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 .
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 1 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 1, recites “wherein the binding agent is treated with the humectant prior to combining with the salt and the tartaric acid”. However, there is only support for the binding agent being treated with the humectant, as well as “the silica and/or silicone compound is used to treat the binding agent prior to combining with the remainder of the components of the powder pre-mix composition” (Specification, p. 8, lines 19-21; p. 9, lines 4-5; p. 11, lines 20-21). There is no support in the specification that states the treatment is prior to combining with the salt and the tartaric acid. Additionally, the only examples in the specification where the binding agent is treated with the humectant are examples 9 and 10, which also have specific weight percentages of components and do not include other components, such as silica, which are included in previous examples.
Regarding dependent claims 3, 5-9, 13-14, 16, and 25-27, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
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.
Claims 1, 3, 5-9, 13-14, 16, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Gaudry et al. (US 2009/0181142 A1) (Gaudry) in view of Levitz (US 3,767,422 A) and Bianco (US 6,348,534 B1).
Regarding claims 1, 6, and 9, Gaudry teaches a moldable substance (Gaudry, Abstract), wherein the moldable substance is formed by mixing a first mixture including a salt, lubricant, surfactant, starch-based binder, preservative, and retrogradation inhibitor; and then adding water (Gaudry, [0056]) (i.e., a powder pre-mix composition; wherein the powder premix composition forms a moldable compound when combined with a solvent).
Gaudry teaches the substance may comprise more than about or less than about 0%, 0.1%, 1%, 5%, 10%, 15%, 20%, 25%, 30%, 35%, 40%, 50%, or 60% by weight of a starch-based binder which includes wheat flour (Gaudry, [0049]), and more than about or less than about 0%, 0.01%, 0.05%, 0.1%, 0.5%, 1%, 2%. 5%, 10%, 20%, or 30% by weight of a retrogradation inhibitor which includes waxy corn starch (Gaudry, [0052]). Further, wherein the weight ranges of wheat flour to corn starch overlap with the weight ratio of the presently claimed.
Gaudry further teaches the substance comprises more than about and/or less than about 0%, 0.01%, 0.1%, 0.5%, 1%. 5%, 10%, 15%, 30% or 50% by weight of a salt (Gaudry, [0047]), which overlaps with the range of the presently claimed.
Gaudry further teaches the substance comprises more than about or less than about 0%, 2%, 20%, or 30% by weight of a lubricant which includes mineral oil (Gaudry, [0047]) (i.e., humectant comprises mineral oil), and wherein the weight percent overlaps with the range of the presently claimed. Further, as the mineral oil, i.e., humectant, would interact with the wheat flour, i.e., binding agent, the binding agent would be treated with the humectant.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
However, Gaudry does not explicitly teach (a) from about 1 wt% to about 7 wt% of tartaric acid or a salt thereof, or (b) the substance comprises small plastic shapes.
With respect to the difference (a), Levitz teaches a dough composition comprising a mixture (i.e., powder pre-mix composition) including overdeveloped wheat flour dough component, shortening, pregelatinized starch, chemical leavening agent, dough plasticizer (Levitz, Col. 2, lines 32-49), wherein the pregelatinized starch includes gelatinized cereal starch such as corn (i.e., corn starch) (Levitz, Col. 2, lines 6-8), wherein the dough plasticizers include glycerin and sorbitol (Levitz, Col. 2, lines 18-20),
and wherein the chemical leavening components include tartaric acid, wherein the chemical leavening agent is included in the mixture to be leavened in an amount of from about 0.5 to 12 percent by weight of the mixture to be leavened (Levitz, Col. 2, lines 50-60).
As Levitz expressly teaches, chemical leavening components include tartaric acid, and good results were obtained when the leavening agent was used in an amount of from about 1 to 4 percent by weight of the mixture to be leavened (Levitz, Col. 2, lines 50-65), which overlaps with the range of the presently claimed in claim 6.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Levitz is analogous art as it is drawn to a dough composition comprising a mixture (i.e., powder pre-mix composition) including overdeveloped wheat flour dough component, pregelatinized starch such as corn starch, and dough plasticizers such as glycerin and sorbitol (Levitz, Col. 2, lines 6-8, 18-20, and 32-49).
