Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 25 Aug 2025 has been entered.
Response to Amendment
The prior art has been maintained. See response to arguments below.
Claims 26, 27, 29-41 are currently pending in this Office Action.
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.
Claim(s) 26-27, 29-41 is/are rejected over 35 U.S.C. 103 as obvious over Ragnarsson et al. (US 2020/0178571- hereon referred to as “Ragnarsson’571”).
Regarding Claim 26, Ragnarsson’571 discloses a shelf-stable liquid flavored beverage concentrate composition (see Title and abstract, paragraph 12; see Paragraph 45 where Ragnarsson indicates no flavor or color degradation for at least 12 months when stored at room temperature which is consistent with applicant's definition of "shelf-stable" on page 4 of applicant's specification) comprising:
a flavoring (paragraph 35);
an acidulant at about 8 to about 35% by weight of the composition (paragraph 21) which is within the claimed range; and
water at about 40% to about 90% by weight of the composition (paragraph 34) which is within the claimed range.
Ragnarsson’571 further teaches wherein the acidulant can be any edible, food grade organic or inorganic acid such as lactic acid (paragraph 22) among others, based on the desired pH of the concentrate and/or taste imparted by the acidulant to the diluted final beverage. Therefore, it would have been obvious to one of ordinary skill in the art to provide a beverage concentrate composition comprising lactic acid as a suitable source of acidulant based on the desired pH of the concentrate and/or taste imparted by the acidulant.
Regarding Claim 27, Ragnarsson’571 further teaches wherein the flavoring constitutes about 1% to about 30% (paragraph 36).
Regarding Claim 29, Ragnarsson’571 further teaches wherein the water constitutes total water content of the composition (“The amount of water in the concentrate…” paragraph 34).
Regarding Claim 30, though Ragnarsson’571 discloses an acidulant that can comprise combinations of lactic acid and citric acid (paragraph 22), he does not specifically recite a particular amount of each acids. However, Ragnarsson’571 discloses a composition comprising up to 60% acidulant and therefore encompasses embodiments where the composition has between 8% to 58% lactic acid and 2% to 25% citric acid; in fact, Ragnarsson’571 discloses an embodiment having 16.5% citric acid which is within the claimed range (see Table 10 and 12), and allows the composition to have up to about 39% of additional acidulant such as lactic acid (60% total acidulant minus 16.5% Citric acid and 4.12% malic acid). Ragnarsson’571 states that the selection of the acidulant depends on the desired pH of the concentration and/or taste imparted by the acidulant to the final beverage. Therefore, since Ragnarsson’571 discloses a composition comprising 60% acidulant comprising a combination of lactic acid and citric acid, and that having 16.5% of citric acid is known, it would have been obvious to one of ordinary skill in the art to determine the amount of the lactic acid and citric acid based on the desired pH level and taste imparted by each acid.
Regarding Claim 31, since Ragnarsson’571 also teaches an acidulant having a combination of lactic acid and malic acid (paragraph 22), the claim is rejected for reasons similar to Claim 30. Additionally, Ragnarsson’571 discloses in an embodiment having 4.12% malic acid, thus being within the claimed range (see tables 10 and 12).
Regarding Claim 32, Ragnarsson’571 further teaches comprising ascorbic acid (Vitamin C, see paragraph 47) in an amount of 1.83% by weight of the composition (see Table 12, page 12-13).
Regarding Claim 33, since Ragnarsson’571 also teaches an acidulant having a combination of lactic acid and phosphoric acid (paragraph 22), the claim is rejected for reasons similar to Claim 30. Since Ragnarsson’571 suggest a combination of lactic acid and phosphoric acid (paragraph 22) up to 60% of the concentration (paragraph 21), it would have been obvious to one of ordinary skill in the art to further comprise phosphoric acid based on the desired pH level and taste imparted by each acid.
