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 Objections
Claim 17 is objected to because of the following informalities:
The amendment to line 1 removing “1” appears to have been made unintentionally. The “1” should be added back into the claim.
Appropriate correction is required.
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.
Claims 1-2, 4-13, 15, 17-19 and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Kahn et al. (US 4,154,863) in view of Bassi et al. (US 2008/0254200 A1).
Regarding claim 1, Kahn et al. teaches a method for preparing a batter and maintaining flowability of the batter (column 21 lines 25-28) comprising mixing liquid egg whites (protein source), water, salts (3) and (6), the latter being sodium acid pyrophosphate (acidic leavening system) to form an acidified protein slurry (column 22 table and lines 13-21), and while continuously mixing, adding dry ingredients such as bread flour and dextrose to form the batter (column 22 lines 22-23), then adding soybean oil (fat) followed by sodium bicarbonate (alkaline leavening system) and continuing mixing for five minutes (column 22 lines 23-25), after which the batter is pumped to a cooled hold tank (column 22 lines 25-26). The batter is construed to be “neutralized” after the final addition of the sodium bicarbonate since the specification discloses the same method using 0.04-0.8 wt% sodium bicarbonate (paragraph 31), and Kahn et al teaches 0.6 wt% sodium bicarbonate (column 3 lines 56-57; column 22 line 8).
Kahn et al. does not teach the batter having 8-14 wt% protein, and the acidified slurry having 25 to 40 wt% protein and a pH below the isoelectric point of the protein source.
Bassi et al. teaches a method of forming isolated wheat proteins i.e., gluten (abstract) comprising treating the wheat proteins to acid hydrolysis in order to “have less viscous, more liquid characteristics, similar to…sulfite-treated wheat protein isolates” (paragraph 31). The acid hydrolysis provides protein isolates that are free of sulfites which can cause allergic reactions (paragraphs 8 and 36), and provides further desirable characteristics regarding flavor and texture (paragraphs 37-38). Further, the protein isolates can be used to replace sugar functionalities in baked foods, such as improving freeze-thaw performance, texture/mouthfeel, and rheology (paragraph 9).
The wheat gluten is added to water in an amount to yield an acidified protein slurry having 8-35 wt% solids (protein) on dry basis (paragraph 43). The acid is added in an amount to lower the pH of the protein slurry to a pH ranging from 2.0 to 5.0 (paragraph 35). Applicant’s specification discloses the isoelectric point of the protein can be about 6.2 or below depending on the selected protein source (paragraph 12), and further the protein can be wheat gluten (paragraph 7). Thus, one of ordinary skill in the art would have reasonably expected the pH of the protein slurry taught by Bassi et al. to be below the isoelectric point the gluten.
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Kahn et al. to use the acidified protein slurry of Bassi et al. since the reference already contemplates protein concentrates and isolates for texture and emulsification, including plant proteins, and does not particularly limit the type of protein used (column 10 lines 60-65), and therefore as a substitution of art recognized equivalents suitable for use as protein in batters, see MPEP 21, in order to provide protein that has the benefits taught by Bassi et al. without causing sulfite related allergic reactions, in order to control nutritional profile by replacing at least some sugar of Kahn et al. with protein, and to provide a non-animal option for consumers with dietary restrictions as is known in the art.
It would have been further obvious to modify the process of Kahn et al. such that the acidified slurry comprises 25 to 40 wt% protein and the batter comprises 8-14 wt% protein since the modification above would have necessarily increased protein content of the batter, since the prior art recognizes an acidified protein slurry having e.g., 8-35 wt% protein as taught by Bassi et al., since one skilled in the art would have recognized that replacing sugar with protein provides a food that is nutritionally “healthier”, since there is no evidence of criticality or unexpected results associated with the claimed protein content, and since the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as texture/mouthfeel, flavor, and nutritional profile.
Regarding claim 2, the combination above teaches wheat gluten as the protein source as taught by Bassi et al.
Regarding claim 4, Kahn et al. teaches sodium acid pyrophosphate (column 22 line 8).
Regarding claim 5, the dry ingredients are flour, sweetener, and salt (column 22 lines 20-22)
Regarding claim 6, the fat is soybean oil (column 22 line 23).
Regarding claim 7, the method of claim 1 recites that emulsifier is optional, and therefore said emulsifier is construed to be not required by the method.
