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 .
The amendment filed December 4, 2025 is acknowledged. Claims 1-4 are pending in the application.
Claim Rejections - 35 USC § 103
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hori et al. WO 2016113922 (hereinafter “Hori”) (refer to the corresponding machine translation) in view of Cruz Serna et al. US 20120189755 (hereinafter “Cruz Serna”).
With respect to claim 1, Hori teaches producing oil and fat compositions (P1, 1st paragraph).
Regarding the recitation of “for producing an oil and/or fat composition for infant formula” in the preamble of claim 1, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of the method comprising producing an oil and/or fat a, comprising: subjecting a raw material oil and/or fat described below to bleaching and deodorization, wherein in the bleaching and deodorization, a bleaching operation comprises adding an aqueous solution of an acid, and a deodorization treatment is performed at 230⁰C to 260°C; wherein the raw material oil and/or fat is an oil and/or fat that has a 3-chloro-1,2-propanediol (3-MCPD) concentration of 0.5 mg/kg or less and that is at least one type of oil and/or fat selected from a refined, bleached, and deodorized palm oil (RBDPO), and a palm-based oil and/or fat using a refined, bleached, and deodorized palm oil (RBDPO) as a raw material, wherein in the oil and/or fat a, a content of glycidol and glycidol fatty acid esters of 0.2 mg/kg or less in terms of glycidol equivalent in claim 1, Hori teaches palm oil and/or fractions thereof is subjected to the addition of an aqueous acid solution and a decolorization/bleaching process. A deodorization step is also performed, preferably at 230⁰C, and using temperatures higher than 260⁰C in the deodorization step is extremely undesirable. The 3-MCPD concentration of the fat is less than 0.33 mg/kg, and the glycidol and their fatty acid esters concentration is 0.07 mg/kg or less (P1, 1st paragraph; P2, 6th paragraph; and P3, 3rd-8th paragraphs).
However, Hori does not expressly disclose the palm oil and/or fractions thereof is refined, bleached, and deodorized.
Cruz Serna teaches manufacturing fat compositions. The compositions are prepared by bleaching and deodorizing RBD (refined, bleached, and deodorized) palm oil and its fractions (paragraphs [0001], [0017], [0024], [0028], [0031], [0034], and [0036]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Cruz Serna, to select RBD palm oil and/or fractions thereof based in its suitability for its intended purpose in the method of Hori with the expectation of successfully preparing a functional oil and fat product. One of ordinary skill in the art would have been motivated to do so because Hori and Cruz Serna similarly teach bleaching and deodorizing palm oil and its fractions in the production of fat compositions, Cruz Serna teaches the product has good organoleptic properties (paragraph [0016]), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected results. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Regarding the recitation of providing an oil and/or fat b, wherein the oil/and or fat b is at least one type of oil and/or fat selected from the group consisting of palm kernel oil or a fractionated oil thereof, and coconut oil; providing an oil and/or fat c, wherein the oil and/or fat c is at least one type of oil and/or fat selected from the group consisting of soybean oil, rapeseed oil, corn oil, sunflower oil, safflower oil, perilla oil, linseed oil, high oleic sunflower oil, high oleic rapeseed oil, and high oleic safflower oil in claim 1, Hori teaches the composition may further comprise palm kernel oil or fractions thereof as well as additional oil(s) such as coconut oil, soybean oil, rapeseed oil, corn oil, sunflower oil, safflower oil, perilla oil, linseed oil, high oleic sunflower oil, high oleic rapeseed oil, or combinations thereof (P2, 6th paragraph; and P3, 1st paragraph).
Regarding the recitation of the method comprising blending the produced oil and/or fat a, the oil and/or fat b, and the oil and/or fat c in claim 1, Hori teaches mixing the palm oil and/or fractions thereof (oil and/or fat a), palm kernel oil and fractions thereof (oil and/or fat b), and coconut oil (oil and/or fat b), soybean oil (oil and/or fat c), rapeseed oil (oil and/or fat c), corn oil (oil and/or fat c), sunflower oil (oil and/or fat c), safflower oil (oil and/or fat c), perilla oil (oil and/or fat c), linseed oil (oil and/or fat c), high oleic sunflower oil (oil and/or fat c), high oleic rapeseed oil (oil and/or fat c), or combinations thereof prior to the bleaching and deodorization treatment of the palm oil and/or fractions thereof (oil and/or fat a) (P2, 6th paragraph; and P3, 1st paragraph).