Regarding Claim 34, Ragnarsson’571 further teaches comprising a buffer in an amount from about 0.5% to about 10.0% by weight of the composition (see Claim 23) which overlaps with the claimed range. It would have been obvious to one of ordinary skill in the art to select the overlapping range for the purpose of providing an increased acid content at a desired pH level (see paragraph 23).
Regarding Claim 35, Ragnarsson’571 further teaches wherein the buffer comprises potassium citrate or sodium citrate (paragraph 24).
Regarding Claim 36, Ragnarsson’571 further teaches wherein the composition comprises substantially no edible antimicrobial or additional preservative (see paragraph 43 where Ragnarsson’571 indicates preservatives are optional).
Regarding Claim 37, Ragnarsson’571 discloses a shelf-stable liquid flavored beverage concentrate composition comprising:
a liquid flavoring at about 0.5% to about 40% by weight of the composition (paragraph 36) which encompasses the claimed range of about 2% to about 3.5%;
a liquid sweetener (honey, glucose syrup, paragraph 28) at about 0.2% to about 60% by weight of the composition (paragraph 29) which encompasses with the claimed 34-35%;
and a liquid coloring agent (paragraph 48) at about 0 to 15% by weight of the composition (paragraph 48) which encompasses the claimed 5%.
As to the limitation of comprising a liquid lactic acid at about 20% to about 27% by weight of the composition, since applicant’s specification interprets a liquid lactic acid as a lactic acid with various levels of water (from about 10% to about 88%, page 15 third paragraph of the specification filed 25 June 2021), then Ragnarsson is construed to meet this limitation by having a composition comprising water and lactic acid (as discussed in Claim 26), where the water and the lactic acid together constitutes “a liquid lactic acid” and therefore encompasses 20% to 27% by weight of the composition (up to 98% water and up to 60% acid, see paragraph 21 and 34).
Regarding Claim 38, Ragnarsson’571 further teaches wherein the composition comprises substantially no edible antimicrobial or additional preservative (see paragraph 43 where Ragnarsson’571 indicates preservatives are optional).
Regarding Claim 39, Ragnarsson’571 discloses a beverage package kit comprising the shelf-stable liquid flavored beverage concentrate composition of claim 26, and a container suitable for delivering the shelf-stable liquid flavored beverage concentrate composition (“sealed container”, see paragraph 11).
Regarding Claim 40, As to the limitation of comprising lactic acid that is liquid, since applicant’s specification interprets a liquid lactic acid as a lactic acid with various levels of water (from about 10% to about 88%, page 15 third paragraph of the specification filed 25 June 2021), then Ragnarsson is construed to meet this limitation by having a composition comprising water and lactic acid (as discussed in Claim 26), where the water and the lactic acid together constitutes “a liquid lactic acid”.
Regarding Claim 41, Ragnarsson’571 discloses a shelf-stable liquid flavored beverage concentrate composition (see Title and abstract, paragraph 12; see Paragraph 45 where Ragnarsson indicates no flavor or color degradation for at least 12 months when stored at room temperature which is consistent with applicant's definition of "shelf-stable" on page 4 of applicant's specification) consisting of:
a flavoring (a viscosity increasing agent which can be a nutritive sweetener, paragraph 26 and 28);
an acidulant at about 8 to about 35% by weight of the composition (paragraph 21) which is within the claimed range; and
water at about 40% to about 90% by weight of the composition (paragraph 34) which is within the claimed range.
Ragnarsson’571 further teaches wherein the acidulant can be any edible, food grade organic or inorganic acid such as lactic acid (paragraph 22) among others, based on the desired pH of the concentrate and/or taste imparted by the acidulant to the diluted final beverage. Therefore, it would have been obvious to one of ordinary skill in the art to provide a beverage concentrate composition comprising lactic acid as a suitable source of acidulant based on the desired pH of the concentrate and/or taste imparted by the acidulant.
