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 the Application
Receipt of the Request for Continued Examination (RCE under 37 CFR 1.114) and the Response and Amendment filed 23 October 2025 is acknowledged. Receipt of the signed Declaration under 37 C.F.R. § 1.132 filed on 23 October 2025 is acknowledged.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 29-56
Withdrawn claims: 47 and 49-56
Previously canceled claims: 1-28
Newly canceled claims: None
Amended claims: None
New claims: None
Claims currently under consideration: 29-46 and 48
Currently rejected claims: 29-46 and 48
Allowed claims: None
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 23 October 2025 has been entered.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 29-46 and 48 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Juul (US 2015/0296830 A1).
Regarding claim 29, Juul teaches a method for producing a bloom-retarding component for chocolate and chocolate-like products, said method comprising the steps of:
providing a triglyceride composition (TGC) comprising 40-95 wt% of mono-unsaturated symmetrical triglycerides selected from the group consisting of POP, StOSt, and POSt, where P is palmitic acid, St is stearic acid, and O is oleic acid – “said triglyceride composition comprising at least 40 wt% of mono-unsaturated symmetrical triglycerides selected from the group consisting of POP, StOSt, and POSt” ([0012]). The disclosed range is seen as being sufficiently specific to anticipate the claimed range, MPEP § 2131.03(II).
heat treating the TGC in a sealed vessel for at least 1 hour and at a temperature of at least 220°C to form a heat-treated triglyceride composition (HT TGC) – “the deodorizing is performed for between 60 and 600 minutes” ([0019]). While this step is characterized as a deodorizing step, the process is carried out at a temperature of at least 220°C ([0022]), and at a reduced pressure (i.e., in a sealed vessel) ([0073]). The deodorization being conducted at a reduced pressure necessitates that the vessel is sealed in order to maintain a reduced pressure environment. Therefore, at least the first 60 minutes of such a step constitute a heat treatment in a sealed vessel as claimed.
and deodorizing the HT TGC from the heating step to form a deodorized heat-treated triglyceride composition (DZ GT/TGC) ([0012], [0019]). The continued process of deodorization after at least the first hour up to 600 minutes constitutes deodorizing the HT TGC as claimed.
Therefore, claim 29 is anticipated by the prior art.
Regarding claim 30, Juul also teaches that the TGC, prior to the heat treatment step, is stripped with an inert gas, or a saturated water steam, at a temperature of no more than 220°C and for a minimum of 5 minutes ([0067], [0071], [0073]). This process is seen as a low-temperature deodorization, which is standard in the art for treating TGCs comprising at least 40% by weight of symmetric triglycerides ([0023]). Juul discloses that standard cocoa butter was used as the TGC ([0071]) and that the cocoa butter may be partly or fully deodorized at low temperatures (e.g., 180°C) for times shorter than 60 minutes prior to the high-temperature deodorization ([0066]). Deodorizations were carried out at reduced pressure in standard equipment purged with N2 (i.e., inert gas) and with added steam from a steam generator ([0073]). The disclosed temperature of 180°C lies inside the claimed range of no more than 220°C. The claimed range of at least 5 minutes lies inside the disclosed time range of 0-60 min. The disclosed ranges are seen as being sufficiently specific to anticipate the claimed ranges, MPEP § 2131.03(II).
Regarding claim 31, Juul also teaches that the TGC comprises 55 to 85 wt% TGs selected from POP, StOSt, and POSt – “…the triglyceride composition comprises at least 50% by weight of monounsaturated symmetric triglycerides selected from the group consisting of POP, StOSt, and POSt…” ([0017]). The disclosed range is seen by the Examiner as being sufficiently specific to anticipate the claimed range, MPEP § 2131.03(II).
Regarding claim 32, Juul also teaches that the heat treatment step is undertaken for 1 to 8 hours and/or at a temperature of 220 to 260°C. Juul teaches that “the deodorizing is performed for between 60 and 600 minutes” ([0019]). While this step is characterized as a deodorizing step, the process is carried out at a temperature of between 220°C and 260°C ([0022]), and at a reduced pressure (i.e., in a sealed vessel) ([0073]). Therefore, at least the first 1 to 8 hours of such a step are seen as a heat treatment as claimed.
