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 .
The status of the claims stands as follows:
Pending claims: 1-18
Withdrawn claims: 14-18
Claims currently under consideration: 1-13
Currently rejected claims: 1-13
Allowed claims: None
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-13) in the reply filed on 10/07/2025 is acknowledged.
Claims 14-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/07/2025.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Warnings
Applicant is advised that should claim 3 be found allowable, claim 4 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Objections
Claim 4 is objected to because of the following informalities:
In claim 4, “wherein subjection at least a portion of the second liquid portion, including the oil, comprises subjecting” should be read as “wherein subjecting at least a portion of the second liquid portion, including the oil to an oil separation step comprises subjecting”.
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.
Claims 1-13 are rejected under 35 U.S.C. 112(b) 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.
Claims 1, 3, 4, 10, 11, 12, and 13 recite an “oil co-product” being obtained by the process. The term “co-product” implies that there is another product that is being produced during the process. However, the present claims do not recite another product being produced with the oil; therefore, the claim is indefinite. For the purpose of this examination, the term “oil co-product” will be interpreted as meaning one or more product(s) comprising or consisting of oil.
Claim 12 also recites a step of “separating the milled whole stillage byproduct stream” after “milling the portion of the whole stillage byproduct stream”. However, the phrase “separating the milled whole stillage byproduct stream” suggests that the entirety of the whole stillage byproduct stream was milled despite the claim 11, from which claim 12 depends, and the preamble of claim 12 stating that a portion of the whole stillage byproduct stream was milled. Therefore, the claim is indefinite. For the purpose of this examination, the phrase “separating the milled whole stillage byproduct stream” will be interpreted as meaning that the milled portion of the whole stillage byproduct stream was milled.
Claims 2, 5, 6, 7, 8, and 9 are rejected by reason of dependency from claim 1.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee (US 2014/0053829; cited on IDS).
Regarding claim 11, Lee teaches a process comprising: separating a whole stillage byproduct stream into an insoluble solids portion and a liquid portion [0107]; and subsequently milling the insoluble solids portion to break up the fiber and germ and release oil [0108]. The insoluble solids portion contains fiber and germ [0088] and thus corresponds to the “at least a portion of a whole stillage byproduct stream, which includes fiber and germ” recited in present claim 11. Since Lee discloses the claimed method step, Lee discloses a method for producing an oil co-product from a whole stillage product as presently claimed.
Regarding claim 12, Lee teaches the invention as described above in claim 11, including the method further comprising: separating the milled portion of the whole stillage byproduct stream into an insoluble solids portion; and a liquid portion comprising oil from the milling step (corresponding to fiber and thin stillage, respectively, produced during the fiber/protein separating step) [0089]-[0090]. Lee teaches that a distillers dried grain (DDG) is produced from the insoluble solids portion [0108]. Lee teaches that the method further comprises: directing the liquid portion to a pre-oil/pre-protein separation step, wherein the pre-oil/pre-protein separation step produces an oil stream which may then be subjected to an oil/protein emulsion breaking step and then to an oil purifying step to produce pure oil [0089], [0095]. Therefore, Lee discloses that the method further comprises subjecting the liquid portion containing the oil to an oil separation step to provide an oil co-product as presently claimed.
Regarding claim 13, Lee teaches the invention as described above in claim 12, including that the liquid portion containing the oil from the milling step is evaporated prior to the oil separation step to provide an oil co-product (corresponding to the overflow from the fiber/protein separating step goes to an evaporating step and then the light phase from the evaporating step goes to an emulsion breaking step to recover oil) [0098].
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.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2014/0053829; cited on IDS).
Regarding claim 1, Lee teaches a method comprising: separating a whole stillage byproduct stream in a liquid/solid separating step into a first insoluble solids portion, containing fiber and germ, and a first liquid portion [0107]; subsequently milling the first insoluble solids portion to break up the fiber and germ and release oil [0108]; and combining the milled portion with the first liquid portion (corresponding to mixing the liquid phase from the fiber/protein separating step with the liquid phase from the solid/liquid separating step (Fig. 5A, [0090]). Lee also teaches that an insoluble solids portion of the whole stillage byproduct stream may be used to produce DDG with or without solubles [0108]. Lee also teaches that its method further comprises: subjecting a liquid portion containing oil to an oil separation step to provide an oil co-product (corresponding to an oil/protein emulsion breaking step and an oil purifying step) [0109].
