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 .
Status of Claims
Receipt of Remarks/Amendments filed on 06/16/2026 is acknowledged. Claims 1-4 and 14 are amended. Claims 1-17 are currently pending and are examined on the merits herein.
Priority
The instant application filed 12/18/2023, is a 371 filing of PCT/EP2022/066536, filed 06/17/2022, which claims foreign priority to EP21180306.9, filed 06/18/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/26/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawn Objections/Rejections
Claims 1-17 were rejected under 35 U.S.C. 112(b) as being indefinite. Applicant’s amendments to the claims have overcome the rejections and the rejections are withdrawn.
The following grounds of rejection are maintained:
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-14 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe, H., et al. (US 4280962 A, 07/28/1981, on record), hereinafter Watanabe, in view of Loh, W., et al. (AU 2005244561 A1, 02/02/2006, on record), hereinafter Loh, as evidenced by Nutting, P.G. (1943). Adsorbent clays: Their Distribution, Properties, Production, and Uses. US Geological Survey. (on record), hereinafter Nutting.
Watanabe discloses a method of refining animal and vegetable oils and fats, and more particularly to a method of refining crude oils and fats of animal and vegetable origin or oils and fats which have been subjected to a conventional pre-treatment (col. 2, lines 50-54).
Regarding claim 1: Watanabe teaches that the refined oil or fat is specially a crude oil or fat (claim 2; col. 2, lines 50-53) which may be selected from sunflower oil and rice oil (col. 6, lines 30-36). Step (1) in the refining method comprises the pre-treatment of crude oils and fats. Pre-treatment includes the physical removal of impurities from the oil by filtration or sedimentation and degumming by acids (col. 3, lines 29-32). Specifically, step (1) (a) comprises a conventional degumming step (col. 3, lines 40-44; claim 3). Step (1) (b) further comprises the step of treating the oil with an aqueous solution of acids to insolubilize any remaining gummy substance in the oil (col. 3, lines 57-62; claims 4 and 8). Therefore, step (1) as a whole reads on degumming the composition as recited in instant step (b). Step (6) of refinement comprises a steam distillation step (deacidification and deodorization), which entails a conventional steam distillation method (col. 3, lines 36-51; claims 7-8). Example 2 teaches that conventional steam distillation of a degummed oil is performed at 260oC (col. 7 lines 21-25), thus reading on the deodorizing step of (c).
Regarding claim 5: Degumming of the crude oil is performed with a conventional degumming step. Water and known degumming agents can be used (col. 3, lines 40-45). The crude oil or degummed oil can further be treated with an aqueous solution of acids to insolubilize the remaining gummy substances, (col. 3, lines 57-62; claims 4 and 8), further reading on a degumming step. The use of water or an aqueous solution reads on a water degumming as instantly recited.
Regarding claim 7: Step (5) of the refinement process includes treatment with an adsorbent (decolorization) (col. 5, lines 26-35; claims 6-8), which reads on an adsorption step after water degumming.
Regarding claim 8: The oil is treated directly with an adsorbent such as activated clay or active carbon (col. 5, lines 26-35). Examples 2, 4-6, and 8 specifically teach using activated clay for decolorizing the oil (col 7-col. 9). Activated clay is a hydrophilic absorbent as evidenced by USGS.
Regarding claim 9: Examples 2, 4-6, and 8 use 1.5% or 2% by weight of activated clay as the adsorbent (col 7-col. 9), which falls within the instantly claimed range of the absorbent (i.e., 0.5-5%).
Regarding claim 10: The decolorization step of Examples 2, 4-6, and 8 is performed by contacting the oil and clay at temperatures of 100oC, 105oC, or 110oC (col. 7-9), all of which fall within the instantly claimed temperature range (i.e., 50-120oC).
Regarding claim 12: Example 2 teaches a conventional deodorization step comprising steam distillation for 60 minutes (col. 7, lines 19-25), which falls within the instantly claimed range of at most 4 hours.
