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 office action is in response to the application filed on June 7, 2023. The earliest effective filing date of the application is June 8, 2022.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d),
filed on June 8, 2022.
Status of Application
The amendment filed June 25, 2026 with the Remarks has been entered. The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1, 3, 4, 6, and 8 – 10
Withdrawn claims: None
Amended claims: 1, 6, and 8 – 10
Cancelled claims: 2, 5, and 7
Claims currently under examination: 1, 3, 4, 6, and 8 – 10
By not repeating the previously presented objection/rejection(s), it is sufficiently clear that said objection/rejection(s) are withdrawn.
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.
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.
Claims 1, 3, 4, 6, and 8 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over Murai et al. (US 20130274495 A1) in view of Oteza (Winterization. Oteza. (2018) Retrieved from: https://oteza.sk/en/refinement/refining-of-vegetable-oils/winterization/) and Benesi et al. (US 20070256984 A1).
Regarding claim 1, Murai teaches a dry fractionation method for separating solid and liquid oil fractions comprising the steps of:
a. heating while stirring a raw material oil-and-fat (i.e., polyunsaturated fatty acid grease) to completely melt ([0020]; [0022]); then adding a filtration aid (i.e., inert solid powder as crystal seeds), such as activated carbon, diatomaceous material (i.e., diatomite), or perlite material (i.e., adding a certain amount of inert solid powder to a heated melted polyunsaturated fatty acid grease, and stirring evenly, the inert solid powder is selected from the group consisting of activated carbon, diatomite and perlite – [0023]; [0037]), wherein the raw material oil-and-fat (i.e., polyunsaturated fatty acid grease) is fish oil ([0038]);
b. crystallizing by cooling and stirring to form a slurry (i.e., cooling crystallization the polyunsaturated fatty acid grease containing the inert solid powder obtained by step a), to obtain a crystalline mixture – [0024] – [0025]);
c. press-filtering the slurry to be separated into a crystal fraction and a liquid fraction (i.e., filtering the crystalline mixture obtained by step b) through a filter, to obtain a clarified polyunsaturated fatty acid grease and a filter cake – [0029] – [0030]); and
d. recovering the filtration aid after the press-filtering for repeated use (i.e., recovering a filter cake with inert solid powder – [0037]).
Murai teaches the filtration aid of step (a) is added thereto in an amount corresponding to an amount of 10 to 120% by weight with respect to estimated crystal content (SFC) after the oil-and-fat (i.e., polyunsaturated fatty acid grease) is crystalized, and then mixed with each other ([0023]). Murai teaches, in example, the crystal amount achieved by the method of Murai is 13.0% as SFC ([0046]). Therefore, given the crystal content of the oil-and-fat (i.e., polyunsaturated fatty acid grease) utilized in the method of Murai and the amount of filtration aid recommended based on the crystal content of the oil-and-fat slurry, the recommended amount of filtration aid in the method of Murai is 1.3 wt% to 15.6 wt%.
The range of filtration aid (i.e., inert solid) wt% added in step (a), 1.3 wt% to 15.6 wt%, as disclosed by Murai, overlaps with the claimed range of 0.1 – 6.0 wt%. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Murai teaches, during step (b), the temperature of the coolant is appropriately set in such a manner that a product to be obtained after the crystallization will be a crystal slurry having a flowability permitting the slurry to be transported with a pump ([0025]).
Murai does not teach the cooling temperature is -10 to 5 °C.
Oteza teaches winterizer equipment and the principles behind winterization. Oteza teaches winterization is a thermo-mechanical process in which solids are crystallized under controlled temperature conditions (p. 3, paragraph 1). Oteza teaches the process is used for oils that produce turbidity below 5°C, such as cotton and sunflower oil (p. 3, paragraph 1). Oteza teaches the cause of turbidity may be an increased content of saturated triglycerides or the presence of waxes (p. 3, paragraph 1). Oteza teaches the equipment works on the principle of crystallization of waxes with the aid of a crystallizing agent while gradually cooling the oil, followed by filtration on a horizontal plate filter (p. 3, paragraph 2).
Murai and Oteza are combinable because they are concerned with the same field of endeavor, namely, oil fractionation through crystallization. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have cooled the composition of step (a) of Murai to between -10 to 5 °C, as taught by Oteza because doing so would winterize the liquid oil in addition to any fat fractionation.
Murai does not teach introducing hot gas into the filter after step (c) to make a solid fat melted into a liquid, and then recovering a liquid solid fat.
