DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 08/19/2025 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment: the objections to claims 7-8 have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-13
Withdrawn claims: 13
Previously cancelled claims: 1-12
Newly cancelled claims: 1-12
Amended claims: 1, 7-8
New claims: None
Claims currently under consideration: 1-12
Currently rejected claims: 1-12
Allowed claims: None
Claim Warning
Applicant is advised that should claim 1 be found allowable, claim 2 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claims 1-12 are rejected under 35 U.S.C. 112(b) 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.
Claim 1 recites that “the microbial contamination free packed spice powder retains said aroma, essential oils, taste, color, chemical compounds, and antioxidant properties”. However, the claim does not provide a basis of comparison with which to compare the retention of aroma, essential oils, taste, color, chemical compounds, and antioxidant properties in the microbial contamination free packed spice powder (e.g., the microbial contamination free packed spice powder retains its aroma compared to the aroma of the spice prior to drying). Furthermore, it is unclear if the claim requires the method to produce spice powder which retains all of the aroma, essential oils, taste, color, chemical compounds, and antioxidant properties (i.e., 100% retention of the components); or at least some amount of each of the aroma, essential oils, taste, color, chemical compounds, and antioxidant properties (i.e., less than 100% retention of the components). Therefore, the claim is indefinite.
For the purpose of this examination, the claim will be interpreted as meaning that the microbial contamination free packed spice powder retains at least some of each of the aroma, essential oils, taste, color, chemical compounds, and antioxidant properties when compared to the spice prior to grinding.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 6, and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kirkin (Kirkin et al., “Combined effects of gamma-irradiation and modified atmosphere packaging on quality of some spices”, 2014, Food Chemistry, vol. 154, page 255-261; previously cited) in view of Risch (Risch, S.J., “Chapter 1: Spices: Sources Processing and Chemistry”, 1997, Spices: Flavor Chemistry and Antioxidant Properties, DOI: 10.1021/bk-1997-0660.fw001; previously cited) as evidenced by Seasoned (“whole vs ground spices”, 2016, Seasoned Advice, https://cooking.stackexchange.com/questions/68515/whole-vs-ground-spices).
Regarding claim 1, Kirkin teaches a method for preparing microbial contamination-free spice (page 256, column 2, paragraph under “Microbial analysis” – page 257, column 1), wherein the method uses ground spices (page 256, column 1, section 2.2). Ground spices are whole spices which have been turned into a powder as evidenced by Seasoned (page 1, 2nd paragraph of the first answer). In order to turn a whole spice such as the thyme, rosemary, and black pepper of Kirkin into a powder formed by grinding, the whole spice would necessarily be dried; otherwise, grinding the whole spice would merely result in torn pieces of the whole spice. Therefore, Kirkin is considered to disclose the claimed step of grinding one or more dried raw spice. Kirkin also renders the step of filling one or more dried raw spice into a feeding hopper obvious as this is a step known in the art and it is presumable that some sort of means (e.g., a hand, a spoon, a machine) delivered the spice to the grinder, thereby functioning as a feeding hopper. Kirkin discloses that the method further comprises: packaging the ground powder into primary packaging (corresponding to multilayered packaging material or polyethylene packaging material) and then into secondary packaging (corresponding to cardboard boxes); subjecting the packed spice powder to gamma irradiation (page 256, column 1, section 2.2); and obtaining microbial contamination-free packed spice powder (page 256, column 2, paragraph under “Microbial analysis” – page 257, column 1).
Kirkin does not teach that the raw spice powder was ground under cryogenic conditions.
However, Risch discloses that grinding spices is a typical step in processing and that cryogenic grinding helps to preserve the quality of the spice (page 3, paragraph 5).
It would have been obvious for a person of ordinary skill in the art to have modified the grinding step in the method of Kirkin to be cryogenic grinding as taught by Risch. Since Kirkin discloses preserving the quality of ground spice (page 255, column 1, paragraph 1) and Risch discloses cryogenic grinding as a method of preserving spice quality (page 3, paragraph 5), a skilled practitioner would readily recognize that the grinding step of Kirkin may be cryogenic grinding so as to preserve the quality of the ground spice as desired by Kirkin. Therefore, the claimed cryogenic grinding is rendered obvious.
Since the combination of Kirkin and Risch discloses the steps of the presently claimed method, the combination of prior art is considered to disclose a method for preparing microbial contamination-free spice powder which retains aroma, essential oils, taste, color, chemical compounds, and antioxidant properties as presently claimed. Further, the Office does not have laboratory facilities to test claim limitations drawn toward results of practicing the method as claimed. Accordingly, such retention of aroma, essential oils, taste, color, chemical compounds, and antioxidant properties do not serve to distinguish the product as claimed from the prior art and are thus considered obvious to one having ordinary skill in the art, especially wherein there is no basis of comparison for retention of the aroma, essential oils, taste, color, chemical compounds, and antioxidant properties and there is no amount of the aroma, essential oils, taste, color, chemical compounds, and antioxidant properties that are required to be retained as described above in the 35 U.S.C. §112(b) rejection of claim 1.
