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 .
The Amendment filed on April 1, 2026 has been entered. Claims 1-12 and 14 are pending. Claims 6 and 14 have been amended.
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 1-12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Barbier et al. (WO 2017/046301 A1; March 23, 2017).
Regarding claims 1 and 14, Barbier discloses a composition comprising:
Sodium chloride or potassium chloride in an amount from 10 to 25% by weight (page 10 lines 5-15), thus overlapping the claimed range of 9-14% by weight,
Sugar (e.g. mono/disaccharide) in an amount from 0.5 to 6% by weight (page 10, lines 1-5), while the instant claim requires an amount from 10-22% by weight,
Flavoring that can be vinegar, which is known in the art to comprise acetic acid (page 9 lines 20-30),
Physically modified starch in an amount from 1.5 to 5% by weight (page 10 lines 15-35), thus overlapping the claimed range of 1.5-3% by weight, and
Water in an amount from 40 to 70% by weight (page 13 lines 5-15), thus overlapping the claimed range of 50-70% by weight.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
With respect to the amount of sugar being 4% less in Barbier than what is claimed, the examiner notes it would have been obvious to one of ordinary skill in the art to vary the amount of sugar depending on the desired taste of the composition as a higher amount of sugar will result in a sweeter taste and alter the taste profile of the composition.
With respect to the amount of acetic acid, the examiner recognizes that Barbier fails to teach the claimed amount, however, it would have been obvious to one of ordinary skill in the art to vary the amount of vinegar present depending on the desired flavor and properties of the composition to result in a desired acetic acid amount.
As stated in MPEP 2144.04: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
From In re Levin, 84 USPQ 232 p. 234
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them
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ways which differ from the former practice, do not amount to invention merely because it is not disclosed that,
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the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent.
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all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function.
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Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267 ;
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Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
In the instant case, there is no new or unexpected function arising from the amount of sugar and acetic acid as they continue to function predictably as a sweetener and flavoring.
Barbier further teaches that the water activity of the composition is below 0.9, preferably between 0.75 and 0.85 (page 13 lines 10-15), thus overlapping the claimed range of 0.85 to 0.89. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Barbier additionally teaches that the composition has a pH of 3.44 or 4.22 (page 15), which both fall within the claimed pH range of 3.0 to 4.6.
With respect to the composition being free of chemically modified starches, enzymatically modified starch, and native starch, Barbier teaches that the composition comprises a first gelatinized starch, which is the physically modified starch and a second un-gelatinized starch, which can be an ungelatinized modified starch, and therefore Barbier does not teach the use of chemically modified starches, enzymatically modified starch, or native starches.
With respect to the composition comprising a yeast count that does not exceed a level of inoculation when stored at 25 C in the dark for 4-84 days, the examiner notes that Barbier fails to specifically teach that the composition has a yeast count under the storage conditions as claimed.
Barbier, however, teaches that the composition shows no syneresis under normal storage conditions (20-30 C) after 3 months and therefore it would be expected that the composition of Barbier would have a yeast count that does not exceed the level as claimed.
Further, it is well within the ordinary skill in the art to vary the amount of ingredients to results in a composition having a desired yeast count during storage. Barbier already teaches that the composition comprises all the same ingredients as claimed, and therefore determining the effective amount is merely routine experimentation that is well within the ordinary skill in the art.
Regarding claim 2, Barbier teaches that the composition is an edible composition.
Regarding claim 3, Barbier discloses that the sodium chloride or potassium chloride is present in an amount from 10 to 25% by weight (page 10 lines 5-15), thus overlapping the claimed range of 9-13% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claim 4, Barbier does not teach a preservative in the composition and therefore it meets the claimed range of less than 0.1%.
Regarding claim 5, Barbier teaches that the physically modified starch in an amount from 1.5 to 5% by weight (page 10 lines 15-35), thus overlapping the claimed range of 0 to less than 3% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claim 6, as stated above, Barbier teaches a composition comprising the claimed amount of physically modified starch. With respect to the claimed limitation wherein the physically modified starch is obtainable by…., the examiner notes that applicant has presented process limitations in a product claim.
