DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continuing Applications – Patent Term
A patent granted on a continuation, divisional, or continuation-in-part application that was filed on or after June 8, 1995, will have a term which ends twenty years from the filing date of earliest application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) regardless of whether the application for which a benefit is claimed under 35 U.S.C. 120, 121, or 365(c) was filed prior to June 8, 1995. MPEP 2701 [R-10.2019].
Claim Interpretation
Claim 137 recites the limitation of a “composite material”. It is noted that applicant’s specification does not provide any special definition of what constitutes a composite material and as such, the broadest reasonable interpretation used will be that it comprises two or more materials having different physical characteristics that are combined together to form a composite material.
Although the term “Moisture impervious” as recited, for example in the claim 126, is not mentioned in the specification, the phrase “moisture proof” is used, e.g., “moisture proof barrier” (Spec 5 and up to 20 other times). Moisture impervious as recited is interpreted as “incapable of being passed through or penetrated”, i.e., moisture Proof. Thus, the claims are interpreted to include materials that prevent penetration of moisture.
Claim Rejections - 35 USC § 112 (first paragraph)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 125-137 and 144-148 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Para 181 of PGPUB of this application discloses “One suitable stick-like homogenous support 60 is sold under the trademark Lik-m-aid manufactured by Sunmark, Inc. of St. Louis, Mo. Such a stick has been used to gather flavored sugar from an adjacent pouch when the stick is moistened. Edible support sticks containing the ingredients of Dextrose, Maltodextrin, Citric Acid, and Magnesium Stearate, and flavoring, may be directly used to support comestible 84, 84A, 84B (and others). Elongating this support is preferable”, wherein an example of edible support which has the shape of “sticks”. But applicant's disclosure does not offer support for a “Pressed, compressed or tablet” candy as per claim 125 and its dependent claims. Similarly claim 133 and its dependent claims directed to method of making comestible by “pressing, compressing or tableting” ingredients is a pressed or compressed candy as is claimed.
Further, although the ingredients disclosed in one example of Paragraph 181 cited above include a sweetener (dextrose) and magnesium stearate, the disclosure does not provide support for the broader claim to a “pressed, compressed or tablet candy” comprising dextrose and magnesium stearate
Claim Rejections - 35 USC § 112 (second paragraph)
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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 125-148 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 125 recites the limitation “pressed, compressed or tablet candy”; i.e. the claim is reciting that the candy may be pressed candy, or compressed candy, or tablet candy. Further, claims 126, 129, 130, 131 recite “said pressed candy”. It is not clear what “pressed candy” means and it is also not clear what is “compressed candy” in the above context. The original specification and claims, when filed, did not mention “pressed” or “pressed candy” or “compressed candy”. According to applicant’s arguments, “pressed candy” has a well-known established meaning in the art to one of ordinary skill in the art and that, given such a meaning, “pressed candy” differs from the gum of Tezuka reference previously used. However, given the lack of clarity, the distinguishing feature of “pressed candy” is presently difficult to ascertain. For the same reason, the term “pressed” or “compressed” are vague and unclear in the context of the recited claims.
Similarly, claim 138 recites “self-contained moisture impervious support”, and it is not clear what “self-contained” means in the context of a moisture impervious support. The phrase does not appear to be present in the specification or disclosure so that one of ordinary skill in the art would understand what “self-contained” encompasses, if anything. As such, the recitation is indefinite.
Claim 131 recites “said pressed candy comprises a selection from the group comprising a …..” (emphasis added), which is an improper Markush grouping. By using the open term “comprising” in a Markush grouping, the claim is made to encompass more alternatives that what is recited. However, it is unclear what other alternatives applicant contemplates as being included in the grouping, thus making the claim indefinite. Note that the proper format for a Markush grouping is “said pressed candy comprises a selection from the group consisting of …..”. A full discussion about Markush groupings and how they should be expressed can be found in MPEP 2117. Further, the applicant has previously argued that applicant’s intention is for the claim to be broad and that breadth is not necessarily indefiniteness, it must be noted that no matter how broadly one claims one’s invention, the terms used in in the claims must be clear. Cf. In re Packard, 751 F.3d 1307 (Fed. Cir. 2014).