Regarding claim 2, modified Kirkin teaches the invention as described above in claim 1, including the method comprising cryogenically grinding spices (Kirkin, page 256, column 1, section 2.2; Risch, page 3, paragraph 5) and subjecting the ground spices to gamma irradiation (Kirkin, page 256, column 1, section 2.2) to produce the microbial contamination-free spice powder (Kirkin, page 256, column 2, paragraph under “Microbial analysis” – page 257, column 1).
Regarding claim 3, Kirkin teaches the invention as described above in claim 1, including the dried raw spice is selected from pepper and cumin (page 256, column 1, section 2.1).
Regarding claim 6, Kirkin teaches the invention as described above in claim 1, including that the material for primary packaging is selected from polyethylene terephthalate and polyethylene (page 256, column 1, section 2.2).
Regarding claim 8, Kirkin teaches the invention as described above in claim 1, including that packaging of the ground powder is carried out with nitrogen gas (corresponding to flushed with 100% N2) (page 256, column 1, section 2.2).
Regarding claim 9, Kirkin teaches the invention as described above in claim 1, including that the spice powder is produced using irradiation and modified atmosphere packaging (MAP) (page 256, column 1, section 2.2), which inhibits microbial growth and oxidation (page 255, column 2, paragraph 2). Therefore, oxidation and rancidity of the spice powder is prevented.
Regarding claim 10, Kirkin teaches the invention as described above in claim 1, including that the spice powder is produced using irradiation and MAP (page 256, column 1, section 2.2), which inhibits extends shelf life, microbial growth, and oxidation (page 255, column 2, paragraph 2). Therefore, spice powder has an extended shelf life due to prevention of oxidation and microbial elimination as presently claimed.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kirkin (Kirkin et al., “Combined effects of gamma-irradiation and modified atmosphere packaging on quality of some spices”, 2014, Food Chemistry, vol. 154, page 255-261; previously cited) in view of Risch (Risch, S.J., “Chapter 1: Spices: Sources Processing and Chemistry”, 1997, Spices: Flavor Chemistry and Antioxidant Properties, DOI: 10.1021/bk-1997-0660.fw001; previously cited) as evidenced by Seasoned (“whole vs ground spices”, 2016, Seasoned Advice, https://cooking.stackexchange.com/questions/68515/whole-vs-ground-spices) as applied to claim 1 above, and further in view of Liu (Liu et al., The effect of cryogenic grinding and hammer milling on the flavour quality of ground pepper”, 2013, Food Chemistry, 141, pages 3402-3408; previously cited), Pallman (US 2017/0100720), and Prater (“Rotary Sifters (Rotary Sieves)”, 2019, Prater, http://www.praterindustries.com/products/rotary-sifters/; previously cited).
Regarding claim 4, modified Kirkin teaches the invention as described above in claim 1, including the method comprising cryogenically grinding spices such as pepper (Kirkin, page 256, column 1, sections 2.1-2.2; Risch, page 3, paragraph 5). However, Kirkin and Risch do not disclose cryogenic grinding using the method of claim 4.
However, Liu discloses a method of grinding under cryogenic conditions comprising mixing raw material (corresponding to peppercorns) with liquid nitrogen (page 3403, column 1, section 2.3). It is presumable that this mixing step occurs at room temperature which falls within the claimed temperature range recited in step (a), thereby rendering step (a) of claim 4 obvious. Liu discloses that the mixture is pulverized with an impactor in a liquid nitrogen bath which is considered to correspond to the cryogenic mixer recited in step (d) of claim 4 (page 3403, column 1, section 2.3), thereby rendering the claimed cryogenic mixer obvious. Liu discloses that this pulverization occurs for five cycles with a period of refreezing in between each cycle because grinding causes the temperature of the raw material to increase (page 3403, column 1, section 2.3). Liu also discloses that the liquid nitrogen has a temperature of -210°C to -196°C (page 3403, column 1, section 2.3) so that the temperature during grinding of the raw material is at least within a range of -210°C to room temperature, which overlaps the claimed temperature ranges in steps (c) and (d) of claim 4. The selection of values within the overlapping range renders the claimed temperatures obvious. MPEP §2144.05.I. Liu discloses that after grinding of the material is complete, the ground material is passed through sieves to produce powders (page 3403, column 1, section 2.3), thereby rendering sieving of the fine powder recited in step (e) of claim 4 obvious. Liu also discloses that the raw material may be ground in a hammer mill (page 3402, column 2, paragraph 2) which may cause heat-induced chemical alterations in the raw material (page 3408, column 1, paragraph 1 under “Conclusion”). It would have been obvious for a skilled practitioner to have used a hammer mill instead of a cryogenic mixer to grind the raw material into a coarse powder after mixing the raw material with liquid nitrogen as hammer milling is a known method in the art of spice grinding and the pre-cooling and post-cooling of the raw spice would mitigate the heating effects of the hammer milling, thereby rendering step (b) of claim 4 obvious.
