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 . Claims 9, 11-14, 21 and 23-28 are examined herein.
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 1-2, 5-9, 11-14 and 18-22 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.
In claim 9 a broad range or limitation is presented together with a narrow range or limitation that falls within the broad range or limitation (in the same claim), therefore the claim is considered indefinite because it does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the narrow recitation of a total content of component A and component C is 1.0 to 300 ppb; and broadly requires: the content of component A is 100 ppm and the content of component C is 1.0 to 300 ppm.
The claim herein is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
With regard to the prior art, the phrase: “the total content of component A and component C is 1.0 to 300 ppb”, encompasses:
100 ppb of component A; and
1.0 to 300 ppb of component C.
The claim similarly recites narrow and broad limitations for the mass ratio of components B and D, 3:7 to 7:3, wherein the total content of component B is claimed as 0.5 to 100 ppb, and component D is claimed as 0.5 to 150 ppb.
With regard to the prior art, the phrase: “the mass ratio of component B to component D is 3:7 to 7:3”, encompasses:
0.5 to 100 ppb of component B; and
0.5 to 150 ppb of component D.
Claim Interpretation
With regard to the prior art, Claim 9 encompasses:
An acetic acid-containing food, comprising:
based on the total amount of the acetic acid-containing food:
0.02 to 15 w/v% of acetic acid;
1.0 to 100 ppb of isobutanal (i.e. component A);
0.5 to 100 ppb of butanal (i.e. component B);
1 to 300 ppb of 2methylbutanal, (i.e. component C);
0.5 to 150 ppb of pentanal (i.e. component D);
2 to 15000 ppb of isobutyl acetate (i.e. component E); and
10 to 35000 ppb of butyl acetate (i.e. component F).
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.
Claims 9, 14, 21 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Ney (US 3,865,952) in view of the combination of Kim, Ney2 (US 3,924,014), Ley (US 2008/0220140), Eliasof (US 2010/0247669), Rizzolo, Clark and OECD.
Kim: Physicochemical Properties and Antioxidant Activities of Commercial Vinegar Drinks in Korea; Food Sci. Biotechnol. 21(6): 1729-1734 (2012); received: 1 June 2012, revised: 27 July 2012, accepted: 24 August 2012, published online: 31 December 2012.
Rizzolo: BEVERAGES BASED ON RICOTTA CHEESE WHEY AND FRUIT JUICES; Ital. J. Food Sci., vol. 30, 2018 – 289.
Clark: The Butyl Acetates; Perfumer & Flavorist; Vol. 26, July/August 2001.
OECD: ISOBUTANAL: CAS No: 78-84-2; SIDS Initial Assessment Report for SIAM 5; Belgirate, Italy, 28-30 October 1996; Revised September, 2004.
Independent claim 9
Ney teaches methods of making flavored foodstuff (i.e. food) (ab.) comprising acetic acid types (3, 39+), therefore provides acetic acid foods.
Acetic acid
Ney provides that the food comprises alkanoic acids, including acetic acid types (3, 39+).
Ney does not discuss the claimed amount of acetic acid in the foodstuff compositions.
Kim also teaches about foodstuff comprising acetic acid, and further shows that it was known to use from 0.84 to 4.33 w/v% (Table 3), which encompasses the use of 0.02 w/v% to 15 w/v% of acetic acid, in food compositions, as claimed. Kim further provides that the use of acetic acid in foodstuff, including drinks comprising acetic acid, provide physiological health benefits, including: an immune modulation effect, suppression of cardiovascular disease, prevention of appetite increase, an increase in digestion absorption, and decreases in: serum cholesterol level, arterial stiffening, and blood pressure.
It would have been obvious to one of skill in the art, at the time of filing to modify foodstuff comprising acetic acid, as Ney, to include 0.02 w/v% or more of acetic acid, as claimed, because: Kim provides encompassing amount of acetic acid in foodstuff, which shows that it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed amounts of acetic acid when making foodstuff comprising it, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious.
