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 .
The Amendment filed October 9, 2025 has been entered. Claims 1, 4, and 13-15 are pending. Claims 1 and 14 have been amended. Claims 3, 5-6, 12 and 16 have been canceled.
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.
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, 4, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Sekikawa et al. (US 2009/0285952 A1; Nov. 19, 2009) in view of Bongers et al. (US 2014/0113852 A1; April 24, 2014).
Regarding claim 1, Sekikawa discloses an emulsion composition comprising a continuous phase and a dispersed phase.
Sekikawa teaches that the continuous phase comprises glycerol (e.g. the polyvalent alcohol), a first emulsifier that can be a sucrose ester, and a second emulsifier.
Sekikawa teaches that the glycerol can be present in an amount from 50-85 wt% ([0022]-[0023]), thus overlapping the claimed range of 81.48-90 wt%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Sekikawa teaches that the sucrose ester can be present in an amount of 0.1-15 wt% ([0041]), thus overlapping the claimed range of 0.1-0.4 wt%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Sekikawa teaches that the dispersed phase comprises an enzymatically modified lipid component (e.g. the enzyme degraded lecithin) ([0023]-[0028]).
While Sekikawa teaches a second emulsifier, wherein the second emulsifier can be lecithin and the emulsion has a desired lecithin to enzyme degraded lecithin ratio ([0031] and [0035]), Sekikawa fails to specifically teach that the dispersed phase comprises the second emulsifier along with the enzyme degraded lecithin.
However, it would have been obvious to one of ordinary skill in the art to add the second emulsifier with the enzyme degraded lecithin.
As stated in MPEP 2144.04: Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
All the ingredients in Sekikawa are mixed together to form an emulsion and therefore it would have been obvious to one of ordinary skill in the art to select any order of mixing ingredients as it would still form the same emulsion absent a showing otherwise.
While Sekikawa teaches that the dispersed phase comprises the enzymatically modified lipid component (e.g. the enzyme degraded lecithin), Sekikawa fails to specifically teach that the enzymatically modified lipid component is an enzymatically modified fat and a native fat and/or an enzymatically modified oil and a native oil, wherein the fat and oil are selected among the claimed components.
Bongers teaches an emulsion comprising a continuous phase and a dispersed phase. Bongers teaches that the dispersed phase comprises a lipid component that can be an enzymatically modified oil, a native oil, and combinations thereof ([0078]). Therefore, Bongers teaches that the lipid component in the dispersed phase can be a combination of enzymatically and native oils. Bongers further teaches that the oil can be sunflower ([0078]).
As Bongers teaches that it is known in the art to use a native and/or enzymatically modified lipid components as claimed in an emulsion for food products, it would have been obvious to one of ordinary skill in the art to have use a native and enzymatically modified lipid component as taught by Bongers in the dispersed phase of Sekikawa. This is merely a substitution of known lipid components useful for an emulsion for another as Sekikawa already teaches a dispersed phase comprising an enzymatically modified lipid component, and would have bene obvious to do so depending on the desired properties provided by the fat and/or oil used.
Further, the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07)
As stated in MPEP 2144.06 ““It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [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.)”
Therefore, it would have been obvious to have the dispersed phase of Sekikawa comprise two lipid components as claimed, an enzymatically modified oil and a native oil, as Bongers teaches that it is well known in the art for a dispersed phase for an emulsion to comprise combinations of native and enzymatically modified oils and further would have been obvious depending on the desired properties of the emulsion.
Sekikawa teaches that the lecithin is present in an amount of 0.3 wt% (0.1% enzyme degraded lecithin with a 2.5:7.5 ratio of degraged lecithin to lecithin ([0023] and [0031]), thus falling within the claimed range of 0.1-0.5 % by weight.
Sekikawa teaches that the enzymatically modified lipid component is present in an amount from 0.1-2 wt% ([0023]), while the instant claimed requires an amount from 10-30%.
Bongers further teaches that the dispersed phase comprising an enzymatically modified modified oil and a native oil is in an amount of at least 20% by weight of the emulsion, which overlaps the claimed range of 10-30%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I) It would have been obvious to one of ordinary skill in the art to have Sekikawa comprise the lipid component of Bongers in a similar amount as taught by Bongers as such amount is known to be useful in creating an emulsion.
Further, as stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
It would have been obvious to vary the amount of lipid component in Sekikawa depending on the desired properties of the emulsion, which is well within the ordinary skill to determine through routine experimentation.
