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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3 April 2026 has been entered.
Claims 14-27 are currently pending and are considered here.
Any rejection not reiterated herein has been withdrawn.
Response to Arguments
Applicant's arguments filed 3 April 2026 have been fully considered but they are not persuasive.
Applicant argues that it would not have been obvious to modify Jakel so as to carry out a microfiltration step directly after the paddle screen step since Fig. 4 of Jakel teaches a preceding step using “a clarifier, filtration centrifuge or the like” and one of ordinary skill would have regarded such step as required in the method. This is not persuasive because, as set forth in the rejection below, Jakel teaches that the method shown in Fig. 4 can be modified by omitting one or more separation steps (Figs. 5 and 6; [0065]; [0067]-[0078]). For example, with respect to Fig. 6, Jakel teaches that the method can comprise two separation steps following the paddle screen step, a first step using “a clarifier, filtration centrifuge or the like” followed by a microfiltration step ([0077]-[0078]). In view of the general teaching by Jakel that the method can be modified by eliminating one or more steps, it would have been obvious to eliminate the single preceding separation step of using “a clarifier, filtration centrifuge or the like” prior to the microfiltration step. There would have been a reasonable expectation of success in doing so because Jakel teaches that the stream yielded by the paddle screen step is clean enough for fermentation and that the method can proceed directly to fermentation as in Fig. 5 or have one or more separation steps as in Fig. 6. Moreover, Bazzana teaches a substantially similar method comprising a series of post-liquefaction solid-liquid separations wherein the separations can use any means capable of separating solids and liquids including microfiltration. One would have been motivated to eliminate any one or more of the separation steps of Jakel in order to eliminate an unnecessary step and the associated time, expense, etc. (see also, MPEP 2144.04, II., obvious to omit a step where the step is not desired or required). Applicant's argument that the clarifier/filtration centrifuge step is absolutely required does not account for the teaching that the method can be modified by eliminating any one or more steps as well as the teachings of Jakel as a whole.
Applicant further argues that eliminating the step of using “a clarifier, filtration centrifuge or the like” from the method of Jakel would impermissibly change the principal of operation of the method. This is not persuasive because Applicant has not articulated any specific principal of operation that would be inconsistent with the elimination of the step. The step using “a clarifier, filtration centrifuge or the like” separates residual solids from the liquid components in a similar manner to the microfiltration step and thus operates according to the same general principal (e.g., filtration centrifuge and microfiltration are both filtration methods). Moreover, Bazzana evidences that microfiltration can be carried out at any point in the process post-liquefaction, including directly following liquefaction. Thus, there is no disclosed or evident rationale as to why the process of Jakel would not be operable with a microfiltration step immediately following the paddle screen separation step.
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.
Claims 14-27 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Pub. 2017/0022529 to Jakel et al., as evidenced by US Patent Pub. No. 2014/0106419 to Bazzana et al. (each cited in IDS of 13 July 2023).
Regarding claims 14 and 21, Jakel teaches a method for producing a sugar stream, e.g., for use in a dry grind ethanol process, comprising: milling/grinding grain such as corn into particles (e.g., 204 in Fig. 4), adding the ground grain to a liquid to form a slurry (e.g., 204 in Fig. 4), subjecting the slurry to liquefaction, i.e. converting the starch to carbohydrates/oligosaccharides (e.g., 208 and 210 in Fig. 4), and subjecting the liquefied slurry to a series of separations/purifications (e.g., 212, 222, 224 in Fig. 4) to produce a clarified sugar stream for fermentation and various co-products (entire document, including [0020]-[0079], esp [0036]-[0066j; Figs. 4 and 6). Jakel teaches that the method can comprise an initial solid/liquid separation step immediately after the liquefaction/saccharification (e.g., 212 in Fig. 4) via a paddle screen to yield a first solids portion and a first liquid portion, and that the size of holes in the screen can range from, e.g., 25-450 µm (which would inherently separate solids from the slurry “via particle sizes”) ([0044]-[0046]). Jakel teaches that the first liquid portion from the paddle screen can be subjected to one or more additional separation steps, e.g. separation by filtration centrifuge (e.g., 222 in Fig. 4) followed by microfiltration (e.g., 224 in Fig. 4) ([0052]). Jakel further teaches modifications of the method shown in Fig. 4 in which various steps are omitted (Figs. 5 and 6; [0067]-[0078]). The modified methods of Figs. 5 and 6 range from sending the liquid portion from the paddle screen step directly to a fermentation (e.g., from 312 to 326 in Fig. 5) to having one or more intervening steps between the paddle screen and fermentation, such as a filtration centrifuge step and optionally a microfiltration step (Fig. 6 and [0077]-[0078]). Jakel teaches that the liquid portion directly from the paddle screen step can be regarded as clean enough to be fed to a fermentation process ([0072]), and that the general method of Fig. 4 “may be modified to accommodate less than or more than that shown for recovering the sugar stream” ([0065]).
