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 February 6, 2026 is acknowledged. Claims 1, 2, 4-8, 12, 13, 16-24, and 27 are pending in the application. Claims 3, 9, 10, 11, 14, 15, 25, and 26 have been cancelled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 6, 2026 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.
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, 2, 4-8, and 12, 13, 16-24, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Mikkelsen et al. WO 2015059248 (hereinafter “Mikkelsen”).
With respect to claim 1, Mikkelsen teaches a method of making compositions with a high content of protein (Abstract; and P26, L4).
Regarding the recitation of “for producing a liquid high-protein milk raw material” in the preamble of claim 1, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of comprising: a step of preparing a high-protein milk fluid having a protein content of 60% by mass or more in the total solid content from a milk raw material in claim 1, Mikkelsen teaches preparing an aqueous solution of whey protein concentrate having a protein content of at least 60% (w/w) on a dry weight basis (P2, L34-35; P26, L6-7; and P68, L5-7).
Regarding the recitation of comprising a step of subjecting the milk fluid to concentration processing using a nanofiltration membrane in claim 1, Mikkelsen teaches subjecting the aqueous whey protein composition to nanofiltration (P26, L12-17).
Regarding the recitation of wherein a concentration ratio of retentate liquid in subjecting the high-protein milk fluid to concentration processing using the nanofiltration membrane is 1.1 times or more to 1.7 times or less as a refractive sugar content in claim 1, Mikkelsen teaches the whey protein concentrate solution has a lactose content of .45% (P69, Table 1). Additionally, the product (retentate) may comprise one or more carbohydrate(s) native to the whey protein composition, such as lactose, and the product may comprise 1-20% (w/w) of carbohydrate which may be inherent to the product (lactose) or added to reach the desired sweetness of taste (P26, L18-19, P30, L39-40; and P37, L26-28 and 30-34). Thus, Mikkelsen teaches a concentration ratio of retentate liquid in subjecting the high-protein milk fluid to concentration processing using the nanofiltration membrane is about 2 to about 44 ( = 1% / .45% to 20% / .45%) as a refractive sugar content. As set forth in MPEP 2144.05, in the case where the claimed range “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.). Also, the claimed range and the prior art range are close enough that one skilled in the art would have expected them to have the same properties of improved milk flavor (P61, L15-16 and P74, L11). Applicant is reminded a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); and In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).
Regarding the recitation of wherein the milk raw material produced by the method has an improved refreshing feeling and reduced protein odor and wherein the milk raw material produced by the method has a change ratio in dimethyl disulfide content of 20 to 90%, compared with the high-protein milk fluid after adjusting the refractive sugar content to the same value as the refractive sugar content of the milk raw material in claim 1, it is noted that this recitation is a resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at these claimed features since Mikkelsen positively recites all of the claimed process steps as addressed above, Mikkelsen teaches the product has improved milk flavor and less off-taste (P61, L15-16 and P74, L11), and the improved refreshing feeling, reduced protein odor, and the change ratio in dimethyl disulfide content of the product are intended results of the claimed process.
With respect to claim 2, Mikkelsen is relied upon for the teaching of the method of claim 1.
Regarding the recitation of “for producing a milk raw material” in the preamble of claim 2, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of wherein the milk raw material used for preparing the high-protein milk fluid has a protein content of 60% by mass or more in the total solid content in claim 2, Mikkelsen teaches the solution of whey protein contains a total amount of protein of at least 60% (w/w) on a dry weight basis (P19, L36-37).
With respect to claim 4, Mikkelsen is relied upon for the teaching of the method of claim 1.
Regarding the recitation of “for producing a milk raw material” in the preamble of claim 4, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of wherein a concentration of the total solid content in the high-protein milk fluid is 2 to 20% by mass in claim 4, Mikkelsen teaches the solids content of the protein composition is in the range of 2-30% (w/w) and overlaps with the presently claimed range (P29, L19-20). As set forth in MPEP 2144.05, in the case where the claimed range “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).
With respect to claim 5, Mikkelsen is relied upon for the teaching of the method of claim 1.
Regarding the recitation of “for producing a milk raw material” in the preamble of claim 5, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of wherein a concentration of protein in the high-protein milk fluid is 1.5 to 18% by mass in claim 5, Mikkelsen teaches the concentration of protein in the product is at least 4% (w/w) and overlaps with the presently claimed range (P28, L12-13). As set forth in MPEP 2144.05, in the case where the claimed range “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).
With respect to claim 6, Mikkelsen is relied upon for the teaching of the method of claim 1.
Regarding the recitation of “for producing a milk raw material” in the preamble of claim 6, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of wherein the liquid high-protein milk raw material is a liquid milk protein concentrate (MPC) or a liquid whey protein concentrate (WPC) in claim 6, Mikkelsen teaches whey protein concentrates and milk protein concentrates may be used (P39, L40-P40, L2; and P68, L5-7).
