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 . Claims 1 and 4-10 are examined herein.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/07/2024 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, 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.
Claims 1, 4-6, 8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over EPA in view of Porter (2003/0091717).
EPA: UNITED STATES ENVIRONMENTAL PROTECTION AGENCY:Inert Reassessment: 2-Ethyl-1-hexanol; CAS#104-76-7; Aug. 15, 2006
Independent claim 1
EPA teaches that 2-EH is added to foods and beverages (see Use Summary and Introduction), which imparts that
a component consisting of:
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wherein R is methyl, ethyl, propyl, butyl, pentyl, hexyl, heptyl, octyl, nonyl, decyl,undecyl, dodecyl tridecyl, or tetradecyl, and m is 1 to 14; and
any other foodstuff;
are provided and processed into a food composition, as claimed.
Further, when looking for light in the Specification, it is noted that composition of Equation 1) includes: C6 to C32 2-ethylhexanol (see the discussion under the first instance of Equation 1 in the Detailed Description, as submitted). EPA teaches that 2-EH is 2-ethyl-1-hexanol (see Subject on pg. 1), which is well known to have the molecular formula of C8H18O, therefore encompasses a C6 to C32 2-ethylhexanol, as disclosed.
Intended use of component 1)
EPA provides that component 1) functions as a defoamer (see 2nd para. of Executive Summary), therefore it would be reasonable for one of skill in the art to understand that it would be called a foam control agent, as claimed, because herein the structure recited in a reference is substantially identical to the claims, therefore any claimed properties/functions are presumed to be inherent, and a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01).
The prior art, in EPA, imparts that the food is made by adding the claimed ingredients, wherein the first component claimed was known to function as a defoamer, therefore provides a reasonable expectation in the method claimed being for controlling foam, as claimed because one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Therefore, it would have been obvious to one of skill in the art, at the time of filing/the invention to modify the method of making food compositions, by providing and processing (i.e. adding together):
a component consisting of:
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wherein R is methyl, ethyl, propyl, butyl, pentyl, hexyl, heptyl, octyl, nonyl, decyl,undecyl, dodecyl tridecyl, or tetradecyl, and m is 1 to 14; and
any other foodstuff, as EPA,
to include that the method would function to control foam, as claimed, because EPA teaches that component 1) is known to function as a defoamer, and 2) is used to make foods and beverages, which imparts that it has similar utility, therefore one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Wherein the foodstuff comprises potato or beet derivatives
The modified teaching above does not discuss that it is known for the beverages to comprise potato or beet derivatives.
Porter also teaches methods of making beverages (0094)) and further provides that they comprises potato starch, a potato derivative, as claimed.
It would have been obvious to one of skill in the art, at the time of filing/the invention to modify the method of making foodstuff, including beverages, as the modified teaching above, to include a potato biproduct, as claimed, because Porter provides that this was known to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed potato biproduct food ingredient for making foods, including sports beverages, on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious.
Dependent claims
As for claims 4-5, EPA provides that 2-EH is used in food, as part of a formulation applied after harvest or as a flavor volatile, wherein it is used in not more than 2.5 wt% in formulations applied (i.e. added) to food (1st-2nd para. of Introduction), and that when used as a defoamer there is no limit (see Table 1). Therefore, the teaching encompasses, the use of:
0.01 to 5 wt%, as in claim 4; and
0.1 to 1 wt%, as in claim 5.
As for claim 6, the modified teaching does not discuss the beverages comprise solvents, however, since it is common knowledge that water is a primary ingredient in beverages, and water is a solvent, it would be reasonable to expect that beverages comprise solvents, as claimed.
As for claim 8, with regard to the prior art, the term mixing encompasses combining together. EPA teaches the food is made by adding the 2-EH with a foodstuff, as discussed above, which imparts a step of mixing because when ingredients are added together, they are combined (i.e. mixed), as claimed. As for the other steps claimed: washing, slicing, fermenting, grating (i.e. crushing), and peeling are long and commonly known food processing steps, therefore, would have been a matter of common knowledge, at the time of filing, absent a showing of criticality, and it would have been obvious to try them when making food.
As for claim 16, The modified teaching, in Porter, provides the beverage made, comprises: fruit juice, wherein one in the art would understand that steps of processing fruit into juice, include: washing the fruit, them slicing, grating (i.e. crushing), or peeling it. Porter also provides the beverage made, comprises: yogurt/beer, wherein one in the art would understand that steps of processing yogurt/beer requires a step of fermenting (0094).
Therefore, since said food processing steps are long known and a matter of common knowledge, absent a showing of criticality, it would have been obvious to try steps of washing, slicing, fermenting, grating, crushing, or peeling when making food.
In the alternative, Porter shows it is known to use at least one step of washing (0042) during the method of making the foodstuff, as claimed.
Claims 6-7 and 9 are rejected are rejected under 35 U.S.C. 103 as being unpatentable over EPA in view of Porter, as applied to claims 1, 4-6, 8 and 16 above, further in view of JECFA.
JECFA: Joint WHO/FAO Expert Committee on Food Additives; published online at least by: Jan. 20, 2002, at: https://web.archive.org/web/20020120115002/https://www.inchem.org/documents/jecfa/jecmono/v32je04.htm
As for claim 6, the modified teaching does not discuss the beverages comprise solvents, however, since it is common knowledge that water is a primary ingredient in beverages, and water is a solvent, it would be reasonable to expect that beverages comprise solvents, as claimed.