In light of the motivation of using tartaric acid as disclosed by Levitz, it therefore would have been obvious to one of ordinary skill in the art to incorporate the tartaric acid of Levitz in the mix of Gaudry in order to chemically leaven the moldable substance formed from the mix to achieve a desired texture, and thereby arrive at the claimed invention.
With respect to the difference (b), Bianco teaches a play material matrix (Bianco, Abstract), wherein the play matrix material can be kneaded, molded, and stretched (Bianco, Col. 1, lines 49-56). Bianco teaches the play material matrix includes one or more solid shapes, referred to as “inserts” (Bianco, Col. 2, lines 3-7), and wherein the inserts are made of plastic (Bianco, Col. 5, line 31). Further, these shaped inserts would be considered small as they are smaller than the moldable material.
As Bianco expressly teaches, the play material of the invention provides amusing play qualities by including one or more shaped inserts (Bianco, Col. 2, lines 25-27).
Bianco is analogous art as it is drawn to moldable play materials (Bianco, Col. 1, lines 10-14).
In light of the motivation of including shaped inserts as disclosed by Bianco, it therefore would have been obvious to one of ordinary skill in the art to modify the moldable material of Gaudry by including shaped inserts in order to provide an additional amusing play quality to the moldable material, and thereby arrive at the claimed invention.
Further, given that Gaudry in view of Levitz and Bianco discloses the moldable material first mixture that overlaps the presently claimed powder pre-mix composition, including wheat flour, corn starch, and mineral oil, it therefore would be obvious to one of ordinary skill in the art, to use the wheat flour, corn starch, and mineral oil, which is both disclosed by Gaudry in view of Levitz and Bianco and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Further, the recitation in the claims that the powder pre-mix composition is “a powder play composition, which forms a moldable play compound without the use of an external heat source when combined with a weight ratio of about 1:1 to about 5:1 (or a weight ratio between 2:1 to 4:1 in claim 9) of the powder pre-mix composition to a solvent” is merely an intended use. Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Gaudry in view of Levitz and Bianco discloses the first mixture that corresponds to the powder pre-mix composition as presently claimed, it is clear that the first mixture of Gaudry in view of Levitz and Bianco would be capable of performing the intended use, i.e. as a powder play composition, which forms a moldable play compound without the use of an external heat source when combined with a weight ratio of about 1:1 to about 5:1 of the powder pre-mix composition to a solvent, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Further, although Gaudry, in view of Levitz and Bianco, does not explicitly teach the binding agent is treated with the humectant prior to combining with the salt and the tartaric acid as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven 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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Gaudry, in view of Levitz and Bianco, meets the requirements of the claimed product, Gaudry, in view of Levitz and Bianco, clearly meets the requirements of the present claim.
Regarding claim 3, Gaudry, in view of Levitz and Bianco, teaches the powder pre-mix composition of claim 1, wherein the salt comprises sodium chloride.
Given that Gaudry, in view of Levitz and Bianco discloses the first mixture that overlaps the presently claimed powder pre-mix composition, including sodium chloride, it therefore would be obvious to one of ordinary skill in the art, to use the sodium chloride, which is both disclosed by Gaudry, in view of Levitz and Bianco and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Regarding claim 5, Gaudry, in view of Levitz and Bianco, teaches the powder pre-mix composition of claim 1, wherein glycerin may be included as a humectant (Gaudry, [0053]) and wherein as the glycerin would be mixed with the mineral oil, the mineral oil would necessarily be “treated with” the glycerin upon mixing.
Regarding claims 7 and 8, Gaudry, in view of Levitz and Bianco, teaches the powder pre-mix composition of claim 1, wherein the first mixture does not include water and becomes the moldable substance when mixed with water (Gaudry, [0056]). Therefore, the composition is substantially free of water and the solvent is water.
Regarding claim 13, Gaudry, in view of Levitz and Bianco, teaches the powder pre-mix composition of claim 1, and wherein information may be provided (e.g., concommitantaly provided) with a moldable substance or with a mix or intermediate product to make the moldable substance (i.e., the mix; the powder pre-mix composition of instant claim 1), wherein the information can be associated with the container (i.e., a kit comprising the powder pre-mix composition and instructions), wherein the information may indicate a process step or characteristic associated with a moldable substance or a strip, for example, the information may indicate that the moldable substance strip is bendable, moldable, and/or edible, and the information may indicate that an object may be used to form a shape within the moldable substance, wherein information provided with the moldable substance may indicate that it may be used with one or more tools and/or accessories, such as Play-Doh® product (i.e., instructions for play) (Gaudry, [0143]-[0144]; [0150]; [0153]-[0156]; [0011]-[0013]; [0016]);
wherein the moldable substance may comprise one or more of a surfactant, a preservative, fragrance, and a colorant, wherein the colorant may include macro-sized particles such as glitter or pearlescent materials (i.e., additives to provide a visual and/or tactile effect) (Gaudry, [0045]-[0046]; [0048]; [0054]-[0057]; [0072]; [0142]).