It would have been obvious in view of the above teachings of Jakel to incorporate any one or more of steps 222 and 224 from Fig. 4 after the paddle screen step, including a microfiltration (optionally with ultrafiltration; see below) step directly after the paddle screen as in instant claim 14, in order to clarify the sugar stream to a desired level for subsequent use (e.g., to obtain a desired DE and/or unfermentable solids fraction for a subsequent fermentation). One would have had a reasonable expectation of success in doing so because Jakel teaches that the stream from the paddle screen step is sufficiently clean for fermentation and that the method of Fig. 4 can be modified as desired to include less steps for recovering the sugar stream. Jakel further teaches that a simplified method can optionally include a microfiltration step following the paddle screen step ([0078]). Moreover, Bazzana teaches a substantially similar method to that of Jakel for producing a purified sugar stream for a fermentation process, such as a dry grind ethanol process, comprising milling, liquefaction/saccharification to convert the starch to simple sugars, and subjecting the resulting stream to a series of solid-liquid separation/purification steps (steps 20, 20', 20'') to reduce the level of unfermentable solids in the stream (Bazzana, [0009]-[0022]; [0049]-[0149], esp. [0135]-[0149]; Figs. 8 and 9). Bazzana teaches that the separations steps may be identical or different and can use any separation device capable of separating solids and liquids including microfiltration (Bazzana, [0139]-[0140]). Thus, Bazzana evidences that one of ordinary skill would have a reasonable expectation of success in carrying out a microfiltration step at any point in the process, including immediately following the paddle screen step. As such it would have been obvious to modify the method of Fig. 5 of Jakel to include a microfiltration step and/or to modify that of Fig. 6 to exclude the sugar separation step 322.
Regarding the recitation in claim 21 that the microfiltration step is "followed by separating the second liquid portion, via ultrafiltration, into a third solids portion and a third liquid portion", Jakel teaches that the "microfiltration step 224 may be replaced by, or additionally include, ultrafiltration" ([0053]). It would have thus been obvious to conduct the microfiltration step as comprising microfiltration followed by ultrafiltration, e.g. in order to further clarify the sugar stream for subsequent fermentation and/or other uses.
Regarding claims 15 and 22, Jakel teaches that the solids portion from the microfiltration step can be combined with the first solids portion from the paddle screen step (e.g., in holding tank 214 in Fig. 4) ([0053]).
Regarding claims 16 and 23, Jakel teaches that the microfiltered sugar stream can be sent directly to a saccharification step prior to a fermentation step (e.g., between 224 and 226 in Fig. 4) ([0054]; [0078]). Jakel further teaches that the carbohydrate portion from the paddle screen step can be at least 20 DE, e.g. 90 DE or higher (which would yield at least 20 DE after further refining via microfiltration) ([0072]).
Regarding claims 17-20 and 24-27, Jakel teaches that the filtered sugar stream can be subjected to fermentation to produce alcohol such as ethanol or butanol (a biofuel/biochemical) ([0054]).
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 14-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 4-15 of copending App. No. 18177995, in view of US Patent Pub. 2017/0022529 to Jakel et al. (as applied in prior art rejection above). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘995 App teach a method comprising steps of milling, mixing to form a slurry, liquefaction, separation via paddle screen, separation via density by centrifuge (e.g., filtration centrifuge/membrane filtration), microfiltration and fermentation of the resulting sugar stream (‘995, claims 1, 2 and 4). As evidenced by Jakel, the sugar stream would have a DE of at least 20 (Jakel, [0051]; [0072]). Jakel teaches a method substantially identical to the method of the ‘995 claims (Jakel, Fig. 4) for the same purpose and further teaches and makes obvious modifying such method to eliminate one or more steps, and it would have been obvious to arrive at the method of claims 14-27 for the same reason as set forth in the prior art rejection of claims 14-27 above.
This is a provisional nonstatutory double patenting rejection.
