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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 8, 2025 has been entered.
Claim Status
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
1, 3, 5-14, 16-30
Withdrawn claims:
18-21
Previously canceled claims:
2, 4, 15
Newly canceled claims:
None
Amended claims:
1
New claims:
30
Claims currently under consideration:
1, 3, 5-14, 16, 17, 22-30
Currently rejected claims:
1, 3, 5-14, 16, 17, 22-30
Allowed claims:
None
Claim Objections
Applicant is advised that should claim 1 be found allowable, claim 30 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 17 is objected to be of the incorrect status indicator of “(Withdrawn)”. However, as stated in the Restriction Election and Final Rejection, claim 17 is included in the elected Group I. Therefore, claim 17 is currently part of prosecution. The claim designation for claim 17 should be amended to state “(Previously Presented)”.
Claim Rejections - 35 USC § 102
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, 3, 11-14, 16, 22, 23, 25, 26, 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Sliwinski (US 2011/0038982 A1)(IDS Reference filed 08/14/2024) in view of Rehman (US 2018/0153184 A1)(IDS Reference from 02/26/2024) as evidenced by Roth (SDS for Catechin, Roth, revision 09/18/2024 [accessed online February 20, 2025]) and Hassig (Hassig, A., et al. “Flavonoids and tannins: plant-based antioxidants with vitamin character”. Medical Hypothesis, 52(5), p. 479-481, published 1999 [accessed online 03/06/2025]).
Regarding claims 1, 3, 22, 23, 28, 29, and 30 Sliwinski teaches a high protein nutritional liquid (Abstract) with a pH between 6.6 and 7.2 ([0084], which falls within the claimed range of “6-8”) comprising 6 to 14 g protein per 100 mL of composition (equivalent to 6 to 14%, which overlaps with the claimed range of “10-25%”, [0022]). In one embodiment of the invention, micellar casein and caseinate make up at least 90% of the total protein present ([0041]), and the ratio of micellar casein to caseinate is 95:5 ([0046]). Therefore, in that embodiment, the composition contains 85.5% micellar casein relative to total protein, which falls within the claimed range of “at least 70% w/w”.
Sliwinski does not teach the composition comprising a polyphenol having a molecular weight in the range of 150-5000 g/mol, and having a ratio between the total amount of polyphenol and total protein in the range of 0.002-0.2 (claim 1) or 0.005-0.15 (claim 3), wherein the polyphenol comprises one or more compounds selected from flavonoids, phenolic acids, stilbenoids, tannins, and lignans, or wherein the nutritional liquid composition has a viscosity after storage at 5[Symbol font/0xB0]C for 63 days in the range of 2-400 cP at a shear rate of 145 s-1.
Regarding the composition comprising a polyphenol having a molecular weight in the range of 150-5000 g/mol, and having a ratio between the total amount of polyphenol and total protein in the range of 0.002-0.2 (claim 1) or 0.005-0.15 (claim 3) and wherein the polyphenol comprises one or more compounds selected from flavonoids, phenolic acids, stilbenoids, tannins, and lignans, Rehman discloses adding polyphenols to a dairy composition ([0004]), and where the polyphenol used are catechins ([0059]), which has a molar mass of 290.3 g/mol, which falls within the claimed range of “150-5000 g/mol”. Rehman also teaches that the composition may comprise from about 35 to about 90 wt.% of protein and from about 100 to 10,000 ppm of polyphenols ([0004]). In an embodiment where the composition comprises 35% protein and 10,000 ppm of polyphenols, the ratio of polyphenol to total protein is 0.028, which falls within the claimed range of “0.002-0.2” (claim 1), “0.005-0.5” (claim 3), “0.007-0.10” (claim 22), and “0.02-0.04” (claim 23). Rehman also teaches that the polyphenols can comprise tannins, flavonoids, or any other suitable source of polyphenols ([0059]).
Evidence to support that the molar mass of catechin is 290.3 g/mol is provided by Roth (p. 2, Sec. 3.1, Molar mass).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the high protein liquid of Sliwinski with the addition of polyphenols as taught by Rehman. One would be motivated to make this modification because, as taught by Rehman, the use of small amounts of polyphenol compounds results in higher quality of milk products with better organoleptic properties ([0025]). Because the liquid composition of Sliwinski contains primarily micellar casein, a milk protein, the addition of polyphenols would improve the taste of the high protein liquid composition.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the composition of Sliwinski with the addition of tannins or flavonoids as taught by Rehman to the catechin described previously, such that the previous calculations would still apply where the liquid comprised catechin in addition to tannins or flavonoids in a relatively small amount. One would be motivated to make this modification because it is known in the art that tannins and flavonoids are antioxidants.
