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
Claims 1-6 are pending and examined in the current application.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al., (USPatPub. 2020/0323234 A1).
Regarding claims 1, 3 and 4: Watanabe discloses a chocolate composition comprising fat that does not bloom, where the fat comprises 70wt% or more of palm kernel oil (i.e., lauric fat) that is fractionated and interesterified, where the fat comprises triglycerides where 35 mass% is saturated fatty acid having 14 or less carbons, 10 mass% or more of saturated fatty acids having 16-18 carbons (see Waanabe abstract; paragraphs [0013], [0021], [0025] and [0026]), which overlaps the contents of saturated fatty acid having 14 and 16-18 carbons, and the unsaturated to saturated ratio recited in claim 1, a prima facie case of obviousness exists (see MPEP §2144.05).
As to the total number of carbons in the triglycerides recited in 1(e): Watanabe discloses a fat composition that does not bloom and comprises palm kernel oil that is fractionated and interesterified, but fails to disclose the total number in the triglycerides; However, given the fact the applicant contemplates triglycerides from the same lauric fat source that comprise similar constituents (see Specification paragraphs [0012], [0033]-[0035] and [0042]-[0044]), it is examiner’s position the total number of carbons in the triglycerides recited in 1(e), is inherently present in the fat composition in Watanabe. 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 claims 2, 5 and 6: While Watanabe fails to disclose the mass ratio of the palmitic acid content to stearic acid content recite in claim 2, Watanabe discloses a chocolate composition comprising fat that does not bloom, where the fat comprises 70wt% or more of palm kernel oil (i.e., lauric fat) that is fractionated and interesterified, where the fat comprises triglycerides with similar constituents of the fat contemplated by Applicant (see Watanabe abstract; paragraphs [0013], [0021], [0022], [0025] and [0026]; and Specification paragraphs [0012], [0033]-[0035] and [0042]-[0044]). Accordingly, it is examiner’s position the mass ratio of the palmitic acid content to stearic acid content recited in claim 2, is inherently present in the fat composition in Watanabe. 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASSAF ZILBERING whose telephone number is (571)270-3029. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached on (571) 270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASSAF ZILBERING/Examiner, Art Unit 1792
