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 1-15 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 and 8-15, 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, 8-11, 13 and 18. 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 and 15. The process of Hirai is disclosed to reduce the content of free fatty acids as recited in claim 5 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.
The modification of Hirai with Mellerup yields a process where the feed rate is 1.00 kg/h*m2 to 30.0 kg/h*m2. While this range of feed rate is less than presently claimed, the instantly claimed feed rate has not been demonstrated to have any criticality. As stated in MPEP 2144.05 II A “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) The fact pattern in Aller is relevant to the instantly pending claims. In Aller the claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%. Unlike in Aller where two variables were different between the claims and the prior art, in the present instance, the pending claims only differ from the modification of Hirai with Mellerup by one variable, namely a feed rate of 1.00 kg/h*m2 to 30.0 kg/h*m2 in the prior art and a feed rate of 35 kg/h*m2 to 500 kg/h*m2 in the claims. In alignment with the fact pattern in Aller this difference is a prima facie obvious reflection of the normal desire of scientists or artisans to improve upon what is already generally known. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have optimized the feed rate to balance impurity removal and the speed of the process.
As such, Hirai modified with Mellerup renders obvious the limitations of claims 1-6 and 8-15.
Regarding claim 7, the optimization of the SPE taught by Hirai to remove impurities would target the same impurities targeted by the method of applicant. Hirai further teaches that the oil may be subjected to deodorization treatment which removes aromatic impurities. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have optimized the SPE conditions of Hirai to improve the removal of impurities which involves the removal of impurities that contribute to the aromatic index and therefore the limitations of claim 7 merely reflect the obvious optimization of the prior art.
Regarding claims 18-20, for the reasons enumerated with respect to claim 1, the modification of Hirai with Mellerup renders obvious the limitations of claim 18-20, except Hirai is silent regarding the specific reduction of FFA recited in claim 18. However, given that Hirai is directed toward the removal of fatty acid impurities, it would have been obvious to one of ordinary skill in the art at the time the application was filed to have optimized the SPE conditions to ensure efficient removal of FFA. As such, Hirai modified with Mellerup renders obvious the limitations of claims 18-20.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Hirai USPGPub 20200332221 and Mellerup USPGPub 20160227809 as applied to claim 1 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 16, 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 16 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 1-16 and 18-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17, 19 and 20 of copending Application No. 18721668 (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 1-16 and 18-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 and 18-20 of copending Application No. 187216669 (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.
Response to Arguments
Applicant's arguments filed 9 June 2026 have been fully considered but they are not persuasive.
Applicant’s assertions on pages 7-8 of the remarks about the newly amended claim limitations are addressed in the rejection above.
Applicant’s remarks regarding the double patenting rejections are acknowledged. Applicant traverses this rejection on the basis of lack of indication of allowable subject matter. It is unclear what legal standard applicant is applying in asserting allowable subject matter must be identified in order for a double patenting rejection to be appropriate. Applicant’s traversal is interpreted as a request for these rejections to be held in abeyance until allowable subject matter is identified.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michele L Jacobson/Primary Examiner, Art Unit 1793
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