Regarding claim 13: Example 2 teaches a conventional deodorization step comprising steam distillation under a reduced pressure of 2 mmHg (i.e., ~2.6 mbar) (col. 7, lines 19-25), which falls within the instantly claimed range of at most 5 mbar.
The teachings of Watanabe differ from that of the instant invention in that Watanabe does not explicitly teach providing a composition comprising an oil and plant-derived wax as defined in step (a) of claims 1-4, nor the specific selection of the gumming agent of claim 6, the temperature of claim 11, or the dry fractionation step of claim 14. Lastly, Watanabe does not explicitly teach a food or cosmetic application as recited in claim 17.
Loh disclose compositions which comprise a vegetable oil and plant-derived wax component, specifically for their utility in food products (abstract). The plant-derived wax component is selected from the group consisting of sunflower oil wax, rice bran wax, hydrogenated jojoba oil, and corn oil wax. The plant-derived wax component can be about 0.1 to 30% by weight, preferably about 2% to 4% by weight, of the composition (p. 1-2, bridging paragraph). Crude sunflower oil typically contains up to about 1% of wax, depending on the variety and on growing and processing conditions (p. 4, para. 2). Rice bran oil (also called rice oil) contains approximately 2% to 5% wax, depending on process conditions (p. 4, para. 4). Thus, the crude sunflower oil and rice bran oil of Loh read on the compositions comprising an oil and plant-derived wax as characterized by claims 1-4. Loh teaches that typically, the vegetable oil has been refined, bleached, and deodorized prior to blending with the wax component (p. 3, para. 1; p. 6, para. 6).
Loh further teaches that wax can be obtained from vegetable oils by heating vegetable oils to a temperature above the melting point of the higher melting glycerides in the oil, then rapidly cooled and allowed to mature at a temperature of about 16oC or less for at least about 6 hours to permit the wax in the oil to crystallize, and filtering the vegetable oil/particulate wax blend through a porous nonmetallic inorganic filter to obtain a plant-derived wax. When sunflower oil is dewaxed according to this method, sunflower oil is obtained with typically less than 10 ppm wax. The by-product of this processing, sunflower oil containing approximately 1% wax, can be used directly to formulate products or can be further enriched for wax content by repeating the crystallizing and filtering steps described above (p. 5, para. 3). Such a process reads on a dry fractionation step as recited in claim 14.
Fat compositions of Loh can be used to formulate various food products (p. 10-11, claim 39) and non-food products including cosmetics (p. 12, para. 2, claim 41), which read on the applications recited in claim 17.
Regarding step (a) of claim 1, Watanabe teaches the refinement of crude oils and fats selected from sunflower oil and rice oil. Loh teaches some crude sunflower oils to comprise about 1% of wax while rice bran oil (i.e., rice oil) comprises about 2 to 5% wax. It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to select crude sunflower or rice oil as the starting material for the refinement method of Watanabe since such oils are known and routine in the art as taught by both Watanabe and Loh. One of ordinary skill in the art could have used the known refinement technique of Watanabe to refine the crude sunflower or rice oil having the wax contents of Loh (i.e., 1% and 2-5%) to predictably yield an oily product with improved purity and stability. Furthermore, Watanabe teaches that the crude oil may be selected from sunflower or rice oil, making the selection of either one “obvious to try”. See MPEP 2143. The selection of crude sunflower or rice oil reads on step (a), wherein 1% or 2-5% of wax, respectively, reading on the ranges of claims 1 and 2. Crude sunflower oil reads on a composition comprising sunflower oil, as recited in claim 3, and sunflower oil wax, as recited in claim 4. Crude rice bran oil reads on a composition rice bran oil, as recited in claim 3, and rice bran wax, as recited in claim 4. Additionally, because the entire method of claim 1 is made obvious, the resulting composition of claim 16 is necessarily obvious as well. Similarly, since every structural element of the method steps are taught by the prior art, the method necessarily results in a “gel composition”. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
Regarding the degumming agent of claim 6, Watanabe teaches that citric acid and/or phosphoric acid are suitable acids for insolubilizing the gummy substance in the crude oil or that which remains in the degummed oil (col. 4, lines 57-62). Thus, it would have been prima facie obvious to select citric acid or phosphoric acid as the degumming agent in the method of Watanabe since such acids are known and routine for degumming an oil. The use of citric acid or phosphoric acid as the degumming agent would have been obvious to try given the entire teachings of Watanabe. Such a selection entails no more than choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. See MPEP 2143.
