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 .
Status of Application
This application is Final. Claims 1, 4-6, 8-10, 14-15, 17-21 and 24-30 are pending.
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 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, 4-5, 8-10, 14, 17-20 and 24-30 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 2013/0183428 (DECLERCQ) in view of Food Stabilisers, Thickeners, and Gelling Agents, Food Stabilisers, Thickeners and Gelling Agents Edited by Alan IMESON, 2009 (IMESON).
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As to claims 1 and 14, DECLERQ teaches an emulsion [0010] of an aqueous phase in a lipid phase [0010], wherein the lipid phase comprises non-fatty cocoa and/or milk solids [0015], and the aqueous phase comprises 25 to 60% of a sweetener (i.e., overlapping claimed 30 to 95% of a sweetener composition) based on the total weight of the aqueous phase [0025] and is dispersed throughout the lipid phase in the form of droplets [0020]. The emulsion comprises up to 60% water (i.e., overlapping claimed 10 to 70wt% of aqueous phase) based on the total weight of the emulsion and from 40 to 90% of lipid phase (i.e., falling within claimed 30 to 90wt% of lipid phase) based on the total weight of the emulsion.
As to the crystalline formation, the chocolate products of DECLERQ comprise a water-in-oil emulsion characterized in that droplets of the aqueous phase, dispersed throughout a lipid phase, are encapsulated by substantially crystalline shells [0042].
As to the hardness, it is taught in [0020] that for a hard or moldable chocolate product, the skilled person will favor fats with a higher melting point, preferably fats that are solid at room temperature. Advantageously, the lipid composition will comprise lipids selected from the group consisting of: cocoa butter, cocoa butter alternatives (such as cocoa butter equivalents, cocoa butter substitutes or cocoa butter replacers), milk fat, anhydrous milk fat, and mixtures of two or more thereof. Cocoa butter alternatives may include, for instance, hydrogenated and non-hydrogenated vegetable fats such as palm or coconut oil, interesterified palm or coconut oil, or palm or coconut oil fractions. The lipid composition may also comprise modified cocoa butter (such as interesterified cocoa butter) and/or cocoa butter fractions. For instance, it may comprise fractionated cocoa butter stearins. According to one particular embodiment, it will comprise stearin fractions from interesterified cocoa butter, preferably from enzymatically interesterified cocoa butter.
Thus, it would have been obvious to vary the hardness based on varying the fat composition.
Moreover, as to the hardness, applicant has chosen to use parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facia case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). Moreover, it would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
DECLERCQ teaches the use of gelling agents at [0029] but is silent as to the use of the recited hydrocolloids and ions.
IMESON teaches in section 5.7 on pg. 88 that carrageenan (i.e., a hydrocolloid) can be used to stabilize emulsions. In 5.6.5 on pg. 82, hot solutions of kappa and iota carrageenans set when cooled below the gel point, which is between 30°C and 70°C, depending on the cations and other ingredients present, to form a range of gel textures. In 5.6.6, table 5.2 shows the approximate processing times at various pH values and temperatures, for a gel produced with 0.5% kappa carrageenan and 0.2% potassium chloride, such that no more than 20–25% of the original gel strength is lost when the solution is cooled. Thus, it would have been obvious to vary the amount of carrageenan based on the desired gel strength.
In the first full paragraph on pg. 90, a gel is formed by first dispersing carrageenan into separate phases, followed by the addition of salt (sodium chloride) which raises the setting point of the carrageenan. It would have been obvious to add disperse the carrageenan in a phase separate from the ion so that the ion and carrageenan do not clump/react together before dispersal.
It would have been obvious to add the carrageenan and ion of IMESON to DECLERQ, as IMESON teaches that they can stabilize an emulsion.
In [0042] of DECLERQ, the shells, formed by crystallization of the lipid around the droplets, should be intact and stable (i.e. 100% solid at room temperature). As the product is crystalline at room temperature, it would have been obvious that the fat product would also be solid/crystalline and substantially non-liquid at lower temperatures.
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In [0042] of DECLERQ, the shells, formed by crystallization of the lipid around the droplets, should be intact and stable (i.e. 100% solid at room temperature). As the product is crystalline at room temperature, it would have been obvious that the fat product would also be solid/crystalline and substantially non-liquid at lower temperatures.
