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 .
Response to Amendment
The amendment filed 06/24/2026 has been entered. Claims 1-2, 5-7, and 16 remain pending in the application. Applicant’s amendments to the Claims have overcome each and every 112(b) rejection previously set forth in the Non-Final Office Action mailed 02/24/2026, except where otherwise stated.
Claim Objections
Claim 16 is objected to because of the following informalities:
Regarding claim 16, the parentheses should be removed from “(as determined by a Duncan Test)”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1, 2, 5-7, and 16 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the hydrolyzed dairy composition " in lines 7-8. There is insufficient antecedent basis for this limitation in the claim.
Claims 2 and 5-7 are rejected as indefinite as a result of depending upon indefinite claim 1.
Regarding claim 16, the meaning of “wherein the dairy composition has sweetness, sourness, and cultured aspects not significantly different (as determined by a Duncan Test) from a comparable dairy composition that differs only in that it contains 7% sucrose and lacks the lactose hydrolysis products and flavor modifier of the dairy composition” is unclear because the term “cultured aspects” has not been clearly defined in the claims or specification and the scope of “not significantly different” is unclear. Does a “cultured aspects” refer to an ingredient, a flavor, or something else entirely? What difference in values, and in what measurable units, constitutes “not significantly different”? Is “not significantly different” only modifying cultured aspects or all of “sweetness, sourness and cultured aspects”? Due to the unclear scope of “not significantly different” and unclear meaning of “cultured aspects”, claim 16 is rejected as indefinite.
Furthermore, the term “not significantly different” in claim 16 is a relative term which renders the claim indefinite. The term “not significantly different” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Additionally, the meaning of “Duncan Test” in claim 16 is unclear. Neither the claims nor the Applicant’s Specification define “Duncan Test” and the term does not appear to have a commonly known or accepted meaning. Therefore, claim 16 is rejected as indefinite.
Claims 2 and 5-7 are rejected as indefinite as a result of depending upon indefinite claim 1.
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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carrigan (US 20120040052 A1) in view of Purkayastha ( US 20180035702 A1) and Ashokan (US 20130034648 A1).
Regarding claim 1, Carrigan teaches (Paragraph 0001, 0030) a low or zero lactose milk (dairy composition) prepared by a process comprising enzymatically hydrolysing the lactose present in mammalian milk. Carrigan further teaches (Paragraph 0098) lactase catalyzes the hydrolysis. Carrigan further teaches (Table 7) an exemplary embodiment of a reduced lactose semi-skimmed bovine milk (dairy composition) comprising glucose and galactose, (lactose hydrolysis products). Also, Carrigan teaches (Paragraph 0087) the product may comprise ingredients selected from a list including sugars and sweeteners. Furthermore, Carrigan teaches (Paragraph 0094) the reduced lactose or lactose free milk may have no additional sweetness, or may have a higher relative sweetness such as is desirable from a sensory perspective depending on national preferences.
The Examiner also notes that, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, as is shown above for the claimed dairy composition, the claim is unpatentable even though the prior product was made by a different process (See MPEP 2113 I).
Carrigan is silent on introducing the caloric sweetener and flavor modifier to the hydrolyzed dairy composition to form the dairy composition. Carrigan is also silent on the composition comprising a flavor modifier comprising glucosylated natural steviol glycosides at a concentration ranging from 1 ppm to 300 ppm. Carrigan is further silent on the dairy composition comprising a caloric sweetener at a concentration ranging from a sucrose equivalence of 0.5 *Bx to a sucrose equivalence 5 *Bx.
