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 .
Claim Rejections - 35 USC § 112
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.
Claim 59 is 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 due to the claimed range 2-3% in the phrase “the total amount of the thickener”. The claim(s) 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. Though the specification teaches thickener in excess of 2%, such as at par. 0074, 2.12%. The specification and figures are silent to the defined and limited range of 2-3%.
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 43-53, 57 and 59-60 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (20150272170) in view of Rapp (5096728) and Sebring (3378376).
Wang teaches a method of preparing a foamed composition (par. 0234), wherein the composition to be foamed includes
a) an amount of egg white protein(s), or artificially or synthetically produced egg white protein(s) (par. 0208)
b) a combination of thickeners (par. 0210 mixtures thereof, par. 0215 combination thereof), wherein the total amount of thickener(s) is at least 2.0% w/w in the composition (par. 0211 last 3 lines; par. 0215 last 5 lines); and, the combination of thickeners is a combination which comprises guar gum (par. 0215), xanthan gum (par. 0215) and with respect to claim 57, locust bean gum (par. 0215).
wherein the method includes the steps of
heat treating the composition (par. 0235),
aerating the composition via gas sparging to produce the foamed egg white composition (par. 0234; 2nd to last line), where the foamed egg white composition has improved foam stability compared to that which was not subject to the heat treating (par. 0010, table 5 egg white foam relative non, “stable” vs “runnier”; par. 0010). Alternatively, it is the examiner’s position that the claimed “improved” is not limited by any distinct definition other than due to a heat treatment step. In addition, claimed “improved foam stability” is not a result of a different product as claimed and thus given that Wang teaches an amount of egg and an amount of thickener as claimed and which are identical to that set forth in the present claims, Wang is taken to have the same properties and thus performing the recited “improved foam stability compared to that which was not subject to” heat treatment as taught by Wang (par. 0235).
Wang teaches the egg containing product comprises a combination of thickeners (par. 0215 combination thereof) to inhibit separation of the food product into air and water phases (par. 0215) including guar gum and thus one of ordinary skill in the art would have been motivated to look to the art of known stabilizing and bodying agents known for foods comprising guar gum as taught by Sebring.
Sebring teaches in addition to the benefits of the addition of guar gum to egg whites, including improving foam stability (col. 1 lines 55-56). Sebring teaches well known natural gums including Arabic gum (col. 2 line 12) known for providing a same desired function as stabilizing and bodying agent (col. 2 lines 12-15)
Thus since Wang teaches the advantage of a combination of thickeners (par. 0215 combination thereof), since Wang teaches , the combination of thickeners is a combination which comprises guar gum (par. 0215), xanthan gum (par. 0215) and with respect to claim 57, locust bean gum (par. 0215) and since Sebring teaches the same well-known guar gum, locust bean gum as taught by Wang, in addition to Arabic gum. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to further incorporate well known natural gums, including gum Arabic as taught by Sebring thus achieving as same combination of thickeners and more specifically a total amount of thickener(s) at least 2.0% w/w in the composition (par. 0211 last 3 lines; par. 0215 last 5 lines) for its art recognized inhibit separation of the food product into air and water phases (par. 0215) and improving foam stability (col. 1 lines 55-56).
Wang teaches the egg containing product undergoing heat treatment and more specifically pasteurization though silent to the temperature or time thus one of ordinary skill in the art would have been motivated to look to the art of known pasteurization methods of egg white products.
Rapp teaches egg white (col. 3 lines 19-21) pasteurization at temperature of at least 60C, including the range of 62C-67C for a time of 1-8 minutes (col. 5 lines 45-50).
Thus since Wang teaches pasteurization, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to incorporate known pasteurization temperature and time for its art recognized purpose of heating the liquid egg to a temperature and for a time effective to reduce the number of microbial organisms to effectively remove the threat of pathogenic organisms such as Salmonella and to extend the refrigerated storage life of the product.
Rapp teaches longer times require lower temperatures and higher temperatures permit shorter processing times (col. 5 lines 2-4). Thus it would have been obvious to one of ordinary skill in the art at the time the invention was filed to incorporate known pasteurization temperature of 60 to 63C as taught by Rapp and a time of 2 minutes which is encompassed by the range as taught by Rapp (col. 5 lines 45-50), for its art recognized purpose of heating the liquid egg to a temperature and for a time effective to reduce the number of microbial organisms to effectively remove the threat of pathogenic organisms such as Salmonella and to extend the refrigerated storage life of the product without adversely affecting the character of the egg product.
In addition, it is not necessary that suggestion or motivation be found within the four comers of the reference(s) themselves. "The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of... the explicit content of issued patents." KSR Int'l. Co. v. Teleflex lnc., 550 U.S. 398, 419. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416., The question to be asked is "whether the improvement is more than the predictable use of prior art elements according to their established functions." KSR, 550 U.S. at 417.
A conclusion of obviousness can be made from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference. See In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Such as in the instant case since Wang teaches pasteurization, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to incorporate known pasteurization temperature and time for its art recognized purpose of heating the liquid egg to a temperature and for a time effective to reduce the number of microbial organisms to effectively remove the threat of pathogenic organisms such as Salmonella and to extend the refrigerated storage life of the product.
Though silent to maintains a foam volume and foam liquid of at least 70% 10 minutes after having been foamed, since Wang teaches applicants composition, gas sparging and heating and since Rapp teaches applicants claimed heating temperatures and time. It would have been obvious to one of ordinary skill in the art through routine experimentation achieve a desired result due a same desire of improving foam capability as taught by Wang.
Applicant has described the product with parameters which cannot be measured by the office for prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability purposes. As 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 USPQ430, 433 (CCPA 1977).
