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/Restrictions
Applicant's election with traverse of Group I (claims 1-8) in the reply filed on 3/20/2026 is acknowledged. The traversal is on the ground(s) that unity of invention does exist between groups I-III as there is technical feature that involves the same special technical feature. This is not found persuasive because as described in the restriction requirement document that Groups I-III do have a common technical feature of “an oil or fat; a wax; and a sucrose fatty acid ester”. This technical feature, although a common feature between the three groups, is not considered a special technical feature as the combination of “an oil or fat; a wax; and a sucrose fatty acid ester” was known in the art at the time of the effective filing of the invention, as taught by CN 112931633A to Li (the patent document translation) where Examples 3 and 4, discloses a gel oil composition comprising sunflower oil, sucrose fatty acid ester and fruit wax, which includes all components of common technical feature in the currently claimed invention. Since the common features of Groups I-III were known, and the common feature is not regarded as a special technical feature as it does not make a contribution over the prior art.
The requirement is still deemed proper and is therefore made FINAL.
In the instant case, since the applicant elected claims directed to the product/apparatus, and if all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims would be considered for rejoinder, provided all claims directed to a nonelected process invention include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
Elected claims 1-8 are pending and claims 9-13 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3, 5-6 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Saotome (JPS5942843A), hereinafter Saotome.
Saotome (JPS5942843A). A copy of full English translation of Saotome is provided with this office action. Although translation pages do not have numbers, there are 4 pages in all with the first page having [0001] written on it just below "DESCRIPTION JPS5942843A". All references to text of Saotome are with respect to this translation. For example, "translation, page 2. 1st two lines" refers to 1st two lines on page 2 of the translation.
Regarding claim 1, Saotome teaches an oil-and-fat composition for food, comprising: an oil or fat (described as "oil and fat" on translation,
page 2, 1st two lines and lines 19-25); a wax (described as "wax" on translation, page 2, 1st two lines and lines 5-15); and a sucrose fatty acid ester (described as "sucrose oy/ ester with an HLB of 3 or less" on translation page 1, see last 4 lines, and as "sucrose fatty acid esters" on translation page 2, lines 5-15).
Regarding claim 3, Saotome (JPS5942843A) teaches oil-and-fat composition for food according to claim 1, wherein the sucrose fatty acid ester has an HLB value of 3 or less (described as "sucrose fatty acid esters with HLB of 3 or less" on translation page 2, lines 5-7), which lies within the claimed range of "an HLB value of O or more and 5 or less".
Regarding claim 5, Saotome teaches the oil-and-fat composition for food according to claim 1, wherein the wax is a vegetable wax (such as "candelilla wax" on translation, page 2, 1st two lines and lines 5-15).
Regarding claim 6, Saotome teaches the oil-and-fat composition for food according to claim 1, wherein the wax is rice bran wax or candelilla wax (see "candelilla/a wax" on translation, page 2, 1st two lines and lines 5-15).
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.
Claim(s) 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Saotome (JPS5942843A), hereinafter Saotome.
Regarding claim 2, Saotome teaches adding sucrose fatty acid ester of 0.1 to
10% by weight (see translation page 1, see last 4 lines) and 0.05 to 0. 7% wax
(see translation, page 2, especially 1st two lines) to oil and fat (see translation, page 2, especially 1st two lines); i.e. a total content of the wax and
the sucrose fatty acid ester can be up to 10.7% (i.e. 10% + 0.7% = 10.7%), which overlaps with the claimed range, and when fatty acid ester is 0.6% and wax is also 0.6% by weight, the content ratio (weight ratio) is 1, which overlaps with the claimed "content ratio (weight ratio) of the sucrose fatty acid ester with respect to the wax is 0.01 or higher and 5.0 or lower". Therefore, it follows that Saotome teaches the oil-and-fat composition for food according to claim 1,
comprising the oil or fat, the wax, and the sucrose fatty acid ester in a total of 30 to 100% by weight, wherein a total content of the wax and the sucrose fatty acid ester is 7.5% by weight or more, and a content ratio (weight ratio) of the sucrose fatty acid ester with respect to the wax is 0.01 or higher and 5.0 or lower.
