DETAILED ACTION
Background
The amendment dated July 17, 2026 (amendment) amending claims 1, 6 and 10 has been entered. Claims 1-20 as filed with the amendment have been examined.
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 .
Double Patenting
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of now allowed copending Application No. 18/251,752 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the differences between claim 1 and claim of the reference application are not patentable distinctions. Claim 2 of the reference application differs from claim 1 in that it does not recite a C12:0 fatty acid content of from 0.35 wt% to 12 wt% of the lipid composition and in that it recites a lipid composition wherein the molar amount of the second lipid component accounts for from 2.2 mol% to 15 mol% of the total molar amount of the first lipid component, the emulsifier and the second lipid component. However, the claim 2 of the reference application recites a lipid composition having as a whole a (D) a C22:0 content of from 0.1 wt% to 1.5 wt which overlaps the amount of 0.5 to 1.5 wt% of C22:0 fatty acids in claim 1; and claim 2 of the reference application recites a lipid composition having a 40 to 60 wt% SFA content which lies within the claim 1 SFA of at least 40 wt%. In addition, the lipid composition of claim 2 of the reference application includes the same fats as in claim 1, such as the fats in instant claim 5 which is identical to claim 5 of the reference application. Further, the hardness in claim 2 of the reference application, as taken from claim 1 from which claim 2 of that application depends, includes within its scope a hardness of from 500 g to 2000 g at from 5 °C to 15 °C as determined by texture analysis as measured by determining an original height of a sample of the lipid composition and using a 5 mm cylinder probe to penetrate 75% of the original height of the lipid composition at 2 mm/s. The evidence for this is found in claim 3 of the reference application, from which its claim 1 depends from and which recites a hardness of from 800g to 1800g at 5 °C by the same texture analysis as claimed and falls within the scope of the claimed hardness.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 2-9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 10-20 are allowed.
The following is an examiner’s statement of reasons for allowance:
After a diligent search, no art reference was found that when taken alone or combined with any other art reference(s) discloses the claim 1 lipid composition and claim 10 process of making the lipid composition comprising: (a) from 30 wt% to 70 wt%, by weight of the lipid composition of lipids having a saturated fatty acids (SFA) content of 35 wt% to 60 wt%; (b) from 10 wt% to 40 wt% a sweetening substance, by weight of the lipid composition; (c) from 5 wt% to 20 wt% water, by weight of the lipid composition; (d) from 0.1 wt% to 1.2 wt% an emulsifier, by weight of the lipid composition, wherein the emulsifier comprises saturated fatty acid functional groups and has a SFA content of less than 90 wt% by weight of the emulsifier; and (e) from 1.5 wt% to 11 wt%, by weight of the lipid composition of lipids having a saturated fatty acids (SFA) content of at least 90 wt%;
wherein in the lipid composition fully saturated fatty acids with a carbon chain of more than 16 carbons comprise C22:0 and account for at least 33.3 wt% of the SFA content of the lipids in (e) having an SFA content of at least 90 wt%;
further wherein, the lipid composition, as a whole and by weight of the lipid composition, comprises:
at least 40 wt% of SFA, wherein fully saturated fatty acids with a carbon chain of more than 16 carbons account for at least 12.5 wt% of the SFA of the lipid composition;
less than 2 wt% of trans fatty acids (TFA);
0.35 wt% to 12 wt% of C12:0 fatty acids; and,
0.5 wt% to 1.5 wt% of C22:0 fatty acids.