Regarding claim 33, Juul also teaches that the heat treatment step is undertaken for 4 to 6 hours and/or at a temperature of 245 to 260°C. Juul teaches that “the deodorizing is performed for between 60 and 600 minutes” ([0019]). While this step is characterized as a deodorizing step, the process is carried out at a temperature of between 240°C and 260°C ([0022]), and at a reduced pressure (i.e., in a sealed vessel) ([0073]). Therefore, at least the first 4 to 6 hours of such a step are seen as a heat treatment as claimed. The disclosed temperature range is seen as being sufficiently specific to anticipate the claimed range, MPEP § 2131.03(II).
Regarding claim 34, Juul teaches that the sealed vessel, as claimed in claim 29, is operated under vacuum up to a maximum of 2 mbar – “…reduced pressure, such as 0.5, 1, 1.5, 2, 2.5, 3, 3.5, 4, 4.5, or 5 mbar” ([0044]). No indication is given in the specification that a maximum pressure up to 2 mbar as claimed is critical. Therefore, the disclosed range is seen as being sufficiently specific to anticipate the claimed range, MPEP § 2131.03(II).
Regarding claim 35, Juul also teaches that deodorization is carried out under reduced pressure (i.e., in a sealed vessel) under an inert atmosphere (e.g., nitrogen gas) ([0073]).
Regarding claim 36, Juul also teaches that the HT TGC is deodorized for 10 minutes to 10 hours, at a temperature of 160°C to 240°C ([0074], Table 1), and at a pressure of 0 to 20 mbar – “…reduced pressure, such as 0.5, 1, 1.5, 2, 2.5, 3, 3.5, 4, 4.5, or 5 mbar” ([0044]).
Regarding claim 37, Juul also teaches that said HT TGC is deodorized for 20 to 150 minutes, at a temperature of 200 to 220°C ([0074], Table 1), and at a pressure of 0 to 10 mbar – “…reduced pressure, such as 0.5, 1, 1.5, 2, 2.5, 3, 3.5, 4, 4.5, or 5 mbar” ([0044]).
Regarding claim 38, Juul also teaches that the HT TGC is subsequently deodorized without any further processing of the HT TGC before deodorization. Juul teaches that Vest African standard cocoa butter (i.e., the TGC) is provided and subsequently deodorized ([0071], [0073]). As the first amount of time of the disclosed deodorization step constitutes a heat treatment, continuation of the deodorization process fulfils the limitation of this claim.
Regarding claim 39, Juul also teaches that the HT TGC is further processed prior to deodorization. Juul teaches an embodiment of the invention in which “addition of water to the triglyceride composition prior to deodorization has surprisingly been shown to promote the formation of mono-unsaturated asymmetric triglycerides (SSO) and tri-saturated triglycerides (SSS)” ([0040]). In viewing the first portion of the disclosed deodorization step as a heat treatment, halting the process after the claimed heat treatment duration to add water, and subsequently resuming the deodorization is viewed to be within the scope of this claim.
Regarding claim 40, Juul also teaches the step of blending the DZ/HT TGC with a fat composition for chocolate or chocolate-like products (FCCH) in an amount of 0.1 % to 97% by weight of the fat composition. The method of Juul “comprises the step of adding the deodorized triglyceride composition to a fat composition for chocolate or chocolate-like products in an amount of between 0.1% and 90% by weight of the fat composition…” ([0025]). The disclosed range lies inside the claimed range.
Regarding claim 41, Juul also teaches that the FCCH comprises cocoa butter and/or a cocoa butter equivalent (p. 8, claim 6).
