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 Claims
Claims 1-17 are pending in this application. Claims 1-5 are under examination. Claims 6-17 are withdrawn.
Election/Restrictions
Applicant’s election of Group I, claims 1-5, in the reply filed on 07/24/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 6-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention(s), there being no allowable generic or linking claim.
Claim Objections
Claims 1 and 5 are objected to because of the following informalities:
Claims 1 and 5 recite, “HLB.” This abbreviation should be spelled out in full for the first instance of use, “hydrophilic-lipophilic balance (HLB).” Appropriate correction is required.
Claim 1 lines 15-24 recites, “Emulsifier A: one or more emulsifiers…; Emulsifier B: one or more emulsifiers…; Emulsifier C: one or more emulsifiers…; CN36: a triglyceride.” For matters of form, the word “wherein” should be added before the limitation of the emulsifiers, and the word “is” should be added after the recitation of “Emulsifier A”, “Emulsifier B”, “Emulsifier C” and “CN36.” The limitation would then read as follows, “wherein Emulsifier A is one or more emulsifiers…; Emulsifier B is one or more emulsifiers…; Emulsifier C is one or more emulsifiers…; CN36 is a triglyceride.” Appropriate correction is required.
Claim 5 lines 10-16 recites, “Emulsifier A: one or more emulsifiers…; Emulsifier B: one or more emulsifiers…; Emulsifier C: one or more emulsifiers.” For matters of form, the word “wherein” should be added before the limitation of the emulsifiers, and the word “is” should be added after the recitation of “Emulsifier A”, “Emulsifier B” and “Emulsifier C.” The limitation would then read as follows, “wherein Emulsifier A is one or more emulsifiers…; Emulsifier B is one or more emulsifiers…; Emulsifier C is one or more emulsifiers.” Appropriate correction is required.
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.
Claim 5 is 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.
Claim 5 condition (b) recites, “the oil and/or fat contains from 20 to 50 wt.% of lauric hard butter.” It is unclear what conditions need to be met for the limitation “lauric hard butter.” The instant specification, pg. 16 [0028], states that “lauric hard butter refers to an oil and/or fat containing a certain amount of lauric acid and myristic acid, which are the saturated fatty acid having 12 carbons and the saturated fatty acid having 14 carbons in the constituent fatty acid composition.” However, if the lauric hard butter contains “a certain amount of lauric acid and myristic acid” that is not defined, it is unclear how much lauric acid and myristic acid is needed in a fat or oil to be a lauric hard butter. It is also unclear how to define when there is 20-50 wt.% of lauric hard butter in the oil and/or fat composition. For the purpose of examination, if the composition comprises any amount of lauric acid and/or any amount of myristic acid it is considered to meet the claimed limitation.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al., US 20210045404 in view of Ataman Chemicals, Glycerol Monoisostearate, Accessed at: https://www.atamanchemicals.com/glycerol-monoisostearate_u33477/, and Han, What are Sucrose Esters of Fatty Acids made of?, Food Additives, Accessed at: https://foodadditives.net/emulsifiers/sucrose-esters-of-fatty-acids/.
Regarding claims 1 and 2, Watanabe teaches an oily food for coating (fat or oil of the present invention for coating; [0070]), as required by claim 1. Watanabe states that the composition may comprise a fat-free cocoa solid content (cacao mass or cocoa powder) but this is not required and is an optional ingredient [0132]. The examples shown in Table 1 paragraph [0150] of Watanabe do not comprise fat-free cocoa solids. Thus, it would have been obvious for a person of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Watanabe to include none or a small amount within the claim 1 range of fat-free cocoa solids because it is an optional ingredient, that may or may not be present in the composition ([0132], [0150], pgs. 6-7 Table 1 Examples).
Watanabe states that the composition may comprise cocoa butter but this is not required [0132]. The examples shown in Table 1 paragraph [0150] of Watanabe does not comprise cocoa butter. Thus, the cocoa butter content is 0%. This is within the claim 1 range of cocoa butter content from 0-10 wt.%.
