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, claims 1 - 19 in the reply filed on May 14, 2026 is acknowledged. The traversal is on the ground(s) that it would not place undue burden on the Examiner to search the subject matter of the claims of Group I and II (claim 20 as amended). This is not found persuasive because the invention of Group II is to and apparatus classified in F25B 31/026 and F25J 3/067; requiring differing search strategies or search queries.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1 – 19 are under Examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on January 17, 2024 was filed before the mailing date of the non-final office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. However, the Information Disclosure Statement received on January 17, 2024, did not include the name of the author of Non-Patent Literature reference number 2 under the "Non-Patent Literature” section of the IDS. For this reason those references have been lined through. Applicant is required to provide this information. 37 CFR 1.98 (b)(5).
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 13, 14 and 16 – 19 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, regards as the invention.
Claim 13 recites the limitation "the used CO2" in lines 1 and 2 for a total of 3 instances. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation "the used CO2" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 is rejected for failing to interrelate the method of compressing CO2 with extracting one or more oils. Because of the lack of relationship between the two methods the claim is indefinite and lacks clarity.
Claim 17 recites the limitation "the CO2 that is formed" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 18 recites the limitation "the CO2 that is formed" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 17 – 19 are rejected for being dependent upon 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.
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.
Claim(s) 1 – 5, 7 – 10, 12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Ciftci et al. (Journal of agricultural and food chemistry, 2012).
The rejected claims cover, inter alai, a method of extracting one or more oils, the method comprising: compressing CO2 gas produced by fermentation of a grain, to form supercritical CO2 (scCO2), wherein the fermentation of the grain forms a spent grain; [[and]] extracting the one or more oils from the spent grain with the scCO2; and separating the oil and the scCO2.
Dependent claims 2 – 5 further limit the grain and/or spent grain. Dependent claim 7 further limit the location of the starting materials. Dependent claim 8 further limits the pretreatment of the grain. Dependent claim 9 further limits the compressing conditions. Dependent claim 10 further limits the extraction conditions. Dependent claim 12 further limits the conditions for separating the extracted oil. Dependent claim 15 further limit the oil separation conditions.
However, Ciftci was concerned with extracting the lipids of corn DDGS using supercritical CO2 (SC-CO2). Ciftci studied the effects of extraction parameters, namely temperature and pressure, on the recovery of corn distiller’s dried grains with solubles (DDGS) lipids. (pp. 12482, last para. rt. col.). Ciftci states:
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Further, the process for SC-CO2 extraction of Ciftci is carried out in a semicontinuous mode by pumping SC-CO2 through a fixed bed of DDGS particles, depressurizing the CO2 to precipitate the lipid extract after the extraction cell, and releasing the expended CO2 into the atmosphere. (pp. 12483, left col. para. 3, ln 3 – 6). In the process, CO2 is compressed to the desired pressure by using a diaphragm compressor with a maximum rating of 69 MPa. The extraction vessel is heated with an electrical heating jacket. (pp. 12483, left col. para. 3, ln 9 – 13).
Ciftci notes that DDGS and carbon dioxide are coproducts of dry-milling ethanol process. DDGS is the dried residue remaining after the starch fraction is fermented to produce ethanol and CO2. (pp. 12482, left col. 1st para.).
Extraction is performed at temperatures of 50, 60 and 70°C and at pressures of 34.2, 42.1 and 49.6 MPa. (pp.12483, para. 4, ln 1 – 3). The extracted lipid fractions were collected over 30 min. intervals for a total extraction time of 340 min. Extracts were collected in a cold trap after depressurization valve. (pp. 12483, para. 4, ln 3 – 7).
The difference between the instantly claimed invention and Ciftci is as follows: the fermentation of the grain and the extraction of spent grain are performed within five miles of one another (claim 7); the compressing of the C02 gas comprises compressing to a pressure of 2900 psig (20 MPa) to 7200 psig (49.6 MPa) and forming the scCO2 at a temperature of 100 °F (37.8° C) to 180 °F (82.20 C) (claim 9); and the separating is performed at a pressure of 1000 psig (6.9 MPa) to 2000 psig (13.8 MPa) and at a temperature of 800 F (26.70 C) to 2000 F (93.30 C) (claim 15).
