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 . 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 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.
DETAILED NON-FINAL ACTION
This is the initial Office Action (OA), on the merits, based on the 18/564,200 application filed on November 27, 2023. Claims 1-13 are pending. Claims 1-11 are examined, on the merits, in this Office action. The examined claims are directed to a method.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-11, in the reply filed on March 3, 2026 is acknowledged.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The Examiner has considered the information disclosure statements (IDS) submitted on 11/27/2023, 4/07/2025, 09/23/2025 and 12/23/2025. Please refer to the signed copy of the PTO-1449 form attached herewith.
Claim Objections
Claim 11 is objected to because of the following informality: Claim 11 mentions “A fraction separated and recovered according to the method of claim 1." However, claim 1 refers to a ‘process’ rather than a method.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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. The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. MPEP §2137.01.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kavakka (WO2020121140)(IDS of 04-07-2025) (also published as US20220018069, which is referenced herein).
Regarding claims 1-11, Kavakka discloses a process for separating components from crude tall oil comprising the steps of
a) providing a mixture comprising crude tall oil and an alcohol selected from a group consisting of: methanol, ethanol, iso-propanol, and mixtures thereof ([0018], claim 5, where methanol, ethanol, iso-propanol are identified),
b) bringing the mixture from step a) into contact with an ion exchange resin ([0019] and claim 6 mentions the potential use of silica, alumina, zeolite or polymeric resin bearing polar groups [implying an ion exchange resin]; for example, if the polymeric matrix features basic polar functional groups such as quaternary ammonium, it would be classified as a strongly basic anion exchange resin), and
c) recovering at least a first fraction and a second fraction, wherein each fraction comprises at least one component ([0001], [0012]-[0015], [0022]; claim 7).
Therefore, Kavakka discloses the claimed invention, except for the specific use of a strongly basic anion exchange resin.
However, as noted above, Kavakka mentions different possibilities including employing a polymeric resin bearing polar groups, or an ion exchange resin ([0019]). With respect to the ion exchange resin, there are limited possibilities: it could be either basic or acidic, with ‘strongly’ interpreted as the upper end of the respective pH range, and it could be either an anion or a cation, within the noted polar groups.
Given the limited identified choices with predictable solutions, when the claimed invention was effectively filed, it would have been obvious to one of ordinary skill in the art to choose a suitable ion exchange resin from among the stated choices and based on routine experimentation and optimization, with a reasonable expectation of success in achieving a desired outcome.
Additional Disclosures Included: Claim 2: One of the first or second fractions comprises unsaponifiables ([0008], [0011]); Claim 3: The first or second fractions comprises sodium salts of fatty acids and rosin acids ([0003], [0008], [0011]); Claim 4: The alcohol used in step a) is methanol ([0018], claim 1 analysis); Claim 5: The process further comprises: isolating Claim 6: Step b) is carried out at a temperature of from 300 C to 600 C ([0025], where it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a suitable temperature within the suggested guidelines); Claim 7: An amount of methanol in the mixture of step a) is at least 10 wt-% based on a total weight of the mixture of step a) (based on routine experimentation, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a suitable wt. percentage to achieve the desired result); Claim 8: The process according to claim 1,wherein phytosterols in the first fraction spontaneously crystallize ([0022], [0025]); Claim 9: The process according to claim the spontaneously crystallized phytosterols comprise beta-sitosterol ([0024]); Claim 10: The process further comprising:
producing a tall oil having an acid number of at least 175 from the second fraction ([0021]); and Claim 11: A fraction separated and recovered according to a the [process]
Conclusion
Examiner recommends that Applicant carefully review each identified reference and all objections/rejections before responding to this office action to properly advance the case in light of the pertinent objections/rejections and the prior art. With respect to the patentability analysis, Examiner has attempted to claim map to one or more of the most suitable structures or portions of a reference. However, with respect to all OAs, Examiner notes that citations to specific pages, columns, paragraphs, lines, figures or reference numerals, in any prior art or evidentiary reference, and any interpretation of such references, should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably disclosed and/or suggested to one having ordinary skill in the art. The use of publications and patents as references is not limited to what one or more applicant/inventor/patentee describes as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain. MPEP §2123.
Examiner further recommends that for any substantive claim amendments made in response to this Office Action, or to otherwise advance prosecution, or for any remarks concerning support for added subject matter or claim priority, that Applicant include either a pinpoint citation to the original Specification (i.e. page and/or paragraph and/or line number and/or figure number) to indicate where Applicant is drawing support for such amendment or remarks, or a clear explanation indicating why the particular limitation is implicit or inherent to the original disclosure.
Electronic Inquiries
Any inquiry concerning this communication or an earlier communications from the examiner should be directed to Hayden Brewster whose telephone number is (571) 270-1065. The examiner can normally be reached M-Th 9 AM - 4 PM.
Alternatively, to contact the examiner, Applicant may send a communication, via e-mail or fax. Examiner’s direct fax number is: (571) 270-2065. Examiner's official e-mail address is: "Hayden.Brewster@uspto.gov." However, since e-mail communication may not be secure, Examiner will not respond to a substantive e-mail unless Applicant’s communication is in accordance with the provisions of MPEP §502.03 & related sections that discuss the required Authorization for Internet Communication (AIC). Nonetheless, all substantive communications will be made of record in Applicant’s file.
To facilitate the Internet communication authorization process, Applicant may file an appropriate letter, or may complete the USPTO SB439 fillable form available at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf, preferably in advance of any substantive e-mail communication. Since one may use an electronic signature with this particular form, Applicant is encouraged to file this form via the Office’s system for electronic filing of patent correspondence (i.e., the electronic filing system (Patent Center)). Otherwise, a handwritten signature is required. In addition to Patent Center, Applicant can submit their Internet authorization request via US Postal Service, USPTO Customer Service Window, or Central Fax. Examiner can also provide a one-time oral authorization, but this will only apply to video conferencing. It is improper to request Internet Authorization via e-mail.
Examiner interviews are available via telephone, in-person, and via video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) form available at http://www.uspto.gov/interviewpractice, or Applicant may call Examiner, if preferable. Applicant can access a general list of patent application forms at either https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012 (applications filed on or after September 16, 2012) or https://www.uspto.gov/patent/forms/forms (applications filed before September 16, 2012). Note that the language in an AIR form is not a substitute for the requirements of an AIC, where appropriate. The mere filing of an Applicant Initiated Interview Request Form (PTOL-413A) or a Letter Requesting Interview with Examiner, in EFS-Web, may not apprise Examiner of such a request in a timely manner.
If attempts to reach the Examiner are unsuccessful, Applicant may reach Examiner’s supervisor, Bobby Ramdhanie at 571-270-3240. The central fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HAYDEN BREWSTER/Examiner, AU 1779
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