Lee does not teach that: (a) only a portion of the whole stillage byproduct stream is separated into a first insoluble solids and a first liquid portion; (b) an upstream initial whole stillage byproduct is combined with the mixture comprising the first liquid portion and the milled portion; (c) after separating the portion of the whole stillage byproduct stream into the first insoluble solids portion and the first liquid portion, the remaining whole stillage byproduct stream, containing at least a portion of the milled portion and the first liquid portion, is separated into a second insoluble solids portion and a second liquid portion, wherein the second insoluble solids portion is used to produce the DDG with or without solubles and the second liquid portion includes at least a portion of the oil from the milling step. Lee also does not teach that: (d) the second liquid portion containing the oil is the liquid portion that is subjected to the oil separation step.
However, the claimed method would yield the same result as a method requiring the entire initial whole stillage byproduct stream to undergo separation into an insoluble solids portion and a liquid portion wherein: (a) a first insoluble solids portion and a first liquid portion were separated from a portion of whole stillage byproduct stream; (b) at least a portion of the first insoluble solids portion was milled; (c) the milled portion, the first liquid portion, and any remaining initial whole stillage were combined; (d) a second insoluble solids portion and a second liquid portion were separated from the resulting combination of the milled portion, first liquid portion, and any remaining initial whole stillage; and (e) an oil portion was separated from the second liquid portion, especially in light of the divided out portion of initial whole stillage and the divided out portion of the combined whole stillage, milled portion, and first liquid portion not being of any specific percentage of the initial whole stillage or combined whole stillage, milled portion, and first liquid portion (e.g., only one drop of the initial whole stillage can comprise the divided out portion so that any benefits ascribed to the claimed slipstream/ closed loop system are not observed). Since Lee discloses steps of: (1) separating a liquid portion and a solid portion from an initial whole stillage stream, (2) milling the solid portion, (3) producing DDG from the solid portion, and (4) producing oil from the liquid portion, Lee renders the claimed method obvious since Lee discloses an equivalent method that produces an oil co-product as presently claimed.
Regarding claim 2, Lee teaches the invention as described above in claim 1. Lee does not teach that the divided out portion of initial whole stillage byproduct stream is of the same composition as initial whole stillage byproduct stream which comprises the claimed slipstream/closed loop steps (i.e., the claimed slipstream/closed loop steps comprising dividing a portion of a whole stillage into a first insoluble solids portion and a first liquid portion; milling the first insoluble solids portion; and recombining the remaining initial whole stillage, milled portion, and first liquid portion). However, the objective of obtaining an oil co-product in Lee [0002] is achieved in a process similar to the claimed method as the method of Lee (e.g., the method of Lee does not include the claimed slipstream/closed loop steps), the method of Lee is considered to have insubstantial differences from the claimed method, especially in light of: (a) the claimed divided out portion of initial whole stillage not being of any specific percentage of the initial whole stillage (e.g., only one drop of the initial whole stillage can comprise the divided out portion so that any benefits ascribed to the claimed slipstream/closed loop system are not observed); (b) the present specification not providing any working examples comparing the claimed slipstream/closed loop system formed by the aforementioned steps to a method absent the claimed slipstream/closed loop system; (c) the present specification not stating any benefits of the claimed slipstream/closed loop system over a method absent the claimed slipstream/closed loop system; and (d) the present specification disclosing that the claimed slipstream/closed loop system is optional [0024]. Therefore, the claim is considered to be obvious in light of the teachings of Lee and in the absence of any demonstrated effect in the present specification.
