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 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.
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 1-16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hirai USPGPub 20200332221 and Mellerup USPGPub 20160227809.
Regarding claims 1-6, 8-16, 19 and 20, Hirai teaches a method of removing impurities from vegetable oils comprising subjecting raw, unrefined oil to short path evaporation (SPE). [0023,0044] The SPE of Hirai is performed under the following conditions:
Pressure: 0.1000 Pa or less (0.001 mbar or less) [0034]
Evaporator temperature: 80°C-270°C [0028]
Feed rate: 1.00 kg/h*m2 to 30.0 kg/h*m2 [0030]
The ranges of pressure, evaporator temperature and feed rate disclosed by Hirai overlap or encompass the values for these parameters recited in claims 1, 8-10, 13 and 19. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
The process of Hirai yields a retentate and a distillate.[0023] Hirai does not require the refining steps recited in claims 1, 3, 4, 12, 14-16 and 20. The process of Hirai is disclosed to reduce the content of free fatty acids as recited in claims 5 and 19 and diacylglycerides as recited in claim 6.[0023]
Hirai is silent regarding shea butter, cocoa butter, sal oil and illipe oil.
Mellerup teaches short path distillation can be used for purification of vegetable oils including shea butter, cocoa butter, sal oil and illipe oil. [0009,0015]
Hirai and Mellerup are both directed towards removing contaminants from plant oils using SPE. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have used SPE as disclosed by Hirai to remove contaminants from shea butter, cocoa butter, sal oil and illipe oil because these oils are shown by Mellerup to benefit from purification by SPE. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have used shea butter, cocoa butter, sal oil and illipe oil in their raw, unrefined states since Hirai specifically discloses that refinement is not necessary before subjecting plant oils to the SPE disclosed. As such, Hirai modified with Mellerup renders obvious the limitations of claims 1-6, 8-16, 19 and 20.
Regarding claim 7, Hirai teaches the same SPE method claimed and disclosed by applicant to yield the recited Aroma index improvement and therefore it necessarily follows that the method of Hirai would yield the same result.
Regarding claim 18, Hirai in view of Mellerup yields and oil which reads on claim 18.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Hirai USPGPub 20200332221 and Mellerup USPGPub 20160227809 as applied to claim 17 above in further view of Meursing “Cocoa mass, cocoa butter, cocoa powder”, Industrial Chocolate Manufacture and Use, S.T. Beckett ed. Springer Science, 1994, pg. 70-82.
Regarding claim 17, Hirai teaches what has been recited above but is silent regarding filtration.
Meursing teaches that pure press cocoa butter needs no cleaning at all besides filtration. (Pg. 76)
Hirai and Meursing are both directed towards processing of plant lipids. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have used pure press cocoa butter that had only been filtered as the unrefined starting material in Hirai since Mellerup evidences that cocoa butter was known to be suitable for refinement by SPE. This modification of Hirai would produce a method consisting of filtering the starting cocoa butter material followed by SPE processing as claimed. As such, the limitations of claim 17 are rendered obvious by Hirai, Mellerup and Meursing.
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.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18721669 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application teach all of the limitations of the instantly pending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18721672 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application teach all of the limitations of the instantly pending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michele L Jacobson whose telephone number is (571)272-8905. The examiner can normally be reached Monday through Friday from 10-6.
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/Michele L Jacobson/Primary Examiner, Art Unit 1793