Butanal (component B) and Pentanal (component D)
Ney provides that the food comprises flavorings, including types known for cheese flavor, including: butanal (component B) and pentanal (component D) (3, 43+), as claimed.
Ney provides amounts of these cheese type flavors are used from 300 to 3,000 mg/kg (300 to 3,000 ppm) per foodstuff (3, 32+), which imparts a range that is close to the claimed combination of: 0.1 to 100 ppb of butanal and 0.5 to 150 ppb of pentanal (a total of 0.6 to 250 ppb).
Herein other factors/consideration include that Ney provides for other cheese type flavonoids to be used, therefore give the use of more than butanal and pentanal types, as discussed above, one would expect that the total amounts of would reach up to or above 300 ppm, as taught, therefore a provide a basis for concluding that it would have been obvious to one of ordinary skill in the art to bridge the gap, wherein amounts of butanal and pentanal, in combination would be less than 300 ppm, which encompasses the claimed range, because: The "mere existence of differences between the prior art and an invention does not establish the invention's nonobviousness." Dann v. Johnston, 425 U.S. 219, 230, 189 USPQ 257, 261 (1976), cited in MPEP Appendix II: List of Decisions Cited.
Therefore, it would have been obvious to one of skill in the art, at the time of filing/the invention to modify the method of making foodstuff, as the modified teaching above, to include the claimed combination of: 0.1 to 100 ppb of butanal and 0.5 to 150 ppb of pentanal (a total of 0.6 to 250 ppb), because Ney imparts that a total amount of these and other of these types of flavonoids are used from 300 to 3,000 mg/kg (300 to 3,000 ppm) per foodstuff (3, 32+), which imparts that the butanal and pentanal would be used in a lessor amount that the total, less than 300 ppm each, which shows that it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed amounts of butanal and pentanal when making foodstuffs, as claimed, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious.
Other flavor volatiles
Although one in the art would understand that flavor volatiles are typically used for the flavor they impart to a foodstuff being made, or inherently provided through food ingredients that naturally comprise, wherein the types and amounts are a matter of design choice, based on the types and amount of desired flavor of the foodstuff being made, the teaching above does not discuss the use of all of the specifically claimed types.
2-methylbutanal (component C);
The modified teaching provides the use of flavor volatiles, however, does not discuss the use of 2-methylbutanal, as claimed.
Ney2 also teaches about making foodstuffs with cheese flavorings mixtures (ab.) including acetic acid (3, 30+) and butanal (4, 5+) and further provides the use of alkanals, including: 2-methylbutanal (component C) (4, 5+), and does not limit the amount, therefore encompasses the claimed range of 1 to 300 ppb.
Ney2 also teaches about making foodstuffs with cheese flavorings mixtures (ab.) including acetic acid (3, 30+) and butanal (4, 5+) and further provides the use of alkanals, including: 2-methylbutanal (component C) (4, 5+), and does not limit the amount, therefore encompasses the claimed range of 0.1 to 300 ppb.
Ney2 is not explicit about the amount volatile components in the food compositions.
Ley also teaches about using volatile flavorings in foodstuff (see the Background) and further provides an example of 0.3 ppb 2-methylbutanal in a food preparation (0164), which encompasses the claimed range of 0.1 to 300 ppb of 2-methylbutanal.
It would have been obvious to one of skill in the art, at the time of filing to modify the method of making foodstuff using flavoring volatiles, as the modified teaching above, to include the use of 2-methylbutanal, as claimed, because the combination of Ney2 and Ley shows that it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to do so, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious.
Butyl acetate (component F, a fruit flavoring)
The modified provides the use of flavor volatiles, however does not discuss the use of butyl acetate (component F), as claimed
Eliasof also teaches about edible compositions (0810) comprising flavoring volatiles (1796) and further provides the use of less than 5000 ppm of butyl acetate, which encompasses 10.0 to 35000 ppb of butyl acetate (component F), as claimed.
