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 .
The amendment filed March 18, 2026 is acknowledged. Claims 1 and 4-12 are pending in the application. Claims 2 and 3 have been cancelled.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 18, 2026 has been entered.
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.
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, 4, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. JPH09252737 (hereinafter “Watanabe”) (refer to the corresponding machine translation) in view of Bertrand et al. US 5798131 (hereinafter “Bertrand”).
With respect to claim 1, Watanabe teaches a food product (paragraph [0001]).
Regarding the recitation of comprising: a container having an opening in claim 1, Watanabe teaches a container comprising an opening (paragraphs [0001], [0011], [0019], and [0034]; and Fig. 1).
Regarding the recitation of comprising a first food item being at least one type of food item selected from a food item group consisting of pudding, creme brulee, custard pudding, ice cream, iced milk having a milk solids content of at least 10% and a milk fat content of at least 3%, lacto ice having a milk solids content of at least 3%, sherbet, and yogurt, the first food item being in the container and a surface of the first food item being proximate the opening of the container in claim 1, Watanabe teaches a containerized food, such as pudding, ice cream, and yogurt (paragraphs [0013], [0034]-[0036]; and Fig. 1).
Regarding the recitation of comprising a second solid food item being at least one type of food item selected from a food item group consisting of chocolate, quasi chocolate, chocolate confectionery, quasi chocolate confectionery, nama-chocolate, and food containing cocoa butter, fat, and oil, the second food item being in a solid state, the second food item coating the surface of the first food item in claim 1, Watanabe teaches the food product may be a multi-layer structure of two or more layers stacked in the container with the food (first food item) being filled into the container first, and the container will be filled at least twice. The coating layer(s) may be in solid form (paragraphs [0013], [0014], [0020], and [0034]).
However, Watanabe does not expressly disclose the layer (second food item) on top of the food (first food item) is at least one type of food item selected from a food item group consisting of chocolate, quasi chocolate, chocolate confectionery, quasi chocolate confectionery, Nama-Chocolate, and food containing cocoa butter, fat, and oil.
Bertrand teaches an article of ice confectionery that is coated with a fatty composition. The coating is applied to the upper surface of the frozen confectionery, and the coating may be chocolate (Abstract; C1, L31-33; C2, L52; and C4, L13-14).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Bertrand, to select the fatty composition as the layer (second food item) on top of the food (first food item) in the food product of Watanabe with the expectation of successfully preparing a functional food product. One of ordinary skill in the art would have been motivated to do so because Watanabe and Bertrand similarly teach multi-layered food products comprising frozen confections and a sugar topping (Watanabe: paragraph [0001]; and Bertrand: Abstract; C1, L34-35; and C3, L58-60), Bertrand teaches the sugar topping is susceptible to loss of crispiness through hygroscopy, a quality which is considered to be crucial from the organoleptic point of view, the fatty composition acts as a moisture barrier with respect to the frozen confectionery, and the sugar topping retains its crispiness both in storage and on consumption (C1, L28-29; C2, L2-3; and C4, L4-6), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish an entirely expected result. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Regarding the recitation of a caramel portion, the caramel portion being on a surface of the second food item opposite to the first food item in claim 1, modified Watanabe teaches this limitation since Watanabe teaches the food product comprises a top layer of caramel (paragraphs [0001]-[0003] and [0034]).
Regarding the recitation of at least a portion of the caramel portion being composed of an amount of sugar added to the surface of the second food item and an amount of the second food item, at least a portion of the amount of sugar and the amount of the second food item having been melted together and then cooled to form the caramel portion as a solidified heated product of sugar in claim 1, modified Watanabe teaches this limitation since Watanabe teaches the surface of the multi-layered food product is heated to caramelize the sugar and soften the food ingredients without melting the frozen food (first food item), and the baked surface is hardened upon cooling (paragraphs [0001]-[0003], [0006], [0014], [0016], [0021], [0024], [0034], and [0035]). Additionally, Bertrand is relied upon for the teaching of the second food item as addressed above and also teaches when the surface of the fatty substance (second food item) is soft, the cooked sugar topping adheres to the fatty coating surface prior to solidification (C1, L34 and 61-65; and C3, L58-60).
With respect to claim 4, Watanabe teaches a method of producing a food product (paragraph [0001]).
