DETAILED ACTION
Status of the Application
Claims 1-8, 10-15, 17-19 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, 15, 17, and cancellation of claims 9, 16 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Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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The previous objection to the title of the invention for not being descriptive is hereby withdrawn by virtue of Applicant’s amendment.
Priority
As previously indicated, upon cursory review of the specification of US application No. 15/945,773 filed on 04/05/2018, it was found that there is no support for (i) a method where after liquefaction of the slurry to obtain a liquefied carbohydrate solution, and after the separation of a first portion of said liquefied carbohydrate solution into a liquid and solid portion, the liquid portion of the first portion of the liquefied carbohydrate solution is subjected to yet another separation step to obtain a first solids portion and a first liquid portion, (ii) a method where the carbohydrate stream is only produced by liquefaction without saccharification, (iii) a genus of particle size separation devices, or (iv) a carbohydrate stream having a dextrose equivalent (DE) of at least 5 DE. Applicant argues that with regard to the additional separation (filtration) step, Figure 4 shows step 212, which is after liquefaction 207 to provide a first solids portion and a first liquid portion, citing paragraph [051]. Applicant also states that the specification as originally filed refers to the saccharification step 210 in optional terms citing paragraph [047] and that the application also discloses saccharification and fermentation as a single step citing paragraph [0011]. Applicant states that saccharification as shown in Figure 4 is optional and can instead be combined with fermentation in a single step.
Applicant’s arguments have been fully considered but not deemed persuasive to grant domestic priority to the claims to the filing date of U.S. Application No. 15/945,773. The claims have been amended such that the genus of particle size separation devices previously recited, and a carbohydrate stream having a dextrose equivalent (DE) of at least 5 DE is no longer an issue. With regard to a method where the carbohydrate stream is only produced by liquefaction without saccharification, Applicant’s argument regarding the disclosure of saccharification as an option and not a requirement, have been found persuasive. However, the Examiner disagrees with Applicant’s contention that the specification of U.S. Application No. 15/945,773 as originally filed, including Figure 4 and paragraph [0051], provides support to a method where after liquefaction of the slurry to obtain a liquefied carbohydrate solution, and after the separation of a first portion of said liquefied carbohydrate solution into a liquid and solid portion, the liquid portion of the first portion of the liquefied carbohydrate solution is subjected to yet another separation step to obtain a first solids portion and a first liquid portion.
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Figure 4 has been reproduced above. Claims 1 and 17 as currently presented read “prior to subjecting any portion of the liquid portion to a second biochemical process, separating a portion of the liquid portion..”. From this recitation, it is clear that the additional separation step has to occur before another biochemical process (‘second” biochemical process), which according to Figure 4 and the specification is saccharification. Fermentation is the “first biochemical process” in view of the recitation in claim 1 of “a second portion of the liquefied carbohydrate solution…directly to a first biochemical conversion process” and what is shown in Figure 4. Figure 4 clearly shows that separation step 212 is a separation that occurs after saccharification. Moreover, paragraph [0051] of U.S. Publication No. 2019/0309377 states:
[0051] After the saccharification step 210 (but before any potential fermentation or processing of the sugar stream), so as to provide a more desirable sugar stream, the saccharified sugar stream can be subjected to an optional sugar separation step 212. The sugar separation step 212 filters a generally liquefied solution (about 60% to about 80% by volume), which includes sugar, free oil, protein, fine solids, fiber, grit, and germ, and which has a total solids fraction of about 30%, with a range of about 20% to about 40%, but higher or low solids fractions can be produced, but may not be economical here. In particular, the sugar separation step 212 can include a rotary vacuum filter, micro-filter, membrane filtration, precoat/diatomaceous earth filter, decanter, centrifuge, disc centrifuge, cyclone, dorclone, or the like, to accomplish substantial separation of the solids portion, primarily fiber, germ, and grit, which can include protein, from the liquid sugar portion, which primarily includes sugar (e.g., dextrose), residual oil, and fine solids. The solids portion (retentate), which has a total solids fraction of about 39%, may be sent on to the fermentation step 214, as discussed further below. In one example, the filter screen size here may be from about 0.1 microns to about 100 microns. In another example, the filter screen size may be from about 5 microns to about 50 microns. Due to the input of water, the sugar stream can have a total solids fraction of 20-30%. In this example, the sugar stream here may be considered purified or refined enough because the total insoluble (unfermentable) solids fraction of the stream is less than 7%. In another example, the total insoluble (unfermentable) solids fraction of the stream is less than or equal to 5%. In another example, the total insoluble (unfermentable) solids fraction of the stream is less than or equal to 3%. In another example, the total insoluble (unfermentable) solids fraction of the stream is less than or equal to 1%. In still another example, the total insoluble (unfermentable) solids fraction of the stream is less than or equal to 10%, 15%, 20%, 25%, or 30%.
