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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/20/2026 has been entered.
Status of Claims
Receipt of Remarks/Amendments filed on 01/20/2026 is acknowledged. Claims 6-8 are cancelled Claim 1 is amended. Claims 1-5 and 9-19 are currently under examination and the subject matter of the present Office Action.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 01/21/2026 and 03/26/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements were considered by the Examiner.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
Claims 1-5, 9-15, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Hirai et al. (Of record), hereinafter Hirai, in view of Stauff et al. (Of record), hereinafter Stauff.
Hirai recognizes that specific vegetable oils for food material contains mineral oil impurities, including coconut oil and palm oil, that need to be removed, and teaches short path distillation treatment (Abstract; [0005], [0046]-[0047]). Hirai discloses a method for reducing the content of saturated hydrocarbons and a refined palm-based oil and fat (p. 3, Technical field). Specific examples of palm-based oil and fat include palm oil, palm kernel oil, fractionated palm oil etc. [0048]. The instant Specification states that the term "vegetable lauric oil" is encompassing vegetable oils having a content of C6 to C12 fatty acids of more than 50%, and examples include coconut oil, palm kernel oil etc. [0011]. As such, the “vegetable lauric oil” encompasses the palm oil of Hirai.
Hirai specifically teaches evaporation of raw palm oil by short path distillation [0053]-[0054]. After the short -path distillation treatment of Hirai, the residue and distillate were collected and presented in Tables 1-3. Hirai reports that the content of saturated hydrocarbons, particularly those having 10-56 carbon, and preferably 20-35 atoms, in fats and oils can be reduced by adjusting the temperature conditions to 50° C. or more and 270° C or less when subjecting raw fats and oils to short path distillation, and preferably 230° C or less from the viewpoint of reducing the fraction rate and increasing the yield while reducing the saturated hydrocarbon content, which encompasses the claimed range in Claim 1 ([0024], [0066]).
Hirai expressly teaches using evaporator temperatures 200-250˚C, at a pressure of 0.0500 Pa, which is 0.0005 mbar, and a feed rate of 8.30 and 25 kg/h.m2 (Table 1, [0064]). Hirai states that from the viewpoint of reducing the fraction rate and increasing the yield while reducing the saturated hydrocarbon content, the short path distillation process temperature is preferably 230 ˚C or less [0066]. Further, it was unexpectedly found by Hirai that the slower the feed rate of the raw oil to the short-path distillation apparatus used in the short-path distillation process, preferably 30.0 kg/h.m2 or less, more preferably 25.0 kg/h.m2 or less per unit area of the evaporation surface of the short-path distillation apparatus, the easier it is to reduce the saturated hydrocarbon content [0029]. The pressure conditions in the short path distillation process are preferably close to zero Pa, preferably 0.1000 Pa or less, more preferably 0.0800 Pa or less, even more preferably 0.0200 Pa or less, and most preferably 0.0100 Pa or less, with the lower limit of the pressure conditions in the short path distillation process at 0.0001 Pa or more [0034].
Hirai renders obvious the temperature, pressure, and feed rate required in Claim 1. While the exact temperature range is not disclosed by Hirai, it is generally noted that differences in temperature range do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature range 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). Given that applicant did not point out the criticality of the temperature range of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine where in a disclosed set of ranges is the optimum temperature. NOTE: MPEP 2144.05. Furthermore, Hirai already teaches a temperature of 230° C or less, and one of ordinary skill in the art would find it obvious to adjust the temperature as a matter of experimentation and optimization. The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Although Hirai does not explicitly teach that the MOSH and MOAH content of the retentate is reduced by at least 25% to 65%, one can calculate the value of C20-C35 and C10-C56 separated by varying the temperature, feed rate, and pressure etc. in the short path distillation conditions in Hirai. Hirai teaches the C10-C56 value of raw palm oil that is not subjected to short path evaporation to be 39, and that subjecting it to short path distillation under the conditions of its invention resulted in in reduction from 39 to a range from 10-15 (Table 1). As such, by Examiner’s calculation, the amount of MOSH left in the retentate for Examples 1-5 ranges from 26-38% (Table 1). The distillation yield is ranged from 2.3-9.5% indicating that the retentate yield is over 90%.