Claims 14-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 4-15 of copending App. No. 19401770, in view of US Patent Pub. 2017/0022529 to Jakel et al. (as applied in prior art rejection above). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘770 App teach a system configured to carry out a method comprising steps of milling, mixing to form a slurry, liquefaction, separation via paddle screen, solid-liquid separation, microfiltration and fermentation of the resulting sugar stream (‘770, claims 1, 3, 8, 9, 10, 13). As evidenced by Jakel, the sugar stream would have a DE of at least 20 (Jakel, [0051]; [0072]). Jakel teaches a method substantially identical to the method of the ‘995 claims (Jakel, Fig. 4) for the same purpose and further teaches and makes obvious modifying such method to eliminate one or more steps, and it would have been obvious to eliminate the solid-liquid separation step after the paddle screen in the system of the '770 claims to arrive at the method of claims 14-27 for the same reason as set forth in the prior art rejection of claims 14-27 above.
This is a provisional nonstatutory double patenting rejection.
Claims 14-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 4-15 of copending App. No. 18501501, in view of US Patent Pub. 2017/0022529 to Jakel et al. (as applied in prior art rejection above). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘501 App teach a method comprising steps of mixing to form a slurry, liquefaction, separation via paddle screen, solid-liquid separation, microfiltration and fermentation of the resulting sugar stream (‘501, claims 1, 8, 10-14). As evidenced by Jakel, the sugar stream would have a DE of at least 20 (Jakel, [0051]; [0072]). The claims of the '501 App differ from the instant claims in that the '501 process does not include a milling step. Jakel teaches a method substantially identical to the method of the ‘501 claims (Jakel, Fig. 4) for the same purpose and further teaches and makes obvious an initial milling step to produce grain particles that are mixed to form the slurry (e.g., Fig. 4), and it would have been obvious to add such a step to the method of the '501 claims.
This is a provisional nonstatutory double patenting rejection.
Claims 14-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of US Patent 12522881, in view of US Patent Pub. 2017/0022529 to Jakel et al. as evidenced by Bazzana (as applied in prior art rejection above). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘881 Patent teach a method comprising steps of milling, mixing to form a slurry, liquefaction, separation via paddle screen, separation via density by centrifuge (e.g., filtration centrifuge/membrane filtration), microfiltration and optionally ultrafiltration to yield a sugar stream with a DE of at least 20 and fermentation of the resulting sugar stream (‘881, claims 1-14). Jakel teaches a method substantially identical to the method of the ‘881 claims (Jakel, Fig. 4) for the same purpose and further teaches and makes obvious modifying such method to eliminate one or more steps, and it would have been obvious to arrive at the method of claims 14-27 for the same reason as set forth in the prior art rejection of claims 14-27 above.
Claims 14-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of US Patent 11447806, in view of US Patent Pub. 2017/0022529 to Jakel et al. (as applied in prior art rejection above). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘806 patent teach a method for producing a sugar stream comprising mixing ground biomass with water to produce a slurry, liquefying the slurry to produce a carbohydrate stream and then subjecting the stream to a series of separations to produce a highly purified/refined sugar stream, including an initial separation via particle sizes using a paddle screen, followed by microfiltration. As the method of the ‘806 claims produces a slurry from ground grain, it would have been obvious to include a milling step to grind whole grain preceding the steps of the ‘806 method. Regarding claims 14-27, Jakel teaches a method substantially identical to the method of the ‘806 claim (Jakel, Fig. 4) for the same purpose and further teaches and makes obvious modifying such method to eliminate one or more steps, and it would have been obvious to arrive at the method of claims 14-27 for the same reason as set forth in the prior art rejection of claims 14-27 above.
Claims 14-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of US Patent 11597955, in view of US Patent Pub. 2017/0022529 to Jakel et al. (as applied in prior art rejection above). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘955 patent teach a device for producing a sugar stream wherein the device is configured to carry out a method comprising milling grain to produce ground grain, mixing the ground grain with water to produce a slurry, liquefying the slurry to produce a carbohydrate stream and then subjecting the stream to a series of separations to produce a highly purified/refined sugar stream, including an initial separation (via particle sizes) using a paddle screen, followed by microfiltration (‘955, claims 1 and 6). Regarding claims 14-20, Jakel teaches a method substantially identical to the method of the ‘955 claims (Jakel, Fig. 4) for the same purpose and further teaches and makes obvious modifying such method to eliminate one or more steps, and it would have been obvious to arrive at the method of claims 14-27 for the same reason as set forth in the prior art rejection of claims 14-27 above.
Conclusion
No claim is allowed.
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/ROBERT J YAMASAKI/Primary Examiner, Art Unit 1657
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