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 .
Status of Claims
Claims 1-14 are pending in this application. Claims 1-10 are under examination. Claims 11-14 are withdrawn.
Election/Restrictions
Applicant's election with traverse of claims 1-10 in the reply filed on 12/29/2025 is acknowledged. The traversal is on the ground(s) that the claims possess unity of invention. Applicant argues that the claims possess a special technical feature that distinguishes over Bourke, and that Bourke fails to teach or suggest any effect associated with the fat/alpha-tending emulsifier weight ratio.
Applicant explains the powdered whipping agent of claim 1 specifies three types of emulsifiers, specifically components (b) alpha-tending emulsifier, (c) nonionic mono- and/or diglycerides and (d) proteinaceous emulsifier. Applicant states claim 1 specifies a particular weight/weight ratio of fat to “just one of these emulsifiers: the alpha-tending emulsifier” and not to the “total emulsifier”, which is what appears to be taught in the restriction. Applicant states the Office’s calculated 0.5:1 to 266:1 calculated weight ratio appears to be a ratio between the fat to total emulsifier and not the fat to alpha-tending emulsifier weight ratio specified in claim 1. Applicant also discusses the superior sensory profiles and foam firmness of having three emulsifiers, where the fat/alpha tending emulsifier weight ratio of <5 exhibited a sticky mouthfeel. Applicant points to their specification, Table 3A, Table 3B, and Comparative Example 8 in Table 4, to highlight the superior sensory profiles of the claimed powdered whipping agent, which exhibits a good foam firmness and tastes closer to whipped cream with reduced sticky mouthfeel. Applicant contends Bourke fails to describe the fat/alpha-tending emulsifier weight ratio explicitly and further fails to exemplify any powdered whipping agents containing an alpha-tending emulsifier. Applicant argues the claims possess unity of invention since they possess a special technical feature that distinguishes over Bourke.
This is not found persuasive. The inventions are still considered to lack unity of invention and contain a group of inventions which are not linked as to form a single general inventive concept under PCT Rule 13.1. As shown in the unity of invention restriction dated 10/27/2025, the prior art, Bourke, is used to show that the technical feature of Groups I-II of fat or oil, an alpha-tending emulsifier, a nonionic mono-and/or diglycerides of fatty acids having an acyl chain of 14-20 carbon atoms, a proteinaceous emulsifier, carbohydrates, moisture (water), and a weight/weight ratio of fat or oil to the alpha-tending emulsifier is 10 or higher and lower than 30, is not a special technical feature. The examiner cites paragraphs in Bourke that shows this technical feature.
In regards to the weight/weight ratio of fat to the alpha-tending emulsifier found in Bourke of 0.5:1 to 266:1, the Office used this ratio to show one possible span of how much alpha-tending emulsifier can be found in the composition. As stated in Bourke, the emulsifiers listed in [0034], which include components (b) and (c) from claim 1, can be used singly or in combination from preferably 0.5-20 wt. % [0034], [0038] or from 0.3-20 wt. % [0026]. Thus, it can be envisaged that component (b) alpha-tending emulsifier (acetoglycerides; [0034]) can be in the composition at 0.3 wt. % to 19.9 wt.%, while the other emulsifier, component (c) as specified in claim 1, can be in the composition anywhere from 0.1-19.7 wt.%. It is noted that component (d) the proteinaceous emulsifier is shown as having a separate weight percentage from emulsifier components (b) and (c) in Bourke, (one or more proteins for the formation of the emulsion at 0.5-15 wt. %; [0025-0026]). Therefore, the composition of Bourke can comprise one possible range of alpha-tending emulsifier of 0.3 wt. % to 19.9 wt.%, while still comprising all three emulsifiers in the composition, specifically components (b), (c), and (d) as specified in claim 1. With the composition of Bourke comprising 10-80 wt.% fat [0024] and the above envisaged range of 0.3-19.9 wt.%, the weight/weight ratio of the fat to the alpha-tending emulsifier is still viewed as, 0.5:1 to 266:1. This encompasses the claimed range of fat to alpha-tending emulsifier of 10:1 to 30:1 as claimed. Accordingly, Bourke does teach the described fat/alpha-tending emulsifier weight ratio.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., superior sensory profiles and foam firmness, tasting closer to whipped cream with reduced sticky mouthfeel) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Since Bourke shows that the technical feature is not a special technical feature, this provides support and meaningfully addresses why the product/process relationship between the invention of Groups I and II fail the unity of invention rules. Therefore, groups I-II lack unity of invention because the technical feature linking the inventions does not contribute over the prior art of Bourke. The requirement is still deemed proper and is therefore made FINAL.
