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 .
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.
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Claims 1, 3-8 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, and 7-9 of copending Application No. 18/546,868 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 is not patentably distinct from claim 1 of 18/546,868 because both claims are directed to the same overall process for reducing MOSH and/or MOAH in lauric oil. In both claims, the process begins by breaking down lauric oil into a glycerol-derived fraction and a fatty-acid-derived fraction, then purifying the fatty-acid-derived portion by distillation, and then reacting the purified intermediate with glycerol to obtain a MOSH- and/or MOAH-reduced lauric oil.
In the instant invention, the process proceeds through a fatty acid alkyl ester intermediate and a transesterification reaction with glycerol. In 868_cm, the process proceeds through a fatty acid intermediate and an esterification reaction with glycerol. These differences are no more than closely related process variations in the form of the intermediate and the chemistry used to re-form the oil. They do not define a patentably distinct invention.
Claim 3 is not patentably distinct from claim 3 of 18/546,868 because both claims recite pretreatment of the lauric oil before step a, including degumming, bleaching, and/or deodorization. The omission of neutralization in instant invention does not make the claim patentably distinct, since neutralization is a conventional pretreatment option within the same processing framework.
Claim 4 is not patentably distinct from claim 4 of 18/546,868 because both claims are directed to lauric oil that has been degummed and bleached before step a. The absence of neutralization in instant invention does not rise to the level of a patentable distinction.
Claim 5 is not patentably distinct from claim 5 of 18/546,868 because both claims limit the lauric oil to coconut oil.
Claim 6 is not patentably distinct from the subject matter of claim 1 of 868_cm. Claim 6 merely limits the alcohol used in the transesterification step to methanol, ethanol, or a mixture thereof. Selecting one of these conventional lower alcohols for use in the claimed transesterification process would have been an obvious process variation and does not define a separate invention over the process otherwise claimed in 868_cm.
Claim 7 is not patentably distinct from claim 7 of 18/546,868 because both claims require deodorization of the oil obtained after the glycerol reaction step.
Claim 8 is not patentably distinct from claim 8 of 18/546,868 because both claims require a bleaching step before deodorization.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claim 3 objected to under 37 CFR 1.75 as being a substantial duplicate of claim 4. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
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) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over over Bloom et al. (US Pat. 7,126,019, hereafter US’019) in view of Stage (US Pat. 4,599,143, hereafter US’143).
Claim 1 recites a process for reducing the content of MOSH and/or MOAH in lauric oil, comprising: (a) splitting a lauric oil into a fatty acid fraction and an aqueous glycerol fraction; (b) purifying the fatty acid fraction into whole distilled lauric oil fatty acids; and (c) esterifying the whole distilled lauric oil fatty acids with glycerol to obtain a MOSH- and/or MOAH-reduced lauric oil. See claim 1, lines 2-8 of the claim set. The specification explains that the “whole distilled lauric oil fatty acids” are a distilled fatty-acid fraction retaining substantially the same fatty-acid profile as the starting lauric oil. See, e.g., WO2022177839, paras. [0035]-[0043].
US’019 discloses hydrolyzing a glycerol fatty acid ester-containing composition, such as a fat or oil, to yield fatty acids and glycerin. See col. 1, ll. 10-13; col. 2, ll. 7-14. US’019 further discloses that the hydrolysis products of a fat or oil are glycerol and fatty acids, and that the resulting fatty-acid product may be further purified, including by separating the oil and aqueous phases and distilling the oil phase to obtain a distillate containing free fatty acids. See col. 2, ll. 15-19; col. 2, ll. 41-49; col. 6, ll. 15-31. US’019 also discloses that suitable starting oils include coconut oil and palm kernel oil. See col. 5, ll. 17-20; col. 9, ll. 9-15. This corresponds to claim 1, step (a), namely splitting a lauric oil into a fatty acid fraction and an aqueous glycerol fraction, and step (b), namely purifying the fatty acid fraction into distilled fatty acids.
US’019 further discloses that the fatty acids produced by its hydrolysis process may be used in subsequent glyceride formation by esterification or transesterification to produce food-use glyceride products. See col. 6, ll. 59-69. This renders obvious claim 1, step (c), namely converting the purified lauric-oil-derived fatty acids back into glyceride form with glycerol.
US’143 discloses deodorization and/or physical refining of edible oils, fats, and esters by continuous countercurrent steam stripping under vacuum. Specifically, US’143 discloses treating edible oils at 220-280 C and 2-10 mbar, with steam passed countercurrently through the liquid film. See col. 1, ll. 8-27. US’143 further identifies coconut oil and palm kernel oil among suitable edible oils for that treatment. See col. 5, ll. 17-21. US’143 also discloses that such deodorization/physical refining reduces residual acid content and further impurities to very low levels in the finished oil. See col. 7, l. 28 to col. 8, l. 4.
It would have been obvious to one of ordinary skill in the art, at the time of the invention, to apply the known deodorization/physical refining treatment of US’143 to the split, separated, and distilled lauric-oil-derived material of US’019 in order to further purify the regenerated edible oil and remove residual volatile and low-boiling impurities. US’019 already discloses splitting oils into fatty acids and glycerin, separating the phases, and distilling the fatty-acid-containing oil phase. US’143 discloses that edible oils, including coconut and palm kernel oils, are conventionally subjected to steam deodorization/physical refining under vacuum to remove residual acid content and other impurities.
