DETAILED ACTION
Background
The amendment dated October 15, 2025 (amendment) amending claims 1-6 and 12-14has been entered. Claims 1-15 and 17-18 as filed with the amendment have been examined. Claim 16 has been canceled.
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 .
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.
Claims 1-10, 12 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over JPHO466045 A to Isezaki et al.(Isezaki), as evidenced by WO2007129590 A1 to Matsui et al. (Matsui), of record.
All references to Isezaki refer to the Espace machine translation, a copy of which is attached to this Office action. All references to Matsui refer to the Clarivate machine translation, a copy of which was included with an earlier Office Action.
Unless otherwise disclosed in the art, the Office interprets a percentage (5) without units as a weight % (wt%). And, the Office interprets weight % or wt% and mass % as interchangeable.
Regarding instant claims 1 and 9-10, Isezaki discloses at Abstract on pages 1 and 2 an oil and fat composition (“vegetable fat composition”) comprising triglycerides for cake (“for edible applications”) and produced by mixing an extremely hardened oil of
high-erucic rapeseed oil and coconut oil) at a ratio of 1:1, subjecting the components to ester interchange reaction (“wherein said triglycerides comprise randomly distributed fatty acids”, and are “obtained by transesterification of vegetable oil parts” as in claim 9). Matsui at Example 1 at [0017] on page 6 provides evidence that the high erucic rapeseed oil of Isezaki has an iodine value or 1 or less and comprises substantially 100% saturated fat. Further, Isezaki in the Abstract at page 2 discloses compounding the vegetable fat composition with another vegetable fat component to form a blend (claim 10).
Further, and regarding instant claims 2-6, Isezaki does not provide the fatty acid make-up of its vegetable fat composition. However, the Isezaki vegetable fat composition appears to be substantially the same thing as the claimed vegetable fat composition of claim 1 as exemplified in the instant specification at Table 1 on page 13 and examples E and F. Accordingly, absent a clear showing as to how the SAFA content, the C8 to C10 fatty acid content, the C12 to C14 fatty acid content, and the C20 to C22 fatty acid content of the vegetable fat composition of Isezaki differs from that of the vegetable fat composition as claimed, the Office considers the vegetable fat composition of Isezaki to comprise the claimed a. a sum of saturated fatty acids (SAFA) of at least 90% by weight of the total fat in claim 1 and at least 92 wt% of the total vegetable fat composition as in claim 2; b. a sum of at least 13 wt% of the fat as a C20 to C22 fatty acid group, based on the weight of the fat as in claim 1, and at least 14 wt% of the fat as in claim 3; c. a sum of saturated C8 to C10 fatty acids of in the range from 2% to 15% by weight in claim 1 and in the range of from 3 to 14 wt% of the total vegetable fat composition as in claim 4; d. a sum of saturated C12 to C14 fatty acids of at least 30% by weight of the fat as in claim 1 and at least 35 wt% of the total vegetable fat composition as in claim 5; and, further, the Office considers the vegetable fat composition of Isezaki to comprise a C16 to C18 fatty acid content of at least 20% of the total vegetable fat composition as in claim 6. See MPEP 2112.01.I.
Regarding instant claim 7, because the extreme hardened high erucic rapeseed oil has a lower iodine value than the hydrogenated high erucic rapeseed oil used in the Examples A-F in the instant specification and because the proportion of the extreme hardened high erucic rapeseed oil in the Isezaki vegetable fat composition is 50 wt% and is higher than in the examples in the instant specification, the Office considers the vegetable fat composition of Isezaki be substantially the same thing as the claimed vegetable fat composition. Accordingly, absent a clear showing as to how the iodine value of the vegetable fat composition of Isezaki differs from that of the vegetable fat composition as claimed, the Office considers the vegetable fat composition of Isezaki to comprise to have an iodine value (IV) of no more than 4.4 as in claim 7. See MPEP 2112.01.I.
Regarding instant claim 8, the claim recites a vegetable fat composition as a product by process. The patentability of a product does not depend on its method of production. See MPEP 2113.I. Further, once a product appearing to be substantially identical is found and a prior art rejection is made, the burden shifts to the applicant to show an nonobvious difference over the art. See MPEP 2113.II. The vegetable fat composition disclosed in Isezaki at the Abstract and comprising a randomly interesterified fat appears to be substantially the same thing as the claimed vegetable fat composition wherein the randomly distributed fatty acids in said vegetable fat composition are obtained by esterification of glycerol with free fatty acids.
Regarding instant claims 12 and 17, Isezaki at claim 1 discloses a vegetable fat composition for manufacture of coating chocolate (“edible application product” as in claim 17 wherein it is used “as a cocoa butter substitute” - claim 12) and, in the Abstract discloses use of the vegetable fat composition in cakes (claim 17).
Claims 8, 13-14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over JPH0466045 A to Isezaki et al.(Isezaki), as evidenced by WO2007129590 A1 to Matsui et al. (Matsui) as applied to claim 1 above, and further in view of US2005/0142275 A1 to Bach et al. (Bach), of record.
