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 .
In the claim set filed April 17, 2023, claims 1-11 are pending in the application.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1 at line 5, it is suggested to insert “(oxidized triglyceride)” after “ox-TG” and before “, hydroxyl” to clarify the abbreviation (see paragraph [0002] of the instant specification).
Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claim 1 recites “the following steps” at line 2. This recitation lacks antecedent basis as steps have not been previously mentioned in the claim. Therefore, the scope of the claim is indefinite. For the purpose of the examination, the recitation of “the method comprises the following steps” (emphasis added) as recited in line 2 of claim 1 is interpreted as “the method comprises”.
Claim 1 also recites “adding a template molecule, namely epoxy ox-TG, hydroxyl ox-TG and/or aldehyde ox-TG” (emphasis added) at lines 4-5. It is unclear what is intended by this limitation. A broad limitation together with a narrow limitation that falls within the broad limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “a template molecule”, and the claim also recites “epoxy ox-TG, hydroxyl ox-TG and/or aldehyde ox-TG” which is the narrower statement of the limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim. Additionally, the recitation of “namely” renders the scope of the claim indefinite as it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purpose of the examination, the recitation of “adding a template molecule, namely epoxy ox-TG, hydroxyl ox-TG and/or aldehyde ox-TG” (emphasis added) at lines 4-5 of claim 1 is interpreted as “adding a template molecule, wherein the template molecule is epoxy ox-TG, hydroxyl ox-TG and/or aldehyde ox-TG” (emphasis added).
Claim 1 recites “step (1)” (emphasis added) at lines 12-13. It is unclear what is meant by this limitation. More specifically, there is no step 1 (vs. a) mentioned anywhere in the claim. Therefore, the scope of the claim is indefinite. For the purpose of the examination, the recitation of “step (1)” (emphasis added) at lines 12-13 of claim 1 is interpreted as “step (a)” (emphasis added).
Claim 1 additionally recites “epoxy ox-TG, hydroxyl ox-TG and aldehyde ox-TG” (emphasis added) at lines 18-19. It is unclear what is intended by this limitation. From the recitation of “epoxy ox-TG, hydroxyl ox-TG and/or aldehyde ox-TG” at lines 4-5 of the claim, it is interpreted that at least one of the components is present. However the recitation of “epoxy ox-TG, hydroxyl ox-TG and aldehyde ox-TG” at lines 17-18 requires all three components to be present. Therefore, the scope of claim 1 is indefinite. For the purpose of the examination, the recitation of “epoxy ox-TG, hydroxyl ox-TG and aldehyde ox-TG” (emphasis added) at lines 18-19 is interpreted as “epoxy ox-TG, hydroxyl ox-TG and/or aldehyde ox-TG” (emphasis added).
Claims 2-5 have not been specifically discussed but are rejected due to their dependence upon claim 1.
Claim 6 recites “a single-template molecularly imprinted polymer, namely, hydroxyl OX-TGMIPs (SMIPs1), aldehyde OX-TGMIPs (SMIPs2), or epoxy OX-TGMIPs (SMIPs3)” (emphasis added) at lines 2-4. It is unclear what is intended by this limitation. A broad range or limitation together with a narrow limitation that falls within the broad limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation “a single-template molecularly imprinted polymer”, and the claim also recites “hydroxyl OX-TGMIPs (SMIPs1), aldehyde OX-TGMIPs (SMIPs2), or epoxy OX-TGMIPs (SMIPs3)” which is the narrower statement of the limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim. Additionally, the recitation of “namely” renders the scope of the claim indefinite as it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purpose of the examination, the recitation of “a single-template molecularly imprinted polymer, namely, hydroxyl OX-TGMIPs (SMIPs1), aldehyde OX-TGMIPs (SMIPs2), or epoxy OX-TGMIPs (SMIPs3), is prepared” (emphasis added) at lines 2-4 of claim 6 is interpreted as “a single-template molecularly imprinted polymer is prepared; wherein the single-template molecularly imprinted polymer is hydroxyl OX-TGMIPs (SMIPs1), aldehyde OX-TGMIPs (SMIPs2), or epoxy OX-TGMIPs (SMIPs3) ” (emphasis added).