With respect to claim 7, Mikkelsen teaches a method of making compositions with a high content of protein by drying (Abstract; P25, L34-36; and P26, L4).
Regarding the recitation of “for producing a solid high-protein milk raw material obtained through a drying treatment” in the preamble of claim 7, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of comprising: a step of further subjecting the liquid high-protein milk raw material produced by the method according to claim 1 to the drying treatment in claim 7, Mikkelsen is relied upon for the teaching of the method of claim 1 as addressed above, and Mikkelsen further teaches subjecting the product to drying (P25, L34-36; and P26, L24-25).
With respect to claim 8, Mikkelsen is relied upon for the teaching of the method of claim 7.
Regarding the recitation of “for producing a milk raw material” in the preamble of claim 8, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of wherein the solid high-protein milk raw material is a solid milk protein concentrate (MPC) or a solid whey protein concentrate (WPC) in claim 8, Mikkelsen teaches whey protein concentrates and milk protein concentrates (P39, L40-P40, L2; and P68, L5-7).
With respect to claim 12, Mikkelsen teaches a method of making compositions with improved milky flavor and less off-taste (Abstract; P26, L4; P61, L15-16; P74, L11).
Regarding the recitation of “for improving a refreshing feeling and reducing a protein odor of a milk raw material” in the preamble of claim 12, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of comprising: preparing a high-protein milk fluid having a protein content of 60% by mass or more in the total solid content from a milk raw material in claim 12, Mikkelsen teaches preparing an aqueous solution of whey protein concentrate having a protein content of at least 60% (w/w) on a dry weight basis (P2, L34-35; P26, L6-7; and P68, L5-7).
Regarding the recitation of comprising subjecting the milk fluid to concentration processing using a nanofiltration membrane to obtain a liquid high-protein milk raw material in claim 12, Mikkelsen teaches subjecting the aqueous whey protein composition to nanofiltration (P26, L12-17).
Regarding the recitation of wherein a concentration ratio of retentate liquid in subjecting the high-protein milk fluid to concentration processing using the nanofiltration membrane is 1.1 times or more to 1.7 times or less as a refractive sugar content in claim 12, Mikkelsen teaches the whey protein concentrate solution has a lactose content of .45% (P69, Table 1). Additionally, the product (retentate) may comprise one or more carbohydrate(s) native to the whey protein composition, such as lactose, and the product may comprise 1-20% (w/w) of carbohydrate which may be inherent to the product (lactose) or added to reach the desired sweetness of taste (P26, L18-19, P30, L39-40; and P37, L26-28 and 30-34). Thus, Mikkelsen teaches a concentration ratio of retentate liquid in subjecting the high-protein milk fluid to concentration processing using the nanofiltration membrane is about 2 to about 44 ( = 1% / .45% to 20% / .45%) as a refractive sugar content. As set forth in MPEP 2144.05, in the case where the claimed range “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.). Also, the claimed range and the prior art range are close enough that one skilled in the art would have expected them to have the same properties of improved milk flavor (P61, L15-16 and P74, L11). Applicant is reminded a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); and In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).
Regarding the recitation of wherein the milk raw material produced by the method has an improved refreshing feeling and reduced protein odor and wherein the milk raw material produced by the method has a change ratio in dimethyl disulfide content of 20 to 90%, compared with the high-protein milk fluid after adjusting the refractive sugar content to the same value as the refractive sugar content of the milk raw material in claim 12, it is noted that this recitation is a resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at these claimed features since Mikkelsen positively recites all of the claimed process steps as addressed above, Mikkelsen teaches the product has improved milk flavor and less off-taste (P61, L15-16 and P74, L11), and the improved refreshing feeling, reduced protein odor, and the change ratio in dimethyl disulfide content of the product are intended results of the claimed process.
With respect to claim 13, Mikkelsen teaches a method of making compositions with improved milky flavor and less off-taste (Abstract; P26, L4; P61, L15-16; P74, L11).
Regarding the recitation of “for improving a refreshing feeling and reducing a protein odor of a milk raw material” in the preamble of claim 13, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of comprising: preparing a high-protein milk fluid having a protein content of 60% by mass or more in the total solid content from a milk raw material in claim 13, Mikkelsen teaches preparing an aqueous solution of whey protein concentrate having a protein content of at least 60% (w/w) on a dry weight basis (P2, L34-35; P26, L6-7; and P68, L5-7).
Regarding the recitation of comprising subjecting the milk fluid to concentration processing using a nanofiltration membrane in claim 13, Mikkelsen teaches subjecting the aqueous whey protein composition to nanofiltration (P26, L12-17).
Regarding the recitation of then to drying treatment to obtain a solid high-protein milk raw material in claim 13, Mikkelsen further teaches subjecting the product to drying (P25, L34-36; and P26, L24-25).
