/DEBORAH D CARR/Primary Examiner, Art Unit 1691 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Claims 1-8, 10-11, 20-24, 29-30 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7 May 2026.
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 12–15, 25, and 26 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.
A claim directed to an apparatus or system that also recites affirmative method steps for operating or using the apparatus is indefinite when the claim language creates uncertainty as to whether infringement occurs upon making or possessing the claimed apparatus or only upon performance of the recited steps. See MPEP § 2173.05(p); In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748–49 (Fed. Cir. 2011); IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005). This principle is distinguishable from permissible functional language that defines the capability of an apparatus without requiring that a person actually perform the recited operation.
Claim 12 is directed to “[a]n apparatus for producing an alkali metal/alkaline earth metal hydroxide,” but affirmatively recites that a solution containing soapstock “is subjected to an electrochemical reaction,” that the resulting reaction solution “is put into” one side of a membrane-separated cell, that water “is put into” the other side of the cell, and that the alkali-metal hydroxide and/or alkaline-earth-metal hydroxide “is transferred into the water.” These limitations recite acts of operating the electrochemical device and handling the process solutions rather than structural features or capabilities of the claimed apparatus.
Accordingly, it is unclear whether claim 12 is infringed by making, selling, or possessing an apparatus having components capable of performing the recited operations, or only when the apparatus is operated so that the soapstock solution is actually subjected to the electrochemical reaction, the reaction solution and water are placed in the respective portions of the cell, and the hydroxide is transferred into the water. Claim 12 therefore impermissibly combines an apparatus with affirmative steps of using that apparatus, rendering the metes and bounds of the claim uncertain.
Claim 13 is likewise directed to an apparatus but affirmatively requires that a soapstock-containing solution “is put into the anode side,” that water “is put into the cathode side,” and that an electrochemical reaction “is performed.” Claim 14 is directed to an apparatus but affirmatively requires that the soapstock-containing solution “is put into” one side of the electrolytic cell, that the hydroxide “is generated” by an electrochemical reaction, that water “is put into” the other side of the cell, and that the hydroxide “is transferred into the water.”
The quoted limitations of claims 13 and 14 require actual introduction of the identified solutions, performance of an electrochemical reaction, generation of hydroxide, and transfer of the hydroxide. The limitations are not drafted merely as capabilities of the claimed apparatus. It is therefore unclear whether infringement of claims 13 and 14 occurs upon manufacture or possession of an apparatus capable of performing the recited operations or only when the claimed apparatus is actually operated in the stated manner.
Claim 15 incorporates “the production apparatus according to claim 12” and therefore incorporates the indefinite hybrid apparatus-and-process limitations of claim 12. Claim 25 incorporates the production apparatus of claim 13, and claim 26 incorporates the production apparatus of claim 14. Accordingly, claims 25 and 26 incorporate the indefinite hybrid limitations of claims 13 and 14, respectively. The additional recitation in claims 15, 25, and 26 of a unit configured to supply the produced hydroxide to a deacidification process does not resolve the uncertainty introduced by the incorporated apparatus claims.
Claims 12–15, 25, and 26 therefore fail to clearly establish whether the claimed subject matter is an apparatus or system defined by its structure and capabilities, or a method requiring actual performance of the recited operating steps.
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.
Claims 9, 13, and 25 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Bhavaraju et al. (U.S. Patent Application Publication No. 2011/0024288; hereinafter “Bhavaraju”) in view of Sutterlin et al. (U.S. Patent No. 9,546,342; hereinafter “Sutterlin”).
Claim 9
Claim 9 recites a method for producing vegetable oils and fats in which a solution containing soapstock generated during a deacidification process is used as the feed solution in the method of claim 1, and the resulting alkali-metal and/or alkaline-earth-metal hydroxide is used in the deacidification process.
Bhavaraju teaches a method for producing a coupled radical product from an alkali-metal carboxylate derived from biomass. Bhavaraju teaches obtaining biomass containing oils, fatty acids, fatty-acid esters, triglycerides, phospholipids, fatty-acid derivatives, and metal salts of fatty acids, including materials derived from soybean, corn, palm, coconut, canola, and rapeseed. Bhavaraju further recognizes that the biomass may constitute a variable or impure feedstock. See Bhavaraju, ¶¶ 38–39 and 44–47.
Bhavaraju teaches converting the lipid material into an alkali-metal salt of a fatty acid by hydrolysis or saponification using sodium hydroxide, thereby producing a sodium carboxylate represented by R–COONa. See Bhavaraju, ¶¶ 46–47. Bhavaraju further teaches that the resulting fatty-acid salt may be a mixture of different fatty-acid salts and need not be separated into its individual constituents. See Bhavaraju, ¶¶ 67–68.
