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 September 29th 2025 has been considered.
Claims 1-86, 96, 99, 103 and 104 are cancelled.
Claims 87-98, 100-102 and 105-111 are pending in the current application.
Claims 110 and 111 are withdrawn from consideration.
Claims 87-95, 97, 98, 100-102 and 105-109 are examined in the current application.
Any rejections not recited below have been withdrawn.
Claim Rejections - 35 USC § 102/103
In light of the amendment filed on September 29th, 2025, the rejection of claims 87, 88, 90-93, 97-102 and 105-109 under 35 USC §102/103 have been withdrawn.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 87-93, 97, 98, 100-102 and 105-109 are rejected under 35 U.S.C. 103 as being unpatentable over NPL Culp et al., “Analysis of Triglycerides by Consecutive Chromatographic Techniques. II. Ucuhuba Kernel Fat” (from Journal of the American Oil Chemists’s Society Vol.42 (November 1965) pp. 974-978).
Regarding claims 87, 88, 90, 91, 93 and 97-102: Culp discloses the fatty acid and triglyceride profiles of crude and thin-layer-chromatography fractionated Ucuhuba Kernel Fat (See Culp whole document). Culp discloses fractionated Ucuhuba fat triglycerides with a fraction (i.e., fraction I) comprising the following saturated fats and contents: 51.2% C14:0, 13.1% C12:0, 0.5% C10:0, 3.5% C16:0, 0.3% C18:0, and a trivial content of C8:0; and the following unsaturated fats and contents: 8.1% C14:1, 3.0% C16:1 and 20.3% C18:1 (see Culp Table I on page 975), which reads on the vegetable fat composition recited in claims 87, 88, 90, 91, 93, 97, 98, 99, 100, 101 and 102.
As to the trans-fatty acid content recited in claim 87: While Culp does not disclose the presence of trans-fatty acids, Culp discloses a fat that meets the fatty acid profile, and given the fact Culp does not use excessive heat during the fat analysis, the fatty acids more likely to remain cis rather than trans. Accordingly, it is examiner’s position the trans-fatty acid content recited in claim 87 is inherently present in Culp. 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).
Regarding claim 89: Culp discloses the fatty acid and triglyceride profiles of crude and thin-layer-chromatography fractionated Ucuhuba Kernel Fat with triglycerides with SSU to SUS ratios that overlap the SSU to SUS ratios recited in claim 89 (See Culp page 974, right column and Table IV). As set forth in MPEP 2144.05, in the case where the claimed range “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).
Regarding claim 92: Given the fact cocoa butter is known to comprise stearic (18:0), oleic (18:1), palmitic (16:0) and palmitoleic (16:1) acids, the fat composition in Culp reads on “wherein the triglycerides comprise saturated fatty acids comparable to cocoa butter”
Regarding claims 105-109: While Culp does not disclose the intended uses of the ucuhuba kernel fat recited in claims 105-109. Applicants attention is drawn to MPEP §2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the Examiner’s position that the intended uses recited in claims 105-109 do not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Culp discloses the fat composition as presently claimed, it is clear that the fat composition of Culp would be capable of performing the intended use, i.e. a bakery, dairy, cocoa butter replacer, or confectionary, as presently claimed and as required in the above cited portion of the MPEP.
Claims 94 and 95 are rejected under 35 U.S.C. 103 as being unpatentable over NPL Culp as applied to claims 87-93, 97, 98, 100-102 and 105-109 above, and further in view of NPL Nitbani et al., “Isolation and Antibacterial Activity Test of Lauric Acid from Crude Coconut Oil” (from Procedia Chemistry 18 (2016) 132-140).
Regarding claims 94 and 95: Culp discloses fractionated Ucuhuba fat triglycerides with a fractions comprising 20.5% (fraction 0), 13.1% (fraction I) 14.2% (fraction II), or 20.0 (crude fat) C12:0 (i.e., Lauric acid), but fails to disclose Ucuhuba fat with less than 10% or essentially free of lauric acid; However, Nitbani discloses removing lauric acid from fats (e.g., crude coconut oil) using fractional distillation technics, in order to use lauric acid as an antibacterial composition (see Nitbani whole document); Therefore, it would have been obvious to a skilled artisan at the time the application was filed to have modified Culp and to have extracted the lauric acid from the ucuhuba fat, leaving the ucuhaba fat essentially free of lauric acid, in order to use the lauric acid as an antibacterial agent, and thus arrive at the claimed limitations.
Response to Arguments
Applicant's arguments filed on September 29th 2025 have been fully considered but they are not persuasive.
Applicant argues on pages 6-7 of the “Remarks” that the prior art references fail to render the claimed invention obvious, because Culp fails to disclose the trans fatty acid content of 1% recited in claim 87. The examiner respectfully disagrees.
The rejection above has been amended to account for the newly added limitation. While Culp fails to explicitly state a trans fatty acid content of the fractionated Ucuhuba fat, given the fact Culp discloses the same fat contemplated by applicant that is processed through the same low temperature process, it is examiner’s position the trans fatty acid content recited in claim 87 is inherently present in the Ucuhuba fat in Culp. 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).
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 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