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 .
Election/Restrictions
Applicant’s election with traverse of Group II, claims 18-19 and 21-23, in the reply filed on 08/07/2026 is acknowledged. The traversal is on the ground(s) that Groups I and II share a special technical feature not taught by Ren in that the sophorolipids have a specific formula, and are acetylated, are a mixture of acidic and lactonic forms. This is not found persuasive because this feature is not shared between the groups. As discussed in the restriction requirement, the common technical feature of Groups I and II is a grinding aid comprising a glycololipid biosurfactant.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-9 and 12-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 08/07/2026.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure does not commence on a separate sheet in accordance with 37 CFR 1.52(b)(4) and 1.72(b). A new abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text.
The abstract of the disclosure is objected to because it is shorter than 50 words in length. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 18-19 and 21-23 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.
Claim 18 as amended recites the limitation "A grinding aid composition comprising a sophorolipid and a yeast culture comprising a sophorolipid" (see claim 18 at lines 1-2). It is not clear from this language whether the claim only requires one sophorolipid or is meant to require two separate sophorolipids, as the claim recites both “a sophorolipid” and “a yeast culture comprising a sophorolipid”.
For purposes of examination, Examiner treated claim 18 as though it recites a grinding aid composition comprising a yeast culture and a sophorolipid, i.e., as though only one sophorolipid is required, as any composition comprising a yeast culture comprising a sophorolipid already comprises a sophorolipid. Clarification is requested.
Claims 18 and 22 recite the limitation "traditional grinding aid components" (see claim 18 at line 2 and claim 22 at line 1); the meaning of “traditional” as claimed is not clear, and no definition for “traditional grinding aid” could be located in the specification. It is not clear what types of components would be considered to meet the limitation of a “traditional” grinding aid vs. a grinding aid that would be considered untraditional, rendering the metes and bounds of the claim indefinite.
For purposes of examination, Examiner treated “traditional grinding aid components” as meaning any additional grinding aid component other than the sophorolipid. Clarification is requested.
Claim 22 recites the plural limitation "the traditional grinding aid components" (see claim 22 at line 1), but depends from claim 2 which recites “one or more traditional grinding aid components” (see claim 18 at line 2). It is not clear whether claim 22 is meant to refer to the “one or more” grinding aid components positively recited in claim 18, or if claim 22 is actually meant to require more than one grinding aid components.
For purposes of examination, Examiner treated claim 22 as though it recites “the one or more traditional grinding aid components”. Clarification is requested.
Claim 23 recites the limitation "wherein the chemical surfactant is triethanolamine… or any combination thereof" (see claim 23 at lines 1-3); however, the chemical surfactant is optional in claim 22, from which claim 23 depends, and is not required, and it is not clear from the language of claim 23 that the chemical surfactant is required. It is not clear whether claim 23 requires the chemical surfactant, or whether the chemical surfactant is still optional but, if present, must meet the limitations recited by claim 23.
For purposes of examination, Examiner treated claim 23 as though it recites wherein the one or more traditional grinding aid components include a chemical surfactant, i.e., as though a chemical surfactant is required. Clarification is requested.
Claims 19 and 21 are included herein as each depends from a claim which is indefinite for reasons set forth above.
Claim Rejections - 35 USC § 102
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 18-19 and 21-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Farmer, et al. (WO-2021189049-A1) (hereinafter, “FARMER”).
Regarding claim 18, FARMER teaches a composition comprising a sophorolipid and a yeast culture comprising a sophorolipid (see FARMER at pg. 3, lines 9-12 and pg. 7, line 19 – pg. 8, line 15, pg. 9, lines 26-29, pg. 11, lines 6-16, and pg. 12, lines 7-11) and one or more traditional grinding aid components (see FARMER at pg. 8, lines 6-14, and pg. 23, line 31 – pg. 24, line 31, teaching additional ingredients such as water, surfactants, etc., i.e., traditional grinding aid components).
FARMER does not explicitly mention that the composition is a grinding aid composition; however, this is merely directed toward an intended use of the composition rather than being a limitation of the composition itself, and is not considered to limit the present claims. Any composition as claimed by the present claim would be expected to be able to perform the intended use of being used as a grinding aid. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "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). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
Regarding claim 19, FARMER teaches a composition according to claim 18, wherein the yeast culture is a Starmerella sp. and/or a Candida sp. yeast (see FARMER at pg. 3, lines 16-19, pg. 11, lines 15-16, and pg. 13, lines 22-25).
Regarding claim 21, FARMER teaches a composition according to claim 18, wherein the yeast is in a spore form (see FARMER at pg. 3, lines 16-21).
Regarding claim 22, FARMER teaches a composition according to claim 18, wherein the traditional grinding aid components are selected from one or a combination of the following: a) chemical surfactant; b) polymer; c) water; d) acrylic polymer dispersant; e) rheology modifier; f) alcohol; g) glycol; h) phenol; i) lignosulfate; j) ketone; k) acid; 1) hydrocarbon; m) fatty acid; or n) fatty acid salt (see FARMER at pg. 8, lines 6-14, pg. 15, lines 24-25, pg. 16, line 5, and pg. 22, line 1 – pg. 24, line 31, teaching components including water, surfactants, polymers, dispersants, viscosity modifiers (i.e., rheology modifiers), alcohols, glycols, acids, phenolic compounds, sulfates, ketones, hydrocarbons, fatty acids, fatty acid salts, etc.).
Regarding claim 23, FARMER teaches a composition according to claim 22, wherein the chemical surfactant is triethanolamine (TEA), triisopropanolamine, propylene glycol, TEA acetate, polyglycol phenol ether, or any combination thereof (see FARMER at pg. 24, line 17, teaching propylene glycol).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CATHERINE CASE whose telephone number is (703)756-5406. The examiner can normally be reached M-Th 7:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached on (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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