DETAILED ACTION
Status of claim rejections
The objections to the drawings and specifications are withdrawn in view of Applicant’s filing of replacement drawings and amendments to the specification in the response filed 03/27/2026.
The rejections of record under 35 USC 112(b) is withdrawn in view of Applicant’s amendment to the claims in the response filed 03/27/2026.
The rejections of record under 35 USC 102/103 are maintained in view of Applicant’s amendment to the claims in the response filed 03/27/2026.
The rejections of record under 35 USC 103 are maintained/modified in view of Applicant’s amendment to the claims in the response filed 03/27/2026.
This Action is Non-Final.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/27/2026was filed after the mailing date of the Non-Final Office Action on 12/29/25. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Maintained Claim Rejections - 35 USC § 102/103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-5, 14-15, 18-19, 25, 27, 31, and 37 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by, or, in the alternative, under 35 U.S.C. 103 as obvious over Semenza et al (US 9657314 B2; published 05/23/2017; filed in Applicant IDS; hereinafter “Semenza”).
Semenza teaches a method for reducing bacteria levels within an ethanol fermentation system (a method of controlling microbial growth in an ethanol fermentation system as in claim 1) comprising introducing a quantity of peracetic acid and a quantity of hydrogen peroxide (adding a biocide including a peroxy acid wherein the biocide is essentially free of chelating agents as in claim 1) into a corn mash located within said ethanol fermentation system (see abstract; claims 1-3) and fermenting the corn mash with yeast to produce ethanol (see claim 1). Semenza teaches using hydrogen peroxide (see claim 1), reacting with acetic acid (see col 2, lines 62-66; col 3, lines 46-67) to form the peroxy acid.
In the alternative, it would have been prima facie obvious to one of ordinary skill at the time of filing to use the method of reducing bacteria levels within an ethanol fermentation system as taught by Semenza to arrive at the claimed invention. One of ordinary skill would have been motivated to make the modification because Semenza teaches that the method of using peroxy acids to reduce bacteria in a fermentation system that advantageously inhibits or reduce levels of bacteria that compete with yeast for the fermentation, and the peroxy acid is advantageously decomposed by the fermentation operation so that is does not carry through into the distiller’s grain product (see abstract; see also col 2, lines 35-40).
Regarding claim 3-4, Semenza teaches using peracetic acid (a peroxy acid), which has a formula R1CO3H, where the R1 is selected from C1 to C8 alkyl (see pg. 9 of the specification, which discloses that paracetic acid has the formula CH3CO3H).
Regarding claim 5, Semenza teaches using hydrogen peroxide (see claim 1), reacting with acetic acid (see col 2, lines 62-66; col 3, lines 46-67) to form the peroxy acid in the fermenter (see claims 1, 6, and 15).
Regarding claim 14, Semenza teaches the pH range of the fermentation system is within the range of 4-5.5, where the pH starts at pH of 6, drops to pH of 4.2, and rises to 4.6 at the end of fermentation (see entire col 6 and Tables), all of which are within the claimed pH range of 4 to 8. "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).
Regarding claim 15, Semenza teaches measurement and estimation of peracetic acid in the fermentation medium (see col 7) (i.e., determining a concentration of peroxy acid in the medium), independent control of the levels of peracetic acid, and addition of the peracetic acid into the system in sufficient quantities, such as increasing amounts to achieve desired antimicrobial effect (see col 3-4).
Regarding claim 18, Semenza teaches that the parecetic acid is added to the fermenter, which is kept at 90-95 degrees F (i.e., added to the cooker) (see Example 1).
Regarding claim 19, Semenza teaches the corn mash is made by mixing the plant-based material with heated, often boiling, water (i.e., in a cooker as claimed) before transfer of corn mash stream 14 to a first cooler (that cools the mash) from a temperature of 180° F. to 140° F before the biocide is pumped from respective reservoirs, such as plastic totes, into a common chemical transfer pipe (36) (i.e., a conduit as claimed) into the fermentation tank (20) (see col 4, lines 1-22; Fig. 1; col 5). Thus, Semenza teaches adding the biocide to a conduit positioned between a cooker and liquification tank.