Regarding the recitation of wherein a concentration ratio of retentate liquid in subjecting the high-protein milk fluid to concentration processing using the nanofiltration membrane is 1.1 times or more to 1.7 times or less as a refractive sugar content in claim 13, Mikkelsen teaches the whey protein concentrate solution has a lactose content of .45% (P69, Table 1). Additionally, the product (retentate) may comprise one or more carbohydrate(s) native to the whey protein composition, such as lactose, and the product may comprise 1-20% (w/w) of carbohydrate which may be inherent to the product (lactose) or added to reach the desired sweetness of taste (P26, L18-19, P30, L39-40; and P37, L26-28 and 30-34). Thus, Mikkelsen teaches a concentration ratio of retentate liquid in subjecting the high-protein milk fluid to concentration processing using the nanofiltration membrane is about 2 to about 44 ( = 1% / .45% to 20% / .45%) as a refractive sugar content. As set forth in MPEP 2144.05, in the case where the claimed range “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.). Also, the claimed range and the prior art range are close enough that one skilled in the art would have expected them to have the same properties of improved milk flavor (P61, L15-16 and P74, L11). Applicant is reminded a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); and In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).
Regarding the recitation of wherein the milk raw material produced by the method has an improved refreshing feeling and reduced protein odor and wherein the milk raw material produced by the method has a change ratio in dimethyl disulfide content of 20 to 90%, compared with the high-protein milk fluid after adjusting the refractive sugar content to the same value as the refractive sugar content of the milk raw material in claim 13, it is noted that this recitation is a resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at these claimed features since Mikkelsen positively recites all of the claimed process steps as addressed above, Mikkelsen teaches the product has improved milk flavor and less off-taste (P61, L15-16 and P74, L11), and the improved refreshing feeling, reduced protein odor, and the change ratio in dimethyl disulfide content of the product are intended results of the claimed process.
With respect to claim 16, Mikkelsen teaches preparing foods and beverages (P27, L29-30; and P28, L1-7).
Regarding the recitation of “for producing a food or drink” in the preamble of claim 16, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of comprising a step of including the milk raw material produced by the method according to claim 1 in the food or drink in claim 16, Mikkelsen teaches the method of claim 1 as addressed above as well as using the produced product in food and beverage products (P27, L29-30; P28, L1-7).
With respect to claim 17, Mikkelsen is relied upon for the teaching of the method of claim 16.
Regarding the recitation of “for producing a food or drink” in the preamble of claim 17, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of wherein the food or drink is sterilized in claim 17, Mikkelsen teaches pasteurizing the foods and beverages (P54, L35-39).
With respect to claim 18, Mikkelsen is relied upon for the teaching of the method of claim 16.
Regarding the recitation of “for producing a food or drink” in the preamble of claim 18, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of wherein the food or drink is packed in a container in claim 18, Mikkelsen teaches packing the foods and beverages in a container (P57, L36-P58, L1).
With respect to claim 19, Mikkelsen teaches foods and beverages (P27, L29-30; and P28, L1-7).
Regarding the recitation of containing the milk raw material produced by the method according to claim 1 in claim 19, Mikkelsen teaches the method of claim 1 as addressed above as well as using the produced product in food and beverage products (P27, L29-30; and P28, L1-7).
With respect to claim 20, Mikkelsen is relied upon for the teaching of the food or drink of claim 19.
Regarding the recitation of wherein the food or drink is sterilized in claim 20, Mikkelsen teaches pasteurizing the foods and beverages (P54, L35-39).
With respect to claim 21, Mikkelsen is relied upon for the teaching of the food or drink of claim 19.
Regarding the recitation of wherein the food or drink is packed in a container in claim 21, Mikkelsen teaches packing the foods and beverages in a container (P57, L36-P58, L1).
With respect to claim 22, Mikkelsen is relied upon for the teaching of the method of claim 1.
Regarding the recitation of wherein the method satisfies at least one of numbers 1-7 in claim 22, it is noted that this recitation is a resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at the claimed feature(s) since Mikkelsen positively recites all of the claimed process steps as addressed above in claim 1, Mikkelsen teaches the product has improved milk flavor and less off-taste (P61, L15-16 and P74, L11), and these features are an intended result of the claimed process.
With respect to claim 23, Mikkelsen is relied upon for the teaching of the method of claim 12.
Regarding the recitation of wherein the method satisfies at least one of numbers 1-7 in claim 23, it is noted that this recitation is a resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at the claimed feature(s) since Mikkelsen positively recites all of the claimed process steps as addressed above in claim 12, Mikkelsen teaches the product has improved milk flavor and less off-taste (P61, L15-16 and P74, L11), and these features are an intended result of the claimed process.
With respect to claim 24, Mikkelsen is relied upon for the teaching of the method of claim 13.