All references to Matsui refer to the Clarivate machine translation, a copy of which is included with this Office Action.
Unless otherwise disclosed in the art, the Office interprets a percentage (5) without units as a weight % (wt%). And, the Office interprets weight % or wt% and mass % as interchangeable.
As applied to claim 1, Isezaki at Abstract discloses a vegetable fat composition comprising triglycerides, wherein the triglycerides comprise randomly distributed fatty acids, and further wherein in the vegetable fat composition the: a. sum of saturated fatty acids (SAFA) is at least 90% by weight, b. sum of saturated C20 to C22 fatty acids is at least 13% by weight, c. sum of saturated C8 to C10 fatty acids is in the range from 2% to 15% by weight, and the d. sum of saturated C12 to C14 fatty acids is at least 30% by weight, all weights based on the weight of the total vegetable fat composition.
Regarding instant claims 8, 13-14 and 18, Isezaki does not say that its vegetable fat composition comprises randomly distributed fatty acids that are obtained by esterification of glycerol with free fatty acids as in claim 8; and further, Isezaki does not disclose a proportion of its vegetable fat mixture comprising the vegetable fat composition in the amount of 10 to 70 wt% by weight of the vegetable fat mixture and at least one vegetable fat component as in claim 13, or an edible application product comprising the vegetable fat mixture of claim 13 as in claim 18. And, Isezaki does not disclose a vegetable fat mixture comprising its vegetable fat composition and a vegetable fat component as a cocoa butter substitute (CBS) and comprising the vegetable fat composition in the amount of 10 to 70 wt% by weight of the vegetable fat mixture as in claim 14.
Bach discloses at [0032] a non-tempered randomized triglyceride mixture which at [0049] has a high compatibility with other fats and oils like palm mid fraction and that exhibits anti-bloom effects when added to chocolates. At [0054], Bach discloses fat compositions (“vegetable fat mixtures) comprising 2-95% by weight of the randomly esterified non-tempered fats, within which range the claimed 10 to 70% by weight lies. Further, Bach discloses at [0073] as suitable methods of making randomly esterified triglycerides obtained by esterification of fatty acids (“free fatty acids”) or their esters of monovalent alcohols with glycerol or by interesterification between a fat and free fatty acids or their esters.
The Office considers the claimed “cocoa butter substitute” or CBS to include the palm mid fraction of Bach.
Before the effective date of the present invention, the ordinary skilled artisan would have found it obvious in view of Bach for Isezaki to make its vegetable fat composition by random esterification of free fatty acids with glycerol and, further, to make a vegetable fat mixture for a non-tempered chocolate comprising its vegetable fat composition and a vegetable fat component as a cocoa butter substitute (CBS) as in claims 12 and 14. Further, the ordinary skilled artisan in Isezaki would have found it obvious in view of Bach to include its vegetable fat composition in the amount of 10 to 70 wt%, based on the total weight of the vegetable fat mixture in claim 13 in an edible application product in claim 18 as in Bach. Both references disclose esterified triglyceride fat compositions used as vegetable fat compositions for making non-tempered chocolates or confections in which the fat in the chocolate or confection comprises a mixture of the esterified vegetable fat composition with an additional vegetable fat component. The ordinary skilled artisan in Isezaki would have desired to use the compatible vegetable fat component of Bach in a vegetable fat mixture comprising 10 to 70 wt% of the mixture of its vegetable fat composition, including the palm mid fraction of Bach to make a fat-based confection or other edible product or non-tempering chocolate as at [0049] and [0054] of Bach, thereby making a non-tempered chocolate without using cocoa butter as the added vegetable fat.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over JPH0466045 A to Isezaki et al.(Isezaki), as evidenced by WO2007129590 A1 to Matsui et al. (Matsui) as applied to claim 10 above, and further in view of US2015/0164102 A1 to Cruz et al. (Cruz).
Unless otherwise disclosed in the art, the Office interprets a percentage (5) without units as a weight % (wt%). And, the Office interprets weight % or wt% and mass % as interchangeable.
As applied to claim 10, Isezaki at Abstract discloses a vegetable fat composition for manufacturing a vegetable fat mixture comprising a blend of a vegetable fat component with a vegetable fat composition comprising randomly distributed fatty acids, and further wherein in the vegetable fat composition the: a. sum of saturated fatty acids (SAFA) is at least 90% by weight, b. sum of saturated C20 to C22 fatty acids is at least 13% by weight, c. sum of saturated C8 to C10 fatty acids is in the range from 2% to 15% by weight, and the d. sum of saturated C12 to C14 fatty acids is at least 30% by weight, all weights based on the weight of the total vegetable fat composition.
