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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/26/26 has been entered.
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, 4-9, 11-12, 15-16 based on their dependency from rejected Independent claim 1 and Independent claim 30 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 due to the phrase “comprises less than 1 wt% of glycerin”. 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicants specification is silent to the claimed amount of glycerin but for the tables. Tables 2 and 4a-4c, which comprise glycerin, disclose glycerin amount which exceed 1%. Table 1 is silent to glycerin. Table 3 discloses an amount of .24 %. Thus the phrase does not comply with the written description requirement and is rejected since “less than 1wt%” encompasses a range outside of that disclosed, such as .25-.99wt. %.
Claim 30 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 due to the phrase “a binding agent consisting essentially of less than 1 wt% of glycerin”. 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Though applicants specification teaches the binding agent with or without an amount of glycerin. The specification is silent to the only component of the binding agent, i.e. a binding agent limited to only glycerin. Tables 2-4c which comprise glycerin, comprise additional binding agents. In addition, table 1 comprises no glycerin where table 3 teaches an amount of glycerin of .24% however the binding agent is not limited to only glycerin. Thus the specification is silent to “a binding agent consisting essentially of less than 1 wt% of glycerin”.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 4-9, 11-12, 15-16 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Robinson (WO201319030) in view of Jensen et al. (20100239720).
Robinson teaches a shelf-stable (pg. 8 lines 28-31), confectionary food product comprising,
a core formed from baked cake crumbs (pg. 6 lines 36-38; cake) having a water activity from less than about 0.71 (pg. 8 line 22, 30-31), and a binding agent (pg. 5 lines 11-12) wherein the binding agent comprises glycerin (pg. 5 lines 11-12) and
wherein the core includes a modified starch (pg. 5 line 29).
Robinson teaches the binding agent comprising as the preferred humectant glycerin (pg. 5 lines 13-14) and/or additional suitable humectants to achieve an amount (pg. 5 lines 11-13). It would have been obvious before the effective filing date of the claimed invention to teach an amount of glycerin in the total binding agent being less 1 wt. % thus providing a preferred humectant, glycerin in the binding material comprising additional humectants as taught by Robinson (pg. 5 lines 11-14).
In addition though silent to the amount of glycerin relative the entirety of the binding agent humectant. It would have been obvious before the effective filing date of the claimed invention to teach an amount of glycerin in the total binding agent being less 1 wt. % since substituting one amount of humectant for that of another based on its suitability for its intended use supports a prima facie obviousness determination.
Alternatively, since the claimed amount of glycerin encompasses 0. Robinson teaches the binding agent comprising suitable humectants to achieve an amount (pg. 5 lines 11-13). It would have been obvious before the effective filing date of the claimed invention to teach an amount of glycerin in the total binding agent being less 1 wt. %, such as 0 by substituting one humectant for that of another based on its suitability for its intended use as taught by Robinson (pg. 5 lines 11-14).
Robinson teaches a layered confection product which includes a binding agent of the genus modified starches thus one of ordinary skill in the art would have been motivated to look to the art of confection modified starches.
Jensen teaches a layered confectionary product comprising a starch containing component. Suitable examples of starch-containing components include, but are not limited to corn flour, rice flour, potato flour, potato flakes, rice flour, rice meal, corn cones, corn starch, physically and/or chemically modified flours or starches, such as pregelatinized starches. The starch-based materials include, but are not limited to, potato flour, potato granules, corn flour, masa corn flour, tapioca, buckwheat flour, bean flour, barley flour, as well as modified starches, native starches, dehydrated starches, starches derived from tubers, legumes and grain, for example cornstarch, wheat starch, rice starch, waxy corn starch, oat starch, cassaya starch, waxy barley, waxy rice starch, glutinous rice starch, sweet rice starch, amioca, potato starch, and mixtures thereof (par. 0072).
