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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 6-9, 15-19, 22-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, claim 1 has been amended to recite “optionally one or more additional ingredients comprising…” and “wherein each additional component is present at a concentration of 0wt% to 1wt%”. However, this is not specifically recited for all of the listed materials in the specification for when the fat composition is specifically a filling or icing. Therefore, the limitation is seen to raise an issue of new matter. It is noted that materials recited in paragraph [0073] (in combination with paragraph [0022], [0033], [0038]) would be supported at this concentration for when the composition is a filling (because [0038] discloses that the alternative fat composition can be a biscuit filling), therefore the new matter rejection applies to the listed ingredients in the claim not mentioned in paragraph [0073] of the PGPUB specification for when the composition is a biscuit filling, and it applies to all the optional ingredients when the composition is an icing.
Regarding claim 22, claim 22 claim 22 has been amended to the recite that “the composition is substantially free of liquid oil”. However, this is not specifically recited in the specification and therefore raises an issue of new matter.
Regarding claim 25, claim 25 recites “optionally one or more additional ingredients comprising…” and “wherein each additional component is present at a concentration of 0wt% to 1wt%”. However, this is not specifically recited for all of the listed materials in the specification for when the composition is a spread. Therefore, the limitation is seen to raise an issue of new matter. It is noted that it is only the “fat composition” and biscuit filling which can be free of the materials recited in paragraph [0033]. The other food items listed in paragraph [0037] can include the fat composition, therefore the ranges that apply to specifically the fat composition do not specifically apply to the food items which comprise the fat composition.
Regarding claim 25, claim 25 recites “a chocolate spread comprising 15wt% or more interesterified pequi oil; 40wt% to 80wt% sugar; cocoa powder, optionally nut paste and optionally one or more additional ingredients comprising…” and “wherein each additional component is present at a concentration of 0wt% to 1wt% and wherein the composition is substantially free of palm oil and starch”. The entirety of this composition is not specifically supported by the specification, Table 11 is the only example of a composition of a chocolate spread and there are not ranges of ingredients disclosed, Table 11 provides only a singular amount of each ingredient, Table 11 is the only composition supported for a “spread”. It is also noted that it is only the “fat composition” and biscuit filling (because paragraph [0038] recites that the alternative fat composition can be a biscuit filling) which can be free of the materials recited in paragraph [0033]. The other food items listed in paragraph [0037] can include the fat composition, therefore the ranges that apply to specifically the fat composition do not specifically apply to the food items which comprise the fat composition. The specification does not refer to the spread as a fat composition, only as a food item ([0037], [0048]).
Claims 2-4, 6-9, 15-19, and 23-24 are rejected by virtue of their dependence on a rejected base claim.
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 1-4, 6-9, 15-19, 22-25 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.
Regarding claim 1, claim 1 has been amended to recite “optionally one or more additional ingredients comprising” and “wherein each additional component is present at a concentration of 0wt% to 1wt%”. It is unclear if “wherein each additional component is present at a concentration of 0wt% to 1wt%” is referring to the one or more additional ingredients since the claim does not explicitly link the two limitations. If they are the same, it is unclear if the additional ingredients are required since they are “optional” in line 4 and then are “present” in line 7. For examination purposes since the additional ingredients are optional, the further limitation of limiting the amounts of the additional ingredients is also considered optional.
Regarding claim 22, claim 22 claim 22 has been amended to the recite that “the composition is substantially free of liquid oil”. It is unclear what is meant by this limitation. It is unclear if this is limiting the flaked fat in final form to be free of oils in liquid form or if it is limiting the type of oils the flaked fat is made from. It is unclear if the composition can be made from liquid oils but the oils are solidified to obtain the flaked fat as it is noted that oils can be solid or liquid depending on the temperature. This is especially unclear since the claim comprises oils as recited in lines 3-5.
Claim 25 is rejected for the same reasons given above as for claim 1.
Claims 2-4, 6-9, 15-19, and 23-24 are rejected by virtue of their dependence on a rejected base claim.
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.
Claims 1, 3-4, 6-9, 15-19 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Repinski US 2013/0323400 in view of Inform (Unconventional Oils) in view of Foucault WO 2019/023558.
Regarding claim 1, Repinski discloses a composition ([0010]), the composition comprising between 25-50wt% fat ([0010], [0044]). Repinski discloses that the composition comprises 50wt% sugar, merely close to the claimed range ([0010]) (MPEP 2144.05.I). Repinski teaches that the composition is substantially free of palm oil ([0044]). Repinski discloses that the composition is a filling, and regarding the claimed composition being a biscuit filling, it is noted that the filling of Repinski is capable of being used for biscuits. Regarding the remaining limitation regarding the optional additional ingredients, since all of the listed ingredients are optional, the concentration of each additional component is also considered optional.
