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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 19, 2025 has been entered.
Response to Amendment
Those objections and rejections not repeated in this Office Action have been withdrawn.
Claims 24, 30-38, 40, 42, 43 and 46 are currently pending.
Claims 40, 42 and 43 are withdrawn from consideration as being directed to a nonelected invention.
Claims 24, 30-38 and 46 are rejected.
Claim Objections
Claims 24, 38 and 46 are objected to because of the following informalities:
Claim 24 recites, “compared to an otherwise identical method except the particles of (i) are not added to the milk composition.” It is noted that claim 24 is referred to as “a process” and not a method. As such, for matters of form, this limitation should be amended to recite, “compared to a process that comprises the obtaining of the milk composition, the adding of, (ii) the one or both of lactic acid bacteria and propionic bacteria and (iii) the coagulant and the further processing (c) but does not add the particles (i) to the milk composition.”
Claim 38 recites, “where the milk composition of (a) is matured prior to (b).” For matters of form, this limitation should be amended to recite, “where the milk composition of is matured prior to the adding.”
Claim 46 recites the limitation, “wherein the particles of step (b) are added in an amount of 1 g to 2 g per 100 liters of the milk composition of step (a). For matters of form, this limitation should be amended to recite, “wherein the particles are added to the milk composition in an amount of 1 g to 2 g per 100 liters of the milk composition.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 24, 30-38 and 46 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 24 recites the limitation, “adding to the milk composition simultaneously or sequentially in any order.” (see line 5). This limitation is unclear because the term “sequentially” would appear to refer to an order, but to recite that the adding is “sequentially in any order” would appear to conflict with what would be considered a sequential addition.
Claim 24 recites the limitation, “the composition of (b)” on line 13. This limitation lacks proper antecedent basis because the adding does not provide sufficient clarity as to what can be referred to as “the composition of (b).”
Claim 35 recites, “wherein the one or both of lactic acid bacteria and propionic bacteria comprise one or more lactic acid bacteria selected from Lactococcus lactis subsp. cremoris, Lactococcus lactis subsp. lactis, Lactobacillus helveticus, and Streptococcus thermophilus” This limitation is unclear how both lactic acid bacteria and propionic bacteria can comprise one of the above species of lactic acid bacterial. This rejection can be overcome by amending the claim to recite, “wherein the one or both of lactic acid bacteria and propionic bacteria comprise the lactic acid bacteria, and the lactic acid bacteria comprises one or more lactic acid bacteria selected from Lactococcus lactis subsp. cremoris, Lactococcus lactis subsp. lactis, Lactobacillus helveticus, and Streptococcus thermophilus.”
Claim 36 recites, “wherein the one or both of lactic acid bacteria and propionic bacteria comprise Propionibacterium freudenreichii subsp freudenreichii.” This limitation is unclear how both lactic acid bacteria and propionic bacteria can comprise Propionibacterium freudenreichii subsp freudenreichii. This rejection can be overcome by amending the claim to recite, “wherein the one or both of lactic acid bacteria and propionic bacteria comprises the propionic bacteria and the propionic bacteria comprises Propionibacterium freudenreichii subsp freudenreichii.”
Claim 38 recites the limitation, “where the milk composition of (a) is matured prior to (b).” This limitation is not clear as to what it means to “mature” the milk. The specification recites “optionally maturing said milk composition by physical, chemical or biological means” without providing any additional clarity or guidance as to what physical, chemical or biological process is used to mature the milk.
Claims 30-38 and 46 are rejected based on their dependence to a rejected claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 24, 30-35, 37, 38 and 46 are rejected under 35 U.S.C. 103 as being unpatentable over Berning (“Finest Kind Cheese & Yoghurt Making Manual”) in view of Hoffmann (WO 9306736) and in further view of Bullens (WO 9501729) and Kerjean (FR 2682010). Messaoud et al. (“Alginate/sodium caseinate aqueous-core capsules: A pH-responsive matrix”) as been relied on as evidence.
Regarding claim 24, Berning teaches a process for making a Swiss- or Continental type cheese comprising: obtaining a milk composition and (b) adding to the milk composition one or both of lactic acid bacteria and proprionic bacteria (see Berning page 16, lactobacillus, streptococcus for Emmental cheese; see page 33, “Bacterium Propioni – Emmenthaler” and (c) a coagulant (see Berning page 24, “rennet is the ingredient added to milk in order to coagulate the milk”). It is noted that Applicant’s specification on page 1, lines 23-37 defines what is a “Swiss cheese type” and a “Continental cheese type.”