Regarding claim 42, Juul also teaches that the blended DZ/HT TGC and FCCH has an SSO/SSS ratio of 0.4 to 1.7 in light of the following facts:
Juul teaches that the blended deodorized TGC and FCCH has an SSO/SSS ratio of 0.4 to 1.7 (Table 1, [0074]). Table 1 ([0074]) indicates that untreated cocoa butter (i.e., the FCCH) has an SSO/SSS ratio of <0.5 (Table 1, col. 2, row 4) and presumably above 0.4 as a ratio of “<0.4” is indicated elsewhere in Table 1. Therefore, untreated cocoa butter has an SSO/SSS ratio that falls inside the claimed range. Table 1 also indicates that deodorizing the cocoa butter for 6 hours at 260°C results in an SSO/SSS ratio of 1.4 (p. 5, Table 1-continued, [0074]). Since the untreated cocoa butter and the TGC deodorized at the highest temperature and for the longest time indicated on Table 1 both have SSO/SSS ratio values inside the claimed range, blending the deodorized TGC and FCCH in any proportion will yield an SSO/SSS ratio inside the claimed range. Furthermore, Juul teaches that the relative amount of asymmetric monounsaturated triglycerides (i.e., SSO) in triglyceride compositions rich in monounsaturated symmetric triglycerides confers bloom-retarding properties to the composition ([0014]). Juul teaches fractionating the composition after deodorization to remove a portion of the tri-saturated triglycerides (SSS), thereby increasing the SSO/SSS ratio as necessary ([0024]). Juul also discloses optimizing the bloom-retarding properties of the composition by modulating the amount of deodorized TGC in the blend with the FCCH ([0027]).
Regarding any effect of a heat treatment step prior to the deodorization step on the SSO/SSS ratio of the DZ/HT TGC, Juul teaches that the SSO/SSS ratio of the deodorized TGC is unchanged from the SSO/SSS ratio of the untreated cocoa butter by deodorization temperature or time until a deodorization temperature of 220°C is sustained for over 2 hours, and the ratio does not increase until after 4 hours at 220°C (Table 1, [0074]). These conditions fall within those of the heat treatment step claimed in claim 29. Therefore, any change in the SSO/SSS ratio comes from the deodorization step. As has been established above, since the untreated cocoa butter (i.e., the FCCH) and the TGC deodorized at the highest temperature and for the longest time indicated on Table 1 both have SSO/SSS ratio values inside the claimed range, blending the deodorized TGC and FCCH in any proportion will yield an SSO/SSS ratio inside the claimed range. Therefore, the same applies for blending the DZ/HT TGC and the FCCH, and this claim is anticipated.
Regarding claim 43, Juul also teaches that the FCCH is cocoa butter, and the DZ/HT TGC is blended with the cocoa butter in an amount of 5 to 97% by weight of the cocoa butter ([0032]).
Regarding claim 44, Juul also teaches that the TGC is selected from the group consisting of cocoa butter, shea oil (Butyrospermum parkii), palm oil (Elaeis guineensis, Elaeis olifera), illipe oil (Shorea spp.), mango oil (Mangifera indica), sal oil (Shorea robusta), kokum oil (Garcinia indica), any fraction thereof and/or any combination thereof ([0035]).
Regarding claim 45, Juul also teaches that the TGC is cocoa butter – “A triglyceride composition comprising at least 40% by weight of mono unsaturated symmetric triglycerides selected from the group consisting of POP, StOSt, and POSt…for example cocoa butter…” ([0057]).
Regarding claim 46, Juul also teaches adding milk fat to the TGC prior to the heat treatment step ([0037] – [0038]). Since deodorization is a form of heat treatment (i.e., the composition is exposed to temperatures of at least 220°C for at least 60 minutes ([0045])), and Juul teaches that adding milk fat to the TGC prior to deodorization does not compromise the bloom retarding properties of the deodorized blend and yields a bloom retarding fat composition with different nutritional properties ([0037] – [0038]), this claim is anticipated.
Regarding claim 48, Juul also teaches a method of manufacturing a chocolate or chocolate-like product comprising the step of adding a DZ/HT TGC, or blend thereof, according to claim 29 as the only vegetable fat – “the composition deodorized according to the present invention may be used for chocolate or chocolate-like products without the addition of other vegetable fat…” ([0028]).
Double Patenting
Claims 29, 31-38, 40, 41, 43, 46, and 48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5-10, and 13 of U.S. Patent No. 11,039,627 in view of Juul (US 2015/0296830 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 29, patent claim 1 recites, “A method for producing a bloom-retarding component for chocolate and chocolate-like products, the method comprising the step of: Deodorizing a triglyceride composition, wherein the triglyceride composition comprises at least 40% by weight of mono unsaturated symmetric triglycerides selected from the group consisting of POP, StOSt and POSt, wherein P equals palmityl, St equals stearyl and O equals oleyl, and wherein the said triglyceride composition further comprises cocoa butter, and wherein the deodorizing taking place for at least 60 minutes at a temperature of at least 235° C”.