Evidence to support that tannins and flavonoids are antioxidants is provided by Hassig. Hassig teaches that antioxidant flavonoids and tannins are important plant-based dietary components (p. 480, right-hand col., ¶ 1).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Although the cited prior art does not teach that the nutritional liquid composition does not exhibit cold-gelation, this is a necessary property of the composition as claimed. Evidence to support that the composition would necessarily not exhibit cold-gelation is provided by the instant specification. The instant specification discloses that the nutritional liquid as disclosed is not prone to cold gelation (p. 28, lines 1-3).
Although the cited prior art does not teach that the nutritional liquid composition has a viscosity after storage at 5[Symbol font/0xB0]C for 63 days in the range of 2-400 cP (claim 1), 5-100 cP (claim 28), and 7-30 cP (claim 29) at a shear rate of 145 s-1, this is a necessary property of the composition as claimed. Evidence to support that the composition would necessarily have the claimed viscosity is provided by the instant specification. Page 49, para. 2 and 4 teach that an advantage of the present composition is that the viscosity is reduced significantly and that the liquid mixture may have a viscosity in the range of 2-400 cP at a temperature of 20 degrees C at a shear rate 145 s-1. Furthermore MPEP § 2112(I) states “"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).”
Regarding claims 11 and 25, Sliwinski in view of Rehman teaches all elements of claim 1 as described above. Sliwinski also teaches the composition comprising 6 to 14 g protein per 100 mL of composition (equivalent to 6 to 14%, which overlaps with the claimed range of “10-22%” (claim 11) and “12-21%” (claim 25), [0022]).
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Regarding claim 12, Sliwinski in view of Rehman teaches all elements of claim 1 as described above. In one embodiment of the invention, micellar casein and caseinate make up at least 85% of the total protein present ([0041]), and the ratio of micellar casein to caseinate is 95:5 ([0046]). Therefore, in an embodiment where the protein is 85% micellar casein and caseinate, the composition contains 80.75% micellar casein relative to total protein, which falls within the claimed range of “at 70-84% w/w”.
Regarding claim 13, Sliwinski in view of Rehman teaches all elements of claim 1 as described above. In one embodiment of the invention, micellar casein and caseinate make up at least 90% of the total protein present ([0041]), and the ratio of micellar casein to caseinate is 95:5 ([0046]). Therefore, in that embodiment, the composition contains 85.5% micellar casein relative to total protein, which falls within the claimed range of “at 85-100% w/w”.
Regarding claim 14, Sliwinski in view of Rehman teaches all elements of claim 1 as described above. Sliwinski teaches a high protein nutritional liquid (Abstract) with a pH between 6.6 and 7.2 ([0084], which falls within the claimed range of “6.2-7.5”).
Regarding claim 16, Sliwinski in view of Rehman teaches all elements of claim 1 as described above. Sliwinski also teaches that the nutritional composition is subjected to sterilization ([0039]).
Regarding claim 26, Sliwinski in view of Rehman teaches all elements of claim 13 as described above. Sliwinski also teaches that in one embodiment of the invention, micellar casein and caseinate make up at least 90% of the total protein present ([0041]), and the ratio of micellar casein to caseinate is 95:5 ([0046]). Therefore, in an embodiment where micellar casein and caseinate make up 100% of the total proteins, there would be 95% micellar casein relative to total protein, which falls within the claimed range of “at 95-97% w/w”.
Claims 5 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Sliwinski (US 2011/0038982 A1)(IDS Reference filed 08/14/2024) in view of Rehman (US 2018/0153184 A1)(IDS Reference from 02/26/2024) as evidenced by Roth (SDS for Catechin, Roth, revision 09/18/2024 [accessed online February 20, 2025])and Hassig (Hassig, A., et al. “Flavonoids and tannins: plant-based antioxidants with vitamin character”. Medical Hypothesis, 52(5), p. 479-481, published 1999 [accessed online 03/06/2025]) as applied to claim 1 above, and further in view of Boots (Boots, Agnes W., et al. “Health effects of quercetin: From antioxidant to nutraceutical”, European Journal of Pharmacology, Vol. 585, p. 325-337, published March 18, 2008 [accessed online September 3, 2025]).
Regarding claims 5 and 24, Sliwinski in view of Rehman teaches all elements of claim 1 as described above.
The cited prior art does not teach wherein the polyphenol comprises 3-12 (claim 5) or 5-8 (claim 24) phenolic hydroxy groups.
