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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7 in the reply filed on 5/15/26 is acknowledged.
Claims 8-15 are withdrawn from consideration as being directed non-elected invention.
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 1-7 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.
In claim 1, the limitation “ drawn on the total amount of first fat” is vague and indefinite because it’s unclear what is intended by “ drawn”; also, the recitation “ the total amount” does not have proper antecedent basis. ( for prior art application, it’s interpreted as based on amount of first amount). Lines 5-6, the recitation of “ the 2-position , the total amount ” does not have proper antecedent basis.
In claim 2, the recitation of “ the 2-position” does not have proper antecedent basis.
Claim 4 has the same problem as claim 1 with respect to the limitation “ drawn on the total fat”. Also, the recitation of “ the amount” does not have proper antecedent basis.
Claim 6 has the same problem as claim 4.
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.
Claim(s) 1-7 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” in view of Ma ( WO 2019/185444).
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%. Furthermore, Ifeduba discloses the same triacylglyceride as claimed. ( 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 claim 7 Ifeduba discloses a triacylglyceride obtained from the interesterified process. ( see abstract, table 1, table 2)
Ifeduba does not disclose the C18:1 as in claim 1 and the amount of H3 or StStSt as in claim 6.
Ma discloses a non-hydrogenated fat composition comprising caprylic acid, lauric acid 20-45% stearic acid and less than 12% palmitic acid. The fat composition is made by interesterifying fat selected from shea butter, shea stearin, shea olein with coconut oil. Table 1 shows fat A comprising SAFA of 76.9 and C18:1 of 20.7. Ma discloses the fat composition provide favorable sensory properties. The composition provides good physical properties to allow more air in whipped cream in order to obtain a desirable texture and sensory performance. ( see pages 2-3, page 4 lines 31-35, Example 1.)
As shown in Ma, the fatty acid profile of fat composition can be altered depending on the fat used and the amounts. Ma shows that the fat composition provides improved sensory performance containing high amount of saturated fatty acids and low amount of unsaturated fatty acids. Ifeduba discloses performing the interesterification with high oleic sunflower oil to give high amount of 18:1 and lower content saturated fatty acids. It would have been obvious to one of ordinary skill in the art to substitute another oil such a coconut oil as taught in Ma to obtain high amount of saturated fatty acid and low amount of oleic acid when desiring to improve the sensory performance of the fat composition in food products. It would have been obvious to follow the guideline of Ma and to optimize depending on the sensory attribute and health desired. Such parameter can readily be determined by one skilled in the art through routine experimentation. For claim 3, the limitation of random interesterification is treated just as interesterification because there is no parameter defining random. Furthermore, interesterification is a random process as Ma discloses on page 1 lines 20-25 “ fat and oils are occasionally subjected to an interesterification process which randomly redistributes the fatty acid acyl residues amongst the glyceride molecules”.
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, of copending Application No 18/262181. 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. The copending application does not recite the amount of C18:1. However, the method is the same as instant application. Thus, it’s obviously inherent the amount is the same.
Claim 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 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. The copending application does not recite the amount of C18:1. However, the method is the same as instant application. Thus, it’s obviously inherent the amount is the same.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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July 8, 2026
/LIEN T TRAN/Primary Examiner, Art Unit 1793
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