In the alternative, the modified teaching does not discuss the food composition comprises a solvent, as claimed, however the EPA references the Joint WHO/FAO Expert Committee on Food Additives (JECFA) for more information regarding the use of 2-EH in foods (see bottom of pg. 5).
JECFA also teaches about using 2-EH in food compositions, and further provides that they comprise water (see 1st para. of section 2.2.3.1), which provides that the food compositions made with it comprise a solvent, as claimed.
It would have been obvious to one of skill in the art, at the time of filing to modify the method of making food compositions comprising 2-EH, as the modified teaching above, to include that the food compositions comprising solvents, as claimed, because JECFA shows that it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed processing step of crushing when making coconut products, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious.
As for claim 7, the modified teaching, in JECFA, provides that said food compositions further include polyoxyl 35 castor oil (see 1st para. of section 2.2.3.1), a polyethylene glycol (PEG) known to be a nonionic surfactant used as an emulsifying agent, which imparts the use of surfactant or an emulsifier in the food composition, as claimed.
As for claim 9, the modified teaching, in JECFA, provides that the food compositions further include: polyoxyl 35 castor oil, a polyethylene glycol (PAG), which imparts that an additive comprising an ethylene oxide, because this ingredient is known to contain moles of ethylene oxide.
Claims 8 and 16 are rejected are rejected under 35 U.S.C. 103 as being unpatentable over EPA in view of Porter, as applied to claims 1, 4-6, 8 and 16 above, further in view of Oleynik (US 20160059412).
As for claims 8 and 16, with regard to the prior art, the term grating encompasses crushing because crushing is to squeeze or force food by pressure to alter its structure and grating is a step of shredding of food by rubbing it against a tool with sharp edged openings, which forces it by pressure to alter its structure.
Although it is not written down, food processing steps of mixing, washing, slicing, fermenting, grating (i.e. crushing), and peeling are long and commonly known food processing steps, therefore, would have been a matter of common knowledge, at the time of filing, absent a showing of criticality, and it would have been obvious to try them when making food.
Further, Oleynik also teaches above processing food (0001), and further shows that it was known for food processing steps to include: stirring (i.e. mixing) (0444), washing (0325), slicing (0364), fermenting (0514), grating (i.e. crushing) (0514), and peeling (0750).
Therefore, it would have been obvious to one of skill in the art, at the time of filing to modify the method of processing food, as the modified teaching above, to include food processing steps of: mixing, washing, slicing, fermenting, grating (i.e. crushing), and peeling----------------, as claimed, because: 1) absent a showing of criticality, these method steps used for preparing food are long and commonly known, therefore, it would have been a matter of common knowledge at the time of filing and it would have been obvious to try them when making food; and 2) Oleynik shows that it was known for these food processing steps to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select them, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious.
Response to Arguments
Claim status
It is asserted, that Claim 1 was amended to provide step identifiers "a)" and "b)" to help with clarity of the claim. Claim 1 was also amended to include the recitation that the foodstuff comprises potato derivatives or beet derivatives which was the subject of dependent claim 10. Claim 10 has accordingly been cancelled. New claim 16 was added to further limit claim 8 by eliminating "mixing". As no new matter has been presented, these amendments are proper, and their entry is courteously solicited.
In response, Applicant’s timely response is appreciated.
Obvious rejections
It is asserted, that the Examiner cites the 2nd paragraph of the Executive Summary of the EPA brochure for the proposition that 2-EH is used as a defoamer. Applicants agree that EPA teaches that it can be used as a defoamer, but as part of a pesticide inert ingredient and not as part of a food processing step as recited in claim 1.
In response, this argument is not persuasive, because the rejection properly cited the “Use Summary” section, wherein the “Use Summary” section (on the 2nd page) clearly states: “In addition to its industrial uses, 2-EH is added to foods and beverages as a flavor volatile; there are two indirect FDA Food Additive uses for 2-EH.”
It is asserted, that because the function of defoaming is discussed by EPA for applications than food, its use is not disclosed as a defoamer for food processing itself.
In response, MPEP 2112.01 is clear that when the structure recited in a reference is substantially identical to the claims, claimed properties or functions are presumed to be inherent, and a prima facie case of either anticipation or obviousness has been established (see In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)). Herein the rejection showed a sound basis for believing that the products of the applicant and the prior art are the same, and Applicant has not provided evidence that they are not (see In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)).
It is asserted, that in the rejection of claim 8, the examiner has stated that "EPA teaches that the food is made by using a step of adding". Applicants respectfully contest this assertion, as EPA Page 5 of teaches that the 2-EH is added to the pesticide/herbicide, which is then applied to the crop, and/or the 2-EH is added to the process to make paper or paperboard. Either way, there is no teaching that the 2-EH is added to the food itself.
In response, EPA is clear that: “2-EH is added to foods” (see the Use Summary section), therefore this argument is not persuasive.
It is asserted, that while the addition of two materials may result in a mixture, that does not necessarily imply that the materials were "mixed" as recited in claim 8.
In response, Applicants opinion is appreciated, however mixing merely imparts combining, and since a 2-EH is taught to be added to food, they are combined. Further no evidence is provided that the adding of an ingredient with another does not amount to combining them.
It is asserted, that claim 16 has been added to eliminate "mixing" and there is no step in EPA of "washing, slicing, fermenting, grating, crushing, or peeling" as recited in new claim 16.
In response, please see the new grounds of rejection above, necessitated by said amendments.
Conclusion
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.
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Patricia George
Primary Examiner
Art Unit 1793
/PATRICIA A GEORGE/Primary Examiner, Art Unit 1793
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