Benesi teaches a method of separating a quantity of slurry into solids and liquids, the method comprising:
(i) introducing a quantity of a slurry, comprising solids and liquids, in at least one filtration chamber;
(ii) extracting an initial portion of said liquids from the slurry within the filtration chamber whereby a cake is formed, by applying a pressure differential thereto, the applied pressure resulting in a first pressure within the chamber; and
(iii) extracting a subsequent portion of said slurry liquids from the filtration chamber by introducing to the filtration chamber a quantity of a first treatment gas at an elevated temperature, wherein said elevated temperature of the gas is obtained by compressing the gas in a compressor means, wherein a heat of compression is substantially retained by the gas; and wherein the method is energy efficient (Claim 1).
Benesi teaches following the introduction of the first fluid (i.e., the slurry of step (i), there is introduced a second fluid comprising a conditioning gas (i.e., the treatment gas of step (iii) – [0049]). Benesi teaches the conditioning gas can condition the cake for further liquid extraction, by heating and/or by increasing cake permeability, thus permitting an additional amount of liquids to be forced from the slurry and/or further drying the cake ([0049]). Benesi teaches the introduction of conditioning fluids, comprising gases to the slurry, has been found to maximize and/or optimize liquid/solid separation ([0053]). Benesi teaches in one embodiment of the present invention, the introduction of hot compressed gas has been found to increase the efficiency of extraction of liquids from the cake ([0053]).
Murai and Benesi are combinable because they are concerned with the same field of endeavor, namely, solid/liquid separation via filtration. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to extract a second liquid portion through the filter of Murai by introducing the crystal portion of step (c) to a quantity of a first treatment gas at an elevated temperature (i.e., introducing hot gas into the filter to make a solid fat melted into a liquid, and then recovering a liquid solid fat), as taught by Benesi because the introduction of hot compressed gas has been found to increase the efficiency of extraction of liquids from a filter cake produced by the filtration of a solid/liquid slurry.
Murai does not teach further introducing nitrogen into the filter, blowing dry residual solid fat after melting the liquid solid fat through the filter prior to step (d).
Benesi teaches it is desirable to further treat the formed cake and to increase its dryness ([0049]). Benesi teaches filter may also have blowdown gas (which may comprise air) introduced to the cake to continue the treatment of the cake prior to its discharge ([0050]). Benesi teaches such blowdown gas may be conditioning, or conditioned, gas, and may also be used to control the temperature of the cake and/or the chamber to approach a desired exit temperature, pressure, flow, or other process parameter ([0050]). Benesi teaches blowdown gas functions to squeeze or express the cake, and can act as a heat transfer and/or drying agent ([0050]). As further taught by Benesi, in an example, direct compressed air, steam, or a combination of compressed air and steam may be used to effectively dewater the slurry and dry the resultant filter cake comprising diatomaceous earth (i.e., diatomite – [0105]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to pass air (which is known to comprise nitrogen) as a blowdown gas through the filter of Murai after introducing a treatment gas (i.e., introducing nitrogen into the filter, blowing dry residual solid fat after melting the liquid solid fat through the filter) and before the recovery of the filtration aid (i.e., inert solid powder) in step (d), as taught by Benesi because the introduction of blowdown gas functions to squeeze or express the cake, and can act as a heat transfer and/or drying agent, thereby aiding in the recovery of the filtration aid (i.e., inert solid powder).
Murai does not teach the temperature of the hot gas is 30 °C to 100 °C, however Murai teaches to melt the raw material oil-and-fat, a heating temperature of 30 °C or higher is recommended to completely melt the raw material (i.e., the liquid an solid fat – [0022]). Therefore, Murai teaches a temperature of 30 °C and above is recommended for melting any of the fats in the oil-and-fat, including the solid fat.
Benesi further teaches the second fluid (i.e., the treatment gas of step (iii)) is preferably a gas, which may be at ambient temperature or at elevated temperature as dictated by an analysis of the slurry to be treated in accord with the temperature that results in the desired, maximal or optimal separation of the slurry ([0049])
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have selected a temperature of 30 °C and above as taught by Murai for the temperature of the second fluid (i.e., the treatment gas of step (iii)) of Benesi in the modified method of Murai because Murai teaches the temperature range of 30 °C and above is capable of melting all of the raw material, including the solid fat, and Benesi teaches the temperature of the second fluid (i.e., the treatment gas of step (iii)) may be elevated to achieve the desired separation results. It would have also been obvious to select the overlapping range, 30 °C to 100 °C, of the second fluid (i.e., the treatment gas of step (iii)). MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Regarding claim 3, Murai teaches the oil-and-fat (i.e., polyunsaturated fatty acid grease) is a mixture of triglycerides (i.e., glycerides – [0002]).
