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 Oct. 6, 2025 has been entered. Claims 1-16 and 18-20 are pending. Claims 1, 15 and 16 have been amended. Claims 16 and 18-20 are withdrawn as being directed to a nonelected method. Claim 17 has been canceled.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 15 recite that the plant-based oil has a melting point of 30 C or greater. The specification does not appear to have support for such limitation as the specification only discusses melting the oil and bringing it to a specified temperature, which does not necessarily indicate that the plant-based oils used specifically have a melting point of 30 C. The instant specification does not even mention a “melting point” for the plant-based oils. Applicant is relying on a heating step to show support, however, heating, or melting, to a desired temperature is not a “melting point”.
Claims 2-14 are included as they depend from claim 1.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 is indefinite as it recites oils that do not have a melting point of 30 C or greater as required by claim 1. Therefore, it is not clear what the plant-based oil can or cannot be.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Deckers et al. (US Patent No. 6,183,762 B1; Feb. 6, 2001) in view of Andersen (US Patent No. 5,707,668; Jan. 13, 1998).
Regarding claim 1, Deckers discloses a spread composition (col 13 lines 40-45, See Examples) comprising:
an oil phase comprising a plant-based oil (col 13, lines 40-45, See Examples), and
plant-based oil bodies emulsified in the oil phase (col 3 lines 25-55, See Examples),
wherein the plant-based oil bodies can be derived from a different plant than the plant-based oil (See Examples wherein the plant-based oil is sunflower oil and the oil bodies are derived from rapeseed),
wherein the spread composition comprises a continuous phase comprises the oil phase (See Examples), and
at least some of the plant-based oil in the oil phase is not naturally present in the oil bodies (See Examples wherein the plant-based oil is sunflower oil and the oil bodies are derived from rapeseed).
With respect to the plant-based oil having a melting point of 30 C or greater, Deckers teaches that the plant-based oil can be sunflower oil, which is the same as claimed in claim 6, and therefore would necessarily have the same properties as claimed. The instant invention appears to be using the same plant-based oil as disclosed in Deckers as claim 6 further clarifies that the plant-based oil can be sunflower oil. Therefore, even though Deckers fails to teach the melting point of the plant-base oil, since the oil is the same it would have the same properties.
Deckers teaches a spread as described above, but fails to further teach that the spread is a crystallized composition.
Andersen discloses a process of preparing a spread and further teaches that the spread composition is crystallized. Andersen teaches that crystallization stabilizes the emulsion against changes that would take place during handling and storage (col 2 lines 5-11).
It would have been obvious to one of ordinary skill in the art to further crystallize the spread of Deckers in order to stabilize the spread against changes during handling and storage as taught by Andersen.
Regarding claims 2-3, Deckers teaches that the spread composition can be free of added emulsifiers and added protein other than those naturally present from the oil bodies (see Examples, Ex. 7 has no added emulsifiers or added protein).
Regarding claim 4, Deckers teaches that the spread composition can have water in an amount of at least 1% and up to 99% (col 11 lines 35-45), thus overlapping the claimed range of 0.1 % to 60%. 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)
Regarding claim 5, Deckers teaches that the oil phase can be present in an amount of 60.6 % by weight of the spread composition (Ex. 7: 200 g oil in 330 g total), thus falling within the claimed range of 30% to 98% by weight.
Regarding claim 6, Deckers teaches that the plant-based oil not naturally found in the oil bodies comprises sunflower oil (Ex 7).
Regarding claim 7, Deckers teaches that the plant-based oil bodies can be present in an amount of 30.3 % by weight of the spread composition (Ex. 7: 100 g oil bodies in 330 g total), thus falling within the claimed range of 0.1 % to 60 % by weight.
Regarding claim 8, Deckers teaches that the oil bodies are from rapeseeds (Ex. 7).
Regarding claim 9, Deckers teaches that the spread composition comprises 60.6 % by weight the plant-based oil and further comprises no animal-based oil (Ex. 7: 200 g sunflower oil in 330 g total), thus meeting the claimed range of 10% to 95% by weight of the spread composition being the plant-based oil and any animal-based oil.
Regarding claim 10, Deckers teaches that the oil bodies in the spread composition are intact (col 3 lines 30-35).
Regarding claim 11, Deckers teaches that the oil bodies can be derived from sunflower (Example 2), which is the same plant-based oil used in the oil phase of the spread compositions (See Examples). Therefore, Deckers teaches that the oil phase can have one or more plant-based oils naturally present in the oil bodies.
Regarding claim 12, Deckers teaches that the washed oil bodies have enhanced stability (col 6 lines 65-67). Deckers further teaches that the stability of the emulsion, or spread, can be enhanced due to the addition of an emulsifier (col 12 lines 30-35) and/or additional ingredients (col 14 lines 5-15).
Decker further evaluates the stability of the oil bodies at 4 C, showing no separation at 25 days (col 30 Table 1).
Therefore, it would have been obvious to one of ordinary skill in the art that the spread composition of Deckers would be a stable emulsion at 1-10 C for one month as Deckers teaches that it is stable at 4 C for 25 days, which is only slightly shorter than one month.
Further, Deckers teaches how one of ordinary skill in the art could increase the stability, by adding specific ingredients in desired amounts, and therefore it would have been obvious to one of ordinary skill in the art to formulate the spread composition of Decker such that it has a desired stability. This is merely routine experimentation that is well understood, routine and conventional in the art.
Regarding claim 13, Deckers teaches that the spread composition can be a plant-based spread (See Examples, Ex. 7).
Regarding claim 14, Deckers teaches a food product comprising the emulsion, or spread of claim 1 (col 13 lines 33-45).
