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 the Claims
Claims 1-10 are presented for examination on the merits for patentability.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/02/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement was considered by the Examiner.
Specification
A substitute specification including the claims is required pursuant to 37 CFR 1.125(a) because the current Specification is replete with grammatical error, and is not in proper idiomatic English.
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112.
The following, but limited examples are vague because of grammatical errors:
[0002] “Food loss reduction is required also to achieve Goal 12:…”
[0003] “However, many of the naturally occurring antioxidant components have a problem that they are soluble in water and alcohols but are sparingly soluble in oils and fats.”.
[0012] “However, an antioxidant composition described in Patent Literature 3 is a water syrup-like composition having a very high viscosity, and has a problem of being difficult to dissolve in an edible oil and fat.”
[0014] “An object of the present invention is to solve the above-described conventional problems, and to provide an antioxidant composition which can provide a high antioxidant effect by solubilizing an antioxidant component without via an aqueous solvent…”
Applicant is required to submit an amendment which clarifies the disclosure so that the Examiner may make a proper comparison of the invention with the prior art. A substitute specification must not contain new matter. The substitute specification must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) and a statement that the substitute specification contains no new matter must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown.
Applicant is requested to go through the entire specification document to correct any grammatical and spelling errors including those not pointed in this Office Action to facilitate efficient examination.
The disclosure is further objected to because of the following informalities: [0011] and [0021] of the specification refer to “Fig. 1” but should state The Figure as there is only one figure. Appropriate correction is required.
Drawings
The drawings are objected to because there is only one figure and the drawing refers to it as Fig. 1. However, 37 CFR 1.84(u)(1) indicates when there is only one drawing, it must not be numbered and the abbreviation FIG must not appear. Therefore, the figure must be referred to as The Figure. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1, 4-7, and 9-10 are objected to because of the following informalities:
In Claims 1, 4-7, and 9-10, when reciting ranges such as “a content of the antioxidant component is 0.5 parts by mass or more and 40 parts by mass or less….”, the Examiner recommends writing in a clear and concise manner, for example: “wherein the antioxidant component is present in the amount of 0.5 to 40 parts by mass based on 100 parts of the total antioxidant composition and edible oil and fat” or something similar.
Appropriate correction is required.
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 1-10 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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical errors.
Claim 1 recites “wherein the emulsifier comprises a diglycerol oleic acid ester having a monoester content of 40% or more and less than 70% and lecithin, a content of the antioxidant component is 0.5 parts by mass or more and 40 parts by mass or less, a content of the diglycerol oleic acid ester is 1 part by mass or more and less than 70 parts by mass, and a content of the lecithin is 0.1 parts by mass or more and 40 parts by mass or less, with respect to 100 parts by mass of the antioxidant composition”. The sentence structure makes it appear that the content of the antioxidant component and the diglycerol oleic acid ester are also in the emulsifier. Further, the recitation of “and the antioxidant component is solubilized by the emulsifier without using an aqueous solvent” is narrative. The Examiner recommends separating the components with their required amounts/ranges, for example, using semi-colon, numberings, etc. and simplifying the phrasing to exclude the aqueous solvent.
Claims 4-6, 7, and 9-10 recite “heating cooking” and “non-heating cooking”, which are not proper grammar. While the Specification define these terms, the Specification is also objected to for grammatical issues. The Examiner recommends using the term “cooking without heat” or “cooking with heat”, or something similar.
Claims 2, 3, and 8 recite “one… or two or more” and are indefinite because a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation in the same claim is 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). The claim is 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. For example, in Claim 2, it is unclear if one organic acid would meet the required limitation, or if the acids need to be two or more. 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 1-2, 4-7, and 9-10 are rejected under 35 U.S.C. 103 as obvious over Motoi et al. (JP J2016-145309 A, machine translated in IP.com), hereinafter Motoi.
Regarding Claim 1, Motoi discloses an antioxidant composition obtained by dissolving 0.1 to 30 parts by weight of catechins in 70 to 99.9 parts by weight of diglycerin fatty acid ester (Abstract; Claim 1). The catechin reads on the antioxidant component that is sparingly soluble in oil/fat, and its amount overlaps with the claimed amount of 0.5-40 parts based on 100 parts of the composition. 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. The ester is at 70%, which touches the claimed range. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05.
Motoi also teaches that the antioxidant can be used in combination with an emulsifier other than diglycerin fatty acid ester for the purpose of adjusting the dispersibility when added to fats and oils, and wherein the emulsifier used includes lecithin (p. 3, 6th paragraph). Motoi expressly teaches using 20% lecithin with catechin (Comparative Example 4). One skilled in the art would start at this amount and optimize as needed when in combination with diglycerin fatty acid ester.
Motoi teaches that its composition does not contain water (p. 2, 5th paragraph).
Regarding Claim 2, Motoi teaches catechin, which is a polyphenol (Claim 1). has taught the same solid, which can comprise milk powder, and does not teach any difference in crystallization rate nor any treatment that would cause such difference, these claims are also obvious. Further, Motoi teaches using synergist that increases the antioxidant effect of catechins including ascorbic acid fatty acid ester and tocopherol (p. 3, 5th paragraph).
Regarding Claims 4-7 and 9-10, Motoi teaches that the compositions can be applied to edible fats and oils including coconut oil, corn oil, olive oil etc. (p. 6, last paragraph). Motoi teaches an example wherein 0.2g of antioxidant composition is added to 99.8g fish oil (Comparative Test 3); 0.1% of the antioxidant composition is mixed with 99.9% corn oil (Example 7).
From the teachings of Motoi, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the reference, especially in the absence of evidence to the contrary.
Claims 3 and 8 are rejected under 35 U.S.C. 103 as obvious over Motoi, as applied to Claims 1-2, 4-7, and 9-10 above, and in view of Takahashi et al. (JP 2001-131572 A, cited in IDS, machine translated in IP.com), hereinafter Takahashi.
Motoi is silent on the organic acids.
Takahashi also teaches antioxidant composition in which a poorly soluble antioxidant is uniformly dissolved or dispersed in fat and oil to improve solvent properties (Abstract). Takahashi recognizes catechin, gallic acid, and the likes to have antioxidant effect, making it compatible with Motoi [0003]. However, Takahashi also notes that the antioxidant effect may not be sufficient, and teaches that ascorbic acid, citric acid, or other organic acids are synergists ([0004], [0007], [0014]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine Takahashi with Motoi, and add the organic acids synergists to enhance the antioxidant effect of cathecin and other polyphenols. Obviousness is established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so. See MPEP § 2143.01 and KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007).
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Friedman et al. (US 2003/0180424 A1) discloses process for stabilizing hot cooking oil comprising introducing an aqueous composition comprising at least one antioxidant, and teaches diglycerides of fat forming fatty acids as emulsifier (Claims 1-2; [0023]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached on M-F, 10-6 EST.
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/JANICE Y SILVERMAN/Examiner, Art Unit 1792
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