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 1-16 are pending in this application. Claims 1-10 are under examination. Claims 11-16 are withdrawn.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10 in the reply filed on 03/25/2026 is acknowledged. Claim 11-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention(s), there being no allowable generic or linking claim.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 4 and 5 are objected to because of the following informalities:
Claims 4 and 5 recite, “vegetable fat or oil.” For clarity, the word “vegetable” should be added before “oil” to indicate that the claims require vegetable oil and not just any type of oil. The limitations in claims 4 and 5 would then read as follows, “vegetable fat or vegetable oil.” Appropriate correction is required.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Bourke US 20040076731 (cited on IDS dated 12/21/2023) as evidenced by Kerry, Admul MG Safety Data Sheet, www.univarsolutions.com/proxy/index..., Date: 6/24/2015 (hereinafter, Kerry).
Regarding claims 1-3, Bourke teaches a powdered whipping agent (powdered fat composition; Abstract, [0019], [0023] claim 1) suitable for preparing a whipped topping (the dried powdered fat emulsion product can be used for the preparation of topping cream and whipped cream; [0042]), as required by claim 1. Bourke discloses the whipping agent comprising by weight of the whipping agent (a) 10-80 wt.% fat, preferably 20-80 wt.% fat (crystallizing fat; [0024], [0030]), as required by claim 1. This encompasses the claimed wt. % fat of 20-57 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).
Bourke teaches the powdered whipping agent (powdered fat composition; [0023]) comprises an emulsifier [0026], where the emulsifier is used singly or in combination with other emulsifiers [0034], [0038]. Bourke teaches (b) an alpha-tending emulsifier selected from lactic acid esters of mono and/or diglycerides of fatty acids (organic acid ester derivatives of mono and diglycerides, such as lactoglycerides (Lactem)), acetic acid esters of mono and/or diglycerides of fatty acids (organic acid ester derivatives of mono and diglycerides, such as acetoglycerides (Acetem)), and mixtures thereof [0034], as required by claim 1. Bourke teaches the combination of emulsifiers can be in the composition at 0.3-20 wt.% [0026], [0038]. Thus, a person of ordinary skill can envisage the alpha-tending emulsifier being in the composition with one or more other emulsifier(s) at an amount of 0.3-19.9 wt.%. This encompasses the claimed range for claim 1 of 1-5.5 wt.%. See MPEP 2144.05(I).
Bourke teaches (c) a nonionic mono- and/or diglycerides of fatty acids having an acyl chain of 14-20 carbon atoms (mono- and diglycerides of fatty acids, such as Admul MG; [0034]), as required by claim 1. Bourke teaches the nonionic mono- and/or diglycerides of fatty acids comprise unsaturated acyl chain, as required by claim 2 and comprise a saturated acyl chain, as required by claim 3 ((mono- and diglycerides of fatty acids, such as Admul MG; [0034]). Regarding carbon chain length and carbon saturation or carbon unsaturation of the acyl chains in the emulsifier Admul MG, Kerry evidences that the Admul MG emulsifier comprises fatty acids having an acyl chain of 14-18 carbon atoms and comprises unsaturated acyl chains and saturated acyl chains (Glycerides, C14-C18 and C16-C18 unsaturated mono- and di-; Pg. 1, Section 1. Identification, Chemical name and Other means of Identification). Thus, the Admul MG emulsifier, as taught by Bourke, is considered to meet the limitation of having an acyl chain of 14-20 carbon atoms, as required by claim 1, and comprising unsaturated acyl chain, as required by claim 2, and saturated acyl chain, as required by claim 3.
Bourke also teaches the combination of emulsifiers can be in the composition at 0.3-20 wt.% [0026], [0038]. Thus, a person of ordinary skill can envisage component (c) the nonionic mono- and/or diglycerides, being in the composition with one or more other emulsifier(s) at an amount of 0.1-19.9 wt.%. This encompasses the claim 1 range of 0.2-2.0 wt.%. See MPEP 2144.05(I).
Bourke discloses the powdered whipping agent (powdered fat composition; [0023]) comprises (d) 0.5-15 wt.% proteinaceous emulsifier (one or more proteins for the formation of the emulsion; [0025]). This encompasses the claim 1 range of 1.0-5 wt.% proteinaceous emulsifier. See MPEP 2144.05(I).
Bourke discloses the powdered whipping agent (powdered fat composition; [0023]) comprises (e) carbohydrates, where the balance of the formula is made up of carbohydrates [0028]. When considering the wt.% ranges of the other required ingredients in the formula [0023-0027], the carbohydrates may be in the powdered whipping agent from 0.1-88.7 wt. %. This encompasses the claim 1 range for carbohydrates of 25.5-75.0 wt.%. See MPEP 2144.05(I).
Bourke teaches the composition comprises 0.5-6 wt.% moisture (water; [0027]). This overlaps the claim 1 range for moisture of 0.1-4.0 wt.% moisture. See MPEP 2144.05(I).
Regarding claim 4, Bourke discloses the powdered whipping agent according to claim 1, as discussed above. Bourke teaches the fat or oil in the composition may comprise vegetable oil or vegetable fat (crystallising fat of vegetable origin).
Bourke teaches the vegetable fat or vegetable oil (crystallising fat of vegetable origin) may be used singly or in combination with other fats (Claim 3, [0030]). Thus, it can be envisaged that the fat or oil comprises 100% vegetable fat or vegetable oil (crystallising fat of vegetable origin used singly in the powdered fat composition; claim 3), since it may be used singly in the composition. This is within the claimed range of more than 80% of the fat or oil comprises vegetable fat or vegetable oil.