Base claim 142 recites “a moisture impervious support comprising a comestible for a frozen comestible or a part thereof, comprising insulating at least a part of said support comestible from moisture…” . The claim requires that the recited support comprise “a comestible for a frozen comestible” and further requires that it is a support “for a frozen comestible a portion thereof, comprising comprising….”. As such, it is not clear what is “said support comestible” given that there is no previous recitation of “support comestible”. For the purposes of this office action, it will be assumed that the recitation “said support comestible” (now also present in claim 143) is equivalent of “said support
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived 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 pre-AIA 35 U.S.C. 103(a) 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 125, 131-133, 137, 145 and 147 rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Burt (US 1,718,997) of prior record, hereinafter Burt, in view of Sahaydak (US 3832473A) of prior record, hereinafter Sahaydak.
Regarding claim 125, Burt (refer to Figure 6) teaches a support (1b – see page 2, lines 28-35) for a frozen comestible (A and B – see page 1, lines 58-72, which describe A may be “ice cream” and B may be a chocolate coating) comprising a candy (page 2, lines 28-35 describes “stick 1b” may be made “of some edible substance such as candy”).
Burt does not clearly disclose that the candy is specifically a “pressed, compressed or tablet” candy. Sahaydak teaches that a candy may be a pressed candy (Col. 1, lines 15-18 which explains “compressed or pressed mint assortments” and Col. 5, lines 26-36, which gives an example of a “pressed candy composition” where “the final blend pressed into tablets”). It would have been obvious to one of ordinary skills in the art at the time of the invention to modify Burt so that the candy is specifically a “pressed, compressed or tablet” candy. The ordinary artisan would have been motivated to modify Burt at least for the purpose of using a candy composition that is popular for at least mint candies (Col. 1, lines 15-18 and Col. 5, lines 26-36 of Sahaydak).
Regarding claim 131, Burt (refer to Figure 6) teaches support for a frozen comestible of claim 125 but is silent about ingredients of said pressed, compressed or tablet candy; i.e. does not teach said pressed, compressed or tablet candy comprises “a selection from the group comprising a sweetener, a maltodextrin, a citric acid, and a flavoring”. Sahaydak teaches that a pressed candy typically comprises an ingredient such as a sweetener (i.e. “sugar” and “corn syrup” described in example ingredients of Col. 5, lines 26-36 of Sahaydak). It would have been obvious to one of ordinary skills in the art at the time of the invention to modify Burt so that said pressed, compressed or tablet candy comprises a sweetener. The ordinary artisan would have been motivated to modify Burt at least for the purpose of using a common ingredient of a candy that gives common candy products their characteristic sweet taste.
Regarding claim 132, Burt (refer to Figure 6) teaches the support for a frozen comestible of claim 125, further comprising a supported comestible (A and B – see page 1, lines 58-72, which describes A may be “ice cream” and B may be a chocolate coating).
Regarding claim 145, Burt (refer to Figure 6) teaches substantially the claimed support for a frozen comestible of claim 125 but does not clearly teach that said pressed candy further comprises “a composite” material. Sahaydak teaches that a pressed candy may comprise multiple ingredients forming a composite material (see Col. 5, lines 26-36, which gives an example of a “pressed candy composition” where “the final blend pressed into tablets” and the material is a composite of multiple ingredients such as “sugar”, “corn syrup”, “orange oil solid particulate emulsion” and “magnesium stearate”; also see notes on claim interpretation above for the term “composite:). It would have been obvious to one of ordinary skills in the art at the time of the invention to modify Burt so that said pressed candy further comprises “a composite” material. The ordinary artisan would have been motivated to modify Burt at least for the purpose of using a candy composition that is a composite of multiple ingredients and is popular for at least mint candies (Col. 1, lines 15-18 and Col. 5, lines 26-36 of Sahaydak).