Thus it would have been obvious before the effective filing date of the claimed invention teach a specific modified starch, including a modified wheat starch, a modified rice starch, a modified potato starch, or alternatively from the group consisting of a modified tapioca starch or native corn starch as taught by Jensen (par. 0072) relative the genus teaching of modified and native starches as taught by Robinson (pg. 5 lines 27-30) since all the claimed elements were known in the prior art and one skilled in the art could have substituted the generic teaching of a modified starches as taught by Robinson with the starches as taught by Jensen since such are known obvious alternatives for their intended use as desired by Robinson.
With respect to claim 4, Robinson teaches the food product further including a creme layer (pg. 10 line 20 nut paste, line 23 buttercream filling, cream, soft cheese) a barrier layer between a coating and the product (pg. 10 lines 38-39) and an outer shell surrounding the core and the barrier layer, wherein the outer shell is a fat-based confectionery coating (pg. 10 lines 36-39).
Though silent to the crème being the barrier layer. It would have been obvious before the effective filing date of the claimed invention to combine the teachings of Robinson and taught the crème (pg. 10 lines 20-24) being barrier layer between the core and the chocolate coating since the selection of a known component would have been obvious to one of ordinary skill in the art and further achieving the art recognized purpose of preventing or retard moisture migration between the core and the coating as taught by Robinson (pg. 11 lines 1-2).
With respect to claim 5, the creme layer is a water- or oil- based filling, creme, or frosting (pg. 10 lines 20-24).
Though silent to the creme layer is a peanut butter layer, Robinson does teach nut pastes (pg. 10 line 20). It would have been obvious before the effective filing date of the claimed invention to combine the teachings of Robinson and taught the nut paste as a peanut butter layer since the selection of a known component from a genus of nut paste would have been obvious to one of ordinary skill in the art and further achieving the art recognized purpose of preventing or retard moisture migration between the core and the coating as taught by Robinson (pg. 11 lines 1-2).
With respect to claim 7, the fat-based confectionery coating is selected from the group consisting of milk chocolate, white chocolate, and dark chocolate (pg. 6 lines 29-30).
With respect to claim 8, the ratio of baked cake crumbs to binding agent is from about 3:1 to about 10:1 (pg. 9 lines 3-9).
With respect to claim 9, Robinson teaches the baked cake crumbs comprising sweeteners including monosaccharides and disaccharides (pg. 4 lines 29-39- pg. 5 lines 1-9). It would have been obvious before the effective filing date of the claimed invention to teach a ratio of monosaccharide to disaccharide sugar from about 8:1 to about 1:1 for its art recognized purpose of altering the flavor, specifically sweetness and reduce the calorie value of the core material.
With respect to claim 11, the binding agent is a syrup (pg. 4 lines 29-30), a fat-based créme (pg. 6 lines 11-14).
With respect to claim 12, the binding agent includes crème (col. 6 lines 11-14; caramel).
With respect to claim 15, Robinson teaches the core comprises at least one of, in addition to teachings chemically modified starches (pg. 5 line 29), Robinson teaches the core including hydrocolloids (pg. 5 lines 27-37). Jensen teaches modified wheat and rice starch (par. 0072). It would have been obvious before the effective filing date of the claimed invention to teach a type of hydrocolloid, such as a phosphated distarch phosphate wheat starch relative the genus teachings of modified wheat starch of Jensen (par. 0072) and/or fine cross-linked acetylated distarch phosphate with respect to the genus of modified rice starch (par. 0072), since Robinson is not limited in type thus achieve a same desired altering of texture and viscosity to improve shelf life as desired by Robinson (pg. 8 lines 28-30) compared to conventional techniques using starch for its same intended use since the selection of a known modified starch, based on its suitability for its intended use supports a prima facie obviousness determination.
In addition though silent to a specific modified wheat starch, merely because it is not disclosed that, in the constantly developing art of preparing food, since Jensen teaches modified wheat starch there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function.