Claim 24 differs from Berning in specifically reciting adding to the milk composition simultaneously or sequentially in any order, particles, wherein the size of the particles has an average diameter of 5 microns and wherein the particles contain a compound selected from the list consisting of micellar casein, casein glycomacropeptide, polymerized casein glycomacropeptide, sodium caseinate and polycaseinate.
Nonetheless, Hoffman (WO 9306736) teaches adding milk protein particles for controlling eye formation (see page 1, lines 37 to page 2, line 11) and where the particles can be milk protein particles (see page 2, line 15 and page 3, line 16-17). Hoffman also teaches that the particles can be natural milk protein particles prepared by conventional methods (see page 2, lines 9-11).
Since Berning teaches cheese which has eye formation, such as Emmental and Swiss, to thus modify Berning and to include natural milk component protein particles as taught by Hoffman would have been obvious to one having ordinary skill in the art for the purpose of controlling and “improving” eye formation and distribution.
Regarding the particles having an average diameter of from 5 microns and wherein the particles contain a compound selected from the list consisting of micellar casein, casein glycomacropeptide, polymerized casein glycomacropeptide, sodium caseinate and polycaseinate, the above combination is not specific in this regard.
It is noted however, that Hoffman teaches that the particle size is not restricted to the disclosed ranges (see page 5, lines 1-2) and therefore teaches and suggests experimenting with the particle size.
Bullens (WO 9501729) teaches making cheese (see page 3, lines 1-25) where the process can include adding particles having a particle size of 5-15 microns (see page 4, line 5) and which particles can comprise sodium caseinate (see page 4, lines 10-11 which can also be construed as polycaseinate since sodium caseinate is a natural polymer, as evidenced by Messaoud on page 2, left column 3rd paragraph) and therefore suggests a particle containing sodium caseinate as a milk protein, and which particle can have an average diameter of 5 microns. Bullens teaches that such particles can be added during the making of cheese, for lowering the fat of the cheese while providing similar flavor, mouthfeel and consistency to full fat cheese (see page 2, lines 1-6).
Kerjean (FR 2682010) teaches that it has been conventional to use casein particles (see paragraph 7, lines 57-58 of the machine translation) in amounts such as 0.01g per liter of milk (see paragraph7, lines 54-56) for providing even distribution of eyes in the cheese (see the abstract paragraph 7, lines 44-50, “distributed openings”). 0.01g per liter of milk equates to 1g per 100L of milk as recited in claim 46.
In view of these teachings, the prior art is providing a reason to add to a milk composition, particles that are 5 microns in diameter and can comprise sodium caseinate, for the purpose of lowering the fat of the cheese while providing similar flavor, mouthfeel and consistency and where particles comprising milk protein such as casein have also been recognized in the art to be useful for providing a requisite degree of eye formation.
To therefore modify Brennan and to include particles containing sodium caseinate and which particles have an average diameter of 5 microns to Brennan’s milk composition together with adding lactic acid bacteria and propionic bacteria and a coagulant, would have been obvious to one having ordinary skill in the art for lowering the fat of the cheese while also providing a requisite degree of eye formation.
Since the prior art teaches using particles with an average diameter of 5 microns and which particles can comprise sodium caseinate and which particles can also be used for eye formation and distribution, it would have been reasonable to expect that the prior art would also have improved eye formation and distribution compared to an identical method except the particles are not added to the milk composition.
Regarding claim 30, Boursier also teaches the particles can be in powdered form (see page 80).
Regarding claims 31-34, Berning teaches the milk composition having 3.3-5% fat and 3-4% protein (see page 6 and the fat and protein content of milk from Jersey and Friesien breeds). Therefore, Berning teaches a milk composition with a fat and protein content within the claimed ranges.
Regarding claim 35, Berning teaches using streptococcus thermophilus bacteria as well as lactobacillus lactis bacteria (see page 16, example 2). Berning also suggests using propionic acid bacteria (see page 33, “Bacterium Propioni”).
Regarding claim 37, Berning teaches using rennet as the coagulant (see page 24) which can be of microbial origin (see page 24 “microbial rennet”) or bovine origin (see page 24, Animal Rennet. Rennet extracted from the stomachs of calves”).
Regarding claim 38, Berning teaches that milk can be obtained from cow breeds at different stages of lactation (see page 5, the table), which suggests a more “mature milk” and would have been performed prior to “adding.” Berning also teaches on page 13, to pasteurize milk or add potassium nitrate to milk, which can thus suggest maturing the milk by a physical or a chemical means.