Regarding claim 133, Burt (refer to Figure 6) teaches a method of making a support (1b – see page 2, lines 28-35) for a frozen comestible (A and B – see page 1, lines 58-72, which describe A may be “ice cream” and B may be a chocolate coating) comprising at least one ingredient (page 2, lines 28-35 describes “stick 1b” may be made of at least one material or ingredient “of some edible substance such as candy”).
Burt does not teach that the method also comprises “pressing, compressing or tableting” at least one ingredient to form a support. Sahaydak teaches that a candy may be made by pressing, compressing or tableting ingredient or ingredients (Col. 1, lines 15-18 which explains “compressed or pressed mint assortments” and Col. 5, lines 26-36, which gives an example of a “pressed candy composition” where at least one ingredient is mixed into a “final blend” and “the final blend pressed into tablets”). It would have been obvious to one of ordinary skills in the art at the time of the invention to modify Burt so that the method also comprises “pressing, compressing or tableting” at least one ingredient to form a support. The ordinary artisan would have been motivated to modify Burt at least for the purpose of using the support from a popular pressed candy composition such as pressed mints which is flavored as desired (Col. 1, lines 15-18 and Col. 5, lines 26-36 of Sahaydak).
Regarding claims 137 and 147, Burt (refer to Figure 6) teaches substantially the claimed support for a frozen comestible of claim 133 but does not clearly teach that said pressing said at least one ingredient further comprises making “a composite” material. Sahaydak teaches that a candy may be made by pressing ingredients, said pressing said ingredients further comprises making a composite material (see Col. 5, lines 26-36, which gives an example of a “pressed candy composition” where “the final blend pressed into tablets” and the material is a composite of multiple ingredients such as “sugar”, “corn syrup”, “orange oil solid particulate emulsion” and “magnesium stearate”; also see notes on claim interpretation above for the term “composite:), and the above ingredient materials (as required by claim 147) comprises discernable material. It would have been obvious to one of ordinary skills in the art at the time of the invention to modify Burt so that said pressing said at least one ingredient further comprises making “a composite” material. The ordinary artisan would have been motivated to modify Burt at least for the purpose of using a candy composition that is a composite of multiple ingredients and is popular for at least mint candies (Col. 1, lines 15-18 and Col. 5, lines 26-36 of Sahaydak).
Claims 126-130, 135-136, and 146 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Burt, in view of Sahaydak as applied to claims 125 or 133 above further in view of Germino (US 4,671,963) of prior record, hereinafter Germino.
Regarding claims 126-130 and 146, Burt (refer to Figure 6) teaches substantially the claimed support for a frozen comestible but does not teach that limitations recited in claims 126-130 and 146. Germino teaches that it is known in the art to add a magnesium stearate coating on comestibles to provide a measure of insensitivity to moisture (Col. 1, lines 56-66) so that the comestible does not become soggy in the presence of moisture (Col. 1, lines 11-15 and 49-51) and that the comestible that is coated by the coating may be a confection (Col. 10, lines 7-9; also see Col. 9, lines 26-36). Therefore, it would have been obvious to one of ordinary skills in the art at the time of the invention to modify Burt so that the support further comprises a moisture impervious substance (as recited in claim 126), wherein said moisture impervious substance comprises a stearate (as recited in claim 127) that comprises a magnesium stearate (as recited in claim 128), such that said stearate further comprises a coating on at least a part of said pressed, compressed or tablet candy (as recited in claim 130) or that coating comprises “a stearate on the at least a part of said support” (as recited in claim 146), and still further. from the above addition of the magnesium stearate coating, it follows that said stearate comprises an ingredient in said pressed, compressed or tablet candy (as recited in claim 129). The ordinary artisan would have been motivated to modify Burt at least for the purpose of ensuring that the support, which is edible, retains its original characteristics such as crunchy character and does not get soggy in the presence of moisture (Col. 1, lines 10-15 and 45-55 of Germino).