Regarding the fermentation of the grain and the extraction of spent grain are performed within five miles of one another (claim 7), the Examiner turns to the teaching of Ciftci. The materials used in the extraction process of Ciftci were obtained from different sources in the same state, Ontario of Canada). The corn DDGS was obtained from Sanimax (Hamilton, ON, Canada), The CO2 was obtained from Praxair Canada Inc. (Mississauga, ON, Canada). (pp. 12483, left col. para. 1). According to Google the cities are 35 miles apart on the same coast. Based on the teaching of Ciftci the extraction process proceeded as intended with an extraction product containing high-value lipid. Thus, unless the is some unexpected results to be obtained by the processes taking place at plants within five miles of each other, this limitation is deemed obvious. These limitations are deemed to be obvious absent a showing of unexpected results.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35USC 103.
With regard to compressing of the C02 gas comprises compressing to a pressure of 2900 psig (20 MPa) to 7200 psig (49.6 MPa) and forming the scCO2 at a temperature of 100 °F (37.8° C) to 180 °F (82.20 C) (claim 9); the Examiner turns to the teaching of Ciftci. The prior art teaches that CO2 was compressed to the desired pressure. (pp. 12483, left col. para. 3). Also, it is disclosed that extraction is performed at temperatures of 50, 60 and 70°C and at pressures of 34.2, 42.1 and 49.6 MPa. (pp.12483, para. 4, ln 1 – 3). Ciftci was studying the effects of extraction parameters, namely temperature and pressure, on the recovery of corn distiller’s dried grains with solubles (DDGS) lipids. (pp. 12482, last para. rt. col.). As such, based on the fact that the extraction was conducted at temperatures of 50, 60 and 70°C and at pressures of 34.2, 42.1 and 49.6 MPa, it is reasonable for one of ordinary skill in the art to presume that the desired pressure and temperature of the compressed CO2 would be the temperature and pressure to be used for extraction. These limitations are deemed to be obvious absent a showing of unexpected results.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35USC 103.
Regarding the separating is performed at a pressure of 1000 psig (6.9 MPa) to 2000 psig (13.8 MPa) and at a temperature of 800 F (26.70 C) to 2000 F (93.30 C) (claim 15); the Examiner turns to the teaching of Ciftci. The prior art discloses that after extraction depressurizing the CO2 to precipitate the lipid extract, and releasing the expended CO2 into the atmosphere. (pp. 12483, left col. para. 3, ln 3 – 6). Also, the extracts were collected after the depressurization valve. (pp 12483, left col. para. 4 ln 5 – 6). As such, because Ciftci teaches that depressurization is used for separation, determining the desired separation temperature and pressure would be a matter of routine experimentation. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim Rejections - 35 USC § 103
Claim(s) 1, 2, 4, 7 – 10, 12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Pradhan et al. (Int. J. of Food Sciences and Nutrition, 2010).
The rejected claims cover, inter alai, a method of extracting one or more oils, the method comprising: compressing CO2 gas produced by fermentation of a grain, to form supercritical CO2 (scCO2), wherein the fermentation of the grain forms a spent grain; [[and]] extracting the one or more oils from the spent grain with the scCO2; and separating the oil and the scCO2.
Dependent claims 2 and 4 further limit the grain and/or spent grain. Dependent claim 7 further limit the location of the starting materials. Dependent claim 8 further limits the pretreatment of the grain. Dependent claim 9 further limits the compressing conditions. Dependent claim 10 further limits the extraction conditions. Dependent claim 12 further limits the conditions for separating the extracted oil. Dependent claim 15 further limit the oil separation conditions.
However, Pradhan discloses a process for supercritical carbon dioxide extraction of wheat distiller’s dried grain with solubles. (abstract). Figure 1 is a schematic diagram for production of wheat DDGS. In the extraction process of Pradhan carbon dioxide is compressed to the desired pressure using a diaphragm compressor. The extraction vessel is heated with a heating jacket, and temperature was controlled by thermostat. (pp. 832, 3rd para.). The extracts were collected in another vessel attached to the depressurization valve. (pp. 832, 3rd para.).
