DETAILED ACTION
Background
The amendment dated March 13, 2026 (amendment) amending claims 1-3, 10 and 17has been entered. Claims 1-20 as filed with the amendment have been examined. In view of the amendment, all outstanding objections to the claims have been withdrawn.
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of 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.
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 1-8, 10-15 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over WO2019208597 A1 to Fujita (Fujita) in view of WO 2017082113 A1 to Miyashita (Miyashita), of record, as evidenced by JP 2012105583 A to Iwata et al. (Iwata), all of record.
Unless otherwise indicated, all references to Fujita, Miyashita and Iwata refer to the Clarivate machine translation, a copy of each of which was provided in an earlier Office action.
The Office interprets the claim language “lipid component” as including any one or more lipid or blend, regardless of whether they are chemically bound together. Further, the Office interprets the designation of a “first” and a “second” lipid component as arbitrary, and including any possible combination of art disclosed lipids.
Further, the Office interprets the recited SFA content of an emulsifier as including the weight % (wt%) content of all forms of fatty acids in whatever form they are present, based on the total weight of the emulsifier, including emulsifiers in which no fatty acids are present
Regarding instant claims 1, 4-5, 7-8, 10-12 and 19-20, Fujita at Abstract on page 1 discloses a roll-in margarine (“lipid composition”) having a low trans-fatty-acid content and at the 1st paragraph of page 7 a danish or croissant (a “food product” of claim 7 as a danish pastry of claim 19 as, which is also a “bakery product made from a laminated dough” - claim 8) containing the composition. 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 (claim 5), 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 (“second lipid component”) were mixed (“mixing to produce a lipid phase” - claim 10). To this oil/ fat mixture, 0.5 part by weight of monoglyceride (“emulsifier having an SFA content of less than 90 wt%”), 0.5 part by weight of soybean lecithin (emulsifier having an SFA content of less than 90 wt%”) and 0.1 part by weight of butter flavor (“flavoring” and “flavoring substance” in claims 4 and 20 and a lipophilic additive added to the lipid phase before mixing with the aqueous phase” - claim 11) and 16.5 wt% water were added, melted at 70 °C, and maintained at 65 to 70 °C to obtain an oil phase (“mixing” an emulsifier in claim 10). The melting point of the oil phase was 43 °C and the lipid composition comprised an SFA (“S” in Table 1) of 43 wt%. In addition, 1.0 part by weight of sodium chloride and 0.5 part by weight of skim milk powder were added to 16.5 parts by weight of water (“mixing to produce an aqueous phase” - claim 10). 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 (claim 10) and cooling (“in a cooling apparatus to produce a crystallized emulsion” - claim 10 as “tempering” in claim 12) to make the lipid composition.
As evidenced by Iwata at Abstract which discloses a roll-in fat comprising behenic acid wherein at page 4, 3rd full paragraph extreme hardened rapeseed oil to comprise C22:0 fat, the Office considers the extreme hardened rapeseed oil second lipid component of Fujita as comprising C22:0 fat. Meanwhile, as disclosed at page 4, 2d full paragraph of Iwata, the palm kernel oil of Example 2 of Fujita is a lauric fat comprising C12:0 fat.
The Office considers the recited lipid composition comprising 1 wt% less or than trans fatty acids (TFA) based on total lipid weight in claims 1 and 10 as including the Example 2 lipid composition of Fujita.
Further, the Office considers the claimed first lipid component in claims 1 and 10 having a saturated fatty acids content of 35 to 60 wt% as including any and all of the palm oil or its blend with palm kernel oil or its blend with both of palm stearin, extreme hardened palm kernel oil and rapeseed oil. As shown in Table 1, Example 2 of Fujita discloses an SFA content of 43 wt% for the total lipid composition. Accounting for the 6.5 wt% of extreme hardened rapeseed oil leaves the first lipid component having SFA content 36.5 wt% based on the total amount of lipid and 36.5/about 92% (share the first lipid component of the total lipid) or about 40 wt%, based on the first lipid component.