WO2019208597 A1 to Fujita (Fujita) at Abstract on page 1 (Clarivate machine translation) discloses a roll-in margarine having a low trans-fatty-acid content and at the 1st paragraph of page 7 a danish or croissant. At Example 2 on page 10 and Table 1 of the Japanese language version, Fujita discloses a lipid composition comprising an emulsion of 32.4 parts by weight of palm oil, 9.7 parts by weight of palm stearin, 20.2 parts by weight of hardened palm kernel (palm core) oil and 12.1 parts by weight of rapeseed oil, and 6.5 parts by weight of palm extremely hardened oil in a lipid phase, further comprising 0.5 part by weight of a monoglyceride emulsifier, 0.5 part by weight of soybean lecithin and 16.5 wt% water, which composition comprises an SFA (“S” in Table 1) of 43 wt%. Further, Fujita discloses that the aqueous phase is added to the lipid phase and emulsified, thereby making a lipid composition as a water-in-oil emulsion.
Fujita does not disclose a lipid composition as a water in oil emulsion comprising from 1.5 wt% to 11 wt%, by weight of the lipid composition of lipids having a saturated fatty acids (SFA) content of at least 90 wt% and that comprises any C22:0 fatty acids. Further, Fujita does not disclose a lipid composition having the claimed from 1.5 wt% to 11 wt%, by weight of the lipid composition of lipids having a saturated fatty acids (SFA) content of at least 90 wt% and that further comprises, by weight of the lipid composition from0.5 wt% to 1.5 wt% of C22:0 fatty acids.
WO 2017082113 A1 to Miyashita (Miyashita) Miyashita at Abstract on page 1 discloses a roll-in margarine comprising (at page 6, 6th full paragraph) saccharides as sweeteners in the amount of 20 wt% or less. The Office considers the claimed composition comprising at least 40 wt% of SFAs, water and emulsifiers as including the margarine Miyashita Further, Miyashita at page 6, lines 4-5 discloses extruding its lipid composition. Miyashita does not disclose a lipid composition as a water in oil emulsion comprising from 1.5 wt% to 11 wt%, by weight of the lipid composition of lipids having a saturated fatty acids (SFA) content of at least 90 wt%. Further, Miyashita does not disclose a lipid composition that comprises, by weight of the lipid composition from 0.5 wt% to 1.5 wt% of C22:0 fatty acids. Further, Miyashita does not provide a trans fatty acid content.
EP2153725 A1 to Lesaffer et al. (Lesaffer) discloses at [0073] preparing a lipid composition for laminated dough comprising preparing a fat phase comprising fat and emulsifier, preparing an aqueous phase, mixing the fat phase and the aqueous phase to form an emulsion of the lipid composition, plasticizing the composition and leaving the composition to rest at from 5 to 15 °C. At [0084], Lesaffer discloses packaging and storing the composition at 12 °C. Further, at [0086] Lesaffer discloses forming a laminated pastry by forming a pre-dough into a square and applying the lipid composition on top of the dough and laminating.
Lesaffer does not disclose a lipid composition comprising from 1.5 wt% to 11 wt%, by weight of the lipid composition of lipids having a saturated fatty acids (SFA) content of at least 90 wt% and that comprises any C22:0 fatty acids. Further, Lesaffer does not disclose a lipid composition comprising 0.5 wt% to 1.5 wt% of C22:0 fatty acids, based on the weight of the lipid composition.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
The positions taken in the remarks accompanying the amendment dated amendment dated July 17, 2026 (Reply) have been fully considered but are not found persuasive for the following reasons:
Regarding the position taken in the Reply and outstanding provisional rejections on the ground of nonstatutory double patenting over claim 2 of copending Application No. 18/251,752, the Reply does not challenge the rejection and so does not traverse the rejection.
Regarding the position taken in the Reply, the art of Fujita in Example 2 falls outside of the claimed range of from 1.5 wt% to 11 wt% of lipids having a saturated fatty acids (SFA) content of at least 90 wt%. Because the claim defines a second lipid component as forming from saturated fats having the recited SFA.
Conclusion
THIS ACTION IS MADE FINAL. 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 ANDREW E MERRIAM whose telephone number is (571)272-0082. The examiner can normally be reached M-H 8:00A-5:30P and alternate Fridays 8:30A-5P.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki H Dees can be reached at (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW E MERRIAM/Examiner, Art Unit 1791