Claim 29 differs from patent claim 1 in that claim 1 does not recite a heat treatment step in a sealed vessel.
However, Juul teaches that the deodorization step is carried out at a reduced pressure (i.e., in a sealed vessel) ([0073]). Juul also teaches that “low pressure will provide the triglyceride composition with excellent properties” ([0044]).
Therefore, at least the first 60 minutes of such a step are seen as a heat treatment in a sealed vessel as claimed in claim 29. The claimed ranges overlap with the ranges recited in the patent claims. In a 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).
Regarding claim 31, patent claim 2 recites, “The method according to [patent] claim 1, wherein the triglyceride composition comprises at least 50% by weight of mono unsaturated symmetric triglycerides selected from the group consisting of POP, StOSt and POSt, wherein P equals palmityl, St equals stearyl and O equals oleyl.” The claimed range of 55-85% by weight overlaps with the range recited in the patent claim.
Regarding claim 32, patent claim 10 recites, “The method according to claim 1, wherein the deodorizing is performed for between 80 minutes to 480 minutes.” The claimed range of 1-8 hours (60-480 min) overlaps with the range recited in the patent claim.
Regarding claim 33, patent claim 13 recites, “The method according to claim 1, wherein the deodorizing is performed at a temperature between 240°C. and 260°C.” The claimed range of 245°C. and 260°C lies inside the range recited in the patent claim.
Regarding claim 34, patent claim 1 teaches all elements of claim 29 as described above.
Claim 34 differs from patent claim 1 in that claim 1 does not teach a heat treatment step in a sealed vessel under a vacuum up to a maximum of 2 mbar.
However, Juul teaches that the deodorization step is carried out at a reduced pressure (i.e., in a sealed vessel) ([0073]). Juul also teaches that “low pressure will provide the triglyceride composition with excellent properties. Examples of low pressure includes reduced pressure, such as “…reduced pressure, such as 0.5, 1, 1.5, 2, 2.5, 3, 3.5, 4, 4.5, or 5 mbar” ([0044]).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to carry out the deodorization in patent claim 1 in a sealed vessel at a low pressure as taught by Juul to give beneficial properties to the deodorized compound. Therefore, at least the first 60 minutes of such a step are seen by the Examiner as a heat treatment in a sealed vessel as claimed in claim 29. The claimed range of up to 2 mbar overlaps with the range disclosed by Juul. In a 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).
Regarding claim 35, patent claim 1 teaches all elements of claim 29 as described above.
Claim 35 differs from patent claim 1 in that claim 1 does not recite a heat treatment step in a sealed vessel under operated under an inert atmosphere.
However, Juul teaches that the deodorization step is carried out at a reduced pressure (i.e., in a sealed vessel) ([0073]). Juul also teaches that the deodorization equipment is purged with nitrogen gas (i.e., providing an inert atmosphere) ([0073]). It is a well-known fact in chemistry that increasing heat increases the speed of reactions, including oxidation reactions. A way to further limit oxidation is to reduce or remove the amount of oxygen in the system, such as by purging the reaction vessel with nitrogen gas, as disclosed by Juul.
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to carry out the method of patent claim 1, as described regarding claim 29, such that the heat treatment step is performed under an inert atmosphere. One of ordinary skill in the art would have been motivated to do so to reduce the potential for oxidative decomposition of the triglyceride composition. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because providing an inert atmosphere is a way to limit oxidative decomposition of compounds.
Regarding claims 36 and 37, patent claim 1 teaches all elements of claim 29 as described above. Rationale regarding claim 34 also applies to these claims, and the claimed ranges in claims 36 and 37 overlap with the prior art ranges.
Regarding claim 38, patent claim 1 teaches all elements of claim 29 as described above. As the first amount of time of the disclosed deodorization step is seen as a heat treatment, continuation of the deodorization process of patent claim 1 fulfils the limitation of this claim.
Regarding claim 40, patent claim 1 teaches all elements of claim 29 as described above. Patent claim 5 recites, “The method according to claim 1, further comprising the step of adding the deodorized triglyceride composition to a fat composition for chocolate or chocolate-like products in an amount of between 0.1% and 90% by weight of the fat composition.” The claimed range of 0.1-97% by weight overlaps with the range recited in the patent claim.
Regarding claim 41, patent claim 6 teaches that the fat composition comprises cocoa butter and/or a cocoa butter equivalent.