Claim 7 recites “the three types of OXTG-SMIPs, namely, the SMIPs1, the SMIPs2, and the SMIPs3” (emphasis added) at lines 2-3. The recitation of “namely” renders the scope of the claim indefinite as it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purpose of the examination, the recitation of “when a single-template molecularly imprinted polymer is prepared, the three types of OXTG-SMIPs, namely, the SMIPs1, the SMIPs2, and the SMIPs3” (emphasis added) at lines 1-3 of claim 7 is interpreted as “when a single-template molecularly imprinted polymer is prepared, the SMIPs1, the SMIPs2, and the SMIPs3”.
Claims 8-11 have not been specifically discussed but are rejected due to their dependence upon claim 1.
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.
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 1-4, 6-9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Cao et al. CN 102539551 (hereinafter “Cao”) in view of Cong CN 104262451 (hereinafter “Cong”) and Byrdwell et al. “Non-volatile products of triolein produced at frying temperatures characterized using liquid chromatography with online mass spectrometric detection” (hereinafter “Byrdwell”).
With respect to claim 1, Cao teaches a method for separating oxidized triglycerides in frying oil (paragraphs [0040], [0044], [0069] and [0072]).
Regarding the recitation of “for accurately separating and identifying an oxidized triglyceride in frying oil” 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 limitation of the method comprises: (a) preparation of a surface molecularly imprinted polymer: first, grafting an outer layer of a substrate material with a functional monomer; adding a template molecule, wherein the template molecule is epoxy ox-TG, hydroxyl ox-TG and/or aldehyde ox-TG; then, after the functional monomer is prepolymerized with the template molecule for 1-2.5 hours, adding an initiator azodiisobutyronitrile and a crosslinking agent ethylene glycol dimethacrylate to fix a complex into a polymer network so as to obtain a crosslinked polymer; and finally, subjecting the template molecule in the crosslinked polymer to elution to obtain an oxidized triglyceride-molecularly imprinted polymer (OXTG-SMIPs), wherein the functional monomer comprises any one of methacrylic acid, acrylamide, and 4-vinylpyridine; (b) preparation of a chromatographic column: loading the OXTG-SMIPs obtained in step (a) into a chromatographic column; and (c) separation with the chromatographic column: adding the frying oil to the chromatographic column, and adding an eluting agent for elution so as to separate the oxidized triglyceride from the frying oil in claim 1, Cao teaches filling a chromatographic column with silica gel, loading oil into the column, and adding an eluent agent to the column to separate the oxidized triglycerides from the frying oil (step c) (paragraphs [0040], [0044], [0069], [0072], [0074], [0100], [0144], [0164], [0185], and [0193]).
However, Cao does not expressly disclose preparing an oxidized triglyceride-molecularly imprinted polymer (OXTG-SMIPs) (step a) and loading the OXTG-SMIPs into the chromatographic column (step b).
Cong teaches an extraction method. Polymers with predetermined selectivity for target molecules, or molecularly imprinted polymers (MIPs), are prepared by combining a functional monomer, such as methacrylic acid, and the template molecule and reacting for 3-20 hours to form a complex, combining silica gel with the complex, adding azobisisobutyronitrile (azodiisobutyronitrile) as the initiator and ethylene glycol dimethacrylate as the crosslinking agent, and subjecting the mixture to elution. The MIPs can be filled in a chromatographic column to extract target molecules from a substance (paragraphs [0002], [0006], [0007], [0011], and [0012]).
Byrdwell teaches the separation of polar oxidation products from frying oil. Oxidized products formed from triglycerides in the oil, such as epoxides (epoxy ox-TG), hydroxyls (hydroxyl ox-TG), and aldehydes (aldehyde ox-TG), are separated from the frying oil (Abstract; P417-418, Introduction; and P425, right column, last paragraph).
