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 .
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.
Claim 5 is 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 5 claims a rate of increase of 6.5% or less. This encompasses a rate of increase of 0, which would be no change in packing fraction. As claim 3 claims different packing fractions between areas A and C, it is unclear how these could also have a rate of increase of 0, or no change.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Shibata (US 2008/0292770 A1) in view of Kakizawa (US 2009/0163604 A1) and Shibata2 (US 2009/0175998 A1).
Regarding claim 3, Shibata teaches a solid milk having a solid form (solid milk 0011)
obtained by compression molding a powdered milk (compacting and molding Par. 0018)
and a packing fraction is more than 50% and less than 70% (porosity of 30% to 50% Par. 0019; packing density of 50% to 70%). As packing fraction is 1 minus the porosity, a porosity of 30% to 50% have a 50% to 70% packing fraction.
Shibata does not teach wherein a packing fraction of the solid milk is configured such that an average value A from a surface of the solid milk to a depth of 2 mm is more than 61.7% and less than 65.0%, and an average value C from a depth of 4 mm from the surface of the solid milk to a depth of 6 mm is more than 56.6% and less than 60.9%.
As Shibata teaches the compacting means is not limited and may be performed by well known processes (Par. 0070), one would have been motivated to look to the art for methods of compacting.
Kakizawa, in the same field of endeavor, teaches a multistage compression with at least a precompression and main compression (Par. 0068).
It would have been obvious to one having ordinary skill in the art at the time of filing to modify the invention of Shibata with the multistage compression of Kakizawa. One would have been motivated to make this modification to produce a product with small weight variation and high hardness (Kakizawa Par. 0035).
Kakizawa does not teach wherein a packing fraction of the solid milk is configured such that an average value A from a surface of the solid milk to a depth of 2 mm is more than 61.7% and less than 65.0%, and an average value C from a depth of 4 mm from the surface of the solid milk to a depth of 6 mm is more than 56.6% and less than 60.9%.
Shibata2, in the same field of endeavor, teaches slowing down compression speed results in a longer production time but a harder product; while speeding up compression speed enhances manufacturing ability but the same hardness is not achieved (Par. 0063).
It would have been obvious to one having ordinary skill in the art at the time of filing to modify the invention of modified Shibata with a faster compression speed for the pre-compression and a slower compression speed for the main compression. One would have been motivated to make this modification to have a product which achieves some of the positives of each compression speed (i.e. a faster production time than just using the slow compression but a harder product than just using the fast compression speed).
Shibata2 does not teach wherein a packing fraction of the solid milk is configured such that an average value A from a surface of the solid milk to a depth of 2 mm is more than 61.7% and less than 65.0%, and an average value C from a depth of 4 mm from the surface of the solid milk to a depth of 6 mm is more than 56.6% and less than 60.9%.
Regarding wherein a packing fraction of the solid milk is configured such that an average value A from a surface of the solid milk to a depth of 2 mm is more than 61.7% and less than 65.0%, and an average value C from a depth of 4 mm from the surface of the solid milk to a depth of 6 mm is more than 56.6% and less than 60.9%, as a two step compression with a higher compression speed followed by a lower compression speed is the method applicant uses to obtain the claimed change in packing fraction (Applicant’s Specification Par. 0014), it would be obvious for the combination of references above to result in a product with the same packing fraction configuration as the claimed product.
Regarding claim 5, as a two step compression with a higher compression speed followed by a lower compression speed is the method applicant uses to obtain the claimed rate of increase of the packing fraction (Applicant’s Specification Par. 0012), it would be obvious for the combination of references above to result in a product with the same rate of increase of the packing fraction configuration as the claimed product.
Response to Arguments
Applicant's arguments filed 06/09/2026 have been fully considered but they are not persuasive.
Regarding the rejection of claim 5 under 35 U.S.C. 112, applicant argues the scope of claim 5 is narrowing the broader claim 3. The examiner agrees that the scope of claim 5 narrows the scope of claim 3 on the high end of the claimed rate of increase (packing fractions of claim 3 which result in a rate of increase greater than 6.5) are persuasive and that portion of the rejection has been withdrawn. However, on the low end of the rate of increase of claim 5 is in fact broadening claim 3. The lowest rate of increase that can be calculated with the packing fractions of claim 3 is 1.3%, but the range of claim 5 encompasses 0-6.5%. Therefore it is unclear how one would be able to have a packing fraction of below 1.3% using the values of claim 3. Further, though dependent claims incorporate the limitations of the claims which they depend from, they cannot broaden the claim but must further limit it.
Applicant further argues that the claimed terminology of a rate of increase of 6.5% or less does not include 0 with the cited reference to the MPEP seen on pg. 3 of arguments. The case that’s cited references a situation in which assuming a minimum of zero completely changed a reaction process to not have a reaction. In this case, a rate of increase of zero would not fundamentally change the invention. The product would merely have packing fractions that are outside of the scope of claim 3.
Applicant argues no references teach two-stage compression starting at a high speed then decreasing, a second compression where the rate of change in hardness decreases, or the packing fraction profile of claim 3. Shibata discloses a range of packing fractions which overlap with the claimed range (Par. 0019). Kazikawa discloses a multi stage compression process (Par. 0068). And Shibata2 discloses benefits of decreasing rate of compression (Par. 0063). Therefore, one having ordinary skill in the art would reasonably combine these references to result in a multi stage compression process with decreasing rate of compression which results in a product with packing fractions which fall within the range of Shibata. As the multi stage compression with decreasing rate of compression is the method of production of the present invention (Applicant’s Specification Par. 0014), one would expect the resulting products to have similar packing fraction profiles.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Holderbaum (US 2002/0004472 A1) teaches a tablet made of compressed particulate (Par. 0022).
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 ARIEL M RODGERS whose telephone number is (571)272-7857. The examiner can normally be reached Monday - Friday 9:00 am - 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at 5712703475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.M.R./ Examiner, Art Unit 1792
/ERIK KASHNIKOW/ Supervisory Patent Examiner, Art Unit 1792
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