It would have been obvious to one of skill in the art, at the time of filing to modify the method of making foodstuff comprising flavor volatiles, as the modified teaching above, to include butyl acetate-------------------, as claimed, because Eliasof shows that it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed flavonoid when making foodstuff, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use (see MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious).
Isobutyl acetate (component E)
The modified teaching provides the use of flavor volatiles, however does not discuss the use of isobutyl acetate (component E), as claimed.
Rizzolo provides that it is known for foods comprising: organic acids and cheese flavors to have fruit juices (last two paras. on pg. 290).
Clark provides that is it known for fruit juices to have minor amounts of butyl acetates (see line starting: The estimated worldwide consumption of the natural butyl acetates… in col. 1 of pg. 25), including isobutyl acetate (Table 1).
With regard to the prior art, the term: “minor” encompasses, a small or fractionated amount, therefore Clark provides and amount of butyl acetate in fruit juices that encompasses 2.0 to 15,000 ppb of isobutyl acetate (component E) in food compositions, as claimed.
It would have been obvious to one of skill in the art, at the time of filing to modify the method of making foodstuff, as claimed, to include the use of isobutyl acetate, as claimed, because the combination of Rizzolo and Clark show that shows that it was known fruit juices to be used in foodstuff and Clark provides that fruit juices have isobutyl acetate, as claimed, therefore such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed food ingredient when making foodstuff products, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious.
Isobutanal (an alcohol found in cheese flavorings)
The modified teaching provides the use of flavor volatiles, however does not discuss the use of isobutanal, as claimed.
OECD also teaches about foodstuff, and further provides that there is from 1.0 or less to 5 ppm of isobutanal therein, which encompasses the claim of 1.0 to 100 ppb of isobutanal (component A) in foodstuff.
It would have been obvious to one of skill in the art, at the time of filing to modify foodstuff comprising flavor volatiles, as the modified teaching above, to include isobutanal, as claimed, --------------------------because OSCD shows that it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select this food ingredeient when making foodstuff, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious.
Intended use
Ney teaches the composition is an acetic acid-containing foodstuff (i.e. food) and does not explicitly discuss that foodstuff, includes liquids (i.e. drinks), however, in this case the teaching of the use of the foodstuffs encompasses both types of food because in this specific case the various permutations of types of it in the generic are so small (e.g. solids, liquids, or gels) that the teaching is as comprehensive and fully as if it had written the name of each permutation.
Therefore, it would have been obvious to one of skill in the art, at the time of filing/the invention to modify the method of making foodstuff, as Ney, to include the specifically claimed types, liquids (i.e. drinks), as claimed, because in this specific case the various permutations of types of structure comprised in the generic are so small (e.g. 3) that the teaching is as comprehensive and fully as if it had written the name of each permutation.
Further, the modified teaching in Kim, imparts that foodstuff comprising acetic acid, includes drinks, as discussed above.
In summary, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods of making foodstuff with acetic acid, including beverages/drinks thereof, with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. The prior art included each element claimed although not necessarily in a single reference, and one of ordinary skill in the art could have combined the elements as claimed by known methods of making foodstuff, and in combination, each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Further, a predictable use of prior art elements according to their established functions to achieve a predictable result is prima facie obvious. See KSR Int'l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
Further, it is long and commonly known that the object of for people of skill for cooking (e.g. cooks, chefs, and bakers) is to use or eliminate common ingredients to formulate food that is palatable. Such an act, the formulation or creation a food recipe, is not patentable because it does not make a scientific advancement in the field unless a new/novel reaction, coaction or cooperative relationship is made evident by such a creation. In other words, the act of making food or food recipes that taste good, even if the combination of the ingredients is not known or has not been done before, is not patentable subject just because it was done.
