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 .
This office action is in regard to the application filed on November 18, 2022 and in response to Applicant’s Amendments and Arguments/Remarks filed on October 10, 2025.
Status of Application
The amendment filed October 10, 2025 has been entered. Claims 1-3, 5, and 7-16 are currently pending in the application; claims 13-16 are withdrawn. Claims 1-3, 5, and 7-12 have been amended; claims 4 and 6 have been canceled. Claims 1-3, 5, and 7-12 are hereby examined on the merits.
The previous 112(b) rejections of claims 1-9, 11, and 12 have been withdrawn in view of applicant’s amendments to the claims. The previous objections to claims 2, 3, 9, and 11 have been withdrawn in view of applicant’s claim amendments.
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 10 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 10 recites dissolving the polysaccharide and the gelling agent “in vegetable oil at 130°C to 180°C,” which renders the claim indefinite as it is not clear if it’s the polysaccharide, the gelling agent, the vegetable oil, or a combination thereof, that is at the claimed temperature. The specification also does not provide any clarity to this indefiniteness, and as such, the claim is rendered indefinite.
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 1-3, 5, and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Young et al. (US Patent 6,048,564; listed on IDS dated March 1, 2023) in view of Hirschey et al. (US Patent 5,154,942) and Sarneel et al. (US PG Pub. 2008/0274254), herein after referred to as Young, Hirschey, and Sarneel, respectively.
Regarding claims 1 and 2, Young teaches a method for preparing an emulsion gel-based fat substitute with adjustable phase change (Abstract; claim 23), comprising the steps of:
dissolving an emulsifier in a vegetable oil to obtain a lipid phase (i.e., oil solution) (Example 1; col. 7 line 16 to col. 8 line 23; claim 23);
dissolving konjac (i.e., a water-soluble large molecular gelling agent) in water to obtain an aqueous phase (i.e., aqueous solution); and
combining the lipid phase and the aqueous phase under shear mixing conditions to form an emulsion (i.e., mixing the oil solution in step (a) and the aqueous solution in step (b) for emulsification);
then cooling the emulsion composition to provide a gel (i.e., then gelling the emulsion to obtain an emulsion gel-based fat substitute) (Claim 23; Example 1),
wherein the mass percentage of the oil solution in the emulsion in step (c) is 20 wt.%, and thus an oil-in-water emulsion gel-based fat substitute is obtained (Example 3).
Young is silent as to that the emulsifier in the vegetable oil is an oil-soluble small molecule gelling agent that is sodium stearoyl lactylate. Young does teach that the choice of emulsifier is generally based on the type of emulsion and the identity and amount of lipids utilized, and that the emulsifiers are typically selected from convention food-grade emulsifiers (col. 8 lines 3-23), thereby suggesting that the choice of emulsifier is not substantially limited.
Hirschey, in the same field of invention, teaches a fat substitute that comprises vegetable shortening with an emulsifier that is sodium stearoyl lactylate (col. 1 lines 63-68). The sodium stearoyl lactylate is considered to be an oil-soluble small molecule gelling agent as the instant claim claims it as so.
Therefore, where it was known in the art to produce fat substitutes with emulsifiers, it would have been obvious to one of ordinary skill in the art to have used the sodium stearoyl lactylate of Hirschey as the emulsifier in Young, as Hirschey teaches that sodium stearoyl lactylate is a suitable emulsifier to be used in fat substitutes that also comprise vegetable lipids.
Young and Hirschey are silent as to dissolving an oil-soluble polysaccharide in the vegetable oil in the oil solution.
Sarneel, in the same field of invention, teaches a fat substitute that comprises chitin as a thickener [0026]. Sarneel offers the motivation that adding a thickener to a fat substitute contributes to increasing the viscosity of the fat substitute. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have incorporated the chitin of Sarneel into the oil solution of Young, thereby arriving at the claimed invention. One would have been motivated to make this modification for the benefit of increasing the viscosity of the oil solution.
Regarding claim 3, modified Young teaches that 4 wt.% konjac (i.e., water soluble large molecular gelling agent) is in the water in step (b) (Young: Example 3).
Regarding claim 5, modified Young teaches that 1-35 wt.% thickener (e.g., chitin) (i.e., oil-soluble polysaccharide) is in the fat substitute (i.e., oil solution) (Sarneel: [0015]).
This range encompasses the claimed range of 5-10 wt.%, and where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.I.
Regarding claim 7, modified Young teaches that 2.5 wt.% of the emulsifier component (i.e., oil-soluble small molecule gelling agent that is sodium stearoyl lactylate) is in the vegetable oil in step (a) (Young: Example 7).