Regarding claim 11, as discussed above, Example 2 teaches a conventional deodorization step comprising steam distillation at 260 oC (col. 7, lines 19-25). While a temperature of 260 oC does not fall within the instantly claimed range (i.e., 200-250 oC), a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art by are merely close. See MPEP 2144.05. Additionally, it is well within the abilities of an ordinary artisan to optimize the temperature of the deodorization step depending on the desired amount of deodorization. As such, one of ordinary skill in the art would have arrived at the instantly claimed temperature through no more than routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 14, as discussed above, Loh teaches a crystallization method which involves filtering a crystalized vegetable oil/particulate wax blend through a porous nonmetallic inorganic filter to obtain a plant-derived wax. The by-product of such processing with sunflower oil for example, is sunflower oil containing approximately 1% wax. It would have been prima facie obvious to one of ordinary skill in the art to perform the crystallization and filtration step of Loh prior to the refining process of Watanabe since such a step is known and routine in the art as taught by Loh. One of ordinary skill in the art could have used the known crystallization and filtration method of Loh to generate an oil-wax mixture, such as sunflower oil containing 1% wax, which could further undergo the refinement process of Watanabe to predictably result in a purified and stabilized oily product. The crystallization and filtration step of Loh reads on dry fractionation as recited in claim 14, since no additional solvent is used. The oil/wax by-product of such a step reads on the semi-solid part of claim 14.
While the temperature of about 16oC, taught in the crystallization step of Loh, does not fall within the instantly claimed range of 20 to 40oC, it is well within the abilities of an ordinary artisan to optimize the temperature depending on the desired level of crystallization. As such, one of ordinary skill in the art would have arrived at the instantly claimed temperature through no more than routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 17, it would have been prima facie obvious to use the composition resulting from the combined method of Watanabe and Loh in a food or cosmetic application since such applications are known and routine for such compositions in the art. Loh teaches using fatty compositions to formulate various food and cosmetic products. Thus, one of ordinary skill in the art could have applied the fatty composition resulting from the combined method of Watanabe and Loh in a known food or cosmetic application to yield predictable results.
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modifications since Watanabe and Loh both teach processing methods for fatty compositions. Additionally, Loh generally teaches the refinement, bleaching, and deodorizing of vegetable oils prior to use. Thus, one of ordinary skill in the art could have combined the processing methods of Watanabe and Loh with a reasonable expectation that such processes are compatible and will successfully produce a fatty product ready for use.
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe and Loh as applied to claims 1-14 and 16-17 above, and further in view of Harris, J. (2019, July 23). Solvent fractionation. AOCS - Lipid Library. (on record), hereinafter Harris.
The combined teaching of Watanabe and Loh are discussed above.
The teachings of Watanabe and Loh differ from that of the instantly claimed invention in that neither explicitly teach the solvent fractionation step of claim 15.
Harris teaches that if there is an oil or fat with triglycerides with a range of melting points present, it is possible to separate them by fractional crystallization. This can then enable products with more specific solid/liquid characteristics to be produced with better functionality in the product and therefore of a higher value. The process “trick” is to crystallize and separate these various triglycerides. The quality of separation of crystals from any remaining liquid oil is called the separation efficiency (SE), where 100% SE means perfect removal of all liquid oil from the crystals (p. 1, final paragraph). Specifically, solvent fractionation makes it possible to achieve SEs of >90% relatively easily compared to typically 60 to 70% for dry (or nonsolvent) fractionation. A higher SE means a purer crystal product which then gives a much sharper melting point. For example, the sharp melting point at about 30°C is what is loved in chocolate (p. 2, para. 1).
