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 .
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 and 15 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance:
-claim 1 recites the broad recitation “the randomly interesterified fat is present in an amount of from 8 to 40 wt%” and the claim also recites “preferably from 18 to 40 wt%” which is the narrower statement of the range/limitation.
-claim 13 recites the broad recitation “interesterified fat is added in an amount of from 5 to 40 wt%” and the claim also recites “preferably from 18 to 40 wt%”
-claim 15 recites the broad recitation “has a ratio of C18 over C16 in a range of from 1.0 to 2.5” and the claim also recites “preferably from 1.0 to 2.0” which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Pederson (WO 2022164378 A1).
Regarding claims 1, 7 and 9, Pederson discloses a cheese analogue (i.e., cheese substitute) comprising 20% to 30% by weight of a fat composition, from 1% to 45% by weight of a starch (i.e., carbohydrates), from 0% to 15% by weight of non-animal protein and from 35% to 65% by weight of water (i.e., aqueous solution)(p. 5/paragraph 3).
Pederson discloses wherein the fat composition is interesterified and comprises from 20% to 85% by weight saturated fatty acid residues; from 10% to 50% by weight of stearic acid residues (C18:0), from 2 to 35% by weight of lauric acid residues (C12:0), and 20% or less of palmitic acid (C16:0) (p. 5/paragraph 3- p. 7/paragraph 5, p. 8/paragraph 6-p. 9/paragraph 6).
While Pederson does not disclose the precisely claimed amount of aqueous solution, carbohydrate and/or protein, interesterified fat or the amounts of lauric, stearic and palmitic acid in the interesterified fat, in the case where the claimed ranges overlap or lie inside ranges discloses by the prior art a prima facie case of obviousness exists (MPEP §2144.05).
Regarding claim 2, Pederson discloses all of the claim limitations as set forth above. Pederson discloses wherein the fat composition comprises a greater amount of stearic acid than palmitic acid wherein the weight ratio of stearic acid (C18:0) to palmitic acid (C16:0) ranges from 1:1 to 12:1 (p. 7/paragraphs 5).
Regarding claims 3 and 4, Pederson discloses all of the claim limitations as set forth above. Pederson discloses the interesterified fat comprises a vegetable oil high in stearic acid and vegetable oil high in lauric acid wherein the vegetable oil high in stearic acid is also high in monounsaturated fatty acids such as oleic acids (C18:1). Pederson also discloses the fat composition is an interesterified blend of from 20-80% by weight shea butter and from 20-80% by weight coconut oil (p. 9/paragraph 4-6).
Given Pederson discloses an interesterified blend of 20-80 wt% shea butter and 20-80 wt% coconut oil, since the present invention discloses an interesterified fat blend of 75 wt% shea butter and 25% wt% coconut oil comprising 11.7 wt% lauric acid (C12:0), 5,2 wt% palmitic acid (C16:0), 32.8 wt% stearic acid (C18:0), 34.7 wt% oleic acid (C18:1) and 5.9 wt% linoleic acid (C18:2) and exhibiting a SUS/SSU ratio of 0.5 (Table 1), the limitations of claims 3 and 4 are satisfied.
Regarding claim 5, Pederson discloses all of the claim limitations as set forth above. Pederson discloses the fat composition is a non-hydrogenated fat composition (p. 7/paragraph 4, claim 4).
Regarding claim 6, Pederson discloses all of the claim limitations as set forth above. Pederson discloses the cheese analogue is plant-based because none of the ingredients originate from animals. Pederson discloses the cheese analogue is suitable for consumption by vegetarians and vegans wherein the composition is substantially free of animal-derived products (p. 14/paragraphs 2-3, p. 16/paragraph 4).
Regarding claims 8 and 10, Pederson discloses all of the claim limitations as set forth above. Pederson discloses wherein the cheese analogue (i.e., cheese substitute) is hard cheese, soft cheese, or spreadable cheese (p. 5/paragraph 2). Pederson discloses cheese that has the ability to be slices or shredded (p. 20/paragraphs 1-3).
Regarding claim 11, Pederson discloses all of the claim limitations as set forth above. Pederson discloses the use of the cheese analogue in food products (p. 16/paragraphs 4-5). Pederson discloses the food product is pizza (e.g., in pizza applications, p. 4/paragraph 3, p. 16/paragraph 5, p. 20/paragraphs 4-5).
Regarding claims 12-14, Pedersen discloses a method of preparing a cheese analogue comprising combining 20% to 30% by weight of a fat composition, from 1% to 45% by weight of a starch (i.e., carbohydrates), from 0% to 15% by weight of non-animal protein and from 35% to 65% by weight of water (i.e., aqueous solution)(p. 5/paragraph 3, p. 21/paragraphs 5-6).
Pederson discloses wherein the fat composition is interesterified and comprises from 20% to 85% by weight saturated fatty acid residues; from 10% to 50% by weight of stearic acid residues (C18:0), from 2 to 35% by weight of lauric acid residues (C12:0), and 20% or less of palmitic acid (p. 5/paragraph 3- p. 7/paragraph 5, p. 8/paragraph 6-p. 9/paragraph 6).
While Pederson does not disclose the precisely claimed amount of interesterified fat or the amounts of lauric, stearic and palmitic acid in the interesterified fat, in the case where the claimed ranges overlap or lie inside ranges discloses by the prior art a prima facie case of obviousness exists (MPEP §2144.05).
Pederson et al. discloses embodiments where a liquid oil is not added (e.g., when the fat composition is an interesterified fat).
Regarding claim 15, Pederson discloses all of the claim limitations as set forth above. Pederson discloses wherein the fat composition comprises a greater amount of stearic acid than palmitic acid wherein the weight ratio of stearic acid (C18:0) to palmitic acid (C16:0) ranges from 1:1 to 12:1 (p. 7/paragraphs 5).
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/863,121. Although the claims at issue are not identical, they are not patentably distinct from each other. Claims 1-15 of copending Application No. 18/863,121 is directed to a cheese analogue and process of making a cheese analogue wherein the cheese analogue wherein cheese analogue comprises protein and/or carbohydrates, an aqueous solutions and a randomly interestereified fat wherein the fatty acid moiety of the randomly interesterified fat has a content of lauric acid (C12) in a range of from 5 wt% to 20 wt% and a content of palmitic acid (C16) and stearic acid (C18) in a range of from 30 to 55 wt% on total weight of the fatty acid moiety, and the randomly interesterified fat is present in an amount of from 5 to 40 wt%. While claim 1 of the present Application No. 18/863,107 does the not recited the precisely claimed amounts of the interesterified fat or lauric acid, palmitic acid or stearic acid content as in copending Application No. 18/863,121, a prima facie case of obviousness exists where the claimed ranges overlap, lie inside, or are merely close to the ranges disclosed by the copending application.
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 ELIZABETH A GWARTNEY whose telephone number is (571)270-3874. The examiner can normally be reached M-F: 9 a.m. - 5 p.m. EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ELIZABETH A. GWARTNEY
Primary Examiner
Art Unit 1759
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759
Prosecution Insights