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 .
The amendments filed 4/8/26 overcome several of the rejections set forth under 35 USC 112(b) in the office action mailed 4/8/26. The remaining rejections under 35 USC 112(b), as well as the rejections set forth under 35 USC 102 and 103, are maintained below. The discussion of the rejections has been necessitated by the amendments. Newly added claims 21-22 are also rejected below under 35 USC 112(a) as well as 35 USC 103.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-22 are 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Newly added claims 21-22 require that the land management practices that limit use of fossil fuel inputs and maximize capture of atmospheric carbon are selected by a GHG auditing model. While the application as originally filed discloses the use of a GHG auditing model, and discloses land management practices for limiting use of fossil fuel inputs and maximizing capture of atmospheric carbon, there is no disclosure of specifically using the GHG auditing model to select land management practices that limit use of fossil fuel inputs and maximize capture of atmospheric carbon.
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 5-22 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.
In claims 5, 7, 13, and 15, as well as their dependent claims, it is unclear what is the “corresponding conventional fuel produced from fossil feedstock” used in determining the difference in carbon intensity or the difference in emissions (claims 2, 7, and 15). Different conventional fuels will have different carbon intensities and have different amounts of emissions involved in their production. Since “low carbon intensity biofuel” is defined by its relationship to the corresponding conventional fuel, and applicant has not set forth a definition under any other standard, “low carbon intensity biofuel” is also indefinite.
Claims 5, 13, and their dependent claims recite a step of implementing land management practices to “limit use of fossil fuel inputs” and to “maximize capture of atmospheric carbon by plant material of the Brassica carinata variety”. It is unclear what the reduced use of fossil fuel inputs is in comparison with, and also unclear how one would determine whether the capture of atmospheric carbon had been maximized. Newly added claims 21-22, which depend on claims 5 and 13 respectively, require that the land management practices be selected using a greenhouse gas auditing model, but this does not remedy the indefiniteness issues.
In claims 9, 12, 17, and 20, it is unclear what is a “normal irrigation amount required for another oilseed crop” and how it would be determined, and it is also unclear what is a “recommended amount of nitrogen fertilizer”.
Claim Rejections - 35 USC § 102
Claims 5-15, 17, and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lazzeri (Lazzeri, L., D’Avino, L., Mazzoncini, M., Antichi, D., Mosca, G., Zanetti, F., Del Gatto, A., Pieri, S., De Mastro, G., Grassano, N., Cosentino, S., Copani, V. Ledda, L., Farci, R., Bezzi, G., Lazzari, A., Dainelli, R., Spugnoli, P., “On Farm Agronomic and First Environmental Evaluation of Oil Crops for Sustainable Bioenergy Chains”, Ital. J. Agron., 2009, 171-180).
In the paragraph bridging the columns on page 172, Lazzeri discloses cultivating energy crops in rotation with food crops, and later in the right column of page 172, as well as section 2.2 on page 173, Lazzeri discloses planting Brassica carinata as an energy crop, meeting the limitations of step (a) of claims 5 and 13. In section 2.2 and Tables 1-2 on pages 173-174, Lazzeri discloses land management practices and low-input techniques for the cultivation of the Brassica carinata, meeting the limitations of step (a)(ii) of claims 5 and 13. In sections 2.2 and 2.3 on pages 173 and 175 Lazzeri discloses harvesting the crops, as recited in step (c) of claim 1 and step (a)(iii) of claims 5 and 13. In the paragraph bridging pages 177 and 178, Lazzeri discloses incorporation of crop residues into the soil. Based on the relative amounts of crop residue and seed open field yield reported in Table 4 on page 177 of Lazzeri, the amount of crop residue relative to the amount of plant material other than the grain for the Emilia Romagna crops and the Apulia crop (crop C corresponds to Brassica carinata) falls within the range recited in step (d) of claim 1 and step (a)(iv) of claims 5 and 13. In section 2.4 on page 175 and Table 5 on page 178, Lazzeri discloses extracting oil from the grain, as recited in step (e) of claim 1, step (b) of claim 5, and step (a)(v) of claim 13. In section 2.4 and Table 7 on page 179, Lazzeri further discloses obtaining biodiesel from the oil, meeting the limitations of step (f) of claim 1 and step (b) of claim 13.
Since Lazzeri discloses a method meeting all the method steps of claims 1 and 13, the biodiesel produced by the method will possess the recited properties regarding carbon intensity. Similarly, the oil extracted by the grain will be capable of producing biodiesel having the carbon intensity recited in claim 5, noting that claim 5 does not require a step of actually producing the biodiesel. Additionally, Lazzeri discloses in Table 7 on page 179 various biodiesel products derived from Brassica carinata having a carbon intensity of 35, 36, or 46 CO2eq/MJ, whereas conventional diesel has a carbon intensity of 102.4 CO2eq/MJ, leading to a carbon intensity differential within the ranges recited in claims 5 and 13, as well as dependent claims 7 and 15. Claims 5, 7, 13, and 15 are therefore anticipated by Lazzeri.
