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 .
NOTE: For examination purposes, claims 7-8, 10 will be considered to depend from claim 6. See rejection below.
Claim Rejections - 35 USC § 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 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.
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.
Claim(s) 6-8, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wurm et al. (Us Pat. 8,357,823, hereafter US’823) in view of WO 2019/177726 (hereafter WO’726).
US’823 discloses fermentation foam control using i.e. secondary branched alcohols for producing antifoam agents which are alkoxylated with ethylene oxide, see e.g. col. 5. US’823 differs in that the branched alcohols as such were used as foam control agents during bioethanol fermentation.
WO’726 discloses foam control in foodstuff manufacturing using the identical branched alcohol structure of the present application which are Guerbet alcohols, including 2-ethylhexanol and 2-propylheptanol which were used in the examples of the present application, see page 2 of WO’726. In WO’726 said foam control agents were used for processed foodstuff like fermentation products, there is no explicit disclosure in WO’726 to use said foam control agents as additives during a fermentation process.
WO’726 does not disclose using branched secondary alcohols as such for foam control during fermentation. Said branched secondary alcohols were used in WO’726 to
produce the foam control agents by alkoxylation. However, the resulting chemical
alkoxylated compounds still comprise said branched secondary alcohol in a reacted
form. Consequently, the resulting foam control agents to be used for foam control during fermentation of US’823 is to be regarded as also comprising branched alcohols.
From this follows that since US’823 also discloses the use during ethanol production by fermentation (see col. 3).
In the art the branched alcohols in the sense of the present application were only used to prepare different foam control agents (see US’823) or they were used only as additive during foodstuff preparation in WO’726 but without explicit disclosure of addition during a fermentation process to prepare the foodstuff or any ethanol.
One of ordinary skill in the art at the time that the invention was created starting from US’823 would also consider WO’726 because producing ethanol by fermentation is a process well known during foodstuff preparation. Since the skilled person knows from US’823 that alkoxylated branched alcohols are suitable as foam controllers during fermentation he/she would consider to extend this teaching to the branched alcohols as such since they were found suitable as foam controllers during foodstuff preparation as shown in WO’726.
The obvious combination of US’823 with WO’726 thus renders the instant invention obvious, with respect to using the two specific branched alcohols in a fermentation method using the specific strain for which a surprisingly good foam control as shown in the examples.
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 7-8, 10 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.
Claims 7 to 9 is unclear because the dependency on claim 5 is wrong, they should be dependent on claim 6.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH D CARR whose telephone number is (571)272-0637. The examiner can normally be reached Monday-Friday (10:30 am -7:00 pm).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at 572-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DEBORAH D CARR/ Primary Examiner, Art Unit 1691