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 .
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 1-6 and 8 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.
Regarding claim 1, in line 13 the limitation “providing the extraction solution to second husks and/or stems to extract lignin…” renders the claim indefinite since it is unclear if “the extraction solution” is the same as that of line 4, or a different solution that also happens to be ethanol. That is, it is unclear if “the extraction solution” provided to the second husks and/or stems is the same volume of solution provided to “the pulverized grain product while performing heat treatment”, or a separate and unused volume of extraction solution. The specification discloses extracting lignin from husks and stems using ethanol containing extraction solution (page 23 lines 18-21). However, one of ordinary skill in the art would not be able to determine from the disclosure if the lignin extraction is performed with the same volume of solution after providing “to the pulverized grain product while performing heat treatment”, or a different volume of solution.
Claims 2-6 and 8 are rejected by virtue of their dependence on a rejected base claim.
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.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Gillis et al. (US 2017/0014466 A1) in view of Olsen et al. (US 2006/0083819 A1), Belanger et al. (US 2007/0259412 A1), Walmsley et al. (US 3,716,365), and Ahvenainen et al. (US 5,273,762 A) and Paetzold (US 2017/0137761 A1). Xu (US 2011/0315541 A1) is relied on as evidence for claims 2-3.
Regarding claim 1, Gillis et al. teaches a process for producing a distilled ethanol product i.e., liquor (abstract) comprising preparing grains such as wheat (paragraph 39), cutting and grinding the grains (paragraph 40), providing ethanol as an extraction solution to the ground grains and controlling the degree of extraction by adjusting the duration of exposure (paragraph 41), filtering the solid plant matter from the extract (paragraph 42), cooking the solid plant matter in a pressure cooker to gelatinize starches, subjecting the gelatinized matter to enzyme treatment for saccharification, adding yeast, and fermenting to obtain the liquor (paragraph 48).
Gillis et al. does not teach whole grains including first husks and/or stems.
Olsen et al. teaches a method for producing mash for fermentation (paragraph 3) using “grist” comprising milled starch and/or sugar containing plant material derivable from stems and hulls of malted grain (paragraphs 20-21), where the grist starch material is broken down into sugars using enzymes such as amylase and cellulase (paragraph 25). The enzyme treated grist is then combined with yeast and fermented into beer (paragraph 28).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the process of Gillis et al. to use whole grains including husks or stems since the prior art recognizes such features for the treatment of grain and production of mash, to provide additional sources of sugar and/or minimize waste, since there is no evidence of criticality or unexpected results associated with the claimed features, and to combine prior art elements according to known methods to yield predictable results, see MPEP 2143 I.(A).
Gillis et al. does not teach “pulverizing”, interpreted in view of the specification to include milling (page 6 lines 19-20).
Olsen et al. further teaches the mashing process is known to use milled grains (paragraph 7), where the process of the invention uses milled grist (paragraph 16).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the process of Gillis et al. to “pulverize” the whole grains by milling since the reference does not particularly limit the type of comminution applied to the grains, since the method is known in the art for producing mash, and to provide art-recognized advantages associated with milling (e.g., particle size control and uniformity).
Gillis et al. does not teach performing heat treatment while providing the extraction solution to the pulverized grain product and controlling the amount of lignin remaining in the gelated grain product, where the adjusting includes heat treatment temperature.
Belanger et al. teaches a process for production of ethanol from plant material (abstract), including wheat, corn, and barley materials (paragraph 50), comprising exposing comminuted plant material to ethanol solution at a temperature of about 170-210oC and a pressure of 19-30 barg to extract lignin from said material, where the operating conditions such as time and temperature profile are optimized to provide maximum removal of water insoluble lignin from the material (paragraph 54). Lignin is used in high value products (paragraph 4), where ethanol-soluble lignin is considered to be of higher value (paragraph 11).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the process of Gillis et al. to heat treat the solid plant matter during ethanol extraction and to control the amount of remaining lignin by adjusting time and heat treatment temperature since the reference already teaches ethanol extraction, filtering (necessarily requiring a filtering unit), and pressure cooking for gelatinization of starches (paragraph 48), and therefore to simplify the process by combining the individual processes into a single device/step, and to provide maximum lignin extraction for an additional revenue stream.
Regarding “gelating the pulverized grain product through a filter unit”, the limitation is interpreted in view of the specification (page 20 line 22 to page 21 line 10) to mean the features of exposing to ethanol, heating with pressure, and filtering yield obtain said gelating. The prior art combination above appears to teach the same features as the claimed process. Absent persuasive evidence to the contrary, one of ordinary skill in the art would have reasonably expected the prior art process to provide similar “gelating…through a filter unit”.
Gillis et al. does not teach producing a first intermediate product by mixing the gelated pulverized grain product, a solvent, and a first enzyme and performing a primary saccharification process at a first temperature, providing the extraction solution to second husks and/or stems to extract lignin, producing a second intermediate product by adding a second enzyme to the first intermediate product and performing secondary saccharification at a second temperature different from the first temperature. In view of the rejection under 35 USC 112(b) above, “providing the extraction solution to second husks and/or stems” is interpreted to be a fresh, unused volume of extraction solution.