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).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to substitute the palm oil with coconut oil or palm kernel oil and employ the same short path evaporation technique, modifying the conditions to obtain the desired yield and purity. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. See MPEP 2143. In this case, Hirai has already identified coconut oil and palm kernel oil to be suitable example vegetable oil along with palm oil.
Hirai expressly teaches that it is possible to increase the yield and reduce the content of saturated hydrocarbons, but is silent on aromatic hydrocarbons [0027].
Regarding the MOAH being present in the vegetable lauric oil, Stauff teaches the contamination of food with mineral oil hydrocarbons MOSH and MOAH which pose risk to human and animal health, with MOAH exhibiting mutagenic properties (p. 1, Introduction). Stauff disclosed the effect of deodorization on during refining on the removal of MOSH/MOAH in cocoa butter and coconut oil (p. 5, Section 3.2). the entire MOAH fraction from C10–C50 was additionally reduced resulting in MOAH levels below limit of quantitation (LOQ) in refined oils (Fig. 4; p. 5, Section 3.2.1). Due to the thermal impact of deodorization, MOSH/MOAH levels in subfraction C24 can be significantly reduced up to 75%, and the evaporation rate depend heavily on the conditions (p. 5, Section 3.2.1; Table 2).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Stauff with Hirai and optimize the method of oil processing and refinement to remove as much MOSH and MOAH contaminants as possible in vegetable lauric oil such as coconut oil, and avoid risk to human and animal health. By reducing/eliminating the MOAH and MOSH, the yield of refined retentate oil would necessarily be higher.
Importantly, regarding the recitation in Claim 1 of “wherein the content of MOSH and MOAH in the retentate vegetable lauric oil is reduced by 25 % to 60 %, and a yield of the retentate vegetable lauric oil is more than 60%”, a 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim." Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed._Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited."). Note MPEP 2111.04. In this case, the claim uses the term "wherein", rather than "whereby", but it is concluded that the terms should be treated the same ... the wherein clause merely characterizes the results of the step of subjecting the lauric oil to a short path evaporation at the specific conditions, which the Hirai teaches, and as such, does not distinguish the instantly claimed application from the application taught in Hirai. The same rationale applies to Claims 9-15.
Regarding Claims 2 and 5, Hirai teaches a pressure of 0.0500 Pa, which is 0.0005 mbar [Table 1].
Regarding Claims 3 and 4, Hirai teaches that the oil to be subjected to the reduction method can be any oil, for example, it may be oil treated by a degumming process or deodorized or bleached [0044]-[0046].
Regarding Claims 11 and 15, Hirai recognizes that glycidol, 3-chloropropane-1,2-diol, and fatty acid esters thereof are present as trace components in fats and oils [0002]. Hirai teaches that if the fat is not heated to 200 °C or higher, the generation of glycidol can be suppressed in the obtained refined fat [00042]. As such, one skilled in the art would optimize the temperature of Hirai, decreasing to below 200 °C to prevent generation of glycidol, which would necessarily prevent the formation of glycidyl ester.
Furthermore, while Hirai is silent on the actual amount of glycidyl ester content of the retentate vegetable lauric acid, because Hirai has taught the same short path distillation process for palm oil, which the instant claim and specification notes to provide glycidyl ester content of the retentate vegetable lauric oil is below 1.0 ppm and below 0.5 ppm in Claims 11 and 15 respectively, Hirai therefore renders obvious the claimed feature as it is an inherent property. Because the prior art process is the identical process claimed, the composition obtained must necessarily have the characteristics claimed in Claims 11 and 15.
Similarly for Claims 9-10 and 12-14, Hirai is silent on the yield of the retentate vegetable lauric acid, but because Hirai has taught the same short path distillation process under temperature conditions, with goals of increasing the yield and decreasing saturated hydrocarbons [0027], which are overlapping or similar to the instantly claimed invention, the claimed yields are therefore obvious. One of ordinary skill in the art would find it obvious to adjust the temperature and other conditions as a matter of experimentation and optimization in order to achieve the goal of increased yield. The adjustment of particular conventional working conditions is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan.
