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 .
This office action is in regard to the application filed on August 3, 2021 and in response to a Request for Continued Examination filed on January 26, 2026.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 26, 2026 has been entered.
Status of Application
The amendment filed January 26, 2026 has been entered. Claims 1-3, 8-9, 11, 13-14, 19, 22, 25, 34-36, 46, and 47 are currently pending in the application. Claims 13-14, 19, 22, 25, and 34-36 are withdrawn; claims 4-6 are newly canceled; claims 7, 10, 12, 15-18, 20-21, 23-24, 26-33, and 37-45 were previously canceled; claims 1, 3, and 46 have been amended. Claims 1-3, 8-9, 11, 46, and 47 are presented for examination.
The previous 112(b) rejections of claims 4, 5, and 46 have been withdrawn in light of applicant’s cancelation of claim 4.
Claim Objections
Claims 1 and 47 are objected to because of the following informalities: The claims recite “characterized by viscosity of,” should read “characterized by a viscosity of.” Appropriate correction is required.
Claim Interpretation
The term “room temperature” in claims 1 and 47 are not defined by either claim; however, the instant specification recites that “room temperature” is a temperature of about 20-25°C (p. 16 lines 18-19). Thus, “room temperature” will be interpreted as a temperature in the range of 20-25°C.
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.
Claims 1-3, 8, 9, 11, 46, and 47 are 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 1 recites “at least 65% w/w of said total protein content of said product is whey protein” and “whey protein is in a heat-treated state corresponding to exposure to 40-79°C” in lines 5-7. The Examiner finds no support in the specification or claims as originally filed for these limitations.
Regarding the first limitation, while there is support in the instant specification as originally filed, on page 9 lines 18-22 ([0037] in the published application), for that the protein composition comprises at least 65% of the total protein content of the food product and that 60-85% or 75-95% of the total protein content is whey protein, there is no support for at least 65% w/w of the total protein content being specifically whey protein. Whey protein is limited to an amount in the range of 60-95% as set forth in the specification.
Regarding the second limitation, there is support in the instant specification as originally filed for:
The protein composition at a temperature of 45-80°C on page 7 lines 17-19 ([0030] in the published application);
A “stirring temperature” of the protein composition into the product mix at 40-79°C and a general statement of heat exposure of the protein composition on page 8 lines 13-17 and 21-25 ([0034] in the published application);
Adding the protein composition at a temperature of 65-75°C, 55-65°C, 60-65°C, 60-70°C, 70-74°C, or 74-79°C on page 11 lines 8-12 ([0048] in the published application); and
Adding the protein composition at a product temperature of 45-80°C on page 17 lines 18-29 ([0099] in the published application).
However, none of these are support for the specific limitation of whey protein being in a heat-treated state corresponding to exposure at 40-79°C. At most, there is support for the protein composition being within a specific temperature range when it is added to the rest of the composition mix, while there is no support for specifically whey protein to be at a certain temperature.
Therefore, there is no support for these amended claim limitations and Applicant is not considered to have support for amended claim 1.
Claims 2, 3, 8, 9, 11, 46, and 47 are rejected as being dependent on a rejected base claim.
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.
Claims 1-3, 8, 9, 11, 46, and 47 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 “said whey protein is in a heat-treated state corresponding to exposure to 40-79°C” in lines 6-7 which renders the claim indefinite because the meaning of a “heat-treated state” of whey protein is unclear. It is not clear what makes the whey protein be in a “heat-treated state” and what is considered to be a “heat-treated state.” Is whey protein in a “heat-treated state” as soon as it is heated or does it need to undergo some kind of chemical or physical change in order for it to be in this state? Neither the specification nor claims as originally filed provide meaning or explanation to this limitation and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Additionally, the line “exposure to 40-79°C” is unclear due to the word “to” being used to describe a range. For example, the claim can be read as both “exposure to 40°C” and “exposure to 79°C,” which is indefinite as there cannot be two upper limits. Changing the language to “exposure at 40-79°C” or “exposure at a temperature in the range of 40-79°C” could help improve clarity.
