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 .
Acknowledgement is made to Applicant’s response filed 05/26/2026.
Claims 1, 3, 6-9, and 11-22 are pending.
Claims 2, 4, 5, and 10 are cancelled.
No formerly pending claims were amended.
Claims 3 and 15-20 remain withdrawn.
Claim 22 is newly added.
Claims 1, 6-9, 11-14, 21, and 22 are currently under consideration to the extent that they read upon Applicant’s elected species.
Rejections Maintained and Made Again in view of Applicant’s Amendments with New Grounds for Newly Added Claim 22
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.
Claim(s) 1, 6-9, 11-14, 21, and 22 (all claims currently under consideration) is/are rejected under 35 U.S.C. 103 as being unpatentable over Haussner et al (WO 2019/063669)(IDS Reference).
Haussner teaches a composition for feeding to ruminants comprising a core and a coating surrounding said core (see entire document, for instance, claim 1). The core comprises a protein (see entire document for instance, claim 1), wherein the protein is taught as being selected from the group including soybean meal (see entire document, for instance, page 18, lines 4-5). The coating is made of a saturated fat, and specifically, hydrogenated palm oil, wherein the palm oil appears to be a free fatty acid (see entire document, for instance, claim 6). It is noted that saturated, hydrogenated palm oil would have an iodine value within the claimed range of less than 8 cg I2/g (note that instant claim 7 depends on claim 1 which asserts hydrogenated saturated palm oil falls within the scope of claim 1). The coating is taught as being present in an amount that includes 5%-30% of the total composition, wherein the protein would therefore be 95%-70% (see entire document, for instance, claim 1). Haussner further teaches that the amount of the composition in a final ruminant feed is a results effective variable with the amount predicated on the amount suitable to compensate for a lack of nutrients and essential amino acids in a ruminant diet (see entire document, for instance, page 25, lines 1-5). It is noted that the Haussner teaches heating the composition, coating the core, and then cooling the composition (see entire document, for instance, claim 13). It is noted that this is the same process that is indicated in the Instant Specification that results in the crystallization of the saturated, hydrogenated fatty acid around the protein core, therefore, the composition of the prior art is deemed to have the same crystallized hydrogenated, saturated fatty acid.
Haussner, while teaching all of the instantly claimed components and amounts that overlaps with instantly claimed ranges, does not provide a singular example that expressly articulates all of said elements to the extent that the teaching rises to the level of anticipation.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instantly claimed invention, to utilize the components taught in Haussner for the purposes taught by Haussner and in the amounts taught by Haussner, and thereby arrive at the instantly claimed invention. One would have been motivated to do so since Haussner directly teaches that said components can be utilized and said amounts are useful. It is noted that MPEP 2144.05 states: "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. “[W]here 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).” Further, MPEP 2144.07 states “[t]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) […] “[r]eading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.)”.
Response to Arguments
Applicant argues in the Remarks filed 05/26/2026 that claim 1 of the prior art teaches that the coating (from 5 wt.% +/- 10% to 30 wt.-% +/- 10%) of the prior art is a mixture, having a portion (which is 50-90% of the coating) of the saturated fat. Applicant therefore believes that the prior art does not read on the instantly claimed 5-15%. Applicant’s argument is not found persuasive. The range of the prior art directly overlaps the instantly claimed range. One of ordinary skill in the art, optimizing the composition solely within the range taught by the prior art would arrive at the instantly claimed range for the coating. Applicant’s argument is therefore not found persuasive.
Applicant further argues the prior art teaches that the core comprises a biologically active ingredient, wherein the prior art does teach that the biologically active ingredient can be soybean meal, but the prior art does not exemplify the instantly claimed invention with all of the components present. Applicant’s argument is not found persuasive against the ground of rejection. Notably, the rejection is made under 103 and not 102, wherein one of ordinary skill in the art, doing nothing more than following the guidance of the prior art would have arrived at the instantly claimed invention.
Applicant further argues that the the prior art does not teach the iodine value, and relies on inherency for said limitation. Applicant’s argument does not overcome the rejection as set forth above. Specifically, it is noted that MPEP 2112 states “[t]he express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983)”. Further, it is noted that the instant specification teaches that hydrogenated saturated palm fatty acid has an iodine value of less than 8, wherein a product cannot be separated from its properties, wherein the prior art teaches hydrogenated saturated palm fatty acid, and therefore, would also have an iodine value of less than 8. It is noted that Applicant asserts that the iodine value is tied to the degree of saturation/unsaturation. It is further noted that the prior art indicates that the hydrogenated palm oil is saturated. If Applicant were to argue that there are additional aspects which are necessary in order to achieve the claimed iodine value, and that it is not an inherent property of the saturated hydrogenated palm oil, then an issue of written description may be necessary. However, since the Examiner believes that Applicant has provided sufficient written description, the prior art’s recitation of saturated hydrogenated palm oil is deemed to have the same iodine value as the instant claims.
Applicant further argues that the prior art utilizes different techniques to arrive at the same final coating. It is noted that the instant claims are directed to a product not a method. As such, since the prior art is deemed to arrive at a final product which is structurally the same as the instantly claimed invention, the method by which the product is achieved is not germane. It is further noted that the instant specification appears to indicate that soybean meal comprises bran, protein, and fiber fragments. Further, the process of the prior art includes melting and cooling, which would result in recrystallization.
For at least these reasons, Applicant’s arguments are not found persuasive.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TREVOR M LOVE whose telephone number is (571)270-5259. The examiner can normally be reached M-F typically 6:30-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached at 5712726175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TREVOR LOVE/Primary Examiner, Art Unit 1611
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