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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/02/2026 has been entered.
Application Status
Amended claim 1-27 are under examination.
Claim 28-31 are cancelled.
Claim 32-34 are withdrawn from examination.
Claim 1-27 are rejected.
Withdrawn Rejection
The 35 U.S.C. 103 rejection over claim(s) 1-27 as being unpatentable over Morelli et al. (2018/0133287 A1) in view of 정승환 (KR 101249082 B1, Machine Translation English, Ref. U) has been withdrawn in light of Applicant’s new amendment to recite “wherein the nutritional formula excludes polydextrose” in claim 1.
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.
Claim(s) 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2009513641 (English Machine Translation) in view of 정승환 (KR 101249082 B1, Machine Translation English, Ref. U).
Regarding claim 1, 2, 3, and 4, JP 2009513641 (‘641) discloses infant formulation (nutritional formula) (‘641, pg. 3, ln. 8-11) comprising nonfat dry milk powder (‘641, pg. 9, 8th paragraph), lactose (‘641, pg. 12, last paragraph), oils combination (oil blend) (‘641, pg. 5, 8th paragraph; pg. 8, 4th paragraph), whey protein concentrate (enriched whey protein concentrate) (‘641, pg. 8, 4th paragraph), fructooligosaccharide (oligosaccharides) (‘641, pg. 5, 8th paragraph), choline (‘641, pg. 5, 9th paragraph; pg. 8, 4th paragraph), docosahexaenoic acid (‘641, pg. 4, 9th and 10th paragraph), arachidonic acid (‘641, pg. 5, 2nd paragraph), magnesium oxide (‘641, pg. 6, 4th paragraph), lactoferrin (‘641, pg. 6, 6th paragraph), inositol (‘641, pg. 5, 9th paragraph), taurine (‘641, pg. 5, 7th paragraph), iron (‘641, pg. 5, last paragraph), L-carnitine (‘641, pg. 8, 4th paragraph), zinc (‘641, pg. 8, 4th paragraph), nucleotides (‘641, pg. 8, 4th paragraph), vitamins(‘641, pg. 5, 9th paragraph), soy lecithin (‘641, pg. 8, 4th paragraph), pantothenic acid (‘641, pg. 5, 9th paragraph), copper (‘641, pg. 5, last paragraph), biotin (‘641, pg. 5, last paragraph), folic acid (‘641, pg. 5, 9th paragraph), lutein (‘641, pg. 3, last paragraph -pg. 4, 8th paragraph), manganese sulfate (‘641, pg. 8, 4th paragraph), iodine (‘641, pg. 6, 4th paragraph), beta-carotene (‘641, pg. 9, 8th paragraph), sodium citrate (‘641, pg. 9, 6th paragraph), and sodium selenate (selenium) (‘641, pg. 8, 4th paragraph).
JP 2009513641 (‘641) infant formulation (nutritional formula) does not contain polydextrose, and meet the limitation of the nutritional formula excludes polydextrose.
JP 2009513641 (‘641) teaches different proteins (‘641, pg. 5, 6th paragraph), but does not explicitly teach demineralized whey protein. However, 정승환 (KR 101249082 B1) discloses infant formula comprising demineralized whey powder (Ref. U, pg. 4, under Claims). JP2009513641 and 정승환 (KR 101249082 B1) are of the same field of endeavor of infant formula. It would have been obvious to one of ordinary skill in the art to be motivated to use 정승환 (KR 101249082 B1)’s demineralized whey powder (Ref. U, pg. 4, under Claims) in JP 2009513641’s infant formulation to provide desired health benefits for infant.
Regarding claim 5, modified JP 2009513641 (‘641) discloses vitamin C (‘641, pg. 5, 9th paragraph).
Regarding claim 6, modified JP 2009513641 (‘641) discloses the nucleotides including adenosine 5’- monophosphate (‘641, pg. 8, 4th paragraph).
Regarding claim 7, modified JP 2009513641 (‘641) discloses the lactose is comprised of 100% lactose (‘641, pg. 8, 4th paragraph), which is in range with the cited range.
Claim(s) 8-27are rejected under 35 U.S.C. 103 as being unpatentable over JP 2009513641 (English Machine Translation) in view of 정승환 (KR 101249082 B1, Machine Translation English, Ref. U) as applied to claim 1 above, and further in view of Morelli et al. (US 2018/0133287 A1).
