DETAILED ACTION
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 .
Status of the Application
1. Claims 1-15 and 22-26 are pending and subject to examination on the merits. Claims 14-15 and 22-26 are withdrawn from consideration as being drawn to non-elected subject matter. Claims 1-13 are currently under examination.
Election/Restrictions
2. Applicant’s election without traverse of Group I (Claims 1-13) in the reply filed on 26 June 2026 is acknowledged.
Priority
3. Acknowledgment is made for the Applicant’s claim for domestic priority based on the US provisional application PRO 63/175,639 filed 16 April 2021.
Information Disclosure Statement
4. The information disclosure statements (IDS) submitted on 13 October 2023 and 06 have been considered by the examiner. See initialed and signed PTO/SB/08’s. November 2023.
Drawings
5. The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 313 and 315. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
6. Claim 2 is objected to because of the following informalities: the phrase “at least one of” should be amended to “selected from the group consisting of” to improve grammar. Appropriate correction is required.
7. Claim 7 is objected to because of the following informalities: periods in claims are not permitted except at the end of the claim and when used for abbreviations (See MPEP 608.01(m)). Thus, it is suggested to replace, for example, “a.” with “(a)” or “a)”, etc. and “i.” with “(i)” or “i)”, etc. It is noted, the preferred format for sequence identifiers is “SEQ ID NO:” – see MPEP 2422.01 and 37 C.F.R. 1821(c) and (d). It appears the period in the claim is an apparent typographical error for a comma.
Appropriate corrections are required.
FOR SEQ ID NO: - – See MPEP 2422.01 and 37 C.F.R. 1.821(c) and (d)
8. Claim 13 is objected to because of the following informalities: the phrase “and includes and includes” is an apparent typographical error and should be amended to recite “and includes.”
Claim Rejections - 35 USC § 112(b)
9. 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.
10. Claims 1-13 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.
11. Claim 1 recites the limitation "the corn oil" in line 1. There is insufficient antecedent basis for this limitation in the claim. It is unclear what “the corn oil” could be referencing, since there is no prior mention of corn oil. It is recommended to amend the claim to recite “a corn oil.” Claims 2-13 are included in the instant rejection, since they do not mitigate the issue.
12. The term “about” in claim 9 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what degree of change from the reference point “about” means, i.e. 0.1% or 10% from the recited reference point.
13. Regarding claim 9, the phrase "preferably" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "preferably"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
14. The term “about” in claim 10 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what degree of change from the reference point “about” means, i.e. 0.1% or 10% from the recited reference point.
15. Regarding claim 10, the phrase "preferably" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "preferably"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
16. The term “about” in claim 11 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what degree of change from the reference point “about” means, i.e. 0.1% or 10% from the recited reference point.
17. Regarding claim 11, the phrase "preferably" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "preferably"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
18. The term “about” in claim 12 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what degree of change from the reference point “about” means, i.e. 0.1% or 10% from the recited reference point.
19. Regarding claim 12, the phrase "preferably" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "preferably"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
20. The term “about” in claim 13 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what degree of change from the reference point “about” means, i.e. 0.1% or 10% from the recited reference point.
21. Regarding claim 13, the phrase "preferably" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "preferably"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 103
22. 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.
23. 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.
24. Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Urban et al (Urban et al., 2019, US 2019/0376002 A1—cited on the IDS dated 13 October 2023) as evidenced by McCurdy et al (McCurdy et al., 2024, US 12139657 B1—cited herein) and as evidenced by Healthline (Healthline, 2026, downloaded 10 July 2026 and provided as a PDF <https://www.healthline.com/nutrition/corn-oil >) and Fang (Fang, 2017, Iowa State University Dissertation—cited herein). Regarding claim 1, drawn to a method for enhancing corn oil yield in a bio-refinery fermentation process comprising obtaining an alcohol and by-products, including vegetable oil, from a grain feedstock through a processing that includes saccharification, fermentation, distillation, and separation to produce the alcohol and vegetable oil; isolating an emulsifier in the form of emulsions, defatted emulsions, emulsion precipitates, defatted emulsion precipitates, dried products thereof, or combinations thereof from the by-products; and recycling at least a portion of the emulsifier to one or more of the saccharification, the fermentation, the distillation, and/or separation to enhance recovery of the vegetable oil, Urban et al. teaches methods and systems for refining grain oil compositions (abstract), where specifically, Urban et al. teaches a method of producing a grain oil composition, specifically corn grain, where a grain oil composition feedstock is fed through a process including preparation, saccharification, fermentation, which ferments the sugars produced in the saccharification step by ethanologens to produce ethanol, and separation to produce corn oil, wherein the product after separation is fed into the thin stillage, evaporated, separated producing an emulsion and defatted emulsion, and wherein concurrently, the wet cake is fed into a dryer system to produce dried products (Figs. 1-3; paragraph 0041, paragraph 0049). Regarding claims 2-4, drawn to the emulsifier including a protein of globulin-1 (claim 2), an oil emulsion including the protein, globulin-1 (claim 3), and a defatted emulsion precipitate with the protein, globulin-1 (claim 4), Urban et al. teaches the emulsion of both corn germ and endosperm, where the most abundant protein in any emulsion is globulin-1 S allele precursor, as evidenced by McCurdy et al (Column 14; Table 6). Regarding claim 5, drawn to the presence of non-germ proteins in the emulsifier, Urban et al. teaches the emulsification process, wherein the germ and endo-germ can be separated and then recombined prior to the saccharification step (paragraph 0042). Regarding claim 6, where the emulsifier is a by-product of thin stillage, Urban et al. teaches thin stillage the subsequent creation of emulsifier in the downstream process (Figs. 1-2). Regarding claim 7, drawn to the saccharification and fermentations occurring simultaneously, Urban et al. teaches that the saccharification and fermentation can occur simultaneously in the same reactor (paragraph 0052). Regarding claim 9, drawn to the emulsifier including: (a) less than 10% protein, (b) 60-85%grain oil; and (c) less than 10% water, Urban et al. teaches grain oil composition feedstock with water to form an oil-water mixture having water in the amount of 5-50% based on the total volume of the oil-water mixture (v/v) (paragraph 008). Since corn oil does not contain protein and is a refined fat, the protein content is 0%, as evidenced by Healthline (p. 2, Summary).
Urban et al., as evidenced by McCurdy et al., and as evidenced by Healthline does not teach recycling at least a portion of the emulsifier to one or more of the saccharification, the fermentation, the distillation, and/or the separation to enhance recovery of the vegetable oil.
Fang teaches the recyclability of the thin spillage back to the emulsion with the addition of hydrolyzing enzymes and Tween™ 80 (p. 58, Conclusion; p. 61, Fig. 1).
Therefore, it 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 combine the teachings of Urban et al., as evidenced by McCurdy et al., and as evidenced by Healthline and Fang to devise a method to enhance corn oil production by obtaining ethanol and vegetable oil form a feedstock through a process including saccharification, fermentation, distillation, and separation to produce the alcohol and vegetable oil, isolating an emulsion, and recycling a portion of the emulsifier to one or more of the saccharification, fermentation, distillation, and separation to enhance the recovery of the vegetable oil to produce to increase the purity of the corn oil. One would be motivated to combine the teachings to arrive at the instant claims to reduce costs of production as taught by Fang (p. 58, Conclusion). There would be a reasonable expectation of success, yielding no surprising results when combining the teachings of Urban et al., as evidenced by McCurdy et al., and as evidenced by Healthline and Fang to enhance corn oil production utilizing a recycling step, since Fang teaches the recyclability of thin stillage back into the purification process.
Conclusion
25. All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CIARA A MCKNIGHT whose telephone number is (703)756-4791. The examiner can normally be reached M-F 8:00am-4:30pm.
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/CIARA A MCKNIGHT/Examiner, Art Unit 1656
/SUZANNE M NOAKES/Primary Examiner, Art Unit 1656
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