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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 13, 2026 has been entered.
Claim Status
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
1-4, 9-21
Withdrawn claims:
None
Previously canceled claims:
5-8
Newly canceled claims:
None
Amended claims:
1
New claims:
None
Claims currently under consideration:
1-4, 9-21
Currently rejected claims:
1-4, 9-21
Allowed claims:
None
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4 and 9-19 are rejected under 35 U.S.C. 103 as being unpatentable over Bruse (WO 2018/217856A1)(IDS Reference filed 01/31/2023) in view of Doisaki (US 20140066644 A1).
Regarding claim 1, Bruse teaches a method of short path evaporation to reduce unwanted contaminants ([0002]) comprising subjecting a vegetable oil to short path evaporation ([0009]), where short path evaporation is performed at operating process pressures below 1 mbar ([0020], which matches the claimed range of “below 1 mbar”) and a temperature from 90 to 350[Symbol font/0xB0]C ([0022], which encompasses both the claimed ranges of a) “between 220 and 240[Symbol font/0xB0]C” and b) “from 245 to 300[Symbol font/0xB0]C”). Bruse also teaches that the preferred vegetable oil is derived from palm oil ([0011]). Although Bruse does not explicitly teach that the short path evaporation results in a retentate vegetable oil and a distillate, one of ordinary skill in the art would recognize that performing a short path evaporation will inherently lead to vegetable oil retentate and distillate portions.
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Bruse does not teach (a) a feed rate per unit area of evaporator surface of the short path evaporation equipment in the range from 50 to 105 kg/h·m2 wherein the MOSH and/or MOAH content is reduced by at least 25% or (b) a feed rate per unit area of evaporator surface of the short path evaporation equipment in the range from 110 to 170 kg/h·m2 wherein the MOSH and/or MOAH content is reduced by at least 70%.
Regarding a feed rate per unit area of evaporator surface of the short path evaporation equipment, Doisaki teaches a method for lowering the content of sterols in oil (Abstract) comprising short path distillation with a flux rate (i.e., feed rate per unit area) of 20 to 200 kg/h·m2 ([0023]-[0025]), which encompasses the claimed ranges of (a) 50 kg/h·m2 to 105 kg/h·m2 and (b) 110 kg/h·m2 to 170 kg/h·m2.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Bruse with the use of a flux rate (i.e., feed rate per unit area) as taught by Doisaki. One of ordinary skill would have been motivated to make this modification because Doisaki teaches that productivity of the reaction declines when the flux rate is too low ([0064]).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Although the cited prior art does not explicitly teach wherein the MOSH and/or MOAH content is reduced by (a) at least 25% or (b) at least 70%, this is an inherent result of performing short path evaporation as claimed. This finding is supported by the Applicant’s specification. The instant specification teaches examples of short path evaporation resulting in MOSH and MOAH reductions of 87.2% ([0066]-[0068], Table 3), which falls within both claimed ranges of (a) at least 25% or (b) at least 70%. Additionally, MPEP §2112.01 states where the claimed and prior art are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Thus, the oil produced by the substantially identical process of the cited prior art would be obvious.
The preamble recitation “for reducing the content of MOSH and/or MOAH from vegetable oils” recites the intended use of the claimed invention and does not result in a manipulative difference to the process as claimed. MPEP §2111.02(II) states if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020).
Regarding claim 2, Bruse also teaches performing short path evaporation at process pressures preferably below 0.01 mbar ([0020]), which matches the claimed range of “below 0.01 mbar”.
Regarding claim 3, Bruse also teaches performing a degumming, bleaching, and deodorizing step prior to short path evaporation ([0034], steps a)-d)).
Regarding claim 4, Bruse also teaches performing a degumming step before short path evaporation ([0034], step a)).
Regarding claim 9, Bruse teaches the short path evaporation temperature from 90 to 350[Symbol font/0xB0]C ([0022], which encompasses the claimed range of “between 220 and 240[Symbol font/0xB0]C”).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Bruse does not teach a feed rate per unit area of evaporator surface of the short path evaporation equipment in the range from 50 to 105 kg/h·m2 or wherein the yield of the retentate oil of the short-path evaporation is more than 95%.