Regarding claim 8-27, modified JP 2009513641 discloses the claimed invention as discussed above. However, modified JP 2009513641 does not teach the cited amounts as claimed in claims 8-27.
However, Morelli et al. (Morelli) discloses a nutritional composition (formula) (‘287, [0036]). With respect to claim 8, Morelli discloses the nutritional composition (formula) comprising fat (oil blend) is 5.3g per 100kcal (‘287, [0229]), which is in range with the range.
With respect to claim 9, Morelli discloses the whey protein in a range of about 40% to about 85% of total protein (‘287, [0144]), which overlaps the cited range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 10, Morelli discloses the nutritional composition (formula) comprising the choline in amount of 24mg per 100 kcal (‘287, [0229]), which is in range with the cited range.
With respect to claim 11, Morelli discloses the nutritional composition (formula) comprising arachidonic acid in an amount of 36 mg of 5.3g total fat (‘287, [0229]), which corresponds to 0.07% of arachidonic acid of total fat, and in range with the cited range.
With respect to claim 12, Morelli discloses the nutritional composition (formula) comprising the docosahexaenoic acid in an amount of 17.8 mg of 5.3g total fat (‘287, [0229]), which corresponds to 0.03% docosahexaenoic acid of total fat, and in range with the cited range.
With respect to claim 13, modified Morelli discloses the sodium citrate (‘287, [0228]). Morelli does not explicitly disclose an amount as cited. However, it would have been obvious to one of ordinary skill in the art to be motivated to adjust an amount of the sodium citrate, including the cited amount in modified JP 2009513641’s formulation to provide a desired known health benefit (‘287, [0206], [0208]).
With respect to claim 14, Morelli discloses the nutritional composition (formula) comprising the lactoferrin in an amount of between about 15 and about 300 mg the lactoferrin per 100 kcal (‘287, [0099]) which is in range with the cited range.
With respect to claim 15, Morelli discloses the nutritional composition (formula) comprising 8.5 mg of the inositol per 100 kcal (‘287, [0229]), which is in range with the cited range.
With respect to claim 16, Morelli discloses the nutritional composition (formula) comprising 6 mg of the taurine per 100 kcal (‘287, [0229]), which is in range with the cited range.
With respect to claim 17, Morelli discloses the nutritional composition (formula) comprising 1 mg of the iron per 100 kcal (‘287, [0229]), which is in range with the cited range.
With respect to claim 18, Morelli discloses the nutritional composition (formula) comprising 2 mg of the carnitine per 100 kcal (‘287, [0229]), which is in range with the cited range.
With respect to claim 19, Morelli discloses the nutritional composition (formula) comprising 0.8 mg of the zinc per 100 kcal (‘287, [0229]), which is in range with the cited range.
With respect to claim 20, 23 and 25, Morelli does not explicitly disclose an amount of the nucleotides, biotin and lutein as cited. However, it would have been obvious to one of ordinary skill in the art to be motivated to adjust effective amounts of the nucleotides, biotin and lutein, including the cited amount in modified JP 2009513641’s formulation to provide a desired known health benefit (‘287, [0206], [0208]).
With respect to claim 21, Morelli discloses the nutritional composition (formula) comprising 570 ug the pantothenic acid per 100 kcal (‘287, [0229]), which is in range with the cited range.
With respect to claim 22, Morelli discloses the nutritional composition (formula) comprising 65 ug of the copper per 100 kcal (‘287, [0229]), which is in range with the cited range.
With respect to claim 24, Morelli discloses the nutritional composition (formula) comprising 18 ug of the folic acid per 100 kcal (‘287, [0229]), which is in range with the cited range.
With respect to claim 26, Morelli discloses the nutritional composition (formula) comprising 17 ug of the iodine per 100 kcal (‘287, [0229]), which is in range with the cited range.
With respect to claim 27, Morelli discloses the nutritional composition (formula) comprising 2.7 ug of the iodine per 100 kcal (‘287, [0229]), which is in range with the cited range
JP 2009513641 and Morelli are of the same field of endeavor of infant formula. It would have been obvious to one of ordinary skill in the at to use successful amounts of the ingredients as cited in claim 8-27, as taught by Morelli in modified JP 2009513641’s infant formulation to provide desired health benefits.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-27 have been considered but are moot because the new ground of rejection does not rely on combined reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/HONG T YOO/Primary Examiner, Art Unit 1792