However, in the same field of endeavor, Boots teaches that quercetin is a flavonoid and one of the most prominent dietary antioxidants (Abstract). The structure of quercetin is shown to have five phenolic hydroxy groups (p. 330, Fig. 6), which falls within the claimed range of “3-12” (claim 5) and “5-8” (claim 24).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use quercetin as taught by Boots as the flavonoid taught by Rehman in the composition of Sliwinski. One of ordinary skill would have been motivated to make this modification because Reh teaches that quercetin has beneficial health effects (Abstract).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sliwinski (US 2011/0038982 A1)(IDS Reference filed 08/14/2024) in view of Rehman (US 2018/0153184 A1)(IDS Reference from 02/26/2024) as evidenced by Roth (SDS for Catechin, Roth, revision 09/18/2024 [accessed online February 20, 2025])and Hassig (Hassig, A., et al. “Flavonoids and tannins: plant-based antioxidants with vitamin character”. Medical Hypothesis, 52(5), p. 479-481, published 1999 [accessed online 03/06/2025]) as applied to claim 1 above, and further in view of Greenberg (US 2014/0037604 A1).
Regarding claim 6, Sliwinski in view of Rehman teaches all elements of claim 1 as described above.
The cited prior art does not teach wherein the polyphenol comprises or consists of one or more stilbenoids.
However, in the same field of endeavor, Greenberg teaches of a nutritional composition including dairy proteins such as micellar casein ([0009]) and phytochemicals ([0113]), which include stilbenoids ([0065]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the composition of Sliwinski with the addition of stilbenoids as taught by Greenberg. One of ordinary skill would have been motivated to make this modification because Greenberg teaches that phytochemicals are active in the body and play beneficial roles ([0113]).
Claims 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Sliwinski (US 2011/0038982 A1)(IDS Reference filed 08/14/2024) in view of Rehman (US 2018/0153184 A1)(IDS Reference from 02/26/2024) as evidenced by Roth (SDS for Catechin, Roth, revision 09/18/2024 [accessed online February 20, 2025])and Hassig (Hassig, A., et al. “Flavonoids and tannins: plant-based antioxidants with vitamin character”. Medical Hypothesis, 52(5), p. 479-481, published 1999 [accessed online 03/06/2025]) as applied to claim 1 above, and further in view of Greenberg (US 2014/0037604 A1) as applied to claim 6 above, and further in view of Higdon (Higdon, Jane, et al. “Resveratrol”, Linus Pauling Institute, last updated June 11, 2015 [accessed online September 3, 2025]).
Regarding claims 7-10, Sliwinski in view of Rehman and Greenberg teaches all elements of claim 6 as described above.
The cited prior art does not teach wherein the one of more stilbenoids comprise one or more polyphenols according to formula I and/or II (shown below), where R3, R4, R5, and R6 are independently selected from hydrogen, a hydroxy group, or an O-beta-D-glucopyranoside with the provision that at least two of R3, R4, R5, and R6 are hydroxy groups.
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Formula I and II
However, in the same field of endeavor, Higdon teaches of resveratrol which belongs to the class of stilbenoids (p. 3, ¶ 1). Higdon shows the following structures for trans- and cis-resveratrol (p. 4, Fig. 1):
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The structure of trans-resveratrol corresponds to Formula I of the instant application with R3, R4, R5 as hydroxy groups and R6 as hydrogen (claims 7, 8, and 10). The structure of cis-resveratrol corresponds to Formula II of the instant application with R3, R4, R5 as hydroxy groups and R6 as hydrogen (claims 7, 9, and 10).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the composition of Sliwinski modified by Rehman and Greenberg with the use of trans- and cis--resveratrol as taught by Higdon as the polyphenol in the nutritional composition. One of ordinary skill would have been motivated to make this modification because Higdon teaches that resveratrol may help prevent cancer (p. 7, ¶ 1).
Claims 17 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Sliwinski (US 2011/0038982 A1)(IDS Reference filed 08/14/2024) in view of Rehman (US 2018/0153184 A1)(IDS Reference from 02/26/2024) as evidenced by Roth (SDS for Catechin, Roth, revision 09/18/2024 [accessed online February 20, 2025])and Hassig (Hassig, A., et al. “Flavonoids and tannins: plant-based antioxidants with vitamin character”. Medical Hypothesis, 52(5), p. 479-481, published 1999 [accessed online 03/06/2025]) as applied to claim 1 above, and further in view of Reh (Reh, Christoph, et al. “Determination of water content in powdered milk”, Analytical, Nutritional, and Clinical Methods, Vol. 86, p. 457-464, published 2004 [accessed online September 2, 2025]).
Claims 17 and 27 are product-by-process claims. MPEP §2113 states “[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). “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product.”
The structure imparted by the process of claims 17 and 27 is a powdered product with the solids from the liquid composition of claim 1 comprising water in an amount of at most 10% w/w.
Regarding claims 17 and 27, Sliwinski in view of Rehman teaches the composition of claim 1 as described above. Sliwinski also teaches that the composition may be provided in a powdered form ([0081]).
Sliwinski does not teach that the powder has water in an amount of at most 10% w/w.
