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 .
Claim Status
Claims 1-5 are pending:
Claims 1-5 are rejected.
Continuity
This application discloses and claims only subject matter disclosed in prior Application No. 17/170,295, filed 02/08/2021 and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application constitutes a continuation not a divisional because the restriction requirement in the parent application had been withdrawn at the time of allowance, therefore a double patenting rejection is applicable to the claims of the instant application.
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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. (12,006,377).
Regarding claim 1, the patent claims recite a method of separating starch in an ethanol plant comprising the steps of:
receiving corn from the ethanol plant in a dry fractionization system (see patent claim 10);
fractionating the corn into components including corn oil, corn fiber, corn grits, corn, endosperm flour and germ cake (see patent claim 10);
mixing said corn endosperm flour with water for conversion to sugar; feeding said corn grits to a hammermill (see patent claim 10);
combining said corn grits with said corn endosperm flour for conversion to sugar (see patent claim 10);
converting said sugar to ethanol (see patent claim 10);
producing a blended fiber by combining said corn fiber and said germ cake with recycled beer bottoms from the ethanol plant in a fiber blender (see patent claim 10);
blending in said fiber blender an amylase enzyme from the ethanol plant and a fiber centrate (see patent claim 10);
receiving said blended fiber in a fiber slurry tank; receiving fiber slurry from said fiber slurry tank and steam-heating said fiber slurry with a steam jet (see patent claim 10);
receiving said fiber slurry in a refiner (see patent claim 10);
exposing said fiber slurry to a high shear force in a refiner (see patent claim 10);
shredding the fiber and exposing starch embedded in the fiber components in said refiner and producing refined fiber (see patent claim 10);
receiving said refined fiber in a fiber liquefaction tank and converting starch contained therein to water-soluble dextrins for producing a converted fiber stream (see patent claim 10); and
receiving in said fiber wash system said converted fiber stream and producing fiber wash water for input to the ethanol plant (see patent claim 10).
Regarding claim 2, the patent claims recite the method according to claim 1, which includes the additional steps of:
providing a fiber decanter in said fiber wash system (see patent claim 12);
combining said fiber centrate with said fiber wash water in said fiber decanter (see patent claim 12);
said fiber wash system receiving a portion of the fiber centrate from the fiber decanter and combining same with the fiber stream and process water to produce fiber wash water (see patent claim 12); and
providing said fiber wash water as input to the ethanol plant (see patent claim 12).
Regarding claim 3, the patent claims recite the method according to claim 2, which includes the additional steps of:
producing fiber wet cake at approximately 35-40%wt solids with said fiber decanters (see patent claim 13); and
providing said fiber wet cake as input to the ethanol plant for further processing (see patent claim 13).
Regarding claim 4, the patent claims recite the method of claim 3, which includes the additional step of:
said dry fractionation system recycling said fiber centrate and sending portions to the fiber blender and the fiber wash system (see patent claim 14).
Regarding claim 5, the patent claims recite the method of claim 4, which includes the additional step of:
said fiber wash system washing soluble sugar and small particle size protein off of the converted fiber for producing washed fiber and fiber wash water (see patent claim 15).
Claim Rejections - 35 USC § 103
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 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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Javers (US 2016/0024406) in view of Christensen (USPN 8,123,864).
Regarding claim 1, Javers teaches a method of separating starch in an ethanol plant (see ABS) comprising the steps of:
receiving corn from the ethanol plant in a dry fractionization system (“DF 102 receives corn 101 as feedback”, see ¶59; Fig. 1 shows feedback 101 -> dry fractionation 102);
fractionating the corn into components including corn oil, corn fiber, corn grits, corn, endosperm flour and germ cake (bran 104 (fiber), endosperm 106, germ 108, see ¶30; Fig. 1 of process to produce of dry fractionation to produce separate components; Figs. 2-3 show milling/screen producing fines, mid-cut and overs; Germ sent to the corn oil extraction plant 110, see Fig. 1);
mixing said corn endosperm flour with water for conversion to sugar (Fig. 1 shows endosperm stream 106 -> slurry tank 116 -> liquefaction tank 102 -> fermentation 122, based on the process flow, the endosperm stream is eventually mixed and processed into fermentable sugars);
feeding said corn grits to a hammermill (“devices to mill or grind the corn 101 include….a hammer mill”, see ¶58);
combining said corn grits with said corn endosperm flour for conversion to sugar (“the process 100 adds water, enzymes, and the endosperm 106, with the hydrolysate into the slurry tank 116…in the slurry tank 116 and a residence time of about 30 to 60 minutes to convert the insoluble starch in the slurry to soluble starch…in the slurry tank 116 may include…grit”, see ¶32; Fig. 1 shows streams converging toward slurry tank/liquefaction);
converting said sugar to ethanol (biofuel 130 includes ethanol produced from the starch fermentation process, see ¶52);
…
receiving said blended fiber in a fiber slurry tank (slurry tank 116);
receiving fiber slurry from said fiber slurry tank and steam-heating said fiber slurry with a steam jet (“jet cooking process is used…will cook the slurry”, see ¶37);
receiving said fiber slurry in a refiner (the process of Fig. 7 downstream of the slurry tank 116);
exposing said fiber slurry to a high shear force in a refiner (“shearing device 712…to impart a high shear”, see ¶112);
shredding the fiber and exposing starch embedded in the fiber components in said refiner and producing refined fiber (“impart a high shear to the large suspended solids in the large suspended solids stream 710 without creating fines”, see ¶112; “stream in the mixing tank 706 may still contain starch and/or the food grade protein”, see ¶114; “third mechanical separation device 722 separates the fiber (i.e., bran 104) from the small particles and liquids stream”, see ¶114);
receiving said refined fiber in a fiber liquefaction tank (liquefaction tank 120 receiving stream 118 in the process shown in Fig. 7) and converting starch contained therein to water-soluble dextrins for producing a converted fiber stream (“process 100 has a liquefaction tank 120 in which the slurry has a residence time of about 20 to 30 minutes…breaks down the starch in the slurry into complex sugars called dextrins”, see ¶35); and
receiving in said fiber wash system said converted fiber stream and producing fiber wash water for input to the ethanol plant (“washes and removes the starch from the fiber”, see ¶118).