Regarding claim 8, the leavening system is sodium bicarbonate (column 22 line 24).
Regarding claim 9, Kahn et al. does not teach the pH of the neutralized high-protein batter is 5.9 to 6.5.
However, the pH of the acidified high-protein batter of the combination applied to claim 1 is below the isoelectric point of the protein e.g., 2.0 to 5.0, as taught by Bassi et al. Further, the amount of sodium bicarbonate added at the end of Kahn et al. is 0.6 wt% of the composition (column 22 line 9). Applicant’s specification states the pH of the batter can be raised to the claimed range by addition of sodium bicarbonate in an amount of about 0.04-0.8 wt% of the batter (paragraph 31). Absent persuasive evidence to the contrary, one of ordinary skill in the art would have reasonably expected the batter of the prior art combination to be “neutralized” to the claimed pH range after addition of the sodium carbonate.
Regardless, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Kahn et al. such that the neutralized batter has the claimed pH value since there is no evidence of criticality or unexpected results associated with the claimed range, and since the values would have been used during the course of routine experimentation and optimization procedures due to factors such as the type of batter and final product to be made, flavor and texture/mouthfeel.
Regarding claim 10, modification of the batter to have 8-14 wt% protein would have been obvious as stated for claim 1.
It would have been further obvious to modify the batter to have 8-12 wt% protein for the same reasons, particularly since the reference already contemplates protein in a concentration of e.g., up to 10% (column 10 line 66).
Regarding claim 11, Kahn et al. does not teach the neutralized batter has a viscosity of 5-12 cm per 10 seconds as measured by a Bostwick consistometer pursuant to ASTM F1080.
However, Applicant’s specification states that proteins absorb too much water and increase the viscosity of the batter to unacceptable levels, and that it is desirable to maintain a pourable viscosity of the batter (paragraph 4).
Kahn et al. teaches a batter which remains flowable at reduced temperatures, Bassi et al. teaches reducing the viscosity of a protein slurry by acid hydrolysis and replacing sugar functionalities with said protein as stated for claim 1.
The combination applied to claim 1 appears to teach the same process as that of Applicant’s process, where the modification is made for the same, prior art recognized purpose of reducing viscosity and maintaining flowability of a protein slurry. Absent persuasive evidence to the contrary, one of ordinary skill in the art would have reasonably expected the prior art process to exhibit the same viscosity values measured under the same method and conditions.
Regardless, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the batter to have the claimed viscosity since the prior art recognizes a desire to facilitate pourability of protein slurries for use in baked foods including batters, since there is no evidence of criticality or unexpected results associated with the claimed feature, and since the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as the type of baked product to be made, desired texture/mouthfeel, rheological properties, and nutritional composition.
Regarding claims 12-13, the embodiment of Kahn et al. applied to claim 1 does not teach calcium salt blended into the acidified slurry to obtain 40-50 mM of calcium ions.
However, the reference further teaches the composition can include calcium proprionate and calcium sorbate as antimycotic agents in amounts of 0.1 wt% or higher (column 9 lines 16-20, 26-30 and 42-45).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the batter to include the claimed amount of calcium salt since there is no evidence of criticality or unexpected results associated with the claimed values, and since the values would have been used during the course of routine experimentation and optimization procedures due to factors such as the type of antimycotic agent and desired degree of resistance to yeast and mold.
Regarding claim 15, Kahn et al. teaches cooking the batter to form pancakes (column 22 lines 29-30), but does not specify “baking”.
However, since the reference teaches other types of batters such as those for cakes (column 19 lines 48-50), known to be cooked by baking, it would have been readily obvious to bake the neutralized high-protein batter in order to obtain an edible final product as is known in the art.
Regarding claim 17, Kahn et al. teaches a total water content of 33.98 wt%, 0.82 wt% of the acidic leavening system, 19.42 wt% flour, 6.47 wt% fat, and 0.60 wt% alkaline leavening system (column 22 table), and the combination applied to claim 1 teaches the batter comprising 8-12 wt% protein.
The embodiment relied on for claim 1 does not teach the claimed amount of emulsifier.
Kahn et al. further teaches an embodiment wherein the batter is a cake batter and comprises 1.4 wt% emulsifier (column 20 line 14), and recites a desire for its use in amounts such as 0.1-5 wt% (column 10 lines 6-11).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the batter to have the claimed composition since use of emulsifiers is well-known in the food art, since there is no evidence of criticality or unexpected results associated with the claimed feature, and since the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as the type of baked product to be made, desired flavor, texture/mouthfeel, rheological properties, and nutritional composition.