It would have been obvious to one of ordinary skill in the art that the mix (i.e., powder pre-mix composition) would comprise the same components (i.e., including the one or more surfactant, a preservative, fragrance, and a colorant) as the moldable substance, excluding water, in order to the moldable substance to form by mixing the first mixture with water, and thereby arrive at the claimed invention.
Regarding claim 14, Gaudry, in view of Levitz and Bianco, teaches the kit of claim 13, wherein the starch-based binder can include one or more of rye flour, rice flour, and tapioca flour (Gaudry, [0049]); wherein the salt may comprise one or more of sodium chloride, calcium chloride, and potassium chloride (Gaudry, [0047]); wherein the humectant can include glycol, such as a low molecular weight polyethylene glycol (Gaudry, [0053]).
Regarding claim 16, Gaudry, in view of Levitz and Bianco, teaches the kit of claim 13, wherein glycerin may be included as a humectant (Gaudry, [0053]) and wherein as the glycerin would be mixed with the mineral oil, the mineral oil would necessarily be “treated with” the glycerin upon mixing.
Regarding claim 25, Gaudry, in view of Levitz and Bianco, teaches the powder pre-mix composition of claim 1, wherein the moldable substance may comprise one or more of a surfactant, a preservative, fragrance, and a colorant, wherein the colorant may include macro-sized particles such as glitter or pearlescent materials (i.e., additives to provide a visual and/or tactile effect) (Gaudry, [0045]-[0046]; [0048]; [0054]-[0057]; [0072]; [0142]).
It would have been obvious to one of ordinary skill in the art that the mix (i.e., powder pre-mix composition) would comprise the same components (i.e., including the one or more surfactant, a preservative, fragrance, and a colorant) as the moldable substance, excluding water, in order to the moldable substance to form by mixing the first mixture with water, and thereby arrive at the claimed invention.
Claims 26 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Gaudry, in view of Levitz and Bianco, as applied to claim 1 above, and further in view of Modell et al. (GB 2535217 A) (Modell).
Regarding claims 26 and 27, Gaudry, in view of Levitz and Bianco, teaches the powder pre-mix composition of claim 1, but does not explicitly teach wherein the composition further comprises from about 7 wt% to about 30 wt% of a silica and/or silicone.
With respect to the difference, Modell teaches modelling doughs comprising at least one starch-containing flour, such as wheat flour, at least one low vapour pressure polar solvent, such as mineral oil, water, and optional ingredients such as softeners, preservatives, and/or additives such as mineral oil, surfactants, aromas or perfumes, colours, preservatives, alt, hardeners, and lubricants (Modell, Abstract; p. 2-3, Summary of the Invention; p. 3, last two paragraphs; p. 5, Paragraph 2; p. 8, Paragraph 2), wherein the total amount of starch-containing material component a) in the modelling doughs will typically be in the range of 10 to 60% by weight (Modell, p. 4, Paragraph 4),
and the optional softening agents can be certain semi-organic compounds such as siloxanes (e.g., polydimethoxysiloxane), wherein the total content of softening agents will be included at a level of less than 15% by weight (e.g., 1% to 20% or 1% to 15% by weight) (Modell, p. 6, Paragraph 2), which overlaps with the range of the presently claimed.
As Modell expressly teaches, the modelling doughs comprise optional ingredients such as softeners, wherein the optional softening agent can be certain semi-organic compounds such as siloxanes (e.g., polydimethylsiloxane) (Modell, Abstract; p. 2-3, Summary of the Invention; p. 6, Paragraph 2).
Modell is analogous art as it is drawn to flexible modelling compounds that can be used for moulding (i.e., moldable compound), wherein in particular the invention relates to starch-based modelling compounds (Modell, p. 1, Paragraph 1).
