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 .
Status of Application
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's
submission filed on 7/3/2025 has been entered.
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.
Claims 5, 6, 15, 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication US 2005/0214436 (DOUCET) in view of EP2636313 (WONG).
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Regarding claim 5, DOUCET discloses a non-hydrogenated, non-palm emulsifier based composition comprising a monoglyceride and/or diglyceride ([0037]-[0038]), wherein the mono- and diglycerides further contain stearic acid, oleic acid, and palmitic acid ([0038], [0085]-[0087]). DOUCET further teaches that the monoglyceride content in the emulsifier is 47% by weight ([0086]), which falls within the claimed range of at least 20%. At 47% monoglycerides, this would result in up to 53% of diglycerides. Triglycerides are not present.
DOUCET teaches at [0022] that a triglyceride may be reacted with glycerol to form a mixture of mono- and diglycerides. [0022] teaches that the diglycerides and triglycerides product can sometimes be discarded, or recycled back to a reactor to enhance the production of monoglycerides. In this regard, it would have been obvious to one skilled in the art to process triglycerides and diglyceride compositions to obtain the desired amount of monoglycerides, diglycerides and triglycerides.
With respect to the amount of stearic acid, oleic acid, and palmitic acid, DOUCET does not specifically teach the claimed amounts and ratios. DOUCET is also silent as to shea olein.
WONG teaches a glyceride composition from shea olein fraction [0054] that can be used in food applications [0018]. Distillation can be used [0057].
As to the amount of stearic acid, it is taught by WONG that stearic acid can range from 5 to 20% [0027], oleic acid ranges from of at least 68% to higher amounts [0025], palmitic acid ranges from 1 to 4% [0026] and linoleic ranges from 8 to 15% [0030]. Stearic acid ranging from 5 to 20% [0027] and oleic acid ranging from of at least 68% to higher amounts [0025]. This equates to 7.3% to 29% (i.e., 5:68 and 20:68). The claimed range of 1:8 to 9:10 equates to 12.5% to 90.0% This is based on C12 to C20 fatty acids present in the glycerides [0025]-[0030]. Each of the ranges fall within or overlaps that claimed. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). Moreover, it would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
Thus, it would have been obvious combine DOUCET with WONG, as WONG teaches that the composition can be used in food applications.
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DOUCET teaches the composition is for baked goods [0027].
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DOUCET teaches at [0022] that a triglyceride may be reacted with glycerol to form a mixture of mono- and diglycerides. [0022] teaches that the diglycerides and triglycerides product can sometimes be discarded, or recycled back to a reactor to enhance the production of monoglycerides. In this regard, it would have been obvious to one skilled in the art to process triglycerides and diglyceride compositions to obtain the desired amount of monoglycerides, diglycerides and triglycerides.
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As to claims 21-22, the references are cited for the reasons noted above.
DOUCET teaches a fat system and that the fat system comprises a non-hydrogenated, non-palm emulsifier based composition comprising a monoglyceride and/or diglyceride ([0037]-[0038]). The emulsifier is present in amount of 3 to 10% [0003]. This overlaps that claimed.
In [[0091]-[0093], it taught that the fat system can be used in cookies.
The cookie total 470.82 grams of ingredients.
The fat system is present in amount of 90g which is roughly 19% (225g/470g). This falls within that claimed. Given emulsifiers are in amount of 3-10%, this results in an amount of 0.57 to 1.9%. This overlaps that claimed in claim 21 and falls within that claimed in claims 22.
Water is in an amount of 49.5g which is about 10/5% (49.5g/470.82g). This falls within that claimed.
Flour (bulking agent) is in an amount of 225 g which 47% (225/470g). This overlaps the claimed invention.
It would have been obvious to use these amounts in other compositions as DOUCET teaches that has a very short texture and maintained good Theological properties for sheeting and cutting. In addition, the dough has excellent cohesiveness. Further, the baked cookies have excellent bite tenderness and negligible oil prints comparable with partially hydrogenated shortening. Also, the spread and stack characteristics were comparable to spread and stack characteristics of partially hydrogenated shortening [0099].