Regarding claim 18, Kahn et al. teaches both syrup and dextrose as stated for claim 1, but does not teach the claimed amounts thereof.
However, Bassi et al. teaches replacing sugar functionalities in baked foods with acid hydrolyzed protein as stated for claim 1.
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the batter to have the claimed amounts of dry and liquid sweetener since the combination would replace at least some sugar with the protein of Bassi et al., since there is no evidence of criticality or unexpected results associated with the claimed feature, and since the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as the type of baked product to be made, desired flavor, texture/mouthfeel, rheological properties, and nutritional composition.
Regarding claim 19, Bassi et al. as applied to claim 1 teaches the acidified high-protein slurry comprises up to 35 wt% protein, up to 5 wt% acid, and the balance as water (paragraphs 43 and 48).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the acidified high-protein slurry to have the claimed composition since there is no evidence of criticality or unexpected results associated with the claimed feature, and since the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as the type of baked product to be made, desired flavor, texture/mouthfeel, rheological properties, and nutritional composition.
Regarding claim 24, Kahn et al. teaches liquid sweetener such as dextrose-fructose syrup is blended into liquid egg whites after sodium acid pyrophosphate has been added (column 22 lines 19-21), and the combination applied to claim 1 replaces the acidified liquid egg whites with the acidified protein batter of Bassi et al.
Kahn et al. further teaches suitable sugars used in the method include “commercially available mixtures of invert sugars…corn syrup solids (extract)” (column 9 lines 4-6), in order to increase the osmotic pressure of the sugar solution (column 9 lines 6-9).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the method of Kahn et al. to blend the claimed liquid sweeteners into the acidified high-protein slurry since such sweeteners are readily available, since there is no evidence of criticality or unexpected results associated with the claimed sweeteners, and since the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as the type of baked product to be made, desired flavor, texture/mouthfeel, rheological properties, osmotic pressure, and nutritional composition.
Regarding claim 25, Kahn et al. further teaches the sodium bicarbonate is encapsulated to obtain a “more fluid” mixture, and facilitate storage stability (column 22 lines 39-46).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kahn et al. in view of Bassi et al. as applied to claims 1-2 above, and further in view of Tsumura et al. (US 6,303,178 B1).
Regarding claim 3, the combination applied to claim 1 does not teach soy protein.
Tsumura et al. teaches hydrolyzed soybean protein having good emulsifying and whipping capabilities useful in foods (abstract), the benefits batters including prevention of aging or retrogradation of starches to preserve texture/mouthfeel after storage (column 9 lines 38-43), where the soy protein is hydrolyzed by acid (column 10 lines 1-3).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Kahn et al. to use soy protein as the source for the acidified high-protein slurry since the reference already contemplates protein from soy (column 10 lines 64-65), and therefore to provide the same advantages stated for the combination applied to claim 1 while also providing batter options for individuals that want a plant-based option but cannot consume gluten, and for the advantages taught by Tsumura et al.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kahn et al. in view of Bassi et al. as applied to claims 1 and 12-13 above, and further in view of Lloyd (US 2,394,791).
Regarding claim 14, Kahn et al. teaches adding calcium salt as stated for claims 12 and 13, but does not teach the salt is calcium carbonate.
Lloyd teaches batters for baking (page 1 left column lines 1-4), where the batter includes calcium carbonate to neutralize the acidity of the batter (page 1 right column lines 7-14).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Kahn et al. such that the calcium salt is calcium carbonate since the prior art recognizes the substance for use in batters, since there is no evidence of unexpected results associated with the claimed feature, and in order to control the pH of the acidified protein slurry and/or batter as desired.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kahn et al. in view of Bassi et al. as applied to claims 1 and 15 above, and further in view of Maningat et al. (US 2005/0031756 A1).
Regarding claim 16, Kahn et al. does not teach baking is performed in a waffle iron.
Maningat et al. teaches batter is poured onto a house-hold waffle machine (waffle iron) to prepare the waffle (paragraph 507).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Kahn et al. to bake the batter in a waffle iron since waffles are an art recognized food product that requires cooking in a waffle iron, since there is no criticality or unexpected results associated with the claimed feature, and therefore a matter of preference for the type of baked good to be made, as well as desired flavor and texture.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Kahn et al. in view of Bassi et al. as applied to claim 1 above, and further in view of Laughlin et al. (US 5,855,945).