Regarding the recitation of “for manufacturing a food item” in the preamble of claim 4, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of comprising coating at least a portion of a surface of a first food item with a second food item in claim 4, Watanabe teaches the food product may be a multi-layer structure of one or more layers (second food item) stacked on top of the food (first food item) (paragraphs [0014] and [0034]).
Regarding the recitation of wherein the first food item is at least one type of food item selected from a food item group consisting of pudding, creme brulee, custard pudding, ice cream, iced milk having a milk solids content of at least 10% and a milk fat content of at least 3%, lacto ice having a milk solids content of at least 3%, sherbet, and yogurt, the first food item being filled in a container having an opening in claim 4, Watanabe teaches a containerized food (first food item), such as pudding, ice cream, and yogurt. The container comprises an opening, and the food (first food item) is filled into the container first (paragraphs [0001], [0011], [0013], [0019], and [0034]-[0036]; and Fig. 1)
Regarding the recitation of and the second food item is at least one type of food item selected from a food item group consisting of chocolate, quasi chocolate, chocolate confectionery, quasi chocolate confectionery, Nama-Chocolate, and food containing cocoa butter, fat, and oil, the second food item being in a solid form on the first food item, the second food item being placed so as to coat the surface of the first food item filled in the container, the surface of the first food item being located on an opening side of the container in claim 4, Watanabe teaches the food product may be a multi-layer structure of two or more layers stacked in the container with the food (first food item) being filled into the container first, and the container will be filled at least twice. The coating layer(s) may be in solid form (paragraphs [0013], [0014], [0020], and [0034]).
However, Watanabe does not expressly disclose the layer (second food item) on top of the food (first food item) is at least one type of food item selected from a food item group consisting of chocolate, quasi chocolate, chocolate confectionery, quasi chocolate confectionery, Nama-Chocolate, and food containing cocoa butter, fat, and oil.
Bertrand teaches an article of ice confectionery that is coated with a fatty composition. The coating is applied to the upper surface of the frozen confectionery, and the coating may be chocolate (Abstract; C1, L31-33; C2, L52; and C4, L13-14).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Bertrand, to select the fatty composition as the layer (second food item) placed on top of the food (first food item) in the process of Watanabe with the expectation of successfully preparing a functional food product. One of ordinary skill in the art would have been motivated to do so because Watanabe and Bertrand similarly teach preparing multi-layered food products comprising frozen confections and a sugar topping (Watanabe: paragraph [0001]; and Bertrand: Abstract; C1, L34-35; and C3, L58-60), Bertrand teaches the sugar topping is susceptible to loss of crispiness through hygroscopy, a quality which is considered to be crucial from the organoleptic point of view, the fatty composition acts as a moisture barrier with respect to the frozen confectionery, and the sugar topping retains its crispiness both in storage and on consumption (C1, L28-29; C2, L2-3; and C4, L4-6), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish an entirely expected result. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Regarding the recitation of then placing sugar on a surface side of the second food item opposite to the first food item in claim 4, modified Watanabe teaches this limitation since Watanabe teaches coating the surface of the multi-layered food product with sugar (paragraphs [0001], [0014], [0020], [0021], [0034], and [0035]).
Regarding the recitations of then, heating the surface side of the second food item opposite to the first food item together with the sugar to melt the sugar; and then, cooling the heated product containing the melted sugar to solidify the heated product containing the melted sugar in claim 4, modified Watanabe teaches this limitation since Watanabe teaches the surface of the multi-layered food product is heated to caramelize the sugar coating, and the baked surface is hardened upon cooling (paragraphs [0001]-[0003], [0006], [0014], [0016], [0021], [0024], [0034], and [0035]).
With respect to claim 5, modified Watanabe is relied upon for the teaching of the method of claim 4 as addressed above.
Regarding the recitation of “for manufacturing the food item” in the preamble of claim 5, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of wherein heating the surface side of the second food item opposite to the first food item together to melt the sugar causes caramelization of the sugar in claim 5, modified Watanabe teaches this limitation since Watanabe teaches the surface of the multi-layered food product is heated to caramelize the sugar (paragraphs [0001]-[0003], [0006], [0014], [0016], [0021], [0024], [0034], and [0035]).
