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 19 February 2026 is acknowledged.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 18-24 and 26-31
Withdrawn claims: None
Previously canceled claims: 1-17, 25, and 23-24
Newly canceled claims: None
Amended claims: 18 and 29
New claims: None
Claims currently under consideration: 18-24 and 26-31
Currently rejected claims: 18-24 and 26-31
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 18-24 and 26-31 are rejected under 35 U.S.C. 103 as being unpatentable over Iwata et al. (JP H1023855 A, see provided translation) in view of Lönner (EP 2578090 B1) and Eijk et al. (US 2012/0156326 A1, US PGPub of WO 2009/097333 A2 cited on IDS filed on 19 May 2022).
Regarding claims 18 and 29, Iwata teaches a method to produce bread (i.e., a cooked bakery product) comprising cooking (implicitly) a dough obtained by a sponge and dough breadmaking method using a sponge (i.e., poolish) containing from 3-6 wt.% ethanol (Abstract). Using the conversion factor of 1% (w/v) = 1 g/100 mL, 20 to 55 g/L of ethanol equates to 2.0 to 5.5% (w/v) of ethanol. While wt.% and % (w/v) are not identical, any difference is not considered to be enough that the claimed 2.0 to 5.5 % (w/v) of ethanol would not lie inside or overlap the disclosed range 3-6 wt.% of ethanol. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Iwata does not teach a step, after cooking, of application of a solution comprising a live leaven on the surface of the cooked bakery product.
However, Lönner teaches a process of preparing a probiotic bread containing viable probiotic bacteria, wherein the probiotic bacteria are added to the crumb of the bread ([0018]) via application of a liquid sourdough containing mainly water, flour, and probiotic bacteria ([0021]). The liquid sourdough is applied directly onto the slices of bread (i.e., the surface of the cooked bakery product) via small holes in the cutting blades ([0023]). Lönner teaches that the probiotic sourdough “adds to a bread both a tastyness and a preserving effect due to its content of above all different acids and preferably lactic acid, and antibiotic substances such as for instance different bacteriocines” ([0021]).
The sourdough of Lönner does not comprise yeast, a required component of the live leaven as defined by Applicant.
However, Eijk teaches a method of applying a solution comprising live yeast to the surface of a baked product to inhibit mold growth ([0016]). The method can also be used to produce baked goods containing live probiotic yeast (Abstract).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Iwata with the teachings of Lönner to apply a liquid sourdough to the surface of the cooked bread. One of ordinary skill in the art would have been motivated to do so to provide the positive health effects associated with probiotics ([0002]) to consumers of the bread, and also add a preservative effect and increased tastiness as taught by Lönner ([0021]). One of ordinary skill in the art would have had a reasonable expectation of success in doing so because Lönner teaches Lönner teaches that the probiotic sourdough “adds to a bread both a tastyness and a preserving effect due to its content of above all different acids and preferably lactic acid, and antibiotic substances such as for instance different bacteriocines” ([0021]), and that clinical trial participants who consumed the probiotic bread had an increased presence of live probiotic bacteria ([0042], Table 3, [0043]).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the method of Iwata as modified by Lönner with the teachings of Eijk to add live yeast to the probiotic sourdough. Since Lönner teaches that the liquid sourdough has a preservative effect ([0021]), one of ordinary skill in the art would have been motivated to add live probiotic yeast to the liquid sourdough to further inhibit mold growth on the baked product, as taught by Eijk. One of ordinary skill in the art would have had a reasonable expectation of success in doing so because Eijk teaches that applying a live yeast solution to bakery products increases the time for mold spots to appear on over 50% of the test loaves from 8 days to 22-24 days ([0068], Table 4).