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 Cong and Byrdwell, to select epoxy ox-TG, hydroxyl ox-TG, and/or aldehyde ox-TG as the template molecule based on its suitability for its intended purpose as well as to substitute the silica gel with an oxidized triglyceride-molecularly imprinted polymer in the method of Cao with the expectation of successfully separating oxidized triglycerides in frying oil. One of ordinary skill in the art would have been motivated to do so because Cao, Cong, and Byrdwell similarly teach separation of components, Byrdwell and Cao (paragraphs [0021], [0040], [0069], and [0072]) similarly teach the separation of polar oxidation products from frying oil, Byrdwell teaches the polar oxidation products contribute to the discoloration and unpleasant taste of overused oils (P471, Introduction), Cao and Cong similarly teach the use of materials comprising silica gel in extraction methods, Cong teaches MIPs have advantages of high selectivity for selectively targeting molecules during column chromatography (paragraphs [00067]-[0007]), such modification would have involved a mere substitution of known equivalent structures, and substitution of known equivalent structures is generally recognized as being within the level of ordinary skill in the art. There would have been a reasonable expectation of success with said modification. Mere substitution of an equivalent is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). 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).
Additionally, while Cao as modified by Cong and Byrdwell does not explicitly teach that the functional monomer is prepolymerized with the template molecule for 1-2.5 hours, the duration of 3-20 hours as disclosed in Cong (paragraph [0012]) is close enough to the presently claimed range that one of ordinary skill in the art before the effective filing date of the claimed invention would have expected the same property of effectively prepolymerizing the functional monomer with the template molecule. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0) and In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date to adjust the duration in the method of modified Cao with the expectation of successfully prepolymerizing the functional monomer with the template molecule and arrive at the presently claimed duration since Cong teaches forming MIPs with three-dimensional pores that complement the template molecules and have high strength (paragraph [0006]), and it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. There would have been a reasonable expectation of success. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); and In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.").
Regarding the limitation of (d) elution of an eluent: sequentially adding eluting agents to the chromatographic column for eluting the oxidized triglyceride, and conducting separation to obtain epoxy ox-TG, hydroxyl ox-TG and/or aldehyde ox-TG in claim 1, Cao teaches adding eluting agents to the chromatographic column for eluting the oxidized triglyceride and conducting separation to obtain oxidation products (epoxy ox-TG, hydroxyl ox-TG and/or aldehyde ox-TG) (paragraphs [0021], [0040], [0072]-[0075], [0100]-[0101], [0144]-[0145], [0164]-[0165], [0185]-[0186], and [0193]-[0194]).
Cao does not expressly disclose the eluting agents are added sequentially. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the eluting agents sequentially with the expectation of successfully eluting the oxidized triglyceride. One of ordinary skill in the art would have been motivated to because the order in which the eluting agents are added is not seen as critical. There would have been a reasonable expectation of success. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). See also Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959) (The transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes).
With respect to claim 2, modified Cao is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the limitation of wherein in step (a), the substrate material comprises any one or more of silica gel, glucan, and titanium dioxide as recited in claim 2, Cao as modified by Cong teaches this limitation since Cong is relied upon for the teaching of the substrate material as addressed above in claim 1, and Cong teaches silica gel as the substrate material (paragraphs [0011]-[0012]).
With respect to claim 3, modified Cao is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the limitation of wherein in step (a), the functional monomer is the methacrylic acid or the acrylamide as recited in claim 3, Cao as modified by Cong teaches this limitation since Cong is relied upon for the teaching of the functional monomer as addressed above in claim 1, and Cong teaches the functional monomer is methacrylic acid (paragraphs [0011]-[0012]).
With respect to claim 4, modified Cao is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the limitation of wherein a mass ratio of the substrate material grafted with the functional monomer to the template molecule is 5:1 to 10:1, the use amount of the initiator is 2%-4% (mass/mass) of that of the substrate material, and the use amount of the crosslinking agent is 1.5-2 times (mass/mass) that of the substrate material as recited in claim 4, Cao as modified by Cong is relied upon for the teaching of the preparation of a surface molecularly imprinted polymer as addressed above in claim 1. Cong teaches the ratio of the functional monomer of the grafted silica gel to the template molecule is 1-8:1 and overlaps with the presently claimed range (paragraphs [0011]-[0012] and [0016]). 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).
