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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 22 July 2025 has been entered.
Response to Amendment
All rejections not repeated in this Office Action have been withdrawn.
Claims 1-2, 5,8-11, 16-18, 21-24, 26, 28-36 are currently pending in this Office Action. Claims 17, 18, 21-24, 26, and 28 have been withdrawn due to being drawn to the non-elected invention.
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.
Claim(s) 1-2, 5, 8, 29, 30-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimek et al (US 2005/0013923 A1 cited in IDS filed 5/24/2022) in view of Helser et al. (WO 00/53024).
Note that Shimek discloses that all percentages are by dry weight basis (paragraph 34).
Regarding Claims 1 and 30, Shimek discloses a marshmallow (see title and abstract) comprising:
an aerated mixture (dried soft aerated confections, see abstract) formed from a pre-whip composition comprising a saccharidic composition (saccharide component, paragraph 15), humectant (humectant, paragraph 10), gelatin (paragraph 48), and water (paragraph 81);
wherein the saccharidic composition comprises at least one monosaccharide, at least one disaccharide (“The pure component can include pure monosaccharide dextrose and disaccharide sugars…”, paragraph 40, and sorbitol, paragraph 53) and at least one polysaccharide (“The saccharide component can also include polysaccharides such as corn starch”, paragraph 40);
wherein the at least one polysaccharide is present in an amount of 1 to 15% by weight of the aerated composition (and thus reads on being at least 5% of the saccharidic composition, paragraph 69);
wherein the gelatin is present in an amount of 2.5% by weight of the aerated mixture (paragraph 51);
wherein the pre-whip composition has a moisture content of 1 to 30% which encompasses the claimed range (paragraph 27)
wherein the aerated mixture has a density of 0.5g/mL (see abstract), a moisture content of about 10% (paragraph 55), and has a water activity in the range of about 0.1 to 0.40 (see abstract); that is, the term “about 0.1 to 0.4” is construed to include values above 0.4 and therefore overlaps with the claimed range of 0.41-0.45 and 0.42-0.44 (as per Claim 30). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
As to the limitation of wherein the at least one disaccharide is present in an amount of up to 30% by weight of the pre-whip composition, Shimek in total discloses a composition comprising about 50% to 95% saccharide component in the pre-whip composition (paragraph 23) where the saccharide component may be a mixture of several types of saccharide components, and wherein “at least a majority of the saccharide ingredient is provided by sucrose” (paragraph 41). Therefore, Shimek discloses, at minimum, 25% of the pre-whip composition to be sucrose and therefore meets the claimed range of “up to 30% by weight of the pre-whip composition”. Also, as to the limitation of comprising at least one monosaccharide in an amount of at least 20%, it is noted that Shimek discloses “mixtures” of saccharidic components that includes monosaccharides such as dextrose, totaling 50%-95% by weight of the pre-whip composition (paragraphs 39-40) thus allowing dextrose to be present at amounts greater than 20% by weight of the pre-whip composition. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
If it is construed that Shimek does not teach claimed density of about 0.50g/mL to about 0.54g/mL. Helser is relied on to teach a marshmallow having a density of 0.1 to 1.0 g/cc (see Claim 1) which encompasses the claimed range. This allows the marshmallow to achieve a desired aerated and frangible texture, thereby making the confection easy to chew and quick to dissolve (page 29, ln. 10-11). Therefore, it would have been obvious to one of ordinary skill in the art to modify the level of aeration in the marshmallow of Shimek to achieve a density of 0.1 to 1.0g/cc based on the desired frangible texture and provide a confection that is easy to chew and quick to dissolve.
Regarding Claim 2, Shimek further teaches wherein the saccharidic composition further comprises at least one saccharide derived sugar alcohol (sorbitol, paragraph 53).
Regarding Claim 5, Shimek further teaches wherein the pre-whip composition further comprises at least one flavoring (fruit flavors, paragraph 40).
Regarding Claim 8, Shimek further teaches wherein the humectant is glycerin (see abstract).
Regarding Claim 29, Shimek further teaches wherein the humectant is present in an amount in the range of 5% to 15% by weight of the pre-whip composition (softening agents such as glycerin, paragraph 53).
