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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/10/25 has been entered.
Election/Restrictions
Claims 15-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/3/24.
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 1, 4-5, 7-9, 11-14 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 1 recites “several wide cavities”. It is not clear how many cavities would be considered “several”. It is not clear what sizes would be considered “wide”.
Claim 1 ends with “, the milk biscuit.”. It is not clear if further limitations are intended, or not. It is not clear if the added limitation was meant to be placed in the preamble, or not.
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.
Claims 1, 4-5, 7-9, 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Morgan Jr [US 3,190,760] in view of Destephen et al [US 2007/0212476A1] and Valenta [Pat. No. 1,817,114], and evidenced by Dairy NPL [thinkusadairy.org].
Morgan Jr teaches a milk food product (title) comprising a mixture of water or evaporated milk added to conventional milk powder (column 2, line 5), forming solid shapes such as puffed balls (column 2, line 1), vacuum drying to a moisture content of less than 4% to achieve the puffed balls with a hollow structure (column 2, line 14-19, Example II), a drying temperature of about 250F or 121C (column 2, line 43), the initial mixture including 10-35% moisture (column 2, line 7), the milk powder being whole milk powder and/or non-fat milk powder (column 2, lines 29-30), an example using 12.6 parts whole milk powder, 72.4 parts non-fat milk powder, and 15 parts sucrose (column 2, Table I & Example IV) wherein these ingredients provided about 30% protein, 4% fat, and 56% carbohydrates including about 42% lactose; varying the amounts of sugars and fats of milk-fat or vegetable fat type (column 3, line 12), an example consisting of only 15-20% water and the remainder being non-fat milk powder (column 2, Example I-II), the examples possessing 100% of their protein from milk origin and up to 100% of the mono/disaccharides as lactose from milk (column 2, Examples I-II), an absence of baking powder (see whole document), and additional ingredients such as minerals, vitamins, and flavorings (column 3, line 15).
Further, nonfat dry milk contained 36% protein, 51% lactose, 0.7% fat, and 1.31% calcium; while dry whole milk contained 26.5% protein, 38% lactose, 26.75% fat, and 0.97% calcium lactose as evidenced by Dairy NPL.
Morgan Jr does not explicitly recite an example having both 30-60% protein and 12-45% mono/disaccharides (claim 1), a density of 0.12-0.4 g/cm3 (claim 1), and one single cavity or several wide cavities (claim 1).
Destephen et al teach a sintered powder dairy confection product (title; paragraph 0015, 0019) comprising a density of 0.1-0.6 g/ml, preferably 0.25-0.35 g/ml (paragraph 0029), 60-90% dairy powder and 10-20% of a sweetener (paragraph 0023), the sweetener being lactose (paragraph 0022), the dairy powder being milk-derived substances such as whole/skim milk powder, milk protein, and/or substitutes such as soy protein (paragraph 0019), and heating the uncompressed mixture at a temperature of 40-140C for 5-20 minutes to achieve the sintered product with a shell surrounding a hollow porous interior structure (paragraph 0046).
It would have been obvious to one of ordinary skill in the art to incorporate the claimed amounts of protein and mono/disaccharide, as well as density, into the invention of Morgan Jr, in view of Destephen et al, since both are directed to solid milk products, since Morgan Jr already disclosed varying the amounts of ingredients (column 3, lines 10-15), since solid milk products commonly included 60-90% dairy powder and 10-20% of a sweetener (paragraph 0023), the sweetener being lactose (paragraph 0022), the dairy powder being milk-derived substances such as whole/skim milk powder, milk protein, and/or substitutes such as soy protein (paragraph 0019) as shown by Destephen et al; since many consumers desired food products with lowered sugar content and increased protein content for their health benefits, since the claimed ingredient amounts would have been used during the course of normal experimentation and optimization procedures due to factors such as the desired nutritional content of the final product and/or the desired flavor profile of the final product of Morgan Jr, in view of Destephen et al; since Morgan Jr simply did not mention a density value but did disclose a puffed ball form (column 2, Example II), since solid milk products commonly possessed a density of 0.1-0.6 g/ml, preferably 0.25-0.35 g/ml (paragraph 0029) as shown by Destephen et al, and since the claimed density would have been used during the course of normal experimentation and optimization procedures due to factors such as the desired texture, hardness, and/or disintegration parameters of the product of Morgan Jr, in view of Destephen et al.
Valenta teach a confection shell (title) with a single cavity (Figure 2-3, #11).
Regarding the one single cavity or several wide cavities, it would have been obvious to one of ordinary skill in the art that the product of Morgan Jr, in view of Destephen et al and Valenta, to incorporate the claimed “one single cavity or several wide cavities” since Morgan Jr disclose that the product was in the shape of “small pillows” or “puffed balls” (Example I-II) which implies that pockets of air were present but simply did not mention the interior structure in detail, since the combined product of Morgan Jr and Destephen et al included the same ingredients as applicant’s product, since applicant’s claimed structure was produced by the simple step of “oven cooking” (withdrawn claim 15) wherein Morgan Jr also used a step of heat drying (Example I-II), since confections shells with a single cavity (Figure 2-3) were commonly known in the art as shown by Valenta, since a single cavity would have enabled the later use of a desirable filling in the product of Morgan Jr, in view of Valenta; and since the presence of a large cavity or several wide cavities in the product of Morgan Jr, in view of Destephen et al and Valenta, would have provided a light and airy product which many consumers found desirable for its taste and texture properties.
Response to Arguments
Applicant's arguments filed 11/10/25 have been fully considered but they are not persuasive.
Applicant argues that the references do not disclose “a single cavity or several wide cavities”. However, Valenta taught a confection shell (title) with a single cavity (Figure 2-3, #11).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a product made solely from milk, milk fat, and milk proteins without any flour, starch, baking powder, emulsifier; also 30% liquid) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant appears to argue that using some of the ingredients from the various references would result in a different product if used in applicant’s method. However, this is an incorrect theory. The references are relied upon for the product features they disclose, and these product features were attained by using the method steps of the reference, not of applicant. The elected claim are products, not methods. In particular, applicant appears to have attempted to reproduce the product of Morgan Jr, but without using the full method of Morgan Jr (ie vacuum drying). Whatever results applicant achieved by conducting this flawed analysis, would be inconsequential.
Applicant argues that Destephen et al only disclosed a density of raw materials, not the final product. However, Destephen et al clearly disclosed “The product… has a density of 0.1-0.6 preferably 0.2-0.5 g/ml” (paragraph 0029).
Applicant repeatedly refers to a “declaration”. However, this response did not include a declaration of any kind.
In response to applicant's arguments against the references individually, 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). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Schroder, Thomas, Schlipalius et al, Onwulata, Moriki, Bonnasse-Gahot et al, Dieker et al, Ardisson-Korat et al, Kazemzadeh, Licker et al, Ueda et al, Aymard et al, Perez Gallardo et al, Randolph et al, Rizvi et al teach food product with cavities, milk proteins, and/or dairy ingredients.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DREW E BECKER whose telephone number is (571)272-1396. The examiner can normally be reached 8am-5pm Monday-Friday.
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/DREW E BECKER/Primary Examiner, Art Unit 1792