Still further, and regarding instant claims 2-3, 6 and 18, the Office considers the lipid composition of Example 1 of Fujita to be substantially the same lipid composition as that claimed and, further, considers the claimed second lipid composition to be substantially the same thing as the extreme hardened palm oil of Fujita. Accordingly, absent a clear showing as to how the saturated fatty acid (SFA) content or the fatty acids makeup of its lipid composition differs from that of the recovered protein composition as claimed, the Office considers the lipid composition of Example 1 of Fujita to comprise all of the following:
For the second lipid composition, an SFA content of at least 90 wt% fully saturated fatty acids with a carbon chain of more than 16 carbons that comprise C22:0 and account for at least 33.3 wt% of the SFA content of the second lipid component by weight as in claims 1 and 10;
For the total lipid composition, wherein further fully saturated fatty acids with a carbon chain of more than 16 carbons account for at least 12.5 wt% of the SFA in the total lipid composition by weight as in claims 1 and 10; a C12:0 content of from 0.35 wt% to 12 wt%, based on the total weight of the lipid composition, a hardness of from 500 g to 2000 g at a temperature of from 5 °C to 15 °C by texture analysis as measured using a 5 mm cylinder probe penetrate 75% of original height of a sample of the lipid composition at 2 mm/s, and a C22:0 content of from 0.1 wt% to 1.5 wt% based on total lipid weight as in claims 1 and 10; and,
Further, for the total lipid composition, an (A) a SFA content of from 40 wt% to 60 wt% based on the total weight of the lipid composition, and/or (B) a C12:0 content of from 0.37 wt% to 7 wt% based on total lipid composition weight; and/or (C) a C18:0 content of from 4.5 wt% to 9 wt% based on total lipid composition weight; and/or (D) a C22:0 content of from 0.3 wt% to 1.3 wt% based on total lipid composition weight as in claim 2; a hardness of from 600 g to 1900 g at 5 °C by texture analysis as measured using a 5 mm cylinder probe to penetrate 75% of original height of a sample of the lipid composition at 2mm/s as in claim 3; and a lipid composition having a hardness of from 550 g to 1500 g at 15 °C by texture analysis as measured using a 5 mm cylinder probe to penetrate 75% of original height of a sample of the lipid composition at 2mm/s as in claim 18.
Further, and regarding instant claims 9 and 15-16, Fujita does not provide an example wherein its lipid composition comprises from 10 wt% to 40 wt% a sweetening substance, by weight of the lipid composition as in claims 1 and 10; and, Fujita does not disclose subjecting its lipid composition to extrusion and, optionally further subjecting it to a process selected from the group consisting of folding, sheeting, rolling and combinations thereof as in claim 15. However, Fujita at page 5, 2nd full paragraph discloses roll-in margarine compositions comprising sugars and sweeteners. Still further, Fujita at Example 1 on page 10 discloses kneading, and then molding the lipid composition into a sheet form. And Fujita at Examples 16-30 on page 15 discloses Danish made from the lipid composition of Example 2 in Example 17, wherein Table 4 on page 23 of the Fujita Japanese publication discloses a composition comprising 12 parts sugar.
Miyashita at Abstract on page 1 discloses a roll-in margarine comprising (at page 6, 6th full paragraph) saccharides in its lipid composition as sweeteners in the amount of 20 wt% or less, which the claimed 10 to 40 wt% overlaps. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. The ordinary skilled artisan in Miyashita would have found it obvious as desirable to use from 10 to 40 wt% of a sweetener in its lipid composition for layered products to give them a desirable sweetness and flavor. Regarding instant claim 15, Miyashita at page 6, lines 4-5 discloses extruding its lipid composition.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Miyashita for Fujita to include in its lipid composition the claimed 10 to 40 wt% of sweeteners, based on the weight of the lipid composition and to mold its crystallized lipid composition using extrusion. Both references disclose sweetened water-in-oil emulsions as lipid compositions in a cold, tempered form for making layered pastries. The ordinary skilled artisan in Fujita would have desired to sweeten its lipid composition using the claimed amount of sweetener as in Miyashita to provide a composition having a desired sweetness and flavor, and would have desired to extrude the cold product as in Miyashita to mold it into shape.
Regarding instant claim 13, at page 2, 5th full paragraph Fujita discloses the lipid composition having improved stability and workability and at Abstract on page 1 discloses its lipid composition as having a low trans-fat content. The Office considers the claimed adding the lipid composition to a food product as improving a property of the food product.
Regarding instant claim 14, Fujita at page 1 Abstract discloses that its puffed food product is a danish or a croissant (“bakery product made from a laminated dough”).
Regarding instant claim 17, while the Office considers optional claim features, the claim itself does not require them. Fujita does not disclose palm kernel oil, but the claim itself does not require oils (B).
Claims 9 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over WO2019208597 A1 to Fujita (Fujita) in view of WO 2017082113 A1 to Miyashita (Miyashita), as evidenced by JP 2012105583 A to Iwata et al. (Iwata), of record, as applied to claims 7 and 15 above, and further in view of EP2153725 A1 to Lesaffer et al. (Lesaffer), all of record.
