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 .
Claim status
The examiner acknowledges the amendment made to claims on 02/25/2026.
Claims 8-14 are pending in the application. Claim 1 is currently cancelled. Claims 8-13 are currently amended. Claim 14 is newly presented. Claims 8-14 are hereby examined on the merits.
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.
Claims 1 and 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over Woldhuis, EP0403030 A1 (cited in the IDS submitted 01/19/2024, hereinafter referred to as Woldhuis).
Regarding claims 8-14, Woldhuis teaches a composition for coating cheese comprising 5-95% a vegetable tax as beeswax, carnauba wax and candelilla wax, and 5-95% a wax-like fatty acid glyceryl esters such as acetic acid esters of glycerides (e.g., acetylated monoglycerides/diglycerides or acetoglycerides) and lactic acid esters of glycerides (page 2, line 1-3; page 3, line 33-40; 45-46; Table B; Table C: Table E). Woldhuis further teaches cheese comprising the coating composition above (page 4, line 12-13).
The amount of beeswax and the amount of fatty acid glyceryl esters as disclosed by Woldhuis encompass the ranges as recited in the second composition of claim 14. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Further, where Woldhuis establishes the suitability of beeswax, carnauba wax and candelilla wax in coating a cheese, it would have been obvious to one of ordinary skill in the art to have combined the different vegetable waxes in one wax mixture with reasonable expectation of success, for the reason that "it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). MPEP 2144.06.
Further, one of ordinary skill in the art would have been motivated to manipulate the proportion of different vegetable waxes in the wax mixture provided that the total amount of wax meets the prescribed amount of 5-95%, and that the coating composition that comprises waxes and wax-like fatty acid glyceryl esters meet the properties in melting point, penetration, viscosity, tensile strength, etc. as required by Woldhuis (see the Table on page 2). As such, the amounts of vegetable waxes as recited in claims 8, 9 and 13 are merely obvious variants of the prior art.
Where the amounts of the vegetable wax in the coating composition is an obvious variant of the prior art, the ratio of the vegetable wax and the emulsifier is also obvious, given that the ratio depends on the amount of the vegetable wax in the coating composition.
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.
Claim 14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21 of copending Application No. 19/110, 385 view of Woldhuis, EP0403030 A1 (cited in the IDS submitted 01/19/2024, hereinafter referred to as Woldhuis). In the instant case, claim 21 of ‘385 teaches a composition for coating cheese comprises 70-90% beeswax and an emulsifier such as acetic acid ester of glycerides. As for the amount of emulsifier, Woldhuis teaches that the amount of acetic acid ester of glycerides (e.g., acetoglyceride) in a composition that comprises beeswax is 5-95% (page 2, line 1-3; page 3, line 33-40; 45-46; Table B; Table C).
This is a provisional nonstatutory double patenting rejection.
Response to Declaration
The declarations under 37 CFR 1.132 filed 02/25/2026 is insufficient to overcome the rejection of pending claims based upon the references as set forth in the last Office action.
It is noted that the showing in the two declarations has demonstrated that 85-90% beeswax combined with 10-15% an emulsifier (e.g., Acetem), or the combination of 70-90% beeswax, 5-20% an emulsifier (e.g., Acetem) and 5-25% a vegetable wax (e.g., Candeilla wax) result in superior coating on cheeses to a control coating composition that does not have 85-90% beeswax or 70-90% bees wax. However, the examiner submits that the showing is not commensurate in scope with the claims. For example, while a showing using Acetem (e.g., acetylated esters of glycerides) could be extrapolated to Lactem (e.g., lactic acid esters of glycerides) or Datem (e.g., diacetyl tartaric acid ester of glycerides) because their resemblance in structures, there is no adequate basis to conclude that a sorbitan ester as recited in independent claims 13-14 will behave the same as Acetem, for the reason that although both Acetem and a sorbitan are emulsifiers, sorbitan esters appear to have different structures from Acetem, and it is not the emulsifying property of those emulsifiers that are relied on in the cheese coating, since a hot melting method is used to coat cheese. To this end, the examiner notes that Woldhuis suggests that a C1-C6 ester of glyceride is suitable for use as the coating of cheese because it has wax-like properties. However, one would not know if sorbitan ester has a wax-like properties or if it could behave like Actem when used for coating a cheese.
Response to Arguments
Applicant's arguments filed 02/25/2026 have been fully considered and the examiner’s response is shown below:
The rejection over Faget is withdrawn in view of the amendment made to claim 13.
Applicant is invited to refer to “Response to Declaration” above for any argument regarding the unexpected result of the composition.
Regarding the 35 USC 103 rejection over Woldhuis, applicant argues on pages 7-10 of the Remarks that Woldhuis “teaches away” from the composition as claimed. In particular, applicant argues that Woldhuis does not suggest using beeswax in the preferred composition, there is no motivation from Woldhuis to use a higher amount of beeswax, and the examples of Woldhuis only use lower amount of beeswax.
The arguments are considered but found unpersuasive. Where Woldhuis teaches 5-95% a vegetable tax as beeswax, carnauba wax and candelilla wax, and 5-95% a wax-like fatty acid glyceryl esters such as acetic acid esters of glycerides, there is no teaching away from the higher amount of beeswax in the prior art. A silent of high amount of beeswax does not constitute a teaching away either. After all, nowhere in Woldhuis is suggesting that pushing the concentration of a vegetable wax to a higher end will wreck the coating composition. Further, applicant is relying on prior art reference’s exemplary embodiments to narrow prior art’s effective disclosure. In an obviousness inquiry, all disclosures of the prior art, including unpreferred embodiments, must be considered. Merck & Co.v. Biocraft Labs., Inc.,874 F.2d 804, 807 (Fed. Cir. 1989) (citing In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278,280 (CCPA 1976)). Further, prior art is available for all it teaches, not just the preferred embodiment. See MPEP 2141.02, "the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). See also MPEP 2123 II. Nonpreferred and alternative embodiments constitute prior art. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have "relatively acceptable dimensional stability" and "some degree of flexibility," but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since "Gurley asserted no discovery beyond what was known in the art." Id. at 554, 31 USPQ2d at 1132.).
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 CHANGQING LI whose telephone number is (571)272-2334. The examiner can normally be reached 9:00-5:00.
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/CHANGQING LI/Primary Examiner, Art Unit 1791
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