However, in the same field of endeavor, Reh teaches a water content in instant milk powder of 1.2 to 5.3 wt% (p. 459, col. 2, ¶ 2).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the powder composition of Sliwinski with the moisture content taught by Reh. One would be motivated to make this modification because Reh teaches that water content has a strong influence on physico-chemical stability of milk powders during storage (p. 457, col. 1, ¶ 1).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 11-14, 16, 22, 23, 25, 26, 28, and 29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 5, 10, 11, 23, and 24 of copending Application No. 17/774,300 (reference application, hereinafter ‘300) as evidenced by Roth (SDS for Catechin, Roth, revision 09/18/2024 [accessed online February 20, 2025]).
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are drawn to a nutritional composition with a pH in the range of 6-8, comprising a total protein content of 10-25% w/w, micellar casein in an amount of at least 70% w/w of the total protein, and a polyphenol with a molecular weight in the range of 150-5000 g/mol, wherein the ratio of polyphenol to total protein is in the range of 0.001-0.2. ‘300 is similarly drawn to a nutritional composition with a pH in the range of 6-8, a total protein content of 10-25% w/w, micellar casein in an amount of at least 70% w/w of the total protein, and one or more of catechin, epicatechin, etc., which are all polyphenols with a molecular weight that falls in the range of 150-5000 g/mol as claims in the instant application. Roth teaches that the molar mass of catechin is 290.3 g/mol (p. 2, Sec. 3.1, Molar mass).
Because any differences between the two applications are obvious, the claims are properly provisionally rejected on the basis of nonstatutory double patenting.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Claim Rejections – 35 U.S.C. §103 of claims 1, 3, 11-14, 16, 22-23, 25-26, 28, and 29 over Sliwinski, Rehman, Roth, and Hassig; claims 5 and 24 over Sliwinski, Rehman, Roth, Hassig, and Boots; claim 6 over Sliwinski, Rehman, Roth, Hassig, and Greenberg; claims 7-10 over Sliwinski, Rehman, Roth, Hassig, Greenberg, and Higdon; claims 17 and 27 over Sliwinski, Rehman, Roth, Hassig, and Reh: Applicant’s arguments filed December 8, 2025 have been fully considered but they are not persuasive.
Applicant argued that the inventors discovered that the problem of cold gelation can be solved by incorporating polyphenol compounds in liquid (Remarks, p. 9, ¶ 3- p. 11, ¶ 3).
This argument has been considered. However, MPEP §716.02(d) states that “Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)” and “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).” The data provided in the instant specification is not sufficient to demonstrate unexpected results because it is not commensurate in scope with the claims.
Applicant argued that the primary technical problem of Sliwinski is fundamentally different from the problem of the claimed invention (Remarks, p. 12, ¶ 6- p. 13, ¶ 3).
This argument has been considered. However, MPEP §2123(I) states “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art” Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Although Sliwinski does not address the problem of cold-induced gelation, Sliwinski is sufficient for that is relied upon.
Applicant further argued that Rehman addresses browning of milk powders, not cold gelation and does not address the effect of polyphenols on viscosity or cold-induced gelation (Remarks, p. 14, ¶ 5).
This argument has been considered. However, MPEP §2123(I) states “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art” Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Rehman is not relied upon to teach the effects of polyphenols on cold-induced gelation. Rehman is considered sufficient for all that is relied upon in the rejection of the claimed invention.
Applicant also argued that there is no teaching, suggestion, or motivation to combine Sliwinski with Rehman. Applicant argued that Sliwinski successfully solved its stated problem, and there is no suggestion to modify the composition further. Applicant also argued that Rehman is directed to powders and would not be used to solve the problem of sold gelation in liquid compositions (Remarks, p. 15, ¶ 1- p. 16, ¶ 1).
This argument has been considered. However, the Examiner maintains that it would have been obvious to combine the teachings of Sliwinski and Rehman and arrive at the claimed invention as described above. Although Sliwinski improved the stated technical problem, one of ordinary skill would have recognized that there is room for further improvement of the invention of Sliwinski. Although Rehman is directed primarily to powder milk compositions, one of ordinary skill would have found it obvious to apply Rehman’s teaching that polyphenols result in higher quality of milk productions to liquid milk as well as powder.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argued that the reliance on Atlas Powder is misplaced as the case relates to the issue of novelty and not obviousness (p. 16, ¶ 4- p. 17, ¶ 2).
This argument has been considered. However, MPEP §2112(I) does not exclude rejections under 35 USC 103 as claimed by the applicant. MPEP §2112(I) directs to MPEP §2141.02, which states in section (V) to refer back to §2112 for requirements of a rejection based on inherence. Thus, §2112 also applies to rejections under 35 USC 103. Claiming a property that was determined to be an inherent property does not render the claimed product non-obvious.
The rejections of claims 1, 3, 5-14, 16, 22-29 have been maintained herein.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Amanda S Hawkins whose telephone number is (703)756-1530. The examiner can normally be reached Generally available M-Th 8:00a-5:00p, F 8:00-2:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793