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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 17, 2025 has been entered.
Claim Status
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
1-7, 9-12
Withdrawn claims:
1-4, 10-11
Previously canceled claims:
None
Newly canceled claims:
8
Amended claims:
5
New claims:
12
Claims currently under consideration:
5-7, 9, 12
Currently rejected claims:
5-7, 9, 12
Allowed claims:
None
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 6 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
MPEP §2106 sets forth the Subject Matter Eligibility Test to determine if a claim is directed to patent eligible subject matter. Step 1 asks if the claim is directed to a statutory category of invention. Applicant’s claims are directed to a method; thus, the answer to Step 1 is yes.
Step 2A, Prong One asks if a claim recites a natural phenomenon, law of nature, or abstract idea. In the present case, claim 6 recites a mathematical expression that is being carried out to determine the temperature and time for the heat treatment. Thus, the claims do recite an abstract idea. Therefore, the answer to Step 2A, Prong One, is yes.
Step 2A, Prong Two asks if the claim recites additional elements that integrate the judicial exception into a practical application. As discussed in MPEP §2106.04(d)(2) this evaluation is performed by identifying whether there are additional elements recited in the claim beyond the judicial exception and evaluating these additional elements to determine whether the claim as a whole integrates the judicial exception into a practical application. In the present case, once the temperature and time are derived by the equation of claim 6, they are merely applied to the heat treatment of claim 5.
MPEP §2106.05(f) states “Another consideration when determining whether a claim integrates a judicial exception into a practical application in Step 2A Prong Two or recites significantly more than a judicial exception in Step 2B is whether the additional elements amount to more than a recitation of the words "apply it" (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do "‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’". Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965).” Because claim 6 does not require any additional elements beyond applying the derived temperature and time of the equation, the claim does not recite additional elements that integrate the equation into the application. Thus, the answer to Step 2A, Prong Two is no.
Step 2B asks if the claims recite additional elements that amount to significantly more than the judicial exception. MPEP §2106.05 states that this evaluation is performed by “Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself.” In the present case, the other elements of claim 6 are the method of implementing a heat treatment of 120[Symbol font/0xB0]C or more on an unrefined, a degummed, a deacidified, or a bleached crude oil to obtain a heated oil.
Sekiguchi (WO 2019031035 A1) shows that this process is routine and conventional in the art and would not amount to significantly more. Sekiguchi teaches a method for reducing the oiliness of cooked foods ([0001]) comprising heating test oils at 180°C (which falls within the claimed range of “120°C or higher”, [0047]), where the test oil is degummed and bleached ([0049]). Although Sekiguchi does not explicitly state that the oil is not hardened oil, the oil is used to cook food ([0047]), which means that the oil must be soft enough for cooking. Thus, the answer to Step 2B is no.
Therefore, claim 6 is not directed to patent eligible subject matter.
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 5-7 and 9 are rejected under 35 U.S.C. 103 as being obvious over Sekiguchi (WO 2019031035 A1)(IDS Reference filed 08/09/2022).
Regarding claim 5, Sekiguchi teaches a method for reducing the oiliness of cooked foods ([0001]) comprising heating test oils at 180°C (which falls within the claimed range of “120°C or higher”, [0047]), where the test oil is degummed and bleached ([0049]). Sekiguchi also teaches that test oil is mixed with roasted oil before heating. Sekiguchi also teaches that the roasted oils were prepared by refining them ([0043]). Although Sekiguchi does not teach refining the heated oil, MPEP §2144.04(IV)(C) states “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results” In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). Thus, it would have been obvious to perform a refining step after the step of heating the oil.
Regarding claim 6, Sekiguchi teaches all elements of claim 5 as described above. Sekiguchi also teaches that the oil is heated at 180°C for 5 hours ([0047]). Although Sekiguchi does not teach the equation as claimed, the parameters of 180°C for 5 hours falls within the claimed range. (180-100)*3000.2 = 250.33, which falls between 35 and 270, thus effectively anticipating the parameters required by claim 6.
Regarding claim 7, Sekiguchi teaches all elements of claim 5 as described above. Sekiguchi also teaches that the oil the test oil was heated to 180°C ([0092]), which falls within the claimed range of “140°C or higher”.
Regarding claim 9, Sekiguchi teaches all elements of claim 5 as described above. Sekiguchi also teaches that the oil may be obtain from corn germ ([0025]).
Regarding claim 12, Sekiguchi teaches all elements of claim 5 as described above. Sekiguchi also teaches that the test oil was canola oil (i.e., rapeseed oil; [0049]).
Response to Arguments
Claim Objections: Applicant has overcome the objections to the claims based on amendments in the Claims. Accordingly, the objections have been withdrawn.
Claim Rejections - 35 U.S.C. §112(a): Applicant has overcome the 35 U.S.C. § 112(a) rejections of claim 5 based on amendments to the claims and/or cancelation. Accordingly, the 35 U.S.C. § 112(a) rejections have been withdrawn.
Claim Rejections – 35 U.S.C. §101 of claim 6: Applicant’s arguments have been fully considered but they are not persuasive.
Applicant argued that because claim 5 is directed to patent eligible subject matter, claim 6 is not directed to a judicial exception because it incorporates the limitations of claim 5 (Remarks, p. 5-7).
This argument has been considered. However, the examiner maintains that because the process of claim 5 is routine and conventional in the art as demonstrated by Sekiguchi above, claim 6 does not result in significantly more than the judicial exception. MPEP §2106.05 states that the evaluation of Step 2B is performed by “Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself.”
Furthermore, as stated above, MPEP §2106.05(f) states “Another consideration when determining whether a claim integrates a judicial exception into a practical application in Step 2A Prong Two or recites significantly more than a judicial exception in Step 2B is whether the additional elements amount to more than a recitation of the words "apply it" (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do "‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’". Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965).” Once the time and temperature of claim 6 are derived, they are merely applied to the heating treatment of claim 5. Therefore, claim 6 does not amount to more than the recitation of “apply it”.
The 35 USC 101 rejection of claim 6 has been maintained herein.
Claim Rejections – 35 U.S.C. §102 of claims 5-9 over Sekiguchi: Applicant’s arguments filed December 17, 2025, with respect to the rejection(s) of claim(s) 5-9 under 35 U.S.C. 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 U.S.C. 103 in view of Sekiguchi.
New Claim 12: Applicant’s arguments regarding newly added claim 12 filed December 17, 2025 have been fully considered but they are not persuasive.
Applicant argued that Sekiguchi fails to teach the features of claim 12 (Remarks, p. 9, ¶ 6- p. 10, ¶ 2).
This argument has been considered. However, as described in the 35 USC 103 rejection of claim 12 above, Sekiguchi does teach the limitations of claim 12. Although Sekiguchi does not teach that the test oil heated is expressed or extracted oil, claim 5, upon which claim 12 depends, lists that the oil and fat raw material is expressed oil, extracted oil, or an oil and fat that has been passed through a degumming step, a deacification step, or a bleaching step. Claim 12 is interpreted as further modifying the expressed or extracted oils, which are presented as alternatives. Because Sekiguchi teaches a degummed and bleached oil ([0049]), the limitation of the claims are taught by Sekiguchi.
The rejections of claims 5-7 and 9 have been maintained herein.
Conclusion
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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793