Hori does not expressly disclose blending the oil and/or fat b and the oil and/or fat c with the produced oil and/fat a. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to switch the sequence of adding the oils and/or fats in the method of modified Hori with the expectation of successfully preparing an oil and/or fat composition. One of ordinary skill in the art would have been motivated to do so because the final oil and/or fat composition prepared by modified Hori is substantially similar to the oil and/or fat composition of the present invention and the point in which the oil and/or fat b and the oil and/or fat c is combined with the oil and/or fat a is not seen as critical. There would have been a reasonable expectation of success. To switch the order of performing process steps, i.e. the order of the addition of the ingredients into the final mixture, would be obvious absent any clear and convincing evidence and/or arguments to the contrary (MPEP 2144.04 [R-1]). “Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.
With respect to claim 2, modified Hori is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of “for producing an oil and/or fat composition for infant formula” in the preamble of claim 2, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the limitation of wherein a blended amount of the oil and/or fat a is from 30 wt.% to 50 wt.%, a blended amount of the oil and/or fat b is from 20 wt.% to 40 wt.%, and a blended amount of the oil and/or fat c is from 10 wt.% to 30 wt.% as recited in claim 2, modified Hori teaches this limitation since Hori teaches a blend of palm oil and fractions thereof (oil and/or fat a) and palm kernel oil and fractions thereof (oil and/or fat b) in an amount of 50-100% of the composition (0-50% of additional oil(s)-oil and/or fat c), and the ratio of palm oil and fractions thereof (oil and/or fat a) to palm kernel oil and fractions thereof (oil and/or fat b) is preferably 60/40 (at 50% of the composition:30% oil and/or fat a and 20% oil and/or fat b; at 100% of the composition: 60% oil and/or fat a and 40% oil and/or fat b) (P2, last paragraph; and P3, 2nd paragraph). 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).
With respect to claim 3, modified Hori is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of “for producing an oil and/or fat composition for infant formula” in the preamble of claim 3, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the limitation of wherein the composition has a 3-MCPD concentration of 0.4 mg/kg or less and a content of glycidol and glycidol fatty acid esters of 0.2 mg/kg or less in terms of glycidol equivalent as recited in claim 3, modified Hori teaches this limitation since Hori teaches the 3-MCPD concentration of the composition is less than 0.25 mg/kg, and the glycidol and their fatty acid esters concentration is 0.06 mg/kg or less (P2, 5th paragraph).
With respect to claim 4, modified Hori is relied upon for the teaching of the method of claim 2 as addressed above.
Regarding the recitation of “for producing an oil and/or fat composition for infant formula” in the preamble of claim 4, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the limitation of wherein the composition has a 3-MCPD concentration of 0.4 mg/kg or less and a content of glycidol and glycidol fatty acid esters of 0.2 mg/kg or less in terms of glycidol equivalent as recited in claim 4, modified Hori teaches this limitation since Hori teaches the 3-MCPD concentration of the composition is less than 0.25 mg/kg, and the glycidol and their fatty acid esters concentration is 0.06 mg/kg or less (P2, 5th paragraph).
Response to Arguments
Applicant’s remarks filed December 4, 2025 are acknowledged.
Due to the amendments to claim 1, the claim objection in the previous Office Action has been withdrawn (P4-P5).
Applicant’s arguments have been fully considered but they are not persuasive (P5-P8).
Applicant argues Hori and Cruz Serna fail to teach or suggest the “Treat-then-Blend Method” of the amended claim 1. Hori teaches the “Blend-then-Treat Method” which is different from the “Treat-then-Blend Method” of the amended claim 1. Cruz Serna is silent about the critical process sequence and “Treat-then-Blend Method.”
Examiner disagrees. The claimed method is obvious in view of modified Hori. While Hori teaches adding the oil and/or fat b and the oil and/or fat c to the oil and/or fat a prior to the bleaching and deodorization treatment of the palm oil and/or fractions thereof (oil and/or fat a) (P2, 6th paragraph; and P3, 1st paragraph), it would have been obvious to one of ordinary skill in the art to switch the sequence of adding the oils and/or fats in the method of modified Hori with the expectation of successfully preparing an oil and/or fat composition because the final oil and/or fat composition prepared by modified Hori is substantially similar to the oil and/or fat composition of the present invention and the point in which the oil and/or fat b and the oil and/or fat c is combined with the oil and/or fat a is not seen as critical. To switch the order of performing process steps, i.e. the order of the addition of the ingredients into the final mixture, would be obvious absent any clear and convincing evidence and/or arguments to the contrary (MPEP 2144.04 [R-1]). “Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.
Additionally, even though Cruz Serna does not disclose all the features of the presently claimed invention, Cruz Serna is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely, RBD palm oil and/or fractions thereof, and in combination with the primary reference Hori, discloses the presently claimed invention.
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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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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