during the inventive process. One having ordinary skill in the art would therefore be led to conduct the inventive process under ambient conditions, which fall within the claimed process, despite Walsh not particularly pointing out the same ranges as claimed.
Applicant contends that he “sees no link between the above mentioned disclosure… and maintaining any parameter constant during a process.” However, as described in the previously and currently applied rejections, Walsh specifically and directly contemplates the prevention of solvent evaporation: on p. 2, lines 93-94, Walsh states the employment of simple precautions against solvent evaporation; on p. 1, lines 51-58, Walsh points out an issue with previous inventions wherein low boiling solvents have led to disadvantages associated with quick drying; on p. 3, claim 6, Walsh points out the use of a higher boiling solvent. As concluded previously by the Examiner, Walsh clearly contemplates preventing solvent evaporation (i.e., maintaining solvent concentration).
Applicant next contends that the disclosing of ethanol as a solvent does not imply a maintenance of dielectric constant, as claimed. However, as described previously, the dielectric content of a material is characteristic of said material. Furthermore, products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. Therefore, a process which is conducted within the same temperature and pressure range, having the same process steps, having the same solvent, and having the same dissolved solids will necessarily have the same dielectric constant.
Furthermore, as described above, Walsh contemplates maintaining solvent concentration, which the Applicant admits as a method for maintaining dielectric constant (see instant Specification at [0031]). The Examiner’s contention that the teachings of Walsh include ethanol, combined with the full context of the inventive process of Walsh, therefore implies a maintenance of dielectric constant as claimed because the processes are substantially identical and contain substantially identical materials (including solvent).
Applicant’s next arguments appear to contend that Walsh does not teach the claimed step (iv) (now step (iii) within the amended claim 1); however, Applicant has failed to explain how the previous rejection of claim 1 in view of Walsh, which includes a description of how the inventive process of Walsh reads on said step, is improper or inaccurate.
Applicant contends that “Wash is not relevant to the present invention,” however Walsh teaches a process of extraction and purification relating to components of corn, which is a grain. Examiner submits that the teachings of Walsh are plainly relevant to the field of endeavor of the instant application, which the Applicant has stated is “the field of biopolymers, in particular bio-based and bio-degradable thermoplastics. More particularly the present invention relates to a process for production of a thermoplastic material from biomass containing prolamins, to the product obtained and the use of said product.” (see instant Specification at [0002]). Applicant additionally points out that Zein is a prolamin ([0007]).
Applicant finally argues that Zheng does not contemplate the content of lipids remaining above a certain value; however, Zheng is not relied upon for said teaching within the previously and currently applied rejections.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762