It would have been obvious for a person of ordinary skill in the art to have modified the method of cryogenic grinding disclosed by modified Kirkin to use features disclosed in the cryogenic grinding disclosed in Liu. Since modified Kirkin discloses cryogenic grinding of raw spice material (Risch, page 3, paragraph 5), but does not disclose a method of cryogenic grinding, a skilled practitioner would have been motivated to consult an additional reference such as Liu in order to determine a suitable method. The disclosure of Liu renders steps (a), (b), and (d) of claim 4 obvious as described above. This combination of prior art also renders grinding the coarse powder under liquid nitrogen at a temperature of 5-7°C as recited in step (c); and sieving the fine powder as recited in step (e) obvious.
The combination of Kirkin, Risch, and Liu do not disclose grinding the coarse powder in a universal mill under liquid nitrogen as recited in step (c) of claim 4; or sieving the fine powder through a rotary sifter as recited in step (e) of claim 4.
However, Pallman discloses that the specific properties of the raw materials to be ground and the final products determine the features of the machines used to grind the materials [0008]. Pallman also discloses that the use of universal mills, hammer mills, and impact mills and the use of coolants to reduce heat input from these types of mills are known in the art [0008].
It would have been obvious for a person of ordinary skill in the art to have modified the method of modified Kirkin to use a universal mill instead of a cryogenic mixer (corresponding to the impactor of Liu) as taught by Pallman. Since the use of hammer mills, universal mills, and impact mills and the use of coolants are known in the art of grinding spices (Pallman [0008]), a skilled practitioner would have readily recognized that any one of the known mills may be used to grind the coarse powder under liquid nitrogen as Pallman provides a finite number of identified, predictable solutions with a reasonable expectation of success. MPEP §2143.I.E. Therefore, using a universal mill under liquid nitrogen as recited in step (c) of claim 4 is rendered obvious.
The combination of Kirkin, Risch, Liu, and Pallman do not disclose sieving the fine powder through a rotary sifter as recited in step (e) of claim 4.
However, Prater discloses rotary sieves, which are also known as rotary sifters, are maintenance-friendly; operate quietly and efficiently without dust issues, motion, or vibrations; and breaks up agglomerates (paragraphs 1-2).
It would have been obvious for a person of ordinary skill in the art to have modified the sieves in modified Kirkin to be rotary sifters as taught by Prater. Since Liu discloses that the ground material is passed through sieves to produce powders (page 3403, column 1, section 2.3), but does not specify the types of sieves, a skilled practitioner would have been motivated to consult an additional reference such as Prater in order to determine a suitable sieve for producing powders without any agglomerates, thereby rendering the rotary sifter in step (e) of claim 4 obvious.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kirkin (Kirkin et al., “Combined effects of gamma-irradiation and modified atmosphere packaging on quality of some spices”, 2014, Food Chemistry, vol. 154, page 255-261; previously cited) in view of Risch (Risch, S.J., “Chapter 1: Spices: Sources Processing and Chemistry”, 1997, Spices: Flavor Chemistry and Antioxidant Properties, DOI: 10.1021/bk-1997-0660.fw001; previously cited) as evidenced by Seasoned (“whole vs ground spices”, 2016, Seasoned Advice, https://cooking.stackexchange.com/questions/68515/whole-vs-ground-spices) as applied to claim 1 above, and further in view of Heneghan (Heneghan, C., “Why demand for aseptic packaging is increasing”, 2016, Food Dive, https://www.fooddive.com/news/why-demand-for-aseptic-packagingis-increasing/424854/; previously cited).
Regarding claim 5, Kirkin teaches the invention as described above in claim 1, including the primary packaging is done in pouches with nitrogen purging (corresponding to bags with MAP) and secondary packaging is done in cartons (corresponding to cardboard boxes) (page 256, column 1, section 2.2). Kirkin also teaches that the method inhibits microbial growth, decreases quality degradation, and extends shelf life of the spice (page 255, column 2, paragraph 2).
Kirkin does not teach that packaging in cartons was done aseptically.
However, Heneghan discloses that aseptic packaging is becoming more common in the food industry as aseptic packaging prevents microbial contamination of food and lengthens the shelf life of the food (page 1, paragraphs 3, 5-6).