Regarding claims 135-136, Burt (refer to Figure 6) teaches substantially the claimed support for a frozen comestible but does not teach that said pressing said at least one ingredient further comprises “insulating said at least one ingredient from moisture” (as recited in claim 135), wherein (as recited in claim 136), “said insulating said at least one ingredient from moisture comprises including a stearate”. Germino teaches that it is known in the art to add a magnesium stearate coating on comestibles to provide a measure of insensitivity to moisture (Col. 1, lines 56-66) so that the comestible does not become soggy in the presence of moisture (Col. 1, lines 11-15 and 49-51); thus insulating said at least one ingredient from moisture; and that the comestible that is coated by the coating may be a confection (Col. 10, lines 7-9; also see Col. 9, lines 26-36). Therefore, it would have been obvious to one of ordinary skills in the art at the time of the invention to modify Burt so that said pressing said at least one ingredient further comprises “insulating said at least one ingredient from moisture” (as recited in claim 135), wherein (as recited in claim 136), “said insulating said at least one ingredient from moisture comprises including a stearate”. The ordinary artisan would have been motivated to modify Burt at least for the purpose of ensuring that the support, which is edible, retains its original characteristics such as crunchy character and does not get soggy in the presence of moisture (Col. 1, lines 10-15 and 45-55 of Germino).
Claim 134 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Burt (US 1,718,997), hereinafter Burt, in view of Sahaydak (US 3832473A), hereinafter Sahaydak as applied to claim 133 above further evidenced by NPL reference of “Dictionary of food ingredients” by Igoe (of prior record), hereinafter Igoe.
Regarding claim 134, Burt (refer to Figure 6) teaches the support for a frozen comestible of claim 133 but does not specifically state that said at least one ingredient comprises “dextrose”. Sahaydak teaches that a pressed candy typically comprises an ingredient such as a sugar and corn syrup (i.e. “sugar” and “corn syrup” described in example ingredients of Col. 5, lines 26-36 of Sahaydak), which inherently comprise “dextrose” (as evidenced by NPL to Igoe pages 40and 139), and dextrose is also known as glucose and corn sugar (as evidenced by Igoe page 44). It would have been obvious to one of ordinary skills in the art at the time of the invention to modify Burt so that said pressed candy comprises a common sweetener like sugar and/or corn syrup, and hence comprises a dextrose. The ordinary artisan would have been motivated to modify Burt at least for the purpose of using a common ingredient of a candy that gives common candy products their characteristic sweet taste.
Claims 138-144 and 148 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Burt (US 1,718,997), hereinafter Burt, in view of Germino (US 4,671,963) of prior record, hereinafter Germino.
Regarding claims 138-141, Burt (refer to Figure 6) teaches a self-contained support (1b – see page 2, lines 28-35) comprising a comestible for a frozen comestible (A and B – see page 1, lines 58-72, which describe A may be “ice cream” and B may be a chocolate coating; and page 2, lines 28-35 describes “stick 1b” may be made “of some edible substance such as candy”).
