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 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 “wherein the binding agent comprises less than 1 wt% of a humectant”. 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 specifically teaches the binder comprises common cake ingredients including “glycerin (humectant) par. 0035 of applicants pre-grant publication. Thus in a first instance the phrase is rejected since “less than 1wt%” encompasses zero. The specification and tables 2-4 are silent to the exclusion of, where tables 2-4 all include humectant.
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 “wherein the binding agent comprises less than 1 wt% of a humectant”. 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 specifically teaches the binder comprises common cake ingredients including “glycerin (humectant) par. 0035 of applicants pre-grant publication, where tables 2-4 teach humectant amount exceeding 1 wt.%. Thus in a second instance the phrase is rejected since the specification is silent to the claimed range of “less than 1 wt.%”.
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. 3 lines 13-15) including modified starch (pg. 5 line 29).
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 to one of ordinary skill in the art at the time the invention was filed to 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 to one of ordinary skill in the art at the time the invention was filed 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 to one of ordinary skill in the art at the time the invention was filed 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 to one of ordinary skill in the art at the time the invention was filed 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 to one of ordinary skill in the art at the time the invention was filed 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 to one of ordinary skill in the art at the time the invention was filed 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 (pg. 3 lines 13-15) including modified starch (pg. 5 line 29).
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)
Though silent to the binding agent comprises less than 1 wt% humectant, 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 a level of shelf life and controlling water activity to inhibit bacteria.
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 to one of ordinary skill in the art at the time the invention was filed 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 to one of ordinary skill in the art at the time the invention was filed 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.
Claim 30 is 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. 3 lines 13-15) including modified starch (pg. 5 line 29).
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)
Though silent to the binding agent comprises less than 1 wt% humectant, 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 a level of shelf life and controlling water activity to inhibit bacteria.
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 to one of ordinary skill in the art at the time the invention was filed 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 to one of ordinary skill in the art at the time the invention was filed 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 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, it is noted 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).
It is further noted though applicant urges unexpected results, it is importantly noted the claimed product merely comprises the claimed starches and is silent to a limiting amount which achieves an unexpected product in light of the teachings of Robinson.
In addition in response to applicant's arguments against the references individually it is noted that although silent to a specific modified starch, Robinson specifically teaches the genus with respect to a same binding material as claimed, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986), 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... the explicit 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 since 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 to one of ordinary skill in the art at the time the invention was filed to 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 applicants urging relative “general hydrocolloids”, importantly Robinson is not limited to such and further specifically teaches “chemically modified materials such as… starch”.
With respect to applicants urging of “obtain the combined microbial and texture stability achievable by applicants”, it is initially noted the claims are silent to such, where Robinson teaches applicants same water activity.
With respect to applicants urging of use of glycerin in the binder with respect to “examples”. It is initially noted Robinson specifically teaches “by way of example only”. Robinson is not limited to the teachings of the examples. It is further noted applicants claims are open, i.e. comprising and thus do not teach away from additional ingredients.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN N LEFF whose telephone number is (571)272-6527. The examiner can normally be reached on M-F 8:30-5:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at (571)270-34753475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN N LEFF/ Primary Examiner, Art Unit 1792