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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 3/2/2026 has been entered.
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1,2,4-7,9-12,14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adel(US 2015/0140197) in view of Livingston(US 6159524).
Regarding claims 1,4,6,7 Adel teaches forming an edible fat slurry comprising a 13% micronized powder of a structuring fat and 78-87% edible oil(see abstract, paragraph 45, table 1). Adel teaches that the edible oil can comprise blends of olive oil and soybean oil(paragraph 57) but is silent on the amount of each oil in the edible fat slurry.
However, Livingston teaches a spread comprising a fat phase which comprises 40% olive oil, 20% rapeseed oil, 20% soybean oil(claim 4). Hydrogenated soybean oil is also included in an amount of 20% but it is provided as more of a structuring fat and would not be included in with the liquid oils since Adel desires unmodified fats. Therefore, the liquid oil blend would comprise 50% olive oil, 25% rapeseed oil, and 25% soybean oil. It would have been obvious to have the edible oil in Adel be a mix of 50% olive oil, 25% rapeseed oil, and 25% soybean oil as taught in Livingston since this is an acceptable blend of liquid oils that can be used in spread.
The edible oil phase a) can be considered the soybean and rapeseed oil, with the soybean oil being present in 50% of this edible oil phase a). The olive oil is considered the edible oil phase b) comprising 100% of the edible oil phase b).
Adel does not specifically teach that the level of saturated fats in the oil phase(b) is at least 17% by weight, based on the total oil phase(b). However, Livingston teaches that olive oil comprises 9-18% saturated fat(col 1, line 39-47). Therefore, the solely olive oil containing oil phase b) comprises 9-18% saturated fat.
Furthermore, Adel teaches that a number of different oils can be in the oil phase, many of them comprising different levels of saturated fats. These oils include soybean oil, sunflower oil, linseed oil, canola oil, olive oil, and corn oil(paragraph 57). It would have been obvious to use a combination of olive oil and another oil with a higher amount of saturated fat, since saturated fats are known to provide structure to the composition.
Adel teaches mixing an edible oil with fat powder under vacuum(paragraph 118) which would inherently have a pressure below atmospheric pressure(1 bar). A pressure of less than 1 bar would overlap the claimed pressure of less than 0.2 bar and render it obvious. Adel is silent on the mixing time of the fat powder and oil phase (a). However, it would have been obvious to adjust the mixing time in order to ensure that oil phase (a) is properly dispersed in the fat powder.
Adel teaches that the mixing step can occur under low shear(paragraph 63), i.e. without high shear as claimed. The vacuum is used throughout the entire mixing process. Therefore, the pressure is maintained under 1 bar(which encompasses below 2 bar) during mixing as claimed.
Adel does not specifically teach mixing the soybean oil first with the fat powder than adding the olive oil. However, Adel in view of Livingston teaches of substantially the same product produced by substantially the same method as instantly claimed by applicant; where the claimed and prior art products are produced by substantially identical processes, a prima facie case of obviousness has been established. To switch the order of performing process steps, i.e. the order of the addition of the ingredients into the final mixture, would be obvious absent any clear and convincing evidence and/or arguments to the contrary (MPEP 2144.04 [R-1]). “Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”
Adel is silent on the viscosity of the mixture of the oil phase(a) and fat powder prior to mixing of the oil phase b) to the mixture. However, Adel discloses that the fat powder is mixed with the oil phase under high shear (1 118). Applicant's Specification states that "[h]igher viscosity relates to more intense mixing" (Spec. 6:36 - 7:1) and that the viscosity resulting from intense mixing is at least 5 dPa.s. (Spec. 7: 1-3). Thus, Adel's mixing under high shear appears to produce viscosities including values of at
least 5 dPa.s.
Furthemore, it would have been obvious to adjust the viscosity of the fat phase depending on the final viscosity/thickness desired in the final spread product.
Regarding claim 2, Adel teaches that the edible oil comprises 85% of the slurry(table 1). Livingston renders obvious using 50% olive oil as edible oil phase b) in the edible oil. Therefore, the final slurry would comprise 42.5% olive oil.
Regarding claim 5, Livingston teaches using 50% of oil phase b) in the form of olive oil and not 3-30% as claimed. However, it would have been obvious to adjust the amount of olive oil depending on the properties desired in the final spread product since the fatty acid profile of olive oil is well known.
