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 .
Applicant's submission filed on Feb. 13, 2026 has been entered. Claims 1-12 are pending. No claim amendments have been made.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 12 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 12 recites that the transporting device is disposed in an ambient environment, however, the instant specification does not disclose the type of environment the transportation device is disposed within. In fact, there is only 1 recitation of a conveyor, or transportation device, in the instant specification at paragraph [0090]. Therefore, this limitation appears to be new matter.
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 12 is 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 12 recites the limitation "the transporting device" in line 1. There is insufficient antecedent basis for this limitation in the claim as claim 12 depends from claim 1, which does not recite “a transporting device”. Claim 1 recites a step of “transporting” on a “conveyor”. Therefore, it is not clear if “the transporting device” in claim 12 should instead recite “the conveyor” or if “the transporting device” is referring to a different “device”.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, 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 1-6 and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Mikkelsen et al. (US Patent No. 7,232,581 B2; June 19, 2007) in view of Elejalde et al. (US 2009/0029018 A1; Jan. 29, 2009).
Regarding claims 1 and 6, Mikkelsen teaches a method of manufacturing a comestible, wherein the comestible is a chewing gum, comprising:
forming an extrudate of a first composition via an extruder,
cutting said extrudate at intervals into a plurality of granules, corresponding to applicant’s pieces, and
forming a chewing gum comprising the plurality of granules as an ingredient (Col 7 line 20 - col 8 line 45; See Examples).
Mikkelsen further teaches that the extrudate can include particles of an active ingredient encapsulated within an encapsulate material (col 10 lines 30-65).
Mikkelsen teaches that the plurality of granules, or pieces, have a diameter below 3 mm, or 3000 microns, such as in the range of 0.1 to 2.5 mm, or 100 to 2500 microns (col 7 lines 40-50), thus overlapping the claimed range of the plurality of pieces having a longest dimension of less than 1000 microns. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Mikkelsen further teaches that the extrudate is cut right after exiting the die before a cooling process, and therefore Mikkelsen teaches that the cutting occurs when the extrudate is above a glass transition temperature (See Examples).
While Mikkelsen discloses the process as described above, Mikkelsen fails to teach transporting the extrudate via a conveyor from the extruder to a cutter.
Elejalde discloses a method for producing confectionery products, including chewing gum ([0007], [0027], [0031], [0037], [0038]). Elejalde further teaches that the chewing gum ropes exiting the extruder can be conveyed on a conveyor before cutting by the cutting apparatus ([0033]). Elejalde teaches that the conveyor allows the chewing gum ropes to “relax” and get to a more stable form before cutting ([0031]).
It would have been obvious to one of ordinary skill in the art to transport the extrudate of Mikkelsen via a conveyor from the extruder to a cutter as taught by Elejalde. This would allow the extrudate of Mikkelsen to reach a stable form before being cut to a desired size. As Elejalde teaches that it is well known in the art to convey an extrudate between an extruder and a cutting apparatus, it would have been obvious to have the method of Mikkelsen further comprise a transporting step between the extruding and cutting steps as such transporting step is well known in the art of making chewing gum as taught by Elejalde and provides benefits to the chewing gum, by allowing the extrudate to reach a stable form before cutting, thus ensuring accurately sized cut pieces.
Regarding claim 2, Mikkelsen teaches that each of said plurality of pieces are substantially spherical having the same volume and the same average diameter (col 7 lines 40-50). Therefore, it would have been obvious to one of ordinary skill in the art to process the plurality of pieces to be substantially uniform in size.
Further, while Mikkelsen teaches that different sizes can be achieved, it would have been obvious to one of ordinary skill in the art to have the pieces of Mikkelsen be uniform in size if desired.
As stated in MPEP 2144.04 IV: Changes in size/proportion is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed piece was significant.
Regarding claim 3, as stated above, Mikkelsen teaches that the plurality of granules, or pieces, have a diameter below 3 mm, or 3000 microns, such as in the range of 0.1 to 2.5 mm, or 100 to 2500 microns (col 7 lines 40-50), thus overlapping the claimed range of the plurality of pieces having a longest dimension between 200 and 700 microns. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claim 4, Mikkelsen teaches that the cutting step includes a cutting device rotatable about an axis arranged substantially parallel to the direction as travel as Mikkelsen teaches that the cutting means comprises rotating knives mounted at the end of a drive axle (col 8 lines 38-45).