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DECLERCQ teaches the use of gelling agents at [0029] but not the recited amounts.
IMESON teaches in 5.6.6, table 5.2 shows the approximate processing times at various pH values and temperatures, for a gel produced with 0.5% kappa carrageenan (i.e., touching on the claimed range) and 0.2% potassium chloride, such that no more than 20–25% of the original gel strength is lost when the solution is cooled. Thus, it would have been obvious to vary the amount of carrageenan based on the desired gel strength.
It would have been obvious to add the carrageenan IMESON to DECLERQ, as IMESON teaches that such they can stabilize an emulsion.
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As to claims 8-10, DECLERQ teaches at [0041] that the product comprises chocolate chunks, flakes or drops for biscuits, cookies or cakes), or in chilled or frozen desserts (e.g., as coatings or as inclusions for ice-cream).
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Sucrose and Fructose are both taught at [0023] in DECLERCQ.
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DECLERCQ teaches the use of gelling agents at [0029] but is silent as to the specifically recited gelling agents.
IMESON teaches in section 5.7 on pg. 88 that carrageenan (i.e., a hydrocolloid) can be used to stabilize emulsions. In 5.6.6, table 5.2 shows the approximate processing times at various pH values and temperatures, for a gel produced with 0.5% kappa carrageenan and 0.2% potassium chloride, such that no more than 20–25% of the original gel strength is lost when the solution is cooled. Thus, it would have been obvious to vary the amount of carrageenan and ion based on the desired gel strength.
In the first full paragraph on pg. 90, a gel is formed by first dispersing carrageenan into water at ambient temperature and shearing to give a viscous solution, followed by the addition of salt (sodium chloride) which raises the setting point of the carrageenan. It would have been obvious to add disperse the carrageenan and aqueous phase and the ion in the lipid phase so that the ion and carrageenan do not clump/react together before dispersal.
It would have been obvious to add the carrageenan and ion of IMESON to DECLERQ, as IMESON teaches that they can stabilize an emulsion.
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In Table 1 beginning on page 4 of DECLERQ, it is shown that the amount of milk powder can vary from 0 to 28%. This overlaps the claimed amount of 20 to 35%. The variation depends on the type of chocolate being produced. Thus, it would have been obvious to vary the amount of milk powder based on the type of chocolate being produced.
At [0036], DECLERQ teaches the composition and mixed using a high shear mixer. Mixing will be continued until the aqueous phase is fully and homogeneously dispersed throughout the lipid phase. Thus, it would have been obvious to vary the speed and time based on the speed and time needed to obtain homogenization.
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DECLERCQ teaches the use of gelling agents at [0029] but is silent as to the use of hydrocolloid gelling agents.
IMESON teaches in section 5.7 on pg. 88 that carrageenan (i.e., a hydrocolloid) can be used to stabilize emulsions. In 5.6.5 on pg. 82, hot solutions of kappa and iota carrageenans set when cooled below the gel point, which is between 30◦C and 70◦C, depending on the cations and other ingredients present, to form a range of gel textures. In 5.6.6, table 5.2 shows the approximate processing times at various pH values and temperatures, for a gel produced with 0.5% kappa carrageenan and 0.2% potassium chloride, such that no more than 20–25% of the original gel strength is lost when the solution is cooled. Thus, it would have been obvious to vary the amount of carrageenan based on the desired gel strength.
In the first full paragraph on pg. 90, a gel is formed by first dispersing carrageenan and the ion into separate phases, followed by the addition of salt (sodium chloride) which raises the setting point of the carrageenan. It would have been obvious to add disperse the carrageenan in a phase separate from the ion (i.e., including aqueous phase) so that the ion and carrageenan do not clump/react together before dispersal.
As to the sweetener, sucrose and fructose are both taught at [0023] in DECLERCQ.
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DECLERCQ teaches the use of gelling agents at [0029] but is silent as to specific hydrocolloids
and ions.