It would have been obvious for a person of ordinary skill to have modified the secondary packaging of Kirkin to be performed aseptically as taught by Heneghan. Since Kirkin discloses that its method inhibits microbial growth, decreases quality degradation, and extends shelf life of the spice (page 255, column 2, paragraph 2), a skilled practitioner would have been motivated to consult an additional reference such as Heneghan in order to determine a suitable method of preventing microbial contamination of the spice during packaging while maintaining or increasing the extended shelf life of the spice. Therefore, secondary packaging in cartons being performed aseptically is rendered obvious.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kirkin (Kirkin et al., “Combined effects of gamma-irradiation and modified atmosphere packaging on quality of some spices”, 2014, Food Chemistry, vol. 154, page 255-261; previously cited) in view of Risch (Risch, S.J., “Chapter 1: Spices: Sources Processing and Chemistry”, 1997, Spices: Flavor Chemistry and Antioxidant Properties, DOI: 10.1021/bk-1997-0660.fw001; previously cited) as evidenced by Seasoned (“whole vs ground spices”, 2016, Seasoned Advice, https://cooking.stackexchange.com/questions/68515/whole-vs-ground-spices) as applied to claim 1 above, and further in view of Clark (Clark, “What are Double Wall Boxes?”, 2019, The Packaging Company, https://www.thepackagingcompany.us/knowledge-sharing/what-are-double-wall-boxes/; previously cited).
Regarding claim 7, Kirkin teaches the invention as described above in claim 1, including the secondary packaging is done in cardboard boxes (page 256, column 1, section 2.2).
Kirkin does not disclose that the boxes are 5 ply carton boxes.
However, Clark discloses that 5 ply carton boxes (corresponding to double wall boxes) are a good choice for product storage for long periods of time as they have strong walls which maintain their shape and avoid buckling damage (page 1, paragraph 2 under “What’s the difference between box walls?”).
It would have been obvious for a person of ordinary skill in the art to have modified the cardboard box of Kirkin to be 5 ply cardboard boxes as taught by Clark. Since Kirkin discloses that packaging is done in cardboard boxes (page 256, column 1, section 2.2), but does not disclose a type of cardboard box, a skilled practitioner would have been motivated to consult an additional reference such as Clark in order to determine a suitable cardboard box which would provide ample protection of the product, thereby rendering the claimed 5 ply carton box obvious.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kirkin (Kirkin et al., “Combined effects of gamma-irradiation and modified atmosphere packaging on quality of some spices”, 2014, Food Chemistry, vol. 154, page 255-261; previously cited) in view of Risch (Risch, S.J., “Chapter 1: Spices: Sources Processing and Chemistry”, 1997, Spices: Flavor Chemistry and Antioxidant Properties, DOI: 10.1021/bk-1997-0660.fw001; previously cited) as evidenced by Seasoned (“whole vs ground spices”, 2016, Seasoned Advice, https://cooking.stackexchange.com/questions/68515/whole-vs-ground-spices) as applied to claim 1 above, and further in view of Sádecká (Sádecká, J., “Irradiation of Spices – a Review”, 2007, Czech J. Food Sci., vol. 25, No. 5, pages 231-242; previously cited).
Regarding claims 11 and 12, Kirkin teaches the invention as described above in claim 1, including the packed spice powder is subjected to gamma irradiation from Cobalt 60 (corresponding to 60Co) to achieve average doses of 7, 12, and 17 kGy (page 256, column 1, section 2.2).
Kirkin does not teach that the powder is subjected to irradiation of 240 kCi strength for 30-60 minutes.
However, Sádecká discloses that the amount of radiation required to control microorganisms in food varies depending on the resistance of the particular microbial species, the number of microbes present, and environmental factors such as composition of the medium, moisture content, temperature during irradiation, presence or absence of oxygen (page 232, column 2, paragraph 2). Sádecká also discloses that the actual dose is a balance between what is needed and what is tolerated by the food product 14 without causing objectionable changes (page 232, column 2, paragraph 2).
As the time and strength of gamma irradiation are variables that are modified, among others, according to the resistance of the particular microbial species, the number of microbes present, and environmental factors, the time and strength of gamma irradiation would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed time and strength of gamma irradiation cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the time and strength of gamma irradiation in the method of Kirkin using achieved average doses of 7, 12, and 17 kGy as a guide to obtain the desired balance between the amount of gamma irradiation needed and what is tolerated by the food product without causing objectionable changes as taught by Sádecká (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). MPEP § 2144.05.II.
Response to Arguments
Claim Objections: Applicant amended claims 7 and 8 to fully address the objections; therefore, the objections are withdrawn.