Therefore, absent a specific showing that establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function, the claimed food formula for making a nutritional composition that use or eliminate common ingredients, does not amount to invention in the constantly developing art of preparing food because there is no specific showing that establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function.
Further, attention is invited to In re Levin, 84 USPQ 232, although not discussed in the MPEP, this case and the cases cited therein, which are considered in point in fact situation of this specific instant case.
At page 234, the Court stated as follows: This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Dependent claims
As for claim 14, as discussed above, the modified makes obvious and provides that the foodstuff comprises liquid food (i.e. drinks).
As for claim 21, the modified teaching, in Kim, as discussed above, provides that it was known to use from 0.84 to 4.33 w/v% in foodstuffs (Table 3), which encompasses the use of 0.02 to 4 w/v% of acetic acid, in food compositions, as claimed.
As for claim 27, since the modified teaching above provides a similar composition consisting of similar ingredients, in similar amounts, it would be reasonable to expect that the similar composition would function similarly and have similar uses, including being capable as a food seasoning, as claimed, absent a showing of criticality, because the teaching of a similar composition imparts a suggestion in or expectation that the composition taught will have the same or a similar utility.
Therefore, it would have been obvious to one of skill in the art, at the time of filing/the invention to modify the method of making food, as the modified teaching above, to include it is capable as a food seasoning, as claimed, because based on the close structural and chemical similarity, and the fact that both the prior art and the claims use similar types of ingredients, it would have been obvious from the combined teachings that the composition taught would have similar uses because the claims are not physically or structurally distinguishable over the combined prior art composition.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ney (US 3,865,952) in view of the combination of Kim, Ney2 (US 3,924,014), Ley (US 2008/0220140), Eliasof (US 2010/0247669), Rizzolo, Clark and OECD, as applied to claims 9, 14, 21 and 27 above, further in view of Rizzolo.
Rizzolo: BEVERAGES BASED ON RICOTTA CHEESE WHEY AND FRUIT JUICES; Ital. J Food Sci., vol. 30, 2018
As for claim 11, Ney does not discuss the use of fruit juice in foodstuff comprising cheese flavors, as claimed, as in claims 11-13.
Rizzolo provides that it is known for foodstuff comprising: organic acids and cheese flavors to have fruit juices (last two paras. on pg. 290).
It would have been obvious to one of skill in the art, at the time of filing to modify the method of making liquid food stuff (i.e. beverages) comprising organic acids and cheese flavorings, as the modified teaching above, to include the use of fruit juices, as claimed, because Rizzolo shows that it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed food ingredient when making foodstuff products, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious.
As for claim 12, the modified teaching, in Rizzolo provides that the fruit juice is used in an amount of 80 mass% (last two paras. on pg. 290), which encompasses the claim of from 0.2 to 700 mass%.
As for claim 13, the modified teaching, in Rizzolo provides that the type of fruit juice includes: apple, pear, blueberry and strawberry (last two paras. on pg. 290), which encompasses wherein the fruit juice is apple juice, blueberry juice, and strawberry juice.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Ney (US 3,865,952) in view of the combination of Kim, Ney2 (US 3,924,014), Ley (US 2008/0220140), Eliasof (US 2010/0247669), Rizzolo, Clark, OECD, and Rizzolo, as applied to claims 11-13 above, further in view of Djuric.
Djuric: Development of whey-based beverages; Eur Food Res Technol (2004) 219:321–328
As for claims 24, although the modified teaching provides the use of fruit juices, however, does not discuss the specifically claimed type of juice, peach.
Durjic also teaches about foodstuff, including beverages comprising whey, as the modified teaching in Rizzolo, and further provides that said food/beverages comprise peach juice (see the ab.), as claimed
Durjic also provides that beverage with the peach juice has the highest flavour value listed, therefore shows its use for excellent flavor/taste, which imparts an advantages to its use (see MPEP 2144.II that states: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination).