In light of the motivation of using polydimethylsiloxane as disclosed by Modell, it therefore would have been obvious to one of ordinary skill in the art to incorporate in the polydimethylsiloxane of Modell in the mix of Gaudry, in order to soften and achieve a desired texture of moldable substance when the mix is combined with water, and thereby arrive at the claimed invention.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
Applicant primarily argues:
“Furthermore, Applicant respectfully submits that obviousness rejections are improper because the Office Action relies on information gleaned solely from Applicant's claims and Specification. See, e.g., Spec., at pp. 6-14 (discussing different types of magnetic fields and how to apply them to achieve the method claimed later in claim 35). MPEP § 2142 states, "[I]mpermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art" (emphasis added). The Office's evaluation of obviousness must "'take[] into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and [shall] not include knowledge gleaned only from applicant's disclosure ...."' See MPEP § 2145(X)(A) (quoting In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971)) (emphasis added).”
Remarks, p. 7
The examiner respectfully traverses as follows:
It is the Examiner’s position that hindsight was not used given both Gaudry and Levitz are both drawn to a dough composition comprising a mixture (i.e., powder pre-mix composition) including overdeveloped wheat flour dough component, pregelatinized starch such as corn starch, and dough plasticizers such as glycerin and sorbitol (Levitz, Col. 2, lines 6-8, 18-20, and 32-49), and given that the motivation to combine Levitz with Gaudry comes from Levitz itself, namely, in order to chemically leaven the moldable substance formed from the mix to achieve a desired texture, as set forth above in item #8.
Further, it is the Examiner’s position that hindsight was not used given both Gaudry and Bianco are both drawn to moldable play materials (Bianco, Col. 1, lines 10-14), and given that the motivation to combine Gaudry with Bianco comes from Bianco itself, namely, in order to provide an additional amusing play quality to the moldable material, as set forth above in item #9.
Further, it is the Examiner’s position that hindsight was not used given both Gaudry and Modell are both drawn to flexible modelling compounds that can be used for moulding (i.e., moldable compound), wherein in particular the invention relates to starch-based modelling compounds (Modell, p. 1, Paragraph 1), and given that the motivation to combine Modell with Gaudry comes from Modell itself, namely, in order to soften and achieve a desired texture of moldable substance when the mix is combined with water, as set forth above in item #22.
Applicant further argues:
“Gaudry is explicitly directed to "forming an item with desired spatial features" where "[t]he item may be a food item, such as a baked item or a cake." Gaudry, [0003]. Gaudry's methods involve "baking the initial food item and the moldable substance" at temperatures "between about150 °F and about 500 °F for a time between about 8 minutes and about 70 minutes." Gaudry [0010]. Furthermore, Gaudry's moldable substance "may be formed by mixing a first mixture including a salt, lubricant, surfactant, starch-based binder, preservative, and retrogradation inhibitor; adding water that is heated to about 150 °F or about 170 °F to the mixture." Gaudry [0056].
In stark contrast, the claimed invention is directed to "a dough-like moldable play compound which can be made without the application of heat or need for baking." Spec., p. 2, line 32 - p. 3, line 2. The specification emphasizes that "there remains a need to provide dough-like moldable play compounds which do not require the application of heat to provide soft, flexible, and pliable play compounds. Particularly for the ease and safety of the end user, eliminating or reducing the need for heating of the compounds provides a distinct advantage over current modeling compounds." Spec., p. 2, line 27-31. Indeed, "[a]n advantage of the preferred embodiments is to provide a powder pre-mix composition which can be combined with a solvent to form a moldable play compound at a point of use. It is an advantage of the present invention that the moldable play compound can be formed without the application of heat and may be manufactured by the user." Spec., p. 3, lines 30-33.
The Office argues that "Gaudry only states that the moldable substance 'may be' a food item (Gaudry, Abstract), not that the moldable substance 'must be' or 'is' a food item. Therefore, embodiments of Gaudry may not food items." Office Action, page 13. However, this argument misses the fundamental point: Gaudry's entire disclosure is directed to baking food items at high temperatures. Gaudry's methods require "baking the initial food item and the strip" and "separating the baked food item from the baked strip." Gaudry, [0009]. The fact that Gaudry's substance is intended to be baked-whether or not the final product is consumed-renders it incompatible with the claimed invention's objective of avoiding heat application entirely (see claim 1 which recites no external heat source).