Burt does not teach that the self-contained support is a “moisture impervious” (as recited in claim 138), wherein (as recited in claim 139) “said moisture impervious support comprises a moisture impervious stearate”, and further, wherein (as recited in claim 140) “said stearate comprises a magnesium stearate”; or wherein (as recited in claim 141), the self-contained “moisture impervious support for a frozen comestible of claim 138, further comprising a moisture impervious coating comprising a stearate on at least a part of said support”. Germino teaches that it is known in the art to add a coating comprising magnesium stearate on comestibles to provide a measure of insensitivity to moisture or moisture resistance (Col. 1, lines 56-66) so that the comestible does not become soggy in the presence of moisture (Col. 1, lines 11-15 and 49-51) and that the comestible that is coated by the stearate coating may be a confection, such as haystack candy (Col. 10, lines 7-9; also see Col. 9, lines 1-9 and 16-30and Col. 7, line 35 to Col. 8 line 15). Therefore, it would have been obvious to one of ordinary skills in the art at the time of the invention to modify Burt so that the self-contained support is a “moisture impervious” (as recited in claim 138), wherein (as recited in claim 139) “said moisture impervious support comprises a moisture impervious stearate”, and further, wherein (as recited in claim 140) “said stearate comprises a magnesium stearate”; or wherein (as recited in claim 141), the self-contained “moisture impervious support for a frozen comestible of claim 138, further comprising a moisture impervious coating comprising a stearate on at least a part of said support”. The ordinary artisan would have been motivated to modify Burt at least for the purpose of ensuring that the support, which is edible, retains its original characteristics such as crunchy character and does not get soggy in the presence of moisture (Col. 1, lines 10-15 and 45-55 of Germino).
Regarding claims 142-143, Burt (refer to Figure 6) teaches a method of making a support (1b – see page 2, lines 28-35), comprising a comestible for a frozen comestible or a part thereof (A and B – see page 1, lines 58-72, which describe A may be “ice cream” and B may be a chocolate coating; and page 2, lines 28-35 describes “stick 1b” may be made “of some edible substance such as candy”). Burt does not teach that the support is a “moisture impervious” support and that the method comprises “insulating at least part of said support comestible from moisture” (as recited in claim 142), wherein (as recited in claim 143) “said insulating said support comestible from moisture comprises including a stearate”. Germino teaches that it is known in the art to add a magnesium stearate coating on comestibles to provide a measure of insensitivity to moisture (Col. 1, lines 56-66) so that the comestible does not become soggy in the presence of moisture (Col. 1, lines 11-15 and 49-51); i.e. the method insulates said comestible from moisture; and that the comestible that is coated by the coating may be a confection (Col. 10, lines 7-9; also see Col. 9, lines 26-36). Therefore, it would have been obvious to one of ordinary skills in the art at the time of the invention to modify Burt so that the support is a “moisture impervious” support and that the method comprises “insulating at least part of said support comestible from moisture” (as recited in claim 142), wherein (as recited in claim 143) “said insulating said support comestible from moisture comprises including a stearate”. The ordinary artisan would have been motivated to modify Burt at least for the purpose of ensuring that the support, which is edible, retains its original characteristics such as crunchy character and does not get soggy in the presence of moisture (Col. 1, lines 10-15 and 45-55 of Germino).
Regarding claims 144 and 148, Burt (refer to Figure 6) teaches the method of making a support for a frozen comestible of 133, further comprising supporting comprising an ingredient material (i.e. at least one ingredient forming A and/or B – see page 1, lines 58-72, which describe A may be “ice cream” and B may be a chocolate coating; and page 2, lines 28-35 describes “stick 1b” may be made “of some edible substance such as candy”). Although Burt does not specifically recite the step of “freezing said support” (as required by claim 148), Burt does teach support is for a frozen comestible and as such, it would it would have been obvious to one of ordinary skills in the art at the time of the invention to modify Burt so that the support for the comestible is also frozen with the frozen comestible. The ordinary artisan would have been motivated to modify Burt at least for the purpose of adding the support prior to freezing the frozen comestible and freezing them together to ensure the joint freezing firmly attaches the support to the frozen comestible without additional processing.
Response to Arguments
Applicant's arguments filed 11/10/2025 have been fully considered but they are not persuasive.
Each pages of applicant’s response has a pages number near the top end, right side and also one that is just below it. The number below will be referenced below when referring to page numbers. For example, the first page of “Remarks” of 11/10/2025 has” p.7” near the top end, right side and also “6” just below it – this page will be referenced as page 6. Unless otherwise mentioned, applicant’s response refers to applicant’s response of 11/10/2025.