Therefore, it would have been obvious to one of skill in the art, at the time of filing to modify the method of making foodstuffs, including beverages with whey and fruit juice, to include the specifically claimed type of fruit juice, peach, because Durjic shows, that:
1) it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the specifically claimed type of fruit juice when making foodstuff including beverages with whey, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use (see MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious); and
2) there are advantages to doing such a thing, including that peach juice has an excellent flavor and delicious taste, which imparts a recognition in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that beneficial result would have been produced by their combination (see MPEP 2144.II that states: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Ney (US 3,865,952) in view of the combination of Kim, Ney2 (US 3,924,014), Ley (US 2008/0220140), Eliasof (US 2010/0247669), Rizzolo, Clark, OECD, and Rizzolo, as applied to claims 11-13 above, further in view of Shakhale.
Shakhale: Studies on the Development and Storage of Whey based RTS Beverage from Mango cv. Kesar; , J Food Process Technol, published in Vol. 3, Issue 3 of 2012.
As for claims 25, although the modified teaching provides the use of fruit juices, however, does not discuss the specifically claimed type of juice, mango.
Shakhale also teaches about foodstuff, including beverages comprising comprising whey, as the modified teaching in Rizzolo, and further provides that said food/beverages comprise mango juice (see the ab.), as claimed
Shakhale also provides that mango has an excellent flavor, an attractive fragrance, a delicious taste and high nutritional value, which imparts advantages to its use (see MPEP 2144.II that states: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination).
Therefore, it would have been obvious to one of skill in the art, at the time of filing to modify the method of making foodstuffs, including beverages with whey and fruit juice, to include the specifically claimed type of fruit juice, mango, because Shakhale shows, that:
1) it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the specifically claimed type of fruit juice when making foodstuff including beverages with whey, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use (see MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious); and
2) there are advantages to doing such a thing, including that mango has an excellent flavor, an attractive fragrance, a delicious taste and high nutritional value, which shows a recognition in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that beneficial result would have been produced by their combination (see MPEP 2144.II that states: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination).
Claim 23 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Ney (US 3,865,952) in view of the combination of Kim, Ney2 (US 3,924,014), Ley (US 2008/0220140), Eliasof (US 2010/0247669), Rizzolo, Clark, OECD, Rizzolo, and Shakhale.
Independent claims 23 and 28
Claims 23 and 28 recited a similar acetic acid-containing food, as discussed in the rejection of claim 9 above, wherein the references applied therein are incorporated herein.
Mango juice or peach juice
The modified teaching provides the use of fruit juices, however, does not discuss the specifically claimed type of juice, mango.
Shakhale also teaches about foodstuff, including beverages comprising comprising whey, as the modified teaching in Rizzolo, and further provides that said food/beverages comprise mango juice (see the ab.), as claimed
Shakhale also provides that mango has an excellent flavor, an attractive fragrance, a delicious taste and high nutritional value, which imparts advantages to its use (see MPEP 2144.II that states: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination).
Therefore, it would have been obvious to one of skill in the art, at the time of filing to modify the method of making foodstuffs, including beverages with whey and fruit juice, to include the specifically claimed type of fruit juice, mango, because Shakhale shows, that:
1) it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the specifically claimed type of fruit juice when making foodstuff including beverages with whey, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use (see MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious); and
2) there are advantages to doing such a thing, including that mango has an excellent flavor, an attractive fragrance, a delicious taste and high nutritional value, which shows a recognition in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that beneficial result would have been produced by their combination (see MPEP 2144.II that states: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination).
On the use of peach and mango juice: since the claims provided an option of peach or mango juice, and mango juice was elected for the sake of examination, the teaching above encompasses its use, and the claim of the alternative makes no distinction over the rejection above.
Intended use
With regard to the prior art, the term: drink, encompasses: a liquid food; and seasoning, encompasses: an ingredient or mixture of ingredients that when added to other foods enhance or adds to their flavor.