Regarding Claim 19, Hirai discloses coconut oil as a raw material suitable for the invention [0047]. Hirai teaches refining methods including degumming, bleaching, and deodorization steps [0045]-[0046]. Bruse teaches coconut oil [0011].
Claims 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Hirai in view of Stauff, as applied to Claim 1 above, and further in view of Maiworm et al. (Of record), hereinafter Maiworm.
Hirai is silent on treatment of the retentate with sparge steam.
Maiworm is in the field of oil refining, and discloses a process for the production of a refined oil comprising subjecting an edible oil to bleaching, deodorization, re-bleaching, and a further refining step, wherein the further refining step wherein the further refining step ( d) is carried out by passing the bleached edible oil through an oil refining equipment consisting of a stripping column with packing and not more than one oil collection tray (Abstract; Claim 1; p. 3, lines 1-16). Maiworm teaches that the oil is kept in the tray for a certain time at high temperature and steam is introduced to obtain physical and chemical changes in the oil, as color, flavor, and flavor precursors breakdown and removed by the passing steam, as a preferred stripping agent, improving the quality of the oil (p. 4, lines 9-15; p. 12, lines 6-7).
Regarding Claims 16-18, Maiworm expressly teaches a process of refining, bleaching, deodorizing and rebleaching palm oil (Example 1). The rebleaching process was followed by a post-deodorization step carried out in a deodorizer at 180°C with 0.8% (w/w) sparge steam resulting in refined palm oil (p. 19, Comparative Example 1).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Maiworm with Hirai and subject the oil obtained from the method of Hirai to a further refining process using steam to strip the oil of other volatile impurities. One would take guidance from Maiworm and start with the conditions used by Maiwarm and try stripping at 180°C with 0.8% (w/w) sparge steam. Applying a known technique to a known method ready for improvement to yield predictable results is the rationale supporting obviousness. See MPEP § 2143 and KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007).
Claims 1-5, 9-15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Bruse, F. (Of record), and in view of Hirai and Stauff.
Regarding Claim 1, Bruse teaches a method of short path evaporation to reduce unwanted contaminants comprising refining a vegetable oil by a deodorization step and then subjecting the refined vegetable oil to a short path evaporation, and collecting the resulting vegetable oil (Abstract, [0002], [0009]). Bruse teaches that the short path evaporation is performed at pressures below 1 mbar, preferably below 0.05 mbar, more preferably below 0.01 mbar, most preferably below 0.001 mbar, reading on the “below 1 mbar” required by the claim, and at a temperature from 90 to 350 [Symbol font/0xB0]C, preferably from 140°C to 280°C, rendering the “150 to 185°C” temperature requirement obvious [0020]-[0022]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.The preamble recitation “for reducing the content of MOSH and 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).
Additionally, 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. Regardless of the intended use, Bruse teaches the method steps claimed, and the method would eliminate not only the MCPDs from oil, but other contaminants including the MOSH and MOAH at the temperatures taught by Bruse.
Bruse is silent on the vegetable lauric acid, but teaches that its method is applicable for vegetable oil derived from palm oil, coconut oil, and palm kernel oil [0011]. Bruse expressly taught examples of degumming and subjecting palm oil to short path evaporation ([0042]; Examples 1A-1C and 2-4). The instant Specification states that the term "vegetable lauric oil" is encompassing vegetable oils having a content of C6 to C12 fatty acids of more than 50%, and examples include coconut oil, palm kernel oil etc. [0011].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to substitute the palm oil with coconut oil and employ the same short path evaporation technique taught by Bruse, starting with the same conditions, i.e. temperature and pressure, and modify accordingly to obtain the desired yield and purity. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. See MPEP 2143. In this case, Bruse has already identified coconut oil to be a suitable example vegetable oil along with palm oil.
Regarding Claim 1, Bruse does not teach the claimed feed rate per unit area of evaporator surface of the short path evaporation equipment in the range from 20 to 40 kg/h·m2, respectively.
