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 .
DETAILED ACTION
Status of Claims
Note: The amendment of March 19th 2026 has been considered.
Claims 1 and 3-8 have been amended.
Claims 2, 9 and 15-17 have been cancelled.
Claims 1, 3-8 and 10-14 are pending in the current application.
Claims 10-14 are withdrawn from consideration.
Claims 1 and 3-8 are examined in the current application.
Any rejections not recited below have been withdrawn.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 17th 2026 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35 of the U.S. Code not included in this action can be found in a prior Office action.
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 and 3-8 stand rejected under 35 U.S.C. 103 as being unpatentable over Bialek et al (USPatPub. 2007/0178209 A1) in view of NPL Russ et al., “Pre-gelatinized tapioca starch and its mixtures with xanthan gum and i-carrageenan” (from Food Hydrocolloids 56 (2016) 180-188).
Regarding claims 1, 4-8: Bialek discloses a water-in-oil emulsion, which means an emulsion with an oil continuous phase, for the preparation of a frozen confection (see Bialek abstract; paragraphs [0018], [0019], [0034] and [0048]), the emulsion comprising 20-99wt% aqueous phase and 0.01-10wt% oil phase (see Bialek abstract; paragraphs [0006], [0007], [0014], [0036] and [0039]). Bialek further discloses the water-in-oil comprises at least 5wt% and at most 25wt% of one or more freezing point depressors (e.g., sugars, oligosaccharides and/or salts) (see Bialek abstract; paragraphs [0031] and [0044]-[0047]). Bialek also discloses the water-in-oil comprises less than 1wt% emulsifier, such as, polyglycerol esters of fatty acid (see Bialek paragraphs [0015] and [0038]). Given the fact the range of constituents recited in claims 1, 2 and 7-9 overlap the ranges disclosed in Bialek, a prima facie case of obviousness exists (see MPEP §2144.05).
As to the HLB values in claim 1 and 5: Bialek discloses a water-in-oil emulsion (see Bialek paragraph [0019]). Given the fact water-in-oil emulsions require emulsifiers with HLB values between 3.5 and 6, the claimed HLB value range overlaps the HLB value range in Bialek, and thus prima facie case of obviousness exists (see MPEP §2144.05)
As to the temperature differences between the phases that provide solid fat content of 25% recited in claim 1 and 4: Bialek discloses using liquid oils, such as, sunflower oil, rapeseed oil, linseed oil (see Bialek paragraph [0037]) that are known to have freezing points that are at least 10°C lower than the freezing point of water. Accordingly, the oil phase in Bialek will exhibit solid fat content of 25wt% at much lower temperatures (at least 10°C lower) than the temperature at which the water phase will contain 25wt% ice.
As to the structuring agent recited in claim 1: Bialek discloses stabilizing the water-in-oil emulsion with 0.05-1wt% carrageenan (see Bialek paragraph [0045]), but fails to disclose iota-carrageenan, or the combination of iota-carrageenan with tapioca starch; However, Russ discloses stabilizing water-in-oil emulsions with the water soluble mixtures of iota-carrageenan and tapioca starch to provide an water-in-oil emulsion with a homogenous pasting profile and to prevent phase separation and further observed the combination provided a viscosity that is temperature dependent (i.e., viscosity and temperature are inversely proportional) (see Russ abstract; sections 2.3, 3.2, 3.4 and 4). Therefore, it would have been obvious to a skilled artisan at the time the invention was made to have modified Bialek and to have used the water-in-oil approved and tested stabilizer combination of iota-carrageenan and tapioca starch in the water-in-oil emulsion, in order to attain a water-in-oil emulsion that has homogeneous pasting profile, does not exhibit phase separation and its viscosity increases as the temperature drops, and thus arrive at the claimed limitations.
As to the relative content of the emulsion structuring agent recited in claim 1: Russ discloses that the water soluble mixtures of iota-carrageenan and tapioca starch provide a homogenous pasting profile, prevents phase separation and the combination provides a viscosity that is temperature dependent (i.e., viscosity and temperature are inversely proportional), and observed said effects when using 0.1% to 1% of the mixtures (see Russ abstract; sections 2.3, 3.2, 3.4 and 4). Therefore, it would have been obvious to a skilled artisan at the time the application was filed to have modified Bialek and to have used the iota-carrageenan and tapioca starch combination at the relative content recited in claim 1, in order to attain a water-in-oil emulsion that has homogeneous pasting profile, does not exhibit phase separation and its viscosity increases as the temperature drops, and thus arrive at the claimed limitations.
In the alternative, given the fact the emulsion stabilizing effect of the iota-carrageenan and tapioca starch mixture is gradual, depending on the relative content of the mixture in the emulsion (see Russ abstract; sections 2.3, 3.2, 3.4 and 4), it would have been obvious to a skilled artisan at the time the application was filed to have modified the relative contents of the mixture of iota-carrageenan and tapioca starch (i.e., emulsion structuring agent) in the water-in-oil emulsions in order to attain desired emulsion stabilizing effect, and thus arrive at the claimed limitations. As set forth in MPEP §2144.05 discovering an optimum value of a result effective variable, involves only routine skill in the art.
