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 .
This office action is in response to amendment filed 9/18/25. Claims 1,5,6,9-13 are amended and claims 4 and 8 are cancelled. Claims 1-3,5-7,9-13 are pending.
Part of the previous 112 second paragraph rejection is withdrawn due to the amendment. The following rejection remains because the claims are either not amended to address the issues raised. The amendment also necessitates new ground of rejection.
The previous 102 rejection is withdrawn because of the amendment adding claims 4 and 8 to claims 1 and 5.
Claim Rejections - 35 USC § 112
Claims 1,3, 5,7 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 1 is vague and indefinite. It is not clear if the “ wherein after 2g of … clause” is described a process of making a fat mixture or what; it is also unclear how this fat mixture is connected to the processed edible powder. Claim 1 does not recite any canola oil or any oil or fat. The recitation of “ the viscosity, the resulting oil and fat mixture” does not have antecedent basis. It is also unclear what “ oil and fat mixture “ refers to because the claim only recite “ canola oil”. It is unclear what is the fat component. It is also unclear what is meant by “ oil and fat mixture makes gelation”.
Claim 3 is vague and indefinite because it is how the claim further limits claim 1 or how the claim is related to claim 1. It is not clear if the claim is described a process of making a fat mixture or what; it is also unclear how this fat mixture is connected to the processed edible powder. Claim 1 does not recite any canola oil or any oil or fat. Lines 3-4, the recitation of “ the viscosity, the resulting oil and fat mixture” does not have antecedent basis. It is also unclear what “ oil and fat mixture “ refers to because the claim only recite “ canola oil”. It is unclear what is the fat component. It is also unclear what is meant by “ oil and fat mixture makes gelation”.
Claim 5 has the same problem as claim 1.
Claim 7 has the same problem as the same problem as claim 3.
The rejection of claims 1,5 is on the same basis as previously claim 4, 8. The amendment adds claims 4,8 to claims 1,5 respectively but does not overcome the rejection and does not address the issues raised.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim11 is rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a known asserted utility or a well-established utility.
The claim recites a method for manufacturing a fried-food coating comprising preparing the fried food-food coating from a processed edible powder obtained through the method according to claim 5. This is equivalent to a method of use because there is no step recited for preparing the fried-food coating other than using the edible powder. A use is not a statutory category of invention
Claim 11 also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
A recitation of a method without recitation of processing step other than a use is not enabling.
Claim Rejections - 35 USC § 103
Claim(s) 1-3,5-7,9-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shoji ( jp 2005185122).
For claim 1, Shoji discloses processed edible powder comprising starch and glycerol organic acid fatty acid ester. The glycerin organic acid fatty acid ester is the same as on the claimed oil and fat solidifier. ( see abstract, page 2 paragraph under the tech solution heading)
For claim 2, Shoji discloses adding .003-10% by mass by mass of starch. ( see page 3 under best mode)
For claim 5, Shoji discloses a method for forming the edible powder by mixing the glycerin organic fatty acid ester with the starch. ( see page 3 under best mode)
For claim 6, Shoji discloses adding .003-10% by mass by mass of starch. ( see page 3 under best mode)
For claim 9, the claim is indefinite as explained above. Shoji discloses fluidizing the starch and a fat composition comprising oil and glycerin organic fatty acid ester is added. Thus, the fatty acid ester is fluidized and readable on the claim. ( see page 4 second paragraph)
For claim 10, Shoji discloses fry coating material comprising the processed powder containing starch and glycerin organic fatty acid ester. ( see abstract)
For claims 11-13, Shoji discloses a method for forming fried food in which the processed powder is added. ( see abstract, page 5). The method comprises the step of adding the processed powder. Thus, whatever property resulting from the addition is present in the prior art. Furthermore, the improving of texture is in the preamble which does not limit the body of the claim.
Shoji does not disclose the amount of oil and fat solidifier and the viscosity as in claims 1,5, 3,7.
Shoji discloses forming fat composition by mixing fat and oil and glycerin organic fatty acid ester. The ingredients are mixed in ratio of 1/99 to 99/1, preferably 64/40 to 20/80. The oil includes rapeseed oil which is canola oil. Example 1 shows 50/50 fatty acid ester and oil. ( see page 4 and example 1)
Shoji discloses the ratio can vary; thus, it would have been obvious to one of ordinary skill in the art to vary the ratio within any range disclosed in the reference. As to the heating and gelation, they are directed to processing steps which does not determine the patentability of the product claims 3-4. With respect to method claims 7-8, Shoji discloses heating. It would have been obvious to one of ordinary skill in the art to determine the time at which the components are melted through routine experimentation. Since the fat composition contains the same ingredients as claimed, it is obviously inherent the composition is capable of causing gelation and having the viscosity as claimed when cool.
Response to Arguments
Applicant's arguments filed 9/18/25 have been fully considered but they are not persuasive.
In the response, applicant argues the viscosity is not obviously inherent. Applicant points to the affidavit. The affidavit is not persuasive. The affidavit states on page 3 that the examples 1-3 in Shoji do not have the viscosity as claimed. The affidavit only shows the examples which are only exemplified embodiments. Shoji discloses other polyglycerin organic fatty acid esters such as glycerin acetic acid fatty ester, glycerin lactate fatty acid ester. Furthermore, the claims recite the alternative of viscosity or the mixture makes gelation. Since example 1 shows a viscosity, it’s apparent the mixture has solidity and is capable of gelation. The affidavit does not show that the examples are not capable of gelation when cooled. Furthermore, it’s unclear how the viscosity or gelation is significant to the edible powder in claim 1 or the method of making the edible powder because the powder is a solid which would not exhibit any viscosity. The limitation is the same as an intended use which does not determine the patentability of the product or the method which only requires the step of mixing solidifier with an edible powder.
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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November 18, 2025
/LIEN T TRAN/Primary Examiner, Art Unit 1793