Regarding the recitation, “for preparing mold-resistant cooked bakery products” in claim 18 and the recitation, “of slowing down the appearance of mold on cooked bakery products” in claim 29, these phrases are toward an intended use of the method. A statement with regard to intended use is not further limiting insofar as the structure of the invention is concerned. In order to patentably distinguish the claimed invention from the prior art, a claimed intended use must result in a structural difference between the claimed invention and the prior art. See MPEP § 2111.02(II). In the present case there is no difference between the method suggested in the prior art and the claimed methods.
Regarding the limitation, “wherein the ethanol content in the poolish is produced during maturation of the poolish and is not added to the poolish as a separate ingredient”, this clause is directed at how the poolish is obtained; it is not a part of the method of making the bakery product. The positively recited steps of the method as claimed are 1) cooking a dough obtained by a sponge and dough breadmaking method, and 2) applying a solution comprising a live leaven on the surface of the cooked bakery product. It is recognized that the claim requires the dough to be “obtained”. However, because this is not an active step to be performed, the dough itself is considered to be a product-by-process limitation. Although Iwata does not disclose that the ethanol content in the poolish is produced during maturation of the poolish and is not added to the poolish as a separate ingredient, it is noted that “[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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP § 2113.
Therefore, absent evidence of criticality regarding the presently claimed process of making the dough, and given that Iwata meets the requirements of the claimed composite (i.e., a dough obtained by a sponge and dough breadmaking method using a poolish containing from 20 to 55 g/L of ethanol), Iwata clearly meets the requirements of the present claims. As such, the recited clause does not patentably distinguish the claimed method from the method of the prior art.
Moreover, the ethanol content of the poolish is subsumed into the dough once the dough is prepared. Once the poolish is added to the dough, it does not matter how the ethanol was produced in the poolish or how much ethanol was in the poolish. As written, the ethanol content of the dough is what is pertinent to the method as claimed, not the ethanol content of the poolish. As claimed, the ethanol content of the dough is not provided and cannot be determined. The ethanol content cannot be considered limiting in this context.
Claims 18 and 29 are therefore rendered obvious.
Regarding claims 19-20, Iwata, Lönner, and Eijk teach the method of claim 18.
Iwata also teaches that said poolish is obtained by the maturation of a composition comprising flour, water, optionally sugar and/or enzymes by at least one yeast selected from the group consisting of wine yeast, brewer's yeast and baker's yeast (re: claim 19), that the yeast is obtained by culture of the strain Saccharomyces cerevisiae (re: claim 20) – In Example 3, ([0064]), Iwata teaches “Example 3 400 g (40 parts) of strong flour, Sankyo yeast M 3g (0.3 parts), salt 15g (1,5 parts), Heinetress [70% ethyl alcohol, see [0057]] 50 ml (5 parts), water 180 ml (18 parts) was kneaded in the same manner as in Example 1 to obtain a medium seed”. As this is the process for preparing a sponge, and Iwata teaches that the method is for preparing bread by the sponge process (Abstract), the term “medium seed” as used in Iwata is understood to mean “poolish” or “sponge”. The yeast in this example is Sankyo Yeast M, obtained from seawater ([0061]), which is disclosed as being Saccharomyces cerevisiae ([0007]), which is well-known in the art to be baker’s or brewer’s yeast. Iwata also discloses the use of ordinary bread yeast manufactured by Sankyo ([0023] and Example 2, [0060]).
Claims 19-20 are therefore rendered obvious.
Regarding claim 21, Iwata, Lönner, and Eijk teach the method as claimed in claim 19.
Iwata also teaches that the maturation time of the poolish is at least 4 hours – Iwata teaches maturation times for the “medium seeds” (i.e., poolish) of 48 hours (Example 3, [0065]).
Claim 21 is therefore rendered obvious.
Regarding claims 22 and 30, Iwata, Lönner, and Eijk teach the method as claimed in claim 18 (re: claim 22) and claim 29 (re: claim 30).
