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 amendment filed on 6/11/26. Claims 1,4-6 are amended and claims 20-21 are added. Claims 1-8 and 20-21 are pending.
The previous 112 second paragraph rejection is withdrawn due to the amendment. However, the amendment also raises new 112 rejections.
Claim Rejections - 35 USC § 112
Claims 1,6, 20-21 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.
In claim 1, the limitation “ self-generated diluent” is vague and indefinite because it’s not clear what is intended by “ self-generated”. The specification does not define what “ self-generated” means. There is no disclosure of “ self-generated diluent”. The limitation in step (b) is vague and indefinite. On lines 1-2 of paragraph (b), the claim recites “ self-generated diluent generated from the whole stillage in subsequent processing” but then on lines 4-9, the claim recites that the “ self generated diluent is an output from subsequent processing of the distillers corn oil containing diluted stillage”. The two limitations are conflicting as to the source of the self-generated diluent. Furthermore, if the diluent is used to introduce to the whole stillage to produce the distillers corn oil, then how can it be generated from output of the subsequent processing of distillers corn oil. The diluent is needed at the start of the processing to produce the distillers corn oil. In step (c), the limitation “ producing the protein product from one of the separators” is vague and indefinite because it’s unclear what the step encompasses because there is no limitation that any of the product in previous steps (a) and (b) contains protein.
In claim 6, step (b) has the same problem as claim 1 with respect to the limitation “ self-generated diluent”.
Claim 20 has the same problem as claim 6.
Claim 21 is vague and indefinite. It’s unclear what is intended “as output of thin stillage or clear water phase.
Claims 1-8,20-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In the amendment, applicant amends claim 1 to recite “ wherein the self-generated diluent is an output from subsequent processing of the distillers corn oil containing diluted stillage product and is selected from thin stillage obtained from a separator to which the distiller corn oil containing diluted stillage product has been introduced or clean water phase obtained from another separator to which the distillers corn oil containing diluted stillage product has been introduced”. The limitations are not supported by the original disclosure. Applicant does not point to any section of the specification. Paragraph 0061 discloses that the diluent my be thin stillage from a decanter, a clean water phase from a DCO separator or another substance that has a lower percentage of solid than the whole stillage. But, there is no disclosure that the diluent is obtained from subsequent processing of the distillers corn oil containing diluted stillage product or the thin stillage or clean water phase is obtained from the separator in which the distiller corn oil containing the diluted stillage is used. There is no disclosure of “ self-generated diluent”. Claim 20 has the same issue with “ self-generated diluent”. For claim 21, there is no disclosure of self-generated diluent that is an output from the thin stillage or clean water. According on paragraph 0061, the thin stillage or clean water phase is the diluent, not the output of it. It’s not even known what would be encompassed as the output of the thin stillage or clean water phase. There is no disclosure of such features in the specification.
Claim Rejections - 35 USC § 103
Claim(s) 1-2, 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bleyer ( 2015/0238881).
For claims 1-2,20-21, Bleyer discloses a method for producing additional distiller’s corn oil. The method comprises the steps of obtaining whole stillage from an ethanol plant and adding a diluent to the whole stillage. Bleyer discloses the whole stillage containing 11-13% total solid. The level of total suspended solid is reduced to a level below whole stillage. Stillage with a suspended solid content less than whole stillage and more than thin stillage is referred to as thick stillage having a total of 4-8% suspended solids. The diluent includes water, steam evaporated thin stillage, stickwater etc. Bleyer discloses “ stillage refers to a cloudy liquid produced during ethanol fermentation that includes solids, solubles, oils, organic acids, salt, proteins and various other components. It’s obtained from corn ethanol operations. Thus, the whole stillage has ethanol extracted thereform. The diluent includes water, thin stillage which has lower percentage of solid than the whole stillage. The thick stillage disclosed in Bleyer is a diluted stillage because it’s obtained by adding diluent to whole stillage. Bleyer discloses different fractions can be concentrated and recovered as protein and oil fraction as separate product. ( see paragraphs 0035, 0053-0055,0061-0063,0070, 0082, )
Bleyer does not disclose self-generated diluent and the output of the diluent as in claim 1, the step of obtaining a self-generated diluent from a separator as in claim 20 and the output as in claim 21.
The feature of “ self-generated diluent” is vague and indefinite as explained in the 112 rejection above. For prior art application, it’s treated as just diluent because it’s unclear what feature would constitute self-generated diluent. Bleyer discloses adding diluent to whole stillage to reduce the level of total solid to a level below that of whole stillage. Bleyer discloses the diluent includes thin stillage, water, steam evaporated thin stillage, stickwater etc.. Bleyer discloses in paragraph 0070 that stillage can readily be separated. Thus, it would have been obvious to one of ordinary skill in the art to subject whole stillage or thin stillage to separator to obtain different components including oil, protein and additional stillage to be used as diluent.
Claim(s) 3-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bleyer ( 2015/0238881) in view of Zavattari ( DE 60112813).