Regarding a feed rate per unit area of evaporator surface of the short path evaporation equipment, Doisaki teaches a method for lowering the content of sterols in oil (Abstract) comprising short path distillation with a flux rate (i.e., feed rate per unit area) of 20 to 200 kg/h·m2 ([0023]-[0025]), which encompasses the claimed range of “50 kg/h·m2 to 105 kg/h·m2”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Bruse with the use of a flux rate (i.e., feed rate per unit area) as taught by Doisaki. One of ordinary skill would have been motivated to make this modification because Doisaki teaches that productivity of the reaction declines when the flux rate is too low ([0064]).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Regarding the limitation wherein the yield of the retentate vegetable oil of the short-path evaporation is more than 95%, this is an inherent result of performing short path evaporation on a vegetable oil. This finding is supported by the Applicant’s specification. The instant specification teaches examples of short path evaporation resulting in retentate yield of 99.5% and 99.3% ([0066]-[0068], Table 3, Retentate tests 1 and 2), which both fall within the claimed range of “more than 95%”. Therefore, the cited prior art renders the claim obvious.
Additionally, MPEP §2112.01 states where the claimed and prior art are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 10, Bruse teaches the short path evaporation temperature from 90 to 350[Symbol font/0xB0]C ([0022], which encompasses the claimed range of “between 245 and 285[Symbol font/0xB0]C”).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Regarding a feed rate per unit area of evaporator surface of the short path evaporation equipment, Doisaki teaches a method for lowering the content of sterols in oil (Abstract) comprising short path distillation with a flux rate (i.e., feed rate per unit area) of 20 to 200 kg/h·m2 ([0023]-[0025]), which encompasses the claimed range of “110 kg/h·m2 to 170 kg/h·m2”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Bruse with the use of a flux rate (i.e., feed rate per unit area) as taught by Doisaki. One of ordinary skill would have been motivated to make this modification because Doisaki teaches that productivity of the reaction declines when the flux rate is too low ([0064]).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Regarding the limitation wherein the yield of the retentate vegetable oil of the short-path evaporation is more than 85%, this is an inherent result of performing short path evaporation on a vegetable oil. This finding is supported by the Applicant’s specification. The instant specification teaches examples of short path evaporation resulting in retentate yield of 99.5%, 99.3%, and 93.6% ([0066]-[0068], Table 3), which all fall within the claimed range of “more than 95%”. While the rate of 53 kg/h·m2 was the lowest flow rate used in the given tests, absent evidence to the contrary, the difference in feed rate would not adversely impact the percent yield of the process. Therefore, the cited prior art renders the claim obvious.
Additionally, MPEP §2112.01 states where the claimed and prior art are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 11, Bruse teaches the short path evaporation temperature from 90 to 350[Symbol font/0xB0]C ([0022], which encompasses the claimed range of “between 220 and 240[Symbol font/0xB0]C”). Bruse also teaches performing a degumming, bleaching, and deodorizing step prior to short path evaporation ([0034], steps a)-d)).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Bruse does not teach a feed rate per unit area of evaporator surface of the short path evaporation equipment in the range from 50 to 105 kg/h·m2 or wherein the content of MOSH in the retentate is reduced by at least 45%.
