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 5, 2025. Any objections and/or rejections made in previous actions and not repeated are hereby withdrawn.
Examiner’s Note
Applicant is directed to MPEP 608.01(q), which cites 37 C.F.R. 1.125 (c), “The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived.” Claim 18 has been amended to recite, “The method of claim 1”, but the strikethrough of the number 4 is unclear. It is recommended the deletion be denoted with “[[4]]”.
Drawings
The drawings are objected to because Figures 4-6 are missing a label on the y-axis. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
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, 7-10, 17-18, 21-23, and 30-31 are rejected under 35 U.S.C. 103 as being unpatentable over Gross et al. (US 2018/0014695 A1) in view of Altom et al. (US 2007/0202211 A1).
With respect to Claim 1, Gross et al. teaches a method for making nut milk and butter. [0006] The method described comprises converting nuts into nut butter, adding water in order to create a suspension, mixing the nut butter and water to form a nut milk, and then separating the liquid phase from the solid phase. [0025] Gross et al. uses a 100 mesh screen with holes of about 0.149mm, or 149um, in order to filter nut skin pieces and leftover nut pulp. [0023]
Gross et al. reads on the limitations recited in steps a and c of claim 1. Gross et al. does not teach wet grinding to a particle size as claimed. However, Gross et al. presents a motivation for controlling the size of the screen by selecting for the size of nut solids that remain in the apparatus. [0023] It would have been obvious to one of ordinary skill in the art to modify the hole sizes by choosing a screen with smaller holes in order to select for nut solids that are 100um or less in order to provide a smother product.
Gross et al. is silent a process which comprises nut shell material.
Altom et al. teaches a food composition comprising nut shells [0012] from sources such as pecan, walnut, chestnut, hazelnut, and more. [0033] Altom et al. teaches that the food is designed for mammals, [0008] and that the nut shell material is a beneficial source of fiber and other nutrients. [0038] Additionally, Altom et al. teaches that nut shells can be added to any food composition for any animal. [0048] The method of preparation taught by Altom et al. comprises reducing the shell size, [0067] screening for size, [0068] milling, [0069] and incorporating the ground nut shell material into the food composition. [0070] Altom et al. reads on adding culinary nut shell material to the solid or liquid phase after step c).
Gross et al. and Altom et al. exist within the same field of endeavor in that they teach food compositions comprising nut materials. Where Gross et al. teaches a nut milk and nut butter, Altom et al. teaches a use for the shell of the nut in food due to the nutritional benefits.
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 developed a method of producing nut milk and nut solids according to the limitations recited in claim 1, using the teaching of Gross et al. with the teaching of Altom et al., thereby rendering claim 1 obvious.
With respect to Claims 2 and 17, Gross et al. in view of Altom et al. teaches the invention recited in claim 1, as described above. Gross et al. teaches that the composition taught can comprise nuts, some legumes, and seeds, such as almonds, cashews, peanuts, and more. [0022] Therefore, Gross et al. in view of Altom et al. renders claims 2 and 17 obvious.
With respect to Claims 3 and 21, Gross et al. in view of Altom et al. teaches the invention recited in claim 1, as described above. Additionally, Altom et al. teaches that the nut shell material may comprise pecan, walnut, chestnut, hazelnut, and more. [0033] Additionally, 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”. One of ordinary skill in the art would have been motivated to add the nut shell material to the process during the wet grinding stage taught by Gross et al.
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 Gross et al. in view of Altom et al. in order to produce a method of processing nuts according to the limitations recited in claim 1, wherein the nut shell material is selected from the group recited in claim 3 and added during the wet-grinding step, thereby rendering claim 3 obvious.
With respect to Claim 7, Gross et al. in view of Altom et al. teaches the invention recited in claim 1, as described above. Gross et al. teaches that the nuts may be raw. [0022] Additionally, there being no teaching to the contrary, it is interpreted that the process taught by Gross et al. takes place at room temperature. Room temperature falls between 0-65°C. Therefore, Gross et al. in view of Altom et al. renders claim 7 obvious.