Regarding the recitation of wherein the method satisfies at least one of numbers 1-7 in claim 24, it is noted that this recitation is a resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at the claimed feature(s) since Mikkelsen positively recites all of the claimed process steps as addressed above in claim 13, Mikkelsen teaches the product has improved milk flavor and less off-taste (P61, L15-16 and P74, L11), and these features are an intended result of the claimed process.
With respect to claim 27, Mikkelsen is relied upon for the teaching of the method of claim 1.
Regarding the recitation of wherein the milk raw material produced by the method has a change ratio in nonanal content of 0 to 40%, pentanal content of 0 to 40%, and pentanol content of 5 to 60%, compared with the high-protein milk fluid after adjusting the refractive sugar content to the same value as the refractive sugar content of the milk raw material in claim 27, it is noted that this recitation is a resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at these claimed features since Mikkelsen positively recites all of the claimed process steps as addressed above in claim 1, Mikkelsen teaches the product has improved milk flavor and less off-taste (P61, L15-16 and P74, L11), and the change ratio in nonanal content, pentanal content, and pentanol content of the product is an intended result of the claimed process.
Claims 1, 2, 4-8, 12, 13, 16-24, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Paulsen et al. US 20040156969 (hereinafter “Paulsen”).
With respect to claim 1, Paulsen teaches a method of making protein compositions (Abstract; and paragraph [0002]).
Regarding the recitation of “for producing a liquid high-protein milk raw material” in the preamble of claim 1, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of comprising: a step of preparing a high-protein milk fluid having a protein content of 60% by mass or more in the total solid content from a milk raw material in claim 1, Paulsen teaches preparing an aqueous solution of whey protein concentrate having a protein content of about 50% to about 100% (paragraphs [0030] and [0031]) and overlaps with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Regarding the recitation of comprising a step of subjecting the milk fluid to concentration processing using a nanofiltration membrane in claim 1, Paulsen teaches subjecting the aqueous whey protein composition to nanofiltration (paragraphs [0038]-[0039]).
Regarding the recitation of wherein a concentration ratio of retentate liquid in subjecting the high-protein milk fluid to concentration processing using the nanofiltration membrane is 1.1 times or more to 1.7 times or less as a refractive sugar content in claim 1, Paulsen does not expressly disclose this limitation. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the concentration ratio as a refractive sugar content in the method of Paulsen through routine optimization with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Paulsen teaches the product (retentate) comprises about 1-2% total carbohydrates, nanofiltering the whey protein concentrate solution to enhance the characteristics, and adjusting the processing conditions of nanofiltration to optimize the process and obtain an organoleptically desirable whey protein product (paragraphs [0008], [0010], [0019], [0022], [0036], and [0044]-[0045]), and it is understood that, 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. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
Regarding the recitation of wherein the milk raw material produced by the method has an improved refreshing feeling and reduced protein odor and wherein the milk raw material produced by the method has a change ratio in dimethyl disulfide content of 20 to 90%, compared with the high-protein milk fluid after adjusting the refractive sugar content to the same value as the refractive sugar content of the milk raw material in claim 1, it is noted that this recitation is a resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at these claimed features since Paulsen positively recites all of the claimed process steps as addressed above, Paulsen teaches the product has enhanced organoleptic characteristics and decreased off flavors (paragraphs [0008], [0019], [0022], [0038], [0039], and [0048]), and the improved refreshing feeling, reduced protein odor, and the change ratio in dimethyl disulfide content of the product are intended results of the claimed process.
Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the change ratio in dimethyl disulfide content in the method of Paulsen through routine optimization with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Paulsen teaches nanofiltering the whey protein concentrate solution to enhance the characteristics and adjusting the processing conditions of nanofiltration to optimize the process and obtain an organoleptically desirable whey protein product (paragraphs [0008], [0010], [0019], [0022], [0036], and [0044]-[0045]), and it is understood that, 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. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
With respect to claim 2, Paulsen is relied upon for the teaching of the method of claim 1.
Regarding the recitation of “for producing a milk raw material” in the preamble of claim 2, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of wherein the milk raw material used for preparing the high-protein milk fluid has a protein content of 60% by mass or more in the total solid content in claim 2, Paulsen teaches the solution of whey protein contains a total amount of protein of about 50% to about 100% (paragraphs [0030] and [0031]) and overlaps with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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).
With respect to claim 4, Paulsen is relied upon for the teaching of the method of claim 1.
Regarding the recitation of “for producing a milk raw material” in the preamble of claim 4, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of wherein a concentration of the total solid content in the high-protein milk fluid is 2 to 20% by mass in claim 4, Paulsen teaches the solids content of the protein composition is in the range of about 15% to about 25% and overlaps with the presently claimed range (paragraph [0031]). As set forth in MPEP 2144.05, in the case where the claimed range “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).
With respect to claim 5, Paulsen is relied upon for the teaching of the method of claim 1.
