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 .
DETAILED ACTION
Status of Claims
Note: The amendment of December 3rd, has been considered.
Claims 1-16 are pending in the current application.
Claims 6-11 are withdrawn from consideration.
Claims 1-5 and 12-16 are examined in the current application.
Any rejections not recited below have been withdrawn.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35 of the U.S. Code not included in this action can be found in a prior Office action.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4, 5 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Fichtali et al. (US 2015/0018435 A1).
Regarding claims 1, 2, 4 and 12-15: Fichtali discloses a fat composition comprising 0.5% to 5% (i.e., 5000 ppm to 50,000 ppm) ascorbic acid, 1-10% water and an emulsifier (e.g., PGE - PolyGlycerol Esters of fatty acids) (see Fichtali abstract; paragraphs [0018], [0019], [0025], [0026], [0028], [0033], [0122] and [0123]). Since the relative contents of ascorbic acid and water recited in claims 1, 4 and 12-15 overlap the relative contents of ascorbic acid and water in Fichtali, a prima facie obvious exists (see MPEP §2144.05).
As to the fat composition liquid state at room temperature: Fichtali discloses the fat has a melting temperature of at least 20°C (see Fichtali paragraph [0019]), which encompasses a fat that is liquid at room temperature.
Regarding claim 5: Fichtali discloses the fat composition can be used as a food additive, a shortening and/or supplement to provide the consumer with LC-PUFAs and their health benefits (see Fichtali paragraphs [0002]. [0008], [0009] and [0127]), but fails to disclose the relative content of the fat composition to be used in the different foods; However, given the fact the effect of an active ingredient depends on the dosage provided, it would have been obvious to a skilled artisan at the time the application was filed to have modified Fichtali and to have adjusted the content of the fat composition in food products in order to attain desired health and textural effect, and thus arrive at the claimed limitation. As set forth in MPEP §2144.05 discovering an optimum value of a result effective variable, involves only routine skill in the art.
Claims 3 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Fichtali et al., as applied to claims 1, 2, 4, 5 and 12-15 above, and further in view of NPL Gasparelo et al., “Zeta Potential and Particle Size to Predict Emulsion Stability” (from Coasmetics & Toiletries November 19th 2014).
Regarding claims 3 and 16: Fichtali discloses forming a stable water in oil emulsion (e.g., margarine, spread, mayonnaise, dressing) (see Fichtali; paragraphs [0119]-[0123]), but fails to disclose the average emulsified particle size of the fat composition; However, given the fact the stable emulsion in Fichtali appears to comprise the same constituents at similar amounts as the fat composition recited in the claims, and since the stability of an emulsion is related to the particle size, as the oil droplet size is adjusted until the desired degree of emulsion stability is achieved (see Gasparelo pages 2-3 “predicting stability” and “particle size analysis”). Accordingly, it would have been obvious to a skilled artisan at the time the application was filed to have modified Fichtali and to adjust the particle size in order to attain a stable emulsion, and thus arrive at the claimed limitations. As set forth in MPEP §2144.05, discovering an optimum value of a result effective variable, involves only routine skill in the art.
In the alternative, given the fact that both Fichtali and Applicant contemplate the same, or similar fat composition comprising the same, or similar constituents that are processed through similar methods, and since both applicant and Fichtali envisage a stable product, it is examiner’s position the stable emulsion in Fichtali inherently comprise the particle size recited in claims 3 and 16. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Response to Arguments
Applicant's arguments filed on February 19th 2025 have been fully considered but they are not persuasive.
37 CFR §131.2 Declarant (Shigeki Mizushima), argues the prior art reference fails to render the claimed invention obvious, because the evidence provided is showing that Fichtali discloses in Examples 11 and 14 fat blends that were soft, but not liquid, at room temperature. The examiner respectfully disagrees.
The declaration under 37 CFR §1.132 filed on December 3rd 2025, is insufficient to overcome the rejection of the claimed invention under 35 USC §103 over Fichtali as set forth in the last Office action, because declarant failed to compare the claimed subject matter to the closest prior art. An affidavit or declaration under 37 CFR §1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness (see MPEP §716.02(e)). In the 1.132 declaration, Declarant stated that following Examples 11 and 14 of Fichtali, where PUFA oil and Palm stearin were mixed at 75:25 and 60:40 ratios, a soft, rather than liquid product, was attained; However, the fat mixtures in Examples 11 and 14 of Fichtali, further comprise monoglycerides and diglycerides emulsifiers, which were not used by Declarant. Therefore, the declaration filed under 37 CFR §1.132 fails to overcome the prior art rejection on record, as declarant failed to compare the claimed subject matter to the closest prior art.
Moreover, given the fact that emulsifiers are known to affect the melting behavior of fats, especially by interfering with fat crystal formation, leading to softer textures, or faster meltdown (see NPL Munk et al., “Stability of whippable oil-in-water emulsions: Effect of monoglycerides on crystallization of palm kernel oil”, Abstract; Sections 3.3 and 3.4), a skilled artisan would recognize the presence of the emulsifier in Fichtali is critical as it leads to a softer product.
Finally, Fichtali discloses in paragraph [0019] that the melting point of the product is at least about 20°C, which encompasses a product that is liquid at room temperature, as recited in claim 1.
Conclusion
The following is prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
“58 Special Properties of Fats, Oils, and Shortenings Methods” (from https://www.cerealsgrains.org/resources/Methods/Pages/58SpecialProperties_FatsOilsShortenings) discloses on page 5, the method of measuring melting point of fat (i.e., capillary method), “the temperature at which the sample becomes perfectly clear and liquid” is disclosed. On pages 5-6, the slip melting point method of measuring the temperature range from the temperature when the fat softens (i.e., softening point) to the temperature when the fat is liquid (i.e., melting point) is disclosed.
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 ASSAF ZILBERING whose telephone number is (571)270-3029. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at (571) 270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASSAF ZILBERING/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792