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 .
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).
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 “preferably greater than or up to about 45%” [0067]. Thus, this amount is a preference indicating lesser amounts are possible.
At 45% monoglycerides, this would result in up to 55% 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 using a shea olein distillate. However, this this a product by process recitation. "[E]ven 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.).
Nevertheless, it is noted that 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.
As to claims 15, DOUCET teaches the composition is for baked goods [0027].
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 6/2/2026 have been fully considered but they are not persuasive.
The applicant argues that DOCUET does not teach the claimed range of monoglycerides.
However, DOUCET further teaches that the monoglyceride content in the emulsifier is “preferably greater than or up to about 45%” [0067]. Thus, this amount is a preference indicating lesser amounts are possible.
At 45% monoglycerides, this would result in up to 55% of diglycerides. Triglycerides are not present.
While the exact range is not disclosed, anticipation is not at issue. Rather, 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.
Moreover, it cannot be said that DOCUET teaches away from the claimed invention. DOUCET does teach 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.
The applicant argues that DOUCET does not teach shea olein.
However, this this a product by process recitation. "[E]ven 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.).
As to the ranges of fatty acids, WONG teaches a glyceride composition from shea olein fraction [0054] that can be used in food applications [0018]. Distillation can be used [0057]. 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].
While the applicant argues that one skilled in the art would not combine WONG and DOCUET, both are directed to fat compositions. 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]). WONG teaches a glyceride composition from shea olein fraction [0054] that can be used in food applications [0018].
Moreover, it cannot be said WONG teaches away from DOUCET. [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious). **
However, the claims are still not commensurate in scope with applicant arguments. EXAMPLE 5 requires 0.8 g 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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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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/PHILIP A DUBOIS/ Examiner, Art Unit 1791
/Nikki H. Dees/ Supervisory Patent Examiner, Art Unit 1791
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