With respect to claim 16, it would have been obvious before the effective filing date of the claimed invention to teach a specific modified starch, including a native corn starch as taught by Jensen (par. 0072) since all the claimed elements were known in the prior art and one skilled in the art could have substituted the generic teaching of a modified starches as taught by Robinson with the starches as taught by Jensen since such are known obvious alternatives for their intended use as desired by Robinson.
With respect to claim 30, Robinson teaches a shelf-stable (pg. 8 lines 28-31), confectionary food product comprising,
a core formed from
baked cake crumbs (pg. 6 lines 36-38; cake) having a water activity from less than about 0.71 (pg. 8 line 22, 30-31), and a binding agent consisting essentially of glycerin (pg. 3 lines 13-15) with respect to humectants, where it is noted with respect to the phrase "consisting essentially of" that in determining the steps included versus excluded in light of applicants specification, the phrase “consisting essentially of” does not exclude other humectants and the phrase is taken as a modifier of method steps rendering the claim open since substituting one humectant for that of another as taught by Robinson and applicants specification does not materially affect the basic and novel characteristics of the claimed method.
Wherein the binding agent comprises 1 wt% humectant (pg. 5 lines 16)
the ratio of baked cake crumbs to binding agent is from about 3:1 to about 10:1 (pg. 9 lines 3-9).
baked cake crumbs comprising sweeteners including monosaccharides and disaccharides (pg. 4 lines 29-39- pg. 5 lines 1-9).
The core comprises a modified starch (pg. 5 line 29)
Robinson teaches the binding agent comprising as the preferred humectant glycerin (pg. 5 lines 13-14) and/or additional suitable humectants to achieve an amount (pg. 5 lines 11-13). It would have been obvious before the effective filing date of the claimed invention to teach the binding agent consisting essentially glycerin in the total binding agent being less 1 wt. %, where consisting essentially is with respect to the genus humectants, thus providing a preferred humectant, glycerin in the binding material comprising additional humectants as taught by Robinson (pg. 5 lines 11-14) and since substituting one humectant for that of another as taught by Robinson does not materially affect the basic and novel characteristics of the claimed method.
In addition though silent to the amount of glycerin relative the entirety of the binding agent humectant. It would have been obvious before the effective filing date of the claimed invention to teach an amount of glycerin in the total binding agent being less 1 wt. % since substituting one amount of humectant for that of another based on its suitability for its intended use supports a prima facie obviousness determination.
Though silent to the binding agent comprises less than 1 wt% glycerine, since Robinson teaches 1wt.% (pg. 5 lines 16). It is not necessary that suggestion or motivation be found within the four comers of the reference(s) themselves. "The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of... theexplicit content of issued patents." KSR Int'l. Co. v. Teleflex lnc., 550 U.S. 398, 419. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416., The question to be asked is "whether the improvement is more than the predictable use of prior art elements according to their established functions." KSR, 550 U.S. at 417.
In addition, a conclusion of obviousness can be made from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference. See In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Such as in the instant case providing an amount of glycerin in the total binding agent being less 1 wt. %.
Alternatively, since the claimed amount of glycerin encompasses 0. Robinson teaches the binding agent comprising suitable humectants to achieve an amount (pg. 5 lines 11-13). It would have been obvious before the effective filing date of the claimed invention to teach an amount of glycerin in the total binding agent being less 1 wt. %, such as 0 by substituting one humectant for that of another based on its suitability for its intended use as taught by Robinson (pg. 5 lines 11-14).
Robinson teaches the baked cake crumbs comprising sweeteners including monosaccharides and disaccharides (pg. 4 lines 29-39- pg. 5 lines 1-9). It would have been obvious before the effective filing date of the claimed invention to teach a ratio of monosaccharide to disaccharide sugar from about 8:1 to about 1:1 for its art recognized purpose of altering the flavor, specifically sweetness and reduce the calorie value of the core material.
Robinson teaches a layered confection product which includes a binding agent of the genus modified starches thus one of ordinary skill in the art would have been motivated to look to the art of confection modified starches.