In the discussion on pages 177-178, Lazzeri discloses that the method leads to the sequestration of CO2 from the atmosphere, meeting the limitations of claims 8 and 17 for the case where the method comprises sequestering atmospheric CO2; it is noted that the specific amount of CO2 sequestration recited in those claims is recited as optional. In Table 2 Lazzeri indicates that the low input techniques use less nitrogen fertilizer than the high input techniques, meeting the limitations of claims 12 and 20 for the case where the land management practices include reducing use of inorganic nitrogen fertilizer. In the “Apulia” cultivation techniques disclosed in Table 2, Lazzeri discloses reducing nitrogen fertilizer by 50%, within the ranges recited in claims 9 and 17. In section 2.2 on page 173 Lazzeri discloses that the Brassica carinata is sown in the fall (end September-beginning October, or second half of November) and teaches that sunflower is sown in the spring, implying that the Brassica carinata is harvested in the spring. The regions of Italy where Lazzeri discloses growing Brassica carinata have warm temperate dry or warm temperate moist climates, and Lazzeri therefore meets the limitations of claims 10 and 19 for the cases where the growing environment is warm temperate dry or warm temperate moist. Lazzeri does not teach a fallow period between sowing the Brassica carinata and the sunflower, therefore meeting the limitations of claims 6 and 14. In the first paragraph of the left column of page 175, Lazzeri discloses that the harvesting can be done by a combine harvester, meeting the limitations of claims 11 and 17.
In light of the above, claims 5-15, 17, and 19-20 are anticipated by Lazzeri.
Claim Rejections - 35 USC § 103
Claims 8 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Lazzeri in view of Montemurro (Montemurro, F., Diacono, M., Scarcella, M., D’Andrea, L., Boari, F., Santino, A., Mastrorilli, M., “Agronomic performance for biodiesel production potential of Brassica carinata A. Braun in Mediterranean marginal areas.”, Italian Journal of Agronomy, 2016, 57-64).
The discussion of Lazzeri in paragraph 7 above is incorporated here by reference. Lazzeri discloses a method meeting the limitations of claims 5 and 13, but does not disclose specific food crops with which the Brassica carinata is rotated.
Montemurro, in the “Study sites” section in the left column of page 58, discloses carrying out a two-year rotation of Brassica carinata with cereal crops, meeting the limitations of claim 18, as well as claim 8 for the case where the first crop is a cereal crop.
It would have been obvious to one of ordinary skill in the art to use the cereal crops of Montemurro as the food crop in the method of Lazzeri, since Montemurro discloses throughout the reference that Brassica carinata can be grown successfully in rotation with cereal crops, and teaches best practices for growing Brassica carinata in such conditions.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Lazzeri in view of Hetherington (WO 2017/091891 A1).
The discussion of Lazzeri in paragraph 7 above is incorporated here by reference. Lazzeri teaches a method meeting the limitations of claim 13, but on page 177 teaches that the defatted seed meals obtained from Brassica carinata cannot be used as a feed due to the high level of glucosinolates.
In paragraph 21 Hetherington discloses a process for removing at least one glucosinate from a meal fraction of oilseed, and in paragraphs 26, 28, and 32 Hetherington discloses that the process that the process can be carried out on defatted meal from Brassica carinata. In paragraph 295 (Example 5) Hetherington discloses gluconate reduction of Brassica carinata (BC) to produce a meal destined for animal feed, and in paragraph 58 Hetherington discloses that animal feeds are formulations fed to livestock. In paragraph 5 Hetherington discloses that the meal produced from Brassica carinata is protein rich. Performing the glucosinate removal method of Hetherington on the defatted seed meals obtained from Brassica carinata of Lazzeri and using the product in an animal feed for livestock production therefore meets the limitations of claim 16.
It would have been obvious to one of ordinary skill in the art to perform the glucosinate removal method of Hetherington on the defatted seed meals obtained from Brassica carinata of Lazzeri and use the product in an animal feed for livestock production, since Hetherington teaches a method for overcoming the obstacles identified on page 177 of Lazzeri and paragraph 5 of Hetherington for the use of meal produced from Brassica carinata as an additive in animal feed for livestock, and since Hetherington teaches in paragraphs 5 and 76 that the meal is protein rich and low fiber.
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Lazzeri.
The discussion of Lazzeri in paragraph 7 is incorporated here by reference. Lazzeri discloses a method meeting the limitations of claims 5 and 13, including land management practices and low-input techniques for the cultivation of the Brassica carinata. Lazzeri does not specifically disclose selecting land management practices based on a greenhouse gas auditing model.