Regarding claim 5, as stated above, Mikkelsen further teaches that the extrudate can include particles of an active ingredient encapsulated within an encapsulate material (col 10 lines 30-65).
With respect to less than 1% of said particles of active ingredient being ruptured by a blade of said cutting device during said cutting, the examiner notes that Mikkelsen fails to teach such specific limitation. However, Mikkelsen teaches the same processing steps as claimed and further teaches the inclusion of an encapsulate particle, which is the same as claimed. The amount of active ingredient coming into contact with the blade of the cutting device would be dependent upon amount of active ingredient in the extrudate as well as the amount of cutting performed on the extrudate. Including a higher amount of active ingredient will result in a higher chance of the active ingredient being ruptured by the blade, which is obvious and well understood in the art. As the claims do not recite any specific amount of active ingredient or a specific step that results in such limitation, it would have been obvious to one of ordinary skill in the art to formulate and process the extrudate of Mikkelsen to have less than 1% of particles of active ingredient being ruptured during the cutting process.
Further, as Mikkelsen teaches that the cutting operation is performed above a glass transition temperature, it would be expected that less than 1% of said particles of active ingredient are ruptured during the cutting step in Mikkelsen.
Regarding claim 9, Mikkelsen teaches that the cutting of the extrudate forms granules having a sphere shape (col 7 lines 40-50 and col 8 lines 38-45). Therefore, Mikkelsen teaches that the cutting step also includes shaping the plurality of pieces.
Regarding claim 10, Mikkelsen teaches that each of said plurality of pieces are substantially spherically having the same volume and the same average diameter (col 7 lines 40-50). Therefore, Mikkelsen is considered to teach each plurality of pieces being substantially uniform in size and shape.
Regarding claim 11, Mikkelsen teach that the cutter has an axis of rotation perpendicular to the direction the extrudate exits the extruder (See Fig 2).
Therefore, the combination of Mikkelsen with Elejalde, which transports the extrudate on a conveyor from the extruder to the cutter, renders obvious a cutter having an axis of rotation orthogonal to a conveying direction of the extrudate on the conveyor.
Regarding claim 12, Elejalde teaches that the conveyor is disposed in an ambient environment as it is exposed to the surrounding air ([0030]-[0037]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Mikkelsen et al. (US Patent No. 7,232,581 B2; June 19, 2007)and Elejalde et al. (US 2009/0029018 A1; Jan. 29, 2009) as applied to claim 1 above, and further in view of Chung et al. (US 2007/0037931 A1; Feb. 15, 2007).
Regarding claim 7, Mikkelsen teaches a method of manufacturing a comestible, wherein the comestible is a chewing gum, comprising providing an active ingredient and an encapsulating ingredient to an extruder comprising gum base ingredients, mixing the ingredients to form a gum composition and extruding the composition to form an extrudate (Col 2 lines 55 – col 3 line 20; Col 7 line 20 - col 8 line 45; col 10 lines 30-65; See Examples).
Mikkelsen teaches that the composition is passed through a die plate having openings less than 3 mm as Mikkelsen teaches that the plurality of granules, or pieces, have a diameter below 3 mm, or 3000 microns, such as in the range of 0.1 to 2.5 mm, or 100 to 2500 microns (col 7 lines 40-50), thus overlapping the claimed range of openings less than 500 microns. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Mikkelsen, however, fails to teach that the composition is passed through a melt screen filter arranged within an interior of the extruder.
Chung teaches that it is well known in the art for an extruder to be equipped with a melt screen filter ([0014], [0052]). Chung teaches that the melt screen filter aids in reducing build up on the extrusion die ([0052]). Therefore, as it is well known in the art for extruders to comprise melt screen filters within the interior, it would have been obvious to one of ordinary skill in the art to equip the extruder of Mikkelsen with a melt screen filter as Mikkelsen is extruding a composition at similar temperatures as Chung and such melt screen filter would further aid in reducing build up on the extrusion die as taught by Chung.
As stated above, Mikkelsen teaches forming a chewing gum comprising the plurality of granules as an ingredient (Col 7 line 20 - col 8 line 45; See Examples), wherein the plurality of granules are added to additional ingredients to form a chewing gum (Examples 6 and 7). Mikkelsen fails to specifically teach that the additional ingredients are considered a “gum base”, however, as the claims are silent with respect to what constitutes a gum base, and “gum base” can vary depending on the consumer/manufacturer, the additional ingredients in Mikkelsen are considered to meet the claimed limitation “adding the plurality of pieces to gum base”.
