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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 5, 2025 has been entered.
Claim Status
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
1-13, 15
Withdrawn claims:
12
Previously canceled claims:
14
Newly canceled claims:
None
Amended claims:
None
New claims:
None
Claims currently under consideration:
1-11, 13, 15
Currently rejected claims:
1-11, 13, 15
Allowed claims:
None
Claim Rejections - 35 USC § 103
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 1, 3, 5 – 9, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Murase (US 4,461,777) (IDS Reference filed 8/30/2022) as evidenced by Dunford (Dunford, Nurhan Turgut. “Properties of Palm Oil”, OSU Extension, published February 2023 [accessed online January 16, 2025]) and Bolick (Bolick, Julie, et al. “Lipid Luminations: Coconut Oil Supplementation and Lipids”, National Lipid Associations, available on July 4, 2016 [accessed online January 17, 2025]).
Regarding claim 1, Murase teaches an oil-in-water emulsion (Abstract) comprising edible oils such as vegetable oils (col. 2, lines 64 – 66). Although Murase does not explicitly disclose non-hydrogenated vegetable oil, Murase discloses that hydrogenation is an optional process for vegetable oil, and that the only requirement for the vegetable oil of the present invention is to have a good flavor and be suitable for use in foodstuff (col. 3, lines 4-9). Thus, one of ordinary skill would recognize that the invention of Murase can use a vegetable oil that has not been subjected to hydrogenation. Murase also teaches an aqueous phase comprising water (col. 3, lines 55 – 57) and a vegetable protein (col. 3, lines 34 – 36, where vegetables are a type of plant). Murase also teaches the edible fats and oils being used in an amount of 10 to 50% (col. 3, lines 21 – 23; because fat is present at an amount between 10 and 50%, it logically follows that the aqueous phase is 50 to 90% by weight) and vegetable proteins being used in an amount of 0.5 to 10% by weight (col. 3, lines 43 – 45).
Although Murase does not explicitly teach the sum of H3, H2M, and H2U triglycerides, Murase does teach that illustrative examples of vegetable fats and oils used can be palm oil, palm kernel oil, and coconut oil (col. 3, lines 1 – 4) and that the edible fats and oils may be used alone or in admixture (col. 2, lines 66 – 67). Murase thus discloses an embodiment wherein the claimed H3+H2M+H2U triglycerides would presumably exceed the claimed range (e.g., where the fat phase comprises 100% palm oil (known in the art to contain more long chain fatty acids) and makes up 50% of the emulsion) and a second embodiment where the claimed H3+H2M+H2U triglycerides would presumably fall below the claimed range (e.g., if the fat phase was 100% coconut oil (known in the art to contain mostly medium chain fatty acids) and makes up 10% of the emulsion). Viewed together, two such embodiments effectively implicitly disclose a range of H3+H2M+H2U triglycerides that would encompass the claimed range, and therefore render the claim obvious.
Evidence to support that palm oil contains mostly long chain fatty acids is provided by Dunford. Dunford shows that most fatty acids in palm oil fall at and above 16 carbons (p. 2, Table 1). Additionally, the instant application defines long chain fatty acids as being greater than or equal to C16 (p. 7, line 12, table). Therefore, one of ordinary skill in the art could reasonably presume that the sum of H3+H2M+H2U triglycerides present in palm oil would exceed the claimed range.
Evidence to support that coconut oil contains mostly medium chain fatty acids is provided by Bolick. Bolick teaches that the saturated fat in coconut oil is largely composed of medium chain triglycerides (p. 1, ¶ 3). Therefore, one of ordinary skill in the art could reasonably presume that the sum of H3+H2M+H2U triglycerides present in coconut oil would fall below the claimed range.
Regarding claim 3, Murase teaches all elements of claim 1 as described above. Murase also teaches that the vegetable protein may be made from oilseeds, peanuts, wheat, or corn (wheat and corn are both known cereal grains) (col. 3, lines 34 – 37).
Regarding claim 5, Murase teaches all elements of claim 1 as described above.
Claim 5 is a product-by-process claim. MPEP §2113 states “[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). “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product.”
