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 .
Response to Amendment
Applicants’ response filed 5/1/2026 did not include any claim amendments. Applicants’ arguments addressed below do not overcome the 35 USC 102/103 rejections from the office action mailed 12/2/025; therefore, these rejections are maintained below.
Claim Rejections - 35 USC § 102/103
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.
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.
Claims 23-42 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Schmidt et al., US Patent Application Publication No. 2014/0109466 (hereinafter referred to as Schmidt).
Regarding claims 23-25, 28-34 and 36-42, Schmidt discloses that biodiesel is typically derived from vegetable or animal origin. The feedstock used to make biodiesel can therefore be unrefined vegetable oils, such as, palm nut oil, coconut oil, soya, rapeseed, sunflower, corn, peanut, etc. These feedstocks primarily are comprised of triglycerides, which comprise of three fatty acid chains linked by a glycerol backbone.
The feeds used in transesterification reactions for making biodiesel contain, or are processed to contain, mostly triglycerides. The triglyceride feed may also contain free fatty acid, typically comprising up to 1% by weight free fatty acid. The triglyceride feedstock is then contacted with alcohol in the presence of transesterification catalyst and conditions to produce a fatty acid alkyl ester. The alcohol added to the reactor can be one or a mixture of two or more alcohols conventionally used to convert triglyceride-containing feedstocks to esters. Suitable alcohols include those having one to six carbons, and typically are monoalcohols. Methanol is frequently suitable. The molar ratio of alcohol to triglyceride in a transesterification reaction is generally in the range of 3:1 to 30:1.
The catalyst used in the transesterification reaction can be a homogeneous or heterogeneous catalyst. Suitable homogeneous catalysts include alkali methoxide, alkali hydroxides and mixtures thereof, including but not limited to, sodium methoxide, potassium methoxide, sodium hydroxide, and potassium hydroxide.
The ester derivative produced depends on the number of carbons in the alcohol. Frequently, methanol is used in the transesterification reaction and reactions using methanol produce fatty acid methyl esters, also known as FAME. The transesterification reaction is carried out in the presence of the catalyst under conventional conditions. The reaction can be carried out in batch reactors, in a continuous (e.g. stirred) tank reactor, as well as in fixed-bed reactors. The transesterification conditions include a temperature in the range of 40°C to 250°C. Typical pressures would be in the range of 1 to 100 atmospheres (atm), and the residence time for the reactant triglyceride and alcohol is usually between 5 and 100 minutes. Once the triglycerides and alcohol react in the transesterification reactor, the effluent is further processed to recover fatty acid alkyl ester product. The product esters are present primarily in a phase that is not water soluble (also referred to herein as the "oil phase"), and any glycerol (also known as glycerin) produced and most of the unreacted methanol are primarily in the water-soluble phase. The separation process comprises separating the glycerol phase and oil phase comprising the ester and subsequently removing the remaining alcohol through a flash drying or stripping step.
The removal of the water-soluble glycerol-rich phase by means of phase separation is preferably carried out at temperatures between 60°C and 150°C. The phase separation is likewise preferably carried out at a pressure corresponding to the vapor pressure of the alcohol. The separation can be conducted by distillation or decantation. The separation process can be conducted in a batch or continuous manner (as recited in claim 23 and reads on claims 24-25, 28-34 and 36-42) (Para. [0053]-[0066]).
Schmidt discloses all the limitations discussed above which includes a process for forming fatty acid methyl esters from an organic oil source as recited in instant claim 23. The process discussed above in Schmidt reads on the claims as instantly recited and would therefore lead to the same product recited in claim 23.
Regarding claims 26-27 and 35, Schmidt discloses the batch reactor experiments were conducted as follows. The impure biodiesel sample used for the tests was a palm-based biodiesel containing negligible levels of methanol but appreciable levels of the impurities, monoglycerides (0.66 by weight) and sterol glycosides (69 ppm). 330 ml of this biodiesel sample was added to a beaker and heated up in an oil bath to 140°C. The powder catalyst was dried for 1.5 h at 200°C and then added to the biodiesel at 3 wt%. The test was carried out at 140°C at ambient pressure for 60 min with the final 15 min being under vacuum. At the completion of the reaction, the catalyst was separated from the biodiesel using a glass fiber filter either at 140°C or at 21°C.
Response to Arguments
Applicants’ arguments filed 5/1/2026 regarding claims 23-42 have been fully considered and are not persuasive.
Applicants argue that the rejections discussed above cannot be maintained because the rejection is based on impermissible hindsight reconstruction. “[A]ny judgement on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). Applicants use “Catalyst A” as an example for buttressing their argument. This “example” embodiment is not the only part of the prior art reference that needs to be considered. Based on the disclosures of paragraph 0100 and 0110 and Table 1, the claims are taught by Schmidt.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: International Publication No. WO/2020/074435 discloses a method of producing fatty acid alkyl ester from an organic oil source containing at least one free fatty acid, wherein the method comprises the steps of a) reacting the oil source with glycerol at a temperature, which does not exceed 180°C during the reaction, in the presence of a catalyst comprising at least one alkyl or aryl sulfonic acid or an homoanhydride thereof and a basic catalyst, such as, potassium and sodium methoxide; and b) transesterification of the reaction product from step a) with an alkanol; and c) isolating the fatty acid alkyl ester from the reaction product of step b) (see Abstract and Page 8/L. 42-44).
International Publication No. WO/2005/063954 discloses fatty acid alkyl esters suitable for use as biodiesel are produced by a single step esterification of free fatty acids and transesterification of triglycerides from vegetable oils or animal fats or combinations thereof with a lower alcohol (e.g. methanol) in presence of alkyl Tin oxide as catalyst. The ester thus produced is purified by distillation, treatment with an adsorbent, washing with water or combination thereof to give esters suitable for use as biodiesel.
International Publication No. WO/2007/060993 discloses a process for producing a fatty acid alkyl ester by transesterification of a fat-and-oil with an alcohol in the presence of an alkaline catalyst. The process is characterized in that such a fat-and-oil is subjected to the transesterification that is obtained in a pretreatment step comprising mixing an alkali-containing glycerin produced in the transesterification as a by-product with a raw fat-and-oil to neutralize a free fatty acid contained in the raw fat-and-oil with an alkaline catalyst contained in the alkali-containing glycerin. The fatty acid alkyl ester can be suitably used as a biomass-derived diesel fuel or the like.
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 VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771
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