Regarding claim 43, patent claim 7 teaches that the FCCH is cocoa butter, and the DZ/HT TGC is blended with the cocoa butter in an amount of 5-97% by weight of the cocoa butter.
Regarding claim 46, patent claim 9 teaches adding milk fat to the TCS prior to the heat treatment step. Since deodorization is a form of heat treatment, this claim is rendered obvious by patent claim 9.
Regarding claim 48, patent claim 8 teaches a method of manufacturing a chocolate or chocolate-like product comprising the step of adding a DZ/HT TGC, or blend thereof, as the only vegetable fat.
Response to Arguments
Claim Rejections – 35 U.S.C. § 102: Applicant's arguments filed 23 October 2025 have been fully considered but they are not persuasive.
Claims 29-46 and 48 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Juul (US 2015/0296830 A1).
Applicant first argued that independent claim 29 recites “heat treating the TGC in a sealed vessel for at least 1 hour and at a temperature of at least 220°C to form a heat-treated triglyceride composition (HT TGC)” and “deodorizing the HT TGC from the heating step to form a deodorized heat-treated triglyceride composition (DZ GT/TGC)”, and that since Juul discloses only deodorization, Juul fails to provide a heat treatment step followed by a separate deodorization step (p. 2, ¶ 4).
Applicant’s argument has been considered, but it is not persuasive. The scope of the claim is so broad as to include the heat treatment as part of the deodorization step disclosed by Juul. Juul states, “the deodorizing is performed for between 60 and 600 minutes” ([0019]). While this step is characterized as a deodorizing step, the process is carried out at a temperature of at least 220°C ([0022]), and at a reduced pressure (i.e., in a sealed vessel) ([0073]). Therefore, at least the first 60 minutes of such a qualify as a heat treatment as claimed, and the continued process of deodorization after at least the first hour up to 600 minutes qualifies as deodorizing the HT TGC as claimed. Absent any additional limitations to the claims to distinguish the heat treatment step from the deodorization step, the cited prior art reads on the claims as written.
Applicant cited the Declaration under 37 CFR 1.132 in support of their argument (pp. 2-3, bridging ¶).
The Declaration under 37 CFR 1.132 filed 23 October 2025 (the “Juul Declaration”) is insufficient to overcome the rejection of claims 29-46 and 48 based upon anticipation under 35 U.S.C § 102(a)(1) as set forth in the last Office action because a declaration under 37 CFR 1.132 is not applicable to claims rejected under 35 U.S.C § 102(a)(1). Declarations under 37 CFR 1.132 are covered by MPEP § 716. This section details how a declaration under 37 CFR 1.132 may be used as evidence of nonobviousness, including secondary considerations, for rejections under 35 U.S.C § 103, to provide evidence of utility or operativeness for rejections under 35 U.S.C § 101, and/or to provide evidence of sufficiency of disclosure for rejections under 35 U.S.C § 112. Nowhere in MPEP § 716 is using a declaration under 37 CFR 1.132 to provide evidence against a rejection under 35 U.S.C § 102(a)(1) described. Claims rejected under 35 U.S.C § 102 may be overcome by a Declaration under 37 CFR 1.130 to disqualify the cited disclosure as prior art (which is not applicable in the present case because the reference was published outside the 1-year grace period). See MPEP § 717.01. Therefore, the Juul Declaration cannot be used to overcome the rejections.
Still, the Juul Declaration has been considered by the Examiner.
MPEP § 716.01(c)(III) states, “In assessing the probative value of an expert opinion, the examiner must consider:
1) the nature of the matter sought to be established,
2) the strength of any opposing evidence,
3) the interest of the expert in the outcome of the case, and
4) the presence or absence of factual support for the expert’s opinion.
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 227 USPQ 657 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986).”
The Declaration seeks to establish, by opinion evidence, that the disclosure of Juul differs from the method described and claimed in the instant application, particularly that Juul fails to teach or suggest at least “heat treating the TGC in a sealed vessel for at least 1 hour at a temperature of at least 220°C to form a heat-treated triglyceride composition (HT TGC); and deodorizing the HT TGC from the heating step to form a deodorized heat-treated triglyceride composition (DZ/HT TGC)” as recited in independent claim 29.