With respect to Claim 8, Gross et al. in view of Altom et al. teaches the invention recited in claim 1, as described above. Gross et al. teaches a step of maceration before separating the liquid from the solid phase through the teaching of grinding the suspension of nut butter and water. [0025] Therefore, Gross et al. in view of Altom et al. renders claim 8 obvious.
With respect to Claim 9, Gross et al. in view of Altom et al. teaches the invention recited in claim 1, as described above. Additionally, Altom et al. teaches heating the food composition comprising the nut shell material to 135°C. [0076] Therefore, it would have been obvious tot one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teachings of Gross et al. in view of Altom et al. in order to heat the composition resulting from the process according to claim 1 after step c) to a temperature between 65 and 200°C, thereby rendering claim 8 obvious.
With respect to Claim 10, Gross et al. in view of Altom et al. teaches the invention recited in claim 1, as described above. Gross et al. teaches the method of producing the nut milk and nut solids may take up to 20 min for the solids and another 1-2 minutes for the nut milk. [0025] A total time of about 22min reads on the limitation recited in claim 10. Therefore, Gross et al. in view of Altom et al. renders claim 10 obvious.
With respect to Claim 18, Gross et al. in view of Altom et al. teaches the invention recited in claim 1, as described above. Additionally, Altom et al. teaches obtaining nut shell material already separated from the nut. [0021] Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant application, to have used the teachings of Gross et al. in view of Altom et al. in order to produce the invention recited in claim 1, wherein the nut and shell are separated before step a), thereby rendering claim 18 obvious.
With respect to Claim 22-23 and 30, Gross et al. in view of Altom et al. teaches the invention recited in claim 1, as described above. Altom et al. teaches the addition of the culinary nut shell material is added between 0-86%. [0080-82] Additionally, 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”, and MPEP 2144.05 I states, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. One of ordinary skill in the art would have been motivated to add the nut shell material to the process at any point in the process.
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 Gross et al. in view of Altom et al. in order to produce the invention according to claim 1, wherein the nut shell material is added at any point during or after the grinding phase between 0.1-10%, thereby rendering claims 22, 23, and 30 obvious.
With respect to Claim 31, Claim 31 is a product-by-process claim. According to the MPEP 2113, “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself”. Gross et al. teaches a method of preparing a culinary nut solid and liquid. [0025] Therefore Gross et al. in view of Altom et al. teaches the invention recited in claim 31.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Gross et al. (US 2018/0014695 A1) in view of Altom et al. (US 2007/0202211 A1) as applied to claims 1, and in further view of Fellows, P.J. (Food Processing Technology – Principles and Practice, knovel.com).
With respect to Claim 6, Gross et al. in view of Altom et al. teaches the invention recited in claim 1, as described above. Altom et al. teaches milling the nut material, [0069] but is silent to the equipment used to mill. Fellows, P.J. teaches the use of ball mills for brittle materials to produce fine and ultra fine particles. [Table 3.1] 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”. 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 Gross et al. in view of Altom et al., in further view of Fellows, P.J., to have used a ball mill to mill the nut material in the method according to claim 1, thereby rendering claim 6 obvious.
Claims 11 and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Gross et al. (US 2018/0014695 A1) in view of Altom et al. (US 2007/0202211 A1) as applied to claims 1 and 21 above, and in further view of Green (US 2018/0079991 A1).
With respect to Claims 11 and 25, Gross et al. teaches a method of producing a culinary nut product comprising a liquid and solid phase, but is silent to a fat phase.