Response to Arguments
Applicant's arguments filed 7/3/2025 have been fully considered but they are not persuasive.
The applicant argues that Applicant submits that, though the skilled person could have only considered this broadest disclosure of Doucet, the skilled person would in fact have also considered both the more specific teachings of Claim 3 of Doucet (specifying at least 45% by weight monoglycerides) and the Examples of Doucet (disclosing compositions comprising 47% monoglycerides). A prior art reference must be considered in its entirety, including portions that would lead away from the claimed invention. See MPEP § 2141.02. In other words, Applicant considers that the skilled person looking to provide a non-hydrogenated, non-palm emulsifier composition would not have simply read Claim 1 of Doucet and stopped there. Instead, the skilled person would have considered the entirety of the document, and therefore would have followed the more specific, preferred teaching of Doucet regarding compositions comprising at least 45% by weight monoglycerides, and particularly the emulsifier composition of Example 1 of Doucet which comprises 47% by weight monoglycerides.
However, the contradicts the doctrine of claim differentiation. When a patent contains multiple descriptions of an invention, known as "claims," and some claims are broader (more general) while others are narrower (more specific), this doctrine presumes that the narrower claims are not simply redundant. Instead, it assumes that each claim is intended to have a distinct meaning and purpose. This means that a court should generally interpret the broader claims in a way that does not make the narrower claims meaningless or superfluous. The underlying idea is that a patent applicant would not bother to include a narrower claim if it covered exactly the same ground as a broader claim.
As to the arguments relating to Pilpsa, it is noted that Pilpsa is no longer cited.
WONG is now cited to teach these features.
The applicant also argues that regarding Claim 21, the Examiner has indicated that Doucet is directed towards an emulsifier and the use of such an emulsifier in a shortening system (see paragraph [0003] of Doucet). Applicant notes that Claim 21 is directed to a "water-based confectionery filling" comprising "from 10% to 60% by weight water" (see line 4 of Claim 21).
However, DOUCET teaches that the emulsifier can be used in fillings [0003], [0035], [0054]. In [0056], it is taught that other ingredients such as water can be added.
The applicant maintains that the claimed invention exhibits unexpected results. In particular, it is argued that while Examples 1 and 2 demonstrate that emulsifier compositions according to amended claim 5 surprisingly provide improved emulsion stability compared to reference compositions.
However, the claims are still not commensurate in scope with applicant arguments. EXAMPLE 5 requires 0.8g of the emulsifier of each of Example 1, Example 2, Example 4, the Comparative Example and Durem 35NG respectively were totally dissolved in 80g rapeseed oil. Each mixture was put into a 120 ml glass bottle and mixed with a propeller with four symmetrical square blades of 0.8 cm each at a speed of 750 rpm. When the temperature of each mixture is at approximatively 30°C, 20ml demineralized water was gently added into each mixture within 15 seconds. Each emulsion was further mixed at room temperature under the same mixing conditions for 1 minute. Then, each emulsion was poured into a 100ml glass graduated cylinder at room temperature. After 30 minutes, the volume of water layer was read respectively in order to evaluate the emulsion stability. One control test was done without any emulsifier. None of the claims reflect the total amount of emulsifier or parameters needed to obtain these results. It is also noted that Example 4 provides about twice as much stearic acid than that claimed but still provides an improved stability. It cannot be said that the claimed ranges reflect critical amounts:
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The applicant argues the results demonstrate the advantageous properties of the emulsifier by way of its ability to provide an emulsion of improved stability (as has been done in the Examples of the specification) and that it is not appropriate or even to specify the amount of emulsifier or parameters required to form an emulsion in a claim to an emulsifier per se. However, this does not address the disparate amount of oleic acid and stearic acid or that narrow emulsion parameters are required as used in the specification. Moreover, in that the amount of oleic acid and stearic acid can be varied to improve stability, it evidences at best that these ranges are result effective variables.
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.
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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.
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/PHILIP A DUBOIS/ Examiner, Art Unit 1791
/Nikki H. Dees/ Supervisory Patent Examiner, Art Unit 1791