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 § 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) 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Morimoto (AU 2018228146) evidenced by Pocklington “Determination of the Iodine Values of Oils and Fats”, Pure & Appl. Chem, Vol. 62, No. 12, 1990, Ebong, “A Comparison of Iodine Values of Some Common Vegetable Oils (August 2019), Ellis, “Shiso Leaf Extract Vs Shiso Seed Oil”, Feb. 2026, Dunford, “Why Peanut Oil is Good for Frying Food”, Jan. 2020, and applicant’s specification.
Regarding claim 6, Morimoto teaches fat-or-oil processed starch having excellent dispersibility [0013]. As explained in the abstract, starch is processed using the fat-or-oil and then the fat-or-oil processed starch is subject to an aging treatment. The fat composition used to treat the starch is not limited so long as it has an iodine value of 125-170 and also states that fats having an iodine value falling outside this iodine value range can be used can be used through treatment such as mixing to adjust the iodine value to 125-170 [0022]. Morimoto expressly states, “Fats having an iodine value falling outside the range of from 125 to 170, such as linseed oil, perilla oil, Shiso (Japanese basil) oil, cotton-seed oil, sesame oil, rapeseed oil, peanut oil, olive oil, palm oil, coconut oil, beef tallow, lard, chicken fat, mutton tallow, whale oil and fish oil can also be used through treatment such as mixing to adjust the iodine value to 125 to 170” [0021].
In the limited list provided by Morimoto, the following fats and oils have iodine values below 100 as evidenced by Pocklington, Ebong, Ellis, Dunford, and applicant’s specification: olive oil (approx. 82 (Pocklington), 75-94 range (Ebong)), palm oil (approx. 52-53 (Pocklington), 45-56 range (Ebong)), beef tallow (approx. 47 (Pocklington), range 42-48), coconut oil (7.5-10 range (Ebong)), and peanut oil (83-107) (Dunford). The following oils from the list have iodine values above 120 and below 200: linseed (170-204) perilla (190-208, 202 in Morimoto) and Shiso (160-175) (Ellis). Linseed and perilla oils are disclosed in the instant specification as having iodine values above 120. Coconut and palm oils are disclosed in the instant specification as well.
An example is given (Example 4) comprising a mixture of rapeseed oil and perilla oil to yield an iodine value of 140. Perilla oil is used in the instant specification and has a range of iodine value of 190-208. Note however, that Morimoto is not limited to this example and clearly conveys to one of ordinary skill the basic concept of mixing oils and fats that have iodine values that are below 125 or over 170 to reach the desired iodine value range of 125-170. Given the limited list of oils and that several of these oils have iodine values below 100 (olive, palm, beef tallow, coconut and peanut) and Morimoto clearly discloses that oils having iodine values below 125 (several below 100 disclosed) can be mixed with oils having iodine values above 175 (linseed, perilla, Shiso as examples), one of ordinary skill would have found it obvious to use a combination of an oil from the list that has a low iodine value with an oil having an iodine value above 175 to reach the desired final range of 125-170. Claim 6 is not limited to any particular oil and merely mixes two oils with different thresholds of iodine values. This concept is clearly conveyed to one of ordinary skill by Morimoto and the list of oils given by Morimoto include several having iodine values below 100 and Morimoto clearly indicates that these oils may balance high iodine value oils (such as linseed, perilla and Shiso) to reach the desired iodine value overall.
Regarding claim 7, in the example given in Morimoto, iodine values of perilla oil and rapeseed oil differ by approximately 92. Further, Morimoto discloses that oils with iodine values outside of the 125-170 (i.e. less than 125 and higher than 170) can be mixed. This indicates a difference of at least 45.
As explained above Morimoto teaches that blends of oils may be used as long as the iodine value is adjusted to 125-170. An example (Example 4) is given where rapeseed oil (iodine value of 110) and perilla oil (iodine value of 202) are used. The amount of a first oil and second oil must be adjusted in order to provide the final iodine value of 125-170. The instant claims include a range of 15:1 to 1:8 which encompasses a wide range of combinations. Here, one of ordinary skill would recognize that the addition of the higher iodine value oil to the lower iodine value oil would result in an increase in the iodine value of the total oil and an amount necessary to raise the value from the lower value to the desired range would be readily ascertainable to one of ordinary skill and the claimed ratio is considered to encompass such an amount based upon its breadth. Moreover, one of ordinary skill in the art would have found it obvious to adjust the amounts of high iodine value oil and low iodine value oils to fall within the iodine value of 125-170 disclosed by Morimoto. The lower value of 125 would require less high iodine value oil whereas the higher value of 170 would require more high iodine value oil to reach the total iodine value of the blended oils. Moreover, the amount of each would depend on the starting iodine values of each oil used. Balancing these materials to reach the desired iodine value of the blended oil is well within the purview of one of ordinary skill.
Response to Arguments
The amendment to claim 6 has overcome the 102 rejections over Morimoto and JP ‘247. However, a new ground of rejection under 103 over Morimoto is stated above.
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 JENNIFER C MCNEIL whose telephone number is (571)272-1540. The examiner can normally be reached M-F 9-5.
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JENNIFER C. MCNEIL
Primary Examiner
Art Unit 1793
/Jennifer McNeil/Primary Examiner, Art Unit 1793