With respect to the emulsion being free from water, Sekikawa teaches that the proportion of water can be as little as 0.1% by weight ([0045]), which is so close to 0% that one of ordinary skill in the art would expected the emulsion to have the same properties, with the fact pattern being similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
Therefore, it would have been obvious to one of ordinary skill in the art that the amount of 0% disclosed in the present claims is but an obvious variant of the 0.1% amount disclosed in Sekikawa, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
With respect to the emulsion being “opaque”, Sekikawa is directed towards producing a transparent emulsion. Sekikawa, however, teaches that the transparent emulsions are characterized by microemulsions, e.g. small particle size, and have to do with the amount and type of ingredients added ([0030]). Bongers further teaches that the transparency is related to the size of the dispersed phase droplets ([0100]). Bongers states that the droplet size can be varied by speed of homogenization as well as concentrations of ingredients (See Examples).
Therefore, while Sekikawa teaches a transparent emulsion, transparency is clearly related to the concentrations of ingredients as well as the processing parameters, which can all be adjusted. Claim 1 does not recite any specific amounts of ingredients or processing conditions. The combination of the prior art renders obvious an emulsion having the claimed ingredients. Therefore, it would have been obvious to one of ordinary skill in the art to process the emulsion such that it has an opaqueness if desired. This is merely routine experimentation that is well within the ordinary skill in the art, especially as the prior art suggests varying concentrations of ingredients and particle size of the dispersed phase to result in a desired transparency level.
Regarding claim 4, Sekikawa teaches a continuous phase and a dispersed phase as stated above, but fails to specifically teach the claimed weight ratio between the dispersed phase and the continuous phase.
However, as stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Sekikawa teaches a lower amount of dispersed phase compared to the continuous phase and therefore it would have been obvious to one of ordinary skill in the art to vary the amount of each phase depending on the desired properties of the emulsion. Sekikawa teaches that the use of the enzyme degraded lecithin provide high emulsification stability and high retention of flavor ([0013]) and therefore it would have been obvious to one of ordinary skill in the art to vary the amount of each phase depending on the desired flavor profile and stability.
Regarding claim 13, Sekikawa further teaches that the emulsion comprising a flavoring composition ([0024]).
Regarding claim 14, as stated above with respect to claim 1, Sekikawa discloses an emulsion composition comprising a continuous phase and a dispersed phase. Sekikawa teaches that the continuous phase comprises glycerol (e.g. the polyvalent alcohol) and a first emulsifier (e.g. a sucrose ester) and a second emulsifier. Sekikawa also teaches that the dispersed phase comprises an enzymatically modified lipid component (e.g. the enzyme degraded lecithin) ([0023]-[0028]).
While Sekikawa teaches that the dispersed phase comprises the enzymatically modified lipid component (e.g. the enzyme degraded lecithin), Sekikawa fails to specifically teach that the enzymatically modified lipid component is an enzymatically modified oil and a native oil, wherein the oil is selected among the claimed components.
Bongers teaches an emulsion comprising a continuous phase and a dispersed phase. Bongers teaches that the dispersed phase comprises a lipid component that can be an enzymatically modified oil, a native oil, and combinations thereof ([0078]). Therefore, Bongers teaches that the lipid component in the dispersed phase can be a combination of enzymatically and native oils. Bongers further teaches that the oil can be sunflower ([0078]).
As Bongers teaches that it is known in the art to use a native and/or enzymatically modified lipid components as claimed in an emulsion for food products, it would have been obvious to one of ordinary skill in the art to have use a native and enzymatically modified lipid component as taught by Bongers in the dispersed phase of Sekikawa. This is merely a substitution of known lipid components useful for an emulsion for another as Sekikawa already teaches a dispersed phase comprising an enzymatically modified lipid component, and would have bene obvious to do so depending on the desired properties provided by the oil used.
Further, the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07)
As stated in MPEP 2144.06 ““It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [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.)”
Therefore, it would have been obvious to have the dispersed phase of Sekikawa comprise two lipid components as claimed, an enzymatically modified oil and a native oil, as Bongers teaches that it is well known in the art for a dispersed phase for an emulsion to comprise combinations of native and enzymatically modified oils and further would have been obvious depending on the desired properties of the emulsion.
Sekikawa further teaches a process for preparing the emulsion by dissolving the first and second emulsifier in glycerol to form a continuous phase and dispersing the enzymatically modified lipid (e.g. the dispersed phase) into the continuous phase to form a mixture and emulsifying the mixture to obtain an emulsion.
While Sekikawa teaches a second emulsifier, wherein the second emulsifier can be lecithin and the emulsion has a desired lecithin to enzyme degraded lecithin ratio ([0031]), Sekikawa fails to specifically teach that the dispersed phase comprises the second emulsifier and the enzyme degraded lecithin.