IMESON teaches in section 5.7 on pg. 88 that carrageenan (i.e., a hydrocolloid) can be used to stabilize emulsions. In 5.6.5 on pg. 82, hot solutions of kappa and iota carrageenans set when cooled below the gel point, which is between 30◦C and 70◦C, depending on the cations and other ingredients present, to form a range of gel textures. In 5.6.6, table 5.2 shows the approximate processing times at various pH values and temperatures, for a gel produced with 0.5% kappa carrageenan and 0.2% potassium chloride, such that no more than 20–25% of the original gel strength is lost when the solution is cooled. Thus, it would have been obvious to vary the amount of carrageenan and ion based on the desired gel strength.
In the first full paragraph on pg. 90, a gel is formed by first dispersing carrageenan into separate phases, followed by the addition of salt (sodium chloride) which raises the setting point of the carrageenan. It would have been obvious to add disperse the carrageenan in a phase separate from the ion so that the ion and carrageenan do not clump/react together before dispersal. Indeed, it is clear that the ion and carrageenan cannot be added together as they would react. It would have been obvious to add the ion in either phase so long as the ion and carrageenan do not react/clump before dispersal.
It would have been obvious to add the carrageenan and ion of IMESON to DECLERQ, as IMESON teaches that they can stabilize an emulsion.
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DECLERQ teaches an emulsion [0010] that includes an aqueous phase [0010]. At [0025] DECLERQ teaches that aqueous phase includes at least 25% of sweetener. At least 25% encompasses 70 to 95%, as claimed. Moreover, it would have been obvious to vary the amount of sweetener based on desired taste.
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As to claim 30, DECLERQ teaches an emulsion [0010] of an aqueous phase in a lipid phase [0010], wherein the lipid phase comprises non-fatty cocoa and/or milk solids [0015], and the aqueous phase comprises 25 to 60% of a sweetener (i.e., overlapping claimed 30 to 95% of a sweetener composition) based on the total weight of the aqueous phase [0025] and is dispersed throughout the lipid phase in the form of droplets [0020]. The emulsion comprises up to 60% water (i.e., overlapping claimed 10 to 70wt% of aqueous phase) based on the total weight of the emulsion and from 40 to 90% of lipid phase (i.e., falling within claimed 30 to 90wt% of lipid phase) based on the total weight of the emulsion.
As to the crystalline formation, the chocolate products of DECLERQ comprise a water-in-oil emulsion characterized in that droplets of the aqueous phase, dispersed throughout a lipid phase, are encapsulated by substantially crystalline shells [0042].
As to the hardness, it is taught in [0020] that for a hard or moldable chocolate product, the skilled person will favor fats with a higher melting point, preferably fats that are solid at room temperature. Advantageously, the lipid composition will comprise lipids selected from the group consisting of: cocoa butter, cocoa butter alternatives (such as cocoa butter equivalents, cocoa butter substitutes or cocoa butter replacers), milk fat, anhydrous milk fat, and mixtures of two or more thereof. Cocoa butter alternatives may include, for instance, hydrogenated and non-hydrogenated vegetable fats such as palm or coconut oil, interesterified palm or coconut oil, or palm or coconut oil fractions. The lipid composition may also comprise modified cocoa butter (such as interesterified cocoa butter) and/or cocoa butter fractions. For instance, it may comprise fractionated cocoa butter stearins. According to one particular embodiment, it will comprise stearin fractions from interesterified cocoa butter, preferably from enzymatically interesterified cocoa butter. Thus, it would have been obvious to vary the hardness based on varying the fat composition. Moreover, as to the hardness, applicant has chosen to use parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facia case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). Moreover, it would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
DECLERCQ teaches the use of gelling agents at [0029] but is silent as to the use of hydrocolloids and ions.
IMESON teaches in section 5.7 on pg. 88 that carrageenan (i.e., a hydrocolloid) can be used to stabilize emulsions. In 5.6.6, table 5.2 shows the approximate processing times at various pH values and temperatures, for a gel produced with 0.5% kappa carrageenan and 0.2% potassium chloride (i.e., an ion), such that no more than 20–25% of the original gel strength is lost when the solution is cooled. Thus, it would have been obvious to vary the amount of gelling agent (e.g., carrageenan) and ion (e.g., potassium) based on the desired gel strength.