Regarding claim 8, modified Young teaches that the emulsification in step (3) is a high-speed shearing at 70°C (Young: Examples 1 and 7) and 3000-4500 rpm for 45 seconds to 3 minutes (Young: Examples 1-7). The time range taught by modified Young overlaps with the claimed range of 1-5 minutes, and where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.I.
The speed range taught by modified Young is slightly outside of the claimed range of 5000-15000 rpm, however the taught speeds are close. Per MPEP 2144.05.I., a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). The difference between the claimed range and that taught by modified Young is virtually negligible absent any showing of unexpected results or criticality.
Regarding claim 9, modified Young teaches that the gel in step (3) is obtained by cooling the obtained emulsion to below 35°C (Young: claim 23), or to 20-25°C (Young: Examples 1-7), and by slowly stirring and/or mildly shearing (Young: Examples 1, 2, and 7). The slow stirring and mild shearing taught by Young is considered to read on the instant claim limitation of a stirring speed of 100-1000 rpm.
Regarding claim 10, modified Young teaches that the method for preparing an emulsion gel-based fat substitute with adjustable phase change comprises the steps of:
heating the lipid phase to 70°C to promote melting of the components in the vegetable oil to obtain a liquid lipid phase (i.e., dissolving the oil-soluble polysaccharide and the oil-soluble small molecule gelling agent in step (a) in vegetable oil at a specified temperature to obtain the oil solution; since modified Young teaches both the oil-soluble polysaccharide and the oil-soluble small molecule gelling agent in the vegetable oil as set forth above);
dissolving the konjac (i.e., a water-soluble large molecular gelling agent) in the water at 70°C to obtain an aqueous phase (i.e., aqueous solution); and
combining the lipid phase in step (a) and the aqueous phase in step (b) (i.e., mixing),
emulsifying via a high-speed shearing at 70°C (Young: Examples 1 and 7) and 3000-4500 rpm for 45 seconds to 3 minutes to obtain the emulsion of step (c) (Young: Examples 1-7); and
cooling the obtained emulsion to below 35°C (Young: claim 23), or to 20-25°C (Young: Examples 1-7), and slowly stirring and/or mildly shearing to obtain the emulsion gel-based fat substitute of step (d) (i.e., mixing and gelling the emulsion) (Young: Examples 1, 2, and 7; claim 23).
The time range taught by Young, 45 seconds to 3 minutes, overlaps with the claimed range of 1-5 minutes, and where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
The speed range taught by Young, 3000-4500, is slightly outside of the claimed range of 5000-15000 rpm, however the taught speeds are close. Per MPEP 2144.05.I., a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). The difference between the claimed range and that taught by modified Young is virtually negligible absent any showing of unexpected results or criticality.
The slow stirring and mild shearing taught by Young is considered to read on the instant claim limitation of a stirring speed of 100-1000 rpm.
The temperature of the dissolving in vegetable oil step taught by Young, 70°C, is outside of the claimed range of 130°C to 180°C.
However, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. Since temperature of a process step is a known variable that affects various properties and functions of a resulting composition, temperature is a result-effective variable. As such, one of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range through no more than routine optimization, as varying the temperature of a process step would achieve recognized results. Therefore, the temperature parameters taught by Young renders obvious the instant claim limitation.
Regarding claim 11, modified Young teaches that the vegetable oil in step (a) is soybean oil (Young: Example 3).
Regarding claim 12, modified Young teaches that when the mass ratio of the oil solution to the aqueous solution in step (c) is 1:3 (0.33, which falls in the claimed range of 2:8-4:6 or 0.25-0.667), the oil-in-water emulsion gel-based fat substitute is obtained (Young: Example 3).
Response to Arguments
Applicant’s amendment has overcome the 112(b) rejections of claims 1-9, 11, and 12 from the previous office action and therefore these rejections have been withdrawn.
Applicant's arguments filed October 10, 2025 have been fully considered but they are not persuasive.
The prior art rejection has been amended in light of applicant’s amendments to the claims.
Applicant argues that none of the cited prior art teaches and every claim limitation of the newly amended claims (remarks, p. 7-10). While this is true of the previously applied prior art, new secondary prior art references have been used in the current rejection to remedy the deficiencies of Young and teach the amended limitations. Thus, the new prior art does teach each and every claim limitation of the newly amended claim.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references (remarks, p. 10-11), the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, there is sufficient motivation to combine the references as set forth above.
In the absence of any further arguments with regard to the rejections of the additional dependent claims, the rejections of these dependent claims are maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Baseeth et al., US PG Pub. 2012/0100251, teaches thermos-reversible organogels comprising chitin.
Gaonkar, US Patent 5,332,595, teaches W/O/W and O/W/O emulsions comprising gellable polysaccharides that include chitosans.
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 MAURA E SWEENEY whose telephone number is (571)272-0244. The examiner can normally be reached M-F 8:00-5:00 EST.
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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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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791