Claims 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/29/2025.
Claim Objections
Claims 1, 4 and 5 are objected to because of the following informalities:
Claim 1 line 5 recites, “propyleneglycol monostearate.” A space is required between the words “propylene” and “glycol.” The space should be added so the limitation recites, “propylene glycol monostearate.” Appropriate correction is required.
Claims 4 and 5 recite, “vegetable oil or fat.” For clarity, the word “vegetable” should be added before “fat” to indicate that the claims require vegetable fat and not just any type of fat. The limitations in claims 4 and 5 would then read as follows, “vegetable oil or vegetable fat.” Appropriate correction is required.
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.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Bourke US 20040076731 (cited on IDS dated 12/21/2023) as evidenced by Kerry, Admul MG Safety Data Sheet, www.univarsolutions.com/proxy/index..., Date: 6/24/2015 (hereinafter, Kerry).
Regarding claims 1-3, Bourke teaches a powdered whipping agent (powdered fat composition; Abstract, [0019], [0023] claim 1), comprising, by weight of the whipping agent (a) 10-80 wt.% fat, optimally 40-80 wt.% fat (crystallizing fat; [0024], [0030]), as required by claim 1. This encompasses the claimed wt. % fat of 57-70 wt.%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Bourke teaches the powdered whipping agent (powdered fat composition; [0023]) comprises an emulsifier [0026], where the emulsifier is used singly or in combination with other emulsifiers [0034], [0038]. Bourke teaches (b) an alpha-tending emulsifier selected from lactic acid esters of mono and/or diglycerides of fatty acids (organic acid ester derivatives of mono and diglycerides, such as lactoglycerides (Lactem)), acetic acid esters of mono and/or diglycerides of fatty acids (organic acid ester derivatives of mono and diglycerides, such as acetoglycerides (Acetem), and mixtures thereof [0034], as required by claim 1. Bourke teaches the combination of emulsifiers can be in the composition at 0.3-20 wt.% [0026], [0038]. Thus, a person of ordinary skill can envisage the alpha-tending emulsifier being in the composition with one or more other emulsifier(s) at an amount of 0.3-19.9 wt.%. This encompasses the claimed range for claim 1 of 1-6.5 wt.%. See MPEP 2144.05(I).
Bourke teaches (c) a nonionic mono- and/or diglycerides of fatty acids having an acyl chain of 14-20 carbon atoms (mono- and diglycerides of fatty acids, such as Admul MG; [0034]), as required by claim 1. Bourke teaches the nonionic mono- and/or diglycerides of fatty acids comprise unsaturated acyl chain, as required by claim 2 and comprise a saturated acyl chain, as required by claim 3 ((mono- and diglycerides of fatty acids, such as Admul MG; [0034]). Regarding carbon chain length and carbon saturation or carbon unsaturation of the acyl chains in the emulsifier Admul MG, Kerry evidences that the Admul MG emulsifier comprises fatty acids having an acyl chain of 14-18 carbon atoms and comprises unsaturated acyl chains and saturated acyl chains (Glycerides, C14-C18 and C16-C18 unsaturated mono- and di-; Pg. 1, Section 1. Identification, Chemical name and Other means of Identification). Thus, the Admul MG emulsifier, as taught by Bourke, is considered to meet the limitation of having an acyl chain of 14-20 carbon atoms, as required by claim 1, and comprising unsaturated acyl chain, as required by claim 2, and saturated acyl chain, as required by claim 3.
Bourke also teaches the combination of emulsifiers can be in the composition at 0.3-20 wt.% [0026], [0038]. Thus, a person of ordinary skill can envisage component (c) the nonionic mono- and/or diglycerides, being in the composition with one or more other emulsifier(s) at an amount of 0.1-19.9 wt.%. This encompasses the claim 1 range of 0.2-2.0 wt.%. See MPEP 2144.05(I).
