DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Group I, claim 2, 6, 8, 14-16 and 21-32; in the reply filed on 01/15/2026 is acknowledged. The traversal is on the ground(s) that “…can be readily evaluated in one search without placing undue burden on the Examiner. That is, the claims are so interrelated that a search of one group of claims will reveal art to the others…”. This is not found persuasive because Group I requires a thin stillage comprises deoxynivalenol whereas Group II the thin stillage comprises one or more mycotoxins, which does not require deoxynivalenol, but rather other mycotoxins including aflatoxins, fumonisins or ochratoxin.
The inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries). The inventions of each group are directed to different inventions which are independent and distinct, each from the other. They have acquired a separate status in the art as a separate subject for inventive effect and require independent searches, as indicated by the different classification. Moreover, the search for each of the above inventions is not co-extensive particularly with regard to the literature search. Further, a reference which would anticipate the invention of one group would not necessarily anticipate or even make obvious another group. These inventions are distinct for the reasons given above and because the search required for one group is not required for the other groups, resulting in a serious burden for searching and examination of the claims. Thus, restriction for examination purposes as indicated is proper.
The requirement is still deemed proper and is therefore made FINAL.
Claim 33 and 34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/15/2026.
Application Status
Claim 2, 6, 8, 14-16 and 21-32 are under examination.
Claim 33 and 34 are withdrawn from examination.
Claim 2, 6, 8, 14-16 and 21-32 are rejected.
Claim Objections
Claim 21 is objected to because of the following informalities: claim 21, line 13 recites “deoxynivalenol” should be “the deoxynivalenol” since antecedent basis have been established in claim 21, line 9. Appropriate correction is required.
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.
Claim 23 is 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.
Claim 23 recites the limitation "the process of claim 21" in line 1. There is insufficient antecedent basis for this limitation in the claim. For examination purpose “the process” is considered “the biorefinery of claim 21”.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claim 2, 6, 8, 14-16 and 21-32 are rejected on the ground of nonstatutory double patenting over 1-29 of U.S. Patent No. 11,882,861 since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims of application 18/412,982 recites same features such as grain biorefinery comprising systems of fermentation, distillation, separation, evaporation, remediation of deoxynivalenol with same treatment compounds, wherein instant claims are not patentably distinct from claim 1-29 of U.S. Patent No. 11,882,861.
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance:
No art-based rejection is being provided because other available prior art does not teach or suggest singularly or in combination at least the limitations of the base claim 1 which requires a grain biorefinery.
The closest prior art is Lowe et al. (US 2013/0164795 A1, submitted IDS on 01/24/2024) discloses method of reducing mycotoxin contamination in distillers’ co-products (‘795, [0200]). Lowe discloses mycotoxin includes deoxynivalenol (‘795, [0200]). Lowe discloses the distiller co-products comprises syrup, lipids of thin stillage, and solids from a whole stillage (‘795, [0051]), wherein the distiller co-products are biorefinery process compositions (‘795, [0007]-[0008], Fig. 1c). Additionally, Lowe discloses the syrup, the lipids of the thin stillage, and the solids from the whole stillage are obtained after distillation (‘795, Fig. 1c). Lowe discloses the method comprising analyzing (determining) a presence of mycotoxins (deoxynivalenol) in the distillers’ co-products for the mycotoxin (deoxynivalenol) (‘795, [0200]) and adding (introducing) mold inhibitors, adsorbents materials (treatment compounds) to inhibit (react) to minimize (reduce) the presence of mycotoxins (deoxynivalenol) in the distillers’ co-products. Lowe discloses the methods comprising steps as recited in claim 25 see Fig. 1a and 1c; [0097]-[0103]. Lowe discloses the methods comprising steps with respect to whole stillage, thin stillage, wet cake, syrup, oil fractions, beer; see Fig. 1a and 1c; [0097]-[0103].
However, the prior art, Lowe alone or suggest a combination under obviousness, fail to teach the biorefinery as claimed in base claim 21 and claim 33 particularly a remediation system to react with one or more treatment compounds with the mycotoxin (deoxynivalenol) in the syrup downstream from the evaporation system. The combination of limitation as recited in the independent claim 21 and 33 are free of prior art.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG THI YOO whose telephone number is (571)270-7093. The examiner can normally be reached M-F, 7AM to 3PM.
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/HONG T YOO/Primary Examiner, Art Unit 1792