Javers does not teach producing a blended fiber by combining said corn fiber and said germ cake with recycled beer bottoms from the ethanol plant in a fiber blender; and blending in said fiber blender an amylase enzyme from the ethanol plant and a fiber centrate.
In a related field of endeavor, Christiensen teaches a method and apparatus for conversion of cellulosic material to ethanol (see ABS) comprising the step of producing a blended fiber by combining said corn fiber and said germ cake (“a method for conversion of cellulosic material. Such as chopped straw and corn Stover, chopped whole cereal and corn crops, bagasse wood chips and household waste, to ethanol and other products, the cellulosic material comprising primarily cellulose, lignin, hemicellulose and ash”, see C5/L14-20) with recycled beer bottoms (corresponds to stillage from stripper shown in Fig. 2) from the ethanol plant in a fiber blender (“to ethanol and other products”, see C16/L15-25); and blending in said fiber blender an …enzyme from the ethanol plant and a fiber centrate (“fiber fraction is subjected to enzymatic liquefaction and saccharification”, see ABS).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the method of Javers by incorporating the steps of producing a blended fiber by combining said corn fiber and said germ cake with recycled beer bottoms from the ethanol plant in a fiber blender and blending in said fiber blender an amylase enzyme from the ethanol plant and a fiber centrate as disclosed by Christensen because it is applying a method/technique for the benefit of adjusting a preparation mixture to achieve optimum liquefaction conditions (Christensen, see C10/L25-35) which is desirable in Javers for liquefaction (see Fig. 1 of Javers).
Regarding claim 2, Javers and Christensen teach the method according to claim 1, which includes the additional steps of: providing a fiber decanter in said fiber wash system (Javers, “a first mechanical separation device 704, which separates components such as the larger solid particles from the smaller particles and liquids stream”, see ¶109; Javers, mechanical device may include a decanter, see ¶137); combining said fiber centrate with said fiber wash water in said fiber decanter (Javers, Fig. 7 shows wash-water recycle streams); said fiber wash system receiving a portion of the fiber centrate from the fiber decanter and combining same with the fiber stream and process water to produce fiber wash water (Javers, recycle liquid streams from separation devices, see ¶117); and providing said fiber wash water as input to the ethanol plant (Javers, recycled liquid streams returned to process, see ¶66 and ¶117-¶118).
Regarding claim 3, Javers and Christensen teach the method according to claim 2, which includes the additional steps of: producing fiber wet cake at approximately 35-40%wt solids with said fiber decanters (Javers, “solids being processed in 116, 120 have about 30% to 44% (w/w)”, see ¶92; Javers, the solids processed in 116, 120 are treated by decanters, see ¶109 and ¶137; Javers, the prior art range disclosed in Javers overlaps the claimed range); and providing said fiber wet cake as input to the ethanol plant for further processing (Javers, recycled liquid streams returned to process, see ¶66 and ¶117-¶118).
The examiner takes note of the fact that the prior art range of 30-40% wt completely encompasses the claimed range of 35-40% wt. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Javers (US 2016/0024406) in view of Christensen (USPN 8,123,864) and further in view of Lee (USPN 9,732,302).
Regarding claim 4, Javers and Christensen teach the method of claim 3.
The combination of Javers and Christensen does not teach that the additional step of: said dry fractionation system recycling said fiber centrate and sending portions to the fiber blender and the fiber wash system.
In a related field of endeavor, Lee teaches a system and method for separating high value by-products from grains used for alcohol production (see ABS) comprising the additional step of: said dry fractionation system recycling said fiber centrate and sending portions to the fiber blender and the fiber wash system (fiber separation or decanter 319 and see Fig. 4a shows the “recycling” loop).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the method of Javers by incorporating the additional step of: said dry fractionation system recycling said fiber centrate and sending portions to the fiber blender and the fiber wash system as disclosed by Lee for recycling to the fiber blender and to the fiber centrate because said step provides the benefit of recovering fine germ and protein (Lee, see C14/L65) which are desirable components in Javers (Javers, see Fig. 1).
Regarding claim 5, Javers, Christensen and Lee teach the method of claim 4, which includes the additional step of: said fiber wash system washing soluble sugar and small particle size protein off of the converted fiber for producing washed fiber and fiber wash water (Javers, “liquids and fine suspended particles stream 708 may include starch that has been washed and removed from the fiber”, see ¶111; Javers, “the fiber or large solids helps to wash the starch and gluten or protein away from the fiber”, see ¶122).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EKANDRA S. MILLER-CRUZ whose telephone number is (571)270-7849. The examiner can normally be reached M-Th 7 am - 6 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin L. Lebron can be reached at (571) 272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EKANDRA S. MILLER-CRUZ/Primary Examiner, Art Unit 1773
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