Unless otherwise indicated, all references to Fujita refer to the Clarivate machine translation, a copy of which has been provided with this Office action. And all references to Miyashita and Iwata refer to a Clarivate machine translation, a copy of which was provided in an earlier Office action.
As applied to claims 7 and 15, Fujita at Abstract, and Example 2 on page 10 as modified by Miyashita at page 6, lines 4-5 and 6th full paragraph discloses a food product comprising a lipid composition of a water-in-oil emulsion comprising a first lipid component and a second lipid component comprising a C22:0 fat and a sweetening substance, wherein the lipid composition has an SFA content of at least 40 wt% of the total lipid composition, and which lipid composition has been subject to extrusion to mold it as a continuous sheet.
Regarding instant claims 9 and 16, Fujita as modified by Miyashita does not disclose extruding and/or subsequent processing the lipid composition at from 5 to 15 °C. However, Fujita at Example 2 on pages 9-10 discloses letting the lipid composition rest (“subsequent processing”) at 4 °C as in Example 1. And, at Examples 11 to 20 on page 11, Miyashita discloses resting and folding its lipid composition at 17 °C and folding it at 1 °C.
The Office considers the claimed subsequent processing to include resting or tempering a lipid composition at 5 to 15 °C for any period of time, including a transitory period of time.
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 (“resting”) 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. The Office considers the claimed extruding of a lipid composition to form a sheet to include the packaging of the lipid composition disclosed in Lesaffer.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Lesaffer for Fujita as modified by Miyashita to extrude, rest or temper its lipid composition at from 5 to 15 °C. All references disclose lipid compositions molded and stored under refrigerating conditions for later use in making laminated pastry. The ordinary skilled artisan in Fujita would have desired to extrude or otherwise shape, fold, store, rest, or otherwise further process its lipid composition at from 5 to 15 °C to avoid freezing it and maintain the emulsion while allowing the phases of the emulsion to meld or coalesce together.
Response to Arguments
In view of the amendment dated March 13, 2026, the following rejections have been withdrawn as moot:
The rejections of claims 1-20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite regarding the recited “SFA content” of the claimed emulsifier in claims 1 and 10; the limitation "original height of the lipid composition" in each of claims 1, 3, 10 and 18; and the antecedent basis for the claim 17 term "the oil".
The previous art rejections are generally maintained but no longer rely on Example 1 of WO2019208597 A1 to Fujita (Fujita at Example 1) and rely instead on Fujita at Example 2. In addition, the rejections rely on Table 1 of Fujita to establish the claimed SFA contents and no longer rely on W.M. Haynes, ed. CRC Handbook of Chemistry and Physics, 96th Edition, “Composition and Properties of Common Oils and Fats” at 7-15, CRC Press LLC, 2016 (CRC).
The positions taken in the remarks accompanying the amendment dated amendment dated March 13, 2026 (Reply) have been fully considered but are not found persuasive for the following reasons:
Regarding the position taken in the Reply that the art does not establish disclosure of a C22:0 fatty acid, the Office recognizes that its reliance on Iwata at page 4, 3rd full paragraph relates to its disclosure of extreme hardened rapeseed oil and not a disclosure of extreme hardened palm oil. The rejection no longer relies on a disclosure of palm oil in any form as comprising a C22:0 fatty acid;
Regarding the position taken in the Reply that Fujita cannot meet the claimed sweetener feature, respectfully Fujita at page 5, 2nd full paragraph discloses roll-in margarine compositions comprising sugars and sweeteners and does not limit their amount; and the propriety of the combination of Fujita and Miyashita is not addressed. However the combination is proper to show the desirability of including the claimed amount of sweeteners in laminating fats.
Regarding the position taken that the claims are patentable because the instant specification alleges an advantage to the claimed sweetener containing lipid composition, this position is not found persuasive. Respectfully, an allegation of an unexpected advantage is not evidence without an accompanying showing of criticality, even if the allegation is found in the specification. See MPEP 716.01(c).II.
Regarding the position taken in the Reply that the laminating fat does not meet the claimed hardness, respectfully the Office has provided a reasonable showing that the Example 2 fat of Fujita as modified by Miyashita is substantially the same thing as the claimed lipid composition. The burden remains on Applicants to show that the claimed invention is unobvious over the art. See MPEP 2112.01.I. An allegation alone that the claims and the art differ is not sufficient to meet this burden
Regarding the position taken in the Reply and the rejection over Fujita in view of Miyashita and Lesaffer, the merely repeats positions already addressed and is taken as a general allegation of patentability. See 37 CFR 1.111(b).
Conclusion
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
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