Purkayastha teaches (Paragraph 0011,0012; Claim 10) a taste and flavor profile enhancing composition, wherein the composition includes glucosylated steviol glycosides (flavor modifier comprising glucosylated natural steviol glycosides) which can enhance the intensity of a taste and/or a flavor in a food or beverage product, including dairy foods and dairy beverages, wherein steviol glycosides are extracted from leaves of a Steviol rebaudiana Bertoni plant (natural). Also, Purkayastha teaches (Paragraph 0053) an exemplary embodiment wherein a flavored dairy beverage has a glucosylated steviol glycoside concentration preferably in the range of about 50 to 500 ppm (which overlaps with the claimed range of 1 ppm to 300 ppm), wherein a range of GSG was used with a flavored beverage formula to determine if the addition of Glucosyl Steviol Glycosides (GSG) has an effect on key flavor attributes (i.e., the flavor modifier is introduced to the dairy composition to form the dairy composition). Additionally, Purkayastha teaches (Paragraph 0074) an exemplary embodiment wherein a chocolate milk has a glucosylated steviol glycoside concentration preferably in the range of about 50 to 400 ppm (which overlaps with the claimed range of 1 ppm to 300 ppm).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Carrigan to introduce a flavor modifier comprising glucosylated natural steviol glycosides in the composition at a concentration ranging from 1 ppm to 300 ppm in view of Purkayastha since both are directed to food products including dairy compositions, since introducing a flavor modifier comprising glucosylated natural steviol glycosides in food products including dairy compositions in concentrations of 50 to 500 ppm and 50 to 400 ppm (which overlap with the claimed range of 1 ppm to 300 ppm) is known in the art as shown by Purkayastha, since a composition including glucosylated steviol glycosides can enhance the intensity of a taste and/or a flavor in a food or beverage product (Purkayastha, Paragraph 0011), since the mouthfeel of a food or beverage product including the taste and flavor enhancing composition, wherein the taste and flavor enhancing composition includes glucosylated steviol glycosides, may be improved in relation to a mouthfeel of a comparative food or beverage product which does not include the taste and flavor enhancing composition (Purkayastha, Paragraph 0012), since concentrations overlapping with the claimed range are known to successfully enhance the flavor and sweetness of dairy compositions as demonstrated by Purkayastha, and since excessive glucosylated steviol glycosides concentration would render a beverage overly sweet and unpalatable, while too low a concentration would have a negligible effect and fail to improve the sweetness or flavor of the beverage.
Furthermore, the claimed concentration for glucosylated natural steviol glycosides ranging from 1 ppm to 300 ppm would have been used during the course of normal experimentation and optimization procedures in the method of Carrigan, as modified above, based upon factors such as the amount of the dairy composition consumed by the consumer, the consumer’s desired or needed caloric intake (where glucosylated steviol glycosides can provide sweetness without increasing the calorie content of the composition), the intended sweetness level of the composition, the presence and amount of other sweeteners, consumer preferences in sweetness, etc. Furthermore, the Applicant does not appear to have identified any unique or unexpected benefit from the claimed concentration for glucosylated natural steviol glycosides ranging from 1 ppm to 300 ppm that would render it non-obvious.
Ashokan teaches (Paragraph 0002, 0017, 0036) a partially frozen beverage including betaine, wherein beverages include milk-based drinks (dairy compositions), and wherein, in some embodiments, the partially frozen beverage may include a brix level of natural-caloric sweeteners from about 3° Bx to about 6° Bx (which overlaps with the claimed range of 0.5 °Bx to 5 °Bx).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Carrigan to include a caloric sweetener in the dairy composition with a brix level of natural-caloric sweeteners from about 3° Bx to about 6° Bx (which overlaps with the claimed range of 0.5 °Bx to 5 °Bx) as taught by Ashokan since both are directed to dairy compositions including sweeteners, since including a caloric sweetener in the dairy composition with a brix level of natural-caloric sweeteners from about 3° Bx to about 6° Bx (which overlaps with the claimed range of 0.5 °Bx to 5 °Bx) is known in the art as shown by Ashokan, since many consumers desire food products containing natural ingredients, since caloric sweeteners provide energy necessary for bodily functioning, since sweeteners can improve the taste and flavor of a food product for many consumers, since too low a brix level would provide inadequate sweetness while too high a brix level would provide excess sweetness and excess calories that would be undesirable and unhealthy for the consumer, and since sweeteners included in a partially-frozen consumable item may be used in controlled amounts and proportions in order to optimize the taste characteristics of a partially-frozen beverage (Ashokan, Paragraph 0050).
While Carrigan, as modified above in view of Ashokan does not explicitly state the that caloric sweetener is introduced to the hydrolyzed dairy composition to form the dairy composition, the Examiner notes that, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, as is shown above for the claimed dairy composition, the claim is unpatentable even though the prior product was made by a different process (See MPEP 2113 I).