Claim 5 recites that the intermediate ingredient of plant-based protein is a plant-based protein isolate or concentrate. Although claim 5 requires the process of concentration or isolation of the plant-based protein, the determination of patentability will be based on the final product.
Although Murase does not explicitly teach that the plant-based protein is in the form of a plant-based protein isolate or concentrate, the plant-based protein isolate or concentrate is an intermediate product that is added into the final product. Any initial distinction between a crude plant-based protein and a plant-based protein isolate no longer exists in the final product material that can additionally comprise the separated impurity material. Because claim 5 does not require the exclusion of materials that would be removed during the isolation or concentration process, the inclusion of the plant-based protein taught by Murase would necessarily constitute the inclusion of a protein isolate or concentrate in the final product.
Regarding claim 6, Murase teaches all elements of claim 1 as described above. Murase also teaches the edible fats and oils being used in an amount of 10 to 50% (col. 3, lines 21 – 23), which overlaps with the claimed range of “25-45 wt.%”.
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Regarding claim 7, Murase teaches all elements of claim 1 as described above. Murase also teaches an oily phase comprising a total of 401.8 kg of fat and 1.6 kg of soybean lecithin (col. 5, lines 1 – 14), which equates to 99.6% of fat in the fat phase, which falls within the claimed range of “30 to 100 wt.% of a fat fraction”.
Regarding claim 8, Murase teaches all elements of claim 1 as described above. Although Murase does not explicitly teach wherein the ratio of H3+ H2M+ H2U triglycerides to HM2 + M3 triglycerides is in the range of 0.1-4.7 in the total fat phase, Murase states that the only requirement for the fats and oils to be useful in the present invention is that they have good flavor suitable for incorporation in foodstuffs and any type produced by any method may be used (col. 3, lines 7 – 11). Blend 10 of the instant application comprises palm kernel stearin and multifractionated palm oil solid fraction obtained from multiple suppliers (p. 22, lines 10 – 11, table). Such an oil would fall within the scope of the broad disclosure of suitable oils of Murase. Murase also states that the oil can be obtained by fractional distillation (col. 3, lines 4 – 6), which further suggests the use of palm stearin fraction in the invention of Murase. Therefore, Murase reasonably teaches a blend of oils with a value that falls within the claimed range of H3+ H2M+ H2U triglycerides to HM2 + M3 triglycerides.
Regarding claim 9, Murase teaches all elements of claim 6 as described above. Murase also teaches using a mixture of palm kernel oil and palm oil (col. 6, lines 1 – 5).
Regarding claim 13, Murase teaches the edible oil-in-water emulsion of claim 1 as described above. Murase also teaches that the oil-in-water emulsion is suitable for use as a whipping cream or cooking cream (col. 4, lines 46 – 49).
Claims 2 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Murase (US 4,461,777) (IDS Reference filed 8/30/2022) as evidenced by Dunford (Dunford, Nurhan Turgut. “Properties of Palm Oil”, OSU Extension, published February 2023 [accessed online January 16, 2025]) and Bolick (Bolick, Julie, et al. “Lipid Luminations: Coconut Oil Supplementation and Lipids”, National Lipid Associations, available on July 4, 2016 [accessed online January 17, 2025]) above, and further in view of He (He, Zhongqi. “Protein profiling of water and alkali soluble cottonseed protein isolates”, Scientific Reports, Vol. 8, Article 9306, published June 18, 2018. [accessed online December 31, 2024]).
Regarding claim 2, Murase teaches all elements of claim 1 as described above.
Murase does not teach wherein the plant-based protein has an average molecular weight in the range of 50-500.
However, in the same field of endeavor, He teaches the protein structure of cotton seeds falling between 10 and 381 kDa (Abstract), which overlaps with the claimed range of “50-500”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to substitute the vegetable protein (which can be cottonseed protein, col. 3, lines 33 – 36) of Murase with the use of cottonseed protein as taught by He. The claim would have been obvious because one of ordinary skill in the art would have been able to make this simple substitution of one known element for another and yield predictable results, see MPEP §2143(B).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the cottonseed proteins from the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Regarding claim 15, Murase teaches all elements of claim 1 as described above.