Since the combination already suggests particles that comprise milk proteins such as sodium caseinate, to modify the combination and to use 1g of the particles per 100L of milk would have been obvious to one having ordinary skill in the art for also providing even distribution of the eyes in the cheese.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over the combination, as applied to claim 24 above, which relies on Berning (“Finest Kind Cheese & Yoghurt Making Manual”) as the primary reference and in further view of Rodriguez (“The Role of Copper in Manufacture of Finnish Emmental Cheese”)
Regarding claim 36, Berning, suggests Propionibacterium but does not specifically recite Propionibacterium freudenreichii subsp freudenreichii.
However, it would have been obvious to one having ordinary skill in the art to have used known Propionibacterium. In this regard, Rodriguez teaches the bacteria comprise Propionibacterium freudenreichii ssp. freudenreichii (see figure 1 on page 4833).
Therefore to modify Berning and use another known propionic bacteria such as Propionibacterium freudenreichii subsp freudenreichii would have been obvious to one having ordinary skill in the art as a matter of engineering and/or design based on conventional propionic bacteria used for producing cheese having eye formation.
Response to Arguments
On page 6-7 of the response Applicant urges that examples 4 and 5 of the present specification teach a method of making propionic cheeses where using particles with a 5 micron homogeneous size (examples 4 and 5) surprisingly and unexpectedly produced a cheese with a desirable distribution of eyes.
These arguments have been considered but are not seen to be sufficient to overcome the rejection. Examples 4 and 5 are acknowledged and appreciated. However, these examples are not seen to be commensurate in scope with the claims, because they are using particles, which as disclosed in example 6 are casein glycomacropeptide particles with an average particle size of 5 microns. This is pertinent because the claims recite, “wherein the particles contain [i.e. comprise] a compound selected from the list consisting of micellar casein, casein glycomacropeptide, polymerized casein glycomacropeptide, sodium caseinate and polycaseinate.” However, example 2 of Applicant’s specification discloses that micellar casein was not a good solution to improve the distribution of the eye formation (see page 11, lines 24-25). As such clarity is required because the particular type of particle also would appear to affect eye formation and the data does not provide any specificity with the remainder of the Markush group for the particular type of particles. In view of this, the specification is also unclear regarding the type of particles used in example 3.1 and 3.2. The rejection could be overcome for example, by amending the claim to recite that the particles are casein glycomacropeptide particles.
On page 7 of the response, Applicant urges that Berning is not directed to producing a cheese with improved eye formation.
This argument not persuasive because these references have not been relied on for specifically teaching what can be construed a “improved” eye formation, but rather, teach that it has been known in the art to make a Swiss type cheese with eyes, by adding to a milk composition bacteria and a coagulant to make the cheese with eye formation. The secondary references further evidence that it has been desirable to include the addition of milk protein particles, within the claimed range, and where said particles can be useful for eye formation and where said particles can also comprise a milk mineral such as calcium chloride.
Further on page 7 of the response, Applicant urges that Hoffman’s process requires addition of the particles at a certain time in the production process and does not teach or suggest the specific size or the particle material of the claimed invention.
These arguments are not seen to be sufficient to overcome the rejection because while Hoffman might add the particles at a particular time in the process, the claims allow for addition at any point during adding of the particles to the milk composition. Additionally, while Hoffman discloses milk protein particle sizes that are larger than 50 microns, the reference also clearly teaches that the particle size it not limiting. In this regard, the prior art further teaches milk protein particle sizes within the claimed range and can be added to a milk composition for making cheese. Since the prior art teaches particles that comprise milk protein and milk mineral and where the particles are within the claimed range and can be added to a milk composition for making cheese, it would have been reasonable to expect that the prior art would also have resulted in improved eye formation compared to a “similar method” which does not add the particles to a milk composition.
Further on page 7 of the response, Applicant urges that Boursier, Dhaval, Bullen and Luyten are silent regarding a method for producing cheese with eyes and as such cannot be construed to teach methods for eye formation int eh cheese.
This argument has been considered but is not persuasive because Berning already teaches making cheese with eye formation. The secondary references further teach known types and sizes of particles that can be used in making cheese for additional purposes and which particles can comprise a milk protein such as sodium caseinate. Therefore, as the prior art therefore teaches adding these particles to a milk composition for making cheese, it would have been reasonable to expect a similar improved eye formation as a result of this addition. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kassell (“The Hole Story Behind Swiss Cheese…Get It?”) discloses that other particulate matter can do the same thing has hay particles in order to form eyes in cheese.
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/VIREN A THAKUR/Primary Examiner, Art Unit 1792