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 .
Status of Application
Claim 1-4, 7, 9-17, 22-24 are pending and consideration.
Claims 18-19 remain withdrawn.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/28/2026 has been entered.
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.
Claim(s) 1-2, 7, 9-17, 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent No. 4,208,445 (COTTIER).
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As to claims 1-2, COTTIER discloses a shortening/fat comprising a stearin fraction from winterized cottonseed oil (i.e., cottonseed stearin). The fraction (i.e., a winterized fraction) has an IV of 73. 2 with 49.8% palmitic acid, 11.7% oleic acid and 36.5% linoleic acid. These all fall within the claimed range (col. 7, lines 1-10). The fraction contains C16:0 (i.e., palmitic acid), C:18:1 (i.e., oleic acid), and C18:2 (i.e., linoleic acid) (col. 7, lines 1-10). The fraction “may” be interesterified (col. 1, lines 47-50 and col. 4, lines 31-44). Thus, as interesterification is optional, it would have been obvious to provide an interesterified cottonseed fraction. The interesterified fraction contains 100% of cottonseed stearin (col. 7, lines 1-10).
The fraction is free of palm oil (i.e., palm oil is optional – col. 3, lines 25-28) and fully hydrogenated oils having an iodine value equal to or less than 4.
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COTTIER discloses a shortening/fat comprising a stearin fraction from winterized cottonseed oil (i.e., cottonseed stearin). The fraction is free of additional materials such as cellulose (col. 7, lines 1-10).
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As to claim 9, COTTIER discloses a shortening/fat comprising a stearin fraction from winterized cottonseed oil (i.e., cottonseed stearin). The fraction “may” be interesterified (col. 2, lines 45-50). Thus, in this regard, interesterification is optional. that it would have been obvious to include non-interesterified cottonseed oil.
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As to claims 10-17, COTTIER teaches that the cottonseed fraction can be used in a shortening for icing and mixed with sugar (i.e., a carbohydrate) (col. 4, lines 45-50).
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As to claims 23-24, COTTIER discloses a shortening/fat comprising a stearin fraction from winterized cottonseed oil (i.e., cottonseed stearin). The fraction has an IV of 73. 2 with 49.8% palmitic acid, 11.7% oleic acid and 36.5% linoleic acid. These all fall within the claimed range (col. 7, lines 1-10). The fraction contains C16:0 (i.e., palmitic acid), C:18:1 (i.e., oleic acid), and C18:2 (i.e., linoleic acid) (col. 7, lines 1-10). Suitable oils from which the stearine fractions may be obtained include sunflower, safflower, groundnut and soyabean oils (col. 3, lines 42-46). Thus, it would have been obvious that a portion of the fat be soybean oil. The fractions of COTTTIER “may” be interesterified (col. 2, lines 45-50). It would have been obvious to one skilled in the art to also interesterify the soy fraction. As to the amount, COTTIER teaches that the amount of each fraction can be varied based on the desired ambient conditions and where the resulting products are marketed and/or used.
The fraction “may” be interesterified (col. 2, lines 45-50). Thus, as interesterification is optional, it would have been obvious to provide an interesterified cottonseed fraction. The interesterified fraction contains 100% of cottonseed stearin (col. 7, lines 1-10).
The fraction is free of palm oil (i.e., palm oil is optional – col. 3, lines 25-28) and fully hydrogenated oils having an iodine value equal to or less than 4.
A lauric fat component can be added (col. 3, lines 45-55).
COTTIER teaches that the cottonseed fraction can be used in a shortening for icing and mixed with sugar (i.e., a carbohydrate) (col. 4, lines 45-50).
The composition may be optionally hydrogenated (col. 3, lines 40-45).
As to the transitional phrase consisting essentially of, there is no indication as to what basic and novel characteristics are excluded. For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 ("PPG could have defined the scope of the phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention.").
