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 § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating
obviousness or nonobviousness.
Claims 1-3, 15, 17-18, 20-21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Ray US 2017/0164631.
Regarding claim 1, for convenience claim 1 requires that the food ingredient comprise:
25-40% by dry weight of milk protein;
0.35%-11% by dry weight lactose (35%X(1%) -55%X(20%) = 0.35%- 11%);
5.25%-19.25% by dry weight glucose (35%X(15%)- 55%X(35%)= 5.25%- 19.25%);
0.35%-5.5% by dry weight galactose (35%X(1%) -55%(10%)= 0.35%-5.5%);
17.5% -46.5% by dry weight galactooligosaccharide (35%X(50%)-55%(85%)= 17.5%-46.5%);
Regarding claim 1, Ray discloses a liquid milk product comprising 25% (w/w) solids ([0096]). It is noted that the solids of milk include at least proteins, carbohydrates and fats. It is noted that a liquid milk product can be considered a food ingredient.
Ray discloses that the liquid milk product comprises 1-10% (w/w) protein, the protein is milk protein ([0078], [0080]-[0082]).
Ray discloses that the liquid milk product comprises 0.05-3% (w/w) lactose ([0039])
Ray discloses that the liquid milk product comprises glucose in the range of 0.5-3% (w/w) ([0047]).
Ray discloses that the liquid milk product comprises galactose in the range of 0.05-3% (w/w) ([0053]).
Ray discloses that the liquid milk product comprises GOS (galactooligosaccharide) in the range of 0.9-10%(w/w) ([0056]).
To determine the dry weight of protein (i.e. weight of the protein/weight of total solids) see paragraphs [0032], [0142]- [0145].
Where the total solids are 25%(w/w) (i.e. 25g total solids/100g total weight) ([0096]) and protein is 1-10%(w/w) (i.e. 1g-10g protein/100g total weight) ([0078]), the dry weight % of protein is determined by: 1g protein/100g total weight X 100g total weight /25g total solids = 1g protein/25g total solids = 0.04 = 4%, 10g protein/100g total weight X 100g total weight/25g total solids = 10g protein/25g total solids = 0.4 = 40%
Therefore, protein can range from 4%-40% based on dry weight, overlapping the claimed range.
Where the total solids are 25%(w/w) (i.e. 25g total solids/100g total weight) ([0032]) and lactose is 0.05-3%(w/w) (i.e. 0.05g-3g lactose/100g total weight), the dry weight % of lactose is determined by: 0.05g lactose/100g total weight X 100g total weight/25g total solids = 0.05g lactose/25g total solids = 0.002 = 0.2% lactose, 3g lactose/100g total weight X 100g total weight/25g total solids = 0.12 = 12%
Therefore, lactose can range from 0.2% to 12% based on dry weight, encompassing the claimed range. As discussed above the claim requires 0.35%-11% by dry weight lactose (35%X(1%) -55%X(20%) = 0.35%- 11%);
Where the total solids are 25%(w/w) (i.e. 25g total solids/100g total weight) and glucose is 0.5-3%(w/w) (i.e. 0.5g-3g glucose/100g total weight) ([0047], [0032]), the dry weight % of glucose is determined by: 0.5g glucose/100g total weight X 100g total weight/25g total solids = 0.02 = 2%, 3g glucose/100g total weight X 100 g total weight/25g total solids =0.12 = 12% glucose.
Therefore, glucose can range from 2% to 12% based on dry weight, overlapping the claimed range. As discussed above, the claim requires 5.25%-19.25% by dry weight glucose (35%X(15%)- 55%X(35%)= 5.25%- 19.25%);
Where the total solids are 25%(w/w) (i.e. 25g total solids/100g total weight) and galactose is 0.05-3%(w/w) (i.e. 0.05g-3g/100g total weight) ([0053],[0032]), the dry weight % of galactose is determined by: 0.05g galactose/100g total weight X 100g total weight/25g total solids = 0.05g galactose/25g total solids = 0.002 = 0.2% galactose, 3g galactose/100g total weight X 100g total weight/25g total solids = 0.12 = 12%
Therefore, galactose can range from 0.2% to 12% based on dry weight, encompassing the claimed range. As discussed above, the claim requires 0.35%-5.5% by dry weight galactose (35%X(1%) -55%(10%)= 0.35%-5.5%);
Where the total solids are 25%(w/w) (i.e. 25g total solids/100g total weight) and GOS is 0.9-10%(w/w) (i.e. 0.9g-10g GOS/100g total weight) ([0056], [0032]), the dry weight % of GOS is determined by: 0.9g GOS/100g total weight X 100g total weight/25g total solids= 0.9g GOS/25g total solids = 0.036 = 3.6% GOS, 10g GOS/100g total weight X 100g total weight/25g total solids = 0.4 = 40% GOS.
Therefore, GOS can range from 3.6% to 40% based on dry weight, overlapping the claimed range. As discussed above, the claim requires 17.5% -46.5% by dry weight galactooligosaccharide (35%X(50%)-55%(85%)= 17.5%-46.5%);
Regarding claims 2 and 3, Ray discloses that the liquid milk product may comprise a total amount of fat which may be milkfat and/or vegetable oil in the range of 1-4% (w/w) ([0089], [0091], [0092]). Based on the total solids of 25% (w/w), the dry weight of the milk fat or vegetable oil is 4-16%.
Regarding claim 15, claim 15 is rejected for the same reasons given above as for claim 1.