Bourke discloses the powdered whipping agent (powdered fat composition; [0023]) comprises (d) 0.5-15 wt.% proteinaceous emulsifier (one or more proteins for the formation of the emulsion; [0025]). This encompasses the claim 1 range of 1.0-5 wt.% proteinaceous emulsifier. See MPEP 2144.05(I).
Bourke discloses the powdered whipping agent (powdered fat composition; [0023]) comprises (e) carbohydrates, where the balance of the formula is made up of carbohydrates [0028]. When considering the wt.% ranges of the other required ingredients in the formula [0023-0027], the carbohydrates may be in the powdered whipping agent from 0.1-88.7 wt. %. This encompasses the claim 1 range for carbohydrates of 18-35 wt.%. See MPEP 2144.05(I).
Bourke teaches the composition comprises 0.5-6 wt.% moisture (water; [0027]). This overlaps the claim 1 range for moisture of 0.1-4 wt.% moisture. See MPEP 2144.05(I).
As discussed above, the composition of Bourke comprises 10-80 wt.% fat [0024] or optimally 40-80 wt.% fat, and the envisaged range of 0.3-19.9 wt.% for alpha-tending emulsifier or optimally an envisaged range of about 2-19.9% [0034], [0038]. Thus, Bourke discloses the weight/weight ratio of the fat to the alpha-tending emulsifier of 0.5:1 to 266:1, or an optimal ratio range of 2:1 to 40:1. This encompasses the claimed range of the weight/weight ratio of fat or oil to alpha-tending emulsifier for claim 1 of 10 or higher and lower than 30, or in other words a ratio range of fat to alpha-tending emulsifier of 10:1 to 30:1.
Regarding claim 4-6, Bourke discloses the fat or oil in the composition may comprises vegetable oil or vegetable fat, as required by claim 4, where the vegetable oil or vegetable fat is selected from palm oil, palm kernel oil (lauric fats), coconut oil (lauric fats), and mixtures thereof, as required by claim 5 ([0030], claim 3).
Bourke teaches the fat or oil in the composition may comprise milk fat and/or butter oil (butter fat; [0030], claim 3).
Bourke teaches the composition may comprise a combination of vegetable oil/fat and milk fat and/or butter oil (crystallizing fat can be from animal or vegetable origin and is used singly or in combinations; [0030], claim 3). Bourke does not limit the combination of oil and fat, so the composition of Bourke is viewed as having any combination of oil and fat as long as it has a pleasant “fast melt away” behavior in the mouth, which is an attribute sought after by Bourke [0022], [0030]. Thus, a person of ordinary skill can envisage a formulation wherein the fat or oil comprise more than 80 wt.% of vegetable oil or vegetable fat or mixtures thereof, as required by claim 4 and comprises less than 20 wt.% of milk fat and/or butter oil, as required by claim 6, based on the total weight of the fat or oil.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Bourke to have any combination of fat and oil, including the combinations outlined in the limitations of claims 4-6, as this combination would be considered to meet the needs at hand. Specifically, this combination has the desired fast melt away behavior of Bourke [0022], [0030], or as evidenced by the instant specification, dissolves quick in the mouth (pg. 12 L12-31, pg. 13 L1-15 and Table 1, Figure 1), and is considered a result effective variable that can be easily found through routine experimentation as there are a finite number of solutions. Noting, “[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Regarding claim 7, as discussed above, Bourke teaches the composition comprises 10-80 wt.% fat [0024] or optimally 40-80 wt.% fat, and the envisaged range of 0.3-19.9 wt.% for the nonionic mono- and/or diglycerides of fatty acids emulsifier (nonionic emulsifier) or optimally an envisaged range of about 2-19.9% [0034], [0038]. Thus, Bourke discloses the weight/weight ratio of the fat to the nonionic emulsifier of 0.5:1 to 266:1, or an optimal ratio range of 2:1 to 40:1. This encompasses the claimed range of the weight/weight ratio of fat or oil to the nonionic emulsifier of higher than 29, or in other words a ratio range of fat to nonionic emulsifier of greater than 29:1.