For claim 3, Bleyer discloses that once stillage has been produced, the stillage processing can be introduced into fermentation process at different points in order to obtain certain products. Bleyer discloses the stillage is separated into at least one of high protein solids fractions, a stickwater fraction and oil fraction. The mechanical separation can be achieved with methods such as hydrocyclones, centrifugation, decanter centrifugation etc.. The stillage can be separated into a light phase which is substantially oil and a heavy phase which is substantially stickwater and high-protein solids. The light phase can be separated to produce a low solids stickwater fraction and oil fraction. The stickwater fraction can be recycled to the front end of the plant as enhanced backset to form the corn slurry. It can also be sent to the evaporators or any other suitable point in the ethanol fermentation process. The de-watered protein/oil fraction can be recovered as a separate product. Bleyer also discloses separating whole stillage into stillage and wet cake. ( see paragraphs 0032,0035,0053-0055,0067,0070-0082,0091,0097,0100)
For claim 5, Bleyer discloses high protein solids in stillage contains greater than 30% protein on a dry weight basis.
Bleyer does not disclose a shearing flow separator producing first underflow and first overflow having the characteristics as in claim 3, performing separation on the underflow and overflow as in claim 4, introducing diluent as in claim 6, and the separation mechanism as in claims 7,8.
Zavattari discloses a method for treating consumed glycol tube. Zavattari discloses separation can be carried out using hydrocyclone separator. In a hydrocyclone separator, water and particulates weighing less than a predetermined amount are generally discharged from an upper outlet, while liquid and particulates equal to or heavier than the predetermined weight are discharged from a lower outlet. ( see portion under the heading “ C. Separation of used and un-consumed abrasive grains)
Bleyer discloses separation of the diluted stillage can be carried out by known techniques including hydro-cyclone separator which is a type of shearing flow separator. As shown in Zavattari, separation in a hydro-cyclone separator will give an overflow fraction containing light substance while the underflow fraction contains heavier substance. When hydro-cyclone is used in Bleyer, it’s obvious the overflow fraction contains the lighter oil and lower solid material and the underflow fraction contains the heavier solids material. It would have been obvious to one of ordinary skill in the art to subject different portions of the underflow fraction and different portions of overflow fraction to different separation methods depending on the targeted products desired. All the claimed separating processes such as evaporation, centrifugation are well known as disclosed in Bleyer. Bleyer also disclosed to subject the different products to different separation processes depending on end product desired. For example, it would have been obvious to subject fraction containing oil to evaporation device which would produce steam and oil/syrup and to further subject the mixture to further separation to produce individual ingredient. Bleyer discloses repeated separations is conducted to isolate singular substance. In paragraph 0082, Bleyer discloses “ once the first stickwater fraction has been produced, the low specific gravity fraction containing oil and high protein solids can be further dewatered or concentrated. The de-watered protein/oil fraction can be recovered as a separate product”. This disclosure explicitly teaches repeated separations can be conducted to obtain separate product. The particular process and fraction selected is a result-effective variable which can readily be determined by one skill in the art through routine experimentation depending on the product targeted. Bleyer discloses in paragraph 0063 that diluting liquid for the whole stillage can includes thin stillage, water, steam, water phase etc.. Thus, it would have been obvious to one skilled in the art to introduce any portion of the diluent to the whole stillage and any point in the ethanol fermentation process.
Response to Arguments
Applicant's arguments filed 6/11/26 have been fully considered but they are not persuasive.
In the response, applicant argues that Bleyer produces distillers corn oil from thin stillage whereas the present invention produces distiller corn oil from whole stiller. This argument is not persuasive because it contradict the explicit disclosure in Bleyer. In paragraph 0061, Bleyer discloses “ therefore the stillage that is processed in the method herein can be whole stillage, containing approximately 8-10 suspended solids ( 11-13% total solids). Bleyer also discloses embodiment in which the whole stillage where the solids are reduced by adding diluted stillage which is the same as the claimed diluent. The process in Bleyer starts out with whole stillage and then adjusted with diluent just as in the claimed method. Applicant argues the claimed method produces distillers corn oil from the whole stillage having more distiller corn oil than the thin stillage and hence can produce more additional distillers corn oil than the conventional ethanol as well as Bleyer. This argument is not persuasive because it lacks factual evidence. Applicant has not established any difference on production over the Bleyer method; furthermore, the Bleyer’s process does not rely on thin stillage. The Bleyer process uses whole stillage; thus, it’s obviously inherent the process will have any inherent benefits resulting from such usage.
Applicant argues the new limitations. The amendment does not define over Bleyer as explained in the rejection above. The diluted stillage does not have to have additional water as asserted by applicant because the diluting liquid evaporate thin stillage, stick water vapor etc.. Furthermore, the claimed method recites that the diluent can be clear water phase.
Applicant further argues Zavattari does not disclose or suggest the steps in the amended and new claims. Zavattari is relied upon for specific teaching and applicant does not argue why the modification would not have been obvious.
Conclusion
THIS ACTION IS MADE FINAL. 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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August 31, 2026
/LIEN T TRAN/Primary Examiner, Art Unit 1793
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