Regarding claim 17, for convenience claim 17 requires that the food ingredient comprise:
0.35%-7.7% by dry weight lactose (35%X(1%) -55%X(14%) = 0.35%- 7.7%);
5.25%-15.95% by dry weight glucose (35%X(15%)- 55%X(29%)= 5.25%- 15.95%);
0.35%-4.4% by dry weight galactose (35%X(1%) -55%(8%)= 0.35%-4.4%);
24.5% -46.75% by dry weight galactooligosaccharide (35%X(70%)-55%(85%)= 24.5%-46.75%);
Each of the above ranges overlaps the ranges taught by Ray as discussed above in claim 1.
Regarding claim 18, for convenience claim 18 requires that the food ingredient comprise:
0.45%-11% by dry weight lactose (45%X(1%) -55%X(20%) = 0.45%- 11%);
6.75%-19.25% by dry weight glucose (45%X(15%)- 55%X(35%)= 6.75%- 19.25%);
0.45%-5.5% by dry weight galactose (45%X(1%) -55%(10%)= 0.45%-5.5%);
22.5%-46.75% by dry weight galactooligosaccharide (45%X(50%)-55%(85%)= 22.5%-46.75%);
Each of the above ranges overlaps the ranges taught by Ray as discussed above in claim 1.
Regarding claim 20, for convenience claim 20 requires that the food ingredient comprise:
0.45%-7.7% by dry weight lactose (45%X(1%) -55%X(14%) = 0.45%- 7.7%);
6.75%-15.95% by dry weight glucose (45%X(15%)- 55%X(29%)= 6.75%- 15.95%);
0.45%-4.4% by dry weight galactose (45%X(1%) -55%(8%)= 0.45%-4.4%);
31.5%-46.75% by dry weight galactooligosaccharide (45%X(70%)- 55%(85%) =31.5%-49.5%);
Each of the above ranges overlaps the ranges taught by Ray as discussed above in claim 1.
Regarding claim 21, for convenience claim 21 requires that the food ingredient comprise:
0.50%-11% by dry weight lactose (50%X(1%) -55%X(20%) = 0.050%- 11%);
7.5%-19.25% by dry weight glucose (50%X(15%)- 55%X(35%)= 7.5%- 19.25%);
0.50%-5.5% by dry weight galactose (50%X(1%) -55%(10%)= 0.50%-5.5%);
25%-46.75% by dry weight galactooligosaccharide (50%X(50%)-55%(85%)= 25%-46.75%);
Each of the above ranges overlaps the ranges taught by Ray as discussed above in claim 1.
Regarding claim 23, for convenience claim 23 requires that the food ingredient comprise:
0.50%-7.7% by dry weight lactose (50%X(1%) -55%X(14%) = 0.50%- 7.7%);
7.5%-15.95% by dry weight glucose (50%X(15%)- 55%X(29%)= 7.5%- 15.95%);
0.50%-4.4% by dry weight galactose (50%X(1%) -55%(8%)= 0.50%-4.4%);
35%-46.75% by dry weight galactooligosaccharide (50%X(70%)-55%(85%)= 35%-46.75%);
Each of the above ranges overlaps the ranges taught by Ray as discussed above in claim 1.
Response to Arguments
Applicant's arguments filed 07/06/2026 have been fully considered but they are not persuasive.
On pg. 5-7 of the remarks, Applicant argues that Ray does not suggest the claimed composition as a whole. Applicant argues that the allegedly overlapping ranges are based on selecting individual endpoints from multiple independent ranges disclosed in Ray and converting such values into dry weight percentages. Applicant argues that this approach improperly relies upon hindsight after knowledge of Applicants invention. On pg. 6 of the remarks Applicant argues that Ray does not disclose the presently claimed protein content and carbohydrate profile as a unified composition.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, Ray discloses a general composition of the liquid milk product at paragraphs [0016]-[0021], the general composition provides broad ranges for the liquid milk composition that would encompass the specific ranges taught in the paragraphs relied upon in the rejection for teaching the specific ranges of each of the specific ingredients. The ranges for each of the protein, lactose, glucose, galactose and GOS are general teachings of what the liquid milk composition can comprise not specifically different embodiments. “[A] person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense.” MPEP 2145.X.B. Regarding conversion of the ranges into dry weight percentages, Ray provides enough information regarding the liquid milk product composition to readily reasonably determine dry weight percentages of the specific ingredients and MPEP 2123 discloses that patents are relevant as prior art for all that they contain, and a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art (MPEP 2123).
In response to Applicant’s argument on Pg. 8 regarding the ratio of glucose to galactose, it is noted that the ratio of glucose to galactose is not explicitly required for all embodiments of the liquid milk composition and [0020] recites that the liquid milk product “may furthermore have a weight ratio between glucose and galactose of at least 2:1”, the use of “may” suggests that the ratio is optional. See also preferred embodiments in paragraphs [0100]-[0137] do not all specifically require the ratio.
On Pgs. 7-8 of the remarks, Applicant argues that Ray does not provide teaching that the specific amount of milk protein and carbohydrate distribution is a preferred embodiment or could achieve the presently claimed invention, i.e. a food ingredient which can be used in food products to replace skim milk or other milk ingredients as well as part of the sucrose conventionally added.
These arguments have not been found persuasive. First, it is noted that the claims can be rejected over the prior art’s broad disclosure instead of preferred embodiments, see MPEP 2123. Second, the claims are directed to product claims not method claims and therefore the claims are not limited by intended use argued. As discussed in the office action, the liquid milk product can be considered a food ingredient.
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 ASHLEY AXTELL whose telephone number is (571)270-0316. The examiner can normally be reached M-F 9:00- 5:30.
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/A.A/
Ashley AxtellExaminer, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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