On pages 6-7, under the heading “Incomplete Office Action: on page 6 of applicant’s response, applicant alleges that “The next Office Action cannot be made final” because “Examiner merely purported to answer Applicant’s argument but clearly did not” (especially see page 6, last paragraph). without presenting any specific arguments but requesting to “See below” for additional remarks. To support the above, applicant quotes “Board Decision, 10/291339, 8/15/2022, pg. 5” (especially see page 7” but this is a different application than the current application for which argument is being presented. Nevertheless, it appears that the issue being argued is support for “pressed, compressed or tablet” candy (refer to page 6, 2nd last paragraph of applicant’s response). This argument, to the extent understood, is not persuasive. Regarding the limitation of “pressed candy”, it has been addressed in 35 USC 112, first paragraph and second paragraph rejections of the previous office action. Further, this issue has been explained in the Patent Board Decision of 12/16/2020, which clarifies that the original Specification and claims, when filed, did not mention “pressed” or “pressed candy” and the patent board decision provides a 35 USC 112, 2nd paragraph rejection that was missing from the office action under appeal - see page 9, especially section titled “NEW GROUND OF REJECTION”. In view of the board decision that the office action under appeal was lacking the above mentioned 35 USC 112, 2nd paragraph rejection, prosecution was “REOPENED” and “New grounds of rejections” were provided in the non-final office action of 9/30/2021 (especially seepage of the office action of 9/30/2021). As for the issue regarding why “pressed” or “pressed candy” are indefinite, more details are provided on pages 10-12 of the Patent Board Decision of 12/16/2020. The above was further re-confirmed in the Patent Board’s “DECISION ON REQUEST FOR REHEARING” of 5/27/2021 (especially see page 6, 4th paragraph to page 10, 2nd last paragraph).
On pages 7-8, in the section titled “Claim Interpretation”, applicant objects to “broadest reasonable interpretation” of claim terms by stating “Examiner’s interpretation is unclear” (see page 7, 2nd last paragraph) without clarifying how claims should be interpreted. The office has provided claim interpretation where necessary, and although applicant continues to object to it, applicant does not provide what different interpretation would be appropriate and the corresponding rationale for such interpretation. Applicant quotes parts of the specification that appear to mention some characteristics of ingredient materials such as “discernable” or “different” but it appears these are just examples of some characteristics, and do not constitute a unique definition of “ingredient materials”. It is also not clear how the above is necessarily inconsistent with examiner’s interpretation of “ingredient material”. Further, Examiner is not requiring a definition of “composite material” or “moisture impervious” (see applicant’s argument on page 8, especially 3rd paragraph) but rather providing an interpretation based on customary meaning of the term when no special definition is provided. Applicant appears to disagree with the interpretation provided for “composite material” and appears to suggest that equates to “discernable material” likely pointing to discernable individual ingredients. It is not clear why applicant feels examiner’s interpretation of “composite material” is at odds with applicant’s specification.
On pages 8-10, in the section titled “USC Section 112, first paragraph”, applicant refers to “Board Decision of 12/16/2020, pg. 10” and states the board decision pointed out “There is no rejection as to new matter and a rejection of “pressed candy” and as such, Examiner is satisfied that there is support. This argument is not persuasive. Referring to the Patent Board Decision of 12/16/2020, it clarifies that the original Specification and claims, when filed, did not mention “pressed” or “pressed candy” and the patent board decision provides a 35 USC 112, 2nd paragraph rejection that was missing from the office action under appeal - see page 9, especially section titled “NEW GROUND OF REJECTION”. In view of the board decision that the office action under appeal was lacking the above mentioned 35 USC 112, 2nd paragraph rejection, prosecution was “REOPENED” and “New grounds of rejections” were provided in the non-final office action of 9/30/2021 (especially seepage of the office action of 9/30/2021). Thus, applicant cannot continue to assume that “There is no rejection of new matter” and “Examiner is satisfied” that “pressed candy” has “written description support”.