Regarding claim 25, Semenza teaches at least one injection station is adapted to deliver peracetic acid and said hydrogen peroxide into the fermentation tank (see claim 9).
Regarding claim 27, Semenza teaches the mixture comprises 5% to 30% by weight of peracetic acid (see claim 12).
Regarding claim 31, Semenza teaches that the method can also employ more than one peroxy acid (i.e., organic acids) such as peroctanoic acid, or a germicidal fatty acids such as octanoic acid (see col 2, lines 45-60).
Regarding claim 37, Semenza teaches that after the fermentation process within the system, the liquids are then delivered to one or more distillation columns (not shown) for separation of ethanol, and the solids are recovered as distiller's grains (see claims 3 and 10; see also col 5, lines 42-44).
Accordingly, the claimed invention is anticipated by, or rendered prima facie obvious over, the teachings of Semenza, especially in the absence of evidence to the contrary.
Claim Rejections - 35 USC § 103
First rejection
Claim 16 rejected under 35 U.S.C. 103 as being unpatentable over Semenza as applied to claim 1, 3-5, 14-15, 18-19, 25, 27, 31, and 37 above and in view of Malone et al (EP0678123A1).
As discussed above, claims 1, 3-5, 14-15, 18-19, 25, 27, 31, and 37 were anticipated or rendered prima facie obvious by the teachings of Semenza.
Further regarding claim 16, Semenza teaches monitoring various parameters of the fermentation (i.e., physical properties of the medium as in claim 1(c)), including temperature, pH, medium component levels, levels of bacteria present, etc. (see Example 1).
However, Semenza does not explicitly teach (d) generating a physical property signal corresponding to the measurable physical property, the physical property signal correlating to a concentration of the peroxy acid in the fermentable medium; (e) transmitting the physical property signal to a controller; and (f) when the concentration falls below a predetermined value stored in the controller, providing a control signal from the controller to open a supply valve in fluid communication with a source of the biocide including the peroxy acid and the fermentable medium thereby adding an additional amount of the biocide including the peroxy acid into the fermentable medium.
However, Malone teaches “a process for the disinfection of raw sugar juices in which a solution of peracetic acid with a H2O2/peracetic acid (PAA) molar ratio of at least 12:1 is fed into the pulp pressing water system and a solution of peracetic with a H2O2/PAA molar ratio lower than 10:1 is fed into an intermediate point of the diffusers. The bactericide solutions are dosed in a continuous manner (such as at a concentration between 2 and 3% weight of PAA and 20-30% weight of hydrogen peroxide) in the press water system (in particular, so as to obtain PAA concentrations in the treated waters in the region of 5-50 ppm), and the other in the form of shocks in the diffusers. . . and subsequently maintained at an average level of 130 ppm by a 10-minute dose every three hours)” (see claims 1-8 and Example 1). Malone also teaches “the dosing is located in a position such that the effective lifetime of the peracetic acid is not less than the time for the liquor to flow from the dosing location to the outlet. The effective lifetime of peracetic acid is the time taken for the peracetic acid concentration to reduce to a concentration at which it is substantially biocidally inactive.” (i.e., dosing occurs when the concentration falls below a predetermined value, providing a signal to open a supply valve in fluid communication with a source of the biocide including the peroxyacid thereby adding an additional amount of the biocide) (see pg. 3, paragraph 4).
Therefore, it would have been prima facie obvious to one of ordinary skill at the time of filing to modify the method of Semenza by including steps to detect concentration of biocide and dosing additional amounts of the biocide when it falls below a certain concentration as taught by Malone to arrive at the claimed invention with a reasonable expectation of success. One of ordinary skill would have been motivated to make the modification because Malone explicitly teaches that doing so advantageously allows for, e.g., effective control of the bacterial population in the process liquors, and acceptable product coloration (see Example 1 and 2).
Accordingly, the claimed invention was prima facie obvious to one of ordinary skill at the time of filing, especially in the absence of evidence to the contrary.
Second rejection
Claim(s) 20-24, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Semenza.
As discussed above, claims 1, 3-5, 14-15, 18-19, 25, 27, 31, and 37 were anticipated or rendered prima facie obvious by the teachings of Semenza.