Regarding claim 8, Bourke teaches the composition further comprises 0-10 wt.% of additional components selected from stabilizer, hydrocolloids (gelling agent, thickener), and combinations thereof [0029]. This encompasses the claimed range of 0.1-1.5 wt.% of additional components. See MPEP 2144.05(I).
Regarding claim 9, Bourke teaches the composition wherein the proteinaceous emulsifier is a milk protein (a protein selected from dairy origin such as sodium caseinate) or a plant protein (a protein selected from vegetable origin like rice) or a combination thereof ([0032], claims 4 and 5). Bourke teaches in claim 5 that the protein is selected from a group consisting of either proteins from milk (dairy) or vegetable origin or mixtures thereof. Thus, the proteinaceous emulsifier of Bourke (one or more proteins, for the formation of the emulsion) may have 100 wt.% of proteinaceous emulsifier from a milk protein or plant protein or combinations thereof, since they can be used singly or in combination ([0025], [0032], claims 4 and 5). This is within the claimed range of at least 50 wt.% of the proteinaceous emulsifier is a milk protein or a plant protein or combinations thereof.
Regarding claim 10, Bourke teaches the composition comprises carbohydrates. Bourke does not specify which type of carbohydrate is used, such as lactose, but in an example states “sugar” is used [0069]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Bourke to use any sugar, including lactose, with the composition as taught by Bourke. See MPEP 2144.08.
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 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/806,349 (hereinafter ‘349). Although the claims at issue are not identical, they are not patentably distinct from each other.
Conflicting claim 1 of ‘349 teaches a powdered whipping agent suitable for preparing a whipped topping. This reads on 1 of the instant application. It is evidenced by the instant specification that the powdered whipping agent of the invention relates to a powdered whipping agent suitable for preparing a whipped topping (pg. 2 L:22-24).
Conflicting claim 1 teaches the composition comprises by weight of the whipping agent (a) 20-57 wt.% fat or oil or mixtures thereof. This reads on instant application claim 1 that has the same end point of 57 wt.% fat or oil. See MPEP 2144.05(I).
Conflicting claim 1 teaches the composition comprises (b) 1.0-5.5 wt% of an alpha-tending emulsifier selected from the group consisting of lactic acid esters of mono and/or diglycerides of fatty acids, acetic acid esters of mono and/or diglycerides of fatty acids, propylene glycol monostearate, and mixtures thereof. This reads on instant application claim 1.
Conflicting claim 1 teaches the composition comprises (c) 0.2-2.0 wt.% of nonionic mono- and/or diglycerides of fatty acids having at least one acyl chain of 14-20 carbon atoms. This reads on instant application claim 1.
Conflicting claim 1 teaches the composition comprises (d) 1.0-5.0 wt.% proteinaceous emulsifier. This reads on claim 1 of the instant application.
Conflicting claim 1 teaches the composition comprises (e) 25.5-75.5 wt.% carbohydrates. This reads on instant application claim 1, which has an overlapping range for carbohydrates. See MPEP 2144.05(I).
Conflicting claim 1 teaches the composition comprises (f) 0.1-4 wt.% moisture. This reads on instant application claim 1.
Conflicting claim 2 of ‘349 reads on instant application claim 2.
Conflicting claim 3 of ‘349 reads on instant application claim 3.
Conflicting claim 4 of ‘349 reads on instant application claim 4.
Conflicting claim 5 of ‘349 reads on instant application claim 5.
Conflicting claim 6 of ‘349 teaches wherein the weight/weight ratio of the fat or oil to the alpha-tending emulsifier is 10 or higher. This reads on claim 1 of the instant application.
Conflicting claim 7 of ‘349 teaches wherein the weight/weight ratio of the fat or oil to the alpha-tending emulsifier is 30 or lower. This reads on claim 1 of the instant application.
Conflicting claim 8 of ‘349 reads on instant application claim 8.
Conflicting claim 9 of ‘349 reads on instant application claim 9.
Conflicting claim 10 of ‘349 reads on instant application claim 10.
Conclusion
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/S.R.G./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791