Regarding a feed rate per unit area of evaporator surface of the short path evaporation equipment, Doisaki teaches a method for lowering the content of sterols in oil (Abstract) comprising short path distillation with a flux rate (i.e., feed rate per unit area) of 20 to 200 kg/h·m2 ([0023]-[0025]), which encompasses the claimed range of “50 kg/h·m2 to 105 kg/h·m2”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Bruse with the use of a flux rate (i.e., feed rate per unit area) as taught by Doisaki. One of ordinary skill would have been motivated to make this modification because Doisaki teaches that productivity of the reaction declines when the flux rate is too low ([0064]).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Although the cited prior art does not teach that the content of MOSH in the retentate is reduced by at least 45% compared to the palm-based oil that is degummed, bleached, deodorized, and subjected to short-path evaporation, this is an inherent result of the process as claimed. This finding is supported by the Applicant’s specification. The instant specification teaches examples of short path evaporation with a temperature of 225°C and feed rate per unit area of 53 kg/h·m2, where the starting MOSH is 87.0 ppm and the final MOSH is 45.3 ppm (p. 14, Table 2; p. 15, Table 3), which equates to a reduction of 47.9%, which falls within the claimed range of “at least 45%”. Thus, the claimed range would be obvious.
Additionally, MPEP §2112.01 states where the claimed and prior art are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 12, Bruse teaches the short path evaporation temperature from 90 to 350[Symbol font/0xB0]C ([0022], which encompasses the claimed range of “between 220 and 240[Symbol font/0xB0]C”).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Bruse does not teach a feed rate per unit area of evaporator surface of the short path evaporation equipment in the range from 50 to 105 kg/h·m2 or wherein the content of MOAH in the retentate is reduced by at least 27% compared to the palm-based oil that is subjected to short-path evaporation.
Regarding a feed rate per unit area of evaporator surface of the short path evaporation equipment, Doisaki teaches a method for lowering the content of sterols in oil (Abstract) comprising short path distillation with a flux rate (i.e., feed rate per unit area) of 20 to 200 kg/h·m2 ([0023]-[0025]), which encompasses the claimed range of “50 kg/h·m2 to 105 kg/h·m2”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Bruse with the use of a flux rate (i.e., feed rate per unit area) as taught by Doisaki. One of ordinary skill would have been motivated to make this modification because Doisaki teaches that productivity of the reaction declines when the flux rate is too low ([0064]).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Although the cited prior art does not teach that the content of MOAH in the retentate is reduced by at least 27%, this is an inherent result of the process as claimed. This finding is supported by the Applicant’s specification. The instant specification teaches examples of short path evaporation with a temperature of 225°C and feed rate per unit area of 53 kg/h·m2, where the starting MOAH is 2.2 ppm and the final MOAH is 1.6 ppm (p. 14, Table 2; p. 15, Table 3), which equates to a reduction of 27.3%, which falls in the claimed range of “at least 27%”. Thus, the claimed range would be obvious.
Additionally, MPEP §2112.01 states where the claimed and prior art are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 13, Bruse teaches the short path evaporation temperature from 90 to 350[Symbol font/0xB0]C ([0022], which encompasses the claimed range of “between 220 and 240[Symbol font/0xB0]C”).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Bruse does not teach a feed rate per unit area of evaporator surface of the short path evaporation equipment in the range from 50 to 105 kg/h·m2 or wherein the content of MOSH in the retentate is reduced by at least 64% compared to the palm-based oil that is subjected to short-path evaporation.
Regarding a feed rate per unit area of evaporator surface of the short path evaporation equipment, Doisaki teaches a method for lowering the content of sterols in oil (Abstract) comprising short path distillation with a flux rate (i.e., feed rate per unit area) of 20 to 200 kg/h·m2 ([0023]-[0025]), which encompasses the claimed range of “50 kg/h·m2 to 105 kg/h·m2”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Bruse with the use of a flux rate (i.e., feed rate per unit area) as taught by Doisaki. One of ordinary skill would have been motivated to make this modification because Doisaki teaches that productivity of the reaction declines when the flux rate is too low ([0064]).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Although the cited prior art does not teach that the content of MOSH in the retentate is reduced by at least 64% compared to the palm-based oil that is subjected to short-path evaporation, this is an inherent result of the process as claimed. This finding is supported by the Applicant’s specification. The instant specification teaches examples of short path evaporation with a temperature of 240°C and feed rate per unit area of 103 kg/h·m2, where the starting MOSH is 87.0 ppm and the final MOSH is 30.9 ppm (p. 14, Table 2; p. 15, Table 3), which equates to a reduction of 64.5%, which falls in the claimed range of “at least 64%”.