For these reasons, claim 1 is rendered indefinite.
Claims 2, 3, 8, 9, 11, 46, and 47 are rejected as being dependent on a rejected base claim.
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 (i.e., changing from AIA to pre-AIA ) 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, 3, 8, 9, 11, 46, and 47 are rejected under 35 U.S.C. 103 as being unpatentable over Langley (US PG Pub 2017/0251694; cited in IDS dated Aug. 3, 2021) as evidenced by Chandan et al. (“Dairy-Based Ingredients.” Dairy Processing and Quality Assurance (2nd Edition), John Wiley & Sons, 2016, pp. 197-219; cited on PTO-892 dated July 5, 2024), and in view of Bovetto et al. (US PG Pub 2009/0136643; cited on PTO-892 dated July 5, 2024), herein after referred to as Langley, Chandan, and Bovetto.
Regarding claims 1 and 8, Langley discloses an ice cream containing alcohol (i.e., a food product) [0018], comprising 50-98 wt.% ice cream base mix and 2-50 wt.% alcohol (claim 6) and wherein the food product is stored at a temperature of -5°F (approx. -21°C) [0033].
The ice cream base mix taught by Langley comprises 48.89-52.47 wt.% milk, 20.03-21.46 wt.% cream, 5.96-7.15 wt.% milk powder, as well as corn syrup, sweetener, stabilizer, and flavoring (claim 1).
Langley does not explicitly teach the amount of water in the food product. However, as evidenced by Chandan, milk contains 87.5 wt.% water, heavy cream contains 57.3 wt.% water (Chandan, Table 8.3), and dried whole milk (i.e., milk powder) contains 3 wt.% water (Chandan, Table 8.7). Thus, the amount of water in the ice cream product (as based on the base mix mixed with the alcohol – the base mix has a range of 50-98 wt.% in the ice cream) is in a range of 27.22-57.25 wt.%.
Langley also does not explicitly teach that the alcohol is ethyl alcohol. However, Langley does teach that the alcohol used in the ice cream is 90 proof [0033] and can be whiskey, bourbon, vodka, rum, etc. [0028]. A 90 proof alcohol contains 45 ethyl alcohol by volume (ABV), which is equivalent to 35.52 wt.% ethyl alcohol. Langley teaches that the amount of alcohol in the ice cream ranges from 2-50 wt.% (claim 6). Thus, at 2-50 wt.% alcohol, the amount of ethyl alcohol in the ice cream is 0.71-17.76 wt.%.
The amount of water encompasses the claimed range of 30-53 wt.% and the amount of ethyl alcohol overlaps with the claimed range of 6-30 wt.%. Where the claimed ranges 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). See MPEP 2144.05.I.
Langley is silent as to that the food product comprises a protein content of 4-30 wt.% wherein at least 65 wt.% of the total protein content is whey protein and wherein the whey protein is in a heat-treated state corresponding to exposure at 40-79°.
Bovetto, in the same field of invention, teaches an ice cream (claim 46) comprising at least 6-16 wt.% added protein (claim 41; [0132]) in the form of whey protein micelles (claim 40), wherein the whey protein micelles constitute at least 50% of the total protein content (claim 41). Bovetto also teaches that the whey protein is subjected to heat treatment at 70-95°C prior to inclusion in the composition (i.e., whey protein is in a heat-treated state corresponding to exposure at a specific temperature) [0077].
The amount of protein lies within the claimed range of 4-30 wt.%. “At least 50 wt.%” is considered to be 50-100 wt.%; thus, the range taught by Bovetto encompasses the claimed range of at least 65 wt.% of instant claim 1 and 75-95 wt.% of instant claim 8. The temperature range overlaps with the claimed range of 40-79°C. Where the claimed ranges 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). See MPEP 2144.05.I.