Watanabe teaches the oily food for coating satisfies the following conditions of claim 1 1) to 3): condition 1) constituent fatty acids in an oil and/or fat of the oily food (a transesterified fat or oil) contain a total of saturated fatty acid having 12 carbons and a saturated fatty acid having 14 carbons (a content of lauric acid (12:0) in the composition of constituent fatty acids) of 20-50 wt.% [0022], [0026]. This is within the claimed range of 15-50 wt.%.
Condition 2) constituent fatty acids in an oil and/or fat of the oily food contain saturated fatty acid having 16 carbons and a saturated fatty acid having 18 carbons of 30-50 wt.% [0022], [0027]. This encompasses the claimed range of 30-45 wt.%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Condition 3) constituent triglycerides in an oil and/or fat of the oily food contain 9.9 wt. % of CN36 (pg. 9, Table 3, Example 1 composition, row CN36). This is within the claimed range from 5-16 wt.%. Claim 1 further defines CN36, stating that CN36 is a triglyceride in which a total number of carbons of constituent fatty acids is 36 in the triglycerides in the oil and/or fat.
Watanabe teaches the composition may comprise two or more kinds of emulsifiers generally used for manufacturing chocolates and gives the example of sucrose fatty acid esters [0132-0133]. However, Watanabe does not teach an emulsifier selected from glycerin fatty acid esters, the hydrophilic-lipophilic balance (HLB) of the emulsifiers, or the main constituent fatty acid of the emulsifiers.
Ataman Chemicals teaches emulsifier A: one or more emulsifiers selected from glycerin fatty acid esters (glycerol monoisostearate or glycerol ester of stearic acid is commonly used as an emulsifier in foods; pg. 1 Title, pg. 1 third and second to last sentences on the page), as required by claims 1 and 2. Ataman Chemicals disclose that glycerin fatty acid esters (glycerol monoisostearate) are used in chocolate products to provide good fat dispersion even at high temperatures, reduces stickiness and separation during production and storage, improves texture and consistency, reduces crystallization of sugar and reduces blooming and loss of product-specific gloss (pg. 4 paragraph 2). Ataman Chemicals states that the HLB value is typically between 3 and 4 (pg. 8, 9th full paragraph from top of page). This is within the claim 1 range of less than 9. Ataman Chemicals teaches the emulsifier contains, as a main constituent fatty acid, a saturated fatty acid having 18 carbons (the glycerol ester of stearic acid; pg. 1 third to last sentence). This is within the claim 1 range of 16 to 24 carbons.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Watanabe to incorporate the teachings of Ataman Chemicals by having emulsifier A as claimed in claim 1 and claim 2 because glycerin fatty acid esters (glycerol monoisostearate) provide good fat dispersion even at high temperatures, reduce stickiness and separation during production and storage, improve texture and consistency, reduce crystallization of sugar and reduces blooming and loss of product-specific gloss, as recognized by Ataman Chemicals (pg. 4 paragraph 2).
As discussed above, while Watanabe suggests sucrose fatty acid esters as an example emulsifier [0132-0133], it does not teach the hydrophilic-lipophilic balance (HLB) of the emulsifier, or the main constituent fatty acid of the emulsifier. Han teaches Emulsifier C: one or more emulsifiers selected from sucrose fatty acid esters (sucrose esters of fatty acids), as required by claims 1 and 2. Han discusses that Emulsifier C is an emulsifier that can be used in almost all kinds of emulsions including for chocolate and cocoa products. Han discloses that the emulsifier prevents oils separation, sugar crystallization and fat oxidation, while also reducing any damage that could happen from moisture and heat (pg. 1 paragraph 1, pg. 5 paragraph 1 under heading Chocolate and Cocoa Products). Han teaches that generally the HLB value of the different forms of the emulsifier, where the monoesters range from 10-16, diesters range from 7-10 and triesters range from about 3 to 7 (pg. 3 paragraph 2 under heading Hydrophilic-Lipophilic Balance (HLB)). All these ranges are within the claim 1 range of an HLB value of 3 or more. Han teaches the sucrose fatty acid esters containing, as a main constituent fatty acid, a saturated fatty acid having stearic acid and palmitic acid always present together and commonly used; or in other words, as a main constituent fatty acid, a saturated fatty acid having 16 to 18 carbons (pg. 2 paragraph 1 under heading What are Sucrose Esters of Fatty Acids made of?). This is within the claimed range of a saturated fatty acid having from 16 to 24 carbons.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Watanabe in view of Ataman Chemicals to incorporate the teachings of Han by having emulsifier C as claimed in claim 1 and claim 2 because the emulsifier prevents oils separation, sugar crystallization and fat oxidation, while also reducing any damage that could happen from moisture and heat, as recognized by Han (pg. 1 paragraph 1, pg. 5 paragraph 1 under heading Chocolate and Cocoa Products).
