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 .
This application is in response to an amendment filed on 07/01/2026.
Claims 1-2 and 4-20 are presently pending in this application. Applicant has amended claims 1-2, 4-5, cancelled claim 3 and claims 6-20 are withdrawn as non-elected claims.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 13-15 of co-pending Application No. 17/521,290.
Co-pending application (‘290) teaches decadmiation composition substantially similar to applicant’s presently claimed invention which includes a decadmiation composition comprising a sophorolipid biosurfactant, an acid, a pH adjuster (reads on claim 1 limitation) wherein the sophorolipid is a linear sophorolipid or a derivative of a liner sophorolipid, wherein the acid is selected from acetic acid, citric acid, lactic acid, butyric acid, sorbic acid, benzoic acid, formic acid, fumaric acid, propionic acid, ascorbic acid, glyoxylic acid, malonic acid, pyruvic acid, oxalic acid, uric acid, malic acid, tartaric acid, sulfuric acid, nitric acid, phosphoric acid, hydrochloric acid, boric acid and analogs thereof (reads on claim 1) and wherein the pH adjuster is present in the composition at a concentration that stabilizes the pH between 2-5 (reads on claim 5 limitation).
This is a provisional non-statutory double patenting rejection.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 1-2 and 4-5 are rejected under 35 U.S.C. 103 as obvious over Benredjem et al. (NPL: “Coupling of electrodialysis and leaching process for removing of cadmium from phosphate ore, Sep. Sci. Tech. 2016, 51(4), 718-726) in view of Qi et al (NPL: “Removal of Cadmium and Lead from Contaminated Soils Using Sophorolipids from Fermentation Culture of Starmerella bombicola CGMCC 1576 Fermentation”, Internation Journal of Environment Research and Public Health, pages 1-12, 2018).
Regarding clam 1, Benredjem teaches extracting an impurity from phosphate ore (removing cadmium from phosphate ore, see title- reads on claimed limitation of a decadmiation) comprising a composition comprising an acetic acid solution (reads on acid, p. 719, column 1, paragraph 6) and adjustment of the pH of the solution was carried out with NaOH; p. 719, column 1-Reagents, reads on pH adjuster).
Benredjem also teaches the addition of different organic extracting agents to the mixtures (p. 720, column 2) to aid in the extraction efficiency of cadmium from the phosphate ore. Benredjem discloses leaching or washing is the process of extracting metal ions from soils by dissolving them in specific leaching solution (page 718).
Benredjem does not explicitly disclose or suggest the composition comprising a Sophorolipid.
However, Qi discloses removing cadmium from contaminated soil using sophorolipids wherein sophorolipid (SL) is type of extracellular glycolipid biosurfactant (pages 1-2 and abstract, reads on claim 1 limitation of sophorolipid).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to use a sophorolipid as extracting agent of Qi in the composition of Benredjem which is more efficient and environment friendly and further provide good surface activity, biodegradability, biocompatibility, low toxicity, high productivity as taught by Qi (see page 2- lines 5-15).
Regarding claim 2, Qi discloses surfactin (reads on lipopeptide, see page 2, lines 5-10).
Regarding claim 4, Qi discloses sophorolipid (SL) is linear sophorolipid or a derivative of a liner sophorolipid (i.e., lactonic SLs, acidic SLs, see section 2.3 on page 3).
Regarding claim 5, Benredjem discloses pH adjuster is present in the composition at a concentration that stabilizes the pH of the composition at pH 4 (fig. 9 and page 723-col.2, paragraph 1, encompassed claimed range of pH between 2-5). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
8. Applicant’s arguments, see applicant remarks on pages 5-10, filed on 07/01/2026 with respect to the rejections of Claims 1-5 under 35 U.S.C. § 103 over Benredjem et al. (NPL: "Coupling of electrodialysis and leaching process for removing of cadmium from phosphate ore, Sep. Sci. Tech. 2016, 51(4), 718-726), hereinafter "Benredjem" in view of Qi et al (NPL: "Removal of Cadmium and Lead from Contaminated Soils Using Sophorolipids from Fermentation Culture of Starmerella bombicola CGMCC 1576 Fermentation", Internation Journal of Environment Research and Public Health, pages 1- 12, 2018), hereinafter "Qi" is not persuasive and therefore the rejections have been maintained.