Bhavaraju teaches introducing the alkali-metal fatty-acid salt into an electrochemical cell having a sodium- or other alkali-ion-conducting membrane and performing an advanced Kolbe reaction. The reaction produces a coupled hydrocarbon product, corresponding to the claimed Rᴬ–Rᴬ product, carbon dioxide, and a regenerated base. See Bhavaraju, ¶ 53. Bhavaraju further identifies the anodic reaction as a Kolbe decarboxylation reaction in which sodium fatty-acid salts form coupled R–R products and carbon dioxide. See Bhavaraju, ¶¶ 63 and 73.
Bhavaraju teaches that sodium ions are selectively transported through the membrane from the anolyte compartment to the catholyte compartment. The catholyte may comprise water or a mixture of water and alcohol. At the cathode, a reduction reaction produces hydrogen and additional base; the base may be sodium hydroxide, may be removed through an outlet, and may be collected and reused in a subsequent saponification reaction or another chemical process. See Bhavaraju, ¶¶ 66 and 69–72. Bhavaraju’s working reactor further produced and concentrated aqueous sodium hydroxide in the catholyte as sodium ions were transferred through the membrane. See Bhavaraju, ¶ 127.
Bhavaraju therefore teaches the material features of the incorporated method of claim 1, including electrochemical Kolbe decarboxylation of alkali-metal fatty-acid salts, formation of coupled R–R products and carbon dioxide at the anode, transport of alkali-metal ions, electrolysis of water at the cathode, and formation of alkali-metal hydroxide.
Bhavaraju does not expressly identify the fatty-acid-salt feed as soapstock generated during vegetable-oil deacidification and does not expressly state that the recovered hydroxide is returned to that particular deacidification operation.
Sutterlin teaches that, during the chemical refining of natural or vegetable oils, degummed oil is subjected to a neutralization step using a strong base such as sodium hydroxide. The free fatty acids react with sodium hydroxide to form soaps, and the stream separated from the oil during neutralization is identified as “soapstock.” See Sutterlin, col. 8, ll. 26–37. Sutterlin also expressly describes soapstock obtained from alkaline neutralization of crude natural oil. See Sutterlin, col. 7, ll. 34–40.
Sutterlin further teaches using soapstock washwater obtained after the neutralization step as a mixed lipid feedstock. The washwater contains water and soapstock, and the soapstock contains soaps, glycerides, phospholipids, free fatty acids, and unsaponifiable material. See Sutterlin, col. 8, ll. 49–65 through col. 9, ll. 1–8. This disclosure supplies the claimed aqueous solution containing soapstock generated in a vegetable-oil deacidification process.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to use Sutterlin’s aqueous soapstock stream as the plant-derived fatty-acid-salt feed in Bhavaraju’s electrochemical Kolbe process. Both references concern recovery of useful products from fatty-acid salts derived from plant or natural-oil processing. Sutterlin establishes that the soapstock stream contains water and fatty-acid salts, while Bhavaraju teaches processing mixed, variable, or impure plant-derived fatty-acid-salt feeds without requiring separation of the individual salts. Substituting Sutterlin’s known aqueous soapstock for Bhavaraju’s generally disclosed plant-derived fatty-acid-salt feed would have constituted the predictable use of a known fatty-acid-salt feedstock in a process expressly designed for plant-derived fatty-acid salts.
A person of ordinary skill also would have had reason to supply the regenerated sodium hydroxide to the vegetable-oil neutralization or deacidification process that produced the soapstock. Sutterlin establishes that sodium hydroxide is the reagent consumed in that process, while Bhavaraju teaches that regeneration and reuse of the base avoids the cost of purchasing replacement base and the cost of disposing of spent base. See Bhavaraju, ¶¶ 53 and 72. Sutterlin separately teaches recycling electrochemically generated sodium hydroxide in a closed-loop natural-oil-processing system. See Sutterlin, col. 17, ll. 47–60.
The proposed combination would have used the regenerated sodium hydroxide for its known function as the neutralizing reagent in vegetable-oil deacidification and would have yielded the predictable benefits of recovering sodium value from the soapstock, reducing fresh sodium-hydroxide consumption, and reducing waste-disposal requirements. Therefore, claim 9 would have been obvious over Bhavaraju in view of Sutterlin.
Claim 13
Claim 13 recites an apparatus having an electrolytic cell containing an anode, a cathode, and an ion-permeable membrane separating an anode side from a cathode side, wherein a solution containing soapstock generated during vegetable-oil deacidification is placed in the anode side, water is placed in the cathode side, and an electrochemical reaction is performed.