Also, Ragnarsson’571 requires a viscosity increasing agent for the purpose of stabilizing the composition by slowing the rate of degradation reaction during storage (paragraph 16). The viscosity increasing agent may be nutritive sweetener (paragraph 26) which includes honey, sucrose, fructose, etc. (paragraph 28). Therefore, the nutritive sweetener also constitutes the claimed flavoring. It would have been obvious to one of ordinary skill in the art to select nutritive sweeteners such as honey as a viscosity increasing agent for the taste imparted by the nutritive sweeteners.
Therefore, since Ragnarsson’571 requires, at minimum, viscosity increasing agent, water, and an acidulant (Claim 12), wherein the acidulant can be lactic acid (Claim 20), and wherein the viscosity increasing agent can be nutritive sweeteners, Ragnarsson therefore discloses a composition consisting of a flavoring, lactic acid within the claimed range, and water within the claimed range.
Response to Arguments
Applicant’s arguments in the remarks filed 25 Aug 2025 has been considered, but is found not persuasive over the prior art.
All arguments regarding 35 U.S.C. 102 (Section F of the remarks) are rendered moot in view withdrawal of the rejection.
As to Section G, Applicant argues that there is no Prima Facie case of Obviousness because the Office Action failed to establish (a) why a skilled artisan would select lactic acid from the numerous alternative disclosed, (b) why would one use it at the claimed concentration and (c) why would there be a reasonable expectation of success. The argument is not persuasive because Ragnarsson simply discloses acidulants such as lactic acid at the claimed concentration, and thus presents a reasonable expectation of success. One would select lactic acid simply because Ragnarsson indicated that lactic acid is a suitable acidulant in the prior art beverage concentration, in an amount of 8 to 35 percent of the composition (paragraph 21-22) which is within the claimed range. "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)). See MPEP 2131.03. In response to applicant’s argument that Ragnarsson teaches away by emphasizing the necessity of a “viscosity increasing agent” for stability, the argument is not persuasive because the claimed composition do not recite any language that excludes “viscosity increasing agent” due to use of the transitional phrase “comprising” indicating that the claimed composition may have additional elements not recited in the claim.
As to Applicant’s argument regarding lack of specific guidance (page 23 of the remarks), Applicant argues that a prior art disclosing a genus does not disclose all species within that broad category; however, the argument is not applicable to Ragnarsson because Ragnarsson discloses the species Lactic acid. Applicant further argues that there is no selection criteria to direct one of ordinary skill in the art to lactic acid; however, the argument is not persuasive because it is clear that “taste imparted” (paragraph 22) constitutes a selection criteria and that it would have been an obvious matter of taste preference. In response to Applicant’s argument that Ragnarsson teaches away from selecting lactic acid, the argument is not persuasive because Ragnarsson is simply stating a comparison between stronger and weaker acids, indicating that if a weaker acid is selected, a “larger quantity” would be needed; however, there is no indication that a weaker acid such as lactic acid would not be desired. Furthermore, it is reiterated that lactic acid is identified as a suitable acidulant and can be selected based on the taste imparted.
As to Section III (page 24), Applicant asserts that there are no guidance regarding specific concentrations or ranges for lactic acid, the relationship between lactic acid concentration and stability, processing condition necessary for achieving stability with lactic acid, and how to overcome the stated disadvantage of needing larger quantities of lactic acid. The argument is not persuasive because Ragnarsson discloses specific ranges for acidulants and suggest that acidulants can be lactic acid; therefore, there is a prima facie case of obviousness to use lactic acid in the disclosed range. Also, there is no requirement to show a relationship between lactic acid and shelf-stability nor its processing condition because the claim simply recites “A shelf-stable liquid flavored beverage concentrate” in the preamble which is taught by Ragnarsson (remain shelf stable for at least about three months, see abstract). There is no requirement to show a relationship between lactic acid and shelf stability. Furthermore, there is no evidence to suggest that requiring a larger quantity of lactic acid is a “disadvantage”. Rather, it is merely fact that using a weaker acid as opposed to a stronger acid requires a higher amount of that weak acid to achieve similar acidity levels; however, both strong and weak acids are listed as suitable equivalents and is selected based on the desired pH level and taste imparted.