According to Pradhan, whole wheat and flour were fermented to make alcohol. The residue after alcohol was distilled, was fractionated into distillers’ grain, centrifuged solids and distillers’ solubles (pp. 830, Figure 1, & ln 5 – 7).
Extraction was conducted at a temperature of 50°C and a pressure of 30 MPa. (pp. 832, 3rd para.).
The difference between the instantly claimed invention and Ciftci is as follows: the fermentation of the grain and the extraction of spent grain are performed within five miles of one another (claim 7); the compressing of the C02 gas comprises compressing to a pressure of 2900 psig (20 MPa) to 7200 psig (49.6 MPa) and forming the scCO2 at a temperature of 100 °F (37.8° C) to 180 °F (82.20 C) (claim 9); and the separating is performed at a pressure of 1000 psig (6.9 MPa) to 2000 psig (13.8 MPa) and at a temperature of 800 F (26.70 C) to 2000 F (93.30 C) (claim 15).
Regarding the fermentation of the grain and the extraction of spent grain are performed within five miles of one another (claim 7), the Examiner turns to the teaching of Pradhan. The materials used in the extraction process of Pradhan were obtained from different sources in Canada). The wheat DDGS was obtained from North West Bio-energy Ltd. (Unity, Saskatoon, Canada), The CO2 was obtained from Praxair Canada Inc. (Edmonton, ON, Canada). (pp. 831, last). Based on the teaching of Pradhan the extraction process proceeded as intended with an extraction product containing high-value essential fatty acids. Thus, unless the is some unexpected results to be obtained by the processes taking place at plants within five miles of each other, this limitation is deemed obvious. These limitations are deemed to be obvious absent a showing of unexpected results.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35USC 103.
With regard to compressing of the C02 gas comprises compressing to a pressure of 2900 psig (20 MPa) to 7200 psig (49.6 MPa) and forming the scCO2 at a temperature of 100 °F (37.8° C) to 180 °F (82.20 C) (claim 9); the Examiner turns to the teaching of Pradhan. The prior art teaches that CO2 was compressed to the desired pressure. (pp. 832, 3rd para.). Also, it is disclosed that extraction is performed at temperatures of 50°C and at pressures of 30 MPa. (pp.832 3rd para.). Pradhan process was focused on the isolation of DDGS oil by SC-CO2 extraction process and then determine their chemical composition. (pp. 831, last sentence before “Materials and methods”). As such, based on the fact that the extraction was conducted at temperatures of a temperature of 50°C and a pressure of 30 MPa. (pp. 832, 3rd para.). Also, Pradhan recognizes that the properties of SC-CO2 extraction vary as a function of pressure and temperature, it is reasonable for one of ordinary skill in the art to presume that the desired pressure and temperature of the compressed CO2 would be the temperature and pressure to be used for extraction. These limitations are deemed to be obvious absent a showing of unexpected results.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35USC 103.
Regarding the separating is performed at a pressure of 1000 psig (6.9 MPa) to 2000 psig (13.8 MPa) and at a temperature of 800 F (26.70 C) to 2000 F (93.30 C) (claim 15); the Examiner turns to the teaching of Pradhan. The prior art discloses that extracts were collected in another vessel attached to the depressurization valve. (pp. 832, 3rd para.). As such, because Pradhan teaches that depressurization is used for separation, determining the desired separation temperature and pressure would be a matter of routine experimentation. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim Rejections - 35 USC § 103
Claim(s) 16 -19 are rejected under 35 U.S.C. 103 as being unpatentable over Pradhan et al. (Int. J. of Food Sciences and Nutrition, 2010).
The rejected claim covers, inter alia, a method of extracting one or more oils, the method comprising: compressing CO2 to form supercritical CO2 (scCO2), and/or collecting scCO2; and extracting one or more oils from an oil-bearing material comprising a plant product, algae, a waste product, an animal product, or a combination thereof.
