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 May 20, 2026 has been entered. Claims 21-29, 31, and 33-40 are pending. Claims 24, 29 and 37 have been amended. Claims 30 and 32 have been canceled.
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.
Claims 21-29, 31, and 33-40 are 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 21 recites “the fat composition comprises between 20% and 80% by weight of a vegetable fat composition”, which renders the claim indefinite as it is unclear how one can determine whether a fat composition comprises between 20 and 80% b weight of a vegetable fat or not. According to p. 3, lines 23-30 of the instant specification, "if a triglyceride has been transesterified it is no longer a vegetable triglyceride (i.e., vegetable fat)". Thus, if one were to follow Applicant's reasoning, a StOSt (C18:0 - C18:1 - C18:0) triglyceride that is generated in a plant, like a soybean or palm fruit, would be deemed a vegetable triglyceride (i.e., vegetable fat). However, if an identical StOSt triglyceride were made by transesterification, it is not considered a vegetable triglyceride (i.e., vegetable fat). When this definition is applied to claim 21, if a person has a composition that has 20 - 80% vegetable fat and all of the other limitations are satisfied, the composition would infringe on claim 21 as presented. However, if another identical composition has 10% vegetable fat it would not infringe on claim 21 as presented. It is untenable for there to be two identical fat compositions where one infringes, and another identical composition does not infringe. For the purpose of examination, it is interpreted the fat composition comprises 0 - 100% of a vegetable fat composition.
Claim 27 recites “wherein the total content of StOP + stop + St2O is between 25 to 50 and 60%”. This limitation is indefinite as it is not clear what the what the range is, is it 25 to 50% or 25 to 60%. The examiner notes that claim 21 recites 25 to 60%, and therefore claim 27 should be further limiting.
Claim 29 recites “wherein the vegetable fat composition comprises triglycerides of which at least 60% by weight is Sat2O”. This limitation is indefinite as claim 29 depends from claim 21, which recites “a fat composition comprising triglycerides of which 60% by weight or more is Sat2O”, and then further recites “the fat composition comprises between 20% and 80% by weight of a vegetable fat composition”. Therefore, it is not clear what is exactly present as claim 29 either does not further limit claim 21, or requires Sat2O that is not part of the vegetable composition, but then one would not be able to distinguish the difference as Sat2O is the same regardless. Does claim 21 intend to recite “A fat composition comprising between 20% and 80% by weight of a vegetable fat composition, wherein the vegetable fat composition comprises triglycerides of which at least 60% by weight is Sat2O and so on?
Claims 22-26, 28, 31, and 33-40 are included as they depend from a rejected claim.
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.
Claims 21-29, 31, and 33-40 are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al. (WO 2010/053244 A1; May 14, 2010).
Regarding claims 21-23 and 36, Kang teaches a cocoa butter equivalent (i.e., fat composition) comprising triglycerides (Table 14, "Cocoa butter equivalent of the present invention"). Kang utilizes a similar three-acid notation system as the instant application: the three-acid notation for each triglyceride indicates the position of each fatty acid, and O is oleic acid, S is stearic acid, and P is palmitic acid ([4]).
Kang teaches the triglycerides consist of 48.4 wt% POP, 12.1 wt% POS (i.e., StOP), 38.7 wt% SOS (i.e., StOSt, which is a St₂O), and 1% SOO, totaling 100.2 wt% (p.19, Table 11, "Cocoa butter equivalent of the present invention").
POP, POS (i.e., StOP), and SOS (i.e., StOSt, which is a St₂O) are Sat₂O triglycerides. POP, POS (i.e., StOP), and SOS (i.e., StOSt, which is a St₂O) make up 99.2 wt% of the total triglycerides (p.19, Table 11, "Cocoa butter equivalent of the present invention"), thus falling within the claimed range of 60% by weight or more is Sat₂O.
The total content of SOS (i.e., StOSt, which is a St₂O) makes up 38.7 wt% (p.19, Table 11, "Cocoa butter equivalent of the present invention"), thus falling within the claimed range of 5 to 40% by weight.