Combining US’019’s fatty-acid recovery and re-esterification process with US’143 known finishing purification would have been no more than a conventional and predictable application of prior-art techniques for the instant purpose of producing a cleaner edible oil. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
As to claim 2, US’019’s hydrolysis process necessarily produces glycerin as the aqueous coproduct of fat splitting. See col. 2, ll. 15-19. Further treatment and reuse of that glycerol in the re-esterification step would have been an obvious matter of routine purification and process economy, particularly where the application itself describes refinement and concentration of the aqueous glycerol fraction before reuse.
As to claims 3-5, they recite that the lauric oil fed to step (a) is degummed, bleached and/or deodorized, that it is degummed and bleached, and that it is coconut oil. See claims 3-5, lines 12-19 of the claim set. Those are routine feedstock and pretreatment selections in edible-oil processing. US’143 expressly discloses deodorization/physical refining of coconut oil and palm kernel oil, and the application itself identifies those pretreatments as optional preparatory measures. See US’143, col. 5, ll. 17-21; WO2022177839, paras. [0082]-[0085]. Selecting coconut oil, or using degummed and/or bleached lauric oil, would have been an ordinary optimization of known edible-oil starting materials and pretreatments.
view of Stage.
Claim 6 further recites deodorizing the lauric oil obtained from step (c), and claim 7 further recites bleaching the lauric oil from step (c) prior to deodorization. US’143 expressly discloses deodorization and/or physical refining of edible oils, fats, and esters, including coconut oil and palm kernel oil, by countercurrent steam stripping under vacuum. See col. 1, ll. 8-27; col. 5, ll. 17-21. US’143 also discloses that heat bleaching is frequently carried out together with physical refining and/or deodorization of edible oils, and further discloses that the quality of taste of the finished oil may be improved by carrying out such heat bleaching. See col. 7, l. 28 to col. 8, l. 20.
It would have been obvious to apply US’143’s known bleaching and deodorization finishing steps to the regenerated lauric oil produced by US’019 in order to further remove residual impurities and improve the quality of the finished edible oil.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bloom et al. (US Pat. 7,126,019, hereafter US’019) in view of Stage (US Pat. 4,599,143, hereafter US’143), and further in view of Eckey (US Pat. 2,442,531, hereafter US’531).
Claim 8 requires that, for each of C8, C10, C12, C14, C16, and C18:1 fatty acid, the amount of that fatty acid bound as acyl group in glycerides in the final MOSH- and/or MOAH-reduced lauric oil deviates from the corresponding amount in the starting lauric oil by less than 10%, less than 5%, or less than 2%. See claim 8, lines 25-31 of the claim set. The specification describes this feature as reflecting that the distilled lauric-oil fatty-acid fraction, and the glycerides regenerated therefrom, substantially retain the fatty-acid profile of the starting lauric oil.
US’019 supplies the primary process framework for claim 8 by teaching splitting an oil into fatty acids and glycerin, separating the phases, distilling the fatty-acid-containing oil phase, and using the resulting fatty acids in subsequent glyceride formation. See col. 2, ll. 15-19; col. 2, ll. 41-49; col. 6, ll. 15-31; col. 6, ll. 59-69. US’143 supplies the finishing purification of the regenerated edible oil. See col. 1, ll. 8-27; col. 7, l. 28 to col. 8, l. 4.
US’531 discloses the technical principle that triglyceride fats can differ in internal triglyceride arrangement while retaining the same overall fatty-acid composition. Additionally, US’531 also explains that fats having the same fatty-acid composition may have different triglyceride structures and properties, and further explains that when fatty acids are reacted with glycerin to form triglycerides, the resulting fat reflects the fatty-acid mixture used for the synthesis. See col. 1, ll. 14-18; col. 1, ll. 24-40; col. 1, ll. 41-49; col. 1, ll. 70-76; col. 2, ll. 1-5. Thus, US’531 discloses that re-forming glycerides from a given fatty-acid pool and glycerin would be expected to preserve the overall fatty-acid makeup of the starting fatty acids, even though the internal triglyceride distribution may differ.
It would have been obvious to one of ordinary skill in the art to expect that, a lauric-oil-derived fatty-acid stream is split from the parent oil, purified by distillation, and then esterified with glycerol to regenerate glycerides, the resulting oil would retain substantially the same relative fatty-acid composition as the starting lauric oil, absent selective fractionation or selective reaction of a particular fatty acid.
US’019 discloses the split/distill/re-esterify framework, US’143 discloses final edible-oil purification, and US’531 provides the reasoned expectation that glycerides re-formed from a given fatty-acid mixture and glycerin will substantially preserve that fatty-acid composition. For that reason, the relative amounts of C8, C10, C12, C14, C16, and C18:1 fatty acids bound as acyl groups in the final regenerated oil would have been expected to track those of the starting lauric oil, subject to routine process variation. See KSR, 550 U.S. at 417.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH D CARR whose telephone number is (571)272-0637. The examiner can normally be reached Monday-Friday (10:30 am -6:30 pm).
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/DEBORAH D CARR/Primary Examiner, Art Unit 1691