Robinson teaches the core comprises at least one of, in addition to teachings chemically modified starches (pg. 5 line 29), Robinson teaches the core including hydrocolloids (pg. 5 lines 27-37). Jensen teaches modified wheat and rice starch (par. 0072). It would have been obvious before the effective filing date of the claimed invention to teach a type of hydrocolloid, such as a phosphated distarch phosphate wheat starch relative the genus teachings of modified wheat starch of Jensen (par. 0072) and/or fine cross-linked acetylated distarch phosphate with respect to the genus of modified rice starch (par. 0072), since Robinson is not limited in type thus achieve a same desired altering of texture and viscosity to improve shelf life as desired by Robinson (pg. 8 lines 28-30) compared to conventional techniques using starch for its same intended use since the selection of a known modified starch, based on its suitability for its intended use supports a prima facie obviousness determination.
In addition though silent to a specific modified wheat starch, merely because it is not disclosed that, in the constantly developing art of preparing food, since Jensen teaches modified wheat starch there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function.
Claims 1, 4-9, 11-12, 15-16 and 30 rejected under 35 U.S.C. 103 as being unpatentable over Robinson (WO201319030) in view of Tachibe et al. (20080095909)
Robinson teaches a shelf-stable (pg. 8 lines 28-31), confectionary food product comprising,
a core formed from baked cake crumbs (pg. 6 lines 36-38; cake) having a water activity from less than about 0.71 (pg. 8 line 22, 30-31), and a binding agent (pg. 5 lines 11-12) wherein the binding agent comprises glycerin (pg. 5 lines 11-12) and
wherein the core includes a modified starch (pg. 5 line 29).
Robinson teaches the binding agent comprising as the preferred humectant glycerin (pg. 5 lines 13-14) and/or additional suitable humectants to achieve an amount (pg. 5 lines 11-13). It would have been obvious before the effective filing date of the claimed invention to teach an amount of glycerin in the total binding agent being less 1 wt. % thus providing a preferred humectant, glycerin in the binding material comprising additional humectants as taught by Robinson (pg. 5 lines 11-14).
In addition though silent to the amount of glycerin relative the entirety of the binding agent humectant. It would have been obvious before the effective filing date of the claimed invention to teach an amount of glycerin in the total binding agent being less 1 wt. % since substituting one amount of humectant for that of another based on its suitability for its intended use supports a prima facie obviousness determination.
Alternatively, since the claimed amount of glycerin encompasses 0. Robinson teaches the binding agent comprising suitable humectants to achieve an amount (pg. 5 lines 11-13). It would have been obvious before the effective filing date of the claimed invention to teach an amount of glycerin in the total binding agent being less 1 wt. %, such as 0 by substituting one humectant for that of another based on its suitability for its intended use as taught by Robinson (pg. 5 lines 11-14).
Robinson teaches a layered confection product which includes a binding agent of the genus modified starches thus one of ordinary skill in the art would have been motivated to look to the art of bakery products comprising modified starches.
Tachibe teaches the bakery product comprising modified starches (par. 0029) including commercially available starch materials such as FiberSym (par. 0032) per applicants specification of a phosphated distarch phosphate wheat starch.
Robinson teaches the core comprises at least one of, in addition to teachings chemically modified starches (pg. 5 line 29. It would have been obvious before the effective filing date of the claimed invention to teach a type of chemically modified starch, such as a phosphated distarch phosphate wheat starch relative the genus teachings of modified starch of Robinson, since Robinson is not limited in type thus achieve a same desired altering of texture and viscosity to improve shelf life as desired by Robinson (pg. 8 lines 28-30) compared to conventional techniques using starch for its same intended use since the selection of a known modified starch, based on its suitability for its intended use supports a prima facie obviousness determination such as in the instant case the production of bakery foods excellent in the feeling to the palate (palatability), and taste and texture as taught by Tachibe.
In addition though silent to a specific modified wheat starch, merely because it is not disclosed that, in the constantly developing art of preparing food, since Tachibe teaches modified wheat starch there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function.
