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) 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2015015870 (Kawai) in view of 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) and Knothe, “Structure Indices in FA Chemistry. How Relevant Is the Iodine Value?”, 2002.
Kawai discloses a fat or oil processed starch where the oil may be provided as a mixture of listed oils and discloses a high viscosity and that the oil preferably has an iodine value of above 100, more preferably 135 or more (abstract, page 4). After the oil and starch are blended, the mixture is subjected to heat aging. Kawai discloses that one or more selected from the group consisting of edible fats and edible fats and related substances are used. Specific examples of edible fats and oils include soybean oil, safflower oil such as high linol safflower oil, corn oil, rapeseed oil, sesame oil, linseed oil, sunflower oil, peanut oil, cottonseed oil, olive oil, rice oil, palm oil, etc. Is mentioned. From the viewpoint of workability, liquid oil is preferably used as the edible oil and fat, and soybean oil, rapeseed oil, corn oil, high linol safflower oil, linseed oil, sesame oil and the like are more preferable. It is known that olive oil has an iodine value typically below 100 and the iodine value of palm oil is in the range of 50-55 (applicant’s specification indicates 50 [0058]). Thus, based upon the desire in Kawai of providing an iodine value of 135 or more and the fact that oils are disclosed by Kawai that fall below iodine values of 100, these oils must be mixed with higher iodine value oils to reach the threshold of 135. Kawai also lists linseed oil which is known to have an iodine value of 170-204 and high-linoleic safflower oil is known to have iodine value of 140 (applicant’s specification [0054]). Both linseed and high-linoleic safflower oil are disclosed by applicant as having iodine values above 120 [0028].
Still further, Morimoto discloses the concept of mixing oils to reach a particular iodine level. 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].
The following oils are provided by Morimoto and Kawai and have iodine values below 100 as evidenced by Pocklington, Ebong, Dunford, and applicant’s specification: olive oil (approx. 82, Pocklington), 75-94 range (Ebong)), palm oil (approx. 52-53, Pocklington, 45-56 range, Ebong), and peanut oil (83-107) (Dunford). The following oils from the Kawai and Morimoto have iodine values above 120 and below 200: linseed (170-204), high linoleic safflower (140, applicants’ specification). It would have been obvious to provide a blend of oils selected from the oils provided by Kawai and consistent with the concept of blending oils contemplated by Morimoto to provide an oil blend with the desired iodine levels. Regarding the ratio, example 4 of Morimoto discloses a blend of perilla (202) and rapeseed oil (110) and the final iodine value is 140 which indicates a somewhat linear relationship. This relationship is also evidenced by Knothe which discloses that the iodine value of a mixture is calculated to be the weighted average of the components.
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page 848 of Knothe. Thus, one of ordinary skill in the art would reasonably be able to calculate amounts of each oil based upon their iodine value to obtain the desired overall iodine value. The claims encompass a wide range and the example of Morimoto is approximately 1:1 which falls within this range.
Kawai further discloses that the viscosity may be 500 cP (500 MPa-s) or higher (page 7). Kawai does not disclose polyphenols; thus, no polyphenols are considered present or required by Kawai. Kawai does not expressly disclose the dispersibility. Kawai does recognize that the solubility of the oil and fat processed starch should have improved dispersibility and an example is given there the starch and oil are mixed and rotated at 30 rpm for 30 second to obtain a dispersion which indicates that the dispersibility would be less than the threshold 15 minutes as claimed (page 9). Moreover, it would have been obvious to one of ordinary skill to modify the relative amounts of starch and oil to obtain the desired dispersibility of the processed starch so as to avoid clumping.
Regarding claim 7, the difference in iodine values of the above discussed oils overlap with the claimed range. For instance, iodine values of palm oil and olive oil differ from iodine values of linseed oil and high linoleic safflower oil by greater than 10.
Response to Arguments
Applicant’s arguments with respect to claim(s) 6-7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant also argues that the claimed method yields unexpected results and notes that typically high-iodine oil results in poor dispersibility and caking and low iodine oil fails to provide the sufficient slurry viscosity and that the combination of oils overcomes the inherent trade-off. As noted above, Kawai discloses that more than one oil may be used, as does Morimoto. Kawai exemplifies several oils that are within the lower iodine value range as well as oils in the higher iodine value range, and sets an iodine goal value that would necessitate mixing these oils. One of ordinary skill would reasonably be able to calculate the amounts of different oils needed to reach the desired iodine value as evidenced by Knothe. Applicant has not pointed to specific data to support the allegation of unexpected results. Some of the data is limited to only a mixture of high linoleic and high oleic safflower oils, which is not commensurate with the scope of the claims (Test Examples 2 and 3).
Conclusion
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 1723
/Jennifer McNeil/Primary Examiner, Art Unit 1723
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