In section 2.2 on page 173, section 2.4 on page 175, and Tables 3 and 7, Lazzeri discloses greenhouse gas auditing for the various cultivation techniques disclosed in the reference, including calculations that take into account the DSM produced, which Lazzeri teaches on page 177 as effective in sequestering CO2 in soil.
It therefore would have been obvious to one of ordinary skill in the art to select a land management practice of Lazzeri with the use of a greenhouse gas auditing model, in order to reduce greenhouse has emissions as much as possible, in accordance with the goal set forth in page 172 of Lazzeri (“Starting from this approach, it is fundamental to increase the use of virtuous cultivation techniques in crop management (e.g. low inputs, crop rotations etc.) as much as possible in order to reduce Greenhouse gasses (GHG) emissions (Janssen et al., 2003) during cultivation phase and/or to increase the carbon sequestration potential after the incorporation of part of the biomass (crop residues, defatted seed meals).”)
Response to Arguments
Regarding the rejections set forth under 35 USC 112(b) in the office action mailed 1/20/26, the amendments filed 4/8/26 overcome the rejection of claims 8 and 17 regarding “minimal” land use change and claims 9 and 17 regarding the upper endpoint of the claimed range. Applicant’s arguments regarding the reduction in GHG emissions in claim 15 are persuasive and the rejection has been withdrawn.
Applicant’s arguments regarding the remaining rejections under 35 USC 112(b) have been considered but are not persuasive.
Regarding the indefiniteness of claims 5, 7, 13, and 15, applicant asserts that a person of ordinary skill in the art could determine what the corresponding fuel is, but neither the remarks nor the specification give any definition of “corresponding conventional fuel produced from fossil fuel feedstock”, or how the corresponding conventional fuel changes based on changes to the properties of the biofuel obtained by the claimed method. Applicant cites paragraph 7 of the specification, which states that “Those skilled in the art are aware that CI values for both fossil fuels and biofuels can change as LCA models and production methods evolve.”. This passage further demonstrates the indefiniteness of the claim limitation, since the CI values for both the biofuel produced by the claimed method and the corresponding conventional fuel may change in the future, and the claims do not specify a specific date for the CI values used to determine the scope of the claim.
Regarding the indefiniteness of claims 5 and 13, applicant argues that amending “reduce” to “limit” overcomes the rejection regarding that term, but it is still unclear what the use of fossil fuel inputs is limited in comparison to. Regarding the “maximize capture of atmospheric carbon” limitation, applicant simply asserts that one of ordinary skill in the art could “consider each option and using available tools and their common general knowledge” assess whether specific land management practices maximize the capture of atmospheric carbon. Applicant provides no evidence or reasoning to support this assertion. While the specification provides various examples of land management practices, the list of possible “land management practices” is essentially infinite, and it remains unclear how one of ordinary skill in the art would determine whether capture of atmospheric carbon had been maximized, rather than simply increased compared to some (unspecified) baseline.
Regarding the indefiniteness of “normal irrigation amount” and “recommended amount of nitrogen fertilizer” in claims 9, 12, 17, and 20, applicant argues that one of ordinary skill in the art would be able to determine these based on their “common general knowledge” and “available resources”, but the amounts arrived at via the common general knowledge of different people, or taught by different resources, can differ. It is unclear whether “normal” and “recommended” are intended to be synonyms or if a normal amount is different than a recommended amount.
Regarding the rejection set forth over Lazzeri under 35 USC 102, applicant argues that Lazzeri does not disclose a method for producing the claimed oil feedstock or biofuel that includes the step of cultivating Brassica carinata as an energy crop in rotation with food crops. To reject a claim as anticipated by a reference, the disclosure must teach every element required by the claim under its broadest reasonable interpretation. As discussed in the rejection, Lazzeri discloses all the elements of the claimed methods. In particular, on page 172 Lazzeri discloses the advantages of using energy crops in rotation with food crops, and the remainder of the disclosure of Lazzeri, which is directed to an exploration of the properties of certain energy crops including Brassica carinata, should be considered in this context. There is no indication in Lazzeri that the methods of producing oil and biofuel from Brassica carinata, or of returning crop residues to the soil, are inconsistent or mutually exclusive with the use of energy crops in rotation with food crops disclosed by Lazzeri.
Applicant also argues that Lazzeri does not disclose a biofuel having the claimed carbon intensity value relative to the conventional fuel. As noted by applicant, Lazzeri provides a comparison relative to rapeseed biodiesel, which is not a conventional fuel produced from fossil fuel feedstock. As discussed in the rejection, Lazzeri discloses in Table 7 biodiesel products having a carbon intensity differential relative to conventional diesel within the ranges recited in the claims.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771
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