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 .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed October 8, 2025 is acknowledged.
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
1-5
Amended claims:
1-2
New claims:
None
Claims currently under consideration:
1-5
Currently rejected claims:
1-5
Allowed claims:
None
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 – 5 are rejected under 35 U.S.C. 103 as being unpatentable over Shibata (US 2009/0175998 A1)(IDS Reference filed 03/11/2022).
Claims 1, 2, 4, and 5 are product-by-process claims. Even 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, see MPEP §2113(I). Additionally, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established, see MPEP §2112.01(I).
Claim 1 is directed to a solid food having a solid form obtained by compression molding a food powder, wherein the solid food is obtained by subjecting the solid form obtained by compression molding the food powder to a humidification treatment at a temperature higher than 100[Symbol font/0xB0]C. Although claim 1 includes the process for making the solid food, the determination of patentability will depend on the product itself. The structure imparted by the process of claim 1 is a solid food that is compacted and has been moisturized by a humidification treatment.
Regarding claim 1, Shibata teaches a solid milk (i.e., food) having a solid form obtained by compression followed by a humidifying step (abstract). Shibata also teaches subjecting the compressed solid milk (i.e., food) to a humidity treatment at a relative humidity of 0% RH – 30% RH (which encompasses the claimed range of “0.1% to 20%”) at a temperature of 20°C to 150°C (which overlaps with the claimed range of “higher than 100°C”) for a duration of 0.2 min – 2 hours (which overlaps with the claimed range of “0.1 seconds to 30 seconds”) ([0072]). Although Shibata teaches this step as a drying step, MPEP §2112.01 states where the claimed and prior art are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Because the drying step of Shibata is a substantially identical process to that of the claimed process, the tablet of Shibata would have the same structure as that of the claimed composition.
Regarding lines 6-20, this recitation merely states how the solubility index of the solid food product is measured. Therefore, lines 6-20 are interpreted as not being required in the process of making the solid food, and thus does not carry patentable weight.
Claim 2 is directed to a solid milk having a solid form obtained by compression molding a milk powder, wherein the solid milk is obtained by subjecting the solid form obtained by compression molding the milk powder to a humidification treatment at a temperature higher than 100[Symbol font/0xB0]C. Although claim 2 includes the process for making the solid milk, the determination of patentability will depend on the product itself. The structure imparted by the process of claim 2 is a solid milk that is compacted and has been moisturized by a humidification treatment.
Regarding claim 2, Shibata teaches a solid milk having a solid form obtained by compression followed by a humidifying step (abstract). Shibata also teaches subjecting the compressed solid milk (i.e., food) to a humidity treatment at a relative humidity of 0% RH – 30% RH (which encompasses the claimed range of “0.1% to 20%”) at a temperature of 20°C to 150°C (which overlaps with the claimed range of “higher than 100°C”) for a duration of 0.2 min – 2 hours (which overlaps with the claimed range of “0.1 seconds to 30 seconds”) ([0072]). Although Shibata teaches this step as a drying step, MPEP §2112.01 states where the claimed and prior art are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Because the drying step of Shibata is a substantially identical process to that of the claimed process, the tablet of Shibata would have the same structure as that of the claimed composition.
Regarding lines 6-20, this recitation merely states how the solubility index of the solid milk product is measured. Therefore, lines 6-20 are interpreted as not being required in the process of making the solid milk, and thus does not carry patentable weight.
Regarding claim 3, Shibata teaches the invention of claim 2 as described above. Additionally, Shibata teaches a free fat content of 0.5%-4% by weight of the solid milk ([0047]).
Regarding claim 4, the limitations recited in claim 4 are product-by-process claim limitations. Claim 4 is directed to the solid food of claim 1 with the additional limitation of a humidification treatment at a temperature of 110[Symbol font/0xB0]C or higher and 330[Symbol font/0xB0]C or lower.
Shibata discloses all of the limitations of claim 1, as discussed above. With regards to the claimed temperature of 110[Symbol font/0xB0]C or higher and 330[Symbol font/0xB0]C or lower, Shibata teaches a temperature of 30 to 100[Symbol font/0xB0]C ([0068]). The higher bound of 100[Symbol font/0xB0]C as disclosed by Shibata is very close to the lower bound of 110[Symbol font/0xB0]C as recited in the claim. One of ordinary skill in the art would expect the resulting solid foods to have the same properties, given that both the claimed invention and the invention of Shibata are directed to humidifying a compression molded food powder to increase the hardness of the product. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, see MPEP §2144.05(I) and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%).
Regarding claim 5, the limitations recited in claim 5 are product-by-process claim limitations. Claim 5 is directed to the solid milk of claim 2 with the additional limitation of a humidification treatment at a temperature of 110[Symbol font/0xB0]C or higher and 330[Symbol font/0xB0]C or lower.
Shibata discloses all of the limitations of claim 2, as discussed above. With regards to the claimed temperature of 110[Symbol font/0xB0]C or higher and 330[Symbol font/0xB0]C or lower, Shibata teaches a temperature of 30 to 100[Symbol font/0xB0]C ([0068]). The higher bound of 100[Symbol font/0xB0]C as disclosed by Shibata is very close to the lower bound of 110[Symbol font/0xB0]C as recited in the claim. One of ordinary skill in the art would expect the resulting solid milks to have the same properties, given that both the claimed invention and the solid milk of Shibata are directed to humidifying a compression molded milk powder to increase the hardness of the product. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, see MPEP §2144.05(I) and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%).
Response to Arguments
Claim Rejections – 35 U.S.C. §103 of claims 1-5 over Shibata: Applicant’s arguments filed October 8, 2025 have been fully considered but they are not persuasive.
Applicant argued that Shibata does not teach the claimed humidity for the humidity treatment and that the solid food of the claimed inventions has properties significantly different than that of the prior art (Remarks, p. 4, ¶ 7-8- p. 5, ¶ 1).
This argument has been considered. However, as described above, Shibata teaches a humidity treatment at a relative humidity of 0% RH – 30% RH (which encompasses the claimed range of “0.1% to 20%”) at a temperature of 20°C to 150°C (which overlaps with the claimed range of “higher than 100°C”) for a duration of 0.2 min – 2 hours (which overlaps with the claimed range of “0.1 seconds to 30 seconds”) ([0072]). Although Shibata teaches this step as a drying step, MPEP §2112.01 states where the claimed and prior art are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Because the drying step of Shibata is a substantially identical process to that of the claimed process, the tablet of Shibata would have the same structure as that of the claimed composition.
The rejections of claims 1-5 have been maintained herein.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793