Further, it would have been obvious to one of ordinary skill in the art to vary the additional ingredients the granules are added to depending on the type of gum desired. Mikkelsen already teaches that the granules are included in making a chewing gum, and therefore, it would have been obvious to one of ordinary skill in the art to add the plurality of granules of Mikkelsen to a “gum base” to form a final desired chewing gum product.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Mikkelsen et al. (US Patent No. 7,232,581 B2; June 19, 2007), Elejalde et al. (US 2009/0029018 A1; Jan. 29, 2009) and Chung et al. (US 2007/0037931 A1; Feb. 15, 2007) as applied to claim 7 above, and further in view of Fuisz (US 2009/0098192 A1; April 16, 2009).
Regarding claim 8, as stated above, Mikkelsen in view of Chung teach using a melt screen filter, however, both fail to teach applying pressure to the composition within the extruder via a pump to force the composition to pass through the melt screen.
Fuisz teaches the method of hot melting using a screw extruder, which is the same as Chung, comprising a pump to pump the composition through a die ([0100] and [0114]).
As such method of using a pump to apply pressure to a composition in an extruder to pump it through the extruder is well known in the art as taught by Fuisz, it would have been obvious to have a pump in the process of Mikkelsen and Chung in order to provide a means to ensure the composition flows through the extruder melt screen and die. This is merely providing a known means for extruding and would have been obvious for the same reasons as taught in the prior art.
Response to Arguments
Applicant’s arguments with respect to claim 12 are moot as claim 12 is still pending in the claim set filed 02/13/2026. Therefore, the 112 rejections as set forth in the previous Office Action are maintained.
Applicant’s arguments with respect to the 103 rejections have been fully considered but were not found persuasive.
Applicant argues that Mikkelsen discloses that the extruder and the die plate are fluidly connected to each other and therefore Mikkelsen fails to teach transporting the extrudate via a conveyor between the extruder and a cutter as claimed. Applicant further states that an intervening conveyor in Mikkelsen would render it inoperable for its intended purpose and therefore would not have been obvious to combine with Elejade.
This is not found persuasive as the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In the instant case, the combined teaches suggests providing a conveyor after extruding and before cutting in order to allow the extrudate to become stable. Elejalde teaches that the chewing gum ropes exiting the extruder can be conveyed on a conveyor before cutting by the cutting apparatus ([0033]). Elejalde teaches that the conveyor allows the chewing gum ropes to “relax” and get to a more stable form before cutting ([0031]).
It would have been obvious to one of ordinary skill in the art to transport the extrudate of Mikkelsen via a conveyor from the extruder to a cutter as taught by Elejalde. This would allow the extrudate of Mikkelsen to reach a stable form before being cut to a desired size. As Elejalde teaches that it is well known in the art to convey an extrudate between an extruder and a cutting apparatus, it would have been obvious to have the method of Mikkelsen further comprise a transporting step between the extruding and cutting steps as such transporting step is well known in the art of making chewing gum as taught by Elejalde and provides benefits to the chewing gum, by allowing the extrudate to reach a stable form before cutting, thus ensuring accurately sized cut pieces.
The claims are to a method and not an apparatus. Therefore, based on the suggestion of the combined teachings, it would have been obvious to incorporate a conveying step before the cutting step in Mikkelsen while still retaining the important features of Mikkelsen for the reasons as stated above, wherein the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant’s arguments with respect to claim 2 have been fully considered but were not found persuasive.
Applicant argues that Mikkelsen explicitly states that different sized granules are formed and one would not modify Mikkelsen to have uniformly sized pieces.
This is not found persuasive as Mikkelsen teaches that each of said plurality of pieces are substantially spherical having the same volume and the same average diameter (col 7 lines 40-50). Therefore, it would have been obvious to one of ordinary skill in the art to process the plurality of pieces to be substantially uniform in size.
Further, while Mikkelsen teaches that different sizes can be achieved, it would have been obvious to one of ordinary skill in the art to have the pieces of Mikkelsen be uniform in size if desired.
As stated in MPEP 2144.04 IV: Changes in size/proportion is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed piece was significant.
Therefore, the claimed substantially uniform in size is merely an obvious variant over Mikkelsen.
Applicant’s arguments with respect to claims 7 and 8 are not found persuasive for the same reasons as stated above.
Therefore, for the reasons stated above, the 112 and 103 rejections are maintained.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached on (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791
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