Additionally, regarding the amount of sugar, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in the fact situation of the instant case, and wherein the Court stated on page 234 as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function. In re Benjamin D. White, 17 C.C.P.A (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Claim 1 differs from Repinski in the recitation that the fat is specifically interesterified pequi oil. It is noted that Repinski does not limit the particular fat and suggests that any shortening, or vegetable oil can be utilized ([0044]).
Inform discloses that pequi oil can be utilized is suitable for shortening applications (Pg. 9) and discloses that pequi oil can be improved by chemical interesterification (Pg. 9). Inform discloses that the interesterified oil has a broader range of functionality at room and cold temperatures (Pg. 9). Inform discloses that pequi oil has a strong and sweet flavor (Pg. 9). It would have been obvious to one of ordinary skill in the art to modify the fat of Repinski to be interesterified pequi oil in order to enhance the filling by providing a strong and sweet flavor, since Repinski does not limit the particular fat and suggests that any shortening, or vegetable oil can be utilized ([0044]) and inform recognizes that interesterified pequi oil is a known vegetable oil for use in the food industry (Inform, Pg. 6, 9) and since Inform recognizes that pequi oil can be utilized for shortening applications (Inform, Pg. 9).
Regarding the remaining limitation that the interesterified pequi oil makes up 90% or more of the fats in the composition, Modified Repinski discloses that the fat can be one fat or a combination of fats ([0044]) therefore suggesting that the fat of the composition can be up to 100wt% interesterified pequi oil. Therefore, Modified Repinksi obviously teaches that the interesterified pequi oil makes up more than 90% of fats in the composition
Additionally, regarding the amount of sugar, Foucault discloses it was known in the art to provide a filling ([0028], [0044]) comprising from 20wt% to 60wt% fat and 20wt% to 55wt% sugar ([0044]), overlapping the claimed ranges. Foucault also discloses that typical fillings include 30wt% to 70wt% sugar ([0030]). It would have been obvious to one of ordinary skill in the art to modify the amount of sugar of Modified Repinski to be 55wt% sugar as suggested by Foucault in order to provide the filling with a desired sweetness.
Regarding claim 3, Modified Repinski discloses that the interesterified pequi oil comprises chemically interesterified pequi oil (Inform, Pg. 9).
Regarding claim 4, while Inform teaches chemically interesterified pequi oil, the manner of carrying out the interesterification (i.e., chemically or enzymatically) is considered to be a product by process limitation. Where the prior art teaches an interesterified pequi oil, the manner of conducting the interesterification is not considered to provide a patentable distinction in the absence of a showing that the different way of conducting the interesterification provides a materially different interesterified pequi oil product. See MPEP 2113.
Regarding claim 6, Modified Repinski provides a composition with the interesterified pequi oil being the fat as set forth above with regard to claim 1, no additional fully hydrogenated oils would be present. Therefore, the combination is considered to provide a composition that is substantially free of fully hydrogenated oils having an iodine value equal to or less than 4.
Regarding claim 7, Modified Repinski discloses that the composition is substantially free of non-pequi waxes, since Repinski does not specifically list wax as an ingredient for the filling (‘400, [0010]).
Regarding claim 8, Modified Repinski teaches the composition comprises 20wt%-50wt% interesterified pequi oil ([0010], [0044]), overlapping the claimed range (MPEP 2144.05.I).
Regarding claim 9, claim 9 differs from Modified Repinski in the recitation that the composition specifically comprises non-interesterified pequi oil. Inform discloses that pequi oil in general is suitable for margarine and shortening applications (pg. 9), thereby suggesting that non-interesterified pequi oil is suitable for margarine and shortening applications. Repsinski suggests multiple fats/oils can be utilized ([0044]). It would have been obvious to one of ordinary skill in the art to additionally utilize the known non-interesterified pequi oil taught by Inform thereby utilizing multiple known fats/oils for the filling as already taught by Repinski, since it has been held that “Combining prior art elements according to known methods to yield predictable results” supports a conclusion of obviousness (MPEP 2143.I.A).
Regarding claim 15, Modified Repinski discloses that the filling is a confectionery filling and therefore suggests the use of the filling with a food item such as confectionery ([0004], [0010], [0019], [0038]).
Regarding claim 16, claim 16 is rejected for the same reasons given above as for claim 15.