Walmsley et al. teaches a method for manufacturing a brewer’s wort (abstract) comprising gelatinization and liquefaction of cereal grains in a precooking operation, adding enzyme, providing a first stage saccharification at 64-68oC, then providing a second stage saccharification at 74-78oC (figure 1), where the two stage saccharification provides better yields and high fermentable sugar contents in the result wort (column 11 lines 7-16). The process can use different enzymes having optimal activity at different temperatures (column 4 lines 39-48; column 10 lines 72-75). The grains are provided as a slurry, necessarily comprising a solvent e.g., ethanol and/or water (column 10 lines 15-20).
Ahvenainen et al. teaches a method for producing a “liquor” from grains such as barley (abstract), comprising pulverizing the grain kernels so as to produce a pulverized grain product (column 4 lines 10-16), producing a first intermediate product by mixing the pulverized grain product, a solvent, and a first enzyme and performing a primary saccharification process at a first temperature (column 5 lines 54-65) and producing a second intermediate product by adding a second enzyme to the first intermediate product and performing a secondary saccharification process at a second temperature (column 6 lines 1-3), adding yeast to the second intermediate product and fermenting (column 6 lines 25-29, 40-50 and 64-67). While the reference recites a “liquefaction” step for the first enzyme treatment, the step is construed to be a type of “primary saccharification” since the alpha-amylase used in the process is known to break starches into sugars.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the process of Gillis et al. to perform a first saccharification on a first intermediate comprising a solvent and first enzyme, and perform a second saccharification on a second intermediate comprising the first intermediate and a second enzyme at a temperature different than the first saccharification since the prior art recognizes multiple saccharification steps at different temperatures to optimize the activity of different enzymes, in order to provide a more complete degradation of starch into fermentable sugars using different enzymes that target different components, and to minimize waste by adding the appropriate enzyme when it’s respective optimal temperature is reached.
Regarding the lignin extraction from the second husks and/or stems, the prior art combination above teaches lignin extraction as taught by Blanger et al.
Regarding adding the extracted lignin to the second intermediate product with the yeast, Paetzold teaches use of lignified stalks or extracts thereof (abstract), the extract containing lignin (paragraph 19). The reference teaches wood chips, necessarily containing lignin, can be introduced during wine-making e.g., during fermentation (paragraph 8). The extract is used as “an enhancer, a flavoring agent, or an aromatizing agent in beverages” (paragraph 63).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the process of Gillis et al. to add the lignin extract from the second husks and/or stems to the second intermediate product with the yeast since the prior art recognizes lignin extract as “an enhancer, a flavoring agent, or an aromatizing agent in beverages”, and therefore to provide similar effects to the liquor based on desired flavor and aroma.
Regarding claims 2-3, Gillis et al. teaches saccharification is known to enzymatically convert feedstock carbohydrates into fermentable sugars (paragraph 9), but does not specify the sugars. Xu is relied on as evidence to show that fermentable sugars include xylose and arabinose, which can be sourced from lignin (paragraph 69). Therefore, absent evidence to the contrary, one of ordinary skill in the art would have reasonably expected the saccharification process of the prior art combination applied to claim 1 to similarly obtain the claimed sugars.
Regarding claims 4-6, the combination applied to claim 1 teaches treating whole grain “grist” comprising husks and stems with first and second enzymes at first and second temperatures, the enzymes including e.g., cellulase and amylase as taught by Whamsley et al. (column 4 lines 39-48), to obtain a wort for fermenting into liquor as stated above. The process of the prior art combination appears to be the same as that of the claimed process. Absent evidence to the contrary, one of ordinary skill in the art would have reasonably expected similar generation of polyphenols and saccharification of the starch by the enzymes.
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the process of Gillis et al. to use cellulase as the first enzyme and amylase as the second enzyme since the prior art recognizes the enzymes for saccharification, the enzymes having differing optimal temperature and hydrolyzation effect, since there is no evidence of criticality or unexpected results associated with the claimed feature, and to obtain a desired degree saccharification and/or profile of obtained fermentable sugars.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Gillis et al. in view of Olsen et al., Belanger et al., Walmsley et al., and Ahvenainen et al. and Paetzold as applied to claim 1 above, and further in view of Dziondziak et al. (US 5,762,991 A).
Regarding claim 8, the combination applied to claim 1 teaches milling as taught by Olson et al., but does not teach colloid milling.
Dziondziak et al. teaches a method for producing beer (abstract) comprising disintegrating malt with mashing water in a colloid mill (column 6 lines 25-27).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Gillis et al. to use a colloid mill since the prior art recognizes such mills for treating grain to be fermented into beer, since there is no evidence of criticality or unexpected results associated with the claimed feature, and therefore to obtain desired characteristics of the material e.g., particle size and consistency, and as a substitution of art recognized equivalents suitable for the purpose of milling grain, see MPEP 2144.06.
Response to Arguments
Applicant's arguments filed 1/21/2026 have been fully considered, but the amendments to claim 1 necessitated new grounds of rejection. Ahvenainen is no longer relied on as the primary reference, and is replaced with Gillis et al. New references Belanger, Walmsley, Paetzold, and Xu are relied on to address the amended claim. Brijwani is no longer relied upon.
Conclusion
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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/B.K/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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