Bovetto offers the motivation that the presence and amount of whey protein micelles in the ice cream gives the ice cream good sensory qualities, creamy texture, and nutritional balance [0137], as well as being suitable as an emulsifier, fat substitute, and/or whitening agent ([0113]-[0115]).. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the food product of Langley to incorporate the whey protein content at the taught amount and in the heat-treated state of Bovetto, thereby arriving at the claimed invention. One would have been motivated to make this modification for the benefit of improving the textural qualities and nutrition of the ice cream.
Where modified Langley teaches 6-16 wt.% protein and 0.71-17.76 wt.% ethyl alcohol, the ratio between the total protein content to the ethyl alcohol in the food product is within the range of 0.34-22, which encompasses the claimed range of 0.6-3. Where the claimed ranges 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).
Langley teaches that the food product is stored at a temperature of -5 °F (~-21 °C) [0033], but is silent as to that following that storage, the food product may be kept for 0.5-2 hours at room temperature without apparent deformation and without phase separation. Modified Langley is also silent as to that the food product is characterized by viscosity of 1.5-16 Pa*sec when measured at room temperature using a constant shear rate at 100 sec-1 for 3-120 seconds.
However, where the claimed and prior art products are identical or substantially identical or composition, a prima facie case of anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01.I. When the structure or composition recited in the prior art is substantially identical to that of the claims, claimed properties or characteristics are presumed to be present in the composition of the prior art. As such, the same product will have the same consistency. The product of modified Langley is substantially identical to that of the instant claims, and thus the featured attributes of keeping the food product for 0.5-2 hours at room temperature without apparent deformation and without phase separation and viscosity parameters must also be necessarily present in the product of modified Langley.
Regarding claim 3, modified Langley teaches that the whey protein in the food product is in a powder form (Bovetto: claims 43 and 44).
Regarding claim 9, given that modified Langley teaches 6-16 wt.% protein and 0.71-17.76 wt.% ethyl alcohol and wherein at least 50% of the protein is whey protein (i.e., 50-100 wt.%) (as set forth in claim 1), the amount of whey protein in the food product is 3-16 wt.%. Thus, the ratio between the whey protein to the ethyl alcohol in the food product is 0.17-22 w/w, which encompasses the claimed range of 0.7-2.27 w/w. Where the claimed ranges 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).
Regarding claim 11, modified Langley teaches that the ice cream base mix comprises:
48.89-52.47 wt.% milk;
20.03-21.46 wt.% cream;
5.72-6.92 wt.% corn syrup (i.e., sugar);
15.50-16.69 wt.% sweetener (i.e., sugar);
5.25-5.96 wt.% flavoring; and
0.76-0.80 wt.% stabilizer (Langley: claim 1).
Modified Langley also teaches that the ice cream product comprises 50-98 wt.% of the base mix, 2-50 wt.% alcohol (Langley: claim 6), and 6-16 wt.% protein wherein at least 50 wt.% of the protein (i.e., 50-100 wt.%) are whey protein micelles (Bovetto: claim 41) in the form of a powder (i.e., whey protein powder) (Bovetto: claim 43). Using these teachings, the calculation of ethyl alcohol in the ice cream as set forth in the rejection of claim 1 above, and combining the corn syrup and sweetener to be “sugar,” the ice cream product with alcohol is re-calculated as comprising:
24.45-51.42 wt.% milk;
10.02-21.03 wt.% cream;
10.61-23.14 wt.% sugar;
2.63-5.84 wt.% flavoring;
0.38-0.78 wt.% stabilizer;
0.71-17.76 wt.% ethyl alcohol; and
3-16 wt.% whey protein powder.