In response to Applicant’s argument regarding undue experimentation (page 24 of the remarks), the argument is not persuasive because Applicant has taken the position that one of ordinary skill in the art would need to try each and every combination of composition suggested by Ragnarsson to achieve the claimed composition (it appears Applicant is using ranges to represent a multitude of combinations). However, the argument is not persuasive because Applicant’s composition is disclosed in the claimed embodiment of Ragnarsson, at minimum, requires water in the claimed amount, acidulant in the claimed amount, and flavoring, and where the only selection made is between a list of 11 suitable acidulants (and salts thereof) that includes lactic acid (Claim 20). This is not seen to rise to the level of undue experimentation as it is clearly shown that one of ordinary skill in the art simply needs to select an acidulant based on its taste and desired pH level to arrive to the claimed composition.
In response to Applicant’s argument regarding no reasonable expectation of success (page 25 of the remarks), the argument is not persuasive because the fact that the claimed composition is taught by Ragnarsson with further suggestion of using lactic acid would support a reasonable expectation of success. There is no evidence to suggest that selecting a composition taught within the teachings of Ragnarsson would not have an expectation of success.
As to section Examiner’s Assertion 3, Applicant argues that there is no teaching or suggestion of flavoring with high concentrations of lactic acid (page 27 of the remarks); however the argument is not persuasive because the claim requires, at minimum 8% by weight of lactic acid; therefore, there is no requirement of “high concentrations of lactic acid” in the claimed invention. Applicant argues that there is no guidance on selecting any “particular flavoring” (section 1, page 27); however, the claimed invention merely recites “flavoring” without any specific flavoring. Therefore, any flavoring reads on the claimed invention.
As to section 2 (page 28), Applicant argues that there is no recognition of the benefits of using high lactic acid concentrations. However, the argument is not persuasive because the claim requires, at minimum 8% by weight of lactic acid. Also, 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).
As to section 3 (page 28), Applicant argues that Ragnarsson is focused on viscosity-increasing agents to stabilize ingredients; however, the argument is not persuasive in view of the response above. That is, the argument is not persuasive because the claimed composition do not recite any language that excludes “viscosity increasing agent” due to use of the transitional phrase “comprising” indicating that the claimed composition may have additional elements not recited in the claim.
As to section 4 (page 28), Applicant argues that there are no working examples using lactic acid; however, the disclosed subject matter of Ragnarsson is not limited to solely the working examples. While the working examples do not use lactic acid, Ragnarsson discloses that lactic is a suitable acidulant and therefore is expected to have similar results to the working example.
As to section 5, the arguments are not persuasive in view of the responses above with respect to comprising viscosity-increasing agents.
As to section 6, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, lactic acid is knowledge which was within the level of ordinary skill as it was disclosed in Ragnarsson as a suitable acidulant.
As to the section Examiner’s Assertion 4 (page 28-31), is it reiterated that the claimed invention merely recites “flavoring”, and therefore, any flavoring taught by Ragnarsson reads on the claimed invention. It is maintained that Ragnarsson teaches the claimed “flavoring” and that there is no evidence to suggest that the flavorings taught by Ragnarsson would produce unsuccessful results with lactic acid.
As to the section Examiner’s Assertion 5 (page 31), "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). In this case, the smaller range taught by the prior art is seen to anticipate the claimed range. The prior art does not need to meet the entire range of the claim. In response to the purpose of acidulant, 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). However, it is noted that Ragnarsson also teaches lactic acid for flavor enhancement (“taste imparted by the acidulant”, paragraph 22), and that its antimicrobial effect would have been an inherent property of said lactic acid.