It would have been prima facie obvious to one of ordinary skill in the art to perform a solvent fractionation step following the combined method of Watanabe and Loh, since solvent fractionation is known and routine in the art as taught by Harris. One of ordinary skill in the art would have been motivated to perform solvent fractionation on the resulting fatty composition of Watanabe and Loh since solvent fractionation enables products with more specific solid/liquid characteristics having better functionality and higher value. One of ordinary skill in the art could have added the solvent fractionation step of Harris to the oil refinement method of Watanabe and Loh to predictably yield an oily composition with the improved properties taught by Harris.
One of ordinary skill in the art would have had a reasonable expectation of success in making such a modification since Watanabe, Loh, and Harris all teach methods for processing fats and oils.
Response to Arguments
Applicant's arguments filed 06/16/2026 have been fully considered but they are not persuasive:
(1) Applicant argues that Watanabe is in a different field from the subject application, and is an inappropriate starting point (p. 6 of Remarks).
In response to applicant's argument that Watanabe is non-analogous art, Watanabe teaches a method of refining vegetable oils and fats. Several steps in the Watanabe method explicitly read on the instantly claimed method steps. Watanabe is necessarily in the same field of endeavor as the instantly claimed invention given that they both define methods of refining oils and fats via degumming, deodorizing, decolorizing, etc. While the instant invention seeks out to provide a gel composition with a “desirable appearance and outstanding consistency without unpleasant odor” it is not required that the prior art seek out this same technical solution nor are these properties claimed.
(2) Applicant argues that claim 1 specifies the deodorization of “the” degummed composition while Watanabe only describes the steam distillation of a degummed soybean oil after it has been mixed with phosphoric acid and sodium hydroxide, hydrolyzed, treated to remove insoluble material and decolorized (p. 6 of Remarks).
In response to this argument, the instantly claimed method defines a method “comprising” steps (a)-(c). The term comprising is open language that permits additional, unrecited steps. The product which undergoes steam distillation in Watanabe (Ex. 2), starts from a degummed soybean oil. Regardless of the additional steps that occur between degumming the oil and deodorizing it, the method reads on deodorizing “the degummed composition” since it undergoes degumming at some point prior to the deodorization step.
(3) Applicant argues that there is no disclosure that the soybean oil of Watanabe contains 0.5 to 40% by weight of a plant-derived wax, and that the soybean oil is specifically treated to remove “oil foots” before deodorization, meaning any wax would have been removed at this treatment step (p. 6 of Remarks).
It is noted that the instant claims do not define the wax content in the product that results from the instantly claimed method, only the wax content of the starting material in step (a). While Example 2 of Watanabe utilizes soybean oil with an unspecified wax content, Watanabe also teaches that the method can be carried out on sunflower oil and rice oil, which are taught to comprise the instantly claimed amount of wax by Loh (i.e., 1% and 2-5%). The obviousness to use such oils as the starting material is discussed in the rejections above.
(4) Applicant argues that the purpose of the steam distillation step in Example 2 of Watanabe is to recover fatty acids while in the claimed invention, the gel composition results following the deodorization step (p. 6 of Remarks).
In response to this argument, Watanabe explicitly teaches a steam distillation step for deodorizing the oil. The explicitly defined “deodorizing” step of Watanabe reads on the instantly recited “deodorizing” step regardless of the purpose of the step. The steam distillation, deodorizing step of Watanabe is further performed at 260oC which also reads on the instantly claimed deodorizing step performed at a temperature of from 200 to 270 oC.