Iwata also teaches that the flour of the poolish represents 20 to 65% of the total flour – In Examples 2 and 3, the flour of the poolish represents 40% of the total flour – Example 2 discloses 800 g flour in the poolish and adding 1200 g of flour in making the dough ([0060]) for a total of 2000 g of flour. 800g/2000g x 100% = 40%. Similarly, Example 3 discloses 400 g of flour in the poolish and adding 600 g flour in making the dough ([0064] – [0065]) for a total of 1000 g of flour. 400g/1000g x 100% = 40%.
Claims 22 and 30 are therefore rendered obvious.
Regarding claim 23, Iwata, Lönner, and Eijk teach the method as claimed in claim 18.
The cited prior art does not explicitly state that the live leaven applied on the surface of the cooked bakery product is a leaven for any baking flour.
However, Lönner teaches that the flour comprising the liquid sourdough “can for instance be flour from cereals, such as rye meal or rye flour, pure sifted rye flour, sifted bakery flour or wheat flour, whole wheat flour, barley flour, oat flour, corn flour etc.” ([0021]). This list of flours disclosed by Lönner does not appear to be limiting. Therefore, it is deemed that the live leaven taught by Lönner is a leaven for any baking flour.
Therefore, claim 23 is rendered obvious for the same reasons as described regarding claim 18 above.
Regarding claim 24, Iwata, Lönner, and Eijk teach the method as claimed in claim 18.
Iwata does not teach that the composition of live leaven is applied at a rate from 2 to 8 g of liquid leaven having dry matter from 15 to 20% on a surface area of cooked bakery product from 1200 to 1900 cm2.
Lönner teaches that “the probiotic bacteria should be added to the bread crumb in an amount giving a probiotically active amount of bacteria when ingesting the bread” ([0031]), and does not specify the mass or dry matter of the sourdough to be applied to the bread, only that the sourdough comprises at least 1x107 CFU of probiotic bacteria per gram of sourdough (0021]).
Eijk teaches that the composition of live yeast is applied at a rate from 2 to 8 g of liquid leaven having dry matter from 15 to 20% on a surface area of cooked bakery product from 1200 to 1900 cm2. First, the range of 2 to 8 g of liquid leaven over an area of 1200 to 1900 cm2 equates to a minimum of 2 g per 1900 cm2 to a maximum of 8 g per 1200 cm2. This reduces to a range of 0.11-0.67 g per 100 cm2. Eijk teaches that “[t]he preferred method of applying the live yeast is by spraying a refrigerated yeast solution onto the surface of a baked good in amounts of 0.5-10 ml per 100 cm2…while the yeast solution contains between 0.01 and 20 grams…of either compressed or instant dry yeast per 100 ml water.” (0046]). The disclosed 0.01 to 20 g of yeast per 100 ml of water equates to 0.01 to 20% dry matter. Regarding the application rate of the solution, using the density of water (1g/ml) as a rough estimate, the dosage disclosed by Eijk is roughly 0.5-10 g per 100 cm2. The claimed ranges overlap or lie inside the disclosed ranges. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply the live leaven solution to the baked product in the method of Iwata as modified by Lönner and Eijk at a rate as disclosed by Eijk with the same motivation to add probiotics and mold-resistant properties of baked products and with the same expectation of success as described regarding claim 18 above.
Moreover, it is noted that the amount of live leaven applied to the surface of the bread and the dry matter of the liquid leaven are result effective variables. If the too much live leaven is applied to the bread, it would result in an unappealing taste or texture. If too little live leaven is applied to the bread, too few probiotic bacteria and/or yeast cells would be present to confer the probiotic and preservative effects. Likewise, if the dry matter of the liquid leaven were too high, it would result in a solution too thick to spray or result in a thick mass being added to the bread. If the dry matter of the liquid leaven were too low, applying sufficient liquid leaven to deliver enough live cells would result in a soggy product.
Therefore, it also would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to determine the optimal value for the amount of liquid leaven and the amount of dry matter in the liquid leaven used in the process of Iwata in view of Lönner and Eijk, through routine experimentation, to impart the bread with sufficient live cells to confer the probiotic and preservative effects of the live leaven, while simultaneously producing a final product with desirable organoleptic properties, including at a rate from 2 to 8 g of liquid leaven having dry matter from 15 to 20% on a surface area of cooked bakery product from 1200 to 1900 cm2 as claimed.
