Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Claim Status
Claims 1-31 are pending. Claims 1-31 are under examination. Claims 1-31 are rejected. No claims allowed.
Filing Receipt
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Claim Interpretation
The claims are directed to a product produced by degumming a lipid-containing compound (LCC). The process steps are interpreted to be product by process limitations and are not given patentable weight, MPEP 2113. However, the claimed product must be obtainable from a specific starting material. For example, a product found only in fish oil cannot be obtained from beef tallow.
The original disclosure does not define the LCC nor the product. However, the original disclosure does offer exemplifications of both.
The specification and claims list a wide variety of starting material LCC’s
(feedstocks) from tallow/rendered fat to crude degummed soy oil (See paragraph 38 of the specification). Thus, a wide variety of LCC’s as feedstocks are contemplated by the original disclosure.
Regarding the product, one criticality of the claimed product is low contaminant concentrations. Especially, low phosphorous (P) concentrations to alleviate catalyst poisoning. P being below 3ppm (current claim 5).
The original disclosure does not define steps that lead to the claimed product but rather exemplifies steps that may lead to the product. These exemplified steps are the claimed steps, and the steps in the specification.
Additionally, the specification recites “It should be understood that the invention can be practiced with modification and alteration, and that the disclosed technology be limited only by the claims and the equivalents thereof” (par. 17). Thus, equivalent processes that lead to the claimed product are contemplated.
Due to broad exemplifications of the starting materials and steps, prior art that teaches the steps of current claim 1 or the equivalents thereof, would have necessarily achieved the current product.
Concerning the word “compound”, applicant is allowed to be their own
lexicographer (MPEP 2173.01). The word “compound” lacks a definition in the original disclosure. Therefore, the word “compound” is also given the plain meaning. With compact prosecution in mind, the claimed compound can be a composition or a compound.
The claimed product was not defined in the original disclosure but rather
exemplified. Moreover, the claimed product appears to be the “degummed LCC”.
With respect to the claimed degummed lipid-containing compound (DLCC), this appears to be the claimed product. The product is interpreted to be a low contaminant containing or pure composition or compound wherein phosphorous is below 3ppm (See current claim 5).
Concerning the claimed intermediate partially-degummed LCC, this too is only exemplified in the specification and not defined. Thus, the intermediate can be a composition or a compound. With that said, the existence of the intermediate is not required for the existence of the claimed product.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-31 are rejected under 35 U.S.C. 101 because the claimed invention is directed to natural phenomenon without significantly more. The claim(s) recite(s) “a degummed LCC” (lipid-containing compound). This judicial exception is not integrated into a practical application because no additional elements of a degummed lipid are recited in the claims that add any meaningful limitation. For example, palmitin (a triglyceride having three palmitic acids (ppp)) is found in tuna oil. See USPGPub2016/0229785 (p. 8, Table 8). Naturally occurring PPP is interpreted to be structurally and functionally identical to the claimed degummed LCC. Because there is no difference between the claimed and naturally occurring LCC. Therefore, the claimed LCC is not integrated into a practical application. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims are directed towards a lipid found in nature.
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.
Claims 1-31 are 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.
The “a degummed LCC” in the last line of claim 1 may be referring to the “a product” in line 1 of claim 1. However, the “a degummed LCC” in the last line of claim 1 may not be referring to the “a product” in line 1 of claim 1. Clarification is needed. The “a product” in line 1 of claim 1 may have undisclosed limitations apart from the claimed “a degummed LCC” in the last line of claim 1. Clarification is needed.
This argument is being applied to claim 15. Wherein the “a purified LCC” may or may not be the claimed “a product” in line 1 of 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.
Claim(s) 1, 3-31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pham et al. (Selective Extraction of Polyunsaturated Triacylglycerols Using a Novel Ionic Liquid Precursor Immobilized on a Mesoporous Complexing Adsorbent, American Institute of Chemical Engineers, Biotechnol. Prog., Vol. 25, No. 5, pp.1419-1426 Published 2009) as evidence by Oroskar (USPGPub 2016/0229785, Published 08-2016).
Pham et al. disclose separated palmitin as seen below (p. 1420, Table 1).
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Palmitin is found in fish oil as evidence by Oroskar (p. 8, Table 8). The above compound is the current product, DLCC and purified LCC of claim 15. The above product is depicted to be devoid of P and metals and other contaminants.
This anticipates the claims.
Claim(s) 1, and 4-31 is/are rejected under 35 U.S.C. 102(a)(1) as being
anticipated by Hamden et al. (Modulatory Effect of an Isolated Triglyceride from Fenugreek Seed Oil on of α-Amylase, Lipase and ACE Activities, Liver-Kidney Functions and Metabolic Disorders of Diabetic Rats, Journal of Oleo Science, 66, (6) pp.633-645 Published 2017).
Hamden et al. disclose a purified yellow oil, (11Z)-11-eicosenoic acid 2,3 bis[((
9Z,12Z,15Z)-1-oxo-9,12,15 octadecatrien-1-yl)oxy]propyl ester as seen immediately
below (p. 634 and 636).