Furthermore, the claimed concentration for a caloric sweetener ranging from a sucrose equivalence of 0.5 °Bx to a sucrose equivalence 5 °Bx would have been used during the course of normal experimentation and optimization procedures in the method of Carrigan, as modified above, based upon factors such as the amount of the dairy composition in a consumer’s serving, the consumer’s desired or needed caloric intake (where different consumers require different amounts of calories and increasing the brix level will raise the number of calories per serving), the intended sweetness level of the composition, the presence and amount of other sweeteners, consumer preferences in sweetness, etc. Furthermore, the Applicant does not appear to have identified any unique or unexpected benefit from the claimed concentration for a caloric sweetener ranging from a sucrose equivalence of 0.5 °Bx to a sucrose equivalence 5 °Bx that would render it non-obvious.
Regarding claim 2, Carrigan teaches (Paragraph 0097; Table 7) the process includes the steps of enzymatically treating mammalian milk with lactose enzyme to hydrolyse lactose to galactose and glucose and an exemplary embodiment of a reduced lactose semi-skimmed bovine milk (dairy composition) comprises (per 100 ml) 2.11 g of glucose and 2.11 g of galactose.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carrigan (US 20120040052 A1) in view of Purkayastha ( US 20180035702 A1) and Ashokan (US 20130034648 A1) and further in view of Prakash (US 20160029677 A1).
Regarding claim 5, Carrigan, as modified above, is silent on the concentration of glucosylated natural steviol glycosides in the dairy composition ranging from a sucrose equivalence of 1 °Bx to a sucrose equivalence of 10 °Bx.
Prakash teaches (Paragraph 0084) a composition comprising a compound of formula (1) provided as part of a mixture selected from the group consisting of a GSG (glucosylated steviol glycosides) mixture prepared by enzymatic glucosylation of a stevia extract, where the stevia extract was prepared from Stevia rebuadiana (Bertoni) or a commercially available stevia extract; by-products of other glucosyl steviol glycosides' isolation and purification processes; a commercially available GSG mixture; individual glucosylated steviol glycosides and combinations thereof, wherein, in one embodiment, a sweetener composition comprises a compound of formula (1) in an amount effective to provide sweetness equivalent from about 0.50 to 14 degrees Brix of sugar when present in a sweetened composition, such as, for example, from about 5 to about 11 degrees Brix, from about 4 to about 7 degrees Brix, or about 5 degrees Brix. Prakash further teaches (Paragraph 0387) in one embodiment, the consumable of the present invention is a dairy product that comprises a compound of formula (1), wherein dairy products, as used herein, comprise milk or foodstuffs produced from milk.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Carrigan, as modified above, to provide the composition with a sweetness equivalent between 1°Bx and 10°Bx, as taught by Prakash since both are directed to compositions, including dairy and milk compositions, containing sweeteners, since adding glucosylated steviol glycosides to a composition that may be a dairy composition to provide a sweetness equivalent between 1°Bx and 10°Bx is known in the art as shown by Prakash, since the Stevia rebuadiana extracts from which GSGs are prepared, often have bitter or astringent taste characteristics that are improved by carrying out enzymatic glucosylation (Prakash, Paragraph 0004), since too little of the GSG may be undetectable or provide a negligible impact on the taste, flavor, or sweetness of the dairy composition, and since an excess amount of GSG may produce an overly sweet dairy composition that consumers do not desire.
Furthermore, the claimed concentration of glucosylated natural steviol glycosides in the dairy composition would have been used during the course of normal experimentation and optimization procedures in the method of Carrigan, as modified above, based upon factors such as the desired sweetness and flavor of the dairy composition (where too little of the GSG would be undetectable or provide a negligible impact on the taste, flavor, or sweetness of the dairy composition, while an excess amount of GSG would produce an overly sweet dairy composition that consumers do not desire), the intended texture or viscosity of the dairy composition, the intended nutritional impact, etc. Furthermore, the Applicant does not appear to have identified any unique or unexpected benefit from the claimed concentration that would render it non-obvious.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carrigan (US 20120040052 A1) in view of Purkayastha ( US 20180035702 A1) and Ashokan (US 20130034648 A1) and further in view of FructoseFacts and Navarro et al. (Importance of sucrose in cognitive functions: knowledge and behavior).