Thus, the amount of milk and cream lay within the claimed respective ranges of 10-60% and 10-30%, the amount of sugar encompasses the claimed range of 16-20%, the amount of flavoring overlaps with the claimed range of 0-3%, the amount of stabilizer lies within the claimed range of 0-1%, the amount of ethyl alcohol encompasses the claimed range of 6-15 wt.%, and the amount of whey protein powder overlaps with the claimed range of 10-25 wt.%. Where the claimed ranges 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).
Regarding claim 46, modified Langley teaches that the food product is ice cream (Langley: claim 6).
Regarding claim 47, modified Langley is silent as to that the food product is characterized by viscosity of 4-14 Pa*sec when measured at room temperature using a constant shear rate at 100 sec-1 for 3-120 seconds.
However, where the claimed and prior art products are identical or substantially identical or composition, a prima facie case of anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01.I. When the structure or composition recited in the prior art is substantially identical to that of the claims, claimed properties or characteristics are presumed to be present in the composition of the prior art. As such, the same product will have the same consistency. The product of modified Langley is substantially identical to that of the instant claims, and thus the featured claimed viscosity parameters must also be necessarily present in the product of modified Langley.
Claims 1-3, 8, and 46 are rejected under 35 U.S.C. 103 as being unpatentable over Bovetto et al. (US PG Pub 2009/0136643; cited on PTO-892 dated July 5, 2024) in view of Mihajlovic (US PG Pub 2003/0215548, cited in IDS dated Aug. 3, 2021).
Regarding claims 1, 8, and 46, Bovetto teaches a food composition comprising 6-16 wt.% protein (claim 41), which lies within the claimed range of 4-30 wt.% protein, wherein the food product composition is in storage at -20°C [0162], which lies within the claimed range of -10 to -25°C. Bovetto also teaches that at least 50 wt.% of the total protein content of the food product are whey protein micelles (claim 41) and that the whey protein is subjected to heat treatment at 70-95°C prior to inclusion in the composition (i.e., whey protein is in a heat-treated state corresponding to exposure at a specific temperature) [0077].
“At least 50 wt.%” is considered to be 50-100 wt.%, thus, the range taught by Bovetto encompasses the claimed ranges of at least 65 wt.% of instant claim 1 and 75-95 wt.% of instant claim 8. The temperature range overlaps with the claimed range of 40-79°C. Where the claimed ranges 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). See MPEP 2144.05.I.
Bovetto also teaches that the food product is an ice cream (Bovetto: claim 46), which renders obvious instant claim 46.
Bovetto does not explicitly teach the amount of water in the ice cream, but does teach that the amount of solids is 39.4 wt.% [0161]. Thus, the amount of water is a percentage of the remaining 60.6 wt.% but it cannot be ascertained as to whether the amount of water aligns with the claimed range of 30-53 wt.%. However, where 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). Since concentration of water is well known in the art to be a result effective variable that alters the resulting product, changing the water content would have been known by one of ordinary skill in the art to affect the product’s texture, consistency, and other properties. Therefore, one of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range through routine optimization, as varying water content would achieve recognized results. See MPEP 2144.05.II. Thus, the inclusion of water/liquid taught by Bovetto renders obvious the instant claim limitations.
Bovetto does not teach that the ice cream composition comprises 6-30 wt.% ethyl alcohol and wherein the ratio between the total protein content to the ethyl alcohol in the food product is 0.6-3 w/w.
Mihajlovic, in the same field of invention, teaches adding ethyl alcohol to ice cream type products where the product comprises 0.5-40 wt.% ethyl alcohol (Abstract), which overlaps with the claimed range of 6-30 wt.%. Where the claimed ranges 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).
Mihajlovic offers the motivation that ethyl alcohol added to ice cream type products with their method offers a refreshing alternative for alcoholic drinks [0022] and allows for substantial amounts of ethyl alcohol to be added to ice cream without changes in texture and structure [0019]. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have incorporated the ethyl alcohol in the taught amounts of Mihajlovic into the ice cream composition of Bovetto, thereby arriving at the claimed invention, hereby referred to as modified Bovetto. One would have been motivated to make this modification for the benefit of creating an alternative to alcoholic drinks and incorporating alcohol into ice cream without texture changes.
