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 .
Applicant’s response to restriction requirement of 6/5/26 is acknowledged. Applicant elected Group I (claims 1-6) and species 1, directed to facility of Group I wherein the first step is configured according to claims 2-3, with traverse.
In traversal of restriction requirement, applicant argues that, there is substantial commonality of features among Group I-II, and claims 1-7 and 21-33 should be examined together. He/she adds that the substantial commonality of the subject matter of claims 1 and 7 will necessitate an overlap in searches for said Groups and no substantial burden will be imposed on the examiner. Further, examination of claim 1-7 and 21-33 provides efficiency in early determination of the full scope of patent application, which is of great benefit to the public.
Next, in traversal of species election requirement, applicant argues that in view of the limited number of species identified in the restriction requirement and the substantial overlap of the claimed features, a search and examination of all species together would not impose a serious burden on the examiner and hence, the examiner should reconsider said species election requirement.
These arguments were fully considered but were found to be unpersuasive. Regarding the restriction requirement, it should be noted that firstly, instant application is not a 371 but a regular US case. Secondly, the invention of Group II is not even recited to be dependent on the utilization of Group I invention. Thirdly, in claim 7, the separation of a first emulsion from a stillage may be done by using precipitation methods using flocculants, wherein said flocculants have nothing in common with evaporators and/or centrifuges which are components of the “bioprocessing facility” of Group I and this justifies restriction of Groups I-II under US patent restriction practice. Therefore, in contrast to applicant’s view, rejoinder of Groups I-II, which are patentably distinct, does impose an undue burden of searching on the examiner.
With respect to species election traversal argument, the examiner maintains that 5 species rejoinder is time consuming and said number, in contrast to applicant’s view, is not too “limited”. Hence rejoinder of all said species of separate structure together does impose an undue burden of searching on the examiner as it extends the search and examination time/duration to beyond what the Office allows per application. However, applicant must rest assured that once the elected species becomes allowable, the examiner will consider searching additional species, one at the time, in compliance with 37 CFR 1.141. The examiner believes that this approach results in a thorough search of the elected subject matter, which is more beneficial to the public than what applicant suggests, which is lumping all claimed inventions (species) together to do an insufficient, inadequate and inaccurate search.
Therefore, currently the examiner finds no reason to rejoin Claims 7 and all claims 21-33 together with the elected invention.
In conclusion, restriction is maintained and is hereby made Final.
Upon further consideration, it became apparent that claim 5 belongs to a separate and patentably distinct invention than that of Group I. Hence, said claim is withdrawn from Group I. The examiner regrets any misunderstanding that said error may have caused applicant.
Claims 5, 7, 21-25, 32-33 are hereby withdrawn as drawn to non-elected invention.
DETAILED ACTION
Claims 1-4, 6 and 26-27, 29-31 and species (1) only are under examination on the merits.
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 1-4, 6, 26-27 and 29-31 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 claim 1 (and its dependent claims 2-4, 6, 26-27 and 29-30) it is unclear what is the difference between “a bioprocessing facility” of line 1 and “a bioprocessing facility” of line 2. Similarly, in claim 1, lines 7 and 9, applicant refers to “a first oil” and “a second oil” respectively. It is unknown if said phrases refer to an identical oil or different ones. Appropriate clarification is required. Claims 2-4, 6, 26-27 and 29-30 are merely rejected for depending from claim 1.
Claims 1-4, 6, 26-27 and 29-31 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 1 (and its dependent claims 2-4, 6, 26-27 and 29-31) are confusing for the following reasons:
The phrase “fluid communication” is descriptive and non-specific (see claims 1-2, 6, 27, 29). Applicant needs to recite what specific structural features (such as tubing, pipe etc.) result in communication with a source of thin stillage. Applicant is reminded that instant invention is a product and a product patentability is based on its structural and functional features both.
The term “derived” in line 4 of claim 1 is indefinite. It is unknown what the structural features (in terms of composition, viscosity, density etc.) of “a stillage derived from thin stillage” are.
The phrase “configured to” is repeated several times in lines 5, 7 and line 9 of claim 1, see also claims 2-4, 6, 26,27 30-31. Firstly, it is unknown if said phrase refers to an identical structural feature in all said lines and all said claims or not. Secondly, once again, said phrase is descriptive and fails to provide any specific structural features corresponding to the structure of the “bioprocessing facility” claimed.