Regarding the overlapping of ranges between the invention and prior art composition it is noted that in the case where the claimed ranges "overlap or lie inside the ranges disclosed by the prior art" a prima facie case of obviousness exists (In re Wertheim, 541 F2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)).
Regarding claim 4, Saotome teaches the oil-and-fat composition for food according to claim 1, but does not teach wherein a fatty acid constituting the sucrose fatty acid ester "has 10 to 24 carbon atoms". However, Saotome teaches that sucrose fatty acid esters may be used in combination with similar fatty acid esters such as propylene glycol fatty acid esters (see translation, page 2, lines 25-27), which typically has carbon atoms in the recited range of "10 to 24 carbon atoms", which strongly suggests use of similar sucrose fatty acid esters that also have "10 to 24 carbon atoms". It would have been obvious to one of ordinary skills in the art before the time of the effective filing of the claimed invention to modify Saotome so that a fatty acid constituting the sucrose fatty acid ester "has 10 to 24 carbon atoms". The ordinary artisan would have been motivated to modify Saotome for at least the purpose of using sucrose fatty acid esters and other fatty acid esters of similar carbon atom range which affects viscosity that may be important for oil-and-fat composition.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Saotome (JPS5942843A), hereinafter Saotome as applied above further in view of Marangoni et al (US 20210161166A1), hereinafter Marangoni.
Regarding claim 7, Saotome teaches the oil-and-fat composition for food according to claim 1, which is an oleogel, but does not designate it as such. An oleogel is a product of which the majority is an oil fraction but it exhibits solid or solid-like behavior, such as hardness, i.e. resistance to deformation, as taught by Marangoni in para 26.
Marangoni teaches oil and wax based oleogels that are usable as fat substitutes (title and abstract, para 11 and 25) and in para 33 teaches that “oleogel will generally have a melting point that enhances its use as an edible fat substitute, to provide ease of use”. Marangoni in para 27-28 teach oil and claimed waxes, thus Marangoni is pertinent as prior art. Based on the teaching of Marangoni, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to make the product as an oleogel. The ordinary artisan would have been motivated to modify Saotome at least for the purpose of creating a fat substitute or fat mimetic where majority is an oil fraction but it exhibits solid or solid-like behavior with melting point that is similar to that of solid fats, to provide ease of use especially as a fat replacement in animal foods like meats.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Saotome (JPS5942843A), hereinafter Saotome as applied above further in view of Klemann (US 5837300 A), hereinafter Klemann.
Regarding claim 8, Saotome teaches the oil-and-fat composition for food according to claim 1, and teaches use for baked products like cakes and bread but is silent regarding use wherein the food is “a plant-based meat”. Klemann (US 5837300 A) teaches that that fat replacers comprising sucrose esters with oils and wax (Column 5, lines 1-7) may not only be used for baked products like “flavored bread or biscuit spreads”, it is also known to be used for “reformed and comminuted meats; meat substitutes or extenders” (Col. 6, 27-40). Thus, use of replacements fats as taught by Saotome and Klemann can be used in foods including bakery products as well as meats and meat substitutes and meat extenders (Col. 6, 27-40). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Saotome so that the oil-and-fat composition of claim 1 is employed for meat substitutes like “a plant-based meat”. The ordinary artisan would have been motivated to modify Saotome at least for the purpose using a physiologically compatible fat replacement can be used as a full or partial replacement of natural fat in many categories of foods (abstract and Col. 6, lines 27-40 of Klemann) and where a manufacturer/consumer can select desired healthier oils to create vegan foods, including vegan or plant based meat and egg products, while maintaining the textural advantages offered typically by natural animal fats or shortening.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JYOTI CHAWLA whose telephone number is (571)272-8212. The examiner can normally be reached M-F 9:30- 5:30.
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/JYOTI CHAWLA/Primary Examiner, Art Unit 1791
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