Regarding claim 17, Modified Repinski does not recite specific food or confectionery products, however Foucault discloses that filling compositions are commonly used with wafers and cookies ([0078], [0082], [0091], [0092]), and it would have been obvious to one of ordinary skill in the art to utilize the filling of Modified Repinski with the food products that fillings are commonly used with as taught by Foucault. It has been held that “Combining prior art elements according to known methods to yield predictable results” supports a conclusion of obviousness (MPEP 2143.I.A).
Regarding claim 18, Modified Repsinki discloses a method of making a food item using the composition of claim 1, the method comprising combining the composition of claim 1 (filling) with other edible components to form the food item (‘400, [0004], [0010], [0019], [0038]).
Regarding claim 19, Modified Repsinki teaches a method of making the composition of claim 1 comprising combining the interesterified pequi oil, and other edible components comprising the sugar ([0010]) to form the composition of claim 1 (filling) (‘400, [0010], [0044]).
Regarding claim 23, Modified Repinski discloses that the composition is a filling (capable of being used for a biscuit) and comprises 25-50wt% of the interesterified pequi oil and comprises an emulsifier (lecithin) (‘400, [0010]). Repinski discloses that lecithin will not exceed 5%, therefore teaching the use of emulsifier in less than 5wt% in general suggesting any amount less than 5wt% and additionally teaches 1wt% ([0074]).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Repinski US 2013/0323400 in view of Inform (Unconventional Oils) in view of Foucault WO 2019/023558 in view of Guedes et al. (Length Scale Specific Crystalline Structural Changes Induced by Molecular Randomization of Pequi oil, cited in PTO-892 on 03/13/25).
Regarding claim 2, Modified Repinski does not specifically recite specifics about the interesterified pequi oil. However, Inform discusses interesterified pequi oil was obtained by Guedes and Guedes discloses interesterified pequi oil that is non-fractionated (Table 1). It would have been obvious to one of ordinary skill in the art to have utilized the known interesterified pequi oil as taught by Guedes, since Inform discusses interesterified pequi oil was obtained by Guedes and " [A] person of ordinary skill has good reason to pursue the known options within his or her technical grasp” (MPEP 2143.I.E)
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Repinski US 2013/0323400 in view of Inform (Unconventional Oils) in view of Foucault WO 2019/023558 and further in view of Maciel Guedes et al (OCL).
Regarding claim 4, Modified Repinski teaches a composition as detailed above with regard to claim 1.
While Inform teaches chemically interesterified pequi oil, the combination is silent regarding producing an enzymatically interesterified pequi oil.
However, OCL teaches using either chemical or enzymatic modification of pequi oil for potential use within the fat industry (e.g. Abstract; 4th paragraph under “5 Potential Uses” on page 3). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have employed enzymatic interesterification of pequi oil as OCL teaches the oil can be modified by chemical or enzymatic methods.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Huxel US 2003/0039734 in view of Inform (Unconventional Oils).
It is noted that claim 22 raises 112b issues as discussed above.
Regarding claim 22, Huxel discloses a flaked fat composition comprising a fatty material such as a vegetable fat or a mixture of vegetable fat and animal fat (vegetable fat necessarily includes vegetable oils and animal fat necessarily includes animal-based oil as Huxel discloses that “fat” includes fats and oils) ([0002], [0004], [0006]). Huxel suggests up to 100% of vegetable fat, since vegetable fat can be used alone.
Claim 22 differs from Huxel in the recitation that the fatty material is specifically interesterified pequi oil.
Inform discloses that pequi oil can be utilized to expand the repertoire of vegetable oils available for food applications (Pg. 6) and discloses that pequi oil can be improved by chemical interesterification (Pg. 9). Inform discloses that the interesterified oil has a broader range of functionality at room and cold temperatures (Pg. 9). Inform discloses that pequi oil has a strong and sweet flavor (Pg. 9). It would have been obvious to one of ordinary skill in the art to modify the vegetable fat of Huxel to be interesterified pequi oil in order to enhance the flaked fat by providing a strong and sweet flavor. It has been held that “Combining prior art elements according to known methods to yield predictable results” supports a conclusion of obviousness (MPEP 2143.I.A). Additionally, it would have been obvious to one of ordinary skill in the art to routinely adjust the amount of interesterified pequi oil based on desired taste of the product (MPEP 2144.05.I).
Regarding the remaining limitations since palm oil is not specifically required, the composition is considered substantially free of palm oil. Additionally, since the flaked fat is a solid the composition is seen to be substantially free of liquid oil (Abstract, [0023] claim 1).
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Repinski US 2013/0323400 in view of Inform (Unconventional Oils) in view of Foucault WO 2019/023558 in view of Schmidt US 2004/0228957.