The total of POS (i.e., StOP) and SOS (i.e., StOSt, which is a St₂O) makes up 50.8 wt% of the triglycerides in the cocoa butter equivalent (i.e., fat composition) (p.19, Table 11, "Cocoa butter equivalent of the present invention"), thus falling within the claimed range of 25 to 60% by weight.
With respect to the BCI value of 2.5 or less, Kang fails to specifically teach a BCI value, however, the examiner notes that the composition of the prior art and that which is claimed were obtained by similar processes, wherein a large part of the trisaturated triglycerides are removed. Further, Kang teaches a fat composition having amounts of the claimed triglycerides falling within the claimed ranges as shown above. Therefore, it would be expected that the composition of Kang would possess a BCI value of 2.5 or more as claimed.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Further, it would have been obvious to one of ordinary skill in the art to vary the processing parameters for making the fat composition of Kang to result in a desired BCI value. This is merely routine experimentation that is well understood, routine and conventional in the art.
Kang teaches the cocoa butter equivalent (i.e., fat composition) is prepared by mixing hard butter (i.e., transesterified oil) and natural oil containing above 80% of POP with appropriate ratio to have properties suitable for use ([42]).
Kang teaches the natural oil containing above 80% of POP is palm middle fraction oil (i.e., palm mid fraction, which is a vegetable fat composition - [100]). Kang teaches palm middle fraction oil (i.e., palm mid fraction, which is a vegetable fat composition) comprises 99.5% triglycerides and 0.5% di - and monoglycerides (p. 21, Table 14, "PMF").
Kang further teaches that the vegetable fat composition comprises 2.9% by weight or less of tri-saturated triglycerides, or SSS, as Hashimoto teaches amounts of 0 (p.19, Table 11, "Cocoa butter equivalent of the present invention").
Regarding claim 24, as stated above, Kang teaches that the total content of SOS (i.e., StOSt, which is a St₂O) makes up 38.7 wt% (p.19, Table 11, "Cocoa butter equivalent of the present invention"), which is so close to the claimed range of 38% by weight that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of 38.7% disclosed by Kang and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount of 38% disclosed in the present claims is but an obvious variant of the amounts disclosed in Kang, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 25, as stated above, Kang teaches that the total content of SOS (i.e., StOSt, which is a St₂O) makes up 38.7 wt% (p.19, Table 11, "Cocoa butter equivalent of the present invention"), thus falling within the claimed range of 25 to 40% by weight.
Regarding claim 26, as stated above, the total of POS (i.e., StOP) and SOS (i.e., StOSt, which is a St₂O) makes up 50.8 wt% of the triglycerides in the cocoa butter equivalent (i.e., fat composition) (p.19, Table 11, "Cocoa butter equivalent of the present invention"), thus falling within the claimed range of 25 to 55% by weight.
Regarding claim 27, as stated above, the total of POS (i.e., StOP) and SOS (i.e., StOSt, which is a St₂O) makes up 50.8 wt% of the triglycerides in the cocoa butter equivalent (i.e., fat composition) (p.19, Table 11, "Cocoa butter equivalent of the present invention"), which is so close to the claimed range of 50% by weight that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of 50.8% disclosed by Kang and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount of 50% disclosed in the present claims is but an obvious variant of the amounts disclosed in Kang, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 28, Kang teaches that the fat composition comprises a fat originating from palm and a hard fat that can be shea, sal, and kokum ([0035]).
Regarding claims 29, 31 and 34, Kang teaches the cocoa butter equivalent (i.e., fat composition) is prepared by mixing hard butter (i.e., transesterified oil) and natural oil containing above 80% of POP with appropriate ratio to have properties suitable for use ([42]).
Kang teaches the natural oil containing above 80% of POP is palm middle fraction oil (i.e., palm mid fraction, which is a vegetable fat composition - [100]). Kang teaches palm middle fraction oil (i.e., palm mid fraction, which is a vegetable fat composition) comprises 99.5% triglycerides and 0.5% di - and monoglycerides (p. 21, Table 14, "PMF").
Kang teaches the triglycerides consist of 83.4 wt% POP, 11.3 wt% POS (i.e., StOP) and 0.7 wt% SOS (i.e., StOSt, which is a St₂O), and 4.5% POO, totaling 99.9wt% (p.19, Table 11, "PMF").