Additionally, MPEP §2112.01 states where the claimed and prior art are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 14, Bruse teaches the short path evaporation temperature from 90 to 350[Symbol font/0xB0]C ([0022], which encompasses the claimed range of “between 220 and 240[Symbol font/0xB0]C”).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Bruse does not teach a feed rate per unit area of evaporator surface of the short path evaporation equipment in the range from 50 to 105 kg/h·m2 or wherein the content of MOAH in the retentate is reduced by at least 40% compared to the palm-based oil that is subjected to short-path evaporation.
Regarding a feed rate per unit area of evaporator surface of the short path evaporation equipment, Doisaki teaches a method for lowering the content of sterols in oil (Abstract) comprising short path distillation with a flux rate (i.e., feed rate per unit area) of 20 to 200 kg/h·m2 ([0023]-[0025]), which encompasses the claimed range of “50 kg/h·m2 to 105 kg/h·m2”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Bruse with the use of a flux rate (i.e., feed rate per unit area) as taught by Doisaki. One of ordinary skill would have been motivated to make this modification because Doisaki teaches that productivity of the reaction declines when the flux rate is too low ([0064]).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Although the cited prior art does not teach that the content of MOAH in the retentate is reduced by at least 40% compared to the palm-based oil that is subjected to short-path evaporation, this is an inherent result of the process as claimed. This finding is supported by the Applicant’s specification. The instant specification teaches examples of short path evaporation with a temperature of 240°C and feed rate per unit area of 103 kg/h·m2, where the starting MOAH is 2.2 ppm and the final MOAH is 1.3 ppm (p. 14, Table 2; p. 15, Table 3), which equates to a reduction of 40.9%, which falls in the claimed range of “at least 40%”.
Additionally, MPEP §2112.01 states where the claimed and prior art are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 15, Bruse teaches the short path evaporation temperature from 90 to 350[Symbol font/0xB0]C ([0022], which encompasses the claimed range of “between 245 and 285[Symbol font/0xB0]C”).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Bruse does not teach a feed rate per unit area of evaporator surface of the short path evaporation equipment in the range from 110 to 170 kg/h·m2 or wherein the content of MOSH in the retentate is reduced by at least 86% compared to the palm-based oil that is subjected to short-path evaporation.
Regarding a feed rate per unit area of evaporator surface of the short path evaporation equipment, Doisaki teaches a method for lowering the content of sterols in oil (Abstract) comprising short path distillation with a flux rate (i.e., feed rate per unit area) of 20 to 200 kg/h·m2 ([0023]-[0025]), which encompasses the claimed range of “110 kg/h·m2 to 170 kg/h·m2”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Bruse with the use of a flux rate (i.e., feed rate per unit area) as taught by Doisaki. One of ordinary skill would have been motivated to make this modification because Doisaki teaches that productivity of the reaction declines when the flux rate is too low ([0064]).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Although the cited prior art does not teach that the content of MOSH in the retentate is reduced by at least 86% compared to the palm-based oil that is subjected to short-path evaporation, this is an inherent result of the process as claimed. This finding is supported by the Applicant’s specification. The instant specification teaches examples of short path evaporation with a temperature of 280°C and feed rate per unit area of 154 kg/h·m2, where the starting MOSH is 87.0 ppm and the final MOSH is 11.4 ppm (p. 14, Table 2; p. 15, Table 3), which equates to a reduction of 86.9%, which falls in the claimed range of “at least 86%”.
Additionally, MPEP §2112.01 states where the claimed and prior art are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 16, Bruse teaches the short path evaporation temperature from 90 to 350[Symbol font/0xB0]C ([0022], which encompasses the claimed range of “between 245 and 285[Symbol font/0xB0]C”).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Bruse does not teach a feed rate per unit area of evaporator surface of the short path evaporation equipment in the range from 110 to 170 kg/h·m2 or wherein the content of MOAH in the retentate is reduced by at least 99% compared to the palm-based oil that is subjected to short-path evaporation.