Claim(s) 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over COTTIER as applied to claim 1 above, and in further view of United States Patent Application Publication No. 2012/0070558 (HOLLANDER).
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COTTIER teaches a cottonseed stearin as established above but silent as to the type of interesterification.
HOLLANDER teaches that interesterification can be performed on shortening/fat to change the properties of the fat. The method of the interesterification is not particularly limited, and chemical interesterification using a synthetic catalyst or enzymatic interesterification using lipase as a catalyst can be used [0071]-[0072].
Thus, it would have been obvious to one skilled in the art to use chemical or enzymatic interesterification, as the prior art teaches that fats can be treated by either process.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over COTTIER as applied to claim 1 above, and further in view of United States Patent Application Publication No. 2007/0009643 (BASEETH).
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COTTIER teaches a cottonseed stearin as established above but silent as to adding an emulsifier.
BASEETH teaches that emulsifier compositions can be added to fats/shortenings to improve products such as icings. The emulsifiers provide volume, texture and foam stability, and protection against syneresis in freeze-thaw cycles [0123]. The interesterified fraction contains 100% of cottonseed stearin (col. 7, lines 1-10).
It would have been obvious to one skilled in the art to add emulsifiers to a shortening/fat as the emulsifier can aid in provide volume, texture and foam stability, and protection against syneresis in freeze-thaw cycles.
Response to Arguments
Applicant's arguments filed 2/28/2026 have been fully considered but they are not persuasive.
The applicant argues that the Official Action has taken the teaching at COTTIER col. 1, lines 45-50 and Example 6 at col 7, lines 1-10 out of context. It is argued that one skilled in the art would not have viewed COTTIER as teaching an interesterified cottonseed oil.
However, it is respectfully submitted that the applicant views COTTIER too narrowly. While COTTIER does exemplify interesterifying fat blends, the overall teachings of COTTIER does not limit interesterifications to blends (col. 1, lines 47-50 and col. 4, lines 31-44). Thus, cottonseed interesterification is within the teachings of COTTIER. Moreover, interesterification is optional. The interesterified fraction contains 100% of cottonseed stearin (col. 7, lines 1-10). Moreover, see Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
It is also argued that the oil blend taught by COTTIER would be expected to have a different fatty acid composition.
However, as to claims 1-4, 7, 9-17, and 22, only one or more fraction is required. COTTIER discloses a shortening/fat comprising a stearin fraction from winterized cottonseed oil (i.e., cottonseed stearin). The fraction (i.e., a winterized fraction) has an IV of 73. 2 with 49.8% palmitic acid, 11.7% oleic acid and 36.5% linoleic acid. These all fall within the claimed range (col. 7, lines 1-10). The fraction contains C16:0 (i.e., palmitic acid), C:18:1 (i.e., oleic acid), and C18:2 (i.e., linoleic acid) (col. 7, lines 1-10).
As to claim 23, the cottonseed oil (i.e., cottonseed stearin) fraction would still have the same fatty acid composition and contrary to applicant’s assertions there is no requirement that a fraction cannot be esterified, especially when esterification itself is optional. As noted above, the fraction “may” be interesterified (col. 1, lines 47-50 and col. 4, lines 31-44). The primary purpose of interesterification is to modify the properties of the fats to better suit the desired application. It would have been within the abilities of one skilled in the art to vary the interesterification by blend or fraction based on the desired properties.
The applicant also argues that the oils disclosed in COTTIER do not consist essentially of interesterified cottonseed stearin, interesterified soybean oil, and optionally the hydrogenated fat.
As noted above, hydrogenated fat is optional and COTTIER does teach blends. Moreover, it is taught that For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 ("PPG could have defined the scope of the phrase 'consisting essentially of' for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention."). See also AK Steel Corp. v. Sollac, 344 F.3d 1234, 1240-41, 68 USPQ2d 1280, 1283-84 (Fed. Cir. 2003)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached M-F, 9:30-6:00p.
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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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/PHILIP A DUBOIS/Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791