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 .
DETAILED ACTION
Status of Claims
Note: The amendment of October 17th, 2025 has been considered.
Claim 6 has been amended.
Claims 1-21 are pending in the current application.
Claims 1-5 and 14-21 are withdrawn from consideration.
Claims 6-13 are examined in the current application.
Any rejections not recited below have been withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 6-13 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Regarding claim 6: The limitation “…87.5% by stoichiometry of triglycerides” in line 6 is not disclosed in the original application. Although the original application discloses of a stochastic mixture of triglycerides, the original application does not disclose a stochastic mixture of triglycerides where 87.5% of the theoretical yield (i.e., 87.5% by stoichiometry) includes one or more saturated fatty acids with odd carbon chain lengths. Thus, the added limitation recited in claim 6 lacks support in the original disclosure and is considered new matter. Clarification and/or correction is/are required.
Regarding claims 7-13: In view of the fact that dependent claims 7-13 depend on independent claim 6, and since independent claim 6 is rejected under 35 U.S.C. 112(a) for failing to comply with the written description requirement, claims 7-13 are rejected under 35 U.S.C. 112(a) for depending on a claim that fails to comply with the written description.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35 of the U.S. Code not included in this action can be found in a prior Office action.
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 6-13 are rejected under 35 U.S.C. 103 as being unpatentable over NPL Garcia Martinez et al., "Synthetic fat from petroleum as a resilient food for global catastrophes: preliminary techno-economic assessment and technology roadmap" (from Chemical Engineering Research and Design, Volume 177, January 2022, pp. 255-272) and NPL Whitmore, “Organic Chemistry”, in view of NPL Roopashree et al., "Effect of medium chain fatty acid in human health and disease" (from Journal of Functional foods 87 (2021)), NPL Verruck et al., "Dairy foods and positive impact on the consumer's health" (from Advances in Food and Nutrition Research, 2019), NPL Senyilmaz-Tiebe et al., “Dietary stearic acid regulates mitochondria in vivo in humans” (from Naturae Communications (2018) 9:3129), NPL Gao et al. “Isolation and identification of C-19 fatty acids with anti-tumor activity from the spores of Ganoderma Lucidum (reishi mushroom)” (from Fitoterapia 83 (2012) 490-499) and NPL Labarthe et al., “Medium-chain Fatty Acids as Metabolic Therapy in Cardiac Disease” (from Cardiovasc. Drugs Ther. (2008) 22:97-106).
Regarding claims 6 and 8-13: Garcia Martinez discloses synthetic fatty acids that are esterified with glycerol to produce triglyceride fats/oils (see Garcia Martinez abstract; sections 2.3 and 2.4) through a process developed in the 1930’s, wherein a mixture of synthetic fatty acids are attained by the oxidation of paraffins and/or petroleum products, and the mixture of fatty acids is separated into different fractions based on their chain lengths through different distillation techniques, which allows for the isolation of fatty acids with desired properties for further use, such as forming edible triglyceride oils/fats with fatty acids with desired chain lengths (see Garcia Martinez abstract; sections 2.3 and 2.4; see Whitmore, page 256), but fails to disclose the triglycerides comprising the fatty acid profiles recited in claims 8-13; However, Roopashree discloses the health benefits (i.e., immune function improvement, gastro intestinal health, diabetes treatment, Alzheimer’s disease therapy, obesity treatment, cancer therapy and epilepsy treatment) associated with caproic acid (C6:0), caprylic acid (C8:0), capric acid (C10:0) and lauric acid (C12:0) intake (see Roopashree abstract; section 4). Also, Gao discloses the anti-tumor activity/benefits associated with nonadecanoic acid (C19:0) intake (see Gao whole document) and Labarthe discloses the cardiovascular benefits associated with heptanoic acid (C7:0) intake (see Labarthe page 99, left column; page 102, right column, top paragraph). Moreover, Verruck discloses the health benefits (i.e., cardiovascular health) associated with Myristic acid (C14:0) intake (see Verruck page 1) and Senyilmaz-Tiebe further discloses the health benefits (i.e., fat digestion and LDL cholesterol reduction) associated with stearic acid intake (See Senyilmaz-Tiebe abstract; pages 1-2). Therefore, it would have been obvious to a skilled artisan at the time the application was filed, to have modified Garcia Martinez and Whitmore and to have selected synthetic fatty acids with desired health benefits to produce the synthetic triglyceride oils at the relative contents recited in claims 8-13, in order to provide the consumer with the health benefits, and thus arrive at the claimed limitations. As set forth in MPEP §2144.05 discovering an optimum value of a result effective variable, involves only routine skill in the art.
As to the fat composition being liquid, or semi-solid, recited in claim 6: While Garcia Martinez modified by Whitmore, Roopashree, Verruck, Senyilmaz-Tiebe, Gao and Labarthe fails to disclose the physical state of the synthetic triglyceride fat at 18°C-25°C, given the fact that modified Garcia Martinez meets the claimed fatty acid profiles, and since the melting point of a fat depends on the fatty acid/triglyceride profile, it is examiner position the claimed physical state of the fat at 18°C-25°C would flow naturally from the modification of Garcia Martinez by Whitmore, Roopashree, Verruck, Senyilmaz-Tiebe, Gao and Labarthe, as suggested in the prior art. As set forth in MPEP §2145, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
As to the fatty acids being straight chains saturated fatty acids recited in claim 6: Given the fact Roopashree, Verruck, Gao, Labarthe and Senyilmaz-Tiebe disclose the benefits involved in straight chain saturated fatty acids (i.e., caproic, caprylic, capric, lauric, nonadecanoic, heptanoic myristic, and stearic), a skill artisan would not be motivated to combine branched saturated fatty acids (i.e., non-straight saturated fatty acids), and thus arrive at the claimed limitations.