Claim Rejections – 35 U.S.C. §103 of claims 1-3, 6, and 8-10 over Kirkin and Risch: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant argued that the phrase “The spice samples were obtained in ground form and used as provided” in Kirkin does not disclose that the spice is dried and raw or that the spice is filled into a feeding hopper as recited by steps (a) and (b) of present claim 1. Applicant argued that the statement in the rejection of claim 1 regarding this phrase in Kirkin rendering filling a hopper with the dried spice is not persuasive because (i) a grinder is not required to produce ground spice; and/or (ii) a feed hopper is not necessary to deliver the spice to a grinder as this step may be performed manually or by another apparatus besides a feeding hopper. Applicant argued that modifying Kirkin to add a step of grinding spice is not obvious because the addition of such a step to the method of Kirkin adds unnecessary complexity (Applicant’s Remarks, page 15, 1st paragraph under “Claim 1” – page 16, 12th paragraph).
However, as described above in the rejection of claim 1, Kirkin teaches that its method uses ground spices (page 256, column 1, section 2.2). Ground spices are whole spices which have been turned into a powder as evidenced by Seasoned (page 1, 2nd paragraph of the first answer). In order to turn a whole spice such as the thyme, rosemary, and black pepper of Kirkin into a powder formed by grinding, the whole spice would necessarily be dried; otherwise, grinding the whole spice would merely result in torn pieces of the whole spice instead of a powder. Therefore, Kirkin is considered to disclose the claimed step of grinding one or more dried raw spice.
Kirkin also renders the step of filling one or more dried raw spice into a feeding hopper obvious as this is a method step known in the art and it is presumable that some sort of means (e.g., a hand, a spoon, a machine) delivered the spice to the grinder (i.e., a grinder is considered to be any apparatus that performs a grinding function whether it be manual grinding using a mortar and pestle or a grinding machine), thereby functioning as a feeding hopper.
In response to Applicant’s assertion that modifying Kirkin to add a step of grinding spice is not obvious because the addition of such a step to the method of Kirkin adds unnecessary complexity, Kirkin already discloses a step of grinding in its process as the term “ground form” in the phrase “The spice samples were obtained in ground form and used as provided” in Kirkin means that the spices were ground. Therefore, there is no need to modify the method of Kirkin to add a step of grinding.
Applicant then argued that Kirkin and Risch do not teach the claimed method steps (b) and (c) or that “the microbial contamination free packed spice powder retains said aroma, essential oils, taste, color, chemical compounds, and antioxidant properties” as recited in present claim 1. Applicant argued that Kirkin discloses that gamma radiation of the spice powder limits microbial contamination but decreases antioxidant and total phenolic contents of some spices. Applicant argued that claim 1 incorporates critical distinctions that establish its patentably and render the preceding features of claim 1 non-obvious. Applicant argued that the claimed method provides spices that are free of microbial contamination and that retain their antioxidative properties, which forms a distinction from Kirkin. Applicant pointed to Table 4 of the present specification to demonstrate that cryogenic grinding results in antioxidant activity of up to 94.5%. Applicant argued that Kirkin does not disclose the method of grinding used in its method (Applicant’s Remarks, page 16, 13th paragraph – page 20, 3rd paragraph).
However, in response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Although Kirkin discloses grinding to be used in its method, Risch is used to teach cryogenic grinding. As described above in the rejection of present claim 1, Kirkin grinding as a step in its method (page 256, column 1, section 2.2) and discloses preserving the quality of ground spice (page 255, column 1, paragraph 1); but does not specify a method of grinding. Risch discloses cryogenic grinding as a method of preserving spice quality (page 3, paragraph 5). Therefore, a skilled practitioner would readily recognize that the grinding step of Kirkin may be cryogenic grinding so as to preserve the quality of the ground spice as desired by Kirkin. Therefore, the claimed cryogenic grinding is rendered obvious.
In response to Applicant’s assertions that the claimed method provides spices that are free of microbial contamination and that retain their antioxidative properties and to Table 4 of the present specification demonstrating that cryogenic grinding results in antioxidant activity of up to 94.5%, the present claims do not require any particular level of antioxidant activity; therefore, arguments directed to a specific amount of antioxidant activity are moot. Furthermore, Examiner also points out that Table 4 of the present specification does not show that all of the antioxidants and phenols were retained after cryogenic treatment; and does not show the levels of antioxidants and phenols in the powder after subjecting the powder to gamma radiation (i.e., “Table 4 shows the antioxidant activity after ambient grinding and after cryogenic grinding of various spices”). Therefore, Applicant’s arguments regarding Kirkin disclosing that gamma radiation of the spice powder decreases antioxidant and total phenolic contents of some spices are moot.
Applicant argued that the cryogenic grinding in present claim 1 follows gradual decrease in temperature as recited in present claim 4 which are not disclosed by Kirkin (Applicant’s Remarks, page 20, 4th paragraph – page 21, 1st paragraph).