Regarding opposing evidence, Juul teaches deodorizing a triglyceride composition, wherein the triglyceride composition comprises at least 40% by weight of mono unsaturated symmetric triglycerides selected from the group consisting of POP, StOSt and POSt, wherein P equals palmityl, St equals stearyl and O equals oleyl, and wherein the triglyceride composition further comprises cocoa butter, and wherein the deodorizing taking place for between 60 minutes to 800 minutes at a temperature of at least 235° C (claim 3). Deodorizations were carried out at a reduced pressure (i.e., in a sealed vessel) ([0073]). The deodorization being conducted at a reduced pressure necessitates that the vessel is sealed in order to maintain a reduced pressure environment. Therefore, at least the first 60 minutes of such a step constitute a heat treatment in a sealed vessel as claimed.
The Juul Declaration is submitted by one of the inventors, who is considered an interested party to the outcome of the case. “An affidavit of an applicant as to the advantages of their claimed invention, while less persuasive than that of a disinterested person, cannot be disregarded for this reason alone. Ex parte Keyes, 214 USPQ 579 (Bd. App. 1982); In re McKenna, 203 F.2d 717, 97 USPQ 348 (CCPA 1953).” See MPEP § 716.01(c)(III). As such, the Juul Declaration is being considered as an expert opinion of an interested party.
In reviewing the Juul Declaration, it has been found that the statements are conclusory and unsupported by factual evidence. The Juul Declaration asserts that Juul fails to provide any disclosure of a heat treatment step followed by a separate deodorization step as recited in the claims, and that Juul’s deodorization is merely run for a longer period and at higher temperatures than a standard deodorization. The Juul Declaration asserts that there is no heat treatment step in Juul, which combines its deodorization with steam from a steam generator, and that this is different from the pending claims which recite heat treatment in a sealed vessel, which the Declaration asserts Juul fails to disclose. The Juul Declaration asserts that the ordinary artisan would readily apricate that the claimed deodorization and heat treatment steps are separate, individual steps and that Juul’s disclosure is limited to deodorization without a separate heat treatment step (¶ 7).
It is noted the claims do not provide anything to patentably differentiate the heat treatment from the deodorization, for example a transfer to a different vessel, a change in temperature below the claimed “at least 220°C”, or any change to indicate that the heat treatment is not encompassed by the deodorization. The Juul Declaration provides no remedy to this issue. Applicant continues to assert that the steps are separate without providing any supporting evidence or explanation as to why one of ordinary skill in the art would recognize the steps as separate. There is no explanation as to why the deodorization at a reduced pressure, disclosed by Juul, does not qualify as the heat treatment in a sealed vessel as claimed. Mere conclusory statements are not persuasive.
The remainder of the Juul Declaration discusses that the ordinary artisan would be discouraged from turning to teachings on deodorization that would likely cause formation of unwanted byproducts to arrive at the pending claims (¶ 9).
A lack of motivation is an argument against a rejection under 35 U.S.C. § 103. The claims are presently rejected under 35 U.S.C. § 102(a)(1). As such, the assertion does not apply to the present rejection.
In view of the foregoing, the Juul Declaration is insufficient to overcome the present rejections, the fact that rejections under 35 U.S.C. § 102(a)(1) cannot be overcome by a Declaration under 37 CFR 1.132 notwithstanding.
Applicant further argued that the Juul Declaration establishes that the claimed deodorization and heat treatment are separate, individual steps, and the Office has failed to provide any evidence to the contrary, raising unsubstantiated assertions that Juul’s disclosure about deodorization also encompasses heat treatment that to against the well-established principle about deodorization and heat treatment being separate (p. 6, ¶ 1).
Applicant’s argument has been considered, but it is not persuasive. As described hereinabove, Applicant provides no explanation as to why the deodorization at a reduced pressure, disclosed by Juul, does not qualify as the heat treatment in a sealed vessel as claimed (i.e., how the claimed steps are different). The burden of proof is on Applicant, not the Office. The claims are interpreted using the broadest reasonable interpretation in light of the specification as required by MPEP § 2111. Applicant has not provided any substantiated reason as to why the interpretation is unreasonable.
Therefore, Applicant’s arguments are not found persuasive, and the rejection of claim 29 is maintained.
The rejections of dependent claims 30-46 and 48 are also maintained accordingly.