Hirai is in the same field of endeavor. The teachings of Hirai regarding the feed rate of the short path evaporation equipment have been set forth in the rejection above. Hirai expressly teaches using short path distillation on palm oil, with evaporator temperatures and pressures that are compatible with those of Bruse, i.e. the short path distillation process temperature is preferably 230 ˚C or less [0066]; the pressure is preferably close to zero Pa, preferably 0.1000 Pa or less, more preferably 0.0800 Pa or less, even more preferably 0.0200 Pa or less, and most preferably 0.0100 Pa or less, with the lower limit of the pressure conditions in the short path distillation process at 0.0001 Pa or more [0034]. Hirai further teaches the unexpected finding that the slower the feed rate of the raw oil to the short-path distillation apparatus used in the short-path distillation process, preferably 30.0 kg/h.m2 or less, more preferably 25.0 kg/h.m2 or less per unit area of the evaporation surface of the short-path distillation apparatus, the easier it is to reduce the saturated hydrocarbon content [0029].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Hirai with Bruse and use the feed rate of Hirai, arriving at the instantly claimed method with reasonable expectations of success. Applying a known technique to a known method ready for improvement to yield predictable results is the rationale supporting obviousness. See MPEP § 2143 and KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007).
Bruse does not explicitly teach that the MOSH and MOAH content of the retentate is reduced by 25%-60%, However, 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). Herein, because Bruse in view of Hirai teaches the same method as instantly claimed, the MOSH content of the retentate and the yield of retentate vegetable lauric oil would be expected to be the similar as obtained in the instant invention. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. An unexpected property or result must actually be unexpected and of statistical and practical significance. The burden is on the applicant to establish the results are in fact unexpected, unobvious and of statistical and practical significance. See MPEP 716.02.
Additionally, regarding the MOAH being present in the vegetable lauric oil, Stauff teaches the contamination of food with mineral oil hydrocarbons MOSH and MOAH which pose risk to human and animal health, with MOAH exhibiting mutagenic properties (p. 1, Introduction). Stauff disclosed the effect of deodorization on during refining on the removal of MOSH/MOAH in cocoa butter and coconut oil (p. 5, Section 3.2). the entire MOAH fraction from C10–C50 was additionally reduced resulting in MOAH levels below limit of quantitation (LOQ) in refined oils (Fig. 4; p. 5, Section 3.2.1). Due to the thermal impact of deodorization, MOSH/MOAH levels in subfraction C24 can be significantly reduced up to 75%, and the evaporation rate depend heavily on the conditions (p. 5, Section 3.2.1; Table 2).It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Stauff with Bruse and Hirai and optimize the method of oil processing and refinement to remove as much MOSH and MOAH contaminants as possible in vegetable lauric oil such as coconut oil, and avoid risk to human and animal health.
Regarding Claims 2 and 5, Bruse teaches pressures below 1 mbar, preferably below 0.05 mbar, more preferably below 0.01 mbar, most preferably below 0.001 mbar, reading on the “below 0.01 mbar” required by the claim [0020]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding Claims 3-4, Bruse teaches degumming, bleaching, and deodorizing steps prior to short path evaporation ([0034], steps a)-d)).
Regarding Claims 9-10 and 12-14, as above, Bruse does not explicitly teach the retentate vegetable lauric oil is more than 80% and 90%, that the MOSH content of the retentate is reduced by 30%-50%, and that the MOAH content of the retentate is reduced by 25%-60%. However, MPEP §2112.01 is cited, stating 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. Id.
Similarly regarding Claims 11 and 15, while Bruse is silent on the actual amount of glycidyl ester content of the retentate vegetable lauric acid, because Bruse has taught the same short path distillation process for palm oil, which the instant claims and specification notes to provide glycidyl ester content of the retentate vegetable lauric oil is below 1.0 ppm, the art therefore renders obvious the claimed feature as it is an inherent property. Because the prior art composition is the identical composition claimed, the composition must necessarily have the characteristics claimed in Claims 11 and 15. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
Regarding Claim 19, Bruse discloses an aspect of the invention wherein good quality oil is obtained by refining including at least one or more of the following steps: degumming, neutralization, bleaching, and deodorization steps [0028]-[0034]. Bruse teaches coconut oil [0011].