With respect to claim 4, Robinson teaches the food product further including a creme layer (pg. 10 line 20 nut paste, line 23 buttercream filling, cream, soft cheese) a barrier layer between a coating and the product (pg. 10 lines 38-39) and an outer shell surrounding the core and the barrier layer, wherein the outer shell is a fat-based confectionery coating (pg. 10 lines 36-39).
Though silent to the crème being the barrier layer. It would have been obvious before the effective filing date of the claimed invention to combine the teachings of Robinson and taught the crème (pg. 10 lines 20-24) being barrier layer between the core and the chocolate coating since the selection of a known component would have been obvious to one of ordinary skill in the art and further achieving the art recognized purpose of preventing or retard moisture migration between the core and the coating as taught by Robinson (pg. 11 lines 1-2).
With respect to claim 5, the creme layer is a water- or oil- based filling, creme, or frosting (pg. 10 lines 20-24).
Though silent to the creme layer is a peanut butter layer, Robinson does teach nut pastes (pg. 10 line 20). It would have been obvious before the effective filing date of the claimed invention to combine the teachings of Robinson and taught the nut paste as a peanut butter layer since the selection of a known component from a genus of nut paste would have been obvious to one of ordinary skill in the art and further achieving the art recognized purpose of preventing or retard moisture migration between the core and the coating as taught by Robinson (pg. 11 lines 1-2).
With respect to claim 7, the fat-based confectionery coating is selected from the group consisting of milk chocolate, white chocolate, and dark chocolate (pg. 6 lines 29-30).
With respect to claim 8, the ratio of baked cake crumbs to binding agent is from about 3:1 to about 10:1 (pg. 9 lines 3-9).
With respect to claim 9, Robinson teaches the baked cake crumbs comprising sweeteners including monosaccharides and disaccharides (pg. 4 lines 29-39- pg. 5 lines 1-9). It would have been obvious before the effective filing date of the claimed invention to teach a ratio of monosaccharide to disaccharide sugar from about 8:1 to about 1:1 for its art recognized purpose of altering the flavor, specifically sweetness and reduce the calorie value of the core material.
With respect to claim 11, the binding agent is a syrup (pg. 4 lines 29-30), a fat-based créme (pg. 6 lines 11-14).
With respect to claim 12, the binding agent includes crème (col. 6 lines 11-14; caramel).
With respect to claim 15, Tachibe teaches the bakery product comprising modified starches (par. 0029) including commercially available starch materials such as FiberSym (par. 0032) per applicants specification of a phosphated distarch phosphate wheat starch.
Robinson teaches the core comprises at least one of, in addition to teachings chemically modified starches (pg. 5 line 29. It would have been obvious before the effective filing date of the claimed invention to teach a type of chemically modified starch, such as a phosphated distarch phosphate wheat starch relative the genus teachings of modified starch of Robinson, since Robinson is not limited in type thus achieve a same desired altering of texture and viscosity to improve shelf life as desired by Robinson (pg. 8 lines 28-30) compared to conventional techniques using starch for its same intended use since the selection of a known modified starch, based on its suitability for its intended use supports a prima facie obviousness determination such as in the instant case the production of bakery foods excellent in the feeling to the palate (palatability), and taste and texture as taught by Tachibe.
With respect to claim 16, it would have been obvious before the effective filing date of the claimed invention to teach a specific modified starch, including a native corn starch since one skilled in the art could have substituted the generic teaching of a modified starches thus providing obvious alternatives for their intended use as desired by Robinson.
With respect to Independent claim 30, Robinson teaches a shelf-stable (pg. 8 lines 28-31), confectionary food product comprising,
a core formed from
baked cake crumbs (pg. 6 lines 36-38; cake) having a water activity from less than about 0.71 (pg. 8 line 22, 30-31), and a binding agent consisting essentially of glycerin (pg. 3 lines 13-15) with respect to humectants, where it is noted with respect to the phrase "consisting essentially of" that in determining the steps included versus excluded in light of applicants specification, the phrase “consisting essentially of” does not exclude other humectants and the phrase is taken as a modifier of method steps rendering the claim open since substituting one humectant for that of another as taught by Robinson and applicants specification does not materially affect the basic and novel characteristics of the claimed method.