As to the 87.5% stoichiometric content of triglycerides that are odd carbon chain saturated fatty acids recited in claim 6: Garcia Martinez discloses synthetic fatty acids from paraffins and/or petroleum products that are esterified with glycerol to produce triglyceride fats/oils (see Garcia Martinez abstract; sections 2.3 and 2.4), which is the same reactants and process contemplated by applicant. While Garcia Martinez fails to discloses that 87.5% of the theoretical yield (i.e., 87.5% by stoichiometry) includes one or more saturated fatty acids with odd carbon chain lengths, given the fact that Garcia Martinez discloses the same reactants processed through the same method contemplated by applicant, it is examiner’s position the claimed 87.5% stoichiometric content of triglycerides that are odd carbon chain saturated fatty acids is inherently present in Garcia Martinez. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claim 7: While Garcia Martinez modified by Whitmore, Roopashree, Verruck, Senyilmaz-Tiebe, Gao and Labarthe fails to disclose the solid fat content of the synthetic triglyceride fat at 18°C-25°C, given the fact that modified Garcia Martinez meets the claimed fatty acid profiles, and since the melting point and solid fat content profile of a fat depends on the fatty acid/triglyceride profile, it is examiner position the claimed solid fat content of the fat at 18°C-25°C would flow naturally from the modification of Garcia Martinez by Whitmore, Roopashree, Verruck, Senyilmaz-Tiebe, Gao and Labarthe, as suggested in the prior art. As set forth in MPEP §2145, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Response to Arguments
Applicant's arguments filed on October 17th, 2025 have been fully considered but they are not persuasive.
Applicant argues on pages 8-9 of the “Remarks” that the prior art references fail to render the claimed invention obvious, because neither Garcia Martinez, Labarthe, nor any other prior art reference disclose the claimed 87.5% stoichiometric content of triglycerides that are odd carbon chain saturated fatty acids. The examiner respectfully disagrees.
As discussed above, Garcia Martinez discloses synthetic fatty acids from paraffins and/or petroleum products that are esterified with glycerol to produce triglyceride fats/oils (see Garcia Martinez abstract; sections 2.3 and 2.4), which is the same reactants and process contemplated by applicant. While Garcia Martinez fails to discloses that 87.5% of the theoretical yield (i.e., 87.5% by stoichiometry) includes one or more saturated fatty acids with odd carbon chain lengths, given the fact that Garcia Martinez discloses the same reactants processed through the same method contemplated by applicant, it is examiner’s position the claimed 87.5% stoichiometric content of triglycerides that are odd carbon chain saturated fatty acids is inherently present in Garcia Martinez. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Applicant argues on pages 9-10 of the “Remarks” that the prior art references fail to render the claimed invention obvious, because Garcia Martinez discloses the product is margarine-like product which is not liquid or semi-liquid at 18°C-25°C as claimed. The examiner respectfully disagrees.
Given the fact that margarine is considered a semi-solid product, as margarine is spreadable at room temperature, a “margarine-like” product would also be considered a semi-solid product, as it is spreadable at room temperature.
In the alternative, given the fact that Roopashree, Verruck, Gao, Labarthe and Senyilmaz-Tiebe, disclose motivations to choose the claimed fatty acids attained through the method in Garcia Martinez, Garcia Martinez modified by Roopashree, Verruck, Gao, Labarthe and Senyilmaz-Tiebe, would render a composition that is similar to the claimed composition, and thus similar physical state as the claimed composition.
Applicant argues in pages 10-11 of the “Remarks” that the prior art references fail to render the claimed invention obvious, because the prior art references fail to disclose including substantially straight saturated fatty acids, and Verruck discusses the advantages of MUFAs (e.g., oleic acid). The examiner respectfully disagrees.
While Verruck discloses the advantages of MUFAs intake, Verruck also discusses the health benefits associated with myristic acid (C14:0) intake, which would motivate a skill artisan to include myristic acid in the fatty acid mixture. Moreover, given the fact Roopashree, Verruck, Gao, Labarthe and Senyilmaz-Tiebe disclose the benefits involved in straight chain saturated fatty acids (i.e., caproic, caprylic, capric, lauric, nonadecanoic, heptanoic myristic, and stearic), a skill artisan would not be motivated to combine branched saturated fatty acids (i.e., non-straight saturated fatty acids), and thus arrive at the claimed limitations.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The examiner points out that prior art used in the 35 USC §103 rejection above takes into account only knowledge which was within the level of ordinary skill in the art at the time of the claimed invention. Further, as the prior art above predates the claimed invention, it cannot be said to have been copying the instant invention.
Conclusion
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/ASSAF ZILBERING/Examiner, Art Unit 1792