Claims 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Bruse in view of Hirai and Stauff, as applied to Claim 1 above, and further in view of Maiworm.
Bruse is silent on treatment of the retentate with sparge steam. However, Bruse welcomes further refining process [0029]. Bruse recognizes that steam drive off free fatty acids and other volatile impurities, and teaches the process of superheating the steam and bubbling through the oi ([0014], [0019]). Generally, steam flow rates in the order of 0.7-2.5 weight percent (wt. % ) of the oil flow rates to produce vapor stream [0019].
Maiworm is in the field of oil refining, and discloses a process for the production of a refined oil comprising subjecting an edible oil to bleaching, deodorization, re-bleaching, and a further refining step, wherein the further refining step wherein the further refining step ( d) is carried out by passing the bleached edible oil through an oil refining equipment consisting of a stripping column with packing and not more than one oil collection tray (Abstract; Claim 1; p. 3, lines 1-16). Maiworm teaches that the oil is kept in the tray for a certain time at high temperature and steam is introduced to obtain physical and chemical changes in the oil, as color, flavor, and flavor precursors breakdown and removed by the passing steam, as a preferred stripping agent, improving the quality of the oil (p. 4, lines 9-15; p. 12, lines 6-7).
Regarding Claims 16-18, Maiworm expressly teaches a process of refining, bleaching, deodorizing and rebleaching palm oil (Example 1). The rebleaching process was followed by a post-deodorization step carried out in a deodorizer at 180°C with 0.8% (w/w) sparge steam resulting in refined palm oil (p. 19, Comparative Example 1).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Maiworm with Bruse and subject the oil obtained from the method of Bruse to a further refining process using steam to strip the oil of other volatile impurities. One would take guidance from Maiworm and start with the conditions used by Maiwarm and try stripping at 180°C with 0.8% (w/w) sparge steam. Applying a known technique to a known method ready for improvement to yield predictable results is the rationale supporting obviousness. See MPEP § 2143 and KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007).
Response to Remarks:
Applicant amended Claim 1, narrowing the temperature range for the evaporator. Applicant admits that Hirai teaches a short path distillation treatment having a temperature of 230 °C or less, and coconut oil as one of the listed oils, but appears to argue that Hirai does not limit the type of fats/oils, and there is no mention of specific temperature range for vegetable lauric oils. Further, there is no mention in Hirai about specific conditions to reduce MOSH and MOAH in vegetable lauric oils. Applicant also argues that Stauff, the secondary art, does not teach does not teach reducing MOSH/MOAH during short path evaporation.
The Examiner has weighed the argument but found it unpersuasive. Applicant is reminded that the rejection is one of obviousness and not anticipation. Furthermore, Applicant appears to assign a very narrow skill set to a person of ordinary skills in the art. A skilled artisan, with the guidance from Hirai’s teaching of coconut and palm oils, and short path distillation (same as shorta path evaporation or SPE) treatment with preferred temperature of 230 °C or less, along with the starting pressure and feed rate per surface area would be able to determine the optimal temperature for decreasing saturated hydrocarbon in coconut and/or palm oil.
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’! Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Although it can be important to identify a reason that would have prompted one of skill in the art to combine prior art elements in the way the claimed invention does, the prior art references do not have to recite a precise teaching, suggestion, or motivation to combine their disclosure in order to demonstrate obviousness. Rather, obviousness must be gauged in view of common sense and the creativity of an ordinarily skilled artisan.
Stauff does not need to teach short path evaporation, which Hirai already teaches. Stauff is relied on to support Hirai in giving further motivation to use SPE because in addition to MOSH, MOAH also pose risk to human and animal health, and MOSH and MOAH contaminants in food oil can be removed by deodorization and SPE. Stauff’s teaching is compatible with Hirai which also teaches deodorization of oil.
Hirai already teaches the SPE conditions that are the same or overlapping with the instant claim, and teaches it for removing MOSH, and because the instant Specification and claim teaches that the same conditions remove MOSH and MOAH, then the method steps taught by Hirai would necessarily remove both MOSH and MOAH as well.