Regarding Claim 31, the claim is directed to a product by process limitation. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, the limitation recites that the aerated mixture is formed by whipping and in the absence of drying the pre-whip composition. However, since the prior art suggest all the structures of the claimed aerated mixture, the product of the product by process limitation is construed to be the same product as the prior art, especially since Shimek also employs a whipping process (aerating the liquid confection blend, paragraph 28) and that both the prior art and the claimed aerated mixture have similar moisture contents (10%, paragraph 55 of Shimek).
Regarding Claim 32, Shimek further teaches wherein the at least one saccharide-derived sugar alcohol is present in an amount in the range of 5% to 25% by weight of the saccharidic composition (Paragraph 53).
Claim(s) 9, 10, 11, 16, 34-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimek et al (US 2005/0013923 A1 cited in IDS filed 5/24/2022) in view of Teacher Chef (Chocolate Covered Marshmallows-‘Smore’s Pops’) and Helser et al. (WO 00/53024).
Regarding Claims 9, 10 and 34, Shimek discloses a marshmallow (see title and abstract) comprising: an aerated mixture (dried soft aerated confections, see abstract) formed from a pre-whip composition comprising a saccharidic composition (saccharide component, paragraph 15), humectant (humectant, paragraph 10), gelatin (paragraph 48), and water (paragraph 81); wherein the saccharidic composition comprises at least one monosaccharide, at least one disaccharide (“The pure component can include pure monosaccharide dextrose and disaccharide sugars…”, paragraph 40, and sorbitol, paragraph 53) and at least one polysaccharide (“The saccharide component can also include polysaccharides such as corn starch”, paragraph 40);
wherein the at least one polysaccharide is present in an amount of 1 to 15% by weight of the aerated composition (and thus reads on being at least 5% of the saccharidic composition, paragraph 69);
wherein the gelatin is present in an amount of 2.5% by weight of the aerated mixture (paragraph 51);
wherein the pre-whip composition has a moisture content of 1 to 30% which encompasses the claimed range (paragraph 27)
wherein the aerated mixture has a density of 0.5g/mL (see abstract), a moisture content of about 10% (paragraph 55), and has a water activity in the range of about 0.1 to 0.40 (see abstract); that is, the term “about 0.1 to 0.4” is construed to include values above 0.4 and therefore overlaps with the claimed range of 0.41-0.45 and 0.42-0.44 (as per Claim 34). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
As to the limitation of wherein the at least one disaccharide is present in an amount of up to 30% by weight of the pre-whip composition, Shimek in total discloses a composition comprising about 50% to 95% saccharide component in the pre-whip composition (paragraph 23) where the saccharide component may be a mixture of several types of saccharide components, and wherein “at least a majority of the saccharide ingredient is provided by sucrose” (paragraph 41). Therefore, Shimek discloses, at minimum, 25% of the pre-whip composition to be sucrose and therefore meets the claimed range of “up to 30% by weight of the pre-whip composition”. Also, as to the limitation of comprising at least one monosaccharide in an amount of at least 20%, it is noted that Shimek discloses “mixtures” of saccharidic components that includes monosaccharides such as dextrose, totaling 50%-95% by weight of the pre-whip composition (paragraphs 39-40) thus allowing dextrose to be present at amounts greater than 20% by weight of the pre-whip composition. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Shimek is silent to where at least one dry portion is adhered to the marshmallow and having a crunchy texture. Teacher Chef is relied on to teach a combination of marshmallow and graham crackers (as required by Claim 10), wherein the crushed graham cracker, construed to be a crunchy texture, is adhered to the marshmallow using chocolate (Roll the Chocolate Dipped Marshmallow in the Crushed Graham Crackers, page 3). Since both Shimek and Teacher Chef are directed to marshmallow products that are coated in chocolate (see paragraph 114 of Shimek), it would have been obvious to one of ordinary skill in the art to further adhere crushed graham crackers to achieve a s’mores flavor combination.
