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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-29 in the reply filed on August 11, 2025 is acknowledged. Claims 4-5, 16-17 and 29 have been cancelled following the restriction requirement.
Claims 30-42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected system, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 11, 2025.
Claim Status
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
1-3, 6-15, 18-28, 30-44
Withdrawn claims:
30-42
Previously canceled claims:
None
Newly canceled claims:
4-5, 16-17, 29
Amended claims:
3, 6, 8-13, 15, 18, 20, 22-23, 25-28
New claims:
43-44
Claims currently under consideration:
1-3, 6-15, 18-28, 43-44
Currently rejected claims:
1-3, 6-15, 18-28, 43-44
Allowed claims:
None
Claim Objections
Claim 21 is objected to because of the following informalities: “90 kPa” should be converted to atmospheres to align with the other units used in the claimed. For the purposes of examination, the value of 0.5 atm will be used. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 8-11, 15, 18, 22, 26-28, and 44 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cooper (US 5,288,884 A).
Regarding claim 1, Cooper teaches a method of obtaining a reduced calorie polyol (Abstract) that can be used as a frying oil (col. 13, lines 45-49). Cooper also teaches hydrogenation with a metal catalyst such as zinc (col. 8, lines 28-48). Cooper also teaches an embodiment where the hydrogenation is carried out at a temperature of 180[Symbol font/0xB0]C (col. 17, lines 47-51), which falls within the claimed range of “about 120[Symbol font/0xB0]C to about 200[Symbol font/0xB0]C”.
Regarding claim 2, Cooper teaches that the catalyst may also be supported with material such as silica gel (col. 8, lines 54-57). Therefore, it logically follows that treating the oil with the catalyst would result in a step of contacting the oil with silica gel, which is a known adsorbant. Although Cooper does not specify whether or not the silica gel is functionalized, silica gel must be either functionalized or unfunctionalized. Therefore, any silica gel used in the invention of Cooper would meet the requirements of claim 2.
Regarding claim 8, Cooper teaches that the reaction is carried out in a closed reaction vessel (col. 9, lines 5-10). Because Cooper doesn’t explicitly state that food is fried in the oil during the reaction, it logically follows that the process of Cooper is performed without frying food.
Regarding claims 9 and 10, Cooper teaches that the silica gel is added as a support for the catalyst (col. 8, lines 54-57). Therefore, it logically follows that the step of contacting the oil with the catalyst would begin (claim 9) and end (claim 10) at the same time as the step of contacting oil with the silica gel.
Regarding claim 11, Cooper also teaches an embodiment where the hydrogenation is carried out with only the glycerin and catalyst (col. 14, line 66 - col. 15, line 3). Therefore, in that embodiment, there is no exogenous reactant added to a vessel in which the reaction is carried out.
Regarding claim 15, Cooper also teaches that the process is caried out in an inert atmosphere to avoid oxidation of the reaction (i.e., prevents autooxidation) (col. 12, lines 36-39).
Regarding claim 18, Cooper also teaches an embodiment where the hydrogenation is carried out at a temperature of 180[Symbol font/0xB0]C (col. 17, lines 47-51), which falls within the claimed range of “about 150[Symbol font/0xB0]C to about 190[Symbol font/0xB0]C”.
Regarding claim 22, Cooper teaches that the catalyst is a transition metal including zinc (col. 8, lines 44-49).
Regarding claim 26, Cooper also teaches that the catalyst may be insoluble (col. 8, lines 61-62).
Regarding claims 27 and 28, Cooper also teaches that the catalyst may be supported on a material such as alumina or silica (col. 8, lines 54-58).
Regarding claim 44, Cooper also teaches adding an acid once the reaction has proceeded to the desired amount in order to deactivate the catalyst (i.e., adding an exogenous reactant to the vessel in which the treatment is carried out; col. 13, lines 22-26).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 3, 12, 19-21, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Cooper (US 5,288,884 A).
Regarding claim 3, Cooper also teaches that the reaction with the catalyst and optionally silica gel is carried out at a temperature from 75[Symbol font/0xB0]C to 275[Symbol font/0xB0]C (col. 8, lines 28-36), which overlaps with the claimed range of “about 50[Symbol font/0xB0]C to about 150[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 claim 12, Cooper teaches all elements of claim 1 as described above. Cooper also teaches that the reaction time is from 0.5 to 24 hours (col. 8, lines 40-41), which overlaps with the claimed range of “at least about three hours”.