Regarding a feed rate per unit area of evaporator surface of the short path evaporation equipment, Doisaki teaches a method for lowering the content of sterols in oil (Abstract) comprising short path distillation with a flux rate (i.e., feed rate per unit area) of 20 to 200 kg/h·m2 ([0023]-[0025]), which encompasses the claimed range of “110 kg/h·m2 to 170 kg/h·m2”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Bruse with the use of a flux rate (i.e., feed rate per unit area) as taught by Doisaki. One of ordinary skill would have been motivated to make this modification because Doisaki teaches that productivity of the reaction declines when the flux rate is too low ([0064]).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Although the cited prior art does not teach that the content of MOAH in the retentate is reduced by at least 99% compared to the palm-based oil that is subjected to short-path evaporation, this is an inherent result of the process as claimed. This finding is supported by the Applicant’s specification. The instant specification teaches examples of short path evaporation with a temperature of 280°C and feed rate per unit area of 154 kg/h·m2, where the starting MOAH is 2.2 ppm and the final MOAH is 0.0 ppm (p. 14, Table 2; p. 15, Table 3), which equates to a reduction of 100%, which falls in the claimed range of “at least 99%”.
Additionally, MPEP §2112.01 states where the claimed and prior art are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 17, Bruse teaches of a deodorizing step after short path evaporation ([0020]), where deodorizing comprises contacting the oil with steam ([0024]) and that the steam is sprayed into the oil (i.e., sparged; [0031]).
Regarding claim 18, Bruse teaches that deodorization with steam is carried out at a temperature above 230°C for palm oil ([0029]), which overlaps with the claimed range of “below 260°C”.
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Regarding claim 19, Bruse teaches that the steam is in the amount of 0.7-2.5 wt.% (0031]), which overlaps with the claimed range of “0.1 wt.% to 2.0 wt.%”.
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Claims 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Bruse (WO 2018/217856A1)(IDS Reference filed 0131/2023) in view of Doisaki (US 20140066644 A1) as applied to claim 1 above, and further in view of Kruidenberg (US 20130323394 A1).
Regarding claims 20 and 21, the cited prior art above does not teach wherein a glycidyl ester content of the retentate palm-based oil is below 1 ppm (claim 20) or below 0.5 ppm (claim 21).
However, in the same field of endeavor, Kruidenberg teaches of a refined oil with a reduced glycidyl ester content (Abstract) comprising subjecting oil to a bleaching step, a deodorization step, and a final bleaching step ([0011]) where the refined oil may have a glycidyl ester content of 0.05 ppm or less ([0049]), which falls in the claimed range of “below 1 ppm” (claim 20) and “below 0.5 ppm” (claim 21).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Bruse to reduce the glycidyl ester content of the oil as taught by Kruidenberg. One would be motivated to make this modification because Kruidenberg teaches that glycidyl esters are associated with possible carcinogenic effects ([0003]).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8, and 9 of copending Application No. 18/040,051 (reference application, hereinafter ‘051). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, claim 1 of ‘051 recites a process for reducing the content of MOSH and MOAH from palm-based oil, the process comprising subjecting a palm-cased oil to a short-path evaporation to obtain a retentate palm-based oil having a reduced MOSH and MOAH content compared to the palm-based oil, wherein the short path evaporation is performed at an evaporator temperature of 245[Symbol font/0xB0]C to 280[Symbol font/0xB0]C with a feed rate per unit area of 35 kg/h·m2 to 102 kg/h·m2, wherein the MOSH and MOAH content is reduced by at least 50% (which overlaps with the claimed range of “at least 70%”. Although instant claim 1 recites the evaporation performed at 220[Symbol font/0xB0]C to 240[Symbol font/0xB0]C with a feed rate per unit area of 50 kg/h·m2 to 105 kg/h·m2 or 245[Symbol font/0xB0]C to 285[Symbol font/0xB0]C with a feed rate per unit area of 110 kg/h·m2 to 170 kg/h·m2, the ranges of ‘051 lie close to those of instant claim 1.