As stated in MPEP 2113: Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
In the instant case, absent a showing otherwise, the product as claimed is the same as the product of the prior art.
Regarding claim 7, Barbier further teaches that the physically modified starch comprises physically modified waxy corn starch (page 10 lines 25-30).
Regarding claim 8, Barbier teaches that the “sugar” component can be glucose syrup (page 9 lines 30-35).
Regarding claim 9, Barbier additionally teaches that the composition comprises an edible oil in an amount 0.5 to 10% by weight (page 13 lines 1-5), thus overlapping the claimed range of less than 2.5% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claim 10, Barbier teaches that the total amount of hydrocolloids excluding starches is 0% by weight, thus meeting the claimed range of less than 1% by weight.
Regarding claim 11, Barbier teaches that some of the ingredients originate from vegetable sources or meat (e.g. chicken or beef fat) (page 12 lines 20-35).
Regarding claim 12, Barbier teaches a method for preparing the composition as described above with respect to claim 1, the method comprising mixing ingredients with water, heating the mixture, and fill the mixture into packaging (page 14 lines 15-25).
Response to Arguments
Applicant’s amendment has overcome the 112(b) rejection over claim 14 from the previous Office Action and therefore it has been withdrawn.
Applicant’s arguments with respect to the 103 rejection have been fully considered but were not found persuasive.
Applicant argues that Barbier fails to teach or suggest the exact composition as claimed. Applicant argues that that Barbier fails to teach the claimed amount of sugar. Applicant argues that the claimed 10% sugar makes a difference in spoilage. Applicant further states that Barbier fails to teach compositions having at most 14% salt, with a water activity ranging from 0.85 to 0.89 and 0.5-2% by weight of acetic acid that have low to no spoilage. Applicant states that Barbier does not provide a teaching for the artisan that only up to 14% of salt needs to be present. Applicant states that it is the combination of elements and the amounts which are carefully selected to allow a low salt content and a high-water activity and a good storage after opening. Applicant further stateds that small differences in concentrations between claim 1 and Barbier have a big impact on macroscopic properties as confirmed by experimental data provided in the instant specification.
This is not found persuasive. The instant claims merely require salt, sugar, acetic acid, modified starch and water. As shown in the table below, Barbier comprises the same ingredients in similar amounts.
Instant Invention
Barbier
Salt
9-14%
10-25%
Sugar
10-22%
0.5-6%
Acetic Acid
0.5-2%
variable
Modified Starch
1.5-3%
1.5-5%
Water
50-70%
40-70
pH
3.0-4.6
3.44-4.22
Water Activity
0.85-0.89
Less than 0.9, 0.75-0.85
The only ingredient Barbier is silent to in an amount of is acetic acid. However, Barbier teaches that it can be present and is variable in an amount. Therefore, it is not clear how the claimed invention can provide such alleged different spoilage results as compared to Barbier, when Barbier comprises the same ingredients as claimed in similar amounts.
Applicant states that the instant specification provides affirmative evidence that the claimed composition achieves unexpected results, wherein the specification demonstrates that the claimed combination of salt, high sugar, acetic acid and high water activity work together synergistically to provide stability against spoilage by yeast.
This is not found persuasive as Product A in the instant specification comprises similar amounts of salt, sugar, acetic acid, and water activity as products B-D. Product A, however, comprises a yeast count that goes over the claimed threshold. Therefore, it appears as they the combination of salt, high sugar, acetic acid and high water activity that provides unexpected results is not critical as they are similar throughout all products. The difference that seems to impact the growth of yeast is the addition of onion puree, which is present in products B-D and not in A. Onion is known to have components that inhibit yeast growth and therefore it is not clear how the combination of elements and the amounts are critical to provide the alleged unexpected results.