If it is construed that Shimek does not teach claimed density of about 0.50g/mL to about 0.54g/mL. Helser is relied on to teach a marshmallow having a density of 0.1 to 1.0 g/cc (see Claim 1) which encompasses the claimed range. This allows the marshmallow to achieve a desired aerated and frangible texture, thereby making the confection easy to chew and quick to dissolve (page 29, ln. 10-11). Therefore, it would have been obvious to one of ordinary skill in the art to modify the level of aeration in the marshmallow of Shimek to achieve a density of 0.1 to 1.0g/cc based on the desired frangible texture and provide a confection that is easy to chew and quick to dissolve.
Regarding Claim 11, Shimek further teaches wherein the saccharidic composition further comprise at least saccharide-derived one sugar alcohol (sorbitol, paragraph 53).
Regarding Claim 16, Shimek further teaches wherein the humectant is glycerin (see abstract).
Regarding Claim 33, Shimek further teaches wherein the humectant is present in an amount in the range of 5% to 15% by weight of the pre-whip composition (softening agents such as glycerin, paragraph 53).
Regarding Claim 35, the claim is directed to a product by process limitation. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, the limitation recites that the aerated mixture is formed by whipping and in the absence of drying the pre-whip composition. However, since the prior art suggest all the structures of the claimed aerated mixture, the product of the product by process limitation is construed to be the same product as the prior art, especially since Shimek also employs a whipping process (aerating the liquid confection blend, paragraph 28) and that both the prior art and the claimed aerated mixture have similar moisture contents (10%, paragraph 55 of Shimek).
Regarding Claim 36, Shimek further teaches wherein the at least one saccharide-derived sugar alcohol is present in an amount in the range of 5% to 25% by weight of the saccharidic composition (Paragraph 53).
Response to Arguments
Applicant’s arguments in the remarks filed 22 July 2025 has been considered, but is found not persuasive over the prior art of record.
Applicant argues that the Shimek reference do not teach or suggest a marshmallow having a water activity of 0.41 to 0.45, a moisture content in the range of 10-14% and a density in the range of 0.50-0.54g/mL. Applicant disagrees on the basis that Shimek discloses lower value than the claim and that it would not have been obvious to increase said values to avoid the marshmallow sticking with other cereal pieces. The argument is not persuasive because Shimek discloses a water activity of “about” 0.1 to 0.4 where the term “about” is construed to include values above 0.40 and therefore reasonably reads on 0.41 and 0.42. In any case, since Applicant admitted that the conventional water activity of marshmallow is 0.65 or above (page 9, second paragraph of the remarks), the prior art therefore discloses marshmallows having a water activity both above and below applicant’s claimed range. Therefore, it would have been an obvious matter of product design through routine experimentation to achieve a marshmallow having the desired shelf-stability while also having the desired texture. As to the water content, Shimek discloses a final water content of 10% as similarly claimed (see paragraph 55). As to the density, Shimek generically discloses a confection that is aerated to densities of about 0.1 to 0.5g/cc (see abstract). There is no evidence in Shimek that would suggest a final product having a smaller density than its intermediate product. Instead, it would be expected for the density to increase since the final product would have less moisture content and thus reduce in mass (where the volume is maintained due to the whipping agents, paragraph 48). In any case, Helser is relied on to modify the density of the marshmallow product from 0.1 to 1.0 g/mL. In response to Applicant’s argument that the claimed ranges of water activity resulted in a marshmallow product that was stickier, one of ordinary skill in the art would not be taught away from the Shimek reference because Shimek also discloses coating the marshmallow products with sugar or chocolate coating to form candies (paragraph 114). Therefore, one of ordinary skill in the art would have been capable of mitigating the level of stickiness from the marshmallow through methods of coating.
In response to Applicant’s argument regarding the Helser reference, Applicant points out that Helser do not teach the claimed moisture content or water activity. However, the argument is not persuasive because Helser is solely relied on to modify the density of the marshmallow based on the desired texture. 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). Since Applicant has not presented arguments as to why one of ordinary skill in the art would not refer to the Helser reference to modify the density of Shimek, the prior art combination is maintained.
Also, Applicant submits that Helser suggest a density of 0.25 g/cc; however, that value is from an example embodiment which utilizes one value among a range of disclosed values. It is maintained that Helser suggest a marshmallow product having a density of 0.1 to 1.0 g/cc (Page 6, lines 24-25) and therefore presents a prima facie case of obviousness over the claimed range.
Conclusion
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/T.H.N/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792