Regarding the 103 rejection over Bruse in view of Hirai and Stauff, Applicant argues that the Examiner is combining 3 distinct processes which are aimed at 3 distinct purposes, i.e. Bruse teaches deodorization for reducing content of free chloropropanols and chloropropanol fatty acid esters from a raw oil, Hirai teaches short stroke distillation at a temperature range of 50 °C to 270 °C for reducing MOSH from a raw oil, and Stauff teaches deodorization at a temperature of 140 °C for raw, unrefined coconut oil. .
The Examiner has considered the argument but was not persuaded. Because Bruse in view of Hirai teaches the same method under the same conditions as instantly claimed, the instant invention is obvious. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. Contrary to Applicant’s implication that Bruse teachings are limited to removing chloropropanols and chloropropanol fatty acid esters, Bruse in fact teaches SPE as a purification method for removing compounds which are unstable at high temperature [0020].
Bruse teaches SPE at temperature preferably from 140°C to 280°C, which encompasses the claimed temperature range; and teaches palm kernel oil and coconut oil in addition to palm kernel oil [0011]. Regardless of the intended use, Bruse teaches the method steps claimed, and the method would elimitate not only the MCPDs from oil, but other contaminants including the MOSH and MOAH at the temperatures taught by Bruse.
Hirai is only relied on to teach the claimed feed rate per unit area, and is in the same field of short path distillation. Applying a known technique to a known method ready for improvement to yield predictable results is the rationale supporting obviousness. See MPEP § 2143 and KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007). Stauff is in a related field and provides additional motivation to use SPE in purifying food oils contaminated with mineral oil hydrocarbons MOSH and MOAH, by using deodorization and SPE. Stauff’s teaching is compatible with Bruse which also teaches deodorization of oil.
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, 4-5, 10, 13, and 18-19 of co-pending Application No. 18/721,668, hereinafter ‘668.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application and ‘668 are both drawn to a method of subjecting a vegetable oil to short path evaporation. Although the claims recite different ranges for the processing temperature and flow rate, the method of the instant application is obvious in view of ‘668.
It would be obvious one skilled in the art wanting to separate specific components in vegetable lauric oil by short path evaporation, would use a method that has already been employed using by short path evaporation on another oil or fat. Where there are a finite number of identified, predictable solutions and there is no evidence of unexpected results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness. See MPEP 2143.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 4-5, 8, 10, 12-14, 17-18 and 20 of co-pending Application No. 18/721,669, hereinafter ‘669.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application and ‘669 are both drawn to a method of subjecting a vegetable oil to short path evaporation. Although the claims recite different ranges for the processing temperature and flow rate, the method of the instant application is obvious in view of ‘669.
It would be obvious one skilled in the art wanting to separate specific components in vegetable lauric oil by short path evaporation, would use a method that has already been employed using by short path evaporation on another oil or fat. Where there are a finite number of identified, predictable solutions and there is no evidence of unexpected results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness. See MPEP 2143.
Claims 1-3, and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 8, 10, 13, and 17-18 of co-pending Application No. 18/721,672, hereinafter ‘672.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application and ‘672 are both drawn to a method of subjecting a vegetable oil to short path evaporation. Although the claims recite different ranges for the processing temperature and flow rate, the method of the instant application is obvious in view of ‘672.
It would be obvious one skilled in the art wanting to separate specific components in vegetable lauric oil by short path evaporation, would use a method that has already been employed using by short path evaporation on another oil or fat. Where there are a finite number of identified, predictable solutions and there is no evidence of unexpected results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness. See MPEP 2143.
Claims 1-3, and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-3 of co-pending Application No. 18/719,312 hereinafter ‘312.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application and ‘312 are both drawn to a method of subjecting a vegetable oil to short path evaporation. Although the claims recite different ranges for the processing temperature and flow rate, the method of the instant application is obvious in view of ‘312.
It would be obvious one skilled in the art wanting to separate specific components in vegetable lauric oil by short path evaporation, would use a method that has already been employed using by short path evaporation on another oil or fat. Where there are a finite number of identified, predictable solutions and there is no evidence of unexpected results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness. See MPEP 2143.