It is abundantly clear from paragraph [0051] that separation step 212 is one that occurs after saccharification. Therefore, while it is agreed that the specification states that saccharification is optional, a second sugar separation as shown in Figure 4 and described in paragraph [0051] is a sugar separation after saccharification and not an additional separation of the liquid stream after separation step 208. In other words, separation step 212 is not an additional separation after liquefaction step 207 or after separation step 208 as asserted by Applicant as evidenced by the specification and Figure 4. It is reiterated herein that there is no mention in the specification or shown in Figures 4-8 of an additional solid/liquid separation of the liquid fraction that is obtained from the solid/liquid separation step immediately after liquefaction, let alone a step where the solids portion obtained from the additional solid/liquid separation is rejoined with the solid portion obtained from the solid/liquid separation step immediately after liquefaction. Therefore, claims 1-8, 10-15, 17-19 are not granted domestic priority to US application No. 15/945,773. The effective filing date for the methods of claims 1-8, 10-15, 17-19 is the filing date of the instant application, 11/3/2023.
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 1-19 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 Applicant’s amendments to claims 1, 17 and cancellation of claim 16, this rejection is hereby withdrawn.
Claim Rejections - 35 USC § 112(a) or First Paragraph (pre-AIA )
Claims 1-8, 10-15, 17-19 remain 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
This rejection has been discussed at length in the prior Office action. It is maintained for the reasons of record and those set forth below.
Applicant argues that Figure 4 shows separation step 212, which provides the additional separation at sugar separation 212, which is after liquefaction 207 to provide a first solids and a first liquid portion, citing paragraph [0051]. Applicant states that the specification refers to the saccharification step as optional. Applicant states that the specification discloses saccharification and fermentation simultaneously. Applicant is of the opinion that there is support in the originally filed application for a method where the carbohydrate stream is only produced by liquefaction without saccharification and where there is another separation step to obtain a first solids portion and a first liquid portion in claims 1 and 17.
Applicant’s arguments have been fully considered but not deemed persuasive to overcome the instant rejection. Applicant’s argument regarding the disclosure of saccharification as an option and not a requirement, has been found persuasive. However, the Examiner disagrees with Applicant’s contention that the specification of U.S. Application No. 15/945,773 as originally filed, including Figure 4 and paragraph [0051], provide support to a method where after liquefaction of the slurry to obtain a liquefied carbohydrate solution, and after the separation of a first portion of said liquefied carbohydrate solution into a liquid and solid portion, the liquid portion of the first portion of the liquefied carbohydrate solution is subjected to yet another separation step to obtain a first solids portion and a first liquid portion.