Present claim 1 merely requires grinding the spices under cryogenic conditions; claim 1 does not require the asserted gradual decrease in temperature. Therefore, Applicant arguments directed toward the grinding step in claim 1 involving a gradual decrease in temperature are moot.
Applicant then argued that Risch does not provide any information regarding the process of cryogenic grinding of the present invention and thus, would not allow a skilled practitioner to arrive at the results of the present invention (i.e., higher level of oleoresins recovery). Applicant argued that the mere mention of cryogenic grinding in Risch could mean a number of protocols that may or may not work in combination with the gamma irradiation of Kirkin. Applicant argued that a skilled practitioner would have to undergo a significant experimental burden when consulting the teachings of Kirkin and Risch to arrive at the results of the invention of present claim 1 (Applicant’s Remarks, page 21, 2nd paragraph – page 22, 1st paragraph).
However, the Examiner points out that Risch not only discloses cryogenic grinding but also discloses that grinding of spice may be followed bacterial load reduction by irradiation (page 3, 5th-6th paragraphs). This teaching of cryogenic grinding followed by irradiation of Risch combined with the teaching of grinding followed by gamma irradiation in Kirkin would at least suggest to a skilled practitioner a method comprising cryogenic grinding followed by gamma irradiation as presently recited by claim 1. Since both cryogenic grinding and gamma irradiation are both protocols known in the art, there is no significant experimental burden to arrive at a method comprising both processes, especially wherein there is no minimum retention level of oleoresin and/or chemical compounds required by the claims.
Applicant then stated that Kirkin does not mention preserving or retaining nutritional properties or antioxidant properties of ground spices without microbial contamination. For this reason, Applicant argued that a skilled practitioner would recognize that maintaining an antioxidant level of up to 94.5% as was achieved by the process of claim 1 requires significant research so that merely combining cryogenic grinding and gamma irradiation as disclosed in Kirkin and Risch does not allow a skilled practitioner to arrive at the results of the presently claimed invention. Applicant also stated that the present specification recites that cryogenic ground powders retain 99% of the phenolic compounds and volatile oil of a spice powder with full sterilization; and that oxidation is prevented by using cryogenic grinding followed by gamma irradiation. Applicant argued that claims 1 and 2 are patentable over Kirkin and Risch for the aforementioned reasons (Applicant’s Remarks, page 22, 2nd paragraph – page 23, 5th paragraph).
However, in response to Applicant’s assertion that Kirkin does not mention preserving or retaining nutritional properties or antioxidant properties of ground spices without microbial contamination, Kirkin discloses the importance of preserving the shelf life, quality (e.g., flavor, color, aroma), and safety of spices; and that gamma irradiation is widely used in the art for sterilization (page 255, column 1, paragraphs 1-2). Therefore, Kirkin at least suggests preserving the nutritional properties and antioxidant properties of ground spices without microbial contamination since nutritional and antioxidant properties may be considered to fall within the category of spice quality. Furthermore, the features of claim 1 are rendered obvious by the combination of Kirkin and Risch, not by Kirkin alone. Since Kirkin and Risch disclose a method comprising cryogenic grinding followed by gamma irradiation, there is no significant research burden to arrive at a ground spice comprising an antioxidant activity of up to 94.5%, especially wherein even spice ground under ambient conditions is shown in Table 4 of the present specification to have an antioxidant activity within the range of up to 94.5%; and wherein the present claims do not require the spice to have any particular level of antioxidant activity.
In response to the assertion that the present specification recites that cryogenic ground powders retain 99% of the phenolic compounds and volatile oil of a spice powder with full sterilization, the present claims do not require any specific retention level of phenolic compound or volatile oil. Furthermore, the Applicant has not demonstrated in Tables 2-5 of the present specification that its method of cryogenic grinding results in 99% retention of phenolic compounds and volatile oils in the produced spice powder (e.g., coriander retained 100% of its volatile oils, but it is not clear how much of the phenolic compounds were retained; thus, the examples do not demonstrate that 99% of both the volatile oils and phenolic compounds were retained). The Applicant also has not provided results of an analysis of phenolic content and volatile oil content in the spice powder after gamma irradiation. For these reasons, Applicant’s arguments regarding 99% retention of phenolic compounds and volatile oil in spice powder after cryogenic grinding and gamma irradiation are moot.
For these reasons, present claims 1 and 3 are not patentable over Kirkin and Risch.
Applicant then argued that claim 3 is patentable by reason of dependency from claim 1. Applicant added that claim 3 recites more spices than just pepper and cumin; and that the present specification has demonstrated that the claimed method works well with a variety of spices (Applicant’s Remarks, page 24, 1st-3rd paragraphs).
However, the prior art discloses at least one of the spice varieties recited in present claim 3. Therefore, the threshold of rendering claim 3 obvious in view of the cited prior art has been met.