Regarding instant claim 11, Isezaki does not disclose at least one vegetable fat component is selected from the group consisting of palm kernel oil, coconut oil, high lauric rapeseed oil, or a blend thereof, and/or fractions thereof, or an interesterified, fractionated, and/or hydrogenated version of palm kernel oil, coconut oil, high lauric rapeseed oil, or a blend thereof, and/or fractions thereof. However, at claim 1 Isezaki discloses a non-tempered coating chocolate.
Cruz at Abstract discloses a cocoa butter substitute composition for making non-tempered chocolate wherein at [0036] the composition comprises between 30% and 55% of a hydrogenated and interesterified fat mixture of lauric and non-lauric vegetable oils and between 50% and 65% of at least one of palm kernel oil or its fractions and coconut oil or its fractions, based on a total weight of the fat mixture.
Before the effective date of the present invention, the ordinary skilled artisan would have found it obvious in view of Cruz for Isezaki to use the palm kernel oil or its fractions, or the coconut oil or its fractions as a vegetable fat component combined with its esterified vegetable fat composition. Both references disclose esterified vegetable fats mixed with a vegetable fat component to form a fat composition for making non-tempered chocolates having an improved melt profile without tempering. The ordinary skilled artisan in Isezaki would have desired to use the palm kernel oil, coconut oil or their fractions as a vegetable fat component as in Cruz to provide a non-tempered chocolate while using the desired low amount of cocoa butter in Isezaki.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over JPH0466045 A to Isezaki et al.(Isezaki), as evidenced by WO2007129590 A1 to Matsui et al. (Matsui) as applied to claim 13 above, and further in view of US2015/0164102 A1 to Cruz et al. (Cruz).
Unless otherwise disclosed in the art, the Office interprets a percentage (5) without units as a weight % (wt%). And, the Office interprets weight % or wt% and mass % as interchangeable.
As applied to claim 13, Isezaki at Abstract as modified by Bach at [0054] and [0073] discloses a vegetable fat mixture comprising from 10 to 70% by weight of at least one vegetable fat component, based on the weight of the mixture, the vegetable fat composition comprising a. sum of saturated fatty acids (SAFA) is at least 90% by weight, b. sum of saturated C20 to C22 fatty acids is at least 13% by weight, C8 to C10 fatty acids and saturated C12 to C14 fatty acids is, all weights based on the weight of the total vegetable fat composition
Regarding instant claim 15, Isezaki as modified by Bach does not disclose at least one vegetable fat component is selected from the group consisting of palm kernel oil, coconut oil, high lauric rapeseed oil, or a blend thereof, and/or fractions thereof, or an interesterified, fractionated, and/or hydrogenated version of palm kernel oil, coconut oil, high lauric rapeseed oil, or a blend thereof, and/or fractions thereof comprising from 10 to 70% by weight of the mixture vegetable fat composition and at least one vegetable fat component. However, at claim 1 Isezaki discloses a non-tempered chocolate.
Cruz at Abstract discloses a cocoa butter substitute composition for making non-tempered chocolate wherein at [0036] the composition comprises between 30% and 55% of a hydrogenated and interesterified fat mixture of lauric and non-lauric vegetable oils and between 50% and 65% of at least one of palm kernel oil or its fractions and coconut oil or its fractions, based on a total weight of the fat mixture.
Before the effective date of the present invention, the ordinary skilled artisan would have found it obvious in view of Cruz for Isezaki as modified by Bach to use the palm kernel oil or its fractions, or the coconut oil or its fractions as a vegetable fat component combined with its esterified vegetable fat composition. Both references disclose esterified vegetable fats mixed with a vegetable fat component to form a fat composition for making non-tempered chocolates having an improved melt profile without tempering. The ordinary skilled artisan in Isezaki as modified by Bach would have desired to use the palm kernel oil, coconut oil or their fractions as a vegetable fat component as in Cruz to provide a non-tempered chocolate using its vegetable fat composition.
Response to Arguments
In view of the amendment dated October 15, 2025, the following rejections have been rejected as moot:
The rejections of 1-15 and 17-18 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite in regard to the term “% by weight” in each of claims 1, 2, 3, 4, 5, 6 and 13.
While not agreeing to the reasons for the traversal in the remarks accompanying the amendment dated October 15, 2025, the Office has withdrawn the following rejections in light of art that is closer to the claims:
The rejections of claims 1-10 and 17 under 35 U.S.C. 103 as being unpatentable over WO2007129590 A1 to Matsui et al.;
The rejections of claims 8, 12-14 and 18 under 35 U.S.C. 103 as being unpatentable over WO2007129590 A1 to Matsui et al. in view of US2005/0142275 A1 to Bach et al.; and,
The rejections of claims 11 and 15 under 35 U.S.C. 103 as being unpatentable over WO2007129590 A1 to Matsui et al. in view of US2015/0164102 A1 to Cruz et al.
Applicant’s arguments with respect to Matsui have been considered but are moot because the new ground of rejection does not rely on Matsui as applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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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/ANDREW E MERRIAM/Examiner, Art Unit 1791