As indicated above, claims 1 and 17 as currently presented read “prior to subjecting any portion of the liquid portion to a second biochemical process, separating a portion of the liquid portion..”. From this recitation, it is clear that the additional separation step has to occur before another biochemical process (‘second” biochemical process), which according to Figure 4 and the specification is saccharification. Fermentation is the “first biochemical process” in view of the recitation in claim 1 of “a second portion of the liquefied carbohydrate solution…directly to a first biochemical conversion process” and what is shown in Figure 4. It is reiterated herein that Figure 4 clearly shows that separation step 212 is a separation that occurs after saccharification. See Figure 4 reproduced above. Moreover, paragraph [0051] of U.S. Publication No. 2019/0309377 clearly states that that separation step 212 is one that occurs after saccharification. See paragraph [0051] reproduced above. Therefore, while it is agreed that the specification states that saccharification is optional, a second sugar separation as shown in Figure 4 and described in paragraph [0051] is a sugar separation after saccharification and not an additional separation of the liquid stream after separation step 208. It is reiterated herein that separation step 212 is not an additional separation after liquefaction step 207 or after separation step 208 as asserted by Applicant as evidenced by the specification and Figure 4. It is reiterated herein that there is no mention in the specification or shown in Figures 4-8 of an additional solid/liquid separation of the liquid fraction that is obtained from the solid/liquid separation step immediately after liquefaction, let alone a step where the solids portion obtained from the additional solid/liquid separation is rejoined with the solid portion obtained from the solid/liquid separation step immediately after liquefaction. Paragraphs [0046]-[0047] of U.S. Publication No. 2019/0309377 are reproduced below for the reader’s convenience.
[0046] After the liquefaction step 207 (but before any potential saccharification, fermentation, or other processing of the sugar stream), so as to provide a more desirable sugar stream, at least a portion of the liquefied sugar stream can be subjected to a solid/liquid separation step 208. In particular, the solid/liquid separation step 208, which may be optional, uses any suitable filtration device, e.g., a pre-concentrator, paddle screen, pressure screen, fiber centrifuge, decanter, and the like, to separate the liquid from the solid material. The screen openings can range from about 50 microns to about 500 microns and will be selected to desirably separate the fiber, grit, and germ particles from the liquid, which primarily includes the liquefied starch solution with small amounts of oil, free protein (mainly gluten), and starch. In one example, the screen openings are about 50 microns.
[0047] The solids portion from the solid/liquid separation step 208 can be sent, along with the optional portion of the liquefied starch solution from the liquefaction step 207, to the fermentation step 214. The liquefied starch solution from the solid/liquid separation step 208 can be sent to the saccharification step 210 whereat complex carbohydrate and oligosaccharides are further broken down into simple sugars, particularly single glucose sugar molecules (i.e., dextrose) to produce a liquefied mash.
While the specification states that the separation step 208 is not required (can occur) and also states that if it does, the liquid portion obtain from the separation step 208 can be sent to a saccharification step 210, there is nothing in the specification indicating that the separation step 208 can be followed by another separation step before a second biochemical process, such as saccharification. Therefore, contrary to Applicant’s assertions, there is no support in the originally filed application for a method where there is another separation step applied to a liquid portion obtained from the separation of the liquefied carbohydrate solution into an insoluble solids portion and a liquid portion as required by claims 1 and 17.
Due to the fact that the specification only discloses a single solid/liquid separation after liquefaction prior to saccharification, and the lack of description of an additional separation step for the liquid portion of the first portion of the liquefied carbohydrate solution, or the rejoining of the solids portion of the first portion of the liquefied carbohydrate solution with the first solids portion obtained from the additional separation step of the liquid portion of the first portion of the liquefied carbohydrate solution, one of skill in the art would not recognize from the disclosure that Applicant was in possession of the claimed invention.
Claim Rejections - 35 USC § 103 (AIA )
Claims 1-8, 10-15, 17-19 remain rejected under 35 U.S.C. 103 as being unpatentable over Jakel et al. (U.S. Publication No. 2019/0309377 published 10/10/2019).
This rejection has been discussed at length in the prior Office action. It is maintained for the reasons of record and those set forth below.