One of ordinary skill in the art would not have been motivated to combine Gaudry's heat- requiring moldable substance with other references to arrive at a powder pre-mix composition that specifically avoids the use of heat. The proposed combination would require fundamentally redesigning Gaudry's composition to eliminate its reliance on heat, which goes far beyond the predictable use of prior art elements according to their established functions.”
Remarks, p. 7-9
The examiner respectfully traverses as follows:
While applicant argues that Gaudry requires heat to form the moldable substance, the fact remains that Gaudry only states it “may be” heated. The phrase “may be” indicates that it is not a requirement for the moldable compound to be baked or use heat.
Further, the claims are drawn to the “powder pre-mix composition” not to the moldable substance. Therefore, as Gaudry in view of Levitz and Biano teaches the components in the pre-mix composition, whether or not one of ordinary skill in the art chooses to heat the composition of Gaudry, in view of Levitz and Bianco, after adding water does not change the fact that Gaudry, in view of Levitz and Bianco, teaches the powder pre-mix composition.
Further, the recitation in the claims that the powder pre-mix composition is “a powder play composition, which forms a moldable play compound without the use of an external heat source when combined with a weight ratio of about 1:1 to about 5:1 of the powder pre-mix composition to a solvent” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Gaudry, in view of Levitz and Bianco, discloses the powder pre-mix composition as presently claimed, it is clear that the powder-premix composition of Gaudry, in view of Levitz and Bianco, would be capable of performing the intended use, i.e., a powder play composition, which forms a moldable play compound without the use of an external heat source when combined with a weight ratio of about 1:1 to about 5:1 of the powder pre-mix composition to a solvent, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Applicant further argues:
“The Office acknowledges that "Gaudry does not explicitly teach . .. the substance comprises small plastic shapes" and relies on Bianco to teach this limitation. Office Action, page 4. Bianco teaches "a play material matrix" where "the play matrix material can be kneaded, molded, and stretched" and "includes one or more solid shapes, referred to as 'inserts"' that "are made of plastic." Id. at pp. 5-6 (citing Bianco, Col. 2, lines 3-7; Col. 5, line 31).
However, the proposed combination lacks rational underpinning and would render Gaudry unsuitable for its intended purpose. Bianco's play material is "an aqueous play gel composition" that "includes water, polyvinyl alcohol, a surfactant, and a salt." Bianco, Col. 1, lines 48-61. Bianco's "play gel is extremely extensible" and "can be kneaded, molded, and stretched, can be colored and/or scented, and can have other interesting colors or effects, such as glowing in the dark, changing colors with temperature or light changes." Id. Bianco's play material is not subjected to baking temperatures.
The Office's stated motivation is that "it therefore would have been obvious to one of ordinary skill in the art to modify the moldable material of Gaudry by including shaped inserts in order to provide an additional amusing play quality to the moldable material." Office Action, page 13. However, this motivation ignores the fundamental incompatibility between Bianco's plastic inserts and Gaudry's baking process.
Gaudry's methods involve "baking the initial food item and the moldable substance" at temperatures "between about 150 °F and about 500 °F for a time between about 8 minutes and about 70 minutes." Gaudry, [0014]. Plastic inserts, as taught by Bianco, would melt or deform when exposed to such baking temperatures. One of ordinary skill in the art would recognize that it is incompatible to incorporate plastic shapes into a composition intended for baking as proposed by the Office.
The Office argues that "Bianco teaches children's play items are formed from non-toxic ingredients (Bianco, Col. 1, lines 16-18). Therefore, the shaped inserts of Bianco which a person of ordinary skill in the art would combine with the moldable substance of Gaudry in order to provide amusing play qualities, would be non-toxic." Office Action, page 8. However, Bianco's disclosure relates to "a resilient play gel for children that can be deformed and stretched" and "[m]olding and play materials of various kinds are known in the toy arts for amusement and creative play." Bianco, Col. 1, lines 10-18. The fact that Bianco's inserts are non-toxic at room temperature does not mean they would remain non-toxic or structurally intact when subjected to baking temperatures of 150 °F to 500 °F.
As recognized by the Federal Circuit, "[i]f a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, there may be no suggestion or motivation to make the proposed modification." In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984). Adding plastic shapes to Gaudry's moldable substance would render it unsuitable for baking, which is Gaudry's explicitly stated purpose. Therefore, the proposed combination lacks a rational basis.”