Regarding claim 20, Kahn et al. further teaches a donut batter comprising calcium phosphate (column 23 table ingredient 4), and only the limits the acids to “food grade” (column 11 lines 12-15).
Laughlin et al. teaches a method for preparing a dough composition (abstract) comprising blending a leavening acid with water and flour to form an acidified batter (column 5 lines 39-40), where the leavening acids include MCP and SALP (column 6 lines 40-46), where a combination of said acids can be combined to form the acidified batter (claims 1 and 6-7). The reference further recognizes MCP as a preservative and mold inhibitor (column 7 lines 47-49).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Kahn et al. such that the acidified slurry includes MCP and SALP in the claimed ratio since the prior art recognizes the substances can be combined to form the acidified slurry, since there is no evidence of criticality or unexpected results associated with the claimed substances and the respective weight percentages, and since the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as the type of batter, preservation, desired flavor, texture/mouthfeel, and characteristics when baked.
Claims 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Kahn et al. in view of Bassi et al. as applied to claim 1 above, and further in view of Southern NPL.
Regarding claims 21-22, Kahn et al. does not teach 40-60 wt% of the water is blended to form the acidified slurry and the remaining water is blended with one or more of the dry ingredients to form a second slurry including the hydrated dry ingredients, and adding the second slurry to the acidified slurry.
However, the reference teaches dextrose-fructose syrup comprising 29 wt% water is added to the acidified slurry (column 22 lines 14-15 and 19-21).
Southern NPL teaches a method for making “fluffy” pancakes (pages 1 and 6), the method comprising an autolyse step wherein flour and water are mixed, rested, and then combined with the rest of the wet ingredients of the batter (pages 4 and 8).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Kahn et al. such that the dry ingredients are blended with water to form a second slurry and then combined with the acidified slurry, the water being split between the two in the claimed amounts, since the prior art recognizes that flour can be first mixed with water prior to combining with other wet ingredients to form a batter, in order to provide a desired texture/consistency in the final product as taught by Southern NPL, since there is no evidence of unexpected results associated with the claimed feature, and to facilitate blending by incorporating the substances in a form that is easily miscible with the acidified slurry e.g., combining slurries would minimize clumping during the initial incorporation as compared to adding a dry powder directly to the acidified slurry.
Regarding claim 23, Kahn et al. teaches adding dextrose, a known sweetener and flavorant, with the bread flour into the acidified slurry (column 22 line 22).
Southern NPL further teaches the autolyse includes mixing dry ingredients in a bowl and adding buttermilk while stirring (page 89 steps 1-2), where the dry ingredients include flavorants such as kosher salt (page 7 “ingredients”).
Since the combination applied to claim 22 teaches forming a second slurry for the autolyse step, the slurry is construed to include flavorants, where selection of said flavorants would have been obvious based on desired taste of the final product.
Response to Arguments
Applicant's arguments filed 2/13/2026 have been fully considered but they are not persuasive.
Applicant argues on page 7 that the claimed method recites a discrete three-step method with a distinct order of steps and ingredients, where said method is not taught by the cited prior art.
This is not persuasive since the only recited features that separate each of the argued first, second, and third steps are “mixing” and addition of the respective ingredients. There is no indication that the steps cannot be performed by simply adding the respective ingredients in a sequential manner while continuously mixing. Examiner acknowledges the specification does indicate that the steps can be separated by e.g., 2-3 minutes of mixing to form the acidified slurry (paragraph 14), 2-3 minutes of mixing to form the batter (paragraph 28), 2-3 minutes of mixing after adding oil (paragraph 30), then adding the alkaline leavening agent (paragraph 31). However, such features are not recited in the claimed method. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Kahn et al. teaches forming the pancake batter which is free-flowing at freezer temperatures (column 1 lines 25-27) by adding liquid egg white (protein and water), syrup (29% water content), and salts (3) and (6) into a mixer with agitation, where the salt (6) is an acidic leavening system such as sodium acid pyrophosphate (column 22 table and lines 12-21). Agitation of the above components in the mixer would have necessarily formed a type of acidified slurry due to the water content of the mixture and the presence of the acid. The dextrose and bread flour added as the dry ingredient would have necessarily formed a type of batter due to the presence of said flour. The mixer speed is then increased, after which soybean oil is added and finally sodium bicarbonate as the alkaline leavening system to obtain the neutralized batter (column 2 lines 22-25).