Regarding claim 9, Adel teaches a method of forming an emulsion that contains 15 to 90% fat phase and 10-85% aqueous phase(abstract) comprising the steps of
Providing the aqueous phase at a temperature of 12-13C(paragraph 119)
Providing a fat slurry of an oil phase and a fat powder(paragraph 118)
Mixing said aqueous phase and said fat slurry to obtain an oil-continuous emulsion(paragraph 120). As stated above, it would have been obvious to form the fat slurry through the process of claim 1 in view of Livingston.
Regarding claim 15, Adel is silent on the viscosity of the mixture of the oil phase(a) and fat powder prior to mixing of the oil phase b) to the mixture. However, it would have been obvious to adjust the viscosity of the fat phase depending on the final viscosity/thickness desired in the final spread product.
Regarding claim 10, Adel teaches that the water phase can comprise proteins but does not require this component(paragraph 56). Therefore, it would have been obvious exclude proteins as required in claim 10.
Regarding claims 11 and 12, Adel teaches that the emulsion can comprise an emulsifier in the form of lecithin(paragraph 58). Fatty acid monoglyceride are disclosed as possible emulsifiers but they are not required and other emulsifiers such as lecithin can be used(paragraph 58). Adel teaches that the fat phase comprises 0.3% emulsifier and the fat phase is 34% of the emulsion(table 1). Therefore, the emulsion comprises 0.1% emulsifier such as lecithin.
Regarding claim 14, Adel teaches that the edible oil comprises 78% of the slurry(table 1). Livingston renders obvious using 50% olive oil as edible oil phase b) in the edible oil. Therefore, the final slurry would comprise 39% olive oil. This is slightly above the claimed amount of 3-30%. However, it would have been obvious to adjust the amount of olive oil depending on the properties desired in the final spread product since the fatty acid profile of olive oil is well known.
Regarding claim 16, Adel teaches the use of 100% olive oil for edible oil phase(b)(paragraph 57).
Response to Arguments
Applicant's arguments filed 3/2/2026 have been fully considered but they are not persuasive.
Applicant argues that a comparison of Applicant's Specification's Examples 1 and 2 versus, respectively, Comparative Example A and Comparative Example E shows that when fat powder was mixed with edible oil phase (a) and then that mixture was mixed with edible oil phase (a) (Examples 1 and 2) a spread was produced, whereas when fat powder was mixed with edible oil phases (a) and (b) at the same time (Comparative Examples A and E) the result was "no product". Applicant argues that "[i]n view of this evidence in Applicant's specification, the order
of mixing in this context has a demonstrable impact on the resulting
product".
However, see the arguments reproduced below by the PTAB on the decision dated 3/16/2023.
“First, it is not enough for Applicant to show that the results for Appellant's invention and the comparative examples differ. The difference must be shown to be an unexpected difference. See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Appellant provides no evidence that the results would have been unexpected
by one of ordinary skill in the art.
Second, the evidence is not commensurate in scope with the claims. See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). Appellant's claims encompass 2-30 wt% fat powder and 70-98 wt% edible oil, whereas the evidence is limited to a 4.5/40.1 fat powder/edible oil weight ratio; the claims encompass 50- 99 wt% edible oil phase (a) and 1-50 wt% edible oil phase (b) (3-30 wt% in claim 5), whereas the evidence is limited to a 46.1/4 oil phase (a)/oil phase (b) weight ratio; and the claims encompass at least 50 wt% olive oil in oil phase (b), whereas the evidence is limited to pure olive oil. We find in the evidence of record no reasonable basis for concluding that the great number of materials encompassed by Appellant's claims would behave as a class in the same manner as the particular materials tested. See In re Lindner, 457
F.2d 506, 508 (CCPA 1972); In re Susi, 440 F.2d 442, 445-46 (CCPA
1971). “
Third, the other results in the table contradict that the order of adding ingredients matters. Specifically, the results B-D in the table show that mixing the ingredients all at once produce functional products(see table 1). The applicant argues that these other results are not relevant because they are not in the claimed ranges. However, the results still demonstrate that the order is not as critical as the applicant suggests.
Conclusion
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/KATHERINE D LEBLANC/Primary Examiner, Art Unit 1791