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
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 1-13 are 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.
Regarding Claims 1 and 11, the claim language “an aqueous phase with dissolved sweetener in an oil phase containing vegetable fats and oils so as to have a particle diameter of 50 to 2000nm” renders the claim indefinite because it is not clear which element of the claim has the particle diameter of 50 to 2000nm. According to Claim 8, it is apparent that Applicant intends to associate the particle diameter with the aqueous phase when dispersed in the oil phase. The language of Claims 1 and 11 should be amended accordingly to clearly convey that the particle diameter is associated with the aqueous phase with dissolved sweetener. Appropriate corrections are required.
Claims 2-7 and 12-13 are rejected based on their dependency on a rejected claim.
Regarding Claims 5-7, the claims are directed to a concentration of a sweetener within a processed food brought by the aqueous phase; however, Claim 1 does not recite any step in which the aqueous phase is incorporated or associated with a processed food. While the preamble of Claim 1 recites “a method of imparting an animal-fat-like flavor to a processed food product”, the body of the claim does not actively recite any step involving the processed food product. Therefore, it is not clear how the aqueous phase is associated to the processed food product or if the oil phase is the processed food product. For purpose of applying prior art, the oil phase will be construed as the processed food product.
Regarding Claim 8, the term “an oil phase” recited in the last line of the claim renders the claim indefinite because it is not clear if this is an additional oil phase, or intended to refer to the “oil phase containing vegetable fats and oils” recited in lines 1-2. In the latter case, “an oil phase” in the last line should be amended to “the oil phase”. Appropriate corrections are required.
Claims 9-10 are rejected based on their dependency on a rejected claim.
Regarding Claim 11, step (B) recites “a water-in-oil emulsion composition obtained in the step (A)”’; however, the language is unclear because step (A) does not recite “a water-in-oil emulsion composition”. It appears Applicant is equating the aqueous phase dispersed in the oil phase as the “water-in-oil emulsion composition obtained in step (A)”; however, the language in step (B) should be amended such that the elements of step (A) is transformed to a water-in-oil emulsion, for example:
“a step (B) of blending the dispersed aqueous phase with dissolved sweetener in the oil phase obtained in step (A) to form a water-in-oil emulsion” or like thereof. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3, 4, 8-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kato et al. (US 2020/0347300 – cited in IDS filed 10/28/2024).
Regarding Claims 1 and 8, Kato discloses a method for imparting an animal-fat-like flavor (aqueous phase) to a processed food product (oil phase), the method comprising dispersing an aqueous phase with dissolved sweetener (paragraph 127) in an oil phase containing vegetable fats and oils (soybean oil and rapeseed oil, paragraph 130) so as to have a particle diameter of 300nm (“the aqueous phase with a particle size of 300 nm or less is dispersed in the oil phase”, paragraph 133).
Regarding Claims 3 and 9, Kato further teaches wherein the sweetener is one or more selected from the group consisting of maltose, glucose, and sucrose (paragraph 127).
Regarding Claims 4 and 10, Kato further teaches wherein the sweetener is maltose (paragraph 127).
Regarding Claim 11, Kato discloses a method for producing a processed food product containing an oil phase containing vegetable fats and oils (soybean oil and rapeseed oil, paragraph 130), the method comprising:
a step (A) of dispersing an aqueous phase with dissolved sweetener (paragraph 127) in the oil phase so as to have a particle diameter of 300 nm (“the aqueous phase with a particle size of 300 nm or less is dispersed in the oil phase”, paragraph 133); and
a step (B) of blending a water-in-oil emulsion composition obtained in the step (A) to prepare the processed food product (paragraph 158).
Regarding Claim 12, Kato further teaches wherein the sweetener is one or more selected from the group consisting of maltose, glucose, and sucrose (paragraph 127).
Regarding Claim 13, Kato further teaches wherein the sweetener is maltose (paragraph 127).
Claim Rejections - 35 USC § 103
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.
Claim(s) 2 and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al. (US 2020/0347300 – cited in IDS filed 10/28/2024).
Regarding Claim 2, Kato is silent to specifically reciting a concentration of the sweetener in the aqueous phase in an amount of 15 to 75%; however, Kato discloses an aqueous phase containing a water-soluble antioxidant in an amount of 2.5 to 65wt%, and further containing carbohydrate, which includes sweeteners, in an amount such that the total water-soluble solid is 18 to 79wt% (paragraph 65 and 69). Therefore, Kato is construed to further teach wherein a concentration of the sweetener in the aqueous phase is up to 76.5 mass% in terms of solid content (the total water-soluble solids in the aqueous phase, 79wt%, minus a minimum of 2.5wt% water-soluble antioxidant, paragraph 65). 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). See MPEP 2144.05.i.
Regarding Claims 5-7, Kato further teaches wherein the sweetener brought into the processed food product by the aqueous phase is an amount encompassing 4 to 1000 ppm in terms of solid content. That is, Kato discloses a processed food product that comprises the aqueous phase in an amount of 1 to 38% by weight (paragraph 65), and up to 76.5% of the aqueous phase comprises the sweetener (see rejection of Claim 2). Therefore, the composition of Kato presents a concentration of sweetener brought by the aqueous phase in an amount up to 29.07% by weight (76.5% x 0.38) which equates to 290,700ppm thereby encompassing the claimed range. 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). See MPEP 2144.05.i.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THANH H NGUYEN whose telephone number is (571)270-0346. The examiner can normally be reached 10am-6pm.
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/T.H.N/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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