In the first full paragraph on pg. 90, a gel is formed by first dispersing carrageenan into separate phases, followed by the addition of salt (sodium chloride) which raises the setting point of the carrageenan. It would have been obvious to add disperse the carrageenan in a phase separate from the ion so that the ion and carrageenan do not clump/react together before dispersal.
It would have been obvious to add the carrageenan and ion of IMESON to DECLERQ, as IMESON teaches that they can stabilize an emulsion.
In [0042] of DECLERQ, the shells, formed by crystallization of the lipid around the droplets, should be intact and stable (i.e. 100% solid at room temperature). As the product is crystalline at room temperature, it would have been obvious that the fat product would also be solid/crystalline and substantially non-liquid at lower temperatures.
It would have been obvious to add the carrageenan IMESON to DECLERQ, as IMESON teaches that such they can stabilize an emulsion.
Claims 6, 15 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over DECLERQ in view of IMESON as applied to claim 1 above, and further in view of WO2010149323 (HOLLANDER).
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DECLERQ teaches an emulsion [0010] of an aqueous phase in a lipid phase [0010], wherein the lipid phase comprises non-fatty cocoa and/or milk solids [0015], and the aqueous phase comprises 25 to 60% of a sweetener (i.e., overlapping claimed 30 to 95% of a sweetener composition) based on the total weight of the aqueous phase [0025] and is dispersed throughout the lipid phase in the form of droplets [0020]. The emulsion comprises up to 60% water (i.e., overlapping claimed 10 to 70wt% of aqueous phase) based on the total weight of the emulsion and from 40 to 90% of lipid phase (i.e., falling within claimed 30 to 90wt% of lipid phase) based on the total weight of the emulsion.
IMESON teaches in section 5.7 on pg. 88 that carrageenan (i.e., a hydrocolloid) can be used to stabilize emulsions. In 5.6.5 on pg. 82, hot solutions of kappa and iota carrageenans set when cooled below the gel point, which is between 30◦C and 70◦C, depending on the cations and other ingredients present, to form a range of gel textures. In 5.6.6, table 5.2 shows the approximate processing times at various pH values and temperatures, for a gel produced with 0.5% kappa carrageenan and 0.2% potassium chloride, such that no more than 20–25% of the original gel strength is lost when the solution is cooled.
As noted above, it would have been obvious to add the carrageenan and ion of IMESON to DECLERQ, as IMESON teaches that they can stabilize an emulsion.
However, the references do not teach interesterified cocoa butter stearin fractions.
HOLLANDER teaches that cocoa butter stearin fractions that have been esterified can be used to produce. It is thought that cocoa butter interesterification gives it a much wider melting profile thereby facilitating fractionation, especially dry fractionation (pg. 4, lines 25-40 and pg. 6, lines 28-30). As to the iodine value, iodine value is a measure of the degree of unsaturation, HOLANDER teaches that cocoa butter can be used based on the desired fraction and how that fraction contributes to the consistency of the product (pg. 5, lines 1-10). In this regard, it would have been obvious to vary the iodine value of fat and cocoa butters based on desired attributes.
Response to Arguments
Applicant's arguments filed 2/20/2026 have been fully considered but they are not persuasive.
Applicant asserts that the Office Action's asserted motivation that IMESON teaches stabilizing an emulsion is too general to supply the missing link between (i) IMESON's water-based carrageenan hydration/setting effective for suspending particulates teaching and (ii) the particular water-in-oil, crystalline-shell system of DECLERCQ being modified to include hydrocolloid + ion in the claimed manner.
IMESON does exemplify in section 5.7 on pg. 88 that carrageenan (i.e., a hydrocolloid) can be used to stabilize emulsions. In 5.6.5 on pg. 82, hot solutions of kappa and iota carrageenans set when cooled below the gel point, which is between 30°C and 70°C, depending on the cations and other ingredients present, to form a range of gel textures. In 5.6.6, table 5.2 shows the approximate processing times at various pH values and temperatures, for a gel produced with 0.5% kappa carrageenan and 0.2% potassium chloride, such that no more than 20–25% of the original gel strength is lost when the solution is cooled. IMESON teaches that the application of this model extends past example.
