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 .
DETAILED ACTION
Status of Claims
Note: The amendment of September 30th 2025 has been considered.
Claim 1 has been amended.
Claims 1-9 are pending in the current application.
Claims 7-9 are withdrawn from consideration.
Claims 1-6 are examined in the current application.
Any rejections not recited below have been withdrawn.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35 of the U.S. Code not included in this action can be found in a prior Office action.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Shinoda et al. (JP 2019187366 A – machine translated).
Regarding claims 1, 3 and 6: Shinoda discloses a high protein soft baked good comprising 21wt% to 40wt% protein mixture (see Shinoda abstract; page 2, paragraphs 5, 12 and 15). Since the protein content recited in claim 1 is close enough to the protein content disclosed in Shinoda, a prima facie case of obviousness exists, as it would be obvious to a skilled artisan the protein content recited in claim 1 is but an obvious variant of that disclosed in Shinoda (see MPEP §2144.05). Moreover, Shinoda discloses the soft baked good comprises 21wt% to 40wt% protein mixture, comprising protein 1 and protein 2, wherein protein 1 comprises hydrolyzed whey (i.e., hydrolyzed dairy protein) and/or collagen, and protein 2 comprises calcium caseinate (i.e., structural protein) and/or soybean protein (i.e,. structural protein), and the mass ratio of protein 1 and protein 2 is 9:1 to 3:7 (see Shinoda abstract; page 2, paragraphs 5, 15 and 17; page 3, paragraph 2). Given the fact the collagen, hydrolyzed dairy protein and structural protein contents recited in claim 1 overlap or lie inside the contents in Shinoda, a prima facie case of obviousness exists (see MPEP §2144.05).
As to the structure setting protein: Shinoda discloses the high protein soft baked goods may comprise constituents, such as, egg product (see Shinoda page 3, paragraph 5), which reads on claim 1: “up to 5% by weight of the soft baked snack” and claim 3: “wherein the structure setting protein comprises egg white”, as the claimed limitations read on a baked good without any structure setting protein.
As to the dry sugar and syrup recited in claims 1 and 5: Shinoda discloses the high protein soft baked goods comprise 20 to 30wt% sugars, comprising syrup sweeteners, such as honey, starch syrup, corn syrup and glycerin, and/or solid sweeteners, such as sucrose, glucose, maltose and/or trehalose. Shinoda further discloses of adjusting the relative contents of sweeteners to attain desired texture/flavor (see Shinoda page 2, paragraph 3; page 3, paragraph 6). Therefore, it would have been obvious to a skilled artisan to have modified Shinoda and to have adjusted the type and content of solid and syrup sweeteners, in order to attain a product with desired sweetness and texture, and thus arrive at the claimed limitations. As set forth in MPEP §2144.05 discovering an optimum value of a result effective variable, involves only routine skill in the art.
As to the fat content recited in claims 1 and 6: Shinoda discloses the high protein soft baked good comprises 20-30wt% fat, including (see Shinoda page 2, paragraphs 13-14).
As to the particulates recited in claim 1: Shinoda discloses the high protein soft baked good comprises granular flavors (e.g., nuts and fruits) at desired amount to attain desired product (see Shinoda page 3, paragraphs 5, 8 and 9).
As to the texture and textural shelf-life recited in claim 1: Shinoda discloses a high protein soft baked good similar to the claimed soft baked snack, but fails to disclose the textural shelf-life; However, given the fact the soft baked good in Shinoda has a very low water activity (i.e., <0.65) (see Shinoda page 3, paragraph 12), and since the soft baked good in Shinoda comprises the same constituents at the same, or similar amounts as the claimed amounts, it is examiner’s position the claimed textural shelf-life is inherently present in the high protein soft baked good in Shinoda. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claim 2: Shinoda discloses the soft baked good comprises 21wt% to 40wt% protein mixture, comprising protein 1 and protein 2, wherein protein 1 comprises hydrolyzed whey (i.e., hydrolyzed dairy protein) and/or collagen, and protein 2 comprises calcium caseinate (i.e., structural protein) and/or soybean protein (i.e,. structural protein), and the mass ratio of protein 1 and protein 2 is 9:1 to 3:7 (see Shinoda abstract; page 2, paragraphs 5, 15 and 17; page 3, paragraph 2). Given the fact the soy protein and/or calcium caseinate contents, overlap or lie inside the contents in Shinoda, a prima facie case of obviousness exists (see MPEP §2144.05).
Regarding claim 4: Shinoda discloses the high protein soft baked goods comprises fiber (page 3, paragraph 4; page 4, paragraph 5).
Response to Arguments
Applicant's arguments filed on September 30th 2025 have been fully considered but they are not persuasive.
Applicant argues the prior art references fail to render the claimed invention obvious, because Shinoda fails to disclose the shelf-life stability recited in claim 1. The examiner respectfully disagrees.
As stated above, Shinoda discloses a high protein soft baked good similar to the claimed soft baked snack, but fails to disclose the textural shelf-life; However, given the fact the soft baked good in Shinoda has a very low water activity (i.e., <0.65) (see Shinoda page 3, paragraph 12), and since the soft baked good in Shinoda comprises the same constituents at the same, or similar amounts as the claimed amounts, it is examiner’s position the claimed textural shelf-life is inherently present in the high protein soft baked good in Shinoda. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Karwowski et al. (USPatPub. 2010/0303991 A1) discloses a high protein baked good comprising collagen and whey.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASSAF ZILBERING whose telephone number is (571)270-3029. The examiner can normally be reached on M-F 8:30-5:00.
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/ASSAF ZILBERING/Examiner, Art Unit 1792
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