Regarding the argument on page 10 questioning why applicant should “go on record whether examiner has interpreted pressed candy correctly and if not, give a reasoned statement …..”, it follows from the fact that the term is currently not clear and it must be clarified. As for the issue regarding why “pressed” or “pressed candy” are indefinite, more details are provided on pages 10-12 of the Patent Board Decision of 12/16/2020. The above was further re-confirmed in the Patent Board’s “DECISION ON REQUEST FOR REHEARING” of 5/27/2021 (especially see page 6, 4th paragraph to page 10, 2nd last paragraph). To resolve the above issue, examiner had suggested that applicant must go on record whether examiner has interpreted “pressed candy” correctly and if not, give a reasoned statement as to how “pressed candy” should be interpreted, with support from the specification. For example, applicant may state on record that in light of the specification, a “pressed candy” or a “compressed candy” is one where the ingredient as pressed or compressed, such as in the form of a tablet. The above is consistent with the interpretation examiner has taken so far, but applicant has not gone on record so far to confirm this interpretation or provide a reasoned statement of an alternate interpretation.
On pages 10-15, in the section titled “35 USC Section 112, second paragraph”, applicant alleges that “Examiner has already decided in 2006 that the term, pressed, compressed or tablet candy” has clear descriptive support in the specification (see page 10, especially last 2 paragraphs). This argument is not persuasive and is similar to the argument presented above in view of “Board Decision of 12/16/2020, pg. 10”. Referring to the Patent Board Decision of 12/16/2020, it clarifies that the original Specification and claims, when filed, did not mention “pressed” or “pressed candy” and the patent board decision provides a 35 USC 112, 2nd paragraph rejection that was missing from the office action under appeal - see page 9, especially section titled “NEW GROUND OF REJECTION”. In view of the board decision that the office action under appeal was lacking the above mentioned 35 USC 112, 2nd paragraph rejection, prosecution was “REOPENED” and “New grounds of rejections” were provided in the non-final office action of 9/30/2021 (especially seepage of the office action of 9/30/2021). Thus, applicant cannot continue to assume that “There is no rejection of new matter” and “Examiner is satisfied” that “pressed candy” has “written description support”. As for the issue regarding why “pressed” or “pressed candy” are indefinite (see arguments on page 11), more details are provided on pages 10-12 of the Patent Board Decision of 12/16/2020. The above was further re-confirmed in the Patent Board’s “DECISION ON REQUEST FOR REHEARING” of 5/27/2021 (especially see page 6, 4th paragraph to page 10, 2nd last paragraph).
Applicant quotes examiner’s obviousness statement that is based on examiner’s claim interpretation and cites it as evidence that “Examiner has acknowledged that pressed candy is a common type of candy” (see page 11, especially last 2 paragraphs and page 12, first two paragraphs). This argument is not persuasive. Applicant is not agreeing to the interpretation taken by the examiner for “pressed candy” but still arguing that interpretation (to which applicant does not agree) is proof of definiteness.
On pages 12-13, applicant argues about “claim 138” that “self contained” is clear without addressing the issues raised in 35 USC 112, 2nd paragraph rejection of claim 138. This issue is explained in detail in the Patent Board’s “DECISION ON REQUEST FOR REHEARING” of 5/27/2021 (especially see page 10, last paragraph to page 11, 3rd paragraph).
On page 13, applicant alleges that the rejections are in error because the term “insolubly ambiguous” was not specifically used and appears to conclude that the absence of the above term is sufficient to prove that “35 USC Section 112, second paragraph” rejections are not valid (especially see page 13, 1st two paragraphs). Note that applicant does not state specifically what is wrong with the cited statute, what alternate statute does applicant feel should be applied, does not address any of the issues of indefiniteness specifically raised in the rejection and presents no specific arguments. The issue at hand is that as stated in the statute, the claims are not “particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention”, irrespective of the fact whether the words “insolubly ambiguous” have been specifically mentioned in the rejection. As such, applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Regarding the arguments presented for claim 131 (see page 13, especially last paragraph of applicant’s response), applicant asserts that the claim “does not” recite “Markush language” and is therefore not a “Markush claim”. This argument is similar to that addressed in the Patent Board Decision of 12/16/2020 for the current applicant, which addressed the phrase “said pressed candy comprises a selection from the group comprising a….” (see section b that starts on page 5, last paragraph of the Patent Board Decision of 12/16/2020). The board decision clarifies that the above is an “improper” Markush group, and that the proper format for a Markush group is “said pressed candy comprises a selection from the group comprising consisting of a….”, providing MPEP 2117 as reference for the above (see pages 6-7 of the Patent Board Decision of 12/16/2020).
