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 .
Election/Restriction
Applicant’s election of Group I, Species I (a structured fat) (Claims 1, 4-20) with traverse in a voicemail left on 5/19/26 is acknowledged. The traversal is on the grounds that the different species do not present a significant search burden. This is not found persuasive because the different species have different compositions and methods of production.
The requirement is still deemed proper and is therefore made FINAL.
Claims 2-3, 21-36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claim 10, 11, 12, 15, 18, and 20 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or 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 10 recites the broad recitation of “30 to 80 °C”, and the claim also recites “40 and 70 °C”, and additionally “55 and 65 °C”, which are the narrower statements of the range/limitation.
Additionally, Claim 11 recites the broad recitation “1 and 72 hours” and the claim also recites “8 and 48 hours”, and additionally “16 and 24 hours” which are the narrower statements of the range/limitation.
Additionally, Claim 15 recites the broad recitation regarding monounsaturated fatty acids of “more than 30 wt%”, and the claim also recites “preferably more than 40 wt%” and “more preferably more than 50 wt%”, which are narrower statements of the range/limitation. Claim 15 also recites the broad recitation regarding saturated fatty acids of “more than 10 wt%” and the claim also recites “preferably more than 20 wt%” and “more preferably more than 30 wt%”, which are narrower statements of the range/limitation.
The claim(s) are 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 claims.
Claims 12 and 18 recite the terms “preferably”, which render the claim(s) indefinite. See MPEP 2173.05(d)
Regarding Claim 13, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 20 recites an additional step (iii) of adding ethylcellulose to the structured fat. It is unclear whether adding ethylcellulose is intended to be added to step (i) of Claim 1, step (ii) of Claim 1, or whether Claim 20 is intended to replace or be in addition to step (iii) of Claim 1 (preparing a foodstuff comprising the structured fat of (i) or (ii)). For the purposes of examination, the limitation is interpreted to be added to step (i) of Claim 1.
Claim 20 additionally “preferably less than 5 wt%”, which renders the claim indefinite. See MPEP 2173.05(d)
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.
Claim(s) 1, 4-20 are rejected under 35 U.S.C. 103 as being unpatentable over Doucet (US 2011/0135805).
Regarding Claim 1, Doucet teaches a structured food composition (Abstract) comprising less than 50% monoglycerides [0024], at least 35% diglycerides [0025] and less than 40% triglycerides [0026], which encompasses and overlaps the claimed range(s). 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. Note that it would be obvious to select any composition lying within the range(s) taught by Doucet, including the claimed range(s).
Doucet additionally teaches the use of the structured food composition in foods such as puff pastries (Abstract).
Regarding Claims 4-20, note that step (i) of Claim 1 is not positively recited. Claims 4-20 limit Claim 1 (i). The limitations of Claims 4-20 have been met by the teaching of Claim 1 (ii). Since the limitations of Claim 1(ii) have been met, the limitations of Claims 4-20 have also been met.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH LIU whose telephone number is (571)270-5685. The examiner can normally be reached 12-8 Eastern Time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.L./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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