Claims 6-12 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. JPH09252737 (hereinafter “Watanabe”) (refer to the corresponding machine translation) in view of Bertrand et al. US 5798131 (hereinafter “Bertrand”) as applied to claims 1 and 4 above, and in further view of Asama et al. US 5766659 (hereinafter “Asama”).
With respect to claims 6 and 7, modified Watanabe is relied upon for the teaching of the method of claim 4 as addressed above.
Regarding the recitation of “for manufacturing the food item” in the preamble of claims 6 and 7, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitations of when the at least a portion of the surface of the first food item is coated with the second food item, the second food item has a thickness of between 0.8 mm and 7.0 mm in claim 6 and when the at least a portion of the surface of the first food item is coated with the second food item, the second food item has a thickness of between 1.0 mm and 5.0 mm in claim 7, modified Watanabe does not expressly disclose the claimed thickness.
Asama teaches an oily composition between ingredients in frozen food. The oily composition comprises chocolate, and the frozen food may include frozen dessert. The upper surface of one ingredient (frozen dessert) is coated with the oily composition and then brought into contact with the other ingredient. Moisture migration is inhibited when using the oily composition about 2 mm or more in thickness (C1, L5-7 and 15-18; C2, L35-36; C4, L19-25; and C5, L3-7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invent to select any portions of the disclosed ranges, including the instantly claimed ranges of thickness, from the range disclosed in the prior art with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Watanabe and Asama similarly teach preparing multi-layered food products comprising frozen confections and Asama teaches moisture migration between the ingredients can be inhibited and food having good quality and mouthfeel can be obtained (C4, L29-34; and C6, L16-21). There would have been a reasonable expectation of success. "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages " In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
With respect to claim 8, modified Watanabe is relied upon for the teaching of the method of claim 6 as addressed above.
Regarding the recitation of “for manufacturing the food item” in the preamble of claim 8, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of wherein, as a result of heating the surface side of the second food item opposite to the first food item together with the sugar to melt the sugar, at least a portion of the second food item and at least some of the sugar are mixed and then fixed when the heated product containing the melted sugar is solidified in claim 8, the features of at least a portion of the second food item and at least some of the sugar are mixed and then fixed when the heated product containing the melted sugar is solidified would naturally occur from said heating and cooling steps since these features are an intended result of the claimed process. Additionally, Watanabe teaches the surface of the multi-layered food product is heated to caramelize the sugar and soften the food ingredients without melting the frozen food (first food item), and the baked surface is hardened (paragraphs [0001]-[0003], [0006], [0014], [0016], [0021], [0024], [0034], and [0035]). Further, Bertrand and Asama are relied upon for the teaching of the second food item as addressed above in claim 6. Bertrand teaches when the surface of the fatty substance (second food item) is soft, the cooked sugar topping adheres to the fatty coating surface prior to solidification (C1, L34 and 61-65; and C3, L58-60), and Asama teaches one ingredient is coated with the oily composition and then brought into contact and mixed with the other ingredient (C4, L19-25). However, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
With respect to claim 9, Watanabe teaches a method of producing a food product (paragraph [0001]).
Regarding the recitation of “for manufacturing a food item” in the preamble of claim 9, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of placing a first food item into a container, the container having an opening, the first food item being at least one type of food item selected from a food item group consisting of pudding, creme brulee, custard pudding, ice cream, iced milk having a milk solids content of at least 10% and a milk fat content of at least 3%, lacto ice having a milk solids content of at least 3%, sherbet, and yogurt in claim 9, Watanabe teaches a containerized food (first food item), such as pudding, ice cream, and yogurt. The container comprises an opening, and the food (first food item) is filled into the container first (paragraphs [0001], [0011], [0013], [0019], and [0034]-[0036]; and Fig. 1)
Regarding the recitation of then coating at least a portion of a surface of the first food item with a second food item being in solid form on the first food item, containing fat and oil, and being in solid state, the surface of the first food item being located proximate to the opening of the container in claim 9, Watanabe teaches the food product may be a multi-layer structure of two or more layers stacked in the container with the food (first food item) being filled into the container first, and the container will be filled at least twice. The coating layer(s) may be in solid form (paragraphs [0013], [0014], [0020], and [0034]).