Regarding claim 4, Murai teaches the heating of step (a) is conducted at 30 °C or higher ([0022]).
The range of oil-and-fat (i.e., polyunsaturated fatty acid grease) heating temperatures, 30 °C or higher, as disclosed by Murai, overlaps with the claimed range of 30 – 100 °C. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Regarding claim 6, Murai teaches the filtration aid (i.e., inert solid) can be added before or after the crystallization, or can be separately added before and after the crystallization ([0028]). Therefore, Murai teaches embodiments wherein none of the filtration aid is added in step (a), and all of it is added between steps (b) and (c) (i.e., after crystallization), and vice versa.
The range of filtration aid (i.e., inert solid) wt% added during step (a), 0 – 15.6 wt%, as disclosed by Murai, overlaps with the claimed range of 0.1 – 1.0 wt%. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Regarding claim 8, Murai teaches between steps (b) and (c), adding additional filtration aid (i.e., inert solid – [0028]).
Regarding claim 9, Murai teaches the filtration aid of step (a) is added thereto in an amount corresponding to an amount of 10 to 120% by weight with respect to estimated crystal content (SFC) after the oil-and-fat is crystalized, and then mixed with each other ([0023]). Murai teaches, in example, the crystal amount achieved by the method of Murai is 13.0% as SFC ([0046]). Therefore, given the crystal content of the oil-and-fat slurry utilized in the method of Murai and the amount of filtration aid recommended based on the crystal content of the oil-and-fat slurry, the recommended amount of filtration aid in the method of Murai is 1.3 wt% to 15.6 wt%. Murai further teaches the filtration aid (i.e., inert solid) can be added before or after the crystallization, or can be separately added before and after the crystallization ([0028]). Therefore, Murai teaches embodiments wherein none of the filtration aid is added in step (a), and all of it is added between steps (b) and (c) (i.e., after crystallization), and vice versa.
The range of filtration aid (i.e., inert solid) wt% added between steps (b) and (c), 0 – 15.6 wt%, as disclosed by Murai, overlaps with the claimed range of 0.5 – 6.0 wt%. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Regarding claim 10, while the modified method of Murai does not teach the temperature of the hot gas is 30 °C to 100 °C, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have selected a temperature of 30 °C and above as taught by Murai for the temperature of the second fluid (i.e., the treatment gas of step (iii)) of Benesi in the modified method of Murai because Murai teaches the temperature range of 30 °C and above is capable of melting all of the raw material, including the solid fat, and Benesi teaches the temperature of the second fluid (i.e., the treatment gas of step (iii)) may be elevated to achieve the desired separation results. It would have also been obvious to select the overlapping range, 80 °C to 100 °C, of the second fluid (i.e., the treatment gas of step (iii)). MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Response to Arguments
Applicant's arguments filed June 25, 2026 have been fully considered but they are not persuasive.
Applicant argues as amended, the present claims are not covered by the previous rejections (p. 6, paragraph 1).
Applicant’s argument with respect to the rejection of claims 1, 3, 4, 6, and 8 – 10 under 35 U.S.C. § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of Murai, Oteza, and Benesi.
Applicant argues there is no reasonable suggestion in Murai to select out fish oil from its generic disclosure (p. 7, paragraph 3).
Applicant’s argument has been carefully considered however the argument is not persuasive. MPEP § 2141.02.IV states a prior art reference must be considered in its entirety, i.e., as a whole. Murai teaches the invention is applicable to one or more of milk fat, beef tallow, lard, fish oil… ([0038]). Therefore, one of ordinary skill in the art would have considered the entirety of the reference, which suggests fish oil as a suitable starting material.
Applicant argues the purpose, the starting material, and the final target product of the claimed invention are different from those of Murai (p. 7, paragraph 3).
Applicant’s argument has been carefully considered however the argument is not persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the purpose, the starting material, and the final target product) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues Murai does not teach the diatomaceous earth and perlite can be used as crystal seeds so as to overcome the shortcomings of slow crystal precipitation and long crystal growth time (p. 8, paragraph 1).
