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 .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 23 March 2026 is acknowledged.
Applicant has overcome the following by virtue of amendment of the specification and the claims: (1) the objections to the specification and the claims have been withdrawn; (2) the rejection of claims 53-55 under 35 U.S.C. § 102(a)(2), or in the alternative, under 35 U.S.C. § 103 has been withdrawn. New grounds of rejection under 35 U.S.C. § 103 are presented hereinbelow.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 40-57 and 59-60
Withdrawn claims: 40-52 and 56-57
Previously canceled claims: 1-39
Newly canceled claims: 58
Amended claims: 53-55 and 57
New claims: 59-60
Claims currently under consideration: 53-55 and 59-60
Currently rejected claims: 53-55 and 59-60
Allowed claims: None
Claim Objections
Claim 55 is objected to because of the following informalities:
In claim 55, four instances of “°C.” should read, “°C”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 53-55 and 59-60 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 53 recites the limitation, “wherein the plant-sourced lipid composition is mixed with the inulin gel at a lipid/inulin gel weight ratio of from about 35 to about 45 wt%”. It is unclear whether the ratio means about 35 to about 45 wt% lipid and about 55 to about 65 wt% inulin gel, or whether the ratio means the amount of lipid divided by the sum of lipid and inulin gel is about 35 to about 45 wt%. For purposes of examination, the limitation is interpreted as about 35 to about 45 wt% lipid and about 55 to about 65 wt% inulin gel.
Claims 54-55 and 59-60 are rejected due to their dependency from claim 53.
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 53-55 and 59-60 are rejected under 35 U.S.C. 103 as unpatentable over Shamaila et al. (US 2022/0330574 A1), as evidenced by Franck (Franck, A. (2002). Technological functionality of inulin and oligofructose. Br. J. Nutr., 87(S2), S287-S291. https://doi.org/10.1079/BJN/2002550, cited on the IDS filed on 19 April 2023).
Regarding claim 53, Shamaila teaches a structured fat composition comprising 60% coconut fat, 20% inulin, and 20% water in Example 1 ([0063]). The fat was melted in a Stephan mixer at a temperature of 55°C. Thereafter, the inulin and water were added to the melted fat into the mixer. The composition was mixed at a mixing speed of between 500-1000 rpm for 15 minutes at a temperature of 55°C. Thereafter, the composition was filled into a mold and slowly cooled down to 22°C in order to let the fat composition solidify. The solid fat composition was removed from the mold and put into a freezer at -18°C to freeze. The frozen fat composition was comminuted in a bench-top grinder and sieved to result in particles having an average size from 5-10 mm ([0065]). As evidenced by Franck, “When thoroughly mixed with water or another aqueous liquid, [inulin] forms a particle gel network resulting in a white creamy structure with a short spreadable texture, which can easily be incorporated into foods to replace fat by up to 100%.” (p. S288, col. 2, lines 1-5). Since the composition of melted fat, inulin, and water disclosed by Shamaila comprises inulin and water that are thoroughly mixed, one would expect that the inulin forms a gel.
The scope of the invention is not limited by the examples, and Shamalia further teaches that the structured fat composition comprises a fat in combination with a starch and/or inulin, and optionally water ([0020]). Example 1 teaches a structured fat composition that is a combination of coconut fat, inulin, and water ([0063]). Shamalia teaches that the structured fat composition comprises 20-90% fat, preferably 30-60% fat ([0050]). Shamalia teaches that the structured fat composition comprises 10-40% inulin ([0052]). Hence, the remainder of the structured fat composition may be water. The combination of inulin and water, when thoroughly mixed, reads on the claimed inulin gel. Therefore, Shamalia discloses particles of inulin gel and plant-based fat (coconut fat).
As such, Shamaila discloses discrete plant-sourced lipid and inulin crumble pieces comprising plant-sourced lipid, preferably from 30-60% fat ([0050]), the remainder of which is an inulin gel at 40-70%. The claimed range of a lipid/inulin gel weight ratio of from about 35 to about 45 wt% (i.e., about 35 to about 45 wt% lipid) lies inside the disclosed range of from 30-60% fat. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Shamalia does not discuss that the discrete plant-sourced lipid and inulin crumble pieces have a hardness at 4 °C of from about 650 g to about 950 g.
However, MPEP § 2112.01(I) states, “When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products 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). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).”
In the present case, the structured fat composition of Shamalia is substantially identical to the structure recited in the claims; as stated above, Shamaila discloses discrete plant-sourced lipid and inulin crumble pieces comprising plant-sourced lipid, preferably from 30-60% fat ([0050]), the remainder of which is an inulin gel at 40-70%. Therefore, the composition is presumed to have a hardness at 4 °C of from about 650 g to about 950 g.
Claim 53 is therefore rendered obvious.
Regarding claims 54-55 and 60, Shamalia teaches the plant-sourced lipid and inulin crumble pieces of claim 53.
The limitations of claims 54-55 and 60 are product-by-process limitations. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP § 2113.
Therefore, absent evidence of criticality regarding the presently claimed process steps and given that Shamalia meets the requirements of the claimed composite, Shamalia clearly meets the requirements of present claims 54-55 and 60.
Regarding claim 59, Shamalia also teaches that at least 90% of the discrete plant-sourced lipid and inulin crumble pieces have a particle size of from 1.5 mm to 26 mm – Shamaila teaches that the structured fat composition comprises particles having an average particle size of 2-20 mm ([0020]). Shamaila states that “average particle size” means that 90% of all particles in a batch fall within a particular defined size range in mm ([0025]), in this case, between 2-20 mm. The disclosed range lies inside the claimed range.
Claim 59 is therefore rendered obvious.
Response to Arguments
Claim Rejections – 35 U.S.C. § 102/103: Applicant’s amendment to claim 53 filed on 23 March 2026 is sufficient to overcome the rejection under 35 U.S.C. § 102/103.
Applicant argued that Shamalia does not disclose each and every limitation of amended claim 53 in order to be rejected under 35. U.S.C. § 102, and the previous Office Action rationale of obviousness does not address the newly added limitations of amended claim 53 (p. 8, ¶¶ 2-3).
Applicant’s argument is persuasive. Accordingly, the 35 U.S.C. § 102/103 rejections have been withdrawn. However, upon consideration of the amendments, the new ground of rejection under 35 U.S.C. § 103 presented in this Office action are made.
Claims 53-55 and 59-60 are rejected.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James Shellhammer whose telephone number is (703) 756-5525. The examiner can normally be reached Monday - Thursday 7:30 am - 5:00 pm ET.
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/JAMES P. SHELLHAMMER/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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