Modified Bovetto teaches that the ice cream type product comprises 6-16 wt.% total protein content (Bovetto: claim 41) and 0.5-40 wt.% ethyl alcohol (Mihajlovic: Abstract). Therefore, the ratio between the total protein content to the ethyl alcohol in the food product is 0.15-32 w/w. This range overlaps with the claimed range of 0.6-3 by weight. Where the claimed ranges 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).
Modified Bovetto is silent as to that following storage, the food product may be kept for 0.5-2 hours at room temperature without apparent deformation or phase separation, as well as being silent as to that the food product is characterized by viscosity of 1.5-16 Pa*sec when measured at room temperature using a constant shear rate at 100 sec-1 for 3-120 seconds.
However, where the claimed and prior art products are identical or substantially identical or composition, a prima facie case of anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01.I. When the structure or composition recited in the prior art is substantially identical to that of the claims, claimed properties or characteristics are presumed to be present in the composition of the prior art. The product of modified Bovetto is substantially identical to that of the instant claims, and thus the featured attributes of keeping the food product for 0.5-2 hours at room temperature without apparent melting signs or phase separation and viscosity parameters must also be necessarily present in the product of modified Bovetto.
Regarding claim 2, modified Bovetto teaches that emulsifiers and stabilizers (Bovetto: [0163]) are present in the whey powder, which is a component of the ice cream food product, at an amount of 0.1-50 wt.% (Bovetto: [0105]), which encompasses the claimed range of less than 0.2 wt.%.
Regarding claim 3, modified Bovetto teaches that the whey protein in the food product is in a powder form (Bovetto: claims 43 and 44).
Regarding claim 9, given that modified Bovetto teaches 6-16 wt.% total protein content and 0.5-40 wt.% ethyl alcohol in the food product, and wherein at least 50% of the protein is whey protein (i.e., 50-100 wt.%) (as set forth in claim 1), the amount of whey protein in the food product is 3-16 wt.%. Thus, the ratio between the whey protein to the ethyl alcohol in the food product is 0.075-32 w/w, which encompasses the claimed range of 0.7-2.27 w/w. Where the claimed ranges 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).
Response to Arguments
Applicant's arguments filed January 26, 2026 have been fully considered but they are not persuasive.
The prior art rejection has been amended in light of Applicant’s amendments to the claims, however, the essential prior art rejection has been maintained by the Examiner for the following reasons.
Applicant argues that the viscosity of the food product depends on the combination and usage together of the protein:alcohol ratio and the temperature of the protein, and that adjusting either variable alone “does not predictably tune the final product.” Applicant also argues that it is the claimed viscosity that allows the food product to remain stable and not melt at room temperature. Applicant cites Examples 3-5 of the instant specification for support of these alleged results (Remarks, p. 6-7).
This argument is not persuasive. None of the examples show how the two factors work together in synergy to result in the claimed properties. Example 3 does not even measure the viscosity of the final product, which makes it impossible to ascertain how the temperature of the protein changes the final viscosity. The formulations in Example 4 change both the protein:alcohol ratio and the protein temperature; convincing evidence would require viscosity results from different formulations that hold the ratio constant while changing the protein temperature and vice versa. In other words, none of the examples show how the viscosity changes when only the ratio is changing and how the viscosity changes when only the protein temperature is changing, and then comparing that to examples as to when the two factors allegedly work together.