As to the conductivity of 0 mS/cm recited in claim 1: Bialek discloses a water-in-oil emulsion for the preparation of a frozen confection (see Bialek abstract; paragraphs [0019], [0034] and [0048]). Given the fact water-in-oil emulsions are emulsions where oil is the continuous phase, and since oil does not conduct electricity, the water-in-oil emulsion in Bialek does not conduct electricity and clearly meets the claimed limitations.
As to the scoopablity profile recited in claim 1: Bialek in view of Russ discloses a water-in-oil emulsion for the preparation of a frozen confection wherein the structuring agents comprise iota-carrageenan and/or tapioca starch (see discussion above), but fail to disclose the scoopability profile recited in claim 1; However, given the fact Russ discloses stabilizing water-in-oil emulsions with iota-carrageenan and tapioca starch provides water-in-oil emulsions with a homogenous pasting profile, prevents phase separation and a viscosity that is temperature dependent (i.e., viscosity and temperature are inversely proportional), which means scoopability at lower temperatures, and since Bialek in view of Russ disclose the same water-in-oil frozen confection recited in the claims, it is examiner’s position the scoopability profile recited in claim 1 is inherently provided in the water-in-oil frozen confection disclosed in the prior art. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claim 3: Bialek discloses using liquid oils, such as, sunflower oil, rapeseed oil, linseed oil (see Bialek paragraph [0037]).
Response to Arguments
Applicant's arguments filed on April 17th 2026 have been fully considered but they are not persuasive.
Applicant argues on page 3 of the “Remarks” that the prior art references fail to render the claimed invention obvious, because Bialek only discloses water-in-oil emulsion in paragraph [0019] and not in the examples, or the rest of the disclosure, therefore, a person of ordinary skill in the art would not have been motivated to select the water-in-oil embodiment in Bialek. The examiner respectfully disagrees.
In paragraph [019] Bialek discloses “[w]hen the aerated food product is an edible emulsion it may be any emulsion including an oil in water emulsion (O/W), a water in oil emulsion (W/O) duplex emulsions (W/OIW or OIW/O)…Preferably, the aerated food product according to the invention is an oil in water emulsion.” While Bialek discloses examples employing the oil-in-water emulsion in frozen confections and that the oil-in-water is the preferred embodiment of the invention, Bialek still discloses in paragraph [0019] that water-in-oil is one of the possible embodiments to be used in the aerated confection that may be a frozen confection (see Bialek paragraphs [0018] and [0034]) without discrediting, or criticizing the water-in-oil embodiment. Accordingly, the disclosure in Bialek clearly meets the claimed limitations. As set forth in MPEP §2123 (II): “[d]isclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”. Furthermore, MPEP §2145(X)(D) teaches “a reference does not reach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit or otherwise discourage investigation into the invention claimed”
Applicant argues on page 4 of the “Remarks” that the prior art references fail to render the claimed invention obvious, because Bialek concerns with reducing saturated fatty acids in aerated food products (e.g., frozen confections), whereas the current application is concerns with frozen confections with wider temperature stability and scoopability range. The examiner respectfully disagrees.
While Bialek concerns with reducing saturated fatty acids in aerated food products (e.g., frozen confections), Russ provides clear motivation to modify Bialek and to use the mixture of iota-carrageenan and tapioca starch in the emulsion in Bialek in order to attain a water-in-oil emulsion that has homogenous pasting profile, does not exhibit phase separation and is viscosity increases as the temperature drops (see discussion, above). The fact that Applicant had discovered additional advantages/motivation to modify Bialek and use the mixture of iota-carrageenan and tapioca starch in the emulsion in Bialek, does not render the claimed invention patentable over the prior art.
Applicant argues on pages 4-5 of the “Remarks” that the prior art references fail to render the claimed invention obvious, because Bialek discloses the carrageenan as an emulsifier rather than a stabilizer to be used in concert with an emulsifier. The examiner respectfully disagrees.
Since emulsifiers stabilize emulsions (i.e., prevent/reduce phase separation). Emulsifiers are interpreted as stabilizers.
In the alternative, Bialek discloses the water-in-oil comprises less than 1wt% emulsifier, such as, polyglycerol esters of fatty acid (see Bialek paragraphs [0015] and [0038]). Bialek also discloses of further Bialek discloses stabilizing the water-in-oil emulsion with 0.05-1wt% carrageenan (see Bialek paragraph [0045]). Which meets the claimed emulsifier/stabilizer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASSAF ZILBERING whose telephone number is (571)270-3029. The examiner can normally be reached on M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached on (571) 270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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