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 .
This Office Action is in response to applicant’s submission dated December 11, 2025, any rejections and/or objections made in previous actions and not repeated below are hereby withdrawn.
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.
Claims 1-7 and 9-18 are 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.
The term “a specific solid-mixture portion” and “a quantity of hot water” in claim 1, Page 3, Lines 1-4, is a relative term which renders the claim indefinite. The term “a specific solid-mixture portion” and “a quantity of water” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purposes of examination, “a specific solid-mixture portion” will be interpreted as meaning a single portion, and “a quantity of hot water” will be interpreted to mean an amount of water that is less than the total volume of the container.
Due to their dependency on claim 1, claims 2-7 and 9-18 are rejected.
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 1-6, 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hoenis (3869555) in view of Olson (Coffee Cinnamon Lollipops, LCBO.com) and Albritton (Wise Traditions in Food, Farming and the Healing Arts, westonaprice.org).
With respect to Claim 1, Hoenis teaches dry beverage articles adapted to be packaged in the absence of liquid, in order to be mixed with liquid in order to produce a beverage, such as coffee. [Col. 1, Ln. 1-9] Hoenis teaches a composition that is an encapsulated dry beverage article [Col. 1, Ln. that can comprise instant coffee, sweetener, and cream [Col. 1, Ln. 8-13] and is enclosed by a flavored shell. [Col. 1, Ln. 29-34] Additionally, the composition is attached to a stick [Col. 3, Ln. 14-15 and wrapped in a plastic wrapper. [Col. 4, Ln. 65] Additionally, Hoenis teaches that the method of making the composition comprises providing an amount of coffee powder [Col. 4, Ln. 25-26] and an amount of powdered creamer, [Col. 4, Ln. 32] applying the mixture to cylindrical mold, [Col 4., Ln. 38-39] inserting a stick into the mold, [Col. 4, Ln. 41-43] and wrapping the composition in a plastic wrapper and sealing it. [Col. 4, Ln. 65- Col. 5, Ln. 1]
Hoenis reads on providing an amount of soluble coffee and an amount of powder creamer in step (A), but is silent to the liquid sweetener and the bee pollen. Hoenis reads on providing a plurality of sticks and at least one mold in step (B), but is silent to the mold being comprised of a tray wherein the receptacles are arranged into a grid pattern. Hoenis reads on a soluble coffee and a powdered creamer forming a liquid mixture in step (C), but is silent to bee pollen and the liquid being a sweetener. Hoenis reads on partitioning the mixture from step (C) into a molding receptacle in step (D), but is silent to the receptacle being a plurality of molds. Hoenis reads on inserting a stick into the mold as recited in step (E), on removing the solid-mixture portion from the mold as recited in step (G), and teaches applying a coating in the form of a shell to a powdered capsule, which reads on step (H). Hoenis is silent to the freezing of the composition as recited in steps (F) and (I), but does teach performing the steps taught in sequence. Additionally, Hoenis reads on submerging an amount of the composition into hot water and stirring in order to produce a flavored beverage. [Col. 2, Ln. 3-5]
Olson teaches a lollipop comprising coffee, [Title] golden corn syrup, sugar and water, and ground cinnamon. [Ingredients] Olson teaches the use of lollipop molds [Intro] and teaches that the molds make between 4 and 12 lollipops. [Intro] Olson teaches the use of ice water in order to cool the mixture and set the liquid sweetener into a solid portion. [Num. 3] Olson reads on the use of two liquid sweeteners, as in step (A), a plurality of molds in a single mold tray as recited in steps (B) and (D), and freezing the liquid into a solid as recited in steps (F) and (I).
Both Hoenis and Olson are silent to the use of bee pollen in the composition.
Albritton teaches popsicles [Title] frozen in molds such as silicon [Pg. 2, Par. 3] which can comprise honey and bee pollen, and teaches that bee pollen can be incorporated due to its properties as a super food. [Pg. 5, Par. 1-2]
Hoenis, Olson, and Albritton exist within the same field of endeavor in that they teach molded food products on a stick. Where Hoenis teaches a moldable, dry, instant coffee on a stick, Olson teaches a lollipop that suspends a powder in the form of cinnamon, and Albritton teaches the use of all natural ingredients in frozen confections, such as honey and bee pollen. The invention taught by Hoenis, in view of Olson and Albritton teaches an instant coffee, bee pollen, and powdered creamer composition that can be suspended in a sweetener and covered in a sweetened coating that is on a stick, and can be used by dipping into hot water and stirring until a coffee beverage is produced.
