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 2 September 2025 is acknowledged.
Applicant has overcome the following by virtue of amendment of the claims: (1) the 112(b) rejection of claims 1-6 has been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-12
Withdrawn claims: None
Previously canceled claims: None
Newly canceled claims: None
Amended claims: 1
New claims: 7-12
Claims currently under consideration: 1-12
Currently rejected claims: 1-12
Allowed claims: None
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 7-12 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.
Claims 7-12 recite the limitation, “The food or drink product according to claim 1”. There is insufficient antecedent basis for this limitation because claim 1 does not recite “a food or drink product”. Additionally, as an intermediate in a food or drink product, one would be unable to ascertain the concentrations of the ingredients of the starting oil and/or fat composition from the final product. For purposes of examination, claims 7-12 are construed to recite “The oil and/or fat composition according to claim 1”.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki (JP 2006-025706 A, see provided Espacenet translation) in view of Sims et al. (US 3,957,837 cited on the IDS filed on 9 May 2023), and as evidenced by Vegan Baking (Fat and Oil Melt Point Temperatures. (2020, July 18). Veganbaking.net. Accessed on 28 May 2025 from https://web.archive.org/web/20200718204402/https://www.veganbaking.net/articles/tools/fat-and-oil-melt-point-temperatures) and FEDIOL (FEDIOL. (1998). FEDIOL specifications for Rapeseed Oil. https://www.fediol.eu/data/175439775498SPEC453%20rapeseed%20oil% 20_non%20binding_.pdf).
Regarding claim 1, Kawasaki discloses an oil and/or fat composition comprising: hydroxymethylfurfural, methional, phenylethanal, and ethanol – Kawasaki teaches a nut-like flavor composition characterized by including one or more kinds of fragrances selected from the group consisting of natural fragrances, hydrocarbons, alcohols, aldehydes, ketones, acids, esters, lactones, nitrogen-containing compounds, sulfur-containing compounds, phenols, and furan compounds (p. 3, ¶ 6). Kawasaki teaches that the alcohols include ethanol (p. 4, ¶ 3), the aldehydes include phenylacetaldehyde (i.e., phenylethanal) (p. 4, ¶ 4), the sulfur-containing compounds include methional (p. 6, ¶ 2), and the furans include hydroxymethylfurfural (p. 6, ¶ 6). Ethanol is also disclosed as a suitable solvent, if necessary (p.7, ¶ 5). Kawasaki further teaches that the nut-like flavor composition can used for many foods, including main food ingredients, such as fats and oils (p. 7, ¶ 6).
wherein a content of the hydroxymethylfurfural in the oil and/or fat composition is 100 ppm or more and 7,000 ppm or less; wherein a content of the methional in the oil and or fat composition is 1 ppm or more – Kawasaki teaches that the addition amount of the fragrance to the nut-like flavor composition can be selected depending on the type of nut flavor, the food, or the palatability, for example about 0.0001 to 50% by weight (i.e., 0.1 ppm to 500,000 ppm) (p. 7, ¶ 3). The claimed range of 100 ppm to 7,000 ppm of hydroxymethylfurfural lies inside the disclosed range. The claimed range of 1 ppm or more of methional overlaps with the disclosed range. 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).
Kawasaki does not discuss that the oil and/or fat composition has a solid fat content of 10% by weight or less at 10 °C, or a moisture content comprising 0.5% by mass or less based on the whole oil and/or fat composition.
However, Sims teaches a polyunsaturated oil composition having increased resistance to oxidative rancidity; polyunsaturated vegetable oils, such as safflower oil, corn oil, soybean oil, rapeseed oil, cottonseed oil, peanut oil and sunflower oil are stabilized by adding methional at a concentration of about 0.005 to about 0.5 % by weight (i.e., 50-5000 ppm) to protect against oxidative rancidity of the oil (col. 1, lines 43-63).
As Kawasaki discloses adding, among other fragrances, methional, to oil or fat, but does not specify the type of oil, and Sims provides examples of vegetable oils to which the addition of methional prevents rancidity (col. 1, lines 43-63), it would have been obvious for one of ordinary skill in the art to use a vegetable oil disclosed by Sims as the oil to which the fragrances are added by simple substitution of one known element for another. One of ordinary skill in the art would have expected the predictable result of providing an oil for the nut-like flavor composition that has reduced oxidative rancidity. See MPEP § 2143(I)(B).
Regarding the solid fat content of the oil composition, MPEP § 2112(I) states, “‘[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.’ Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).”
While Kawasaki and Sims do not address the solid fat content of the oil directly, Vegan Baking evidences that the vegetable oils disclosed by Sims (safflower oil, corn oil, soybean oil, rapeseed oil, cottonseed oil, peanut oil and sunflower oil) have melting points well below 10°C (p. 1, Table). As the oils are liquid above their melting/freezing temperatures, these oils necessarily have a solid fat content below 10% at 10°C. As the solid fat content of the disclosed oils is an inherent property of the oils, this limitation does not render the claim patentable.