As to section Examiner’s Assertion 6, the argument is not persuasive because Ragnarsson discloses acidulant that includes lactic acid; therefore, there is a direct suggestion of a composition that comprises lactic acid. Paragraph 22 explicitly recites “Any edible, food grade organic or inorganic acid, such as, but not limited to, citric acid, malic acid, succinic acid, acetic acid, hydrochloric acid, adipic acid, tartaric acid, fumaric acid, phosphoric acid, lactic acid, sodium acid pyrophosphate, salts thereof, and combinations thereof can be used, if desired. The selection of the acidulant may depend, at least in part, on the desired pH of the concentrate and/or taste imparted by the acidulant to the diluted final beverage.” (emphasis added). This is therefore a disclosure that teaches each element as arranged in the claim. In view of this, there is a clear disclosure of lactic acid as an acidulant.
As to Examiner’s Assertion 7 (page 35), the arguments are moot because the claim does not require water (Claim range includes 0%).
As to section Examiner’s argument 1 (page 36) and Examiner’s argument 2 (page 39), the arguments are not persuasive in view of the responses above. That is, the arguments directed to anticipated are rendered moot in view of withdrawal of the rejections under 35 U.S.C. 102. It is noted that Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) is relied on to show that the narrow ranges taught by the prior art are encompassed within the broad claimed ranges and thus constitutes an anticipation of the claimed range. The claimed composition, at minimum, requires a flavoring, and lactic acid at about 8% (and 0% water), which is seen in Claim 12 with about 8 to about 60% acidulant, and 0.5 to about 40 percent flavoring, and Claim 20 which suggest that the acidulant may include lactic acid. Therefore, since Ragnarsson discloses at least one composition within the claimed range, the claimed range is anticipated until Applicant recites a range that exclude the range taught by the prior art.
As to Examiner’s argument 3 (page 42), in response to Applicant’s argument that Ragnarsson does not teach the claimed composition, teach away from using lactic acid, and requires additional components for stability, the argument is not persuasive in view of the responses above. Ragnarsson is maintained to render the claimed composition obvious, there is no evidence that suggest Ragnarsson teaches away from Lactic acid when lactic acid is clearly identified as a suitable acidulant in paragraph 22 and Claim 20, and that the claim do not exclude additional components for stability, and that the claim do not require that lactic acid is the sole component that lends to its stability.
As to Examiner’s argument 4 (page 45), the argument is not persuasive in view of the responses above with respect to genus and species. it is maintained that Ragnarsson explicitly disclosing the species “lactic acid” and therefore meets the claimed range. The selection of lactic acid would have been an obvious matter of taste preference and pH imparted by lactic acid (paragraph 22). In response to Applicant’s argument that Claim 20 does not equate to lactic acid in the range taught by Claim 12, the argument is not persuasive because there is no evidence to suggest otherwise. The fact that Ragnarsson explicitly discloses acidulant at a certain range, and proceeds to indicate that acidulants can be lactic acid, is an explicit suggestion that lactic acid is also comprised in the same range as the genus acidulants absent additional recitation specific to lactic acid indicating otherwise. In response to Applicant’s remarks regarding MPEP 2144.06, it is maintained that lactic acid is an art recognized equivalent based on the fact that they are alternatives of one another, listed as an “acidulant”, as well as all listed within Claim 20. Furthermore, the fact that the acids are listed under the “acidulant” category would also suggest that the results would be similar and that the differences otherwise would have been within the technical grasp of one having ordinary skill in the art.
As to Examiner’s argument 5 (page 46) and argument 6 (Page 49), the arguments are rendered moot in view of the withdrawal of the rejections under 35 U.S.C. 102.
As to Examiner’s argument 7, the argument is not persuasive in view the responses above. Specifically, the claim does not require “high concentrations” of lactic acid since the claim allows, at minimum, 8% by weight. Also, there is no language in the claim that excludes having additional ingredients such as viscosity-increasing agents to provide stability. It is maintained that Ragnarsson discloses acidulants within the claimed range, and wherein the acidulant includes lactic acid. Therefore, Ragnarsson discloses lactic acid within the claimed range.