Applicant argued that claims 6 and 8-10 are patentable by reason of dependency from claim 1 (Applicant’s Remarks, page 26).
For the reasons provided above, claim 1 is not considered to be patentable over Kirkin and Risch. Since the prior art has been shown to render claim 1 obvious and Applicant’s arguments have been shown to be moot or unpersuasive, the rejections of the claims are maintained as written herein.
Claim Rejections – 35 U.S.C. 103 of claim 4 over Kirkin, Risch, Liu, Pallman, and Prater: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant argued that Liu teaches that cryogenic grinding is superior to hammer milling through the results of its experiments and thus, teaches away from hammer milling. Applicant stated that present claim 4 requires both hammer milling and cryogenic grinding (Applicant’s Remarks, page 27, 1st paragraph – page 30, 1st paragraph).
However, the Examiner points out that the spices of Liu were at a temperature of 29.5-30°C prior to hammer milling (page 3403, column 2, section 2.4); and that Liu discloses that raw spice material may be ground in a hammer mill which may cause heat-induced chemical alterations in the raw material (page 3402, column 2, paragraph 2; page 3408, column 1, paragraph 1 under “Conclusion”.) Liu also discloses that cryogenic grinding techniques were found to be superior to ambient grinding techniques; and that pre-cooling raw spices and maintaining the appropriate low temperature within the mill reduces the loss of volatile oils (page 3403, column 2, paragraph 2; page 3406, column 2, paragraph 2). From these disclosures, a skilled practitioner would readily recognize that Liu is not teaching away from the use of a hammer mill per se, but disclosing the effects of hammer milling on the volatile oil content of the spice when hammer milling is performed at ambient temperatures or higher when the raw material is also at a temperature higher than ambient temperature. From these disclosures, a skilled practitioner would readily recognize that using a hammer mill to grind the raw material into a coarse powder after pre-cooling the raw material is a suitable method of grinding the raw material since hammer milling is a known method in the art of spice grinding and pre-cooling of the raw spice would mitigate the heating effects of the hammer milling.
Applicant then argued that Liu discloses a method that differs from the presently claimed method; and that Kirkin and Risch do not provide the technical solution disclosed in the present invention (Applicant’s Remarks, page 30, 2nd paragraph – page 32, 1st paragraph).
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The method steps of claim 4 are rendered obvious by the combination of Kirkin, Risch, Liu, Pallman, and Prater, not by Liu alone. For arguments directed to Kirkin and Risch, see the responses to Applicant’s arguments regarding claim 1 written above.
Applicant then argued that Pallman teaches against using hammer mills due to them causing a loss in taste-determining substance due to high heat input; and that Pallman does not disclose retaining antioxidant/nutritional properties of spices using a method comprising cryogenic grinding, hammer milling, and gamma irradiation (Applicant’s Remarks, page 32, 2nd paragraph – page 33, 1st paragraph).
In response to Applicant’s assertion that Pallman teaches against using hammer mills due to them causing a loss in taste-determining substance due to high heat input, Pallman also discloses that comminution at low temperatures using a coolant is already known in the art [0008]. This disclosure at least suggests that cooling prior to or during hammer milling is known in the art; and this disclosure supports the aforementioned disclosure regarding pre-cooling prior to grinding in Liu.
In response to Applicant’s assertion that Pallman does not disclose retaining antioxidant/nutritional properties of spices using a method comprising cryogenic grinding, hammer milling, and gamma irradiation, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The method steps of claim 4 are rendered obvious by the combination of Kirkin, Risch, Liu, Pallman, and Prater, not by Pallman alone.
Applicant then argued that there is no clear or compelling rationale for using the rotary sieve of Prater into the process of Liu since the rotary sifter of Prater may not be suitable for the potentially more sensitive applications of Kirkin or Liu. Applicant argued that there is no motivation in Liu to seek an alternative sifting mechanism. Applicant argued that implementing the rotary sifter of Prater in Kirkin or Liu may require substantial redesign of the downstream and upstream processing steps of Kirkin and Liu. Applicant argued that the Examiner has not adequately explained how a skilled practitioner would have implemented the rotary sifter of Prater to arrive at the claimed invention without impermissible hindsight (Applicant’s Remarks, page 33, 2nd paragraph – page 34, 5th paragraph).
In response to Applicant’s assertion that the rotary sifter of Prater may not be suited for the processing steps of Liu and Kirkin, Applicant has not indicated: any specific downstream or upstream processing steps in Liu and Kirkin which would prevent the implementation of a rotary sifter; or what substantial redesign of the method of Kirkin and/or Liu would be necessary to implement a rotary sifter, wherein the substantial redesign is outside of the ability of a skilled practitioner.