The prior art does not teach the exact steps in the exact order recited, but does teach all the steps of the invention in claim 1. MPEP 2144.04 IV C states, “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”. It would have been obvious to one of ordinary skill in the art to have optimized the order of steps in order to streamline the production of the composition. Additionally, the prior art teaches a plurality of molds, but is silent to the arrangement of the molds in the receptacle. MPEP 2144.04 IV B teaches that the shape of a container does not distinguish over the prior art, stating, “a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant”.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teachings of Hoenis in view of Olson and Tomioka to produce a soluble coffee product by sequentially performing the steps of the method recited in claim 1, and to have used the soluble coffee product to produce a coffee flavored beverage by submerging the composition in hot water and stirring, thereby rendering claim 1 obvious.
With respect to Claims 2-6 and 9, Hoenis in view of Olson and Albritton teaches the invention recited in claim 1, as described above. Hoenis teaches that the composition can comprise equal parts instant coffee and powdered creamer [Col. 4, Ln. 25 and 32] but does not teach a specific amount of each incorporation, and Olson teaches dairy alternatives that can be substituted for dairy cream. [Pg. 3, Par. 1] Olson teaches 1/3 cup golden syrup and 2 cups sugar in 1.5 cups water as the two liquid sweeteners [Ingredients] and Albritton teaches raw honey as a sweetener alternative to processed sugar. [Pg. 5, Par. 2] Olson teaches suspending 0.25 teaspoons powdered cinnamon, [Ingredients] and Albritton teaches the incorporation of bee pollen, but does not teach a specific amount. [Pg. 5, Par. 1] Additionally, the prior art does not teach a specific amount to add to each mold, but Olson teaches that the choice of mold size will determine the amount of yield. [Intro]
MPEP 2144.04 IV A teaches that proportion does not provide a patentably distinguished product over the prior art, stating, “where the only difference between prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, that claimed device was not patentably distinct from the prior art device”. One of ordinary skill in the art would have found it obvious to modify the proportions of the ingredients in order to fill the mold with an appropriate amount of liquid portion, such as the 1 tablespoon recited in claim 6.
The composition taught by Hoenis in view of Olson and Albritton comprises instant coffee and powdered creamer in equal proportions, as recited in claims 2 and 9. The incorporation of two proportions of sweetener and bee pollen teach the general conditions recited in claims 3-5. MPEP 2144.05 II states, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. It would have been obvious to one of ordinary skill in the art, to have determined the optimum amount of each ingredient in order to produce the best composition.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Hoenis in view of Olson and Albritton to produce the composition according to the method recited in claim 1, wherein the ingredients are incorporated according to the amounts recited in claims 2-5 and 9, and the liquid mixture portion placed in the mold is 1 tablespoon, thereby rendering claims 2-6 and 9 obvious.
With respect to Claim 10, Hoenis in view of Olson and Albritton teaches the invention recited in claim 1, as described above. The prior art does not teach a second mold tray or the shape of the mold tray, but Albritton teaches covering the molding receptacle and positioning the stick through a hole into the mold. [Pg. 2, Par. 1] MPEP 2144.04 IV B states, “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” and MPEP 2144.04 VI B states, “that mere duplication of parts has no patentable significance unless a new and unexpected result is produced”.
One of ordinary skill in the art would have found it obvious to have modified the number of molds and the shape of molds in order to determine the optimal shape of the composition. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Hoenis in view of Olson and Albritton to have used two, hemi-spherical molds, with a hole for the stick, and positioning the stick in the hole, thereby rendering claim 10 obvious.
With respect to Claims 11 and 12, Hoenis in view of Olson and Albritton teaches the invention recited in claim 10, as described above. Additionally, Albritton teaches that the mold may be made of silicon. [Pg. 2, Par. 2] Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teachings of Hoenis in view of Olson and Albritton to produce the method according to claim 10, wherein the molds are silicon, thereby rendering claims 11 and 12 obvious.
With respect to claims 13 and 14, Hoenis in view of Olson and Albritton teaches the invention recited in claim 1, as described above. Additionally, Olson teaches heating the sweetener to 305°F before cooling into a hard candy. [Num. 2] Olson teaches the general conditions of the limitations recited in claims 13 and 14, but does not teach the specific temperature. MPEP 2144.05 II states, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Hoenis in view of Olson and Albritton to perform a method of producing a composition according to the method according to claim 1, wherein the second liquid sweetener is heated to 310°F, thereby rendering claims 13 and 14 obvious.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Hoenis (3869555) in view of Olson (Coffee Cinnamon Lollipops, LCBO.com) and Albritton (Wise Traditions in Food, Farming and the Healing Arts, westonaprice.org) as applied to claim 1, in further view of VanderSchuit (US20050083676A1).
With respect to Claim 7, Hoenis in view of Olson and Albritton teaches the invention recited in claim 1, as described above. All references are silent to the use of clear acrylic, but Hoenis teaches the use of any suitable plastic stick. [Col. 3, Ln. 31-33]
VanderSchuit teaches materials that can be used popsicle sticks including plastic materials such as casting acrylic. [0058]
Hoenis, Olson, Albritton, and VanderSchuit exist within the same field of endeavor in that they teach molded food products on a stick. Where Hoenis teaches a moldable, dry, instant coffee on a stick, Olson teaches a lollipop that suspends a powder in the form of cinnamon, Albritton teaches the use of all natural ingredients in frozen confections, such as honey and bee pollen, and Vanderschuit teaches a variety of materials useful as popsicle sticks.