The citing of similar language in other applications (see page 14, especially first three paragraphs) is not a relevant argument for this case. Whether the claims in the present application comply with statutory requirements (including 35 USC, 112, 1st or 2nd paragraph) is not controlled by the fact that similar claims have been allowed by the United States Patent and Trademark Office in a different application. In re Schechter, 205 F.2d 185, 191 (CCPA 1953). Also see BPAI decision on reconsideration of 8/18/2021 for related application 11/634,624.
On pages 15-19, in the section titled “35 USC Section 103”, applicant alleges that “in rejection of “claims 125, 133, 138 and 144”, examiner has “improperly” separated the claim’s element of “pressed, compressed or tablet candy” from the essential preamble of the claims, to reject claims 125, 131-133, 137, 145, 126-130, 135-136, 146, 134, 138-144” (see page 15, especially first two paragraphs). A similar allegation is made with respect to claim 138 with respect to the limitation “A self contained moisture impervious support” (see page 18, 3rd paragraph of applicant’s response). However, applicant gives no evidence for the above. As such, applicant's above assertions fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
On pages 15-17, applicant argues about rejections of claims 125, 131-133, 137 and 145” rejection of “claim 125” alleging that “Neither Burt, Sahaydak nor Germino” disclose “A support For a Frozen Comestible Comprising A Pressed, Compressed or Tablet Candy”. In particular, applicant notes that “Burt’s stick 1b of some unknown substance” and “Sahaydak’s mints confined to packaging” and that “Germino, who teaches, a method for treating foodstuffs with alkaline metal salts…” also do not disclose the limitations. Applicant goes on to list other things that are different in the references used, but none of those have been relied upon for teaching missing limitations. This argument is not persuasive. As explained earlier, Burt already teaches a support that may comprise candy (see rejection of claim 125), and Sahaydak is only introduced for the missing teaching that the candy is “a pressed, compressed or tablet” (i.e. any one of these) candy (also see 35 USC, 112, 1st paragraph rejection) . One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Therefore, prior arts must be considered in entirely, including discloses that teach away from the claims, MPEP § 2143.01-02. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983). It is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”; and In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973). Combining the teachings of references does not involve an ability to combine their specific structures. As such, allegations such as “Outside the package the environment of the mints is no longer controlled, and the mints absorbs ambient tastes” (see page 15, last 2 lines); or “Sahayadak’s pressed mint product confined to packaging might only result in at least two mints in a package…” (see page 16, 2nd paragraph do not advance applicant’s argument. Similar arguments and allegations attacking references individually have also been made for “claim 145” stating there is no mention of a “composite material” or “composite” (see page 17, 2nd last paragraph).
On page 18, 2nd paragraph of applicant’s response, applicant alleges regarding claim 134 that “Igoe”, reference of “Dictionary of food ingredients” (also see rejection of claim 134) is “not prior art” without saying why. Igoe is only being used to show that sugar and corn syrup inherently comprise “dextrose”. Again, applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
The assertion that “modification of Burt in view of Germino fails to suggest claim 125 or claims 133” (see page 17, especially last paragraph that continues on page 18) is also not supported. Several other assertions are also made on pages 18-19 such as no teaching of “self contained moisture impervious support” but do not provide specific arguments against elements quoted in the rejection. As such, applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/JYOTI CHAWLA/Primary Examiner, Art Unit 1791