Similarly, while Kawasaki and Sims do not address the moisture content of the oil composition directly, neither reference teaches adding water to the composition, and FEDIOL evidences that crude degummed rapeseed oil has a maximum of 0.4% moisture, volatile matter and impurities, and crude rapeseed oil has a maximum of 0.5% moisture, volatile matter and impurities (p. 1). Therefore, where it would have been obvious to use rapeseed oil as taught by Sims in the nut-like flavor composition of Kawasaki as described above, the composition necessarily would comprise 0.5% by mass or less moisture based on the whole oil composition.
For these reasons, claim 1 is rendered obvious.
Regarding claims 2 and 11, Kawasaki teaches that the addition amount of the fragrance to the nut-like flavor composition can be selected depending on the type of nut flavor, the food, or the palatability, for example about 0.0001 to 50% by weight (i.e., 0.1 ppm to 500,000 ppm) (p. 7, ¶ 3). The claimed ranges of 7 ppm to 140 ppm (re: claim 2) and 15 ppm to 90 ppm (re: claim 11) of phenylethanal lies inside the disclosed range. 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).
Therefore, claims 2 and 11 are obvious.
Regarding claims 3 and 12, Kawasaki teaches that the addition amount of the fragrance to the nut-like flavor composition can be selected depending on the type of nut flavor, the food, or the palatability, for example about 0.0001 to 50% by weight (i.e., 0.1 ppm to 500,000 ppm) (p. 7, ¶ 3). The claimed ranges of 1,100 ppm to 14,000 ppm (re: claim 3) and 3,000 ppm to 10,000 ppm (re: claim 12) of ethanol lies inside the disclosed range. 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).
Therefore, claims 3 and 12 are obvious.
Regarding claim 4, Kawasaki teaches that the addition amount of the fragrance to the nut-like flavor composition can be selected depending on the type of nut flavor, the food, or the palatability, for example about 0.0001 to 50% by weight (i.e., 0.1 ppm to 500,000 ppm) (p. 7, ¶ 3).
MPEP § 2144.05(II)(A) states, “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”
Therefore, absent any evidence of criticality of the claimed ratio, it would have been obvious for one of ordinary skill in the art to optimize the ratio of ethanol to hydroxymethylfurfural by routine experimentation to achieve the desired flavor or palatability. The claimed ratio of 0.30 or more and 100.00 or less is well-achievable given the disclosed range for the fragrance molecules and the fact that ethanol may be used as a solvent if necessary.
Therefore, claim 4 is obvious.
Regarding claim 5, Kawasaki teaches that the nut-flavor composition is extremely versatile and can be used for many foods, including beverages, frozen confectionery, desserts, confectionery, and seasonings (p. 7, ¶ 6). As such, Kawasaki teaches a food or drink product comprising the oil and/or fat composition of claim 1.
Therefore, claim 5 is obvious.
Regarding claim 6, Kawasaki teaches that seasoning food products include spread products such as butter and margarine (p. 8, ¶ 2). Butter and margarine are plastic oil and/or fat composition food products as claimed.
Therefore, claim 6 is obvious.
Regarding claims 7 and 8, Kawasaki teaches that the addition amount of the fragrance to the nut-like flavor composition can be selected depending on the type of nut flavor, the food, or the palatability, for example about 0.0001 to 50% by weight (i.e., 0.1 ppm to 500,000 ppm) (p. 7, ¶ 3). The claimed ranges of 500 ppm to 6,000 ppm (re: claim 7) and 2,500 ppm to 6,000 ppm (re: claim 8) of hydroxymethylfurfural lies inside the disclosed range. 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).
Therefore, claims 7 and 8 are obvious.
Regarding claims 9 and 10, Kawasaki teaches that the addition amount of the fragrance to the nut-like flavor composition can be selected depending on the type of nut flavor, the food, or the palatability, for example about 0.0001 to 50% by weight (i.e., 0.1 ppm to 500,000 ppm) (p. 7, ¶ 3). The claimed ranges of 2 ppm to 300 ppm (re: claim 9) and 4 ppm to 180 ppm (re: claim 10) of methional lies inside the disclosed range. 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).
Therefore, claims 9 and 10 are obvious.
Response to Arguments
Claim Rejections – 35 U.S.C. § 112:
Applicant has overcome the 35 U.S.C. § 112(b) rejection of claims 1-6 based on amendment to claim 1. Accordingly, the 35 U.S.C. § 112(b) rejection have been withdrawn.
Claim Rejections – 35 U.S.C. § 103:
Applicant’s arguments filed on 2 September 2025 with respect to claims 1-6 have been considered but are moot because Applicant’s amendment to claim 1 has necessitated the new ground of rejection over Kawasaki in view of Sims as evidenced by Vegan Baking and FEDIOL. The new ground of rejection does not rely on George, The Park Wife, and Qian for any teaching or matter specifically challenged in the argument. The combination of Kawasaki and Sims as described in the rejection hereinabove is deemed to be proper.
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.
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/JAMES P. SHELLHAMMER/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793