Wherein the binding agent comprises 1 wt% humectant (pg. 5 lines 16)
the ratio of baked cake crumbs to binding agent is from about 3:1 to about 10:1 (pg. 9 lines 3-9).
baked cake crumbs comprising sweeteners including monosaccharides and disaccharides (pg. 4 lines 29-39- pg. 5 lines 1-9).
The core comprises a modified starch (pg. 5 line 29)
Robinson teaches the binding agent comprising as the preferred humectant glycerin (pg. 5 lines 13-14) and/or additional suitable humectants to achieve an amount (pg. 5 lines 11-13). It would have been obvious before the effective filing date of the claimed invention to teach the binding agent consisting essentially glycerin in the total binding agent being less 1 wt. %, where consisting essentially is with respect to the genus humectants, thus providing a preferred humectant, glycerin in the binding material comprising additional humectants as taught by Robinson (pg. 5 lines 11-14) and since substituting one humectant for that of another as taught by Robinson does not materially affect the basic and novel characteristics of the claimed method.
In addition though silent to the amount of glycerin relative the entirety of the binding agent humectant. It would have been obvious before the effective filing date of the claimed invention to teach an amount of glycerin in the total binding agent being less 1 wt. % since substituting one amount of humectant for that of another based on its suitability for its intended use supports a prima facie obviousness determination.
Though silent to the binding agent comprises less than 1 wt% glycerine, since Robinson teaches 1wt.% (pg. 5 lines 16). It is not necessary that suggestion or motivation be found within the four comers of the reference(s) themselves. "The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of... theexplicit content of issued patents." KSR Int'l. Co. v. Teleflex lnc., 550 U.S. 398, 419. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416., The question to be asked is "whether the improvement is more than the predictable use of prior art elements according to their established functions." KSR, 550 U.S. at 417.
In addition, a conclusion of obviousness can be made from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference. See In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Such as in the instant case providing an amount of glycerin in the total binding agent being less 1 wt. %.
Alternatively, since the claimed amount of glycerin encompasses 0. Robinson teaches the binding agent comprising suitable humectants to achieve an amount (pg. 5 lines 11-13). It would have been obvious before the effective filing date of the claimed invention to teach an amount of glycerin in the total binding agent being less 1 wt. %, such as 0 by substituting one humectant for that of another based on its suitability for its intended use as taught by Robinson (pg. 5 lines 11-14).
Robinson teaches the baked cake crumbs comprising sweeteners including monosaccharides and disaccharides (pg. 4 lines 29-39- pg. 5 lines 1-9). It would have been obvious before the effective filing date of the claimed invention to teach a ratio of monosaccharide to disaccharide sugar from about 8:1 to about 1:1 for its art recognized purpose of altering the flavor, specifically sweetness and reduce the calorie value of the core material.
Robinson teaches a layered confection product which includes a binding agent of the genus modified starches thus one of ordinary skill in the art would have been motivated to look to the art of bakery products comprising modified starches.
Tachibe teaches the bakery product comprising modified starches (par. 0029) including commercially available starch materials such as FiberSym (par. 0032) per applicants specification of a phosphated distarch phosphate wheat starch.
Robinson teaches the core comprises at least one of, in addition to teachings chemically modified starches (pg. 5 line 29. It would have been obvious before the effective filing date of the claimed invention to teach a type of chemically modified starch, such as a phosphated distarch phosphate wheat starch relative the genus teachings of modified starch of Robinson, since Robinson is not limited in type thus achieve a same desired altering of texture and viscosity to improve shelf life as desired by Robinson (pg. 8 lines 28-30) compared to conventional techniques using starch for its same intended use since the selection of a known modified starch, based on its suitability for its intended use supports a prima facie obviousness determination such as in the instant case the production of bakery foods excellent in the feeling to the palate (palatability), and taste and texture as taught by Tachibe.
