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 .
Drawings
The drawings are objected to because Figures 6 and 8 require a label on the y-axis. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities: delete the “,” after “must” in the hydrolyzing step. Appropriate correction is required.
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 1-17 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 recites the limitation "the ordinaries" in line 17. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 is also rejected as to what are considered “ordinaries”. Moreover, it is unclear what steps constitute “performing a rectification of the ordinaries, second distillation”.
Claim 4 is rejected at the claim recites “comprises 100oC to 115oC”. The use of the transitional phrase comprising is confusing as it unclear whether additional ranges or temperatures can be used.
Claims 2-8 are rejected as they depend on claim 1 and include all the recitations of claim 1.
Claim 1 is also rejected as to what are considered “ordinaries”.
Claim 9 is rejected as the last two steps of the claim relate to distilling a flour. However, flour is not distilled but rather it is the liquid feed containing ethanol that is distilled.
Claim 12 recites the limitation "the corn" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "the corn" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 is rejected at the claim recites “comprises 100oC to 115oC”. The use of the transitional phrase comprising is confusing as it unclear whether additional ranges or temperatures can be used.
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.
Claim(s) 1, 6-7, 9, 10, 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dutton, How Corn is Processed to Make Ethanol, PSU, 2014, accessed at https://www.e-education.psu.edu/egee439/node/673 (DUTTON) in in view of ROJAS, Lime Cooking Process: Nixtamalization Form Mexico To The World, BASIC CONCEPTS, 2016 accessed at https://repository.cimmyt.org/bitstream/handle/10883/18872/58123.pdf?sequence=1&isAllowed=y (ROJAS) and Distillation of Mash and Rectification of Alcohol, BTS Engineering, August 2020 accessed at bts.net.ua/eng/news/peregonka-brazhki-i-rektifikatsiya-spirta-eng/?srsltid=AU7gw4Uw6Q8VLPGiqYPKMo1ci_Hdy2DCB6Q4woF9fOpC3ap2OaNUxN0b (BTS).
PNG
media_image1.png
702
606
media_image1.png
Greyscale
PNG
media_image2.png
661
620
media_image2.png
Greyscale
DUTTON teaches a process for making ethanol from corn. The process involves milling corn. It can be done by dry milling or wet milling. Dry milling includes grinding the corn to obtain flour (see sections 6.3b and Grinding). It would have been obvious to one skilled in the art to dehydrate/dry the corn so that corn can be dry milled. The dry milled corn constitutes a flour.
The flour is hydrolyzed with amylase (i.e., a hydrolytic enzyme) to form a must (see Cooking and Liquefication section).
In the Fermentation section, it is taught that the final chemical step is producing alcohol/ethanol by fermenting the must. To cause fermentation to take place, yeast is added. A common yeast to use is Saccharomyces cerevisiae (i.e., known to tolerate ethanol).
DUTTON is silent as to using corn from a nixtamalization process as a source of corn.
However, Rojas teaches a nixtamalization process that allows corn to be ground more easily. At pg. 9 that the traditional nixtamalization process of corn is carried out using between 0.5 to 3 % of lime/CaOH. Usually the water is heated until boiling, and then the maize kernels are mixed. Rojas seeks to obtain a pH of 12.5 (Steeping section). The corn is heated until the desired moisture content is reached (see pg. 9, Thermoalkaline cooking section). It would have been obvious to vary the amount of time the corn is subjected to boiling until the desired moisture content is reached.
The corn grains are allowed to rest in the cooking liquor for 5 to 16h (this encompasses the claimed about 12 hours). In this stage, the heating is suspended and the grain is allowed to stand/rest in the cooking liquid (nejayote) for a period of time that varies from 5 to 16 hours until the mixture is cooled (figure 3).
At the end of the steeping stage, the nejayote reaches a pH value of 12.5 approximately, and then it is drained. The hydrated corn is washed twice/rinsed with water and removing the pericarp by rubbing the kernels. The grains are then drained (see pg. 10, Washing section). Thus, it would have been obvious to vary the time needed for draining and rinsing time based on amount of material being processed.
It would have been obvious to use the processing steps of ROJAS in TORRES, as ROJAS teaches that the process facilitates the processing of the corn.
TORRES and ROJAS are silent as to the rectification step.
BTS teaches that distillates can be treated to a rectification step (i.e., additional distillation) to increase the impurity of distillate. The rectification process is based on the same regularities as the distillation of mash. Liquids whose boiling point is lower than alcohol are distilled faster and with a higher boiling point — slower than alcohol. The ratio of the impurity content in alcohol vapors to its content in an alcohol liquid is called the rectification coefficient (see Rectification of Alcohol and Physical and Chemical Basis of Rectification sections).
It would have been obvious to one skilled in the art to add a rectification step to the process of TORRES and ROJAS, as the rectification (i.e., second distillation step as claimed) increases the purity of the alcohol.
