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 .
Response to Arguments
Applicant’s arguments, see pages 5-9, filed 2 July 2026, with respect to the 103 rejection have been fully considered and are persuasive. The 103 rejection of claims 1-9 has been withdrawn.
Applicant's arguments filed 2 July 2026 regarding the Double Patenting Rejection and 112(a) have been fully considered but they are not persuasive.
Claim 10 is being rejection.
Double Patenting
Applicant’s arguments filed in response to the prior Office action have been fully considered but are not persuasive as to the provisional nonstatutory double-patenting rejection of claims 1, 3, 5, and 7–9 or the rejection of claim 9 under 35 U.S.C. §112(a), for the reasons set forth below.
Provisional Nonstatutory Double Patenting
Applicant argues that the claims are patentably distinct from claims 1 and 3–8 of copending Application No. 18/546,865 because the present claims convert lauric oil into fatty-acid alkyl esters using an alcohol and subsequently transesterify the alkyl esters with glycerol, whereas the reference claims split the lauric oil into free fatty acids and subsequently esterify the free fatty acids with glycerol.
The argument is not persuasive.
The test for obviousness-type double patenting is not whether the respective claims are identical or employ identical reaction terminology. Rather, the issue is whether the presently claimed subject matter would have been an obvious variation of the invention defined by the claims of the reference application. See MPEP §804.
Claim 1 of Application No. 18/546,865 claims the same overall process architecture as present claim 1: breaking down a lauric oil into a fatty-acid-derived fraction and a glycerol-derived fraction, distilling the fatty-acid-derived fraction while substantially preserving the fatty-acid profile, reacting the purified fatty-acid-derived material with glycerol, and obtaining a MOSH- and/or MOAH-reduced lauric oil. The principal difference is whether the intermediate is a free fatty acid or a lower alkyl ester and whether the oil is reconstructed by esterification or transesterification.
The use of a fatty-acid alkyl-ester intermediate was a known alternative for carrying out that breakdown-and-reconstruction sequence. Tanaka et al., U.S. Patent No. 4,303,590, teaches alcoholysis of naturally occurring oils, including coconut oil, with lower alcohols such as methanol or ethanol to produce lower alkyl fatty-acid esters and glycerine. Jeromin et al., U.S. Patent No. 6,127,561, teaches reacting fatty-acid methyl esters with glycerol and explains that the reaction proceeds stepwise through mono- and diglycerides until triglycerides are formed. Jeromin further explains that methyl esters may be purified by distillation.
Thus, the substitution of the known fatty-acid alkyl-ester/transesterification route for the free-fatty-acid/esterification route claimed in Application No. 18/546,865 would have constituted the predictable use of a known alternative intermediate and corresponding reaction chemistry. Both routes preserve the fatty-acid moieties while permitting purification of the fatty-acid-derived intermediate before reconstructing the glyceride oil.
Applicant has not provided evidence of unexpected results attributable to using the alkyl-ester route instead of the free-fatty-acid route, nor has applicant established that the alkyl-ester route produces a result that would not reasonably have been expected from the reference claims and the known state of the art. Merely establishing that the reaction mechanisms are different does not establish patentable distinctness.
The additional limitations likewise do not overcome the rejection:
Claim 3 corresponds to reference claim 3. Neutralization is an additional conventional pretreatment of lauric oil and does not render the claimed process patentably distinct.
Claim 5 and reference claim 5 both limit the lauric oil to coconut oil.
Claim 7 corresponds to reference claim 6 and requires deodorization after reconstruction of the oil.
Claim 8 corresponds to reference claim 7 and requires bleaching before deodorization.
Claim 9 corresponds to reference claim 8 and requires substantial preservation of the selected fatty-acid profile, including a deviation of less than 10%.
Accordingly, the provisional nonstatutory double-patenting rejection of claims 1, 3, 5, and 7–9 is maintained. The rejection of cancelled claim 4 is withdrawn as moot.
Claim Rejections - 35 USC § 112
Rejection of Claim 9 Under 35 U.S.C. §112(a)
Applicant argues that claim 9 was present in the originally filed claims and therefore forms part of the original disclosure. Applicant further argues that the circumstances identified in MPEP §2163 concerning an originally filed claim lacking written-description support do not apply.
The argument is not persuasive.
Although an originally filed claim forms part of the original disclosure and is presumed to have written-description support, that presumption is not conclusive. An originally filed claim may lack adequate written-description support where the claim language encompasses subject matter broader than that which the application reasonably conveys the inventor possessed. The appearance of claim language in the originally filed claims does not, by itself, establish possession of every construction encompassed by that language. See MPEP §2163.
The specification at page 12, lines 20–24, describes a comparison between:
1. the amount of each selected fatty acid bound as an acyl group in glycerides in the MOSH- and/or MOAH-reduced lauric oil; and
2. the amount of the corresponding fatty acid bound as an acyl group in glycerides in the starting lauric oil.
Amended claim 9 expressly requires only the “first amounts” in the starting lauric oil to be fatty acids bound as acyl groups in glycerides. The claim then recites that the reduced lauric oil comprises “second amounts of the fatty acids.” Reference to “the fatty acids” identifies the previously recited fatty-acid species, but it does not expressly require that the second amounts in the reduced oil are amounts of those fatty acids bound as acyl groups in glycerides.
This distinction is meaningful because the specification states that the oil may contain mono- and diglycerides as well as free fatty acids. Under the broadest reasonable interpretation, the claimed “second amounts” may therefore include free fatty acids or other amounts not limited to fatty acids bound as acyl groups in glycerides. That construction is broader than the comparison disclosed at page 12, lines 20–24.
The amendment consequently does not cure the deficiency identified in the previous Office action. The rejection of claim 9 under §112(a) is maintained.
(NEW) Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 10 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant states that support for new claim 10 is found at page 12, lines 20–24. The cited passage does not provide written-description support commensurate with the scope of claim 10.
The cited disclosure requires a corresponding comparison involving fatty acids bound as acyl groups in glycerides in both the starting and reduced oils. Claim 10 instead recites that the fatty acids are bound in the reduced oil “or” in the starting oil. The disjunctive language encompasses application of the limitation to only one of the two oils and omits the corresponding relationship disclosed in the specification.
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 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.
“The fatty acids” lacks a clear antecedent, and the recitation “in the MOSH- and/or MOAH-reduced lauric oil or in the lauric oil” fails to establish whether the limitation applies to the starting oil, the reduced oil, either oil, or both oils. It is also unclear whether the listed group requires one fatty acid, a subset of the listed acids, all six acids, or merely identifies the acids whose amounts are to be compared.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
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