Regarding claim 5, Bourke discloses the powdered whipping agent according to claim 4, as discussed above. Bourke teaches wherein the vegetable fat or vegetable oil is selected from the group consisting of palm oil, palm kernel oil (lauric fats), coconut oil (lauric fats), and mixtures thereof ([0030], claim 3).
Regarding claims 6-7, Bourke discloses the powdered whipping agent according to claim 1, as discussed above. As noted in the above rejection, the composition of Bourke comprises 10-80 wt.% fat [0024] or preferably 20-80 wt.% fat, and the envisaged range of 0.3-19.9 wt.% for alpha-tending emulsifier or optimally an envisaged range of about 2-19.9% [0034], [0038]. Thus, Bourke discloses the weight/weight ratio of the fat to the alpha-tending emulsifier of 0.5:1 to 266:1, or a preferred/optimal ratio range of 1:1 to 40:1. This overlaps the claimed range of the weight/weight ratio of fat or oil to alpha-tending emulsifier for claim 6 of 10 or higher or in other words a ratio range of ≥10:1; and overlaps the claimed range for claim 7 of 30 or lower, or in other words a ratio range of ≤30:1. See MPEP 2144.05(I).
Regarding claim 8, Bourke discloses the powdered whipping agent according to claim 1, as discussed above. Bourke teaches the composition further comprises (g) 0-10 wt.% of additional components selected from stabilizer, hydrocolloids (gelling agent, thickener), and combinations thereof [0029]. This encompasses the claimed range of 0.1-1.5 wt.% of additional components. See MPEP 2144.05(I).
Regarding claim 9, Bourke discloses the powdered whipping agent according to claim 1, as discussed above. Bourke teaches the composition wherein the proteinaceous emulsifier is a milk protein (a protein selected from dairy origin such as sodium caseinate) or a plant protein (a protein selected from vegetable origin like rice) or a combination thereof ([0032], claims 4 and 5). Bourke teaches in claim 5 that the protein is selected from a group consisting of either proteins from milk (dairy) or vegetable origin or mixtures thereof. Thus, the proteinaceous emulsifier of Bourke (one or more proteins, for the formation of the emulsion) may have 100 wt.% of proteinaceous emulsifier from a milk protein or plant protein or combinations thereof, since they can be used singly or in combination ([0025], [0032], claims 4 and 5). This is within the claimed range of at least 50 wt.% of the proteinaceous emulsifier is a milk protein or a plant protein or combinations thereof.
Regarding claim 10, Bourke discloses the powdered whipping agent according to claim 1, as discussed above. Bourke teaches the composition comprises carbohydrates. Bourke does not specify which type of carbohydrate is used, such as lactose, but in an example states “sugar” is used [0069]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Bourke to use any sugar, including lactose, with the composition as taught by Bourke. See MPEP 2144.08.
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 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 8-10 of copending Application No. 18/392,755 (hereinafter ‘755). Although the claims at issue are not identical, they are not patentably distinct from each other.
Conflicting claim 1 of ‘755 teaches a powdered whipping agent. This reads on 1 of the instant application.
Conflicting claim 1 teaches the composition comprises by weight of the whipping agent (a) 57-70 wt.% fat or oil. This reads on instant application claim 1 that has the same end point of 57 wt.% fat or oil. See MPEP 2144.05(I).
Conflicting claim 1 teaches the composition comprises (b) 1.0-6.5 wt% of an alpha-tending emulsifier selected from the group consisting of lactic acid esters of mono and/or diglycerides of fatty acids, acetic acid esters of mono and/or diglycerides of fatty acids, propylene glycol monostearate, and mixtures thereof. This reads on instant application claim 1.
Conflicting claim 1 teaches the composition comprises (c) 0.2-2.0 wt.% of nonionic mono- and/or diglycerides of fatty acids having at least one acyl chain of 14-20 carbon atoms. This reads on instant application claim 1.
Conflicting claim 1 teaches the composition comprises (d) 1.0-5.0 wt.% proteinaceous emulsifier. This reads on claim 1 of the instant application.
Conflicting claim 1 teaches the composition comprises (e) 18-35 wt.% carbohydrates. This reads on instant application claim 1, which has an overlapping range for carbohydrates. See MPEP 2144.05(I).
Conflicting claim 1 teaches the composition comprises (f) 0.1-4 wt.% moisture. This reads on instant application claim 1.
Conflicting claim 1 teaches wherein the weight/weight ratio of the fat or oil to the alpha-tending emulsifier is 10 or higher. This reads on claim 6 of the instant application.
Conflicting claim 1 teaches wherein the weight/weight ratio of the fat or oil to the alpha-tending emulsifier is 30 or lower. This reads on claim 7 of the instant application.
Conflicting claim 2 of ‘755 reads on instant application claim 2.
Conflicting claim 3 of ‘755 reads on instant application claim 3.
Conflicting claim 4 of ‘755 reads on instant application claim 4.
Conflicting claim 5 of ‘755 reads on instant application claim 5.
Conflicting claim 8 of ‘755 reads on instant application claim 8.
Conflicting claim 9 of ‘755 reads on instant application claim 9.
Conflicting claim 10 of ‘755 reads on instant application claim 10.
Conclusion
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/S.R.G./Examiner, Art Unit 1791
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759
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