PNG
media_image3.png
202
623
media_image3.png
Greyscale
As to claims 6-7, DUTTON teaches a liquefication step (see Cooking and Liquefication section) DUTTON teaches the addition of glucoamylase (i.e., α-1,4 and α-1,6-links are cleaved, from the nonreducing ends, to give β-glucose) and α-Amylase (i.e., specifically hydrolyzes internal α-1,4-glycosidic bonds) (see Saccharification section). Saccharification is where the enzymes further convert the liquefied starches into simple sugars. This naturally results in the liquefication of starch.
PNG
media_image4.png
89
617
media_image4.png
Greyscale
Dutton teaches using corn to make ethanol (see Section 6.3b).
PNG
media_image5.png
87
611
media_image5.png
Greyscale
DUTTON teaches the addition of glucoamylase (i.e., α-1,4 and α-1,6-links are cleaved, from the nonreducing ends, to give β-glucose and constitutes an exoamylase) and α-Amylase (i.e., specifically hydrolyzes internal α-1,4-glycosidic bonds) (see Saccharification section).
PNG
media_image6.png
186
612
media_image6.png
Greyscale
As to claims 16-17, DUTTON teaches a liquefication step (see Cooking and Liquefication section) DUTTON teaches the addition of glucoamylase (i.e., α-1,4 and α-1,6-links are cleaved, from the nonreducing ends, to give β-glucose) and α-Amylase (i.e., specifically hydrolyzes internal α-1,4-glycosidic bonds) (see Saccharification section). This naturally results in the liquefication of starch. Saccharification is where the enzymes further convert the liquefied starches into simple sugars.
Claim(s) 2-4 and 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over DUTTON, ROJAS, BTS as applied to claims 1 and 9, respectively, and further in view of Arora, Effects of high temperature drying air on corn quality, Iowa State, 2003, accessed at https://dr.lib.iastate.edu/server/api/core/bitstreams/ac5d1113-e760-47fb-bfdd-e51bc552c857/content (ARORA) teaches temperatures for wet milling corn (ARORA).
PNG
media_image7.png
411
627
media_image7.png
Greyscale
PNG
media_image8.png
595
610
media_image8.png
Greyscale
As to claims 2-4 and 11-14, DUTTON teaches dry milling corn but the reference DUTTON, ROJAS and BTS are silent as to the dehydrating step prior to milling.
ARORA teaches that to mill corn it must be dried. The specific airflow rate and inlet hot air temperature affected drying rate of corn. There was no constant drying rate period and mechanism of moisture movement inside the corn kernel was controlled by internal diffusion. Corn quality in terms of stress cracks, breakage susceptibility and color after drying by fluidization technique was investigated (pg. 10). For example, wet-milling properties of various corn cultivars after artificial drying at elevated air temperatures of 90C to 100C. Drying times were chosen to give final moisture contents of approximately 14%. Drying at 100C and moisture levels above 30% caused a drop in starch yield in all cultivars relative to those dried at 30C (i.e. 86oF). Starch yield also 5 increased with decreasing moisture levels from 30% to below 25% at 100C. Thus, the time and temperature of the drying is a result effective variable. It would have been obvious to vary the time and temperature of the pre-dry and roast based on the final desired properties of the corn.
It would have been obvious to use the steps of ARORA in the references above, as ARORA teaches a way to dry corn while maintaining the quality of the corn.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over DUTTON, ROJAS, BTS as applied to claim 1 above, and further in view of United States Patent No. 2,662,842 (CHRISTENSEN).
PNG
media_image9.png
113
607
media_image9.png
Greyscale
DUTTON teaches the addition of glucoamylase (i.e., α-1,4 and α-1,6-links are cleaved, from the nonreducing ends, to give β-glucose) and α-Amylase (i.e., specifically hydrolyzes internal α-1,4-glycosidic bonds) (see Saccharification section).
DUTTON, ROJAS and BTS are silent as to adding corn malt.
CHRISTENSEN teaches that corn malt preparations provide a good ethanol yield for ethanol fermentations (col. 1, line 62 to col. 2, line 2).
Thus, it would have been obvious to add the use of corn malt to the references above, as CHRISTENSEN teaches that corn malt preparations provide a good ethanol yield for ethanol fermentations.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over DUTTON, ROJAS and BTS as applied to claim 1 above, and further in view of Bernie, Basic Distilling, Whiskey Professor, August 9, 2013 accessed at www.whiskeyprof.com/basic-distilling/ (WHISKEY PROFESSOR).
PNG
media_image10.png
74
611
media_image10.png
Greyscale
DUTTON teaches using corn to produce ethanol as noted above but DUTTON, ROJAS, and BTS are silent as to using corn to produce whiskey.
However, WHISKEY PROFESSOR teaches that corn is a basic component of making whiskey (see Cooking section).
Thus, it would have been obvious to one skilled in the art to use the corn and ethanol producing methods of DUTTON, ROJAS, and BTS, as WHISKEY PROFESSOR teaches corn to produce whiskey.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached M-F, 9:30-6:00p.
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, Nikki Dees can be reached on 571-270-3435. The 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.
/PHILIP A DUBOIS/Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
