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 .
Election/Restrictions
Claims 7-14 and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on February 3, 2026.
Applicant's election with traverse of claims 1-6 and 17-19 in the reply filed on February 3, 2026 is acknowledged. The traversal is on the ground(s) that the instant claims make a contribution over Morel because Morel discloses a method to obtain ground plant meal wherein rapeseed is heat-treated up to 90 ˚C prior to mechanical pressing then the oil is extracted by a solvent followed by desolventizing step. Applicant further notes that Morel discloses that any heat treatment must be avoided during grinding of the rapeseed meal. This is not found persuasive because the restriction was required on the grounds that the groups of inventions do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding technical feature because the shared technical feature among the inventions does not make a contribution over the prior art. In the instant case, Morel teaches a process for making ground plant meal where rapeseed is processed by a hot pressure step of preheating the rapeseed to 90 ˚C and then followed by a hot pressure step of grinding the seeds and pressing in a screw press where the temperature reaches up to 120 ˚C (see pg. 2, ln. 16-28). This is construed to meet the claimed limitation regarding a “heat treatment” as the instant specification discloses that a “heat treatment” may be performed at a temperature of at least 100 ˚C (pg. 3, ln. 8-10). Therefore, the instant claims are found to not make a contribution over the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on March 14, 2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Office.
Claim Rejections - 35 USC § 102
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.
Claims 1 and 3-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morel et al. (WO2017055554, hereinafter referred to as “Morel”).
As to Claims 1 and 3: Morel teaches a process for preparing an adhesive composition comprising a step of obtaining a ground rapeseed plant meal (Example 1, 1.1, pg. 14) via a process of a hot pressure step of preheating rapeseed up to 90 ˚C followed by grinding and pressing at a temperature up to 120 ˚C, which reads on the claimed “heat treated plant meal” as the instant specification discloses that rapeseed is a preferred plant meal (pg. 2, ln. 29-32) and that a “heat treatment” may be performed at a temperature of at least 100 ˚C (pg. 3, ln. 8-10). The ground plant meal from Example 1 is used in Example 3 wherein the ground rapeseed meal is admixed with a urea formaldehyde resin (i.e., a water soluble reactive prepolymer) (pg. 23, ln. 5-22).
The plant meal of Morel is construed to be “capable of reducing the viscosity of a dispersion in water of said heat treated dry plant material compared to the same dispersion of the non-heat treated dry plant meal with water” as the ground plant meal of Morel meets the recited ingredients as defined within the instant specification and is made by a substantially similar process. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. viscosity reduction, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 4: Morel teaches the process of claim 1 (supra).
Morel further teaches that the dry plant meal comprises at least 20 wt% protein (pg. 4, ln. 21-25).
As to Claim 5: Morel teaches the process of claim 1 (supra).
Morel further teaches wherein the ground plant meal has a D50 of 20 to 40 µm (pg. 8, ln. 16-19).
Claim 2 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morel et al. (WO2017055554, hereinafter referred to as “Morel”).
As to Claim 2: Morel teaches a process for preparing an adhesive composition comprising a step of obtaining a ground rapeseed plant meal (Example 1, 1.1, pg. 14) via a process of a hot pressure step of preheating rapeseed up to 90 ˚C followed by grinding and pressing at a temperature up to 120 ˚C, which reads on the claimed “heat treated plant meal” as the instant specification discloses that rapeseed is a preferred plant meal (pg. 2, ln. 29-32) and that a “heat treatment” may be performed at a temperature of at least 100 ˚C (pg. 3, ln. 8-10). The ground plant meal from Example 1 is used in Example 3 wherein the ground rapeseed meal is admixed with a urea formaldehyde resin (i.e., a water soluble reactive prepolymer) (pg. 23, ln. 5-22).
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.
Claims 6 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Morel et al. (WO2017055554, hereinafter referred to as “Morel”).
As to Claim 6: Morel teaches the process of claim 1 (see above).
Morel is silent towards the exact time the plant meal is dried.
However, a person having ordinary skill in the art at the time of the invention would have recognized that the heat treatment/drying time would control the moisture content of the plant meal. As such, it would have been considered to be a result effective variable by a person having ordinary skill in the art at the time of the invention. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05(II). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have optimized the heat treatment time of Morel through routine experimentation, and the motivation to have done so would have been, as Morel suggests, to control the moisture content during the formation of dry plant meal (e.g., wherein Morel teaches drying the ground plant meal at 120 ˚C, Example 1). It is noted that the prior art provides the same effect desired by the instant application, i.e., the formation of a dried plant meal.
As to Claims 17 and 18: Morel teaches the process of claim 1 (see above).
Morel is silent towards the exact temperature the plant meal is dried.
However, a person having ordinary skill in the art at the time of the invention would have recognized that the drying/heat treatment temperature would control the moisture content of the formed dried plant meal. As such, it would have been considered to be a result effective variable by a person having ordinary skill in the art at the time of the invention. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05(II). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have optimized the heat treatment temperature of Morel through routine experimentation, and the motivation to have done so would have been, as Morel suggests, to control the moisture content during the formation of dry plant meal (e.g., wherein Morel teaches drying the ground plant meal at 120 ˚C, Example 1). It is noted that the prior art provides the same effect desired by the instant application, i.e., the formation of a dried plant meal.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-6 and 17-18 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 13-14, and 18-24 of copending Application No. 18/245,259 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims recite the process steps and limitations (i.e., temperature of heat treatment, protein content, granulometry d50, and heat treatment time) that fall within the breadth of the instantly claimed process. While the reference application does not recite the instantly claimed “capable of reducing the viscosity of a dispersion in water of said heat treated dry plant material compared to the same dispersion of the non-heat treated dry plant meal with water,” it is the position of the Office that the plant meal of the reference application is construed to be “capable of reducing the viscosity of a dispersion in water of said heat treated dry plant material compared to the same dispersion of the non-heat treated dry plant meal with water” as the ground plant meal the reference application shares the same breadth as that which is instantly claimed and undergoes substantially the same process steps and would therefore the viscosity reduction would necessarily be present.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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