Bhavaraju teaches an electrochemical cell having a catholyte compartment and an anolyte compartment separated by an alkali-metal-ion-conducting membrane. An anode is disposed in the anolyte compartment and a cathode is disposed in the catholyte compartment. See Bhavaraju, ¶¶ 63–66. The membrane selectively transports sodium ions from the anolyte compartment to the catholyte compartment while preventing mixing of the anolyte and catholyte.
Bhavaraju teaches placing an anolyte containing a sodium salt of a fatty acid, R–COONa, in the anolyte compartment. The fatty-acid-salt feed may comprise an unseparated mixture of different fatty-acid salts. See Bhavaraju, ¶¶ 67–68. Bhavaraju teaches placing a catholyte containing water, alcohol, or a mixture of water and alcohol in the catholyte compartment. See Bhavaraju, ¶ 69. When a voltage is applied, the sodium fatty-acid salt undergoes Kolbe decarboxylation at the anode, sodium ions move through the membrane, and base is produced at the cathode. See Bhavaraju, ¶¶ 71–73.
Bhavaraju therefore teaches the claimed electrolytic-cell structure, placement of a fatty-acid-salt solution on the anode side, placement of water on the cathode side, and performance of an electrochemical reaction. Bhavaraju does not expressly identify the fatty-acid-salt solution as soapstock from vegetable-oil deacidification.
As discussed above, Sutterlin teaches that soapstock is the aqueous, fatty-acid-salt-containing stream separated from vegetable oil during sodium-hydroxide neutralization. See Sutterlin, col. 8, ll. 26–37 and col. 8, ll. 49–65 through col. 9, ll. 1–8. Sutterlin additionally teaches an electrolysis unit having separate anode and cathode vessels divided by a selective membrane and teaches subjecting a soapstock-derived saponification product mixture to electrolysis by introducing that product into the anode vessel. See Sutterlin, col. 17, ll. 4–15 and col. 18, ll. 26–34.
It would have been obvious to substitute Sutterlin’s aqueous soapstock for the mixed plant-derived fatty-acid-salt anolyte of Bhavaraju. The substitution would have involved the use of one known fatty-acid-salt feed in place of another known fatty-acid-salt feed, with the feed continuing to perform the same function as the source of carboxylate ions for anodic electrolysis. Bhavaraju’s disclosure that the feed may contain mixed fatty-acid salts and may originate as a variable or impure biomass stream, together with Sutterlin’s teaching that a soapstock-derived product may be introduced into an anode vessel for electrolysis, would have provided a reasonable expectation that the substitution could be successfully implemented.
Accordingly, the combination would have resulted in the apparatus of claim 13, and claim 13 would have been obvious over Bhavaraju in view of Sutterlin.
Claim 25
Claim 25 recites a recycling system comprising the apparatus of claim 13 and a unit configured to supply the alkali-metal and/or alkaline-earth-metal hydroxide produced by the apparatus to a deacidification process used in producing vegetable oils and fats.
The apparatus incorporated from claim 13 is taught or suggested by Bhavaraju in view of Sutterlin for the reasons stated above.
Bhavaraju additionally teaches that base generated in the catholyte compartment may be extracted through outlet 244, collected, and reused in future saponification reactions or other chemical processes. See Bhavaraju, ¶ 72. Bhavaraju also expressly claims a conduit that transports base from the catholyte compartment for reuse. See Bhavaraju, claim 19.
Sutterlin teaches removing electrochemically generated sodium hydroxide from the catholyte and recycling the sodium-hydroxide-and-water solution for use in the processing of natural-oil-derived material, thereby providing a closed-loop system. See Sutterlin, col. 17, ll. 47–60. Sutterlin also establishes that the vegetable-oil neutralization or deacidification process consumes sodium hydroxide to convert free fatty acids to soaps. See Sutterlin, col. 8, ll. 26–37.
It would have been obvious to configure Bhavaraju’s disclosed outlet, conduit, pump, holding tank, or equivalent transfer structure to supply the recovered sodium hydroxide to Sutterlin’s sodium-hydroxide-consuming vegetable-oil neutralization process. The modification would merely route a recovered process reagent to a known process in which that same reagent is consumed. The hydroxide, conduit, and deacidification process would each perform their known functions, and the resulting closed-loop recycling system would predictably reduce the requirement for fresh sodium hydroxide and reduce disposal of the sodium-containing soapstock stream.
/DEBORAH D CARR/Primary Examiner, Art Unit 1691
Prosecution Insights