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The above compound is the current product, DLCC and purified LCC of claim 15. The above product is depicted to be devoid of P and metals and other contaminants. The above product comes from the Fenugreek (Trigonella foenum-graecum)seed (p. 634).
This anticipates the claims.
Claim(s) 1, 4-8 and 10-31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Deffense (US Patent 6,407,271, Patent date 06-2002).
Deffense disclose the degumming of soy bean oil with an overall phosphorous
content of 2.1 ppm and iron at 0.04 ppm (Example 5). The degummed soy bean oil is
the current product.
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The “sunflower oil” in line 24 of Example 5is a typographical error and should be “soybean oil”. The reason being, Deffense disclose addition of an inorganic acid to a fatty substance to “dissociate the phospholipid-metal complexes and to facilitate the complexation of the metals with a aqueous solution of sodium EDTA intimately mixed to the oil”. (column 2, lines 7-16). In order for the sodium EDTA to come into contact with the original oil treated with the inorganic acid, the sodium EDTA in Example 5 would have to be added to the soybean oil that was treated with the phosphoric acid in Example 5.
The delecithinated soybean oil is the currently claimed “receiving an LCC”.
The addition of the phosphoric acid to the soybean oil is the partial-degumming step due to the dissociation of the phospholipid-metal complexes. The addition of the sodium EDTA (current chelate) is the step of degumming the partially-degummed LCC.
Concerning the current product, due to the methods of the prior art being substantially identical to those of the claimed invention, the product of the prior art is substantially identical to the product as currently claimed. See MPEP 2112.01 I. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Without specific correlations among specific starting materials with specific steps leading to specific claimed products, the process limitations are not deemed necessary to lead to the claimed product.
This anticipates the claims.
Claim(s) 1, 4-8 and 10-31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abhari et al. (USPGPub 2022/0033731, Published 02-2022).
Abhari et al. disclose the following chelated fats oil and grease (FOG). Wherein metals and phosphorous are substantially removed.
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Abhari et al. disclose the chelated FOG is utilized for biodiesel production via hydrodeoxygenation (par. 24). With phosphorous below the currently claimed concentrations and the metals at low concentrations and the utility of the chelated FOG being identical to the current utility, the product of the prior art is interpreted to be the product of the current invention.
This anticipates the claims.
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.
Claim(s) 1-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deffense (US Patent 6,407,271, Patent date 06-2002) and Saint John’s (How to Render Beef Tallow, pp. 1-11, Published 11-2020) and as evidence by Appropedia (pp. 1-2, Published 04-2006).
Scope of the Prior Art
The teachings of Deffense are in the above 102 rejection and are incorporated by reference.
Additional teachings are as follows. Deffense teach sources of fatty substances utilized in the processes are from animals (Column 1, lines 40-50).
Ascertain the Differences
Deffense does not teach the use of beef tallow and/or rendered fat.
Secondary References
Saint John’s teach tallow is rendered beef fat (p. 1).
Obviousness
It would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have utilized the rendered beef fat/beef tallow taught by Saint John’s as a source of a fatty substance in the processes taught by Deffense to arrive at the current invention with a reasonable expectation of success. The ordinary artisan would have done so to satisfy a source of animal fatty substances. The expectation of success stemming from the fact that fatty substances from animals can be utilized in the processes of Deffense. Beef Tallow melts above 30C as evidence by Appropedia page 2.
Claim(s) 1-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abhari et al. (USPGPub 2022/0033731, Published 02-2022) and Saint John’s (How to Render Beef Tallow, pp. 1-11, Published 11-2020) and as evidence by Appropedia (pp. 1-2, Published 04-2006).
Scope of the Prior Art
The teachings of Abhari et al. are in the above 102 rejection and are incorporated by reference.
Additional teachings are as follows. Abhari et al. teach sources of animal fats utilized in the processes are from edible tallow (page 9, par. 62).
Ascertain the Differences
Abhari et al. does not teach the use of rendered fat.
Secondary References
Saint John’s teach tallow is rendered beef fat (p. 1).
Obviousness
It would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have utilized the rendered beef fat/beef tallow taught by Saint John’s as a source of an animal fats in the processes taught by Abhari et al. to arrive at the current invention with a reasonable expectation of success. The ordinary artisan would have done so to satisfy a source of animal fats. The expectation of success stemming from the fact that animal fats can be utilized in the processes of Abhari et al. Beef Tallow melts above 30C as evidence by Appropedia page 2.
Claim(s) 1, 4-8 and 10-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abhari et al. (USPGPub 2022/0033731, Published 02-2022) and Taipabu et al. (Production of renewable fuels and chemicals from fats, oils, and grease (FOG) using homogeneous and heterogeneous catalysts: Design, validation, and optimization, Chemical Engineering Journal, 424, 130198, pp. 1-19 Published 05-2021).
Scope of the Prior Art
The teachings of Abhari et al. are in the above 102 and 103 rejections and are incorporated by reference.