MPEP 2144.07 states, “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297”. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Hoenis, Olson, and Albritton, as applied to claim 1, in view of VanderSchuit, in order to use acrylic as the stick, thereby rendering claim 7 obvious.
Claims 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Hoenis (3869555) in view of Olson (Coffee Cinnamon Lollipops, LCBO.com) and Albritton (Wise Traditions in Food, Farming and the Healing Arts, westonaprice.org) as applied to claim 1, in further view of Roake (Shrink Wrapping Chocolates, packagingblog.org).
With respect to Claims 15 and 18, Hoenis in view of Olson and Albritton teaches the invention recited in claim 1, as described above. All references are silent to the use of a heat gun to shrink wrap the composition, but Hoenis teaches the use of a plastic film wrapper that can be sealed around the stick, [Col. 4, Ln. 65- Col. 5, Ln. 1] and Albritton teaches the use of wax paper in order to prevent leaching of chemicals into foods. [Pg. 8, Par. 4]
Roake teaches the use of shrink wrap materials and equipment in the packaging of confectionary in order to prevent product damage, [Pg. 1, Par. 1] and states that heat guns are commonly used in lower output productions for shrink wrapping. [Pg. 1, Par. 7] Additionally, Roake teaches the use of PVC shrink wrap. [Pg. 1, Par. 3]
Hoenis, Olson, Albritton, and Roake exist within the same field of endeavor in that they teach food products and methods or storage and transportation. Where Hoenis teaches the use of plastic wrap, Olson teaches a candy on a stick, Albritton teaches wax paper, and Roake teaches PVC shrink film. It would have been obvious to use the wax paper taught by Albritton to prevent the leaching of plastics into the food, and the PVC shrink wrap of Roake in order to increase the shelf life of the composition.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Hoenis in view of Olson and Albritton to produce a composition according to the method recited in claim 1, in further view of Roake, in order to add a method step, wherein a non-stick wrapping is applied to the composition, then PVC shrink film is applied to the wrapper, and a heat gun is used to seal the composition, thereby rendering claim 15 and 18 obvious.
With respect to Claim 16 and 17, Hoenis in view of Olson and Albritton and in further view of Roake teaches the invention recited in claim 15, as described above. All references are silent to the use of ribbons as an indicator of the caffeine content of the composition, but Hoenis teaches a tear strip for the sanitary removal of the plastic wrapper [Col. 2, Ln. 28-29] and Olson teaches the use of a ribbon to adorn the lollipop container. [Pic. 1]
MPEP 2111.05 teaches, “a limitation is printed matter only if it claims the content of information”. The ribbon recited in claims 16 and 17 do not impart a functional limitation to the composition recited as the plastic wrap is sealed by the heat gun, but does impart information, specifically, the caffeine content of the coffee. MPEP 2111.05 I B. states, “Where a product merely serves as a support for printed matter, no functional relationship exists. These situations may arise where the claim as a whole is directed towards conveying a message or meaning to a human reader independent of the supporting product”. Therefore, the limitations recited in claims 16 and 17 do not provide additional patentable weight over the teachings of the prior art of record.
Response to Arguments
Applicant’s arguments with respect to claims 1-7 and 9-18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant asserts on Page 10, Par. 3, “"Obviousness is determined as a matter of foresight, not hindsight." In re Vaidyanathan, 381 Fed. Appx. 985, 994 (Fed. Cir. 2010). One form of impermissible hindsight reasoning is using the invention as a roadmap to combine components found in the prior art. Ruiz V. A.B. Chance Co., 357 F.3d 1270, 1275 (Fed. Cir. 2004). It is respectfully noted that the Examiner appears to be applying hindsight with regard to this particular combination.”
MPEP 2145 X A. states, “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper”. The reconstruction of record made by the examiner is based on the knowledge that existed in the field of endeavor before the effective filing date of the invention, as taught by the prior art of record.
For this reason, applicant’s argument is found to be unpersuasive.
Applicant asserts on Page 10, Par. 5, “the Examiner is reminded that, pursuant to MPEP 707.07(g), a piecemeal examination should be avoided as much as possible. The examiner ordinarily should reject each claim on all valid grounds available, avoiding however, undue multiplication of references”.
MPEP 2145 V states, “Reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991) (Court affirmed a rejection of a detailed claim to a candy sucker shaped like a thumb on a stick based on thirteen prior art references.)”.
For this reason, applicant’s argument is found to be unpersuasive.
For these reasons, and those stated above, the rejections of claims 1-7 and 9-18 are upheld.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JOSEPH CULLEN MERCHLINSKY whose telephone number is (571)272-2260. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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/J.C.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791