Regarding claim 15, as stated above Deckers discloses an emulsion that can be a margarine or spread composition (col 13 lines 40-45, See Examples) comprising:
An oil phase comprising a plant-based oil (col 13, lines 40-45, See Examples), and
Plant-based oil bodies emulsified in the oil phase (col 3 lines 25-55, See Examples),
Wherein the plant-based oil bodies can be derived from a different plant than the plant-based oil (See Examples wherein the plant-based oil is sunflower oil and the oil bodies are derived from rapeseed),
Wherein the composition comprises a continuous phase comprises the oil phase (See Examples), and
At least some of the plant-based oil in the oil phase is not naturally present in the oil bodies (See Examples wherein the plant-based oil is sunflower oil and the oil bodies are derived from rapeseed).
Deckers teaches that the composition can be free of added emulsifiers other than those naturally present from the oil bodies (see Examples, Ex. 7 has no added emulsifiers).
Deckers teaches that the emulsion composition can have water in an amount of at least 1% and up to 99% (col 11 lines 35-45), thus overlapping the claimed range of 5 % to 40%. 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)
While Deckers teaches that the emulsion can be a margarine, Deckers fails to specifically teach margarine examples and the amount of ingredients therein.
However, Deckers teaches a spread composition comprising the oil phase in an amount of 60.6 % by weight of the spread composition (Ex. 7: 200 g oil in 330 g total), thus falling within the claimed range of 50% to 95% by weight, and the plant-based oil bodies in an amount of 30.3 % by weight of the spread composition (Ex. 7: 100 g oil bodies in 330 g total), thus falling within the claimed range of 5 % to 50 % by weight.
As Deckers teaches that the emulsion can be a margarine and further teaches that it is known in the art to comprise a spread, which is similar to a margarine, comprising the same ingredients in similar amounts as claimed, it would have been obvious to one of ordinary skill in the art to formulate a margarine comprising the oil phase and oil bodies in similar amounts as such amounts are suitable to create a plant-based spread composition. This is merely routine experimentation that is well within the ordinary skill in the art.
With respect to the plant-based oil having a melting point of 30 C or greater, Deckers teaches that the plant-based oil can be sunflower oil, which is the same as claimed in claim 6, and therefore would necessarily have the same properties as claimed. The instant invention appears to be using the same plant-based oil as disclosed in Deckers as claim 6 further clarifies that the plant-based oil can be sunflower oil. Therefore, even though Deckers fails to teach the melting point of the plant-base oil, since the oil is the same it would have the same properties.
Deckers teaches a spread as described above, but fails to further teach that the spread is a crystallized composition.
Andersen discloses a process of preparing a spread and further teaches that the spread composition is crystallized. Andersen teaches that crystallization stabilizes the emulsion against changes that would take place during handling and storage (col 2 lines 5-11).
It would have been obvious to one of ordinary skill in the art to further crystallize the spread of Deckers in order to stabilize the spread against changes during handling and storage as taught by Andersen.
Response to Arguments
Applicant’s amendment has overcome the 112(b) and 102 rejections from the previous Office Action and therefore they have been withdrawn. However, new 112(a) and 112(b) rejections have been made in light of applicant’s amendment.
Applicant’s arguments with respect to the 102 and 103 rejections are moot based upon the new grounds of rejection over Andersen.
With respect to the plant-based oil having a melting point of 30 C or greater, Deckers teaches that the plant-based oil can be sunflower oil, which is the same as claimed in claim 6, and therefore would necessarily have the same properties as claimed. The instant invention appears to be using the same plant-based oil as disclosed in Deckers as claim 6 further clarifies that the plant-based oil can be sunflower oil. Therefore, even though Deckers fails to teach the melting point of the plant-base oil, since the oil is the same it would have the same properties.
Deckers teaches a spread as described above, but fails to further teach that the spread is a crystallized composition.
Andersen discloses a process of preparing a spread and further teaches that the spread composition is crystallized. Andersen teaches that crystallization stabilizes the emulsion against changes that would take place during handling and storage (col 2 lines 5-11).
It would have been obvious to one of ordinary skill in the art to further crystallize the spread of Deckers in order to stabilize the spread against changes during handling and storage as taught by Andersen.
Applicant further argues that Deckers does not provide any guidance for using the emulsion in making a margarine and none of the examples in Deckers include a margarine or butter substitute.
This is not found persuasive as a reference may be relied upon for all that is would have reasonably suggested to one having ordinary skill in the art. As stated in MPEP 2123: 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).
Further, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
As stated above Deckers discloses an emulsion that can be a margarine or spread composition (col 13 lines 40-45, See Examples). While Deckers teaches that the emulsion can be a margarine, Deckers fails to specifically teach margarine examples and the amount of ingredients therein.
However, Deckers teaches a spread composition comprising the oil phase in an amount of 60.6 % by weight of the spread composition (Ex. 7: 200 g oil in 330 g total), thus falling within the claimed range of 50% to 95% by weight, and the plant-based oil bodies in an amount of 30.3 % by weight of the spread composition (Ex. 7: 100 g oil bodies in 330 g total), thus falling within the claimed range of 5 % to 50 % by weight.
As Deckers teaches that the emulsion can be a margarine and further teaches that it is known in the art to comprise a spread, which is similar to a margarine, comprising the same ingredients in similar amounts as claimed, it would have been obvious to one of ordinary skill in the art to formulate a margarine comprising the oil phase and oil bodies in similar amounts as such amounts are suitable to create a plant-based spread composition. This is merely routine experimentation that is well within the ordinary skill in the art.
For the reasons stated above, a 103 rejection is maintained.
Conclusion
No claims are allowed.
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 STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791