Regarding the recitation of “for producing a milk raw material” in the preamble of claim 5, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of wherein a concentration of protein in the high-protein milk fluid is 1.5 to 18% by mass in claim 5, Paulsen teaches the concentration of protein in the product is at least 10% and overlaps with the presently claimed range (paragraph [0030] and P4-P5, Table 1). As set forth in MPEP 2144.05, in the case where the claimed range “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).
With respect to claim 6, Paulsen is relied upon for the teaching of the method of claim 1.
Regarding the recitation of “for producing a milk raw material” in the preamble of claim 6, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of wherein the liquid high-protein milk raw material is a liquid milk protein concentrate (MPC) or a liquid whey protein concentrate (WPC) in claim 6, Paulsen teaches whey protein concentrates may be used (paragraphs [0022], [0024], and [0030]).
With respect to claim 7, Paulson teaches a method of making whey protein compositions by drying (Abstract; and paragraph [0040]).
Regarding the recitation of “for producing a solid high-protein milk raw material obtained through a drying treatment” in the preamble of claim 7, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of comprising: a step of further subjecting the liquid high-protein milk raw material produced by the method according to claim 1 to the drying treatment in claim 7, Paulsen is relied upon for the teaching of the method of claim 1 as addressed above, and Paulsen further teaches subjecting the product to drying (paragraph [0040]).
With respect to claim 8, Paulsen is relied upon for the teaching of the method of claim 7.
Regarding the recitation of “for producing a milk raw material” in the preamble of claim 8, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of wherein the solid high-protein milk raw material is a solid milk protein concentrate (MPC) or a solid whey protein concentrate (WPC) in claim 8, Paulsen teaches whey protein concentrates (Abstract; and paragraphs [0022], [0024], [0030], and [0038]-[0039]).
With respect to claim 12, Paulsen teaches a method of making compositions with enhanced organoleptic characteristics and decreased off flavors (Abstract; paragraphs [0008], [0019], [0022], [0038], [0039], and [0048]).
Regarding the recitation of “for improving a refreshing feeling of a milk raw material” in the preamble of claim 12, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of comprising: preparing a high-protein milk fluid having a protein content of 60% by mass or more in the total solid content from a milk raw material in claim 12, Paulsen teaches preparing an aqueous solution of whey protein concentrate having a protein content of about 50% to about 100% (paragraphs [0030] and [0031]) and overlaps with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Regarding the recitation of comprising subjecting the milk fluid to concentration processing using a nanofiltration membrane to obtain a liquid high-protein milk raw material in claim 12, Paulsen teaches subjecting the aqueous whey protein composition to nanofiltration (paragraphs [0038]-[0039]).
Regarding the recitation of wherein a concentration ratio of retentate liquid in subjecting the high-protein milk fluid to concentration processing using the nanofiltration membrane is 1.1 times or more to 1.7 times or less as a refractive sugar content in claim 12, Paulsen does not expressly disclose this limitation. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the concentration ratio as a refractive sugar content in the method of Paulsen through routine optimization with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Paulsen teaches the product (retentate) comprises about 1-2% total carbohydrates, nanofiltering the whey protein concentrate solution to enhance the characteristics, and adjusting the processing conditions of nanofiltration to optimize the process and obtain an organoleptically desirable whey protein product (paragraphs [0008], [0010], [0019], [0022], [0036], and [0044]-[0045]), and it is understood that, 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. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
Regarding the recitation of wherein the milk raw material produced by the method has an improved refreshing feeling and reduced protein odor and wherein the milk raw material produced by the method has a change ratio in dimethyl disulfide content of 20 to 90%, compared with the high-protein milk fluid after adjusting the refractive sugar content to the same value as the refractive sugar content of the milk raw material in claim 12, it is noted that this recitation is a resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at these claimed features since Paulsen positively recites all of the claimed process steps as addressed above, Paulsen teaches the product has enhanced organoleptic characteristics and decreased off flavors (paragraphs [0008], [0019], [0022], [0038], [0039], and [0048]), and the improved refreshing feeling, reduced protein odor, and the change ratio in dimethyl disulfide content of the product are intended results of the claimed process.
Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the change ratio in dimethyl disulfide content in the method of Paulsen through routine optimization with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Paulsen teaches nanofiltering the whey protein concentrate solution to enhance the characteristics and adjusting the processing conditions of nanofiltration to optimize the process and obtain an organoleptically desirable whey protein product (paragraphs [0008], [0010], [0019], [0022], [0036], and [0044]-[0045]), and it is understood that, 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. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
With respect to claim 13, Paulsen teaches a method of making compositions with enhanced organoleptic characteristics and decreased off flavors (Abstract; paragraphs [0008], [0019], [0022], [0038], [0039], and [0048]).