Cao as modified by Cong does not expressly disclose the amount of initiator or crosslinking agent relative to the substrate material (silica gel) as presently claimed. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the quantity of initiator and crosslinking agent in the method of modified Cao through routine experimentation with the expectation of successfully preparing a functional molecularly imprinted polymer. One of ordinary skill in the art would have been motivated to do so because the amount of crosslinking agent and initiator used in the method is contingent upon the amount of silica gel (substrate) present, the quantities of ingredients can be adjusted to successfully arrive at a molecularly imprinted polymer as presently claimed, and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II).
With respect to claim 6, modified Cao is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the limitation of wherein when any one of the epoxy ox-TG, the hydroxyl ox-TG, and the aldehyde ox-TG is added, a single-template molecularly imprinted polymer is prepared; wherein the single-template molecularly imprinted polymer is hydroxyl OX-TGMIPs (SMIPs1), aldehyde OX-TGMIPs (SMIPs2), or epoxy OX-TGMIPs (SMIPs3) in claim 6, Cao as modified by Cong and Byrdwell teaches this limitation since Byrdwell is relied upon for the teaching of epoxy ox-TG, hydroxyl ox-TG, and aldehyde ox-TG and Cong is relied upon for the teaching of molecularly imprinted polymers (MIPs) as addressed above in claim 1.
With respect to claim 7, modified Cao is relied upon for the teaching of the method of claim 6 as addressed above.
Regarding the limitation of wherein when a single-template molecularly imprinted polymer is prepared, the SMIPs1, the SMIPs2, and the SMIPs3 are loaded into the chromatographic column at a ratio of 1:1:1 to 1:1:2 in step (b) in claim 7, Cao as modified by Cong and Byrdwell teaches SMIPs1, SMIPs2, and SMIPs3 since Byrdwell is relied upon for the teaching of epoxy ox-TG, hydroxyl ox-TG, and aldehyde ox-TG and Cong is relied upon for the teaching of molecularly imprinted polymers (MIPs) as addressed above in claim 1.
Cao as modified by Cong and Byrdwell does not expressly disclose the SMIPs1, the SMIPs2, and the SMIPs3 are loaded into the chromatographic column at a ratio of 1:1:1 to 1:1:2. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the ratio of SMIPs1, the SMIPs2, and the SMIPs3 loaded into the chromatographic column through routine experimentation with the expectation of successfully preparing a chromatographic column for separation of oxidized triglyceride. One of ordinary skill in the art would have been motivated to do so because Byrdwell teaches the polar oxidation products contribute to the discoloration and unpleasant taste of overused oils (P471, Introduction), Cong teaches MIPs have advantages of high selectivity for selectively targeting molecules during column chromatography (paragraphs [00067]-[0007]), and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II).
With respect to claim 8, modified Cao is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the limitation of wherein in step (c), the eluting agent is any one of dimethyl sulfoxide and tetrahydrofuran as recited in claim 8, modified Cao teaches this limitation since Cao teaches tetrahydrofuran as the eluting agent (paragraph [0065]).
With respect to claim 9, modified Cao is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the limitation of wherein in step (c), a mass ratio of the frying oil to the OXTG-SMIPs is 1:20 to 1:25 as recited in claim 9, modified Cao does not expressly disclose this ratio. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the ratio of frying oil and OXTG-SMIPs in the method of modified Cao through routine experimentation with the expectation of successfully separating oxidized triglyceride from the frying oil. One of ordinary skill in the art would have been motivated to do so because Cao teaches the separation of polar oxidation products from frying oil (paragraphs [0021], [0040], [0069], and [0072]), Byrdwell teaches the polar oxidation products contribute to the discoloration and unpleasant taste of overused oils (P471, Introduction), Cong teaches MIPs have advantages of high selectivity for selectively targeting molecules during column chromatography (paragraphs [00067]-[0007]), and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II).