In response to Applicant’s assertion that the Examiner has not adequately explained how a skilled practitioner would have implemented the rotary sifter of Prater to arrive at the claimed invention, Liu discloses that the ground material is passed through sieves to produce powders (page 3403, column 1, section 2.3), but does not specify the types of sieves. Therefore, a skilled practitioner would have been motivated to consult an additional reference such as Prater in order to determine a suitable sieve for producing powders without any agglomerates. Prater discloses rotary sieves, which are also known as rotary sifters, are maintenance-friendly; operate quietly and efficiently without dust issues, motion, or vibrations; and breaks up agglomerates (paragraphs 1-2), thereby rendering the rotary sifter in step (e) of claim 4 obvious. This explanation, which is provided in the rejection of claim 4 above, adequately describes how a skilled practitioner would have implemented the rotary sifter of Prater into the method of combination of prior art without impermissible hindsight.
Furthermore, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Since the combination of prior art has been shown to render claim 4 obvious and Applicant’s arguments have been shown to be unpersuasive, the rejection of claim 4 is maintained as written herein.
Claim Rejections – 35 U.S.C. §103 of claim 5 over Kirkin, Liu, and Heneghan: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant argued that Heneghan is directed primarily to aseptic packaging of liquid or perishable food products due to the high risk of spoilage in these items, while the present invention is directed toward dried spice. Applicant argued that Heneghan is only focused on packaging which does not render claim 4 obvious. Applicant argued that Heneghan is not enabling to provide the process of claim 4 and neither Kirkin nor Heneghan teach the method steps of claim 1 or the method steps of claim 4 (Applicant’s Remarks, page 35, 1st paragraph – page 37, 3rd paragraph).
However, the Examiner points out that dried spice is a perishable food item as evidenced by page 255, column 1, paragraph 1 of Kirkin which recites “Spices and herbs are highly susceptible to microbial contamination […] An appropriate preservation and sterilisation technique should be used in order to maintain shelf life, quality and safety of spices”. If dried spices were not perishable, then there would not be a concern to maintain their shelf life or quality.
In response to Applicant’s assertions that Heneghan is not enabling for the process of claim 4; and that Heneghan does not teach the method steps of claim 1 or the method steps of claim 4, Heneghan is cited for its teaching regarding the features of claim 5, not claim 4. Therefore, Applicant’s arguments regarding Heneghan in relation to claim 4 are moot.
In response to Applicant’s assertion that Kirkin does not teach the method steps of claim 1 or the method steps of claim 4, claim 1 is shown to be rendered obvious by the combination of Kirkin and Risch and claim 4 is shown to be rendered obvious by the combination of Kirkin, Risch, Liu, Pallman, and Prater as described in the rejections of claims 1 and 4 and in the responses to Applicant’s arguments regarding claims 1 and 4 above.
Since the prior art has been shown to render the features of claim 5 obvious and Applicant’s arguments have been shown to be unpersuasive, the rejection of claim 5 is maintained as written herein.
Claim Rejections – 35 U.S.C. §103 of claim 7 over Kirkin, Risch, and Clark: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant argued that Clark teaches a general purpose packaging, not specific to food or spice packaging; and that Clark does not speak to any compatibility or regulatory considerations involved in packaging food ingredients. Applicant argued that the mere existence of a stronger box does not render its use in a highly specialized, food-grade context without specific teaching or motivation without impermissible hindsight reasoning (Applicant’s Remarks, page 38, 1st paragraph – page 39, 4th paragraph).
However, claim 7 merely requires the secondary packaging to be carried out using a 5-ply box. As described above in the rejection of claim 7, Kirkin discloses the secondary packaging is done in cardboard boxes (page 256, column 1, section 2.2), but does not disclose a type of cardboard box. Therefore, a skilled practitioner would have been motivated to consult an additional reference such as Clark in order to determine a suitable cardboard box which would provide ample protection of the product. Clark discloses that 5 ply carton boxes (corresponding to double wall boxes) are a good choice for product storage for long periods of time as they have strong walls which maintain their shape and avoid buckling damage (page 1, paragraph 2 under “What’s the difference between box walls?”), thereby rendering the claimed 5 ply carton box obvious. Claim 7 does not recite any regulatory considerations or recite any highly specialized process that needs to be addressed by the prior art, especially when packaging many types of products, including food, in cardboard boxes is well known and practiced in the art.
In response to Applicant's argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Since the prior art has been shown to render the features of claim 7 obvious and Applicant’s arguments have been shown to be unpersuasive, the rejection of claim 7 is maintained as written herein.
Claim Rejections – 35 U.S.C. §103 of claims 11-12 over Kirkin, Risch, and Sádecká: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant argued that Sádecká does not allow a skilled practitioner to implement the same process in one specific food type without significant amount of experimentation and research to arrive at the presently claimed invention. Applicant argued that neither Kirkin nor Sádecká disclose using