DETAILED ACTION
Status of the Application
Claims 1-8, 10-14, 16 are pending.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s amendment of claims 1, 13 and 16, and cancellation of claims 9, 15, and 17 as submitted in a communication filed on 11/3/2025 is acknowledged.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.
Specification
The previous objection to the title of the invention for not being descriptive is hereby withdrawn by virtue of Applicant’s amendment.
Terminal Disclaimer
The terminal disclaimer filed on 11/3/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11,505,838 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/13/2025 is acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112(b) or Second Paragraph (pre-AIA )
Claims 1-17 were 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 pre-AIA the applicant regards as the invention. In view of the amendment of claim 1 and the cancellation of claim 17, this rejection is hereby withdrawn.
Claim Rejections - 35 USC § 112(a) or First Paragraph (pre-AIA )
Claim 15 was 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. In view of the cancellation of claim 15, this rejection is hereby withdrawn.
Claim Rejections - 35 USC § 102 (AIA )
Claims 9, 13 were rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Jakel et al. (U.S. Publication No. 2019/0309377 published 10/10/2019). In view of the cancellation of claims 9 and the amendment of claim 13, which no longer encompasses subject matter that was not described in US application No. 15/945,773 (filed on 4/5/2018), this rejection is hereby withdrawn.
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 1-14, 16-17 were rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,505,838. In view of the timely submission of a terminal disclaimer disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11,505,838, this rejection is hereby withdrawn.
Claims 1-8, 10-14, 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 10-15, 17-19 of copending Application No. 18/501,501. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
Claims 1-8, 10-14, 16 of the instant application are directed in part to a method for producing a sugar stream from a grain feedstock, comprising: mixing ground grain particles derived from a feedstock of grain and/or grain components with a liquid to produce a slurry comprising starch; subjecting the slurry to liquefaction to provide a liquefied starch solution, which includes solids; prior to saccharification, separating a first portion of the liquefied starch solution, via a paddle screen, into a solids portion and a liquid portion, wherein the liquid portion includes starch, and subjecting a second portion of the liquefied starch solution, which comprises the remaining portion of the solids, directly to an alcohol fermentation process; thereafter, subjecting the liquid portion to saccharification to convert the starch to simple sugars and produce a saccharified stream that comprises the simple sugars; after saccharification but prior to further processing of the simple sugars, directly separating the entire saccharified stream, via a microfiltration device, into a first solids portion and a first liquid portion that comprises the simple sugars, wherein the first liquid portion comprises a sugar stream; and thereafter, rejoining the solids portion, obtained by subjecting the first portion of the liquefied starch solution to the separation via the paddle screen, with the first solids portion, obtained by subjecting the saccharified stream to the microfiltration device, to provide a rejoined solids portion, and separately subjecting the rejoined solids portion, which comprises residual sugars, directly to the alcohol fermentation process along with the second portion of the liquefied starch solution, which includes the remaining portion of the solids, whereby the residual sugars are fermented, wherein the sugar stream has a total unfermentable solids fraction that is less than or equal to 30% of a total solids content, wherein said method further comprises, after mixing the grain particles with the liquid to produce the slurry and prior to subjecting the slurry to liquefaction, separating the slurry into a slurry solids portion and a slurry liquid portion that comprises the starch, grinding the slurry solids portion to produce a ground slurry solids portion, and rejoining the slurry liquid portion with the ground slurry solids portion to reconstitute the slurry prior to subjecting the slurry to liquefaction, wherein at least a portion of the sugar stream is subjected to at least one of carbon filtration, ion exchange, or evaporation, followed by a sugar conversion process to produce a biochemical.
Claims 1-8, 10-15, 17-19 of copending Application No. 18/501,501 are directed in part to a method for producing a carbohydrate stream from a grain feedstock, comprising: mixing ground grain particles derived from a feedstock of grain and/or grain components with a liquid to produce a slurry comprising a carbohydrate; subjecting the slurry to liquefaction to provide a liquefied carbohydrate solution, which includes solids; thereafter, separating a first portion of the liquefied carbohydrate solution, via a separation device, into an insoluble solids portion and a liquid portion, wherein the liquid portion includes carbohydrates, and subjecting a second portion of the liquefied carbohydrate solution, which comprises the remaining portion of the solids, directly to a fermentation process (first biochemical conversion process); prior to subjecting any portion of the liquid portion to a saccharification process (second biochemical process), separating at least a portion of the liquid portion, via filtration, into a first solids portion and a first liquid portion that comprises the carbohydrates, wherein the first liquid portion comprises a carbohydrate stream; and thereafter, rejoining the insoluble solids portion, obtained by subjecting the first portion of the liquefied carbohydrate solution to the separation via the separation device, with the first solids portion to provide a rejoined solids portion, and separately subjecting the rejoined solids portion, which comprises carbohydrates, to the fermentation process (first biochemical conversion process) along with the second portion of the liquefied carbohydrate solution, which includes the remaining portion of the solids.
The specification of copending Application No. 18/501,501 discloses saccharification as a preferred embodiment of the genus of second biochemical processes that the first liquid portion that comprises the carbohydrate stream can be subjected to. The specification of copending Application No. 18/501,501 also discloses a method that requires separating the saccharified stream into a solid and liquid fraction, wherein the solid fraction is subjected directly to a fermentation process, as a preferred embodiment of the genus of methods claimed. Therefore, the method of claims 1-8, 10-14, 16 of the instant application is deemed an obvious variation of the method of claims 1-8, 10-15, 17-19 of copending Application No. 18/501,501 in view of the preferred embodiments disclosed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is in condition for allowance.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to DELIA M RAMIREZ, Ph.D., whose telephone number is (571) 272-0938. The examiner can normally be reached on Monday-Friday from 8:30 AM to 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert B. Mondesi, can be reached at (408) 918-7584. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
/DELIA M RAMIREZ/Primary Examiner, Art Unit 1652
DR
February 1, 2026