In addition though silent to a specific modified wheat starch, merely because it is not disclosed that, in the constantly developing art of preparing food, since Jensen teaches modified wheat starch there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function.
Response to Arguments
With respect to applicants urging directed to the claimed range of glycerin. Applicants specification specifically teaches at par. 0009:
In an embodiment of the cake formula, glycerine (in an amount of from about 1% to 10% of the cake, more specifically about 3.5%).
As noted by applicant, tables 2 and 4a-4c, which comprise glycerin, disclose glycerin amount which exceed 1%. Table 1 is silent to glycerin. Table 3 discloses an amount of .24 %. Thus the phrase does not comply with the written description requirement and is rejected since “less than 1wt%” encompasses a range outside of that disclosed, such as .25-.99wt. %.
With respect to claim 30, importantly the phrase “a binding agent consisting essentially of less than 1 wt% of glycerin” limits the binding agent in both amount and type. Though applicants specification teaches the binding agent with or without an amount of glycerin. The specification is silent to the only component of the binding agent, i.e. a binding agent limited to only glycerin. Tables 2-4c which comprise glycerin, comprise additional binding agents. In addition, table 1 comprises no glycerin where table 3 teaches an amount of glycerin of .24% however the binding agent is not limited to only glycerin. Thus the specification is silent to “a binding agent consisting essentially of less than 1 wt% of glycerin”.
With respect to applicants urging directed to Robinson and the combination with Jensen. Though urged different product types, the claims are not limited to a type and merely are limited by “confectionary food product”.
Robinson is silent to the claimed modified starch. Though silent to a specific modified starch, merely because it is not disclosed that, in the constantly developing art of preparing food, since Jensen teaches the claimed modified starches there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function.
Applicants specification does not limit the modified starch by unexpected results. Applicants specification states:
the modified starch may be a modified wheat starch such as Fibersym®, a phosphated distarch phosphate wheat starch, or a modified rice starch, such as RemyGel® 663, a fine cross-linked acetylated distarch phosphate, a modified potato starch, a modified tapioca starch or other similar modified starches or other similar hydrocolloids, such as polysaccharides or proteins to increase viscosity of the dough and retain moisture of the final product. In another embodiment, the starch is a native corn starch.
With respect to applicants urging Robinson is silent to a specific modified starch, importantly Robinson teaches modified starches. Jensen specifically teaches applicants claimed modified wheat starch, a modified rice starch, a modified potato starch, or alternatively from the group consisting of a modified tapioca starch or native corn starch (par. 0072).
With respect to applicants urging Robinson teaches away from the claimed range of glycerin due to the teaching of humectant in an amount of at least 1%. Importantly the claimed binding agent of Independent claim 1 is not limited by a total binding composition amount but by an amount of glycerin in the total.
Robinson teaches the binding agent comprising as the preferred humectant glycerin (pg. 5 lines 13-14) and/or additional suitable humectants to achieve an amount (pg. 5 lines 11-13). It would have been obvious before the effective filing date of the claimed invention to teach an amount of glycerin in the total binding agent being less 1 wt. % thus providing a preferred humectant, glycerin in the binding material comprising additional humectants as taught by Robinson (pg. 5 lines 11-14).
In addition though silent to the amount of glycerin relative the entirety of the binding agent humectant. It would have been obvious before the effective filing date of the claimed invention to teach an amount of glycerin in the total binding agent being less 1 wt. % since substituting one amount of humectant for that of another based on its suitability for its intended use supports a prima facie obviousness determination.
