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 .
Election/Restrictions
Claims 12, 14, 16-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim.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 5/19/25.
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 1-2, 5-7, 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Singh [Pat. No. 3,983,251] in view of Wilmott et al [US 2014/0322428A1] and Arakawa et al [EP 2,774,602A1].
Singh teaches solid antifoam crystals (title) which are used in a beverage (column 2, line 5), the beverage comprising a dispersion of silicone oil (column 2, lines 31-41), an essential plant oil such as lime oil, lemon oil, or orange oil (column 3, line 45-50), and water (column 6, line 18); an absence of emulsifiers including polyoxyethylene sorbitan esters of fatty acids and lecithin (see whole document), the beverage having 0.3 ppm silicone (column 6, line 19), the antifoam agent containing 0.2-10% flavorant/essential oil and 0.1-3% silicone (column 3, lines 25 & 8), an example beverage with no ethanol (Example 1), and mixing the silicone oil, essential oil, and water with a cola base in a preliminary step to create a beverage base (column 6, line 2). Wherein essential citrus oils were conventionally extracted from citrus peels and contained limonene.
Singh does not explicitly recite an average oil particle size of 30-500 nm, and the average size being greater than three times standard deviation (claim 1, 11).
Wilmott et al teach an oil-in-water dispersion of submicron particles to enhance food and beverages (title) comprising an average particle size of 100-999nm (paragraph 0055), coconut oil having a mean particle size of 196.4 nm and vegetable oils typically having an average particle size of 150-300 nm with a relatively tight particle size distribution (paragraph 0060), the dispersion prepared by using high pressure/high shear systems such as a MICROFLUIDIZER made by Microfluidics (paragraph 0062), at least 95% of the particles being within +/- 100 nm of the average particle size or +/- 1 standard deviations (paragraph 0072), and the small particle size imparts stability to the dispersion and a smaller standard deviation also providing greater stability (paragraph 0073).
Arakawa et al teach an aqueous dispersion (title) prepared by high pressure and high shear homogenizers such as chamber-type systems including the MICROFLUIDIZER manufactured by Microfluidics or the STAR BURST manufactured by Sugino Machine Limited (paragraph 0129-0131).
It would have been obvious to one of ordinary skill in the art to incorporate the claimed average particle size and standard deviation into the invention of Singh, in view of Wilmott et al and Arakawa et al, since all are directed to dispersion products, since Singh already included essential oils but simply did not mention a particle size, since beverage dispersion systems commonly included a dispersion prepared by using high pressure/high shear systems such as a MICROFLUIDIZER made by Microfluidics (paragraph 0062), at least 95% of the particles being within +/- 100 nm of the average particle size and/or within +/- 1 standard deviations of the average particle size (paragraph 0072), and the small particle size imparts stability to the dispersion and a smaller standard deviation also providing greater stability (paragraph 0073) as shown by Wilmott et al; since applicant relied upon a STAR BURST homogenizer made by Sugino (paragraph 0060 of the specification), since the MICROFLUIDIZER and the STAR BURST homogenizers were equivalent chamber-type systems (paragraph 0129-0131) as shown by Arakawa et al, since repeated high shear mixing and homogenization steps (by use of the same equipment as applicant) would be expected to achieve greater uniformity in particle size and smaller overall droplet size of the product of Lee et al, since smaller oil droplets would be more easily held in suspension within the beverage of Singh, since sedimentation and separation of oil and water components was undesirable in beverages, and since a uniformly small and uniform particle size in the beverage product of Singh would have been used during the course of normal experimentation and optimization procedures due to factors such as the amounts and types of flavor oils, the amount and type of silicone oil, the amount of water used, and/or the desired flavor, taste, and texture characteristics of the final beverage of Singh.
In conclusion, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art.
Response to Arguments
Applicant's arguments filed 2/4/26 have been fully considered but they are not persuasive.
Applicant argues that the invention was only achievable by combining silicone oi, plant oil, and a Sugino Machine; and that Singh did not disclose all these concepts. However, the above rejections relied upon Singh, in view of Wilmott et al and Arakawa et al. The combination of these references did disclose the above concepts.
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).
It would have been obvious to one of ordinary skill in the art to incorporate the claimed average particle size and standard deviation into the invention of Singh, in view of Wilmott et al and Arakawa et al, since all are directed to dispersion products, since Singh already included essential oils but simply did not mention a particle size, since beverage dispersion systems commonly included a dispersion prepared by using high pressure/high shear systems such as a MICROFLUIDIZER made by Microfluidics (paragraph 0062), at least 95% of the particles being within +/- 100 nm of the average particle size and/or within +/- 1 standard deviations of the average particle size (paragraph 0072), and the small particle size imparts stability to the dispersion and a smaller standard deviation also providing greater stability (paragraph 0073) as shown by Wilmott et al; since applicant relied upon a STAR BURST homogenizer made by Sugino (paragraph 0060 of the specification), since the MICROFLUIDIZER and the STAR BURST homogenizers were equivalent chamber-type systems (paragraph 0129-0131) as shown by Arakawa et al, since repeated high shear mixing and homogenization steps (by use of the same equipment as applicant) would be expected to achieve greater uniformity in particle size and smaller overall droplet size of the product of Singh, since smaller oil droplets would be more easily held in suspension within the beverage of Singh, since sedimentation and separation of oil and water components was undesirable in beverages, and since a uniformly small and uniform particle size in the beverage product of Singh would have been used during the course of normal experimentation and optimization procedures due to factors such as the amounts and types of flavor oils, the amount and type of silicone oil, the amount of water used, and/or the desired flavor, taste, and texture characteristics of the final beverage of Singh.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Applicant argues that Singh was limited to only preparing a beverage on site with the powder. However, Singh clearly taught mixing the silicone oil, essential oil, and water with a cola base in a preliminary step to create a beverage base (column 6, line 2). Regardless, these are product claims, not process claims.
Conclusion
THIS ACTION IS MADE FINAL. 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 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