In claim 1, line 9, it is unclear what is the difference between “defatted emulsion” and “defatted, defatted emulsion”. The term “defatted emulsion” implies an emulsion from which fat is removed (see also common definition of “defatted” in Thesaurus available online). It is unclear how a “defatted emulsion” can be defatted. Applicant needs to clarify what exactly is a defatted, defatted emulsion” (see also claims 27, 29-31).
Claims 2-4, 6, 26-27 and 29-30 are rejected for depending from claim 1. Appropriate clarification is required.
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.
Claims 1-4, 6, 26-27, 29-31 are rejected under 35 U.S.C. 103 as being obvious over Sarks et al., “Sarks” (US2023/0193172, 6/2023).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Sparks in [0006] discloses a “bioprocessing facility” comprising a separation system in “fluid communication” with the primary fermentation system, wherein the separation system is “configured to” separate at least a portion of at least one of the one or more bioproducts from beer produced in the primary fermentation system and form whole stillage.
In [0030] according to Sparks, a bioproduct refers to a product derived from a biological, renewable resource. For example, a bioproduct can be a component of biomass feedstock that is liberated from the biomass feedstock (e.g., corn oil from corn grain) and/or can include a chemical (“biochemical”) that is produced by a biocatalyst (e.g., microorganism and/or enzyme) such as, for example, alcohol produced by yeast fermenting sugar. In some embodiments, a bioproduct includes, among others, one or more monomeric sugars, one or more enzymes, one or more oils, one or more alcohols (e.g., ethanol, butanol, and the like), fungal biomass, amino acids, and lactic acid.
In [0057] sparks recites:
[0057] As used herein, a “stillage composition” can include whole stillage, at least one stillage composition derived from whole stillage, and combinations thereof. Non-limiting examples of a stillage composition derived from whole stillage include thin stillage, concentrated thin stillage (syrup), defatted syrup, defatted emulsion, clarified thin stillage, distiller's oil, distiller's grain, distiller's yeast, and the like. Non-limiting examples of defatted stillage compositions include one or more defatted streams derived from thin stillage such as defatted syrup, defatted emulsion, and the like. In some embodiments, a stillage composition can be exposed to an intermediate fermentation (not shown) after primary fermentation but prior to a secondary fermentation that produces enzymes as described herein.
In [0055] according to said publication:
[0055] A separation system 110 according to the present disclosure can separate a bioproduct from a beer using one or more of distillation, evaporation, separation based on particle size (e.g., filtration), or separation based on density (e.g., centrifugation). In some embodiments, a separation system 110 can include one or more centrifuges (e.g., two-phase vertical disk stack centrifuge, three-phase vertical disk stack centrifuge, filtration centrifuge), one or more decanters (e.g., filtration decanters), one or more filters (e.g., fiber filter, rotary vacuum drum filter, filter device having one or more membrane filters), one or more screens (e.g., a “DSM” screen, which refers to a Dutch State Mines screen or sieve bend screen, and is a curved concave wedge bar type of stationary screen; a pressure screen; paddle screen; rotary drum screen; centrifugal screener; linear motion screen; vacu-deck screen; etc.), one or more brush strainers, one or more vibratory separators, one or more hydrocyclones, one or more presses, combinations of these and the like. Multiple separation systems can be used together and arranged in a parallel and/or series configuration. Depending on the separation system selected, one or more process input streams can be separated into two or more output streams to produce an output stream that has a higher amount of solids as compared to other output streams. If desired, a separation system can include one or more evaporators and/or one or more dryers to further concentrate an output stream from any of the devices just mentioned.
In Fig. 3D, the flow chart shows three separation systems, namely, 354, 310 and 322. Said flow chart also displays an evaporator see item 325 and we cake, see item 324. Item 352 of Sparks in Fig. 3D is displaying a tank which may be used for receiving any product in any arrangement with one or more of separation systems of Sparks. In [0106], Sparks mentions, in some embodiments, syrup 326 can be combined with wet cake stream 324, prior to drying in a dryer system.
Therefore, considering the structural features of the “bioprocessing facility “of Sparks and its general teachings and suggestions, and considering the level of knowledge of one or ordinary skill prior to the filing of this invention, there is no reason to doubt that the “bioprocessing facility “of this invention could reasonably be envisioned and developed by one of ordinary skill in the art, to be utilized to produce the products such oil, wet cake, syrup and “defatted, defatted emulsion” of this invention and many other products, rendering this invention obvious.
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARYAM MONSHIPOURI whose telephone number is (571)272-0932. The examiner can normally be reached full-flex.
Examiner interviews are available via telephone, in-person, and 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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melenie L Gordon can be reached at 571-272-8037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARYAM MONSHIPOURI/Primary Examiner, Art Unit 1651
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