Semenza does not explicitly teach that the biocide is added into the components described in claims 20-24 and 26 (i.e., in a liquification tank, in a conduit between a liquification tank and heat exchanger, in a heat exchanger, in a conduit between a first and second heat exchanger, between the heat exchanger and fermentation tank, or in a fermentation cooler).
However, Semenza teaches that the peracetic acid and hydrogen peroxide can be introduced into the corn mash at some other location, such as after secondary cooler or directly into fermentation tank. Alternatively, the peracetic acid and hydrogen peroxide can be added through independent chemical transfer pipes as opposed to a common pipe. Semenza further teaches that any system for introducing the peracetic acid and hydrogen peroxide into the corn mash can be used as the fermentation process operator deems fit (see col 5, lines 60-67). Semenza also teaches that when the biocide is added, it caused removal of biofilms on transfer, heat exchanger, and tank surfaces resulted in decreased glucose losses and that the extra glucose was converted into ethanol (see col 7, lines 53-58).
Therefore, it would have been prima facie obvious to one of ordinary skill at the time of filing to add the peracetic acid biocide anywhere in the fementation system (tanks, heat exchangers, coolers, etc.) as taught by Semenza to arrive at the claimed invention. One of ordinary skill would be motivated to do so because Semenza explicitly teaches that peracetic acid and hydrogen peroxide can be introduced into the corn mash at some other location or anywhere in the fermentation system and that any system can be used as the fermentation process operator deems fit to advantageously remove bacterial biofilms on surfaces in the system to decrease glucose losses.
Accordingly, the claimed invention was prima facie obvious to one of ordinary skill at the time of filing, especially in the absence of evidence to the contrary.
Third rejection
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Semenza as applied to claim 1, 3-5, 14-15, 18-19, 25, 27, 31, and 37 above, and further in view of Kim (Effect of nitric acid on pretreatment and fermentation for enhancing ethanol production of rice straw. Carbohydr Polym. 2014 Jan;99:563-7).
As discussed above, claims 1, 3-5, 14-15, 18-19, 25, 27, 31, and 37 were anticipated or rendered prima facie obvious by the teachings of Semenza.
Sememza teaches that when fermenting cellulosic materials, they may need to undergo pretreatment and cellulose hydrolysis in order to render them suitable for use in a fermentation process (see col 4).
Semenza does not explicitly teach the biocide includes an inorganic acid.
However, Kim teaches the effect of nitric acid (i.e., an inorganic acid) on pretreatment and fermentation to enhance ethanol production (see title, abstract). Kim also teaches pretreatment is absolutely required to increase the yield of fermentable sugars (see pg. 563, col 1), and one of distinct benefits to use nitric acid for the pretreatment lies in the downstream step; it is possible that the neutralized catalyst serves as a nitrogen source for yeast fermentation (see pg. 566, paragraph 2). Kim further teaches that the use of nitrate (derived from nitric acid) not only substantially simplifies after-pretreatment-steps, since the acid catalyst needs not to be removed unlike the other acid catalysts, but also reduces the overall process cost by providing an additional nitrogen source (see pg. 566, paragraph 2).
Therefore, it would have been prima facie obvious to one of ordinary skill at the time of filing to modify the method of Semenza and include an inorganic acid like nitric acid as taught by Kim to arrive at the claimed invention. As Kim teaches the use of nitric acid as a pretreatment for fermentation of cellulosic materials, one of ordinary skill would have been motivated to use the nitric acid of Kim with a reasonable expectation of success. One of ordinary skill would have been motivated to make the modification because inorganic acids like nitric acid can advantageously be used as a neutralized catalyst that serves as a nitrogen source for yeast fermentation, substantially simplifies after-pretreatment-steps, does not to be removed unlike the other acid catalysts, and also reduces the overall process cost.