Alternatively, since the claimed amount of glycerin encompasses 0. Robinson teaches the binding agent comprising suitable humectants to achieve an amount (pg. 5 lines 11-13). It would have been obvious before the effective filing date of the claimed invention to teach an amount of glycerin in the total binding agent being less 1 wt. %, such as 0 by substituting one humectant for that of another based on its suitability for its intended use as taught by Robinson (pg. 5 lines 11-14).
With respect to claim 30, as opposed to the claimed amount of glycerin in a totality of a binding agent, importantly claim 30 limits the binding agent to “consisting essentially of”. It is noted with respect to the phrase "consisting essentially of" that in determining the steps included versus excluded in light of applicants specification, the phrase “consisting essentially of” does not exclude other humectants and the phrase is taken as a modifier of method steps rendering the claim open since substituting one humectant for that of another as taught by Robinson and applicants specification does not materially affect the basic and novel characteristics of the claimed method.
Robinson teaches the binding agent comprising as the preferred humectant glycerin (pg. 5 lines 13-14) and/or additional suitable humectants to achieve an amount (pg. 5 lines 11-13). It would have been obvious before the effective filing date of the claimed invention to teach the binding agent consisting essentially glycerin in the total binding agent being less 1 wt. %, where consisting essentially is with respect to the genus humectants, thus providing a preferred humectant, glycerin in the binding material comprising additional humectants as taught by Robinson (pg. 5 lines 11-14) and since substituting one humectant for that of another as taught by Robinson does not materially affect the basic and novel characteristics of the claimed method.
In addition though silent to the amount of glycerin relative the entirety of the binding agent humectant. It would have been obvious before the effective filing date of the claimed invention to teach an amount of glycerin in the total binding agent being less 1 wt. % since substituting one amount of humectant for that of another based on its suitability for its intended use supports a prima facie obviousness determination.
Though silent to the binding agent comprises less than 1 wt% glycerine, since Robinson teaches 1wt.% (pg. 5 lines 16). It is not necessary that suggestion or motivation be found within the four comers of the reference(s) themselves. "The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of... theexplicit content of issued patents." KSR Int'l. Co. v. Teleflex lnc., 550 U.S. 398, 419. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416., The question to be asked is "whether the improvement is more than the predictable use of prior art elements according to their established functions." KSR, 550 U.S. at 417.
In addition, a conclusion of obviousness can be made from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference. See In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Such as in the instant case providing an amount of glycerin in the total binding agent being less 1 wt. %.
Alternatively, since the claimed amount of glycerin encompasses 0. Robinson teaches the binding agent comprising suitable humectants to achieve an amount (pg. 5 lines 11-13). It would have been obvious before the effective filing date of the claimed invention to teach an amount of glycerin in the total binding agent being less 1 wt. %, such as 0 by substituting one humectant for that of another based on its suitability for its intended use as taught by Robinson (pg. 5 lines 11-14).
With respect to applicants urging directed to Tachibe. Tachibe is relied upon to teach the bakery product comprising modified starches (par. 0029) including commercially available starch materials such as FiberSym (par. 0032) per applicants specification of a phosphated distarch phosphate wheat starch.
Robinson teaches the core comprises at least one of, in addition to teachings chemically modified starches (pg. 5 line 29. It would have been obvious before the effective filing date of the claimed invention to teach a type of chemically modified starch, such as a phosphated distarch phosphate wheat starch relative the genus teachings of modified starch of Robinson, since Robinson is not limited in type thus achieve a same desired altering of texture and viscosity to improve shelf life as desired by Robinson (pg. 8 lines 28-30) compared to conventional techniques using starch for its same intended use since the selection of a known modified starch, based on its suitability for its intended use supports a prima facie obviousness determination such as in the instant case the production of bakery foods excellent in the feeling to the palate (palatability), and taste and texture as taught by Tachibe.
In addition though silent to a specific modified wheat starch, merely because it is not disclosed that, in the constantly developing art of preparing food, since Jensen teaches modified wheat starch there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function.
Conclusion
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/STEVEN N LEFF/Primary Examiner, Art Unit 1792
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