Regarding the recitation of “for improving a refreshing feeling and reducing a protein odor of a milk raw material” in the preamble of claim 13, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of comprising: preparing a high-protein milk fluid having a protein content of 60% by mass or more in the total solid content from a milk raw material in claim 13, Paulsen teaches preparing an aqueous solution of whey protein concentrate having a protein content of about 50% to about 100% (paragraphs [0030] and [0031]) and overlaps with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Regarding the recitation of comprising subjecting the milk fluid to concentration processing using a nanofiltration membrane in claim 13, Paulsen teaches subjecting the aqueous whey protein composition to nanofiltration (paragraphs [0038]-[0039]).
Regarding the recitation of then to drying treatment to obtain a solid high-protein milk raw material in claim 13, Paulsen further teaches subjecting the product to drying (paragraph [0040]).
Regarding the recitation of wherein a concentration ratio of retentate liquid in subjecting the high-protein milk fluid to concentration processing using the nanofiltration membrane is 1.1 times or more to 1.7 times or less as a refractive sugar content in claim 13, Paulsen does not expressly disclose this limitation. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the concentration ratio as a refractive sugar content in the method of Paulsen through routine optimization with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Paulsen teaches the product (retentate) comprises about 1-2% total carbohydrates, nanofiltering the whey protein concentrate solution to enhance the characteristics, and adjusting the processing conditions of nanofiltration to optimize the process and obtain an organoleptically desirable whey protein product (paragraphs [0008], [0010], [0019], [0022], [0036], and [0044]-[0045]), and it is understood that, 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. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
Regarding the recitation of wherein the milk raw material produced by the method has an improved refreshing feeling and reduced protein odor and wherein the milk raw material produced by the method has a change ratio in dimethyl disulfide content of 20 to 90%, compared with the high-protein milk fluid after adjusting the refractive sugar content to the same value as the refractive sugar content of the milk raw material in claim 13, it is noted that this recitation is a resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at these claimed features since Paulsen positively recites all of the claimed process steps as addressed above, Paulsen teaches the product has enhanced organoleptic characteristics and decreased off flavors (paragraphs [0008], [0019], [0022], [0038], [0039], and [0048]), and the improved refreshing feeling, reduced protein odor, and the change ratio in dimethyl disulfide content of the product are intended results of the claimed process.
Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the change ratio in dimethyl disulfide content in the method of Paulsen through routine optimization with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Paulsen teaches nanofiltering the whey protein concentrate solution to enhance the characteristics and adjusting the processing conditions of nanofiltration to optimize the process and obtain an organoleptically desirable whey protein product (paragraphs [0008], [0010], [0019], [0022], [0036], and [0044]-[0045]), and it is understood that, 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. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
With respect to claim 16, Paulsen teaches preparing foods and beverages (paragraphs [0008], [0010], [0011], [0022], and [0041]).
Regarding the recitation of “for producing a food or drink” in the preamble of claim 16, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of comprising a step of including the milk raw material produced by the method according to claim 1 in the food or drink in claim 16, Paulsen teaches the method of claim 1 as addressed above as well as using the produced product in food and beverage products (paragraphs [0008], [0010], [0011], [0022], and [0041]).
With respect to claim 17, Paulsen is relied upon for the teaching of the method of claim 16.
Regarding the recitation of “for producing a food or drink” in the preamble of claim 17, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of wherein the food or drink is sterilized in claim 17, Paulsen teaches pasteurizing the foods and beverages (paragraph [0028]).
With respect to claim 18, Paulsen is relied upon for the teaching of the method of claim 16.
Regarding the recitation of “for producing a food or drink” in the preamble of claim 18, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of wherein the food or drink is packed in a container d in claim 18, Paulsen teaches packing the foods and beverages in a container (paragraphs [0050] and [0061]).
With respect to claim 19, Paulsen teaches foods and beverages (paragraphs [0008], [0010], [0011], [0022], and [0041]).
Regarding the recitation of containing the milk raw material produced by the method according to claim 1 in claim 19, Paulsen teaches the method of claim 1 as addressed above as well as using the produced product in food and beverage products (paragraphs [0008], [0010], [0011], [0022], and [0041]).
With respect to claim 20, Paulsen is relied upon for the teaching of the food or drink of claim 19.
Regarding the recitation of wherein the food or drink is sterilized in claim 20, Paulsen teaches pasteurizing the foods and beverages (paragraph [0028]).
With respect to claim 21, Paulsen is relied upon for the teaching of the food or drink of claim 19.
Regarding the recitation of wherein the food or drink is packed in a container in claim 21, Paulsen teaches packing the foods and beverages in a container (paragraphs [0050] and [0061]).
With respect to claim 22, Paulsen is relied upon for the teaching of the method of claim 1.
Regarding the recitation of wherein the method satisfies at least one of numbers 1-7 in claim 22, it is noted that this recitation is a resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at the claimed feature(s) since Paulsen positively recites all of the claimed process steps as addressed above in claim 1, Paulsen teaches compositions with enhanced organoleptic characteristics and decreased off flavors (Abstract; paragraphs [0008], [0019], [0022], [0038], [0039], and [0048]), and these features are an intended result of the claimed process.
Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the ratio of change in carbohydrate concentration, sodium concentration, potassium concentration, magnesium concentration, calcium concentration, phosphorus concentration, and/or chlorine concentration in the method of Paulsen through routine optimization with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Paulsen teaches nanofiltering the whey protein concentrate solution to enhance the characteristics and adjusting the processing conditions of nanofiltration to optimize the process and obtain an organoleptically desirable whey protein product (paragraphs [0008], [0010], [0019], [0022], [0036], and [0044]-[0045]), and it is understood that, 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. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
With respect to claim 23, Paulsen is relied upon for the teaching of the method of claim 12.
Regarding the recitation of wherein the method satisfies at least one of numbers 1-7 in claim 23, it is noted that this recitation is a resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at the claimed feature(s) since Paulsen positively recites all of the claimed process steps as addressed above in claim 12, Paulsen teaches compositions with enhanced organoleptic characteristics and decreased off flavors (Abstract; paragraphs [0008], [0019], [0022], [0038], [0039], and [0048]), and these features are an intended result of the claimed process.
Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the ratio of change in carbohydrate concentration, sodium concentration, potassium concentration, magnesium concentration, calcium concentration, phosphorus concentration, and/or chlorine concentration in the method of Paulsen through routine optimization with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Paulsen teaches nanofiltering the whey protein concentrate solution to enhance the characteristics and adjusting the processing conditions of nanofiltration to optimize the process and obtain an organoleptically desirable whey protein product (paragraphs [0008], [0010], [0019], [0022], [0036], and [0044]-[0045]), and it is understood that, 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. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
With respect to claim 24, Paulsen is relied upon for the teaching of the method of claim 13.
Regarding the recitation of wherein the method satisfies at least one of numbers 1-7 in claim 24, it is noted that this recitation is a resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at the claimed feature(s) since Paulsen positively recites all of the claimed process steps as addressed above in claim 13, Paulsen teaches compositions with enhanced organoleptic characteristics and decreased off flavors (Abstract; paragraphs [0008], [0019], [0022], [0038], [0039], and [0048]), and these features are an intended result of the claimed process.
Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the ratio of change in carbohydrate concentration, sodium concentration, potassium concentration, magnesium concentration, calcium concentration, phosphorus concentration, and/or chlorine concentration in the method of Paulsen through routine optimization with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Paulsen teaches nanofiltering the whey protein concentrate solution to enhance the characteristics and adjusting the processing conditions of nanofiltration to optimize the process and obtain an organoleptically desirable whey protein product (paragraphs [0008], [0010], [0019], [0022], [0036], and [0044]-[0045]), and it is understood that, 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. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
With respect to claim 27, Paulsen is relied upon for the teaching of the method of claim 1.
Regarding the recitation of wherein the milk raw material produced by the method has a change ratio in nonanal content of 0 to 40%, pentanal content of 0 to 40%, and pentanol content of 5 to 60%, compared with the high-protein milk fluid after adjusting the refractive sugar content to the same value as the refractive sugar content of the milk raw material in claim 27, it is noted that this recitation is a resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at these claimed features since Paulsen positively recites all of the claimed process steps as addressed above in claim 1, Paulsen teaches compositions with enhanced organoleptic characteristics and decreased off flavors (Abstract; paragraphs [0008], [0019], [0022], [0038], [0039], and [0048]), and the change ratio in nonanal content, pentanal content, and pentanol content of the product is an intended result of the claimed process.
Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the change ratio in nonanal content, pentanol content, and pentanal content in the method of Paulsen through routine optimization with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Paulsen teaches nanofiltering the whey protein concentrate solution to enhance the characteristics and adjusting the processing conditions of nanofiltration to optimize the process and obtain an organoleptically desirable whey protein product (paragraphs [0008], [0010], [0019], [0022], [0036], and [0044]-[0045]), and it is understood that, 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. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
Response to Arguments
Applicant’s remarks filed February 6, 2026 are acknowledged.
Due to the amendments to the claims, the claim objections and the 35 USC 112 rejection in the previous Office Action has been withdrawn (P12).
Applicant’s arguments with respect to Mikkelsen and Paulsen have been fully considered, but they are unpersuasive (P13-P16).