Accordingly, the claimed invention was prima facie obvious to one of ordinary skill at the time of filing, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 03/27/2026 have been fully considered but they are not persuasive. Please note that Applicant’s arguments with respect to the Nalco Italiano reference and the rejection of claim 16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
On pg. 12-18, Applicant argues the rejection under 102/103 using Semenza. Applicant argues that Semenza does not explicitly state that the biocide is essentially free of chelating agents and that inherency is not proven is the missing element is only probably or possibly present. Regarding the obviousness argument, Applicant argues that obviousness independent claim 1 is rebutted, inter alia, if the Applicant can show “the art in any material respect taught away” from the claimed invention. Applicant cites to Exhibit 1 (“USDA Paracetic Acid” 2016) and Exhibit 2 (USPGPUB 20100021558), which were given its fullest consideration, to argue that the exhibits teach away from step (a) of claim 1. Applicant argues that Exhibit 1 show that stabilizers in the form of chelating agents to “slow the rate of oxidation or decomposition of peracetic acid” (see Exhibit 1) such that one of ordinary skill would be led in a direction divergent from the path taken by Applicant. Applicant argues Exhibit 2 teaches away from Applicant’s invention (citing to para 0013) recites an embodiment in which peracetic acid is stabilized, and paragraph 0043 of Exhibit 2, which discloses, inter alia, “without the presence of the [chelating or complexing] stabilizer, such impurities [present in the aqueous solution] may otherwise have an adverse or deleterious effect on the stability of the peracid and/or hydrogen peroxide in the solution, even at extremely low concentrations of such impurities”. From this, Applicant urges that a prima facie case of obviousness cannot be established using Semenza for amended claim 1.
In response, the examiner disagrees. First, regarding Applicant’s argument that Semenza does not explicitly state that the biocide is essentially free of chelating agents, the examiner notes that Semenza does not use or contemplate the use of any chelating agents or stabilizers anywhere within the reference (see Semenza, throughout). As Semenza is silent to the use of chelating agents in the biocide during ethanol production, absent any evidence to the contrary, Semenza does not use them during the ethanol production process. Second, while the examiner appreciates the references provided by Applicant, the examiner points to the explicit teachings of Semenza, which teaches the successful reduction of bacteria during the production of ethanol using fermentation without the use of any stabilizers. Specifically, the examiner points to the test results of Semenza (see col 7, lines 45-63), which have been reproduced in pertinent part below:
Alcohol production: As shown in FIG. 2, alcohol production for the six-month period in which the PAA/HP treatment was employed was approximately 8.5% higher than the previous six-month period when only antibiotics were used, even when organic acids did not decrease from normal. This result was not expected as alcohol production is thought to be inversely correlated with organic acids. Higher organic acid concentration usually results in lower ethanol concentration. It is likely that the removal of biofilms on transfer, heat exchanger, and tank surfaces resulted in decreased glucose losses and that the extra glucose was converted into ethanol. The tests indicated that the peracetic acid/hydrogen peroxide treatment program can effectively replace the use of antibiotics in preventing ethanol loss due to the formation of organic acids. No negative effects of the program were noted based on the balance of carbohydrates, ethanol, and organic acids taken in the number 1, 2 and 3 fermenters. Also, yeast cell counts and viability tests were all in the normal range. (emphasis added).
As disclosed above, Semenza successfully produces alcohol using peracetic acid and hydrogen peroxide across a 6 month period in 3 separate fermenters, advantageously produced 8.5% higher alcohol production than in 6 month periods in which antibiotics alone were used, and experienced no negative effects on the balance of carbohydrate, ethanol, and organic acids, and yeast cell count and viability were normal. Thus, when looking at the entirety of the teachings of Semenza, one of ordinary skill would have been motivated to use hydrogen peroxide and acetic acid to make a peracetic acid biocide without the use of chelating agents or stabilizers for successful reduction of bacteria and increased ethanol production during fermentation with a reasonable expectation of success. Thus, the rejections of record have been maintained as set forth above.
On pg. 19-20, Applicant argues much of the same as above with respect to the rejections of claims 20-24, 26, and 34 over Semenza, and Semenza in view of Kim (respectively).
In response, the examiner disagrees for much of the same reasons as set forth above (which will not be repeated here). Thus, the rejections of record have been maintained.
Conclusion
NO CLAIMS ALLOWED.
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/G.C.R./Examiner, Art Unit 1651
/THOMAS J. VISONE/Supervisory Patent Examiner, Art Unit 1672
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