As to Examiner’s argument 8, the argument is not persuasive in view the responses above. Specifically, the claim does not require “high concentrations” of lactic acid since the claim allows, at minimum, 8% by weight. It is maintained that the rejection is based on only knowledge which was within the level of ordinary skill at the time the claimed invention was made. That is, Ragnarsson discloses the claimed composition, and that it would have been an obvious matter to select lactic acid, which is explicitly disclosed by Ragnarsson as a suitable acidulant, based on desired pH level and taste imparted (paragraph 22).
As to Examiner’s argument 9, it is maintained that Examiner’s response in the previous Office Action is proper and herein incorporated. It is maintained that the Declaration filed 10/03/2023 does not rise to the level of unexpected results because the comparison between lactic acid to citric and malic acid is a matter of taste preference, where Declarant concludes that lactic acid provides superior taste. However, it was explicitly recited that the acidulants may be selected based on the taste imparted by the acidulant. Therefore, there is a clear suggestion that the selection of acidulant is based on taste preference, and it is also apparent that the experimental data is based on taste preference because there is no clear standard as to what is an “acceptable” or “unacceptable” sour taste. Furthermore, achieving certain levels of “stability” without use of preservatives is not commensurate with the scope of the claim because the claimed language does not exclude additional preservatives. For these reasons, it is maintained that the evidence of unexpected results is not sufficient to overcome the Ragnarsson reference.
As to Examiner’s citation of legal precedent, Applicant recites deficiencies of legal precedents, however, it is not clear which specific instants Applicant is referring to, and Applicant has not provided arguments as to why the legal precedence are not applicable to the rejection at hand. At least a portion of the legal precedence relied on has been addressed in the responses above.
As to Examiner’s Argument 11, the arguments are not persuasive in view of the responses above with respect to Examiner’s argument 9. It is noted that the claim requires, at minimum, 8% lactic acid, therefore the fact that “Benefits manifest at claimed high concentrations (60-70%)” is not commensurate with the claimed invention because the claimed invention does not require 60-70% lactic acid. It is maintained that Ragnarsson does not teach away from selecting lactic acid in view of the responses above.
As to Examiner’s argument 12, the evidence provided do not present unexpected results. That is Applicant’s Demarcation points only suggest what is expected: low concentration of acid resulting in “insufficient acid perception” and above 70% resulting in “overpowering acidity” and that within the rage is an “optimal flavor profile”. In this case, the evidence shown is not sufficient to show criticality of the concentration because it would be expected to perceive low levels of acid when the concentration is low, and overpowering acidity with the concentration is high. Furthermore, the prior art suggest selecting lactic acid based on its taste and pH level, and it is submitted that Applicant merely found a preferred range based on taste. Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
In this case, the coaction or cooperative relationship between the claimed ingredients amounts to mere preferred taste and acidity level imparted by lactic acid which does not rise to the level of new and unexpected function.
As to Examiner’s argument 13, Applicant submits the differences between In re Aller and the claimed invention. However, the arguments are not persuasive in view of the responses above with respect to Examiner’s argument 12. Furthermore, Applicant’s experiment result is based on the taste preference of the experimenter by indicating that lactic acid has a “milder taste than citric acid and malic acid and is, therefore, the preferred acid in the invention” (paragraph 6 of the Declaration). Applicant also presents a proportional and expected relationship that concludes that low concentrations of lactic acids results in “insufficient acid perception” and high concentration resulting in “overpowering acidity”. Therefore, it is maintained the In re Aller is applicable and that the experimental data do not rise to the level of unexpected results.
As to Examiner’s argument 14, the argument is rendered moot in view of withdrawal of the rejections over 35 U.S.C. 102.
Conclusion
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/T.H.N/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792