Claim Rejections – Double Patenting:
Applicant's arguments filed 23 October 2025 have been fully considered but they are not persuasive.
Claims 29, 31-38, 40, 41, 43, 46, and 48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5-10, and 13 of U.S. Patent No. 11,039,627 in view of Juul (US 2015/0296830 A1).
Applicant first argued, citing WO 2014/071955, the WIPO document corresponding to US 2015/0296830 A1 cited above, that one of ordinary skill in the art would not have been motivated to turn to the published application because the instant specification discusses that high temperatures during deodorization generally result in the formation of unwanted glycidol, 2-MCPD, 3-MCPD, or esters thereof, and that these products were increased in the disclosed deodorization process of the ‘955/’830 documents (p. 3, ¶ 5- p. 4, ¶ 2) as evidenced by the comparative data in Table 1 of the instant specification (pp. 4-5, bridging ¶). Applicant argued that the presence of such unwanted byproducts would have discouraged one of ordinary skill in the art from turning to the ‘955/’830 document to arrive at the pending claims (pp. 4-5, bridging ¶), or expect success in doing so given the well-documented evidence that such byproducts are not reduced when deodorizing according to the ‘955/’830 publication, citing MPEP § 2143.02 and the Juul Declaration at ¶ 9 (pp. 4-5, bridging ¶).
However, the ‘830/’955 documents do not even mention glycidol, 2-MCPD or 3-MCPD. Therefore, one of ordinary skill in the art would not have been discouraged by the cited documents from using information from therein to arrive at the claimed invention. It is also noted that the features upon which applicant relies (i.e., significantly lowering the amounts of glycidol, 2-MCPD, and 3-MCPD) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant also argued that because the concerns regarding asymmetry only became apparent after the methods of the ‘627 patent were compared to with those of the instant specification, requiring the prior art to recognize the improvement makes little sense, and the prior art still lacks motivation for relying on the ‘627 patent (p. 6, ¶ 2).
Applicant’s argument has been considered, but it is not persuasive. The nonstatutory double patenting rejection is over the ‘627 patent in view of Juul. Both documents were published before the instant specification. Since the concerns regarding asymmetry only became apparent after the methods of the ‘627 patent were compared to with those of the instant specification, one of ordinary skill in the art, before the effective filing date of the claimed invention, would not have been concerned with said concerns regarding asymmetry. Thus, the motivation provided in the rejection to rely on the’955/’830 publication stands.
Applicant further argued that the findings of the instant specification of significantly lowering the amounts of glycidol, 2-MCPD, and 3-MCPD represent unexpected results (pp. 6-7, bridging ¶).
Applicant’s assertion of unexpected technical results is acknowledged. Applicant’s argument has been considered, but it is not found to be persuasive. MPEP § 2145 states, “If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc)”, and “[r]ebuttal evidence may include evidence of ‘secondary considerations,’ such as ‘commercial success, long felt but unsolved needs, [and] failure of others.’ Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 4459, 467. See also, e.g., In re Piasecki, 745 F.2d 1468, 1473, 223 USPQ 785, 788 (Fed. Cir. 1984) (commercial success). Rebuttal evidence may also include evidence that the claimed invention yields unexpectedly improved properties or properties not present in the prior art. Rebuttal evidence may consist of a showing that the claimed compound possesses unexpected properties. Dillon, 919 F.2d at 692-93, 16 USPQ2d at 1901. A showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997)”.
“Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the ‘objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.’ In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)”. See MPEP § 716.02(d).
In the present case, Applicant’s evidence is not commensurate in scope with the claimed invention. The examples are not commensurate in scope with the claimed invention because it cannot be ascertained whether the alleged unexpected result occurs over the entire claimed ranges from the examples provided, and none of the claims are directed toward the specific embodiment provided by any of the examples. As one example, in Table 1 of the instant specification, the heat treatment was conducted for 6 hours at 250°C, and the range in claim 29 is “at least 1 hour and at a temperature of at least 220°C”. The claimed range is far broader than what is supported by the evidence provided. The Juul Declaration does not offer any further evidence.
As written, the instant claims would have been obvious given the patented claims and the information disclosed by the ‘830 publication. Applicant’s arguments are therefore not persuasive, and the double patenting rejection is maintained.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
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/JAMES P. SHELLHAMMER/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793