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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
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.
Claims 1-14 are 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.
In claim 1, the limitation “ a fatty acid with a chain length of 16 or more carbons” is vague and indefinite because it’s unclear what is intended. It’s unclear what is intended by a single fatty acid in which the carbons are 16 or more. Fatty acid is defined by the carbon atoms; for instance, palmitic acid has 16 carbons. Palmitic acid can’t be 16 and more. ( For prior art application, it’s interpreted as multiple fatty acids having 16 or more carbons as shown in table 1 of the specification). The limitation “ CN 38 to CN46 triglyceride content in total triglyceride is from 6-37%” is vague and indefinite because it is unclear what is intended by triglyceride content because the oil and/or fat is not recited as triglyceride composition. The fatty acid can be free fatty acids. It’s unclear what total triglycerides referred to. The product being claimed is unclear. The limitation of “ oil and/or fat” is vague and indefinite because it’s unclear what is intended. Oil is a fat but not all fat is oil. It unclear what is intended by oil and fat.
In all relevant claims, the limitation “ oil and/or fat” has the same problem as claim 1.
In claim 2, the limitation “ the total triglyceride” is vague and indefinite for the same reason as claim 1. It’s not clear what triglyceride the claim is referring to because claim 1 does not recite the oil and/or fat is a triglyceride. Claim 2 is further vague and indefinite because it’s unclear how it’s connected and further limit the oil and/or fat recited in claim 1. It’s unclear how the triglyceride in claim 2 is part of the oil and/or fat recited in claim 1.
Claim 3 is vague and indefinite because it’s unclear how claim 3 further limits claim 1 when the range of 1-18% lauric acid is outside of the range ( 1-13%) recited in claim 1. It’s unclear how the recitation in the claim differs from the lauric acid content in claim 1 because lauric acid is a saturated acid.
Claim 4 has the same problem as claim 3.
Claim 11 is vague and indefinite because it’s unclear if the claim is directed to a product or process or product-by-process. The recitation of “ product produced using” is unclear. While the claim recites a chocolate product, there is no recitation of any ingredient indicative of chocolate. There is no recitation of any ingredient other than the oil and/or fat. There is no parameter defining chocolate. It’s not clear what is intended by “ chocolate product”.
Claim 12 is vague and indefinite. While the claim recites fractionating, there is no parameter defining the step, it’s not clear how the method produced that product recited in claim 1. It’s not clear how the total constituent fatty acid of 16 or more carbon in the range of 79-97% and the CN 38 to CN46 triglyceride as recited in claim 1 is obtained in the method of claim 12 because the claim does not define oil that is used to produce such result. As disclosed in the instant specification, specific combination of oils is used to produce the oil and/or fat shown in table 1. The recitation of “ high melting point and low melting point” is vague and indefinite the term low and high are relative. It’s unclear what would be considered as high melting point fraction and low melting point fraction. It’s not clear what the distinction is in the fractioning step to remove the high melting point fraction and high melting point fraction and a low melting point fraction because there is only 1 recitation of fractionating. The claim is further indefinite that there is no recitation that the interesterified oil contains a high melting point fraction and low melting point fraction.
Claim 13 has the same problem as claim 1. The recitation of chocolate product has the same problem as claim 11.
Claim 14 has the same problem as claim 13.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 11 is rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a known asserted utility or a well-established utility.
The claim recites a product but also recites “ produced using” which is a use claim. A use is not a statutory category of invention
Claim 11 is also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a known asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
A recitation of “ produced” which is a process without defining any processing step other than using is not enabling.
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.
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.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ma ( 2021/0022362.
For claims 1, 13 , Ma discloses a fat composition. The fat composition C shown in table 1 comprises C12 ( lauric acid) content of 11.7, .2 of trans fatty acid, fatty acids with c16 or more of 78.9 ( adding the amounts for c16, c18,c18:1, c18:2) and CN 36-46 in amount 25.8%. For claim 1, the recitation of “ for chocolate products” is an intended use which does not determine the patentability of the product. For claim 13, the recitation of “ suppressing transition” is in the preamble which is not given patentable weight because the body of the claim does not depend on the preamble for completeness.( see table 1)
For claims 3,4, Ma discloses the fat composition C comprises 11.7 lauric acid. Ma also discloses the fat composition comprises 13-32% lauric acid. ( see table 1 and paragraph 0009)
For claims 5,6, Ma discloses the proportion of unsaturated acid C18:1, C18:2 in amount of 28.4. ( see table 1, fat C)
For claims 7,8, Ma discloses the fat composition comprises SFC at N10 of 83%, N20 of 62% and N40 of 15. ( see table 1, fat C)
For claims 9-10, Ma discloses the fat composition comprises stearic acid in amount from 20-45%. ( see paragraph 0018)
For claims 11,14, Ma discloses adding the fat composition to confectionery compositions. While the claims recite chocolate product. There is no ingredient or parameter defining the chocolate. Thus, any confectionery product is considered chocolate product. ( see paragraph 0038)
For claim 12, Ma discloses a method of making the fat composition comprising the step of fractionating an interesterified fat blend. ( see paragraphs 0031,0032,0033,0041,0042)
Ma does not disclose 79-97 fatty acid of 16 or more as in claims 1,13 the fat as in claim 2,the SFC at 40 degrees C as in claims 7-8, the amount as in claim 11, the fat as in claim 12 and the method of suppressing as in claim 14.
The fat c disclosed in Ma comprises 78.9% fat containing 16 carbon or more. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Ma discloses different types of oil blend can be used to make the fat composition. Thus, it would have been obvious to one of ordinary skill in the art to select different combination of fats containing certain fatty acid and ratio to give specific type of fatty acids and different solid fat content at 40 degrees depending on the property wanted and the intended use. Such parameter can readily be determined by one of ordinary skill in the art through routine experimentation. It would have been obvious to one skill in the art to determine the amount of fat added depending on the fat content and the taste and flavor wanted. The suppressing property would obviously be present when the fat is added to the confectionery.
Conclusion
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January 9, 2026
/LIEN T TRAN/Primary Examiner, Art Unit 1793