Remarks, p. 9-10
The examiner respectfully traverses as follows:
Firstly, while applicant argues that Gaudry and Bianco could not be combined because Gaudry requires heating the compound after adding water, and the plastic shapes of Bianco would melt or deform during the heating, the fact remains that Gaudry does not require heating, and that heating of the moldable substance is only taught as a potential embodiment. Therefore, adding the plastic shapes of Bianco without heating of the final moldable composition is possible.
However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Secondly, applicant argues that Bianco’s inserts would melt or deform when exposed to the baking temperatures of 150°F to 500°F of Gaudry. However, Bianco teaches the plastic used for the inserts include, for instance, polystyrene (Bianco, Col. 5, lines 31-40), which has a glass transition temperature of about 100°C (i.e., 212°F). Below this glass transition temperature, the polystyrene plastic would remain solid without deformation. Therefore, even if one of ordinary skill in the art chooses to bake the powder pre-mix composition including the plastic inserts after adding water, baking at the lower end of the temperature range would not affect the inserts. Therefore, it is the examiner’s position that the combination of Gaudry with Bianco is proper.
Applicant further argues:
“The Office contends "the recitation in the claims that the powder pre-mix composition is 'a powder play composition, which forms a moldable play compound without the use of an external heat source when combined with a weight ratio of about 1:1 to about 5:1 of the powder pre-mix composition to a solvent' is merely an intended use." Office Action, page 10. The Office argues "the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use" because "Gaudry in view of Levitz and Bianco discloses the first mixture that corresponds to the powder pre-mix composition as presently claimed." Office Action, page 10.
This rejection is improper because the claim limitation reflects a fundamental structural difference between the claimed composition and Gaudry's composition. As stated in MPEP § 2111.02(II), "statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference ...between the claimed invention and the prior art."
The claimed composition is specifically formulated to provide a moldable play compound "without the use of an external heat source." This is not merely a statement of intended use-it is a functional limitation that requires the composition to have specific structural characteristics that enable it to form a moldable play compound at room temperature without heating.
Gaudry's moldable substance "may be formed by mixing a first mixture including a salt, lubricant, surfactant, starch-based binder, preservative, and retrogradation inhibitor; adding water that is heated to about 150 °F or about 170 °F to the mixture." Gaudry, [0156]. Gaudry's composition requires heating to 150 °F or 170 °F to form its intended compound. This is a structural difference from the claimed composition, which must be capable of forming a moldable play compound without any external heat source.
The specification explains that "[c]onventional modeling compounds rely on the element of heat to produce soft, flexible textures, which resist retrogradation and hardening over time" and that "[t]he hydration process in presence of heat produces a change in the structure of the starch granule, where the starch-starch molecular interactions are disrupted and replaced by starch-water interactions" through "gelatinization." Spec., [0010]-[0012]. The claimed invention achieves a moldable play compound without this heat-induced gelatinization process, which necessarily requires a different structural composition than Gaudry's heat-requiring composition.
The Office has not established that Gaudry's "first mixture" is capable of forming a moldable play compound without heating. Indeed, Gaudry explicitly teaches that heating is required. Therefore, the claim limitation is not merely an intended use, but rather reflects a structural difference that distinguishes the claimed invention from the prior art. There is no evidence to support that the composition of Gaudry, modified as proposed by the Office, would result in a moldable play compound.”
Remarks, p. 11-12
The examiner respectfully traverses as follows:
While applicant cites MPEP § 2111.02(II) to argue that the claim limitation “without the use of an external heat source” reflects a fundamental structural difference between the claimed composition and Gaudry's composition, the MPEP section cited is with respect to the preamble. The preamble of the present claims merely states “A powder pre-mix composition” (emphasis added). Therefore, the limitation that the claimed subject matter, i.e., the powder pre-mix composition, would become something else, i.e., a moldable play compound without the use of external heat, is merely an intended use and does not reflect a fundamental structural difference in the pre-mix composition.
Applicant further argues:
“The Office's motivation for combining Gaudry and Bianco is "to provide an additional amusing play quality to the moldable material." Office Action, page 8. However, as discussed above, adding plastic shapes to a composition intended for baking would render it unsuitable for its intended purpose and potentially hazardous.