Applicant firstly argue Benredjem teaches combination of electrodialysis and leaching and there is no suggestion of leaching alone in the reference and further argues that Benredjem in view of Qi provides no information on the phosphate dissolution rate of sophorolipids extracting agent and combination of references fails to provide sufficient motivation for a reasonable expectation of successfully using the sophorolipids of Qi in the methods of Benredjem.
However, Examiner traverse the applicant arguments as firstly, claims pertains to composition that recites “comprising” that is open-ended claim language which can include other limitation and therefore Benredjem teaching combination of electrodialysis and leaching and not teaching leaching alone but electrodialysis is not excluded as the claim recites “comprising” and further claim pertains to composition claim limitation and not process claim limitation therefore applicant’s argument is not persuasive and rejection is maintained.
Secondly, applicant’s argument related to Benredjem in view of Qi provides no information on the phosphate dissolution rate of sophorolipids extracting agent. However, there no limitation included about phosphate dissolute rate of sophorolipids extracting agent and further again claim pertains to composition and not process claims. Therefore applicant’s argument is not persuasive, and rejection is maintained.
Thirdly, applicant’s argument related to combination of references fails to provide sufficient motivation using the sophorolipids of Qi in methods of Benredjem. However, Benredjem discloses extracting an impurity from phosphate ore (removing cadmium from phosphate ore, see title- reads on claimed limitation of a decadmiation) comprising a composition comprising an acetic acid solution (reads on acid, p. 719, column 1, paragraph 6) and adjustment of the pH of the solution was carried out with NaOH; p. 719, column 1-Reagents, reads on pH adjuster). Benredjem also teaches the addition of different organic extracting agents to the mixtures (p. 720, column 2) to aid in the extraction efficiency of cadmium from the phosphate ore. Benredjem discloses leaching or washing is the process of extracting metal ions from soils by dissolving them in specific leaching solution (page 718). While Qi discloses removing cadmium from contaminated soil using sophorolipids wherein sophorolipid (SL) is type of extracellular glycolipid biosurfactant (pages 1-2 and abstract, reads on claims 1-3 limitation of biosurfactant is glycolipid, sophorolipid). Given both references pertains removing cadmium ions (reads on leaching as well) from soil, therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to use a sophorolipid as extracting agent of Qi in the composition of Benredjem which is more efficient and environment friendly and further provide good surface activity, biodegradability, biocompatibility, low toxicity, high productivity as taught by Qi (see page 2- lines 5-15). Both pertains to removing cadmium from soil and therefore combinations of references discloses the presently claimed limitation and the rejection is maintained unless applicant shows unexpected results.
Fourth, applicant argues that Benredjem discloses acetic acid is best choice vs oxalic acid. However, claim pertains to composition claim and not method claim and further recites various types of acid that includes acetic, oxalic and etc., and is not limited to just acetic and oxalic acid. Therefore, as Benredjem discloses acetic acid as best choice which would still read on presently claimed limitation and does not need to provide support sophorolipid would work at all in the methods of Benredjem. Further it shows that acetic acid provides best choice between cadmium extraction efficiency and rate of phosphate dissolution and cost wise is cheaper. Claim does not exclude the use of acetic acid. Therefore the rejection is maintained.
Lastly applicant argues that no teaching or suggestion in Qi as to stabilizing the pH of the composition between 2 and 5 as claimed. However, claim recites pH adjuster as optionally and not required and further Benredjem is relied on teaching of pH and not Qi whereas secondary reference does not have teach all the limitation of claim 1 and therefore applicant’s argument is not persuasive, and rejection is maintained.
Further, amendment to the abstract overcomes specification objections of record.
Further amendment to the claims overcome claim objections of record.
Further, amendment to the claims overcomes the 112(b) rejections of record.
Further, Double patenting rejection is maintained as applicant has not filed terminal disclaimer.
Conclusion
9. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/SMITA S PATEL/ Primary Examiner, Art Unit 1732 09/16/2026
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