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
Response to Amendment
As a result the amendments to the claim, the 112(b) rejection over Claim 3 has been withdrawn due to cancellation of the claim.
All rejections not repeated in this Office Action have been withdrawn.
Claims 1-2, 4-12 and 16-25 are currently pending in this Office Action.
Claim Rejections - 35 USC § 112
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 16-25 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.
Regarding Claim 16, the term “effective” is a relative term which renders the claim indefinite. The term “effective” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 17-25 are rejected based on their dependency on a rejected claim.
Regarding Claims 17-18, the term “the target melting temperature” lacks sufficient antecedent basis.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-2, 4-12, and 16-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gottschalk et al. (US 2019/0269622 A1) in view of Abram (Fats: The food, the bad and the ugly, MSU).
Regarding Claim 1, Gottschalk discloses a mixture comprising hydrogenated soybean oil (matrix material, paragraph 24) and 10% to 30% by weight thymol (volatile substance, paragraph 12 and 15). Since Gottschalk discloses a matrix material in an amount of 30 to 97% by weight (see paragraph 7), Gottschalk therefore teaches a ratio of hydrogenated soybean oil to thymol of 9:1 (90% matrix and 10% volatile substance) to 1:1(30% matrix and 30% volatile substance), thereby encompasses the claimed range. Gottschalk further suggest wherein the matrix material can be hydrogenated soybean oil (paragraph 24) to provide “good results”, and wherein the volatile substance can be thymol to provide “Excellent results” due to its vapor pressure at a certain temperature (paragraph 13 and 15). Therefore, it would have been obvious to one of ordinary skill in the art to select hydrogenated soybean oil and thymol for the purpose of providing a particle comprising a volatile substance with good retention of the volatile substance. Since Gottschalk discloses the hydrogenated soybean oil and thymol that encompasses the claimed ratio and amount of thymol, the prior art is construed to teach an “effective” amount that is capable of preventing heat induced caking of a particulate feed additive which comprises the fully hydrogenated soybean oil. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01.
Gottschalk is silent to wherein the hydrogenated soybean oil is a fully hydrogenated soybean oil. Abram is relied on to distinguish the differences between fully hydrogenated and partially hydrogenated oil. Fully hydrogenated oil produces fat that is free of trans-fat, where trans-fat are known to raise bad cholesterol and lower good cholesterol (see page 2, second and third paragraph). Therefore, it would have been obvious to one of ordinary skill in the art to use fully hydrogenated soybean oil to prevent the addition of trans-fat based on the desired nutritional profile of the particles.
Regarding Claim 2, Gottschalk further teaches comprising 3.55wt% (Hydrophobic substance, Table 1, Batch No. 2, paragraph 77) of at least one terpene (hydrophobic substance such as eugenol, paragraph 26), based on the total weight of the mixture, and wherein said at least one terpene is liquid at room temperature (Eugenol is an oil). Gottschalk discloses that comprising a hydrophobic substance avoid evaporation of the at least one volatile substance (paragraph 8). Therefore, it would have been obvious to one of ordinary skill in the art to further comprise a hydrophobic substance such as eugenol in similar amounts for the purpose of reducing the evaporation of thymol.
Regarding Claim 4, Gottschalk further teaches wherein said mixture further comprises at least one auxiliary compound (texturizer, paragraph 25), and wherein said at least one auxiliary compound is starch (paragraph 25).
Regarding Claim 5, Gottschalk further teaches a particle containing the mixture of Claim 1 (see Abstract).
Regarding Claim 6, Gottschalk further teaches the method comprising the steps:
i. providing a molten mixture by mixing the thymol (volatile substance, paragraph 61), at least one auxiliary compound (texturizer, paragraph 60) with hydrogenated soybean oil in a molten state (paragraph 60 where sunflower oil is interchangeable with soybean oil);
ii. cooling the molten mixture provided in step i) by spraying said mixture into a cooling medium to obtain the particles (spinning disc being the medium, paragraphs 62-63).
Regarding Claim 7, Gottschalk further teaches a pre-mix comprising the mixture according to Claim 1 (paragraph 11).
Regarding Claim 8, Gottschalk is silent to wherein one kilogram of said premix comprises 0.1 g to 10 g of the mixture of Claim 1. However, since Gottschalk discloses that the particles obtained can be used in nutrition such as a food or feed additive by mixing the same in feed or feed premixes (paragraph 11), it would have been obvious to one of ordinary skill in the art to modify the quantity of the particles within the feed premix to achieve the desire flavor or dosage of active ingredients.
Regarding Claim 9, Gottschalk further teaches a food comprising the mixture of Claim 1 (paragraph 11).
Regarding Claim 10, Gottschalk is silent to wherein one ton of said feed comprises 1g to 100g of the mixture of Claim 1. However, since Gottschalk discloses that the particles obtained can be used in nutrition such as a food or feed additive by mixing the same in feed or feed premixes (paragraph 11), it would have been obvious to one of ordinary skill in the art to modify the quantity of the particles within the feed premix to achieve the desire flavor or dosage of active ingredients.