However, it would have been obvious to one of ordinary skill in the art to add the second emulsifier with the dispersed phase.
As stated in MPEP 2144.04: Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
All the ingredients in Sekikawa are mixed together to form an emulsion and therefore it would have been obvious to one of ordinary skill in the art to select any order of mixing ingredients as it would still form the same emulsion absent a showing otherwise.
Sekikawa teaches that the glycerol can be present in an amount from 50-85 wt% ([0022]-[0023]), thus overlapping the claimed range of 81.48-90 wt%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Sekikawa teaches that the sucrose ester can be present in an amount of 0.1-15 wt% ([0041]), thus overlapping the claimed range of 0.1-0.4 wt%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Sekikawa teaches that the lecithin is present in an amount of 0.3 wt% (0.1% enzyme degraded lecithin with a 2.5:7.5 ratio of degraged lecithin to lecithin ([0023] and [0031]), thus falling within the claimed range of 0.1-0.5 % by weight.
Sekikawa teaches that the enzymatically modified lipid component is present in an amount from 0.1-2 wt% ([0023]), while the instant claimed requires an amount from 10-30%.
Bongers further teaches that the dispersed phase comprising an enzymatically modified modified oil and a native oil is in an amount of at least 20% by weight of the emulsion, which overlaps the claimed range of 10-30%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I) It would have been obvious to one of ordinary skill in the art to have Sekikawa comprise the lipid component of Bongers in a similar amount as taught by Bongers as such amount is known to be useful in creating an emulsion.
Further, as stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
It would have been obvious to vary the amount of lipid component in Sekikawa depending on the desired properties of the emulsion, which is well within the ordinary skill to determine through routine experimentation.
With respect to the emulsion being free from water, Sekikawa teaches that the proportion of water can be as little as 0.1% by weight ([0045]), which is so close to 0% that one of ordinary skill in the art would expected the emulsion to have the same properties, with the fact pattern being similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
Therefore, it would have been obvious to one of ordinary skill in the art that the amount of 0% disclosed in the present claims is but an obvious variant of the 0.1% amount disclosed in Sekikawa, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 15, Sekikawa teaches a food and drink product comprising the emulsion of claim 1 ([0024] and [0058), thus meeting the claimed beverages and products based on fat and oil emulsions.
Response to Arguments
Applicant’s arguments with respect to the 103 rejection have been fully considered but were not found persuasive.
Applicant argues that the cited prior art fails to teach or suggest the combination of features as claimed, including the claimed amounts of each components and wherein the oil is sunflower oil and the emulsion is free from water.
This is not found persuasive as the prior art renders the claimed features obvious as described above.
Sekikawa teaches that the glycerol can be present in an amount from 50-85 wt% ([0022]-[0023]), thus overlapping the claimed range of 81.48-90 wt%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Sekikawa teaches that the sucrose ester can be present in an amount of 0.1-15 wt% ([0041]), thus overlapping the claimed range of 0.1-0.4 wt%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Sekikawa teaches that the lecithin is present in an amount of 0.3 wt% (0.1% enzyme degraded lecithin with a 2.5:7.5 ratio of degraged lecithin to lecithin ([0023] and [0031]), thus falling within the claimed range of 0.1-0.5 % by weight.
Sekikawa teaches that the enzymatically modified lipid component is present in an amount from 0.1-2 wt% ([0023]), while the instant claimed requires an amount from 10-30%.
Bongers further teaches that the dispersed phase comprising an enzymatically modified modified oil and a native oil, wherein the oil can be sunflower oil, is in an amount of at least 20% by weight of the emulsion, which overlaps the claimed range of 10-30%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I) It would have been obvious to one of ordinary skill in the art to have Sekikawa comprise the lipid component of Bongers in a similar amount as taught by Bongers as such amount is known to be useful in creating an emulsion.
Further, as stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
It would have been obvious to vary the amount of lipid component in Sekikawa depending on the desired properties of the emulsion, which is well within the ordinary skill to determine through routine experimentation.
With respect to the emulsion being free from water, Sekikawa teaches that the proportion of water can be as little as 0.1% by weight ([0045]), which is so close to 0% that one of ordinary skill in the art would expected the emulsion to have the same properties, with the fact pattern being similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
Therefore, it would have been obvious to one of ordinary skill in the art that the amount of 0% disclosed in the present claims is but an obvious variant of the 0.1% amount disclosed in Sekikawa, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Therefore, as applicant has not presented any arguments rebutting the case of obviousness, applicant’s arguments are not found persuasive.
For the reasons stated above, a 103 rejection is maintained.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791