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 .
DETAILED ACTION
Status of Claims
Note: The amendment of November 5th 2025 has been considered.
Claims 3-5 are cancelled.
Claims 1, 2 and 6-11 are pending in the current application.
Claims 8 and 9 are withdrawn from consideration.
Claims 1, 2, 6, 7, 10 and 11 are examined in the current application.
Any rejections not recited below have been withdrawn.
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 1, 2, 6, 7, 10 and 11 are rejected under 35 U.S.C. 112(b), second paragraph, 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.
Regarding claim 1: The phrase “average particle diameter” renders the claim indefinite, because it is unclear what the claimed average particle diameter means. Given the fact the standard deviation of the average particle diameter is not recited in the claims, nor anywhere else in the specification, the claimed average particle diameter encompasses any particle diameter possible. Therefore, one of ordinary skills in the art would read it with more than one reasonable interpretation, and thus such skilled artisan would not be reasonably apprised of its meaning. Applicant is urged to correct and/or clarify the metes and bounds of the phrase and the claim as recited without introducing new matter.
Regarding claims 2, 6, 7, 10 and 11: In view of the fact that dependent claims 2, 6, 7, 10 and 11 depend on independent claim 1, and since independent claim 1 is rejected under 35 U.S.C. 112(b) as being indefinite, claims 2, 6, 7, 10 and 11 are rejected as being indefinite for depending on an indefinite claim.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35 of the U.S. Code not included in this action can be found in a prior Office action.
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, 2, 6, 7, 10 and 11 rejected under 35 U.S.C. 103 as being unpatentable over Withiam et al. (USPatPub. 2007/0154602 A1).
Regarding claims 1, 2, 7, 10 and 11: Withiam discloses a method for prolonging the shelf life of cooking oil and removal of free fatty acids from cooking oil (i.e., oils comprising saturated and unsaturated fatty acids with 12 to 24 carbons and less than 2% free fatty acids) by mixing calcium silicate calcium based aluminum silicate (i.e., amorphous silica) by adding the amorphous silica to the oil and heat up the oil to about 70°C to about 90°C, wherein the particle size of the amorphous silica is between 425µm to 850µm (see Withiam abstract; paragraphs [0001], [0004], [0011]-[0013] and [0034]-[0037]; Examples). Since the temperature in claim 11 overlap the temperature in Withiam, a prima facie case of obviousness exists. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As to the particle size recited in claim 1: Withiam discloses the particle size of the amorphous silica is between 425µm to 850µm (see Withiam paragraph [0012]; Examples). Given the fact it is unclear what the claimed average particle size of the amorphous silica means (see 35 USC §112(b) rejection, above), the particle size in Withiam encompasses the language of claim 1 (see 35 USC §112(b) rejection, above).
As to the intended use of accelerating the solidification of oil and fat recited in the claims: Withiam discloses a method for prolonging the shelf life of cooking oil and removal of free fatty acids from cooking oil, but fails to disclose the method accelerates the solidification of the oil. While Withiam is silent regarding the intended uses recited in the preambles of claims 1, 2, 6, 7, 10 and 11, the preamble statements do not provide the claimed methods with a manipulative difference between the positively recited method steps and those disclosed by Withiam and therefore the preambles of claims 1, 2, 6, 7, 10 and 11 reciting the intended use of accelerating the solidification of oil and fat, do not provide a patentable distinction over the disclosure in Withiam.
Regarding claim 6: Withiam discloses reducing the free fatty acid content of the oil to less than 2% (see Withiam abstract; paragraphs [0001], [0004], [0011]-[0013] and [0034]-[0037]; Examples), where less than 1% of the amorphous silica is employed (see WIthiam paragraph [0015]), which overlaps the A/B ratio recited in claim 6. Accordingly, a prima facie case of obviousness exists (see MPEP §2144.05).
Response to Arguments
Applicant's arguments filed on November 5th 2025 have been fully considered but they are not persuasive.
Applicant argues the prior art references fail to render the claimed invention obvious, because Withiam fails to disclose the intended use of accelerating the solidification of oil and fat recited in the claims. The examiner respectfully disagrees.
As discussed above, Withiam is silent regarding the intended uses recited in the preambles of claims 1, 2, 6, 7, 10 and 11, the preamble statements do not provide the claimed methods with a manipulative difference between the positively recited method steps and those disclosed by Withiam and therefore the preambles of claims 1, 2, 6, 7, 10 and 11 reciting the intended use of accelerating the solidification of oil and fat, do not provide a patentable distinction over the prior art.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASSAF ZILBERING whose telephone number is (571)270-3029. The examiner can normally be reached on M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached on (571) 270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASSAF ZILBERING/Examiner, Art Unit 1792
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