As for the food being a drink/beverage (i.e. a liquid food), as in claim 23: please see the discussion toward the modified teaching, in Rizzolo above, as incorporated herein.
As for the food being a seasoning (i.e. something that imparts a flavor to other foods), as in claim 28: since the modified teaching above provides a similar composition consisting of similar ingredients, in similar amounts, it would be reasonable to expect that the similar composition would function similarly and have similar uses, including being capable as a food seasoning, as claimed, absent a showing of criticality, because the teaching of a similar composition imparts a suggestion in or expectation that the composition taught will have the same or a similar utility.
Therefore, it would have been obvious to one of skill in the art, at the time of filing/the invention to modify the method of making food, as the modified teaching above, to include it is capable as a food seasoning, as claimed, because based on the close structural and chemical similarity, and the fact that both the prior art and the claims use similar types of ingredients, it would have been obvious from the combined teachings that the composition taught would have similar uses because the claims are not physically or structurally distinguishable over the combined prior art composition.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Ney (US 3,865,952) in view of the combination of Kim, Ney2 (US 3,924,014), Ley (US 2008/0220140), Eliasof (US 2010/0247669), Rizzolo, Clark, OECD, Rizzolo, and Shakhale, as applied to claims 23 and 28 above, further in view of SA.
SA: Sigma-Aldrich: Flavor & Fragrance Standards For the Food and Cosmetic Industry; copyright 2014.
As for claim 26, the modified teaching discusses the use of cheese type flavor additives, however does not discuss the use of the specifically claimed species thereof, isovaleric acid.
SA also teaches about ingredients which function to enhance flavor/fragrence in foods, including the use of isovaleric acid (see the discussion at the top of pg. 5, then the specifically claimed ingredient discussed as Cat. No. 78651 on pg. 7).
It would have been obvious to one of skill in the art, at the time of filing to modify the method of making foods with flavors/fragrances, as the modified teaching above, to include the use of the claimed type, iso-valeric acid----------------------------, as claimed, because SA shows, that:
1) it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select iso-valeric acid when making foods, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use (see MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious); and
2) there are advantages to doing such a thing, including that its use in food functions for flavoring/fragrance, which shows a recognition in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that beneficial result would have been produced by their combination (see MPEP 2144.II that states: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination).
Response to Arguments
It is asserted, that during the interview, the Examiner relied on OECD, asserting that "OECD provides that there is from 1.0 ppm or less in foodstuff (see section 2.3.2, of the short reference), which encompasses the claimed/proposed amounts." However, the upper part of the description in 2.3.2 of OECD states: "Reported average concentrations of isobutanal in food range from 5.0 ppm in alcoholic beverages to 0.5 to 1.0 ppm in baked good, 0.67 ppm in candy, 0.25 to 0.50 ppm in ice cream, and 0.3 ppm in non-alcoholic beverages (Furia, T.E., and Bellanca, N., 1975)." Accordingly, the description "1.0 ppm or less" cited by the Examiner is a statement that comprehensively expresses the above. Therefore even with reference to the above description that indicates specific values, the minimum representative value of the citation = 0.25 ppm (=250 ppb) > the upper limit of the present application, 100 ppb. All other representative values are also > 300 ppb, and there is a clear gap with the range of the present application (1-100 ppb).
In response, the examiner does not agree with this summary of the OECD, as the reference clearly provides the use of from 1.0 ppm or less in foodstuff (see section 2.3.2, of the short reference), which encompasses the claimed amount/s.
All other arguments are toward claim amendments, treated herein, therefore please see the modified rejections thereof, above, necessitated by said amenmdments.
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 PATRICIA ANN GEORGE whose telephone number is (571)272-5955. The examiner can normally be reached T-TH 9:00 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571)272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Patricia George
Primary Examiner
Art Unit 1793
/PATRICIA A GEORGE/Primary Examiner, Art Unit 1793