However, Watanabe does not expressly disclose the layer (second food item) on top of the food (first food item) contains fat and oil.
Bertrand teaches an article of ice confectionery that is coated with a fatty composition. The coating is applied to the upper surface of the frozen confectionery (Abstract; C1, L31-33 and C4, L13-14).
Asama teaches an oily composition between ingredients in frozen food. The oily composition comprises fats and oils, and the frozen food may include frozen dessert. The upper surface of one ingredient (frozen dessert) is coated with the oily composition and then brought into contact with the other ingredient (C1, L5-7 and 15-18; C2, L53-63; C4, L19-25; and C5, L3-7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Bertrand and Asama, to select the fatty/oily composition as the layer (second food item) placed on top of the food (first food item) in the process of Watanabe with the expectation of successfully preparing a functional food product. One of ordinary skill in the art would have been motivated to do so because Watanabe, Bertrand, and Asama similarly teach preparing multi-layered food products comprising frozen confections, Watanabe and Bertrand similarly teach food products comprising frozen confections and a sugar topping (Watanabe: paragraph [0001]; and Bertrand: Abstract; C1, L34-35; and C3, L58-60), Bertrand teaches the sugar topping is susceptible to loss of crispiness through hygroscopy, a quality which is considered to be crucial from the organoleptic point of view, the fatty composition acts as a moisture barrier with respect to the frozen confectionery, and the sugar topping retains its crispiness both in storage and on consumption (C1, L28-29; C2, L2-3; and C4, L4-6), Asama teaches moisture migration between the ingredients can be inhibited and food having good quality and mouthfeel can be obtained (C4, L29-34; and C6, L16-21), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish an entirely expected result. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Regarding the recitation of then, placing sugar on a surface of the second food item opposite to the first food item in claim 9, modified Watanabe teaches this limitation since Watanabe teaches coating the surface of the multi-layered food product with sugar (paragraphs [0001], [0014], [0020], [0021], [0034], and [0035]).
Regarding the recitations of then, heating the surface of the second food item opposite to the first food item together with the sugar to melt the sugar to produce a heated product containing the melted sugar, and then, cooling the heated product containing the melted sugar to solidify the heated product containing the melted sugar in claim 9, modified Watanabe teaches this limitation since Watanabe teaches the surface of the multi-layered food product is heated to caramelize the sugar coating, and the baked surface is hardened upon cooling (paragraphs [0001]-[0003], [0006], [0014], [0016], [0021], [0024], [0034], and [0035]).
With respect to claim 10, modified Watanabe is relied upon for the teaching of the method of claim 9 as addressed above.
Regarding the recitation of “for manufacturing the food item” in the preamble of claim 10, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of when the at least a portion of a surface of the first food item is coated with the second food item, the second food item has a thickness of between 0.8 mm and 7.0 mm in claim 10, modified Watanabe teaches this limitation since Bertrand and Asama are relied upon for the teaching of the second food item as addressed above in claim 9, and Asama teaches moisture migration is inhibited when using the oily composition about 2 mm or more in thickness (C2, L35-36). One of ordinary skill in the art would have been motivated to select any portions of the disclosed ranges, including the instantly claimed range of thickness, from the range disclosed in the prior art with the expectation of successfully preparing a functional product because Watanabe and Asama similarly teach preparing multi-layered food products comprising frozen confections and Asama teaches moisture migration between the ingredients can be inhibited and food having good quality and mouthfeel can be obtained (C4, L29-34; and C6, L16-21). There would have been a reasonable expectation of success. "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages " In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
With respect to claims 11 and 12, modified Watanabe is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitations of when the surface of the first food item is coated with the second food item, the second food item has a thickness of between 0.8 mm and 7.0 mm in claim 11 and when the surface of the first food item is coated with the second food item, the second food item has a thickness of between 1.0 mm and 5.0 mm in claim 12, modified Watanabe does not expressly disclose the claimed thickness.