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, Cooper also teaches that the reaction is carried out at a temperature from 75[Symbol font/0xB0]C to 275[Symbol font/0xB0]C (col. 8, lines 28-36), which encompasses the claimed value of “about 170[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 claims 20 and 21, Cooper also teaches that the reaction is carried out at a pressure from 0.5 to 20 atm (col. 8, lines 33-35), which overlaps with the claimed range of “no more than about 1atm” (claim 20) and “from about 0.5 atm to about 1 atm” (claim 21).
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 25, Cooper also teaches that the catalyst is present in concentrations from 100 to 10,000 ppm (equivalent to 0.01 to 1%; col. 9, lines 2-5), which overlaps with the claimed range of “from about 0.05% to about 1.5%”.
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 6, 7, 13, 14, and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Cooper (US 5,288,884 A) in view of Seybold (US 5,391,385).
Regarding claims 6 and 7, Cooper teaches that the reaction time is from 0.5 to 24 hours (i.e., a predetermined time; col. 8, lines 40-41).
Cooper does not teach that the frying oil comprises no more than about 25 wt% polar compounds at the end of the predetermined period (claim 6) or at all times during the predetermined period (claim 7).
However, in the same field of endeavor, Seybold teaches a method of treating cooking oil with silica (Abstract), where all of the oils use comprise 20 wt% of less polar compounds (p. 4, Table 3), which falls in the claimed range of “no more than about 25 wt%”. Because even the untreated oils have polar compounds of 20 wt% or less, it logically follows that the oil would comprise 20 wt% or less of polar compounds through the entire treatment period.
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 Cooper to have the polar compound composition of Seybold. One of ordinary skill would have been motivated to make this modification because Seybold teaches that polar compounds can contribute to off flavors in products (col. 1, lines 63-64).
Regarding claims 13 and 14, Cooper teaches that the reaction time is from 0.5 to 24 hours (i.e., a predetermined time; col. 8, lines 40-41).
Cooper does not teach that the frying oil comprises at least one of the following: the oil comprises (i) no more than about 3 wt% free fatty acids (FFA); (ii) no more than about 18 wt% monoglycerides; (iii) no more than about 15 wt% diglycerides; and (iv) at least about 60 wt% triglycerides.
However, in the same field of endeavor, Seybold teaches that all of the oils comprise 1.6 wt% or less of FFA (p. 4, Table 3), which falls within the claimed range of “no more than about 3 wt%”. Because even the untreated oils have 1.6 wt% or less of FFA, it logically follows that the oil would comprise 1.6 wt% or less FFA through the entire treatment period.
Regarding claim 43, Cooper teaches that the oil substitute is made in a first reaction vessel then in placed in a hydrogenation vessel (col. 17, lines 34-50).
Cooper does not teach that the frying oil is conveyed from a frying vessel to the hydrogenation vessel.
However, in the same field of endeavor, Seybold teaches that the method is used to treat used cooking oil (col. 2, lines 26-27).
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 Cooper to have the original vessel used for making the oil substitute to be a frying vessel containing used cooking oil as is treated in Seybold. Therefore, the used cooking oil would be transferred to the hydrogenation vessel of Cooper. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to make this modification because Seybold teaches that the use of silica gels rejuvenates used cooking oils for frying foods (col. 1, lines 15-18).
Regarding the limitation “an adjacent or nearby vessel”, having the secondary reaction vessel in close proximity for a subsequent processing step would be obvious in order to optimize the process.
Claims 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Cooper (US 5,288,884 A) in view of Klingelhoefer (US 2021/0380900 A1).
Regarding claims 23 and 24, Cooper does not teach wherein at the outset of the reaction step, a molar ratio of glycerol to free fatty acids in the oil is between about 0.5 and about 2.0 (claim 23) or is about 1.0 (claim 24).
However, in the same field of endeavor, Klingelhoefer teaches a method of treating oil with a catalyst (Abstract), where the treated oil may be spent cooking oil (i.e., frying oil; [0033]), and where the oil preferably has an initial molar ratio of glycerol to free fatty acid from 1:2 to 1:1 ([0050]), which falls in the claimed range of “between about 0.5 and about 2.0” (claim 23) and overlaps with the claimed range of “about 1.0” (claim 24).
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 Cooper with the molar ratio of glycerol to free fatty acid as taught by Klingelhoefer. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
Conclusion
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 7:30a-5:00p, F 8:00a-12:00p.
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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793