Dependent claim 17 further limits the location of the CO2 formed and SC-CO2 collected as on site of the extraction. Dependent claim 18 further limits the location of the CO2 formed and SC-CO2 collected as off-site of the extraction. Dependent claim 19 further limits the method of forming the CO2 and/or SC-CO2.
However, Pradhan discloses a process for supercritical carbon dioxide extraction of wheat distiller’s dried grain with solubles. (abstract). Figure 1 is a schematic diagram for production of wheat DDGS. In the extraction process of Pradhan carbon dioxide is compressed to the desired pressure using a diaphragm compressor. The extraction vessel is heated with a heating jacket, and temperature was controlled by thermostat. (pp. 832, 3rd para.). The extracts were collected in another vessel attached to the depressurization valve. (pp. 832, 3rd para.).
According to Pradhan, whole wheat and flour were fermented to make alcohol. The residue after alcohol was distilled, was fractionated into distillers’ grain, centrifuged solids and distillers’ solubles (pp. 830, Figure 1, & ln 5 – 7).
The difference between Pradhan and the instantly claimed invention is as follows: the CO2 that is formed and/or the scCO2 that is collected is produced or available on-site at a site where the extracting is performed (claim 17); the CO2 that is formed and/or the scCO2 that is collected is produced or available off-site away from a site where the extracting is performed (claimed 18); and the CO2 and/or scCO2 is formed from chemical manufacture, fuel manufacture, pharmaceutical manufacture, agribusiness, food or beverage manufacture, electricity generation, fermentation of a grain to form a fermented grain that is the oil- bearing material, or a combination thereof (claimed 19).
Regarding the CO2 that is formed and/or the scCO2 that is collected is produced or available on-site at a site where the extracting is performed, the Examiner turns to the teaching of Pradhan. The prior art of Pradhan in Figure 1 discloses a schematic diagram wherein the CO2 is formed on site and the SCF extraction is conducted using SC-CO2 formed on site. (pp. 830). Thus this limitation is deemed to be obvious absent a showing of unexpected results.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35USC 103.
With regard to the CO2 that is formed and/or the scCO2 that is collected is produced or available off-site away from a site where the extracting is performed (claimed 18), the Examiner turns to the teaching of Pradhan. The CO2 was obtained from Praxair Canada Inc. (Edmonton, ON, Canada). (pp. 831, last). The CO2 was compresses with a diaphragm compressor to form the SC-CO2. Thus, unless the is some unexpected results to be obtained by the CO2 that is formed and/or the scCO2 that is collected is produced or available off-site away from a site where the extracting is performed, this limitation is deemed obvious. These limitations are deemed to be obvious absent a showing of unexpected results.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35USC 103.
Regarding the CO2 and/or scCO2 is formed from chemical manufacture, fuel manufacture, pharmaceutical manufacture, agribusiness, food or beverage manufacture, electricity generation, fermentation of a grain to form a fermented grain that is the oil- bearing material, or a combination thereof (claimed 19); the Examiner turns to the teaching of Pradhan. In the prior art of Pradhan Figure 1 discloses the CO2 is formed by fermentation of the ground wheat. Also, Praxair is a manufacturer of CO2. Thus, unless the is some unexpected results to be obtained by the CO2 and/or scCO2 is formed from chemical manufacture, fuel manufacture, pharmaceutical manufacture, agribusiness, food or beverage manufacture, electricity generation, fermentation of a grain to form a fermented grain that is the oil- bearing material, or a combination thereof, these limitations are deemed obvious. These limitations are deemed to be obvious absent a showing of unexpected results.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35USC 103.
Art Made of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. 4,495,207 (Christianson et al.), discloses production of food-grade corn germ product by supercritical fluid extraction. Stahl (J. Agric. Food Chem., 1980), discloses extraction of seed oils with liquid and supercritical carbon dioxide. Pradhan, et al. (Journal of Food Engineering, 2010) (Pradhan 2), discloses the following:
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Allowable Subject Matter
Claims 6 and 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30).
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692
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