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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 15, 2026 has been entered.
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.
Regarding claim 17, Walsh teaches that, for certain uses, a low boiling solvent such as ethanol containing about 20 v/v% of water may be used (col. 2, lines 19-26). Ethanol containing about 20 v/v% of water would therefore comprise about 80 v/v% of ethanol, which falls within the claimed range of “65 to 80 % (v/v),” establishing a prima facie case of obviousness.
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, see Applicant’s Remarks, filed April 15, 2025, with respect to 35 U.S.C. 112(b) have been fully considered and are persuasive. The 35 U.S.C. 112(b) rejections of claims 1-2 and 4-16 has been withdrawn.
Applicant’s remaining arguments have been fully considered but they are not persuasive.
Applicant argues that Walsh fails to disclose an organic solvent. However, Walsh does specifically teach a solvent (p. 1, lines 5-7) including at least an organic alcohol (p. 1, line 67 and p. 2, lines 19-26). Applicant further asserts that Walsh is silent regarding the claimed temperature and pressure characteristics; however, any process must necessarily include some pressure and temperature characteristics. Walsh does not describe the addition or removal of either pressure or heat, and therefore the conditions within Walsh are reasonably interpreted as occurring under ambient conditions. As described in previous rejections, these conditions fall within the claimed ranges, establishing prima facie cases of obviousness.
Applicant argues that Walsh contemplates additional steps which are not contemplated by the instant claims. However; the claims are directed to a process comprising the recited steps. Therefore, the claims are open to the incorporation of additional, unspecified steps. The teachings of Walsh therefore read on the claimed process despite reciting additional steps.
Applicant next argues against the combination of Walsh and Zheng on the basis that Zheng intends to improve extraction quality. However, Zheng’s purpose – as stated by the applicant – is to “improve the extraction quality by removing all non-protein components, such as lipids.”
This endeavor by Zheng is not contrary to the teachings of Walsh; rather, it supports the inventive goal of Walsh, which specifically states that a substantially purified zein, prepared by any known or preferred process which will prepare zein free of detrimental ingredients such as fatty acids, is preferred (c.f. Walsh p. 1, lines 83-92). One having ordinary skill in the art would therefore directly recognize the suitability of Zheng within Walsh.
Applicant further argues that Zheng teaches away from the claimed prolamin content. Firstly, however, Zheng is not relied upon for the prolamin content of the final product; rather, Zheng is merely relied upon for the extraction time characteristic as claimed. Finally, as described previously, the process of Walsh as modified by Zheng results in a process which is substantially identical to the claimed process, and therefore the claimed prolamin content will inherently be present therein.
Conclusion
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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