Regarding claim 3, modified Watanabe teaches the oily food for coating according to claim 1, as discussed above. Watanabe teaches wherein the oil and/or fat of the oily food contains a solid fat content at 30°C of 25-55% and at 40°C of 10% or less of the interesterified oil and/or fat (transesterified fat or oil; [0044-0050], [0104]), or in other words contains from 45% to greater than 90% of an interesterified oil and/or fat having a melting point from 30-40°C. This overlaps the claimed ranges wherein the oil and/or fat of the oily food contains from 40-85 wt.% of the interesterified oil and/or fat having a melting point of from 32-42°C. See MPEP 2144.05(I).
Regarding claim 4, modified Watanabe discloses the oily food for coating according to claim 3, as discussed above. Watanabe teaches the interesterified oil and/or fat contained in the oil and/or fat of the oily food satisfies the following conditions 4) to 6). Condition 4) the interesterified oil and/or fat is a random interesterified oil (transesterification method in which an enzyme or a metal catalyst is used to perform an unspecified exchange of fatty acids regardless of bonding positions (random transesterification); the random transesterification is preferred in the present invention; [0104]).
Condition 5) constituent fatty acids in the interesterified oil and/or fat contain a total of 20-50 wt.% of lauric acid (12:0), or as shown in Table 1 Example 1, having a total of 46.5 wt. % of a saturated fatty acid having 12 carbons and a saturated fatty acid having 14 carbons (pg. 7 Table 1 Example 1, [0156]). This is within the claimed range of 25-60 wt.%.
Condition 6) the interesterified oil and/or fat contains from 50.5 wt.% of triglycerides (CN36 to 42) in which a total number of carbons of constituent fatty acids is from 36 to 42 in the triglycerides in the interesterified oil and/or fat (pg. 9 Table 3 Example 1). This is within the claimed range from 30-60 wt.%.
Regarding claim 5, Watanabe teaches an oily food for coating (fat or oil of the present invention for coating; [0070]). Watanabe states that the composition may comprise a fat-free cocoa solid content (cacao mass or cocoa powder), but this is not required and is an optional ingredient [0132]. The examples shown in Table 1 paragraph [0150] of Watanabe do not comprise fat-free cocoa solids. Thus, it would have been obvious for a person of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Watanabe to include none or a small amount within the claim 1 range of fat-free cocoa solids because it is an optional ingredient, that may or may not be present in the composition ([0132], [0150], pgs. 6-7 Table 1 Examples).
Watanabe states that the composition may comprise cocoa butter, but this is not required [0132]. The examples shown in Table 1 paragraph [0150] of Watanabe does not comprise cocoa butter. Thus, the cocoa butter content is 0%. This is within the claim 1 range of cocoa butter content from 0-10 wt.%.
Watanabe teaches an oil and/or fat of the oily food satisfies the following conditions (a) and (b). Condition (a) wherein the oil and/or fat of the oily food contains a solid fat content at 30°C of 25-55% and at 40°C of 10% or less of an interesterified oil and/or fat (transesterified fat or oil; [0044-0050], [0104]), or in other words contains from 45% to greater than 90% of an interesterified oil and/or fat having a melting point from 30-40°C. This overlaps the claimed ranges wherein the oil and/or fat contains from 40-85 wt.% of the interesterified oil and/or fat having a melting point of from 32-42°C. See MPEP 2144.05(I).