Therefore, applicant’s showing of criticality is not found persuasive as the ranges of the claimed ingredients do not appear to be critical. Applicant’s arguments are not commensurate in scope with the claims as the evidence provided in the specification contains more ingredients than what is claimed. Further, Products B and C do not even comprise water within the claimed range.
Amending the independent claims to be commensurate in scope with the evidence of unexpected results (e.g. including onion and all ingredients within the claimed range) or showing that onion does not affect the yeast growth would aid in overcoming the prior art rejection above.
Again, regarding the data relating to Barbier in the previously filed Declaration, but has not provided comparative data comparing the results of the instant invention to Barbier. In the data provided in the Declaration, applicant reduced the amount of salt to show that varying the amounts of ingredients in Barbier does not make a difference in spoilage and therefore would not render obvious the claimed composition. This is not persuasive as Barbier teaches an overlapping range of salt and therefore would be expected to provide similar results as the instant invention.
Further, Barbier teaches the use of sugar in an amount as high as 6%, which is not represented by the data provided. The data provided only goes to 3.6% sugar.
Again, applicant is relying upon disclosed examples and preferred embodiments in Barbier, however, such examples do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)
The disclosed Examples in Barbier cannot be solely relied upon when Barbier teaches a broader disclosure, such as a disclosure that provides overlapping ranges of the same ingredients as claimed. Therefore, it is not exactly clear what makes the claimed composition different than what is taught by Barbier. Applicant has not provided any comparative data to show such difference and is only disputing the composition of the prior art. However, such data is not found persuasive as it is relying upon specific examples disclosed by Barbier and does not reply upon the entire disclosure of Barbier and what it suggests.
Comparative data needs to be presented as the claim previously recited 7% sugar, which applicant stated made a difference. Therefore, it is not clear how the 6% sugar taught in Barbier would not result in a similar effect.
As stated above in the rejection, Barbier teaches all the same ingredients as claimed, including a low salt content. Barbier teaches that the salt content can be as low as 10%, which falls within the claimed range. While Barbier teaches that the salt can exceed 14%, Barbier still teaches a lower amount that reads on the claimed range and is therefore obvious over the prior art. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Barbier further teaches that the water activity of the composition is below 0.9, preferably between 0.75 and 0.85 (page 13 lines 10-15), thus overlapping the claimed range of 0.85 to 0.89. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Barbier additionally teaches that the composition has a pH of 3.44 or 4.22 (page 15), which both fall within the claimed pH range of 3.0 to 4.6.
Therefore, Barbier clearly teaches a composition having the same ingredients as claimed in similar amounts as claimed, which renders obvious the claimed composition over the prior art. Applicant has not argued the merits of the obviousness.
Further, the examiner notes that, as stated in MPEP 2144.04: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Additionally, From In re Levin, 84 USPQ 232 p. 234
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them
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ways which differ from the former practice, do not amount to invention merely because it is not disclosed that,
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the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent.
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all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function.
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Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267 ;
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Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
In the instant case, there is no new or unexpected function arising from the combination of the claimed ingredients in the claimed amounts based upon the teachings of the prior art and absent a showing otherwise. Applicant has not provided data showing criticality of the claimed ranges.
With respect to the composition comprising a yeast count that does not exceed a level of inoculation when stored at 25 C in the dark for 4-84 days, the examiner notes that Barbier fails to specifically teach that the composition has a yeast count under the storage conditions as claimed.
Further, it is well within the ordinary skill in the art to vary the amount of ingredients to results in a composition having a desired yeast count during storage. Barbier already teaches that the composition comprises all the same ingredients as claimed, and therefore determining the effective amount is merely routine experimentation that is well within the ordinary skill in the art.
Again, amending the independent claims to be commensurate in scope with the evidence of unexpected results (e.g. including onion and all ingredients within the claimed range) or showing that onion does not affect the yeast growth would aid in overcoming the prior art rejection above.
The examiner notes that claim 5 recites ranges outside the range of claim 1. Correction should be made to place the claims in better form for potential allowance.
For the reasons stated above, the 103 rejection is maintained.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791
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