Regarding claims 6, Carrigan teaches (Paragraph 0087) the product may comprise ingredients selected from a list including sugars and sweeteners.
Carrigan is silent on the caloric sweetener being sucrose, fructose, or a combination thereof.
As shown above, Ashokan teaches (Paragraph 0002, 0017, 0036) a partially frozen beverage including betaine, wherein beverages include milk-based drinks (dairy compositions), and wherein, in some embodiments, the partially frozen beverage may include a brix level of natural-caloric sweeteners from about 3° Bx to about 6° Bx (which overlaps with the claimed range of 0.5 °Bx to 5 °Bx). Ashokan further teaches (Paragraph 0020) natural caloric sugars may include by way of nonlimiting example fructose, glucose, sucrose, and a combination of any of the foregoing.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Carrigan to include provide sucrose, fructose, or a combination thereof as the caloric sweetener in the dairy composition in view of Ashokan since both are directed to dairy compositions including sweeteners, since including a caloric sweetener in the dairy composition that may be sucrose, fructose, or a combination thereof is known in the art as shown by Ashokan, since sucrose and fructose are naturally occurring sugars and many consumers desire food products containing natural ingredients, since caloric sweeteners like fructose and sucrose provide energy necessary for bodily functioning, since sweeteners included in a partially-frozen consumable item may be used in controlled amounts and proportions in order to optimize the taste characteristics of a partially-frozen beverage (Ashokan, Paragraph 0050), since fructose is the sweetest of all nutritive sweeteners, interacts with other sweeteners and starches in a synergy that boosts the sweetness and viscosity of foods and beverages, and binds and retains moisture so well that it can replace sorbitol and glycerin in foods, thereby improving taste (FructoseFacts), and since the consumption of food or drink with sucrose is associated with an improvement in mental agility, memory, reaction times, attention and capacity to resolve mathematical problems, as well as reduction in the sensation of tiredness (Navarro et al., Page 109).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carrigan (US 20120040052 A1) in view of Purkayastha ( US 20180035702 A1) and Ashokan (US 20130034648 A1) and further in view of Inoue (US 20070212460 A1).
Regarding claims 7, Carrigan teaches (Paragraph 0125) it is possible to add additional ingredients to the hydrolysed milk blend for example one or more of the following non-limiting ingredients including sugars and sweeteners.
Regarding claim 7, Carrigan is silent on the dairy composition further comprising sucralose, rebaudioside A, or a combination thereof.
Inoue teaches (Paragraph 0028, 0033) a sweetening composition comprising at least fructose and sucralose for use in foods including a wide variety of beverages. Inoue further teaches (Paragraph 0565, 0600) foods with an improved taste according to the invention include milky beverages such as milk for drinking, pasteurized milk, and milk beverage.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Carrigan to include sucralose in the composition as taught by Inoue since both are directed to beverage products, including milk, that may contain additional sweeteners, since adding sucralose to a milk based beverage is known in the art as shown by Inoue, since, among the high sweeteners, sucralose, which is 600 times sweeter than sucrose, is non-carcinogenic and non-metabolize, i.e., having no calorie (Inoue, Paragraph 0004), since combined use of sucralose and fructose can significantly improve the lack of full-bodied and rich sweetness and provide a sweetening composition having high sweetness, good sweetness quality with a body, richness and the advantageous properties of fructose such as resistance to crystallizing and high water retentiveness (Inoue, Paragraph 0027), and since the features of the human gustory sense make fructose taste rich and sweet when it is together with sucralose in the oral cavity (Inoue, Paragraph 0029) thus providing a sweeter, more flavorful beverage that some consumers will prefer.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carrigan (US 20120040052 A1) in view of Purkayastha ( US 20180035702 A1), Bernaert (US 20100303924 A1), and Shi (US 20150072060 A1).
Regarding claim 16, Carrigan teaches (Paragraph 0001, 0030) a low or zero lactose milk (dairy composition) prepared by a process comprising enzymatically hydrolysing the lactose present in mammalian milk. Carrigan further teaches (Table 7) an exemplary embodiment of a reduced lactose semi-skimmed bovine milk (dairy composition) comprising glucose and galactose, (lactose hydrolysis products). Also, Carrigan teaches (Paragraph 0087) the product may comprise ingredients selected from a list including sugars and sweeteners. Furthermore, Carrigan teaches (Paragraph 0094) the reduced lactose or lactose free milk may have no additional sweetness, or may have a higher relative sweetness such as is desirable from a sensory perspective depending on national preferences.