Regarding claims 3 and 4, Lee teaches the invention as described above in claim 1, including that a liquid portion containing the oil is evaporated prior to the oil separation step to provide an oil co-product (corresponding to the overflow from the fiber/protein separating step goes to an evaporating step and then the light phase from the evaporating step goes to an emulsion breaking step to recover oil) [0098]. Lee does not disclose that the liquid portion is a second liquid portion produced after a slipstream/closed loop process. However, the claimed method comprising the slipstream/closed loop process is rendered obvious as described above in the rejection of claim 1.
Regarding claim 5, Lee teaches the invention as disclosed above in claim 1, including removing fine fiber from the liquid portion [0094]. Although Lee does not teach subsequent milling of the fine fiber, a skilled practitioner would have been motivated to mill the grain prior to fermentation to release starch for improved glucose conversion and/or mill the whole stillage after fermentation to release oil for improved back end recovery, thereby rendering the method step of milling the fine fiber portion obvious. Furthermore, the duplication of parts (i.e., steps as applied in the present method) “has no patentable significance unless a new and unexpected result is produced” (MPEP 2144.04.VI.B.) and performing this step on fiber obtained from any liquid portion produced during the method is obvious.
Regarding claim 6, Lee teaches the invention as disclosed above in claim 5, including a protein rich stream comprising the fine fiber is sent back to the front-end of the process so that the fine fiber will eventually become part of the whole stillage [0091], [0094]. Lee also teaches that its products include a fiber product produced by milling ([0076]; Fig. 5A). From this disclosure, a skilled practitioner would readily recognize that the portion comprising the fine fiber may be added back to the whole stillage so that fine fiber becomes part of the fiber byproduct. Therefore, fine fiber can be added back into any step in the method in order to increase the fiber content of the resulting fiber product, thereby rendering combining fine fiber with an insoluble solids portion and/or whole stillage byproduct obvious.
Regarding claim 7, Lee teaches the invention as disclosed above in claim 1, including milling an insoluble solids portion [0108]. Although Lee does not teach that the insoluble solids portion is a second insoluble solids portion, Lee teaches milling of an insoluble solids portion and therefore, it would have been obvious for a skilled practitioner to have milled any insoluble solids portion obtained from the method for the purpose of increasing protein and oil yield.
Regarding claims 8 and 9, Lee teaches the invention as disclosed above in claim 1, including separating the whole stillage byproduct stream includes separating the whole stillage byproduct stream via a paddle screen or a pressure screen into an insoluble solids portion and a liquid portion [0115], wherein the liquid portion includes oil from a milling step (corresponding to mixing the liquid phase from the fiber/protein separating step with the liquid phase from the solid/liquid separating step (Fig. 5A [0090])). Although Lee does not teach that the liquid portion is a second liquid portion or that the insoluble solids portion is a second insoluble solids portion, Lee teaches separation of a liquid portion and an insoluble solids portion and therefore, it would have been obvious for a skilled practitioner to have separated any liquid portion and an insoluble solids portion obtained from the method. Although Lee does not teach milling a second insoluble solids portion, a skilled practitioner would be motivated to mill the solids for improved back end recovery [0115], rendering the method step of milling the insoluble solids portion obvious. Furthermore, the duplication of parts (i.e., steps as applied in the present method) “has no patentable significance unless a new and unexpected result is produced”. MPEP 2144.04.VI.B.
Regarding claim 10, Lee teaches the invention as described above in claim 1, including the oil separation step comprises an oil recovery centrifuge to provide the oil co-product [0094].
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.
Claims 1-2, 5-9, and 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-12, 34, and 37 of co-pending Application No. 17/197,520 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 1 and 2 require the same method steps of co-pending claims 34 and 37; instant claim 5 requires the same method steps of co-pending claim 8; instant claim 6 requires the same method steps of co-pending claim 9; instant claim 7 requires the same method steps of co-pending claim 10; instant claim 8 requires the same method steps of co-pending claim 11; instant claim 9 requires the same method steps of co-pending claim 12; and instant claims 11 and 12 require the same milling, solid liquid separation, and oil separation steps of co-pending claims 34 and 37.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/KELLY P KERSHAW/Examiner, Art Unit 1791