Regarding Claims 11 and 12, Gottschalk discloses a method of manufacturing particles comprising hydrogenated soybean oil and thymol, said method comprising the steps:
i. providing the mixture according to claim 1 (see rejection of Claim 1) in a molten state (see paragraph 61) at a temperature of 85°C (paragraph 60) which meets the limitation of both Claim 11 and 12;
ii. cooling the mixture in the molten state provided in step i) by spraying said mixture into a cooling medium (paragraph 62) thereby obtaining the particulate powder comprised of the particles (paragraph 63).
Regarding Claim 16, as discussed in the rejection of Claim 1, Gottschalk suggest a method comprising forming a mixture of the fully hydrogenated soybean oil with an amount of thymol, and thereafter forming feed additive particles from the mixture thereof (paragraph 11). Since Gottschalk suggest the combination of fully hydrogenated soybean oil and thymol, the prior art is construed to be capable of preventing heat induced caking of a particulate feed additive which comprises fully hydrogenated soybean oil, especially since Gottschalk discloses hydrogenated soybean oil and thymol in the amount similar to Claim 1, and recited in the Specification (Page 6, last paragraph).
Regarding Claims 17 and 18, the claims are rejected because the method which it depends on do not require any step of melting the feed additives. In any case, Gottschalk discloses a melt temperature of 85°C (paragraph 60).
Regarding Claim 19, as discussed in Claims 1 and 16, the prior art is construed to teach wherein the thymol is mixed with the fully hydrogenated soybean oil in an “effective heat induced anticaking amount”. Since Gottschalk discloses the disclosed range in Claim 1, and the Specification, Gottschalk’s composition is construed to be sufficient to achieve a target melting temperature of the feed additive particles which corresponds to a 2nd endothermic peak of the fully hydrogenated soybean oil in the absence of the thymol. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding Claims 20-23, Gottschalk discloses a mixture comprising hydrogenated soybean oil (matrix material, paragraph 24) and 10% to 30% by weight thymol (volatile substance, paragraph 12 and 15). Since Gottschalk discloses a matrix material in an amount of 30 to 97% by weight (see paragraph 7), Gottschalk therefore teaches a ratio of hydrogenated soybean oil to thymol of 9:1 (90% matrix and 10% volatile substance) to 1:1(30% matrix and 30% volatile substance), thereby encompasses the claimed range.
Regarding Claim 24, Gottschalk further teaches comprising 3.55wt% (Hydrophobic substance, Table 1, Batch No. 2, paragraph 77) of at least one terpene (hydrophobic substance such as eugenol, paragraph 26), based on the total weight of the mixture, and wherein said at least one terpene is liquid at room temperature (Eugenol is an oil). Gottschalk discloses that comprising a hydrophobic substance avoid evaporation of the at least one volatile substance (paragraph 8). Therefore, it would have been obvious to one of ordinary skill in the art to further comprise a hydrophobic substance such as eugenol in similar amounts for the purpose of reducing the evaporation of thymol.
Regarding Claim 25, wherein the thymol and the at least one terpene are present in the mixture in a weight ratio of the thymol to the at least one terpene of 2.8:1 to 8.45:1 (10% to 30% thymol, paragraph 12 to 3.55% eugenol, Table 1, Batch No. 2, paragraph 77) which is within the claimed range.
Response to Arguments
The arguments in the remarks filed 2 Sep 2025 has been considered, but is found not persuasive for the following reasons:
Applicant argues on the basis that one of ordinary skill in the art would be directed to prevent heat induced caking of a particulate feed additive which comprises fully hydrogenated soybean oil by forming a mixture of the fully hydrogenated soybean oil with an effective heat induced anticaking amount of thymol. However, the argument is not persuasive because the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In this case, Gottschalk already discloses a mixture comprising hydrogenated soybean oil and thymol which has been modified to fully hydrogenated soybean oil in view of Abram for the purpose of reducing the contents of trans-fat. Gottschalk also discloses the claimed amount of thymol as well as ratio of hydrogenated soybean oil to thymol, therefore also being capable of heat-induced anticaking of a particulate feed additive which comprises the fully hydrogenated soybean oil.
As to Applicant’s assertion that the mixture of hydrogenated soybean oil and thymol as recited in the pending claims provides unexpected synergistic effects (i.e. an increased melting temperature and improved effects against E. coli K88+ as compared to hydrogenated soybean oil alone and thymol alone), the argument is not persuasive because Applicant has not sufficiently established evidence of unexpected results over the closest prior art which is commensurate in scope of the claims (see MPEP 716.02(b)). Further Applicant’s disclosure is directed to results comparative to hydrogenated palm oil (comparative examples 2 and 5); however, since the Gottschalk is also directed to using hydrogenated soybean oil, Applicant’s has not established unexpected results to overcome obviousness over Gottschalk. Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP § 716.02(d) - § 716.02(e). See In re Blondel, 499 F.2d 1311, 1317, 182 USPQ 294, 298 (CCPA 1974) and In re Fouche, 439 F.2d 1237, 1241-42, 169 USPQ 429, 433 (CCPA 1971) for examples of cases where indirect comparative testing was found sufficient to rebut a prima facie case of obviousness For these reasons, the prior art combination has been maintained.
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.
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/T.H.N/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792