In Example 4 (p. 34 lines 19-25 of the instant specification), Applicant states that two additional formulations were prepared under similar specifications except that the protein temperature was changed. However, Applicant does not make clear what the “similar specifications” are, as there are at least two different formulations that these formulations could be made similar to. In any case, these formulations were made with protein at room temperature or at 45°C, which resulted in respective “low viscosities” and “higher viscosities.” All of the resulting viscosities however (1.55, 1.77, 2.39, and 4.06 Pa*sec) are all within the claimed range of 1.5-16 Pa*sec. Example 5 shows viscosity results in Table 7 with changing protein:alcohol ratios, however, the protein temperature is still not held constant as it was added in a range of 60-70°C.
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).
Applicant argues that the Examples of the instant specification show that compositions that have protein:alcohol ratios inside the ranges taught by the prior art but outside of the claimed range behave like conventional ice cream and do not possess the same properties as the invention (Remarks, 7-8).
This argument is not persuasive. Applicant compares compositions that have no whey protein powder and protein:alcohol ratios outside of the claimed range and inside the prior art range to compositions that have whey protein powder added and protein:alcohol ratios inside the claimed range. Therefore, it cannot be ascertained as to whether it is the protein:alcohol ratio or the addition of whey protein that is affected the resulting viscosities. Evidence would be needed to show the comparison between compositions that all have whey protein but different protein:alcohol ratios to compositions that all do not have whey protein but different protein:alcohol ratios (preferably ratios that are the same as those compositions with whey protein in order to see how viscosity changes with or without the addition of whey but the same ratio).
Applicant argues that the prior art never identifies the synergy of the two factors of protein temperature and protein:alcohol ratio and how they together affect viscosity. Due to this, Applicant argues, the claimed amounts could not be arrived at by routine optimization under In re Aller or by the In re Best rationale (Remarks, p. 8).
This argument is not persuasive. Viscosity is merely a property of a composition. If a composition has all the other components and variables within the claimed range, the composition would necessarily possess the same claimed viscosity, which is the rationale behind In re Best and is applicable to the rejection. Applicant has also not proven this alleged synergy.
The reasoning for rejecting the overlapping or encompassing ranges is based upon In re Wertheim, which states that a prima facie case of obviousness exists for claimed ranges that overlap or lie inside ranges taught by the prior art. The rejection also only uses In re Aller as rationale for rendering obvious the amount of water in the composition, which Applicant has not argued. None of the other ranges, such as temperature or viscosity, use the In re Aller rationale.
Applicant argues that the combination of Bovetto and Mihajlovic do not teach the specific combination (and synergy) of the protein:alcohol ratio and protein temperature that results in the resulting claimed viscosity (Remarks, p. 9-10).
This argument is not persuasive for the same reasons as set forth above.
Applicant argues that Mihajlovic teaches away from the claimed invention because Mihajlovic’s invention “is expressly designed to reduce direct interaction between milk proteins and ethanol…by trapping ethanol in a hydrocolloid gel” while the instant invention possess specific protein-ethanol interaction and in-product conditioning (Remarks, p. 10).
This argument is not persuasive. The paragraph of Mihajlovic cited by Applicant ([0017]) is misconstrued by the Applicant – while Mihajlovic does teach trapping ethyl alcohol in a gel structure, Mihajlovic also states that the reduction of the ethyl alcohol and milk protein interaction is only a possible additional effect of this trapping. Nowhere does Mihajlovic teach or suggest that their invention was “expressly designed” for this purpose. Furthermore, nowhere in the instant claims or specification does Applicant require or suggest that protein-ethanol interaction is a necessary component of the claimed invention. While both protein and ethanol are present in the composition, the interaction between the two is not contemplated by Applicant. The instant specification does state on page 4 lines 16-18 that “possible interactions of ethyl alcohol with proteins, should be considered, as they may affect the structure and resulting properties of the proteins,” but does not go any further. Therefore, Mihajlovic is not considered to teach away from the instant invention.
In the absence of any further arguments with regard to the rejections of the additional dependent claims, the rejections of these dependent claims are maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAURA E SWEENEY whose telephone number is (571)272-0244. The examiner can normally be reached M-F 9:00-6:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (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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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791