Applicant’s argument has been carefully considered however the argument is not persuasive. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Furthermore, it is noted that the features upon which applicant relies (i.e., the crystal seeds overcome the shortcomings of slow crystal precipitation and long crystal growth time) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues the purpose of Applicant’s step (d) is to introduce hot gas at a temperature of 30 – 100 °C in order to make a solid fat melt into a liquid, and then recover a liquid solid fat; and the purpose of Applicant’s step (e) is to introduce nitrogen to blow dry residual solid fat (p. 8, paragraph 3).
Applicant’s argument has been carefully considered however the argument is not persuasive. Applicant’s argument has been carefully considered however the argument is not persuasive. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In this case, the fact that Benesi is silent regarding the precisely recited purposes of steps (d) and (e) of the instant invention, does not render the result of following the teachings of Benesi to arrive at the presently claimed invention unobvious.
Applicant argues Benesi provides no motivation or suggestion to the ordinary artisan to think of introducing a hot gas at 30 – 100 °C for making a solid fat melt into a liquid and introducing nitrogen for blowing dry residual solid fat (p. 9, paragraph 1).
Applicant’s argument has been carefully considered however the argument is not persuasive. Benesi teaches the introduction of hot compressed gas has been found to increase the efficiency of extraction of liquids from a filter cake produced by the filtration of a solid/liquid slurry ([0049]; [0053]). Benesi also teaches blowdown gas, such as air (i.e., nitrogen) functions to squeeze or express the cake, and can act as a heat transfer and/or drying agent ([0050]; [0105]). The combination of Murai and Benesi render obvious the steps of introducing a hot gas at 30 – 100 °C for making a solid fat melt into a liquid and introducing nitrogen for blowing dry residual solid fat.
Applicant argues Oteza does not cure the deficiencies of Murai and Benesi (p. 9, paragraph 2).
Applicant’s argument has been carefully considered however the argument is not persuasive. Oteza is not relied upon to arrive at instant method steps (a) through (f). Oteza discusses winterization, and is relied upon to arrive at the precisely claimed cooling temperatures.
Applicant argues the claimed method has unexpected results which would overcome any presumption of obviousness (p. 9, paragraph 4).
Applicant’s argument has been carefully considered however the argument is not persuasive. The results presented in the instant specification are not commensurate with the claims. In this case, the examples provided in the specification are narrower than the precisely claimed invention in the following ways:
The fish oil in examples 1 – 3 is precisely recited to be 22.4% EPA, 8.7% DHA, has a total polyunsaturated fatty acid content of 32.4%, and has an orange red color, all of which are not claimed; and
The examples do not discuss adding diatomite or perlite to fish oil as the inert solid powder (Examples 1 – 3).
The algal oil in example 4 is precisely recited to be 3.4% EPA, 24.6% DHA, has a total polyunsaturated fatty acid content of 31.2%, and has an orange red color, all of which are not claimed; and
The examples do not discuss adding activated carbon or clay to algal oil as the inert solid powder (Example 4).
The conjugated linoleic acid in example 5 is precisely recited to be 78.5% linoleic acid, which is not claimed; and
The examples do not discuss adding activated carbon, clay, or perlite to linoleic acid as the inert solid powder (Example 5).
The arachidonic acid in example 6 is precisely recited to be 64.1% arachidonic acid, which is not claimed; and
The examples do not discuss adding activated carbon, clay, or diatomite to arachidonic acid as the inert solid powder (Example 6).
The linoleic acid mixture in example 7 is precisely recited to be 12.7% triglyceride type linoleic acid, and 34.5% linoleic acid, which is not claimed; and
The examples do not discuss adding activated carbon to a linoleic acid mixture as the inert solid powder (Example 7).
Because the examples in the specification are not commensurate with the claims, the evidence relied upon has not established that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. See MPEP 716.02(b).
Applicant argues the claimed method has the effects of efficient separation, fast winterization, complete crystallization, easy crystal separation, no re-entrance of the fat into the filtrate, a final products yield of 89.8 – 97.8%, good lipid clarity, and no crystal precipitation at 0 °C for 5h (p. 9, paragraph 5).
Applicant’s argument has been carefully considered however the argument is not persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., efficient separation, fast winterization, complete crystallization, easy crystal separation, no re-entrance of the fat into the filtrate, a final products yield of 89.8 – 97.8%, good lipid clarity, and no crystal precipitation at 0 °C for 5h) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARK JULIA MORENO whose telephone number is (571)272-2337. The examiner can normally be reached 6:30 - 4:30 M - F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/L.J.M./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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