Applicant argues that Jakel is unavailable as prior art. Applicant states that the claims have been amended to more clearly define the invention. Applicant refers the Examiner to Figure 4, where it is alleged that the sugar separation step 212 provides the additional separation at sugar separation step 21, which is after liquefaction step 207, to provide a first solids portion and a first liquid portion, citing paragraph [0051]. Applicant states that the specification refers to the saccharification step as an optional step and that the specification states that saccharification and fermentation can occur simultaneously. Applicant submits that claims 1 and 17 find clear support in the parent application and that Jakel is unavailable prior art.
Applicant’s arguments have been fully considered but not deemed persuasive to overcome the instant rejection. The Examiner acknowledges the amendments made to claims 1 and 17 as well as Figure 4 and paragraph [0051] of the specification of U.S. Publication No. 2019/0309377. However, the Examiner disagrees with Applicant’s contention that Jakel is unavailable prior art.
As indicated above, claims 1 and 17 as currently presented read “prior to subjecting any portion of the liquid portion to a second biochemical process, separating a portion of the liquid portion..”. From this recitation, it is clear that the additional separation step has to occur before another biochemical process (‘second” biochemical process), which according to Figure 4 shown above and the specification is saccharification. It is reiterated herein that Figure 4 clearly shows that separation step 212 is a separation that occurs after saccharification. Moreover, it is abundantly clear from paragraph [0051] of U.S. Publication No. 2019/0309377 reproduced above that separation step 212 is one that occurs after saccharification. Therefore, while it is agreed that the specification states that saccharification is optional, a second sugar separation as shown in Figure 4 and described in paragraph [0051] is a sugar separation after saccharification and not an additional separation of the liquid stream after separation step 208. As previously indicated, separation step 212 is not an additional separation after liquefaction step 207 or after separation step 208 as asserted by Applicant as evidenced by the specification and Figure 4. Also, as indicated above, the specification as evidenced by paragraphs [0046]-[0047] reproduced above, states that the separation step 208 is not required (can occur) and that if present, the liquid portion obtain from the separation step 208 can be sent to a saccharification step 210, without any mention whatsoever of separation step 208 being followed by another separation step before a second biochemical process, such as saccharification. Therefore, claims 1-8, 10-15, 17-19 have not been granted domestic priority to US application No. 15/945,773. Since the effective filing date for the methods of claims 1-8, 10-15, 17-19 is the filing date of the instant application, 11/3/2023, the reference by Jakel et al. is deemed proper prior art.
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 1-19 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, 10-15, 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 10-14, 16 of copending Application No. 18/501,492. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
Claims 1-8, 10-15, 17-19 of the instant application 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.
Claims 1-8, 10-14, 16 of copending Application No. 18/501,492 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.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of claims 1-8, 10-14, 16 of copending Application No. 18/501,492 by adding another solid/liquid separation step, such as a filtration step, for the liquid portion obtained from the solid/liquid separation step after liquefaction but prior to saccharification, and directing the solids obtained from this additional solid/liquid separation to the fermentation process. A person of ordinary skill in the art is motivated to add this additional solid/liquid separation step for the benefit of removing more solid particles that could be sent to the fermentation process directly and obtaining a liquid fraction with less insoluble particles. One of ordinary skill in the art has a reasonable expectation of success at further adding an extra solid/liquid separation using filtration because the method of the claims 1-8, 10-14, 16 of copending Application No. 18/501,492 already uses several separation steps at different stages of the method to separate solids and liquids. The method of claims 1-8, 10-14, 16 of copending Application No. 18/501,492 with an additional solid/liquid separation step for the liquid portion obtained from the solid/liquid separation step after liquefaction but prior to saccharification, and the direction of the solids obtained from this additional solid/liquid separation to the fermentation process would anticipate the method of claims 1-8, 10-15, 17-19 of the instant application instant application. Therefore, the method of claims 1-8, 10-15, 17-19 of the instant application is deemed an obvious variation of the method of claims 1-8, 10-14, 16 of copending Application No. 18/501,492.
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