Furthermore, although claim 1 of ‘051 recites a pressure below 0.01 mbar, this falls within the claimed range of “below 1 mbar”. With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Additionally, claim 9 of ‘051 recites wherein the feed rate per unit area of the evaporator surface of the short-path evaporation is in the range of 50 to 95 kg/h·m2.
Regarding claim 2, claim 1 of ‘051 recites a pressure below 0.01 mbar.
Regarding claim 3, claim 3 of ‘051 recites wherein the palm-based oil is degummed, bleached, and/or deodorized.
Regarding claim 4, claim 4 of ‘051 recites wherein the palm-based oil is at least degummed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Claim Rejections – 35 U.S.C. §103 of claims 1-4 and 9-19 over Bruse and Doisaki: Applicant’s arguments filed March 13, 2026 have been fully considered but they are not persuasive.
Applicant argued that none of the cited references alone or in combination teach or suggest reducing the MOSH and MOAH in vegetable oil, and that the Examiner has failed to make a case for inherency (Remarks, p. 6, ¶ 2- p. 7, ¶ 2).
This argument has been considered. However, the Examiner maintains that the reduction of MOSH and MOAH as recited would be an inherent result of performing the method as claimed. Data to support that the recited reduction of MOSH and MOAH would be an inherent result is provided by the instant specification. The instant specification teaches that MOSH and MOAH content was reduced by 87.2% when evaporation was performed at a temperature of 280[Symbol font/0xB0]C and 154 kg/h.m2 ([0064]-[0066]; Table 3, col. 3), which are taught by the combination of Bruse and Doisaki. Because Bruse in view of Doisaki teach the claimed method, it necessarily follows that the process of Bruse and Doisaki would have the claimed MOSH and MOAH reduction. MPEP §2112(I) states "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
Furthermore, MPEP §2112(V) states "once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant" and "'[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same.' In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted)." The Applicant has not provided any evidence or reasoning to prove that the reduction of MOSH and MOAH content would not be an inherent result of performing the method as claimed.
Applicant further argued that Doisaki states that productivity declines when the flux rate is excessively low, and one of ordinary skill wouldn't be motivated to modify the flux rate in Bruse unless the flux rate was excessively low (Remarks, p. 7, ¶ 3).
This argument has been considered. However, because Bruse does not disclose the flux rate for the short path evaporation, one of ordinary skill would have been motivated to consult another reference such as Doisaki to determine an appropriate flux rate for short path evaporation equipment. Although Doisaki does state that productivity declines when flux is excessively low, the Examiner maintains that one of ordinary skill would be motivated to modify Bruse with a flux rate taught by Doisaki to ensure a flux rate that is not excessively low.
Claim Rejections – 35 U.S.C. §103 of claims 20-21 over Bruse, Doisaki, and Bruse ‘394: Applicant’s arguments filed March 13, 2026 have been fully considered but they are not persuasive.
Applicant's arguments as related to claim 1 were determined to be unpersuasive as detailed previously herein. Examiner further maintains that the dependent claims are properly rejected in light of the cited combinations of prior art as described in the claim rejections.
Double Patenting Rejection – Claims 1-4 over co-pending application 18/040,051: Applicant’s arguments have been fully considered but they are not persuasive. Applicant argued that a double patenting rejection may be inappropriate as there has been no allowable subject matter indicated (Remarks, p. 7, ¶ 8).
This argument has been considered and is unpersuasive. The double patenting rejection is merely provisional and is maintained herein.
The rejections of claims 1-4, 9-21 have been maintained herein.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 Amanda S Hawkins whose telephone number is (703)756-1530. The examiner can normally be reached M-Th 8:00a-4:00p, F 8:00a-1:00p ET.
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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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