Applicant argues as shown in the Test Example 1 and Figure 1 of the specification, the specific concentration ratio range of 1.1 to 1.7 times yields a remarkable improvement that would have been beyond the expectation of a person having ordinary skill in the art. Mikkelsen fails to teach or suggest the presently required concentration ratio of the retentate of 1.1 times or more to 1.7 times or less as a refractive sugar content. Calculating a concentration ratio based solely on lactose content is technically inaccurate and does not represent the “refractive sugar content” defined in the presently claimed invention. The conclusion that Mikkelsen’s range overlaps with the claimed range is clearly unsupported by the actual teachings therein. This further shows that the specified concentration ratio based on refractive sugar content was not recognized in the cited prior art as a result-effective variable for controlling dimethyl disulfide or improving aroma. Mikkelsen fails to teach or suggest the specific NF concentration ratio of 1.1 to 1.7 as measured by refractive sugar content, let alone the adjustment of dimethyl disulfide to improve refreshing feeling (P13-P15).
Applicant also argues Paulsen fails to teach or suggest the presently specified concentration ratio of the retentate (1.1 to 1.7 times as a refractive sugar content). Paulsen’s disclosure of 1-2% total carbohydrates thus does not teach or suggest the specific refractive sugar content range recited in the present claims. The Examiner’s conclusion that this range is a matter of routine optimization is unsupported by the actual teachings of Paulsen. Paulsen is completely silent regarding the adjustment of the dimethyl disulfide content to simultaneously improve the refreshing feeling and reduce the protein odor of the milk raw material. Since Paulsen does not recognize the relationship between NF concentration ratio (as measured by refractive sugar content) and the specific reduction of dimethyl disulfide, this claimed variable is clearly not recognized in the cited prior art as a result-effective variate and supports an optimization argument. A person having ordinary skill in the art would have no motivation to limit the concentration ratio to the specific narrow range of 1.1 to 1.7 times for the purpose of controlling sulfur-based aroma components (dimethyl disulfide) in view of the deficient teachings of Paulsen. The claimed range produces remarkable and unexpected effect on the sensory profile of high-protein milk that is neither disclosed nor contemplated by Paulsen (P15-P16).
Examiner disagrees. Mikkelsen and Paulsen teach the claimed methods, and a prima facie case of obviousness has been established. As addressed above, Mikkelsen teaches the product (retentate) may comprise one or more carbohydrate(s) native to the whey protein composition, such as lactose, and the product may comprise carbohydrate which may be inherent to the product (lactose) or added to reach the desired sweetness of taste (P26, L18-19, P30, L39-40; and P37, L26-28 and 30-34, emphasis added). While Paulsen does not expressly disclose the concentration ratio of the retentate liquid, it would have been obvious to one of ordinary skill in the art before to optimize the concentration through routine optimization because Paulsen teaches the product (retentate) comprises about 1-2% total carbohydrates, nanofiltering the whey protein concentrate solution to enhance the characteristics, and adjusting the processing conditions of nanofiltration to optimize the process and obtain an organoleptically desirable whey protein product (paragraphs [0008], [0010], [0019], [0022], [0036], and [0044]-[0045]), and it is understood that, 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) (MPEP 2144.05 II).
Additionally, the produced product having the properties of improved refreshing feeling and reduced protein odor as well as the claimed aroma components (dimethyl disulfide, nonanal, pentanol, and pentanal) would naturally occur from said method since Mikkelsen and Paulsen positively recite all of the claimed process steps as previously demonstrated, Mikkelsen teaches the product has improved milk flavor and less off-taste (P61, L15-16 and P74, L11), Paulsen teaches the product has enhanced organoleptic characteristics and decreased off flavors (paragraphs [0008], [0019], [0022], [0038], [0039], and [0048]), and the improved refreshing feeling, reduced protein odor, and the particular aroma components of the product is an intended result of the claimed process, absent any clear and convincing evidence to the contrary. 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).
Also, it would have been obvious to one of ordinary skill in the art to optimize the change ratio in dimethyl disulfide content, nonanal content, pentanol content, and pentanal content in the method of Paulsen through routine optimization with the expectation of successfully preparing a functional product because Paulsen teaches nanofiltering the whey protein concentrate solution to enhance the characteristics and adjusting the processing conditions of nanofiltration to optimize the process and obtain an organoleptically desirable whey protein product (paragraphs [0008], [0010], [0019], [0022], [0036], and [0044]-[0045]), and it is understood that, 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) (MPEP 2144.05 II).
Further, the features as described by the Applicant are indeed expected in view of the prior art since Mikkelsen teaches the product has improved milk flavor and less off-taste (P61, L15-16 and P74, L11) and Paulsen teaches the product has enhanced organoleptic characteristics and decreased off flavors (paragraphs [0008], [0019], [0022], [0038], [0039], and [0048]). Applicant is reminded that any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (differences in sedative and anticholinergic effects between prior art and claimed antidepressants were not unexpected). In other words, the unexpectedness must be sufficient “to secure the validity of the claims in suit.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1381 (Fed. Cir. 2005) and MPEP 716.02. Additionally, Applicant has not demonstrated that the methods of Mikkelsen and Paulsen are incapable of arriving at a milk raw material with the claimed properties. Applicant is reminded if a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc). Applicant is also reminded that a mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979); In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991).
Conclusion
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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