Additional teachings are as follows. Abhari et al. teach compositions utilized in the processes can contain higher than 5 wt.% free fatty acids (page 9, par. 68).
Ascertain the Differences
Abhari et al. does not teach the oleic acid being higher than 5 wt.%.
Secondary References
Taipabu et al. teach yellow and brown grease having over 5 wt.% oleic acid.
Obviousness
It would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have utilized the yellow and brown grease tallow taught by Taipabu et al. as a source of LCC having greater than 2% oleic acid in the processes taught by Abhari et al. to arrive at the current invention with a reasonable expectation of success. The ordinary artisan would have done so to satisfy a source of FOGs having high free fatty acid (FFA) content. The expectation of success stemming from the fact that FOGs having high FFA can be utilized in the processes of Abhari et al.
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 1-31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of copending Application No. 18/368,409.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the copending subject matter. For example, 18/368,409 claims the following.
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18/368,409 does not claim the current product. However, both claim sets produce the “a degummed LCC”. Thus, the current product would have been produced by the ordinary artisan practicing the invention of 18/368,409. The methods of the copending application and those currently claimed are substantially identical. Substantially identical methods yield substantially identical products. See MPEP 2112.01 I. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Concerning current claims 6 and 7, these limitations are encompassed by claim 5 of 18/368,409. Current limitations of a FFA above 4% overlaps with the range above 2% as claimed in 18/368,409.
Concerning the phosphorous content below 10ppm, this range overlaps 3ppm in 18/368,409.
Concerning the claimed oleic acid, the ordinary artisan in need of a definition of particular FFA’s within the scope of the copending claims would have looked to the specification and found oleic acid on page 3, paragraph 7.
MPEP 2144.05 I.: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
This is a provisional nonstatutory double patenting rejection because the
patentably indistinct claims have not in fact been patented.
Claims 1-31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-39 of copending Application No. 18/507,845 in view of Deffense (US Patent 6,407,271, Patent date 06-2002) and Saint John’s (How to Render Beef Tallow, pp. 1-11, Published 11-2020) and as evidence by Appropedia (pp. 1-2, Published 04-2006).
18/507,845 claims the following.
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18/507,845 does not claim the use of an acid before the chelate step when producing the claimed product.
However, Deffense teach the use of phosphoric acid prior to the chelate step (column 2, lines 7-16).
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
Additionally, the disclosure and teachings of Deffense and Saint John’s are in the above 102 and 103 rejections and are incorporated by reference.
As a reminder, the current specification allows for the invention to be practiced with modification and alteration, and that the disclosed technology be limited only by the claims and the equivalents thereof” (par. 17). The claims in the copending application are interpreted to be equivalent practices arriving at the currently claimed product.
This is a provisional nonstatutory double patenting rejection.
Claims 1-31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of copending Application No. 18/507,722.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the copending subject matter.
18/507,722 claims the following.
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18/507,722 does not claim the addition of the chelate in claim 1. However, 18/507,722 claims the following.
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As a reminder, the current specification allows for the invention to be practiced
with modification and alteration, and that the disclosed technology be limited only by the claims and the equivalents thereof” (par. 17). The claims in the copending application are interpreted to be equivalent practices arriving at the currently claimed product.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
Claims 1-31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of copending Application No. 18/368,435.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the copending subject matter.
18/368,435 claims the following.
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18/368,435 does not claim the addition of the chelate in claim 1. However, 18/368,435 claims the following.
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Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
As a reminder, the current specification allows for the invention to be practiced
with modification and alteration, and that the disclosed technology be limited only by the claims and the equivalents thereof” (par. 17). The claims in the copending application are interpreted to be equivalent practices arriving at the currently claimed product.
This is a provisional nonstatutory double patenting rejection.
Claims 1-31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of copending Application No. 18/368,454 in view of Deffense (US Patent 6,407,271, Patent date 06-2002) and Saint John’s (How to Render Beef Tallow, pp. 1-11, Published 11-2020) and as evidence by Appropedia (pp. 1-2, Published 04-2006).
18/368,454 claims the following.
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18/507,845 does not claim the use of an acid before the chelate step when producing the claimed product.
Deffense teach the use of phosphoric acid prior to the chelate step (column 2, lines 7-16).
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
Concerning the LCC, 18/507,845 in claim 2 allows for other LCC in claim 1. Thus, the claimed LCC may or may not be inedible rendered fat.
Additionally, the disclosure and teachings of Deffense and Saint John’s are in the above 102 and 103 rejections and are incorporated by reference.
This is a provisional nonstatutory double patenting rejection.
As a reminder, the current specification allows for the invention to be practiced
with modification and alteration, and that the disclosed technology be limited only by the claims and the equivalents thereof” (par. 17). The claims in the copending application are interpreted to be equivalent practices arriving at the currently claimed product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLAINE G DOLETSKI whose telephone number is (571)272-2766. The examiner can normally be reached M-F 7-4 EST.
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/B.G.D/Examiner, Art Unit 1692 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
Prosecution Insights