Murase does not teach wherein the plant-based protein has an average molecular weight in the range of 50-500.
However, in the same field of endeavor, He teaches the protein structure of cotton seeds falling between 10 and 381 kDa (Abstract), which overlaps with the claimed range of “125-300”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to substitute the vegetable protein (which can be cottonseed protein, col. 3, lines 33 – 36) of Murase with the use of cottonseed protein as taught by He. The claim would have been obvious because one of ordinary skill in the art would have been able to make this simple substitution of one known element for another and yield predictable results, see MPEP §2143(B).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the cottonseed proteins from the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Murase (US 4,461,777) (IDS Reference filed 8/30/2022) as evidenced by Dunford (Dunford, Nurhan Turgut. “Properties of Palm Oil”, OSU Extension, published February 2023 [accessed online January 16, 2025]) and Bolick (Bolick, Julie, et al. “Lipid Luminations: Coconut Oil Supplementation and Lipids”, National Lipid Associations, available on July 4, 2016 [accessed online January 17, 2025]) above, and further in view of Gumus (Gumus, Cansu Ekin et al. “Formation and Stability of [Symbol font/0x77]-3 Oil Emulsion-Based Delivery Systems Using Plant Proteins as Emulsifiers: Lentil, Pea, and Faba Bean Proteins”, Food Biophysics, Vol. 12, p. 186-197, published March 21, 2017. [accessed online December 31, 2024]).
Regarding claim 4, Murase teaches all elements of claim 1 as described above.
Murase does not teach wherein the plant-based protein is from Broad bean (Vicia faba), Chickpea (Cicer arietinum), Lentil (Lens culinaris), Canola (B. napus subsp. napus) and/or almond (Prunus dulcis, syn. Prunus amygdalus).
However, in the same field of endeavor, Gumus teaches an oil-in-water emulsion using lentil and faba bean (also known as broad bean) proteins as emulsifiers (Abstract).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the oil-in-water emulsion with vegetable protein of Murase with the use of lentil or faba bean protein taught by Gumus. One would be motivated to make this modification because Gumus teaches that lentil protein and faba bean protein provided more stability with pH changes (p. 192, right-hand column, ¶ 2).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Murase (US 4,461,777) (IDS Reference filed 8/30/2022) as evidenced by Dunford (Dunford, Nurhan Turgut. “Properties of Palm Oil”, OSU Extension, published February 2023 [accessed online January 16, 2025]) and Bolick (Bolick, Julie, et al. “Lipid Luminations: Coconut Oil Supplementation and Lipids”, National Lipid Associations, available on July 4, 2016 [accessed online January 17, 2025]) above, and further in view of Li ‘586 (CN 101591586 B, English translation).
Regarding claim 10, Murase teaches all elements of claim 9 as described above.
Murase does not teach wherein the palm oil is multiple fractionated palm oil stearin.
However, in the same field of endeavor, Li ‘586 teaches a palm oil that has been through secondary fractionation to obtain super palm oil stearin ([0002]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the super palm oil stearin taught by Li ‘586 as the palm oil in the oil-in-water emulsion taught by Murase. One of ordinary skill would be motivated to make this modification because Li ‘586 teaches that super palm oil stearin can be further fractionated to produce products which have no trans-acid and are more nutritious and healthier ([0038]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Murase (US 4,461,777) (IDS Reference filed 8/30/2022) as evidenced by Dunford (Dunford, Nurhan Turgut. “Properties of Palm Oil”, OSU Extension, published February 2023 [accessed online January 16, 2025]) and Bolick (Bolick, Julie, et al. “Lipid Luminations: Coconut Oil Supplementation and Lipids”, National Lipid Associations, available on July 4, 2016 [accessed online January 17, 2025]) above, and further in view of Li ‘263 (CN 108244263 A, English Translation).
Regarding claim 11, Murase teaches all elements of claim 9 as described above.
Murase does not teach wherein the palm kernel oil is palm kernel oil stearin.