Burden shift to applicant to provide evidence the same composition does not encompass applicants claimed foam volume and foam liquid of at least 70% 10 minutes after having been foamed.
A same pulse, i.e. broad bean and pea and its properties are inseparable. Therefore, if the prior art teaches the identical pulse type, the properties applicant discloses and/or claims are necessarily present.
In addition, since Wang teaches the same composition as claimed, and heat treating as claimed and gas sparging as claimed. If there is any difference between the Wang and that of the instant claims, the difference would have been minor and obvious insofar as because “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(1), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934).
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
Thus the claimed invention is obvious over the reference, absent any clear and convincing evidence and/or arguments to the contrary. Further "where 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." (see MPEP 2144.04 IIA) "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 of percentage ranges is the optimum combination of percentages." (see MPEP 2144.04 IIA)
With respect to claim 44, wherein the composition includes at least 5% w/w protein is taken with respect to a further protein component to the “amount of egg white protein” (par. 0051) or with respect to claim 45, the composition includes 5-20% w/w protein (par. 0051) or with respect to claim 46 the composition includes 8-12% w/w protein (par. 0051) thus it would have been obvious to one of ordinary skill in the art at the time the invention was filed to teach the claimed ranges to achieve a same claimed amount of protein relative the final product.
With respect to claim 47, the egg white protein or artificially or synthetic equivalents of egg white protein are selected from the group consisting of ovomucin, ovomucoid, ovalbumin, globulin, or a combination thereof (par. 0208).
Wang teaches sugar and/or sweetener for flavoring (par. 0223). It would have been obvious to one of ordinary skill in the art at the time the invention was filed incorporate an amount of sugar in the amount of 1-30% w/v thus achieving the desired flavoring as a sweetener and/or an amount of sugar specific to a final product to enhance taste as taught by Wang (par. 0221).
With respect to claim 49, the composition has a pH of 6-10 (par. 0219; 2.5-8 pH), with respect to claim 50, wherein the composition has a pH of 8-9 (par. 0219; 2.5-8 pH). Though silent to the specific claimed pH ranges, Wang teaches pH ranges which encompass those claimed. Thus it would have been obvious to one of ordinary skill in the art at the time the invention was filed to teach the claimed ranges of pH since it may be desirable to raise or lower the pH of the food product depending on the type of food product desired as taught by Wang (par. 0219).
With respect to claim 51, though silent to “mousse”, Wang teaches products requiring aeration including whipped toppings (par. 0196). Thus since the product of Wang is not intended to be limited. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to teach a desired type of desert product which requires aeration such as in the instant case mousse.
Wang teaches the product with or without dairy (par. 0227). Thus it would have been obvious to one of ordinary skill in the art at the time the invention was filed to teach the product is dairy free thus providing the option of a food product which does not require or is purposefully excluded to provide the benefit to specific classes of consumers.
With respect to claim 52, wherein the foam is not cooked, relative the claimed heating step (par. 0235 pasteurization).
It is noted claim 53, does not include specific elected dairy free mouse, and is drawn to cooking methods where the species non-cooked was elected.
With respect to claim 56, the first starch thickener is corn starch (par. 0210).
With respect to claim 57, the thickener further includes locust bean gum (par. 0215).
Wang teaches the total amount of the thickeners may range from .025 to about 5%. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide a same range of a same thickeners as taught by Wang for its art recognized and applicants intended purpose of improving foamability since an amount beyond 2% w/w, the greater the foam stability and synergistic effect seen and since if the amount of thickeners is increased too much, the concentration of the foam forming elements in the egg white (i.e. the proteins) may be reduced somewhat, which could impact overall foam characteristics.
Wang teaches a same egg protein (par. 0208) though silent to the form. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide a same egg white protein wherein the egg white protein(s) are provided in the form of egg white liquid (EWL) as taught by Rapp (col. 4 lines 19-20) thus providing a same protein source and more specifically a same desired egg comprising product as taught by both.
Response to Arguments
With respect to applicants urgings directed Wang being silent to gum Arabic. Importantly Wang teaches the egg containing product comprises a combination of thickeners (par. 0215 combination thereof) to inhibit separation of the food product into air and water phases (par. 0215) including guar gum and thus one of ordinary skill in the art would have been motivated to look to the art of known stabilizing and bodying agents known for foods comprising guar gum as taught by Sebring.
Sebring teaches in addition to the benefits of the addition of guar gum to egg whites, including improving foam stability (col. 1 lines 55-56). Sebring teaches well known natural gums including Arabic gum (col. 2 line 12) known for providing a same desired function as stabilizing and bodying agent (col. 2 lines 12-15)
Thus since Wang teaches the advantage of a combination of thickeners (par. 0215 combination thereof), since Wang teaches , the combination of thickeners is a combination which comprises guar gum (par. 0215), xanthan gum (par. 0215) and with respect to claim 57, locust bean gum (par. 0215) and since Sebring teaches the same well-known guar gum, locust bean gum as taught by Wang, in addition to Arabic gum. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to further incorporate well known natural gums, including gum Arabic as taught by Sebring thus achieving as same combination of thickeners and more specifically a total amount of thickener(s) at least 2.0% w/w in the composition (par. 0211 last 3 lines; par. 0215 last 5 lines) for its art recognized inhibit separation of the food product into air and water phases (par. 0215) and improving foam stability (col. 1 lines 55-56).
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN N LEFF whose telephone number is (571)272-6527. The examiner can normally be reached on M-F 8:30-5:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at (571)270-34753475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN N LEFF/ Primary Examiner, Art Unit 1792