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
Preliminary Amendment: Claims 1-2 are canceled. New claims 3-12 are entered.
Claim Interpretation
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer.
The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate.
The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.).
Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020).
In this Application, claims 10-11 are interpreted to be product by process claims. Thus, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process."
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 3-12 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.
Regarding claims 7 and 9-12, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claims 4-7, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 3-9 recites the limitation "the crude oil" in step b. There is insufficient antecedent basis for this limitation in the claim.
Claims 3-9 recites the limitation "the glycerin recovered in the aqueous phase" in step c. There is insufficient antecedent basis for this limitation in the claim.
Examiner notes, the precedent steps have not explicitly stated the production of an aqueous phase with glycerin.
Claim 3-9 recites the limitation "the mixture of fatty acid" in step d. There is insufficient antecedent basis for this limitation in the claim.
Examiner notes, it is not clear if step a) is implicitly producing “a mixture of fatty acids, as claimed.
With respect to claim 12, the claim is indefinite. It is unclear from the preamble if claim 12 depends on claim 10, 11 and/or 3, or if said products from claims 10, 11 and/or are even required for the integrated system of claim 12.
Correction is needed.
Claim 12 recites the limitation "the fatty acid mixture" in step d. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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)(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.
Claim(s) 10-11 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Palauschek et al (US 2010/0286453).
With respect to claim 10, Palauschek discloses purified fatty acids capable of being used for biofuel production process (see figure 2, paragraph 0029-0034).
With respect to claim 11, Palauschek discloses a purified glycerin, having a purity of 98 % (see paragraph 0013).
In this Application, claims 10-11 are interpreted to be product by process claims. Thus, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process."
Allowable Subject Matter
Claims 3-9 and 12 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claim 3, Palauschek et al (US 2010/0286453) discloses a process for producing fatty acids, high purity glycerin and renewable fuels, from oils and/or fats and comprising the following steps:
a) non-catalytic hydrolysis of oils and/or fats (see paragraph 0030), operating at a temperature of 250°C and 65 bar (see paragraph 0030);
c) the glycerin is recovered in the aqueous phase, being further concentrated and purified with ionic resins and activated carbon, to achieve a minimum purity of 98% (see paragraph 0031-0032);
d) the mixture of fatty acids with a yield greater than 90% is distilled and is suitable for receiving adsorbents to remove traces of other impurities, being ready for the hydrotreatment and hydroisomerization process (see paragraph 0030 and 0033)
e) hydrotreatment of fatty acids and/or biodiesel to obtain renewable fuels (see paragraph 0034), for the production of renewable diesel, biokerosene, SAF or other derived renewable fuels (see paragraph 0034).
In a related study on sub-critical water hydrolysis of vegetable oil, Peters et al (Subcritical Water Hydrolysis of Fresh and Waste Cooking Oils to Fatty Acids Followed by Esterfication to Fatty Methyl Esters: Detailed Characterization of Feedstock of Products, 2022),discloses wherein the non-catalytic hydrolysis of oil and fats is carried out in a countercurrent continuous reactor, at a temperature of 200-300°C, pressure between 9 and 51 bar, in spatial time from 10 min to 180 min (0.16 to 3), with an oil/water feed mass ratio between 1:0.1 to 1:3 (autogenic pressure, see page 46873, left column lines 1-10).
Further in a similar fat to biodiesel production process Vermeiren et al (US 2015/0353864) discloses wherein the hydrolysis reactor is operated in a countercurrent split, wherein temperature is from about 240-270°C, pressure is about 40 to 55 bar and water to oil ratio is about 40 to 50 wt.% of fat, or .4 to .5 to 1 (see paragraph 0098).
In a related method to produce biodiesel, Ojala (US 2023/0020748) discloses wherein hydrotreatment steps and conditions for bio derived fats include catalyst (see paragraph 0205) operating at a temperature of 200 to 400°C, pressure between 1 and 200 bar (see paragraph 0206), with adjustment of cold properties in a second continuous hydroisomerization reactor (see paragraph 0227).
In a related process for reducing the phospholipid content in an oil or fat composition, Segura et al (US 10,954,469) discloses a method for degumming vegetable oil prior to hydrolyzing (see col 1 lines 55-68).
Thus, the prior art discloses a substantial portion of the Applicant claimed invention.
However, the prior art fails to teach or suggest to one with ordinary skill in the art to modify the process with the claimed step, wherein the mixture of fatty acids with a yield greater than 90% are vacuum dried and is suitable for receiving adsorbents to remove traces of other impurities, being ready for the hydrotreatment and hydroisomerization process, as claimed.
With respect to claim 12, the closest prior art Palauschek et al (US 2010/0286453) discloses a system comprising:
a) a continuous reactor, configured to perform non-catalytic hydrolysis of oils and/or fats (see paragraph 0030),
c) a glycerin recovery system, coupled to the reactor, configured to separate the glycerin in the aqueous phase by concentrating and purifying it with ionic resins and activated carbon (see paragragraph 0013); and
e) Ojala et al (US 2023/0020748) discloses a continuous hydrotreating reactor, configured to process the fatty acids and/or biodiesel with HVO/SAF catalysts, operating at a temperature of 300°C to 350°C and pressure between 20 bar and 80 bar, followed by a hydroisomerization reactor for adjustment of the cold properties and production of renewable diesel, biokerosene (SAF) or other renewable fuels (see paragraph 0205-0206 and 0227).
Segura et al (US 10,954,469) discloses a method for degumming vegetable oil prior to hydrolyzing with an enzymatic degumming system, configured to perform phospholipid removal by means of phospholipases Al, A2 and/or C, resulting in a purified oil suitable for the hydrolysis step (see col 1 lines 55-68).
Thus, the prior art discloses a substantial portion of the Applicant claimed invention.
However, the prior art fails to teach or suggest to one with ordinary skill in the art to modify the system with a vacuum drying system for the fatty acid mixture, configured to remove traces of impurities using adsorbents such as clays and silica as claimed.
Conclusion
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/JUAN C VALENCIA/Examiner, Art Unit 1771
/PREM C SINGH/Supervisory Patent Examiner, Art Unit 1771
