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 the Application
The status of the claims stands as follows:
Pending claims: 1-16
Withdrawn claims: None
Canceled claims: None
Claims currently under consideration: 1-16
Currently rejected claims: 1-16
Allowed claims: None
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 9 is objected to because of the following informalities: the claim recites “StStO” and “StOSt” but are presumed to be intended to recite “SatSatO” and “SatOSat”, respectively, in accordance with the limitation of claim 1. 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.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Tatsumi et al. (U.S. 4,032,405) in view of Lidefelt (Lidefelt, J. O., “Handbook of vegetable oils and fats,” Chapter 5, Second Edition, ISBN 978-91-633-1420-9 (2007), pp. 64-98).
Regarding claim 1, Tatsumi et al. states: “there have been proposed various cacao butter substitutes having similar melting properties to those of the natural cacao butter. One of the cacao butter substitutes is S2U-rich fats and oils, such as vegetable butters (e.g. shea butter, illipe butter, Borneo tallow, phulwara butter, or kokum butter)” (C1, L35-L40). Tatsumi et al. thus effectively discloses a fat composition comprising a vegetable fat phase.
Tatsumi et al. does not disclose the fat composition as comprising the claimed fatty acid profile.
However, Lidefelt discloses: “Shea fat is rich in symmetrical monounsaturated triglycerides of the SOS type. If these are concentrated by means of fractionation, shea fat becomes a useful ingredient for cocoa butter equivalents.” (p. 86, ¶5).
It would have been obvious to one having ordinary skill in the art to produce a fat composition comprising the claimed fatty acid profile. As noted, Tatsumi et al. discloses shea butter and phulwara butter as being suited for cacao butter substitutes (C1, L35-L40). MPEP 2144.06 I states: “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” Mixing shea butter and phulwara in any relative concentrations would thus be obvious to a skilled practitioner. Further, the instruction in Tatsumi et al. that S2U-rich fats/oils are preferred (C1, L37-L38) would prompt a skilled practitioner to consult Lidefelt for clarification regarding the fatty acid profile of shea butter. Lidefelt discloses that shea butter comprises primarily StOSt and StOO (p. 85, table). Considered together with the instruction that fractionation of shea butter is beneficial for its use as an ingredient in a cocoa butter equivalent (p. 86, ¶5), a skilled practitioner would find the use of a shea stearin fraction in a mixture with phulwara to be obvious.
MPEP 2112.01 I states: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” The present specification indicates that a mixture of 54% phulwara oil and 46% shea stearin exhibits a fatty acid profile that aligns with the ranges claimed (pp. 11-12, Table 2, CBE I). Since a product produced according to Tatsumi et al. and Lidefelt comprising a mixture of phulwara oil and a shea stearin fraction in any relative amount was determined to be obvious and the claimed product may be produced by a substantially identical process, the claimed fat composition comprising the claimed fatty acid profile is considered obvious to a skilled practitioner.
As for claims 2-9, the previous rationale detailed in relation to claim 1 likewise applies, such that each of the slightly narrowed concentration ranges would still be obvious to a skilled practitioner.
As for claims 10 and 11, the previous rationale detailed in relation to claim 1 likewise applies, such that a blend comprising phulwara oil and a shea oil would be obvious.
As for claims 12 and 13, the previous rationale detailed in relation to claim 1 likewise applies, such that any relative concentrations of the two noted oils would be obvious, including the claimed concentrations of 40-85% by weight phulwara oil (claim 12) and 15-60% by weight shea oil (claim 13).
As for claim 14, Tatsumi et al. discloses the composition as being a cocoa butter equivalent (C1, L35-L40).
As for claim 15, Tatsumi et al. discloses a method of making a fat composition comprising adding the vegetable fat phase to a confectionary product (C1, L12-L13, L45-L48).
As for claim 16, Tatsumi et al. discloses a confectionary product comprising from 10-60% by weight of a fat composition that is a cocoa butter equivalent (C1, L45-L48).
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 1-4, 8, 15, 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, 10, 11 of copending Application No. 18/850,670. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are merely narrower in scope than those of the ‘670 application. The scope of the co-pending claims encompasses the scope of the present claims, which would consequently be obvious in view of the ‘670 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 JEFFREY P MORNHINWEG whose telephone number is (571)270-5272. The examiner can normally be reached 8:30AM-5:00PM.
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793
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