Regarding claim 24, claim 24 differs from Modified Repinski in the recitation that the composition is specifically an icing, however Schmidt discloses that fillings can be used as icings ([0005], [0045]), therefore the filling of Modified Repinski can be considered an icing. Modified Repinski discloses that the fat can be one fat or a combination of fats ([0044]) therefore suggesting that the fat (icing shortening) can be up to 100wt% interesterified pequi oil. Modified Repinski discloses that the composition includes an emulsifier ([0010]).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Foucault WO 2019/023558A2 in view of Inform (Unconventional Oils).
Regarding claim 25, Foucault discloses a chocolate spread ([0028], [0044]) comprising from 20wt% to 60wt% fat and 20wt% to 55wt% sugar ([0044]), overlapping the claimed ranges (MPEP 2144.05.I). Foucault also discloses that the spread can comprise cocoa powder. The composition can be considered substantially free of palm oil since palm oil is not explicitly required and is only an option for the fat ([0049]). It is noted that the spread contains a small amount of bran, and while bran comprises starch, the amount of bran which can be present in the spread allows for the spread to be considered substantially free of starch ([0044]).
Claim 25 differs from Foucault in the recitation that the fat is specifically interesterified pequi oil. It is noted that Foucault does not limit the particular fat the paragraph discussing fat recite that the fat “may be...components out of the following list…and the like”. Foucault also already teaches the use of interesterified fats ([0044]).
Inform discloses that pequi oil can be utilized to expand the repertoire of vegetable oils available for food applications (Pg. 6) and discloses that pequi oil can be improved by chemical interesterification (Pg. 9). Inform discloses that the interesterified oil has a broader range of functionality at room and cold temperatures (Pg. 9). Inform discloses that pequi oil has a strong and sweet flavor (Pg. 9). It would have been obvious to one of ordinary skill in the art to modify the fat of Foucault to be interesterified pequi oil in order to enhance the spread/filling by providing a strong and sweet flavor. It has been held that “Combining prior art elements according to known methods to yield predictable results” supports a conclusion of obviousness (MPEP 2143.I.A).
Regarding the remaining limitation regarding the optional additional ingredients, since all of the listed ingredients are optional, the concentration of each additional component is also considered optional.
Response to Arguments
Applicant's arguments filed 03/23/2026 have been fully considered, but are moot in light of the new grounds of rejection. The arguments that still apply will be addressed below.
On Pg. 7 of the remarks Applicant argues that Repinski is not completely without bounds with regard to the selection of fat and that it cannot be automatically assumed that any and all oils would work.
This argument has not been found persuasive, “One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references.” MPEP 2145.IV. Repinski does not limit the particular fat and suggests that any shortening, or vegetable oil can be utilized ([0044]). Inform discloses that pequi oil can be utilized is suitable for shortening applications (Pg. 9) and discloses that pequi oil can be improved by chemical interesterification (Pg. 9). Inform discloses that the interesterified oil has a broader range of functionality at room and cold temperatures (Pg. 9). Inform discloses that pequi oil has a strong and sweet flavor (Pg. 9). It would have been obvious to one of ordinary skill in the art to modify the fat of Repinski to be interesterified pequi oil in order to enhance the filling by providing a strong and sweet flavor, since Repinski does not limit the particular fat and suggests that any shortening, or vegetable oil can be utilized ([0044]) and inform recognizes that interesterified pequi oil is a known vegetable oil for use in the food industry (Inform, Pg. 6, 9) and since Inform recognizes that pequi oil can be utilized for shortening applications (Inform, Pg. 9). It is noted that “Obviousness does not require absolute predictability, but at least some degree of predictability is required.” (MPEP 2143.02). In this case the teaching of Inform provides some degree of predictability that interesterified pequi oil would be suitable for use as a fat in the composition of Repinski, and therefore provides motivation to modify Repinski and use interesterified pequi oil.
On Pg. 7-8 of the remarks Applicant argues that the alleged motivation to modify the fat of Repinski to be interesterified pequi oil because inform discloses that pequi oil has a strong and sweet flavor would actually not motivate a person of ordinary skill in the art.
This argument has not been found persuasive because the prior art does not discourage the use of pequi oil or a strong and sweet flavor provided by pequi oil.
On pg. 8 of the remarks Applicant argues that each additional component is present at a concentration at 0wt% to 1wt% and that Repinski fails to teach this.
This argument has not been found persuasive, since the claims recite “optionally one or more additional ingredients”, the concentration of each additional component is also considered optional as it is further limiting an optional limitation.
The arguments on pages 10-11 directed to claim 22 are moot in light of the new ground of rejection necessitated by amendment to the claims.
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.
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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/A.A/Examiner, Art Unit 1792
/VIREN A THAKUR/Primary Examiner, Art Unit 1792