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 the Application
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-10, 13, 16, 18, 20, and 22
Withdrawn claims: None
Canceled claims: 11, 12, 14, 15, 17, 19, and 21
Claims currently under consideration: 1-10, 13, 16, 18, 20, and 22
Currently rejected claims: 1-10, 13, 16, 18, 20, and 22
Allowed claims: None
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.
Claims 1-10, 13, 16, 18, 20, and 22 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention.
In claim 1, the term “main component” is a relative term which renders the claim indefinite. The term “main” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear whether the term “main” requires some minimum concentration of 6-10 carbon fatty acids.
Claims 2-10, 13, 16, 18, 20, and 22 are rejected due to indefiniteness based on their dependency from claim 1.
Claim 10 recites the limitation “the constituent fatty acid composition” in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, the term is interpreted as applying to the “palm-based oil” of claim 4, due to the deleted limitation of claim 10 indicating that the claim previously depended from claim 4.
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.
Claims 1-10, 13, 16, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Tresser (U.S. 4,430,350), as evidenced by Sanchez et al. (U.S. 2010/0196575 A1).
Regarding claim 1, Tresser discloses an oil comprising randomly interesterified lauric fats/oils and non-lauric fats/oils (C2, L46-L53), where the lauric fat/oil (“Oil A”) may be coconut oil (C2, L54-L60) and the non-lauric fat/oil (“Oil B”) may be non-lauric oil (i.e. palm oil) (C2, L61 – C3, L3).
Tresser does not explicitly disclose Oil A as meeting the claimed criteria.
However, Sanchez et al. discloses that coconut oil comprises 92% saturated fatty acids, specifically, 44.6% lauric acid, 16.8% myristic acid, 8.2% palmitic acid, and 8% caprylic acid, with 6% oleic acid (monounsaturated fatty acid) and 2% linoleic acid (polyunsaturated fatty acid) ([0058]).
The compositional information for coconut oil disclosed in Sanchez et al. indicates the coconut oil of Tresser would contain (a) a medium-chain fatty acid-bound oil and/or fat (MCT) as a raw material oil and/or fat for the randomly interesterified oil (i.e., lauric acid and myristic acid), (b) a content of a saturated fatty acid having from 6 to 10 carbon atoms being from 0.3-30 mass% in a constituent fatty acid composition (i.e., 8% caprylic acid (C8)), where such content is considered to also meet the requirement that the fatty acid having from 6-10 carbons is a “main component” of the constituent fatty acid composition; and (c) a content of a saturated fatty acid having from 12 to 14 carbon atoms being from 45 to 80 mass% in the constituent fatty acid composition (i.e., 44.6% lauric acid (C12) and 16.8% myristic acid (C14)).
Claim 1 is rejected as being obvious, but not necessarily anticipated, since the disclosure of Tresser is considered to be a generic disclosure for which the claimed oil composition would not necessarily be “at once envisaged” due to the nature of the claimed limitations being directed to the composition of constituent components instead of the oil source material per se. MPEP 2131.02 III.
As for claim 2, Tresser discloses a mass ratio of Oil B to Oil A as being from 0.5 to 5.0 (C3, L27-L29).
As for claim 3, Sanchez et al. discloses the coconut oil as comprising 10 mass% or less of oleic acid (i.e., 6% oleic acid) ([0058]).
As for claim 4, Tresser discloses Oil B as being obtained by using a palm-based oil as a raw material (i.e., palm oil) (C2, L61 – C3, L3).
As for claim 5, Tresser discloses Oil B as having a “substantial amount” of oleic acid groups (C2, L61-L65) that also may be palm oil (C3, L2-L3), which is considered to render obvious the use of palm olein as a raw material.
As for claim 6, Tresser discloses the mix as further comprising a palm-based oil/fat (c2, L67 – C3, L3).
As for claim 7, Tresser discloses the mix as further comprising a palm-based oil/fat (c2, L67 – C3, L3). Such a palm-based oil/fat would comprise a “palm middle-melting-point oil”, even though it may not necessarily have been purified from other palm oil components. As such, the disclosure that the oil may be a palm oil renders obvious the claimed requirement that the mix comprises a palm middle-melting-point oil.
As for claim 8, Tresser discloses the mix as further comprising a lauric oil (C2, L54-L60).
As for claim 9, Tresser discloses the lauric oil as being coconut oil (C2, L54-L60).
As for claim 10, Tresser discloses Oil B may comprise palm oil (C3, L2-L3). Sanchez et al. discloses that palm oil comprises 38.7% oleic acid ([0059]), which renders the claimed range of 35-65 mass% of unsaturated fatty acid that is oleic acid obvious.
As for claim 13, Tresser discloses the compositions optionally contain triglycerides with long chain acyl groups (C4, L42-L46), which would include omission of such components. The claimed limitation requiring 5 mass% or less of triglycerides in which only saturated fatty acids having 16 or more carbon atoms are bonded to the triglyceride backbone would thus be obvious.
As for claim 16, Tresser discloses a frozen dessert comprising a coating comprising 30-70% of the oil/fat mixture (C5, L14-L22). Since the oil/fat mixture is used as a coating, a skilled practitioner would expect the relative mass of the oil/fat mixture to relatively small compared to the relative mass of the frozen confection portion, at least including concentrations where the coating is progressively thinner. As such, the claimed limitation requiring a frozen dessert using 1-25 parts by mass of the oil/fat in 100 parts by mass of the frozen dessert would be obvious.
As for claim 22, Tresser discloses a method for improving flavor of a frozen dessert when eaten, the method comprising using the oil/fat mix according to claim 1 in a frozen dessert (C1, L21-L29; C2, L31-L37).
Claims 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Tresser (U.S. 4,430,350), as evidenced by Sanchez et al. (U.S. 2010/0196575 A1), as applied to claim 1 above, and further in view of De Ruiter et al. (U.S. 9,220,285 B2).
Regarding claim 18, Tresser and Sanchez et al. disclose the composition of claim 1.
Tresser does not disclose using to the mix to prepare a frozen dessert in the manner claimed.
However, De Ruiter et al. discloses a method for producing ice cream comprising fat and water (C1, L6-L10; C5, L59 – C7, L4), wherein the fat mixture was blended, pasteurized, homogenized, and cooled (C6, L54-L60).
It would have been obvious to one having ordinary skill in the art to apply the production steps taught in De Ruiter et al. to a fat/oil mixture as taught in Tresser. First, although Tresser is primarily directed toward coating products, the reference indicates that the fat/oil compositions may be used in ice confections in various manners (C5, L36-L38). A skilled practitioner would thus be motivated to consult De Ruiter et al. for alternative uses of such a fat/oil mixture. Since De Ruiter et al. discloses incorporating a fat/oil mixture into an ice cream composition via specific process steps, including forming an emulsion, sterilization, homogenization, and cooling (C6, L54-L60), a skilled practitioner would find applying such confection preparation steps to a fat/oil mixture as taught in Tresser to be obvious.
As for claim 20, De Ruiter et al. discloses freezing the mixture obtained after the previously-noted method steps (C6, L63-L64).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY P MORNHINWEG whose telephone number is (571)270-5272. The examiner can normally be reached 8:30AM-5:00PM.
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793
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