The total POP, POS, and SOS content (i.e. Sat2O) of the triglycerides is 95.4 wt%, thus falling with the claimed range of at least 60% by weight.
The total POP wt% of the palm middle fraction oil (i.e., palm mid fraction, which is a vegetable fat composition) is 82.98 wt%, thus falling within the claimed range of 25 to 95% by weight.
The ratio of SatOSat/SatSatO is 12 or more as the triglycerides consist of 83.4 wt% POP, 11.3 wt% POS (i.e., StOP) and 0.7 wt% SOS (i.e., StOSt, which is a St₂O), and 4.5% POO, totaling 99.9wt% (p.19, Table 11, "PMF"), which are SatOSat triglycerides.
Regarding claim 33, as stated above with respect to claim 29, Kang teaches the triglycerides consist of 83.4 wt% POP, 11.3 wt% POS (i.e., StOP) and 0.7 wt% SOS (i.e., StOSt, which is a St₂O), and 4.5% POO, totaling 99.9wt% (p.19, Table 11, "PMF").
The total POP, POS, and SOS content (i.e. Sat2O) of the triglycerides is 95.4 wt%, which is so close to claimed range of 95%% by weight that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of 95.4% disclosed by Kang and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount of 95% disclosed in the present claims is but an obvious variant of the amounts disclosed in Kang, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 35, Kang teaches that the composition comprises MAG and DAG in a total amount of 0.6 wt% (page 21, Table 14, “Cocoa butter equivalent of the present invention”), thus falling within the claimed range of 10% by weight or less. .
Regarding claims 37-40, Kang further teaches a method of making a food product comprising the addition of the fat composition as described above, wherein the food product is a chocolate. ([0046]-[0047]).
Response to Arguments
Applicant’s amendment has overcome the 112(b) rejection over claim 37 from the previous Office Action and therefore it has been withdrawn. However, upon further review, a new 112(b) rejection has been made.
Applicant’s arguments with respect to the 103 rejection have been fully considered but were not found persuasive.
Regarding the amendments to claim 21, Kang teaches the cocoa butter equivalent (i.e., fat composition) is prepared by mixing hard butter (i.e., transesterified oil) and natural oil containing above 80% of POP with appropriate ratio to have properties suitable for use ([42]).
Kang teaches the natural oil containing above 80% of POP is palm middle fraction oil (i.e., palm mid fraction, which is a vegetable fat composition - [100]). Kang teaches palm middle fraction oil (i.e., palm mid fraction, which is a vegetable fat composition) comprises 99.5% triglycerides and 0.5% di - and monoglycerides (p. 21, Table 14, "PMF").
Kang further teaches that the vegetable fat composition comprises 2.9% by weight or less of tri-saturated triglycerides, or SSS, as Hashimoto teaches amounts of 0 (p.19, Table 11, "Cocoa butter equivalent of the present invention").
Regarding applicant’s arguemtns that the low claimed amount of tri-saturated triglycerides and ratio of SatOSat/SatSatO are uniquely linked to BCI value of a cocoa-butter equivalent. While the examiner agrees that the prior art fails to specifically teach the claimed BCI value, the examiner notes that the composition of the prior art and that which is claimed were obtained by similar processes, wherein a large part of the trisaturated triglycerides are removed. Further, Kang teaches a fat composition that is specifically a cocoa-butter equivalent having amounts of the claimed triglycerides falling within the claimed ranges as shown above. Therefore, it would be expected that the composition of Kang would possess a BCI value similar to that of cocoa butter absent a showing otherwise.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Further, it would have been obvious to one of ordinary skill in the art to vary the processing parameters for making the fat composition of Kang to result in a desired BCI value. This is merely routine experimentation that is well understood, routine and conventional in the art.
If applicant can show that the cocoa butter of Kang would not necessarily possess the claimed BCI value, along with amending to overcome the 112(b) rejections as cited above, and further amending the independent claim to include limitations that are unique to the fat composition being a cocoa butter equivalent (e.g. the low amount of tri-saturated triglycerides and ratio of SatOSat/SatSatO), the examiner would find such amendments suitable to overcome the current 103 rejection.
For the reasons stated above, a 103 rejection is maintained.
Conclusion
No claims are allowed.
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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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791
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