The method of Kahn et al. is construed to read on the claimed method since the protein, water, and acid are combined in a mixer with agitation (first step) before addition of the flour, the batter is formed when the flour is added in a discrete step (second step) before increasing mixer speed (which would have also contributed to formation of the batter), the oil is added in a discrete step after increasing mixing speed, and the sodium bicarbonate is added in the “final” discrete adding step (third step) after the oil. The sodium bicarbonate would have necessarily provided a neutralizing effect to the acid already present in the mixture.
Applicant argues on pages 7-9 that the rationale to modify Kahn with Bassi lacks factual support in the references, where Kahn example 9 only teaches liquid egg whites including 4% protein which is far below that of the claimed protein content, does not mention replacing sugar was a concern, sulfite related allergic reactions was a problem, and providing non-animal options for dietary restrictions was a problem that needed solving, and therefore does not suggest modification. Applicant argues modifying Kahn to replace sugar with Bassi’s protein isolates would change the principle of operation since Kahn considers sugar as the “principal source of water-soluble solids”.
This is not persuasive since Kahn contemplates adding protein isolates which “are useful to improve the nutritional qualities of the product and to facilitate and maintain a whipped structure…aids in emulsification and contributes to flavor” (column 10 lines 60-63), as well as adding plant protein (column 11 lines 37-40). The reference discloses proteins are added “generally in concentrations from about 0-10%” (column 10 lines 65-66), but explicitly states amounts of ingredients are not limiting (column 11 line 64 to column 12 line 4). Thus, the argued protein content is considered to be a preferred embodiment, see also MPEP 2123.
Regarding the argument against replacing the sugar of Kahn, the reference teaches the purpose of the sugar is to offer a desired bacteriostatic protection, where the level of sugar chosen depends on the presence and level of auxiliary water-soluble solids offering a similar increase in osmotic pressure (column 7 lines 32-48). The water-soluble solids include non-sugar components such as salts, diols, polyols, etc. (column 7 line 49 to column 8 line 9). Further, the level of water-soluble solids can be varied as may the level of moisture initially incorporated (column 8 lines 15-21). The findings above suggest to one of ordinary skill in the art that the total sugar content of Kahn is not required, but instead a preferred embodiment, where the reference suggests modifications to the sugar content while maintaining desired properties. Regardless, the modification of Kahn does not replace the sugar in its entirety. Rather, Bassi suggests to one of ordinary skill that some of the sugar can be replaced in order to obtain the disclosed benefits (paragraph 9). It would have been well within the capability of a skilled artisan to determine the appropriate amount of sugar replacement (if any) while retaining the desired properties disclosed by Kahn, particularly since the reference already teaches the protein content of the product can be within the claimed range i.e., 0-10% overlaps 8-14%.
Regarding example 9 stating a desired sugar content and the protein provided by the egg whites in the acidified slurry, the above reasoning applies. The recitation is directed to a preferred embodiment, where one of ordinary skill would have been capable of, and motivated to modify the composition to increase protein content while retaining sufficient sugar/water-soluble solids to obtain the desired effects. It is well-known that excessive sugar consumption yields health risks, where one of ordinary skill would have been motivated to optimize the relative amounts of sugar and protein based on desired flavor, texture, and nutritional profile. The amount of protein in the intermediate acidified slurry would have been similarly obvious based on the type and amount of protein used, as well as other components in said slurry.
Regarding the argument against sulfite related allergic reactions and providing non-animal options, the argument is not persuasive since Kahn suggests modification by explicitly teaching protein isolates and non-animal proteins can be included in the composition. One of ordinary skill would have recognized the advantage of using the protein of Bassi due to the benefits taught by said reference as stated above, where such a motivation would be to provide consumers with options that better suit their dietary needs/restrictions. One of ordinary skill would have understood the predictability of using Bassi’s protein in the composition of Kahn, where the teaching, suggestion, and motivation are present within the cited prior 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); MPEP 2143 I.(A) and (G), MPEP 2144 I.-II.
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).
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).
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).
Applicant’s argument against the dependent claims and additional references is not persuasive for the same reasons stated above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/BRYAN KIM/Examiner, Art Unit 1792