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 .
This office action is in response to amendment filed on 2/13/26. Claims 1-4,6,7,10-13 are amended. Claims 1-7,10-15 are pending.
The previous 112 second paragraph rejection is withdrawn due to the amendment. The amendment overcomes the 112 issue and does not change the scope of the claims. The 101,102, 103 and 112 first paragraph rejections remain.
Claim Rejections - 35 USC § 101
Claims 11-12 are rejected under 35 U.S.C. 101 because the claimed invention is not supported by either an asserted utility or a well-established utility.
A method of using is not a statutory category of invention
Claims 11-12 are also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a known asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention. A method of use without any recitation of processing steps is not enabling.
Claim Rejections - 35 USC § 102
Claim(s) 1-5,7,10-11 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Ifeduba et al “ Enzymatic Interesterification of High Oleic Sunflower Oil and Tripalmitin or Tristearin”.
For claim 1, Ifeduba discloses a method for making a triacylglyceride composition comprising performing interestification of a first fat comprising tripalmitin or tristearin with a second fat. The tripalmitin or tristearin is a fat comprising stearic acid or palmitic acid to the glycerol backbone. Thus, it’s 100% fatty acids. The claimed more than 55% is 55% or more including 100%. The triacylglyceride composition in Ifeduba is the interestified blend (IB) which included 30.4% C16 and 2.4% C18 and the IB blend comprises 21.5% C16 and 2.4% C18 of sn-2 fatty acid for a 20% blend and 32.9% C16 and 2.2% C18 for a 30% blend. Thus, the amount of sn-2 fatty acids ranges from 23.9%-35.1% which falls within the claimed range of between 20 and 50%. The first and second fat are not hydrogenated and are not palm oil or palm oil-based or palm oil-derived fraction. The fatty acids are palmitic and/or stearic. ( see abstract, table 1 , table 2)
For claim 2, the first fat in Ifeduba includes tristearin. The tristearin is a fat comprising stearic acid attached to the glycerol backbone. Thus, the stearic acid is 100% at the sn2 position. The claimed at least 55% includes 55% up to 100%. For claim 3, if the fat used in tristearin, then there is no palmitic acid. The claimed amount of at most 11% is 11% and less including 0%. ( see abstract)
For claim 4, Ifeduba discloses TP ( tripalmitic) or TS ( tristearin) is blended with 10g sunflower oil at varying ratios of .1:1,.3:1 and .5:1. Thus, the amount of first fat is 1g, 3g or 5g and the percent is 9% or 23% or 33% which falls within the claimed range. ( page 62 under the paragraph “ preparation of physical and interesterified blends)
For claim 5, Ifeduba discloses a PB-C18 blend at 30% give an IB having 5.5% C16:0. ( see table 1)
For claims 7,8, Ifeduba discloses a triacylglyceride obtained from the interesterified process. Since it is the same product as claimed, it’s inherently a hard stock and can be used as in claims 11,12 ( see abstract, table 1, table 2)
Claim Rejections - 35 USC § 103
Claim(s) 6, 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ifeduba in view of Trujillo-Quijano ( 2014/0234483).
Ifeduba does not discloses the amount as in claim 6 and the method for preparing margarine or spread as in claim 13 and the product as in claims 14-15.
Trujillo-Quijano discloses a processes for preparing an edible hard stock to use in the formulation of margarine, spreads etc.. The process comprises the step of interesterifying fats comprising C16 and C18 with liquid oil that contains C18with total more than 80%. The oil includes soybean oil, sunflower oil. The hardstock is combined with liquid oil and aqueous phase to produce spread, margarine. ( see abstract, paragraph 0013, table 7)
As shown in Trujillo-Quijano, interesterification can be carried out with oil containing high amount of saturated fatty acid. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the high oleic sunflower oil in the Ifeduba process for another oil to affect the percent of saturated fatty acid in the composition. Such parameter can readily be determined by one skilled in the art. It’s well known to use interesterified fat in margarine, spread as shown in Trujillo-Quijano. It would have been obvious to one of ordinary skill in the art to use the Ifeduba composition in such product as an obvious matter of choice.
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.
Claims 1-7,10-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7,13-15 of copending Application No 18/400753. Although the claims at issue are not identical, they are not patentably distinct from each other because both applications are directed to a method for making triacylglyceride composition. The method of the copending application is encompassed in the claims of the instant application.
Claim 1-7 and 10-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/400978 . Although the claims at issue are not identical, they are not patentably distinct from each other because both applications are directed to a method for making triacylglyceride composition. The method of the copending application is encompassed in the claims of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 2/13/26 have been fully considered but they are not persuasive.
In the response, applicant argues that method of using is recognized as statutory processes and a process is any act or series of acts performed to achieve a result. This argument is not persuasive. A method of use without reciting any processing step is not proper statutory process. Claim 11 recites only a method of using the triacylglyceride composition. There is no recitation of processing steps to obtain an end product. Using a particular component in a product is not a processing step to obtain an end product. There is no series of acts performed to achieve a result as pointed out by applicant. There is no question on the specification enabling the utility. But, a method which only recites “ a use” is not enabling because it’s not known what processing steps are involved.
With respect to the 102 rejection, applicant argues claim 1 is patentably distinct from Ifeduba because the term “ random interesterification’ as properly understood in the lipid chemistry art does not encompass the 1,3 specific enzymatic process disclosed in Ifeduba. The argument is not persuasive. The claim is allowed to have the broadest interpretation when there is no limitation in the claim to limit the interpretation. Claim 1 recites random interesterification without any defining parameter as to what the random encompasses. The step is treated as just an interesterification step. Applicant argues that random interesterification denoting a process in which the fatty acids are redistributed non-selectively across all three position of the glycerol backbone- the sn-1, sn-2 and sn-3 positions. This definition is not applicable to claim 1 which requires specific range of between 20-50% of H type saturated fatty acids at the 2 position. This requirement is not random. The instant specification does not have any disclosure on random interesterification. Page 6 discloses interesterification process without mentioning any feature on random and page 9 discloses the use of Lipozyme as disclosed in Ifeduba. Applicant further argues the reliance on table 2 does not support the rejection because the sn-2 fatty acid content reported reflects the composition of the starting material, not redistribution through the interesterification process because the 1,3, specific lipase cannot acid upon the sn-2 position. This argument is not persuasive because it’s applicant own conclusion. There is no disclosure in Ifeduba that the enzyme cannot act on sn-2 position. Table 2 clearly shows the different fatty acid content at sn-2 position between the physical blend (pb) and the interesterified blend (IB).
Applicant argues the 103 rejection based on its dependency on claim 1. The argument for claim 1 is not persuasive.
Applicant does not present argument for the obviousness double patenting rejections.
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.
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May 6, 2026
/LIEN T TRAN/Primary Examiner, Art Unit 1793
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