However, this does not take the overall teachings of IMESON into consideration. IMESON does not limit the use of gelling agents and ions, as suggested by applicant. In the first full paragraph of IMESON on pg. 90, a gel is formed by first dispersing carrageenan into separate phases, followed by the addition of salt (sodium chloride) which raises the setting point of the carrageenan. It would have been obvious to add disperse the carrageenan in a phase separate from the ion so that the ion and carrageenan do not clump/react together before dispersal.
Applicant asserts that the Office Action's asserted motivation that IMESON teaches stabilizing an emulsion is too general to supply the missing link between (i) IMESON's water-based carrageenan hydration/setting effective for suspending particulates teaching and (ii) the particular water-in-oil, crystalline-shell system of DECLERCQ being modified to include hydrocolloid + ion in the claimed manner.
However, DECLERCQ teaches the use of gelling agents at [0029] but is silent as to the use of the recited hydrocolloids and ions. Thus, both references teach the use of gelling agents.
“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious). **
It is also argued that nothing in IMESON addresses, or would have led the skilled artisan to expect, that carrageenan introduced into discrete, fat-dispersed water droplets could yield a non-liquid/crystalline droplet at - 18 °C while maintaining overall emulsion integrity.
However, the first sentence of section 5.7 of IMESON on pg. 88 teaches that carrageenan plays an important role in the structure and physical stability of products. This would include the structure of the droplets. Moreover, nowhere does IMESON limit suggest using carrageenan and ions of aqueous medias. Rather, the experiments are provided to show that carrageenan and the recited ions will interact to effect the overall structure and hardness of the food product. For example, in 5.6.6, table 5.2 shows the approximate processing times at various pH values and temperatures, for a gel produced with 0.5% kappa carrageenan and 0.2% potassium chloride
Applicant also respectfully submits that the Office Action's reliance on In re Best and In re Spada is misplaced on this record.
However, the claimed invention is directed to an emulsion with obvious ingredients and process steps as taught above. The fact remains that applicant has chosen to use parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. Therefore, as a prima facia case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
The applicant also asserts that the products of DECLERCQ clearly does not acquire hardness or snap at-18°C as described in Pars. [0053] and [0060] of the Specification or as the claimed emulsion. Further evidence of the improved hardness afforded by the compositions is alleged to be found in DECLARATION OF DR. NATHALIE DE CLERCQ UNDER 37 C.F.R. §1.132 filed Sept. 13, 2023 (DECLARATON).
However, The DECLARATION OF DR. NATHALIE DE CLERCQ UNDER 37 C.F.R. §1.132 filed Sept. 13, 2023 is insufficient to overcome the rejection of claims 1, 4-6, 8-10, 14-15, 17-21 and 24-30 based upon DECLERCQ and IMESON as set forth in the last Office action because:
The results set forth in the DECLARATION are merely cumulative in nature. The DECLARATION shows that carrageenan can interact with potassium ions See Tables I, 2 and 3 to increase the hardness of the food product in which these ingredients are added. There is no evidence or suggestion that this result is unexpected. "A greater than expected result is an evidentiary factor pertinent to the legal conclusion of obviousness... of the claims at issue." In re Corkill, 771 F.2d 1496, 226 USPQ 1005 (Fed. Cir. 1985). In Corkhill, the claimed combination showed an additive result when a diminished result would have been expected. This result was persuasive of nonobviousness even though the result was equal to that of one component alone. Evidence of a greater than expected result may also be shown by demonstrating an effect which is greater than the sum of each of the effects taken separately (i.e., demonstrating "synergism"). Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). However, a greater than additive effect is not necessarily sufficient to overcome a prima facie case of obviousness because such an effect can either be expected or unexpected. Applicants must further show that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991) (Evidence showing greater than additive sweetness resulting from the claimed mixture of saccharin and L-aspartyl-L-phenylalanine was not sufficient to outweigh the evidence of obviousness because the teachings of the prior art lead to a general expectation of greater than additive sweetening effects when using mixtures of synthetic sweeteners.).
In the present declaration, all that is shown is that carrageenan will interact with a potassium ion. The two ingredients are acting as expected.
As to claim 30, new claim 30 is addressed above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached M-F, 9:30-6:00p.
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, Nikki Dees can be reached on 571-270-3435. 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.
/PHILIP A DUBOIS/Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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