With respect to claim 11, modified Cao is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the limitation of wherein the frying oil is edible oil used in families, restaurants, industrial frying, and cooking food as recited in claim 11, Cao teaches the frying oil is an edible oil that is used at home, restaurants, and cooking food (paragraphs [0002], [0034], [0110], and [0181]). It is also noted that the recitation of “used in families, restaurants, industrial frying, and cooking food” relates to functional language. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04. Further, the functional language is not considered to confer patentability to the claim.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Cao et al. CN 102539551 (hereinafter “Cao”) in view of Cong CN 104262451 (hereinafter “Cong”) and Byrdwell et al. “Non-volatile products of triolein produced at frying temperatures characterized using liquid chromatography with online mass spectrometric detection” (hereinafter “Byrdwell”) as applied to claim 1, and in further view of Zhao et al., “Syntheses and Properties of Cross-Linked Polymers From Functionalized Triglycerides” (hereinafter “Zhao”).
With respect to claim 5, modified Cao is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the limitation of wherein in step (a), structural formulas of the hydroxyl ox-TG, the aldehyde ox-TG, and the epoxy ox-TC are Formula I, Formula II, and Formula III, respectively, in claim 5, modified Cao does not expressly disclose this limitation.
Zhao teaches the functionalization of triolein. In one embodiment, a mono epoxide with the structure of Formula III was formed (P647, Introduction; P647-648, Results and Discussion and Scheme 2; and P654, (6)).
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 Zhao, to select the mono epoxide with the structure of Formula III based in its suitability for its intended purpose in the method of modified Cao with the expectation of successfully preparing a molecularly imprinted polymer. One of ordinary skill in the art would have been motivated to do so because Zhao and Cao as modified by Cong and Byrdwell (P417-P418, Introduction) similarly teach epoxides of triolein (epoxy ox-TG), Zhao teaches the functionalized components of triolein may have many uses, such as components for polymers and composites (P648, Introduction), Cao as modified by Cong and Byrdwell teaches aldehyde ox-TG and molecularly imprinted polymers (MIPs) as addressed above in claim 1, 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).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Cao et al. CN 102539551 (hereinafter “Cao”) in view of Cong CN 104262451 (hereinafter “Cong”) and Byrdwell et al. “Non-volatile products of triolein produced at frying temperatures characterized using liquid chromatography with online mass spectrometric detection” (hereinafter “Byrdwell”) as applied to claim 1, and in further view of Hearn et al. US 20120052757 (hereinafter “Hearn”).
With respect to claim 10, modified Cao is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the limitation of wherein in step (d), the eluting agents sequentially comprise a mixture of acetic acid and methanol at a ratio of 1:8, a mixture of acetic acid and methanol at a ratio of 1:6 and a mixture of acetic acid and methanol at a ratio of 1:4 as recited in claim 10, modified Cao does not expressly disclose this limitation.
Hearn relates to molecularly imprinted polymers (MIPs). The MIPs are used in column chromatography to at least partially separate constituent(s) of a foodstuff sample such as oil. The MIPs may be treated repeatedly with methanol and acetic acid mixture until the components have been removed (Abstract; [0003], [0026], [0028], [0034], [0170], and [0188]).
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 Hearn, to select repeated treatments of methanol and acetic acid mixture based in its suitability for its intended purpose in the method of modified Cao with the expectation of successfully separating oxidized triglycerides in frying oil. One of ordinary skill in the art would have been motivated to do so because Hearn and modified Cao similarly teach subjecting oil to a chromatographic column comprising MIPs to separate components therefrom, Hearn teaches repeatedly using mixtures of methanol and acetic acid until the components are removed, 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 combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the ratio of methanol to acetic acid through routine experimentation in the method of modified Cao. One of ordinary skill in the art would have been motivated to do so to ensure the oxidized triglyceride is completely eluted from the column, and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II).
Conclusion
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793