Carrigan is silent on the composition comprising a flavor modifier comprising glucosylated natural steviol glycosides at a concentration ranging from 0.001 to 0.02 weight percent. Carrigan is further silent on the dairy composition comprising a caloric sweetener that is sucrose at a concentration of 4% by weight.
Purkayastha teaches (Paragraph 0011,0012; Claim 10) a taste and flavor profile enhancing composition, wherein the composition includes glucosylated steviol glycosides (flavor modifier comprising glucosylated natural steviol glycosides) which can enhance the intensity of a taste and/or a flavor in a food or beverage product, including dairy foods and dairy beverages, wherein steviol glycosides are extracted from leaves of a Steviol rebaudiana Bertoni plant (natural). Also, Purkayastha teaches (Paragraph 0053, 0055, 0057; Table 11) an exemplary embodiment wherein a flavored dairy beverage has a glucosylated steviol glycoside concentration preferably in the range of about 50 to 500 ppm (0.005% to 0.05%, which overlaps with the claimed range of 0.001 to 0.02 weight percent) including a glucosylated steviol glycoside concentration of 0.0175% (which falls within the claimed range of 0.001 to 0.02 weight percent) which contributed to higher banana flavor intensity. Additionally, Purkayastha teaches (Paragraph 0108; Table 26) an exemplary embodiment wherein a ranch dressing comprising sour cream and butter milk (dairy product) is provided with 0.019 % GSG (falls within the claimed range of 0.001 to 0.02 weight percent).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the product of Carrigan to provide a flavor modifier comprising glucosylated natural steviol glycosides in the composition at a concentration ranging from 0.001 to 0.02 weight percent in view of Purkayastha since both are directed to food products including dairy compositions, since a flavor modifier comprising glucosylated natural steviol glycosides in food products including dairy compositions in concentrations of 50 to 500 ppm (which overlaps with the claimed range of 0.001 to 0.02 weight percent) is known in the art as shown by Purkayastha, since a composition including glucosylated steviol glycosides can enhance the intensity of a taste and/or a flavor in a food or beverage product (Purkayastha, Paragraph 0011), since the mouthfeel of a food or beverage product including the taste and flavor enhancing composition, wherein the taste and flavor enhancing composition includes glucosylated steviol glycosides, may be improved in relation to a mouthfeel of a comparative food or beverage product which does not include the taste and flavor enhancing composition (Purkayastha, Paragraph 0012), since concentrations overlapping with the claimed range are known to successfully enhance the flavor and sweetness of dairy compositions as demonstrated by Purkayastha, and since excessive glucosylated steviol glycosides concentration would render a beverage overly sweet and unpalatable, while too low a concentration would have a negligible effect and fail to improve the sweetness or flavor of the beverage.
Furthermore, the claimed concentration for glucosylated natural steviol glycosides ranging from 0.001 to 0.02 weight percent would have been used during the course of normal experimentation and optimization procedures in the method of Carrigan, as modified above, based upon factors such as the amount of the dairy composition consumed by the consumer, the consumer’s desired or needed caloric intake (where glucosylated steviol glycosides can provide sweetness without increasing the calorie content of the composition), the intended sweetness level of the composition, the presence and amount of other sweeteners, consumer preferences in sweetness, etc. Furthermore, the Applicant has neither demonstrated the criticality nor identified any unique or unexpected benefit of the claimed concentration for glucosylated natural steviol glycosides ranging from 0.001 to 0.02 weight percent that would render it non-obvious.
Bernaert teaches (Paragraph 0001, 0033) a beverage comprising a cocoa based material wherein, preferably, the aqueous phase is milk and preferably the beverage comprises from 1 to 20% by weight of a sweetener that is preferable sucrose.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Carrigan to provide sucrose as the caloric sweetener as taught by Bernaert since both are directed to milk products comprising added sweetener, since adding sucrose to a milk product is known in the art as shown by Bernaert, since sucrose can function as a sweetener (Bernaert, Paragraph 0075) thus improving the taste/flavor of the product for consumers, since sucrose can act as a humectant (Paragraph 0079) thus preventing or slowing the product from drying out, and since sucrose can provide energy to a consumer.