Asama teaches an oily composition between ingredients in frozen food. The oily composition comprises chocolate, and the frozen food may include frozen dessert. The upper surface of one ingredient (frozen dessert) is coated with the oily composition and then brought into contact with the other ingredient. Moisture migration is inhibited when using the oily composition about 2 mm or more in thickness (C1, L5-7 and 15-18; C2, L35-36; C4, L19-25; and C5, L3-7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invent to select any portions of the disclosed ranges, including the instantly claimed ranges of thickness, from the range disclosed in the prior art with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Watanabe and Asama similarly teach preparing multi-layered food products comprising frozen confections and Asama teaches moisture migration between the ingredients can be inhibited and food having good quality and mouthfeel can be obtained (C4, L29-34; and C6, L16-21). There would have been a reasonable expectation of success. "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages " In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
Response to Arguments
Applicant’s remarks filed March 18, 2026 are acknowledged.
Applicant’s arguments have been fully considered, but they are unpersuasive (P6-P24).
Applicant argues using solid chocolate as the second food component is not obvious from either Watanabe, Bertrand, or the combination of Watanabe with Bertrand. Watanabe does not teach or suggest adding sugar to the surface of the coating and then heating the coating and sugar added to the surface of the coating together on top of the frozen dessert. Instead, the coating is a pre-prepared coating that already includes sugar. Alternatively, the coating is only sugar, in which case the sugar is not added onto a coating. Therefore, if anything is a coating in Watanabe, it teaches that such a coating is a liquid, not a solid. Bertrand does not teach or suggest the solid second food item. In fact, it teaches the opposite. Thus, any use of Bertrand by one having skill in the art only would teach away from the features of claims 1, 4, and 9. Asama does not make up for the deficiencies of both Watanabe and Bertrand. There is no teaching, no suggestion, and no motivation in Watanabe, taken alone or in view of Bertrand or Asama, to arrive at each and every element of the independent claims.
Examiner disagrees. 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). In this case, the motivation to combine the references is found within the references themselves as well as in the knowledge generally available to one of ordinary skill in the art.
The claimed invention is obvious in view of Watanabe and Bertrand as well as Watanabe, Bertrand, and Asama. As addressed above, Watanabe teaches the food ingredients to be packed may be of a single layer, or may be of a multi-layer structure of two or more layers. The coating layer(s) may be in solid form. Any food in a container, particularly containers filled with food in multiple layers can be used. In addition to frozen desserts, other foods can also be suitably used. A covering, such as sugar is placed on the top layer of the food, and the surface of the multi-layered food product is heated to caramelize the sugar (paragraphs [0001]-[0003], [0006], [0014], [0016], [0021], [0024], [0034], and [0035]). While Watanabe does not expressly disclose the layer (second food item) on top of the food (first food item) is at least one type of food item selected from a food item group consisting of chocolate, quasi chocolate, chocolate confectionery, quasi chocolate confectionery, Nama-Chocolate, and food containing cocoa butter, fat, and oil (claims 1 and 4) or the layer (second food item) on top of the food (first food item) contains fat and oil (claim 9), Bertrand (Abstract; C1, L31-33; C2, L52; and C4, L13-14) and Asama (C1, L5-7 and 15-18; C2, L53-63; C4, L19-25; and C5, L3-7) are relied upon for these teachings.
One of ordinary skill in the art would have been motivated to select a fatty/oily composition as the layer (second food item) placed on top of the food (first food item) because Watanabe, Bertrand, and Asama similarly teach preparing multi-layered food products comprising frozen confections, Watanabe and Bertrand similarly teach food products comprising frozen confections and a sugar topping (Watanabe: paragraph [0001]; and Bertrand: Abstract; C1, L34-35; and C3, L58-60), Bertrand teaches the sugar topping is susceptible to loss of crispiness through hygroscopy, a quality which is considered to be crucial from the organoleptic point of view, the fatty composition acts as a moisture barrier with respect to the frozen confectionery, and the sugar topping retains its crispiness both in storage and on consumption (C1, L28-29; C2, L2-3; and C4, L4-6), Asama teaches moisture migration between the ingredients can be inhibited and food having good quality and mouthfeel can be obtained (C4, L29-34; and C6, L16-21), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish an entirely expected result.
While Bertrand and Asama do not disclose all of the features of the presently claimed invention, the secondary references Bertrand and Asama are used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981).
Additionally, as stated in MPEP 2145 III., “[t]he 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.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]I is not necessarily that the inventions of the references be physically combinable to render obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve the ability to combine their specific structures.”).
Conclusion
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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