Claim 24 is therefore rendered obvious.
Regarding claim 26, Iwata, Lönner, and Eijk teach the method as claimed in claim 18.
Iwata does not teach that the composition of live leaven is applied by spraying.
However, Eijk teaches that the composition of live leaven is applied by spraying – “…the live yeast material is applied after baking by any number of methods including spraying or brushing a yeast solution on the surface of said baked good…” ([0021]).
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to spray the live leaven onto the bread product of Iwata as modified by Lönner and Eijk, as taught by Eijk, with the same motivation and with the same expectation of success as described regarding claim 18 above.
Regarding claim 27, Iwata, Lönner, and Eijk teach the method as claimed in claim 18.
Iwata also teaches a method toward preparing bread (Abstract), British bread (Example 1, [0057]), a one loaf type bread (Example 2, [0062]), a butter roll (Example 3, [0065]), and square bread (Example 4, [0067]), Lönner teaches a method toward preparing bread containing probiotic bacteria ([0018]), and Eijk teaches a method toward preparing mold-resistant baked goods including, but not limited to bread, rolls, pita bread, donuts, croissants, tortillas, bagels and pizza crusts ([0019]) and buns (0047]). These teachings read on at least sandwich bread and buns.
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply the method of Iwata as modified by Lönner and Eijk to a wide variety of baked goods, including sandwich bread and buns, as claimed, with the same motivation and with the same expectation of success as described regarding claim 18 above.
Claim 27 is therefore rendered obvious.
Regarding claim 28, Iwata, Lönner, and Eijk teach the method as claimed in claim 18.
Iwata does not teach that the cooked bakery products are packaged in paper packaging or in packaging made of food-grade plastic.
However, Eijk discloses, “Before or after the live yeast cells have been applied into or onto the baked good according to this invention, it may be sliced (in case of bread, buns and rolls) before it is packaged into a closed bag…The terms "bag" and "closed bag" refer to the bags that are normally used for packaging baked goods like breads such as plastic bags, cover foil bags, coated paper bags, or other impermeable or semi-permeable bags. Plastic bags used for packaging baked goods are often made from LDPE (low density polyethylene) and are normally closed by plastic tie wraps or "Kwik-Loc" plastic closures.” ([0047]).
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the method of Iwata as modified by Lönner and Eijk to further package the baked good in paper or food-grade plastic packaging such as those disclosed by Eijk. One of ordinary skill in the art would have been motivated to further consult Eijk for information regarding packaging the baked product. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Eijk teaches that “if bread sprayed with live yeast was not packaged but only covered by plastic for the duration of the storage period, the anti-molding effect was lost” ([0049]), indicating that packaging the bread is necessary for a prolonged anti-molding effect.
Claim 28 is therefore rendered obvious.
Regarding claim 31, Iwata, Lönner, and Eijk teach the method as claimed in claim 29.
Iwata does not teach that the cooked bakery product is packaged in a closed packaging, and wherein the composition of live leaven may additionally be sprayed into the closed packaging.
However, Eijk teaches that the cooked bakery product is packaged in a closed packaging – “Plastic bags used for packaging baked goods are often made from LDPE (low density polyethylene) and are normally closed by plastic tie wraps or "Kwik-Loc" plastic closures.” ([0047]), and wherein the composition of live leaven may additionally be sprayed into the packaging – “In one aspect of a method of the invention the live yeast material is applied after baking by any number of methods including spraying or brushing a yeast solution on the surface of said baked good…adsorbing of dry yeast or a liquid yeast solution into or onto the closed bag that comes into contact with the baked good after packaging…” ([0021]).