Additionally, the claimed concentration of 4% by weight for sucrose would have been used during the course of normal experimentation and optimization procedures in the method of Carrigan, as modified above, based upon factors such as the amount of the dairy composition consumed by the consumer, the consumer’s desired or needed caloric intake (where sucrose can additional calories to the consumer), the intended sweetness level of the composition, the presence and amount of other sweeteners, consumer preferences in sweetness, etc. Furthermore, the Applicant has neither demonstrated the criticality nor identified any unique or unexpected benefit of the claimed concentration of 4% by weight for sucrose that would render it non-obvious.
Furthermore, since Carrigan, as modified above, is silent with regards to the sucrose concentration one of ordinary skill in the art would have been motivated to look to the art for suitable values.
Shi teaches (Paragraph 0398) a UHT milk sweetened with 4% sucrose by weight.
Selection of a known product composition (sucrose concentration) based on its suitability for its intended use (milk product) supports a prima facie obviousness determination (See MPEP 2144.07).
Additionally, since the claimed product is obvious in view of Carrigan, as modified above, the claimed features of sweetness, sourness, and cultured aspects not significantly different (as determined by a Duncan Test) from a comparable dairy composition that differs only in that it contains 7% sucrose and lacks the lactose hydrolysis products and flavor modifier of the dairy composition would necessarily be present. Since the prior art teaches the claimed composition, it would be expected to perform in a similar manner. Furthermore, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Response to Arguments
Applicant’s arguments, see pages 4-7, filed 06/24/2026, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 103 have been fully considered and but are not persuasive.
Regarding the Applicant’s argument that a person of ordinary skill in the art would recognize that the diluting and adding steps in Carrigan would result in a dairy product that is materially distinct from the dairy product prepared by the closed process now recited in claim 1 since the Carrigan composition would be a diluted composition compared to the claimed composition, the Examiner notes that, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (See MPEP 2113 I). In this case, the suggestion that the product resulting from the process in claim 1 would be materially different than that of Carrigan because the dilution and addition of other ingredients would result in a different product, the Examiner respectfully disagrees. The process in claim 1 refers to providing a dairy product comprising lactose. The broadest reasonable interpretation of a dairy product comprising lactose would include dairy products that have already been diluted and/or that contain other additives. Consequently, the process in claim 1 does not exclude the product of Carrigan.
In response to the Applicants argument that Claim 16 does not rely on an open-ended subjective assessment of whether the dairy composition is generally "similar" or "comparable" in taste, but rather, Claim 16 recites that sweetness, sourness, and cultured aspects are "not significantly different," and further specifies the objective recognized statistical method for making that determination: the Duncan Test, where the Specification explains that, under the Duncan Test, there is no significant difference between samples sharing the same letter as shown in Table 3, and a person of ordinary skill in the art would understand how such sensory testing is performed and interpreted, the Examiner respectfully disagrees. Neither the claim language nor the specification define the Duncan test, and it is not clear that a person of ordinary skill in the art would understand how such sensory testing is performed and interpreted as alleged by the Applicant. Furthermore, it is unclear what “sharing the same letter” refers to or how it is determined, and the claim language does not refer to “sharing the same letter”. The standard of “not significantly different” has not been defined, and is unclear in scope. Consequently, claim 16 has been rejected as indefinite as shown above.
Additionally, as stated above with regard to claim 16, since the claimed product is obvious in view of Carrigan, as modified above, the claimed features of sweetness, sourness, and cultured aspects not significantly different (as determined by a Duncan Test) from a comparable dairy composition that differs only in that it contains 7% sucrose and lacks the lactose hydrolysis products and flavor modifier of the dairy composition would necessarily be present. Since the prior art teaches the claimed composition, it would be expected to perform in a similar manner. Furthermore, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Therefore, for the reasons stated above, claims 1, 16, and all dependent claims remain rejected under 35 USC 103.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN P TAYLOR whose telephone number is (571)272-2652. The examiner can normally be reached M-F 8:30am-5pm.
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/AUSTIN PARKER TAYLOR/Examiner, Art Unit 1792
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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