(5) Applicant argues that it is clear from Watanabe that no gel composition is formed since the metrics used to measure the composition of Example 2 in Watanabe are color, acid value, and phospholipid content, which are typical in the assessment of fluid oils, rather than solid fat content, melting point, and gel character, which are typical in the assessment of fats and gels. Applicant argues that Watanabe would not “necessarily result in a gel composition” since Watanabe fails to disclose all of the steps of the claimed process (p. 6-7 of Remarks).
In response to this argument, the “gel” metrics discussed by the Applicant are not recited in the instant claims. In fact, nothing in the instant claims defines the resulting “gel composition” other than the method used to produce it. As such, the “gel composition” must necessarily be produced from any method which reads on the instantly claimed method. The instantly claimed method is made obvious by the combined teachings of Watanabe and Loh, as discussed above. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
(6) Applicant argues that Loh is directed to an entirely different purpose from that of Watanabe and that the methods of Watanabe and Loh are fundamentally incompatible due to the harsh conditions used to treat the compositions of Watanabe (p. 7-8 of Remarks).
In response to this argument, both Watanabe and Loh teach treatment methods for vegetable oils with Loh further welcoming the pretreatment of the vegetable oil via refinement, bleaching, and deodorizing (p. 6 second paragraph). The Applicant has not provided specific evidence for why the vegetable oils of Loh cannot undergo the “harsh treatment” of Watanabe especially since Loh welcomes refined vegetable oil.
(7) Applicant argues that Loh teaches to first obtain oils which are free of wax, before blending them with a plant-derived wax component. As such, Applicant asserts that a skilled person would not have been taught to replace the soybean oil in Example 2 of Watanabe with an oil and wax blend, rather to add a wax to the fully treated soybean oil which is different than the instantly claimed method. Applicant further asserts that crude sunflower oil which is taught to comprise 1% wax is never disclosed as being used in any process and that Loh explicitly states that there is no need for further treatment. Applicant further argues that sunflower oil and rice bran oil would not have been obvious to select in the method of Watanabe since they are not explicitly used in any of the examples and that their selection is purely based on hindsight knowledge (p. 8-9 of Remarks).
The selection of crude sunflower oil or rice oil as the starting oil in the process of Watanabe is made obvious above. Both of these oils are taught as exemplary oils for the refinement process of Watanabe and their known wax content is taught by Loh, meaning there is no requirement to blend in more wax as argued by Applicant nor is it required that Loh teach further treatment of crude sunflower oils, since the treatment of crude oil is taught by Watanabe. In response to Applicant's argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the instant case, regardless of whether or not sunflower and rice oil are taught in specific examples, they are taught as exemplary oils for the treatment method of Watanabe. As stated in the above obviousness rejection the selection of either one would have been “obvious to try” simply based on their disclosure as known and routine oils to use in the method of Watanabe. See MPEP 2143. Additionally, the use of a known technique (i.e., oil refinement) to improve similar products (i.e., sunflower or rice oil in place of soybean oil) in the same way is considered prima facie obvious. See MPEP 2143.
(8) Applicant argues similar to (3) above, that Example 2 of Watanabe requires the treatment of the composition to remove “oil foots” before the steam distillation step. Thus, even if sunflower or rice oil were used instead of the soybean oil, there would still be no wax present in the composition when the steam distillation step is carried out (p. 9 of Remarks).
As discussed above, the instant claims do not define the wax content in the product that results from the instantly claimed method, only the wax content of the starting material in step (a). Regardless of the intermediate or final wax content, if the starting crude oil comprises the instantly claimed wax content (i.e., sunflower or rice oil) the instantly claimed method is taught.
(9) Applicant argues that Harris does not remedy the deficiencies of Watanabe and Loh, but no specific arguments are made against Harris (p. 9-10 of Remarks).
Conclusion
No claims allowed.
THIS ACTION IS MADE FINAL. 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 SUSANNAH S ARMSTRONG whose telephone number is (571)272-0112. The examiner can normally be reached Mon-Fri 9-5 (Flex).
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/ERIN E HIRT/Primary Examiner, Art Unit 1616