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to package the baked product of Iwata as modified by Lönner and Eijk in a closed packaging and to spray the live leaven into the packaging as taught by Eijk with the same motivation to further improve the mold-resistant properties of baked products as described regarding claim 29 above. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Eijk discloses, “It was found that when a loaf of bread sprayed with live yeast and an untreated loaf of bread were packaged together in one and the same closed bag, both loaves showed the same extended mold-free shelf life during subsequent storage. However, if bread sprayed with live yeast was not packaged but only covered by plastic for the duration of the storage period, the anti-molding effect was lost. These results suggest that the anti-molding effect according to this invention is related to the volatile compounds produced by the live yeast applied after baking. These volatile compounds will easily redistribute over the whole loaf of bread through the atmosphere of the closed bag.” ([0049]). Therefore, one of ordinary skill in the art would have had a reasonable expectation of success for spraying the live leaven solution into the packaging to create an atmosphere surrounding the cooked bakery product that provides a mold-inhibitory effect.
Claim 31 is therefore rendered obvious.
Response to Arguments
Claim Rejections – 35 U.S.C. § 103: Applicant’s arguments filed on 19 February 2026 have been fully considered, but they are not persuasive.
Applicant first argued that amended claims 18 and 29 are patentable over the cited prior art because Iwata discloses adding ethanol to the sponge dough before fermenting it, and the method of the instant application does not add alcohol as a separate ingredient (p.5, ¶ - p. 6, ¶ 5), and Applicant discloses that products resulting from the application of alcohol are unsuitable for children and for a portion of the population that cannot absorb alcohol (p.5, ¶ 6).
Applicant’s arguments have been considered, but they are not persuasive. As described in the rejection hereinabove, the limitation, “wherein the ethanol content in the poolish is produced during maturation of the poolish and is not added to the poolish as a separate ingredient” is directed at how the poolish is obtained; it is not a part of the method of making the bakery product. The positively recited steps of the method as claimed are 1) cooking a dough obtained by a sponge and dough breadmaking method, and 2) applying a solution comprising a live leaven on the surface of the cooked bakery product. It is recognized that the claim requires the dough to be “obtained”. However, because this is not an active step to be performed, the dough itself is considered to be a product-by-process limitation. Although Iwata does not disclose that the ethanol content in the poolish is produced during maturation of the poolish and is not added to the poolish as a separate ingredient, it is noted that “[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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP § 2113.
Therefore, absent evidence of criticality regarding the presently claimed process of making the dough, and given that Iwata meets the requirements of the claimed composite (i.e., a dough obtained by a sponge and dough breadmaking method using a poolish containing from 20 to 55 g/L of ethanol), Iwata clearly meets the requirements of the present claims. As such, the recited clause does not patentably distinguish the claimed method from the method of the prior art.
It is noted that where Applicant discloses that products resulting from the application of alcohol are unsuitable for children and for a portion of the population that cannot absorb alcohol in paragraph [0006] of the specification, this is in context to the alcohol being “sprayed onto cooked products or injected into cooked products”, not in context of the poolish. Applicant’s argument is therefore not persuasive.
Applicant next argued that the Office Action does not address how the range or ethanol in Iwata’s sponge and the range of alcohol recited in the claims overlap (p. 6, ¶ 6). Applicant asserted that the sponge disclosed in Iwata inherently produces alcohol because the yeast ferments sugar to produce alcohol and carbon dioxide, and the amount of alcohol inherently produced must be added together with the amount added by Iwata to obtain the total amount of alcohol in the sponge of Iwata (Id.)
In response, Iwata adds ethanol and salt to the poolish to slow fermentation ([0031]). Even with additional ethanol from fermentation, the total alcohol content of the poolish likely overlaps or is close to the claimed range. MPEP § 2144.05(I) states, “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.” Applicant does not demonstrate any criticality of the amount of ethanol in the poolish. Moreover, the ethanol content of the poolish is subsumed into the dough once the dough is prepared. Once the poolish is added to the dough, it does not matter how the ethanol was produced in the poolish or how much ethanol was in the poolish. As written, the ethanol content of the dough is what is pertinent to the method as claimed, not the ethanol content of the poolish. As claimed, the ethanol content of the dough is not provided and cannot be determined. The ethanol content cannot be considered limiting in this context. Applicant’s argument is therefore not persuasive.