Regarding the temperature taught by ‘312 being outside the claimed range, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05. Furthermore, "[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). Given that applicant did not point out the criticality of the temperature range of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine the optimum temperature. NOTE: MPEP 2144.05.
Claims 1-5 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-5 and 8-10 of co-pending Application No. 18/040,047 hereinafter ‘047.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application and ‘047 are both drawn to a method of subjecting a vegetable oil to short path evaporation. Although the claims recite different ranges for the processing temperature and flow rate, the method of the instant application is obvious in view of ‘047.
It would be obvious one skilled in the art wanting to separate specific components in vegetable lauric oil by short path evaporation, would use a method that has already been employed using by short path evaporation on another oil or fat. Where there are a finite number of identified, predictable solutions and there is no evidence of unexpected results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness. See MPEP 2143.
Regarding the temperature taught by ‘047 being outside the claimed range, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05. Furthermore, "[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). Given that applicant did not point out the criticality of the temperature range of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine the optimum temperature. NOTE: MPEP 2144.05.
Claims 1-5 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-5 and 8-10 of co-pending Application No. 18/040,052 hereinafter ‘052.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application and ‘052 are both drawn to a method of subjecting a vegetable oil to short path evaporation. Although the claims recite different ranges for the processing temperature and flow rate, the method of the instant application is obvious in view of ‘052.
It would be obvious one skilled in the art wanting to separate specific components in vegetable lauric oil by short path evaporation, would use a method that has already been employed using by short path evaporation on another oil or fat. Where there are a finite number of identified, predictable solutions and there is no evidence of unexpected results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness. See MPEP 2143.
Regarding the temperature taught by ‘052, the range touches the instantly claimed temperature range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
Claims 1-2, and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-4, 11-12 and 15 of co-pending Application No. 18/558,482, hereinafter ‘482.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application and ‘482 are both drawn to a method of subjecting a vegetable lauric oil to short path evaporation. Although the claims recite different ranges for the processing temperature and flow rate, the method of the instant application is obvious in view of ‘482.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-6 of co-pending Application No. 18/719,331, hereinafter ‘331.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application and ‘331 are both drawn to a method of subjecting a vegetable lauric oil to short path evaporation. Although the claims recite different ranges for the processing temperature and flow rate, the method of the instant application is obvious in view of ‘331.
Regarding the feed rate per unit area of evaporator surface taught by ‘312 being outside the claimed range, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05. Furthermore, "[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). Given that applicant did not point out the criticality of the feed rate per unit area of evaporator surface of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine the optimum feed rate per unit area of evaporator surface. NOTE: MPEP 2144.05.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-4, and 6 of co-pending Application No. 18/556,600, hereinafter ‘600.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application and ‘600 are both drawn to a method of subjecting a vegetable lauric oil to short path evaporation. Although the claims recite different ranges for the processing temperature and flow rate, the method of the instant application is obvious in view of ‘600.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-6 and 9-10 of co-pending Application No. 18/040,051, hereinafter ‘051.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application and ‘051 are both drawn to a method of subjecting a vegetable oil to short path evaporation. Although the claims recite different ranges for the processing temperature and flow rate, the method of the instant application is obvious in view of ‘051.
It would be obvious one skilled in the art wanting to separate specific components in vegetable lauric oil by short path evaporation, would use a method that has already been employed using by short path evaporation on another oil or fat. Where there are a finite number of identified, predictable solutions and there is no evidence of unexpected results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness. See MPEP 2143.
Regarding the temperature taught by ‘051 being outside the claimed range, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05. Furthermore, "[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). Given that applicant did not point out the criticality of the temperature range of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine the optimum temperature. NOTE: MPEP 2144.05.
The above rejections are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Response to Remarks:
With respect to Remarks over the Double Patenting rejections, The rejections are maintained since applicant has not made any substantive arguments traversing the rejection. Applicant(s) is/are reminded that a request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 714.02 and CFR 1.111(b)).
Conclusion
No claims are allowed.
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/J.Y.S./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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