Green teaches a method of producing a culinary nut oil comprising the steps of grinding nuts into nut butter for a length of time sufficient to separate the oil phase from the solid phase. [0011] Additionally, Green teaches the solid phase recovered from the process can be used as material for making nut milk. [0087]
Gross et al., Altom et al., and Green exist within the same field of endeavor, in that they teach methods for processing culinary nuts for a variety of nut products. Where Gross et al. teaches a method of producing a culinary nut solid and a culinary nut liquid, Altom et al. teaches the use of culinary nut shells, and Green teaches a method of producing a culinary nut solid and a culinary nut oil. Green teaches that the solid produced by a method that produces an oil, results in a lower fat nut solid product. [0087] Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the application, to have combined the methods of Gross et al. and Altom et al. with Green to formulate a method that produces a culinary nut solid, liquid, and fat phase, thereby rendering claim 11 and 25 obvious.
With respect to Claim 26, Claim 26 is a product-by-process claim. According to the MPEP 2113, “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself”. Gross et al. teaches a method of preparing a culinary nut solid and liquid. [0025] Green teaches a culinary nut solid and fat phase [0011], wherein the solid phase can be used in the production of culinary nut milk. [0087]
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the application, to have produced the nut oil taught in Green, thereby rendering claim 26 obvious.
Claims 12, 24, 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Gross et al. (US 2018/0014695 A1) in view of Altom et al. (US 2007/0202211 A1) as applied to claims 7 and 21 above, and in further view of Jarrett (US 2007/0134399 A1).
With respect to Claims 12 and 24, Gross et al. in view of Altom et al. is silent to a pasteurization step for the method taught by claim 7 and 21, as described above. Jarrett teaches an aqueous culinary nut product comprising almonds and water [0035] wherein there is an additional step of pasteurization. [0105] Jarrett teaches that pasteurization is a beneficial process due to the elimination of pathogens. [0105]
Gross et al., Altom et al., and Jarrett exist within the same field of endeavor in that they both teach an aqueous culinary nut product. Where Gross et al. and Altom et al. teach the product recited in claim 7 without a step considering sterilization for storage or packaging, Jarrett teaches pasteurization as a method for eliminating potentially harmful pathogens.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the application, to have produced the culinary nut product taught by Gross et al., and use pasteurization in order to sterilize the product as taught in Jarrett, thereby rendering claim 12 and 24 obvious.
With respect to Claims 28-29, Gross et al. in view of Altom et al. and further in view of Jarrett, teaches the invention recited in claim 24, as described above. Claims 28 and 29 are product-by-process claims. According to the MPEP 2113, “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself”. Gross et al. teaches a method of preparing a culinary nut liquid. [0025] Therefore, Gross et al. in view of Altom et al. and further in view Jarrett renders claims 28 and 29 obvious.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Gross et al. (US 2018/0014695 A1) in view of Altom et al. (US 2007/0202211 A1) and Green (US 2018/0079991 A1) as applied to claim 26 above, and in further view of Jarrett (US 2007/0134399 A1).
With respect to Claim 27, Gross et al., Altom et al., and Green teach the invention recited in claim 26, as described above. All references are silent to the pasteurization of the culinary nut milk. Jarrett teaches an aqueous culinary nut product comprising almonds and water [0035] wherein there is an additional step of pasteurization. [0105] Jarrett teaches that pasteurization is a beneficial process due to the elimination of pathogens. [0105]
Gross et al., Altom et al., Green and Jarrett exist within the same field of endeavor in that they teach nut-based food products. Where Gross et al., Altom et al., and Green teach the product recited in claim 26 without a step considering sterilization for storage or packaging, Jarrett teaches pasteurization as a method for eliminating potentially harmful pathogens.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the application, to have produced the culinary nut product taught by Gross et al., and use pasteurization in order to sterilize the product as taught in Jarrett, thereby rendering claim 27 obvious.
Response to Arguments
With respect to applicant’s response to the objection to the drawings, applicant asserts that the numbers on the y-axis represent the results of a sensory attribute test, stating that the scale is a measure of intensity. However, there should still be a label on the y-axis to describe what is being reported.
Applicant’s arguments with respect to the rejection over Klaus-Willi 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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.C.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791