Applicant asserted that the combination of the poolish and the application of a live leaven on the surface of the cooked bakery product leads to an unexpectedly synergistic effect in that sandwich loaves with poolish and without spraying with leaven and sandwich loaves without poolish but sprayed with leaven exhibit an earlier appearance of molds than the sandwich loaves with poolish and sprayed with leaven, citing Example 5 (pp. 6-7, bridging ¶).
Applicant’s assertion of unexpected synergistic properties is acknowledged. Applicant’s argument has been considered, but it is not found to be persuasive. MPEP § 2145 states, “If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc)”, and “[r]ebuttal evidence may include evidence of ‘secondary considerations,’ such as ‘commercial success, long felt but unsolved needs, [and] failure of others.’ Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 4459, 467. See also, e.g., In re Piasecki, 745 F.2d 1468, 1473, 223 USPQ 785, 788 (Fed. Cir. 1984) (commercial success). Rebuttal evidence may also include evidence that the claimed invention yields unexpectedly improved properties or properties not present in the prior art. Rebuttal evidence may consist of a showing that the claimed compound possesses unexpected properties. Dillon, 919 F.2d at 692-93, 16 USPQ2d at 1901. A showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997)”. However, as provided by MPEP § 2145(II), “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979)”, and “‘[t]he fact that appellant 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.’ Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)”. Furthermore, “[e]vidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978).” See MPEP § 716.02(c)(I). “‘Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof.; In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967)”. See MPEP § 716.02(c)(II).
“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)”. See MPEP § 716.02(d).
“Evidence of a greater than expected result may also be shown by demonstrating an effect which is greater than the sum of each of the effects taken separately (i.e., demonstrating "synergism"). Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1848 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). However, a greater than additive effect is not necessarily sufficient to overcome a prima facie case of obviousness because such an effect can either be expected or unexpected. Applicants must further show that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991) (Evidence showing greater than additive sweetness resulting from the claimed mixture of saccharin and L-aspartyl-L-phenylalanine was not sufficient to outweigh the evidence of obviousness because the teachings of the prior art lead to a general expectation of greater than additive sweetening effects when using mixtures of synthetic sweeteners.). MPEP § 716.02(a)(I).
In the present case, Applicant’s evidence is not commensurate in scope with the claimed invention. The examples are not commensurate in scope with the claimed invention because it cannot be ascertained whether the alleged unexpected result occurs over the entire claimed ranges and combinations of the claimed ingredients from the examples provided, and none of the claims are directed toward the specific embodiment provided by any of the examples. Applicant references Example 5 of the specification (pp. 6-7, bridging ¶). The conditions presented in Example 5 are: the leaven is applied at 4-5 g/loaf, the poolish was fermented for 24 hours, the ethanol content of the poolish is not disclosed, and the flour of the poolish is 27.5% of the total flour. The specific conditions of Example 5 are much narrower than the scope of the claims. Therefore, it cannot be ascertained whether the alleged unexpected synergistic result occurs over the entire scope of the claims.
In summary, the rejections of claims 18-24 and 26-31 under 35 U.S.C. § 103 are maintained. It is recommended that Applicant recites a positive method step for preparing the dough comprising a poolish with the desired ethanol content and to demonstrate criticality of the alcohol content. Additionally, it is recommended that Applicant narrows the scope of the claims to embodiments supported by the data provided to properly demonstrate a synergistic effect of adding a live leaven to a cooked bakery product prepared by the sponge and dough method. Alternatively, Applicant may submit additional data as evidence of the alleged synergistic properties that is commensurate with the claims.
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/JAMES P. SHELLHAMMER/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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