However, in the same field of endeavor, Li ‘263 teaches an emulsion composition ([0002]) comprising stearin extracted from palm kernel oil ([0023]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the palm kernel oil stearin of Li ‘263 as the palm kernel oil in the oil-in-water emulsion taught by Murase. One of ordinary skill would be motivated to make this modification because the object of the invention in Murase is to provide an oil-in-water emulsion with a natural texture (col. 2, lines 15 – 16) and Li ‘263 teaches that the use of palm kernel oil fractionated stearin with medium chain fatty acid triglycerides from palm kernel oil improves the poor foaming quality of the emulsion and other problems ([0015]). An improvement of foam quality would likely lead to an improvement in the texture of the invention taught by Murase.
Response to Arguments
Claim Rejections – 35 U.S.C. §103 of claims 1, 3, 5-9 and 13 over Murase, Dunford, and Bolick; claims 2 and 5 over Murase, Dunford, Bolick, and He; claim 10 over Murase, Dunford, Bolick, and Li ‘586; and claim 11 over Murase, Dunford, Bolick, and Li ‘263: Applicant’s arguments filed February 5, 2026 have been fully considered but they are not persuasive.
In response to Applicant’s statement that the prior arguments are incorporated herein (Remarks, p. 6, ¶ 2), the Examiner maintains all of the responses to said arguments that were presented in the Final Rejection mailed 09/08/2025.
Applicant argued that claim 1 differs from Murase in two fundamental respects: the presence of a plant protein and a non-hydrogenated vegetable fat phase. Applicant asserts that none of the secondary publications remedy these differences (Remarks, p. 6, ¶ 2-3).
This argument has been considered. However, Murase teaches that the aqueous phase comprises vegetable protein (col. 3, lines 34-36). Vegetables are well known in the art to be a type of plant. As stated above, Although Murase does not explicitly disclose non-hydrogenated vegetable oil, Murase discloses that hydrogenation is an optional process for vegetable oil, and that the only requirement for the vegetable oil of the present invention is to have a good flavor and be suitable for use in foodstuff (col. 3, lines 4-9). Thus, one of ordinary skill would recognize that the invention of Murase can use a vegetable oil that has not been subjected to hydrogenation because hydrogenation is not a required step of Murase’s invention. MPEP §2123(I) states “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments.” Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
Applicant further argued that Murase’s emulsion would have no reasonable expectation that it would be a stable emulsion and could be used as a whipping cream or multipurpose cooking cream (Remarks, p. 6, ¶ 3).
This argument has been considered. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the invention being a whipping cream or multipurpose cooking cream) 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 presented data on Example 3 of Murase to demonstrate that Murase’s fat blend did not have the same properties as that of the claimed invention. Applicant argued that the invention had unexpected results over the invention of Murase. (Remarks, p. 6, ¶ 4- p. 7, ¶ 2).
This argument has been considered. However, Example 3 of Murase is not relied upon in the rejection of the claimed invention. MPEP §2123(I) states “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments.” Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). The Applicant has only provided data for single embodiment of Murase that is not representative of the teachings that are relied upon by the Examiner. Thus, the data provided by the Applicant is insufficient for a showing of unexpected results.
Furthermore, Applicant admitted that the composition of Murase remained stable and whippable at 4 hours (Remarks, p. 7, ¶ 1). Although the composition of Murase does not maintain the stability at 48 hours, this is not a requirement of the claimed invention. Claim 1 does not recite the stability of the composition. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the invention being stable after 48 hours) 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 further argued that the results are unexpected because Example 3 of Murase uses PK 33, which is a partially hydrogenated fat (Remarks, p. 7, ¶ 3- p. 8, ¶ 2).
This argument has been considered. However, as stated above, Example 3 is not relied upon to teach the claimed invention. As stated in the rejection of claim 1, one of ordinary skill would have recognized that a non-hydrogenated vegetable oil can be used in the invention of Murase. MPEP §2123(I) states “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments.” Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Example 3 of Murase is not relied upon in the rejection of the claimed invention.
The rejections of claims 1-11, 13, 15 have been maintained herein.
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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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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