The Office's motivation for combining Gaudry and Levitz is "to chemically leaven the moldable substance formed from the mix to achieve a desired texture." Office Action, page 9. However, chemical leavening is only relevant for baked food products, not for play compounds. One of ordinary skill in the art would have no reason to incorporate a chemical leavening agent into a play compound that is never baked (a feature of claim 1 that results in a different structural compound, i.e., a compound that is baked vs. not baked has different properties).
The Office has not provided any evidence that one of ordinary skill in the art would have been motivated to take Gaudry's heat-requiring, bakeable moldable substance and modify it to create a powder pre-mix composition that forms a play compound without heat. The references, when properly understood, teach away from such a combination.”
Remarks, p. 12-13
The examiner respectfully traverses as follows:
Firstly, as stated above, it is the examiner’s position that the combination of Gaudry and Bianco is proper. See item #25.
Secondly, as stated above, it is only the intended use of the present claims that the claimed product, i.e., powder pre-mix composition, forms a moldable play compound without the use of an external heat source when water is added. Therefore, adding tartaric acid with the motivation that it would act as a leavening agent should a person of ordinary skill in the art choose to heat the powder pre-mix composition taught by Gaudry, in view of Levitz and Bianco, is a proper motivation as baking is disclosed as a potential embodiment in Gaudry.
Further, applicant states that chemical leavening is only relevant for “baked food items”. However, it is the examiner’s position that chemical leavening would affect the texture of the final product and therefore, would extend beyond food items and include moldable play compositions as texture in moldable play compositions is an important feature.
It is the examiner’s position that the combination of Gaudry with Levitz is proper and does not teach away from the claimed powder pre-mix composition.
Applicant further argues:
“Accordingly, claim 1 as amended now requires that "the binding agent is treated with
silica and/or silicone prior to combining with the salt, the humectant, and the tartaric acid." This claim feature represents a structural difference that distinguishes the claimed composition from the prior art of record.
Gaudry does not teach treating the binding agent (wheat flour) with a humectant prior to combining with other ingredients. Gaudry teaches that "[t]he substance may be formed by mixing a first mixture including a salt, lubricant, surfactant, starch-based binder, preservative, and retrogradation inhibitor; adding water that is heated to about 150 °F or about 170 °F to the mixture." Gaudry, [0156]. Gaudry's disclosure describes mixing all components together, including adding heated water to form the moldable substance. Gaudry does not teach or suggest a process wherein the binding agent is first treated with silica and/or silicone before being combined with the other components of the composition.
This claim feature provides a structural difference that distinguishes the claimed composition from Gaudry's "first mixture." Spec., p. 12, lines 15-16. This pre-treatment of the binding agent provides beneficial properties to the play compound, including "further retention of moisture of the play compounds." Spec., p. 20, lines 1-12.
Thus, claim 1, as amended, is patentable over Gaudry, Levitz, and Bianco, or any combination thereof. Claims 3, 5-9, 13-14, 16, and 25-27 are patentable for the same reasons as claim 1 because they depend from claim 1 and due to the additional features called for therein. Reconsideration and withdrawal of the 35 U.S.C. 103 rejections are respectfully requested.”
Remarks, p. 13-14
The examiner respectfully traverses as follows:
Applicant states claim 1 has been amended to recite “wherein the binding agent is treated with silica and/or silicone prior to combining with the salt, the humectant, and the tartaric acid”. However, claim 1 has been amended to recite “wherein the binding agent is treated with the humectant prior to combining with the salt and the tartaric acid” (emphasis added).
Regardless, the limitation requiring the binding agent to be treated with a humectant prior to combining with the other components is a product-by-process limitation.
Although Gaudry, in view of Levitz and Bianco, does not explicitly teach the binding agent is treated with the humectant prior to combining with the salt and the tartaric acid as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven 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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Gaudry, in view of Levitz and Bianco, meets the requirements of the claimed product, Gaudry, in view of Levitz and Bianco, clearly meets the requirements of the present claim.
Further, while applicant states that the pre-treatment of the binding agent provides beneficial properties to the play compound, including "further retention of moisture of the play compounds." (Spec., p. 20, lines 1-12), this teaching is specific to Examples 9 and 10, which are the only embodiments where the binding agent is treated with humectants. It is further specific to wheat flour as the binding agent, and not to any binding agent as suggested.
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 Catriona Corallo whose telephone number is (571)272-8957. The examiner can normally be reached Monday-Friday, 8am-5pm.
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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