Condition (b) the oil and/or fat contains from 20 to 50 wt.% of lauric hard butter (lauric acid; [0087], [0156], claim 1). See 112(b) above. This is the same as the claimed range of 20 to 50 wt.%.
Watanabe teaches the composition may comprise two or more kinds of emulsifiers generally used for manufacturing chocolates and gives the example of sucrose fatty acid esters [0132-0133]. However, Watanabe does not teach an emulsifier selected from glycerin fatty acid esters, the hydrophilic-lipophilic balance (HLB) of the emulsifiers, or the main constituent fatty acid of the emulsifiers.
Ataman Chemicals teaches emulsifier A: one or more emulsifiers selected from glycerin fatty acid esters (glycerol monoisostearate or glycerol ester of stearic acid is commonly used as an emulsifier in foods; pg. 1 Title, pg. 1 third and second to last sentences on the page). Ataman Chemicals disclose that glycerin fatty acid esters (glycerol monoisostearate) are used in chocolate products to provide good fat dispersion even at high temperatures, reduces stickiness and separation during production and storage, improves texture and consistency, reduces crystallization of sugar and reduces blooming and loss of product-specific gloss (pg. 4 paragraph 2). Ataman Chemicals states that the HLB value is typically between 3 and 4 (pg. 8, 9th full paragraph from top of page). This is within the claimed range of less than 9. Ataman Chemicals teaches the emulsifier contains, as a main constituent fatty acid, a saturated fatty acid having 18 carbons (the glycerol ester of stearic acid; pg. 1 third to last sentence). This is within the claimed range of 16 to 24 carbons.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Watanabe to incorporate the teachings of Ataman Chemicals by having emulsifier A as claimed because glycerin fatty acid esters (glycerol monoisostearate) provide good fat dispersion even at high temperatures, reduce stickiness and separation during production and storage, improve texture and consistency, reduce crystallization of sugar and reduces blooming and loss of product-specific gloss, as recognized by Ataman Chemicals (pg. 4 paragraph 2).
As discussed above, while Watanabe suggests sucrose fatty acid esters as an example emulsifier [0132-0133], it does not teach the hydrophilic-lipophilic balance (HLB) of the emulsifier, or the main constituent fatty acid of the emulsifier. Han teaches Emulsifier C: one or more emulsifiers selected from sucrose fatty acid esters (sucrose esters of fatty acids). Han discusses that Emulsifier C is an emulsifier that can be used in almost all kinds of emulsions including for chocolate and cocoa products. Han discloses that the emulsifier prevents oils separation, sugar crystallization and fat oxidation, while also reducing any damage that could happen from moisture and heat (pg. 1 paragraph 1, pg. 5 paragraph 1 under heading Chocolate and Cocoa Products). Han teaches that generally the HLB value of the different forms of the sucrose fatty acid ester emulsifier are as follows: where the monoesters range from 10-16, diesters range from 7-10 and triesters range from about 3 to 7 (pg. 3 paragraph 2 under heading Hydrophilic-Lipophilic Balance (HLB)). All these ranges are within the claimed range of an HLB value of 3 or more. Han teaches the sucrose fatty acid esters containing, as a main constituent fatty acid, a saturated fatty acid having stearic acid and palmitic acid always present together and are commonly used; or in other words, as a main constituent fatty acid, a saturated fatty acid having 16 to 18 carbons (pg. 2 paragraph 1 under heading What are Sucrose Esters of Fatty Acids made of?). This is within the claimed range of a saturated fatty acid having from 16 to 24 carbons.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Watanabe in view of Ataman Chemicals to incorporate the teachings of Han by having emulsifier C as claimed because the emulsifier prevents oils separation, sugar crystallization and fat oxidation, while also reducing any damage that could happen from moisture and heat, as recognized by Han (pg. 1 paragraph 1, pg. 5 paragraph 1 under heading Chocolate and Cocoa Products).
Conclusion
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/S.R.G./Examiner, Art Unit 1791 /Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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