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 12/29/2025 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment: the objections to claims 2, 7, and 10 have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-3, 5-18
Withdrawn claims: 11-15
Previously cancelled claims: 4
Newly cancelled claims: None
Amended claims: 2, 7, 10
New claims: 16-18
Claims currently under consideration: 1-3, 5-10, 16-18
Currently rejected claims: 1-3, 5-10, 16-18
Allowed claims: None
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.
Claim 16 is 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 16 recites that the creamer comprises at least one of the listed emulsifiers in an amount of less than 0.01%. However, the claim does not recite a unit of measurement associated with the percentage (e.g., wt.%, vol.%). Therefore, the claim is indefinite.
For the purpose of this examination, the amount will be interpreted as a weight percentage.
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, 5-10, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Clyde (WO 2017/2119671: IDS citation).
Regarding claims 1, 2, 3, and 16, Clyde teaches a foaming liquid creamer comprising protein and fat, wherein the protein comprises milk protein (corresponding to dairy protein) present in an amount of 1-4 wt.% (page 7, lines 27-29); and nut protein present in an amount of 0.4-2 wt.% (page 8, lines 7-8); and the fat is present in an amount of about 2 wt.% to about 5 wt.% (page 11, lines 11-14) by weight of the foaming liquid creamer. These amounts of milk and nut protein and fat fall within the claimed ranges protein fat recited by present claims 1 and 3. Clyde discloses that the creamer may further comprise a combination of alginate, cellulose, and starch as the hydrocolloid component, wherein the total amount of hydrocolloids in the creamer is from about 0.01 to 3 wt.% (page 8, lines 23-27; page 9, lines 12-13); and wherein the total amount of cellulose (corresponding to MCC and CMC) in the creamer may be 0.2-0.8 wt.% (page 15, lines 20-21). These disclosed contents of total hydrocolloids and cellulose in the creamer means that the creamer may contain cellulose in an amount of 0.2-0.8 wt.%; alginate in an amount from greater than 0 wt.% to an amount less than 2.2 wt.%; and starch from greater than 0 wt.% to an amount less than 2.2 wt.%. These amounts of cellulose and starch overlap the concentrations recited in present claims 1 and 2. This amount of alginate encompasses the concentration recited in present claim 1.
Clyde also discloses that the creamer has a viscosity of 30-110 mPa/s at 4°C, such as 58.2 mPa/s (page 15, line 23; Table 2 on page 24), which falls within the viscosity range recited by present claim 1. Clyde discloses that its creamer may further comprise an emulsifier in the form of diacetylated tartaric acid esters of monoglycerides (corresponding to monoglycerides of tartaric acid), propylene glycol monostearate, and/or sorbitan tristearate (page 11, line 18 – page 12, line 2) in an amount of about 0 wt.% to about 2.0 wt.% (page 12, lines 9-10). Clyde does not mention monoacylglycerols or diacylglycerols in its disclosure; therefore, the concentration of such ingredients in the creamer of Clyde may be 0 wt.%. Therefore, the concentration of monoacylglycerols, diacylglycerols, diacetylated tartaric acid esters of monoglycerides, propylene glycol monostearate, and sorbitan tristearate in the creamer of Clyde encompasses the claimed concentrations recited in present claims 1 and 16, especially wherein Clyde discloses the exclusion of propylene glycol monostearate and sorbitan tristearate from its composition due to the goal of using natural ingredients (page 12, lines 4-8).
In regard to the overlapping and encompassing ranges disclosed in Clyde, it would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP §2144.05.I.
Regarding claim 5, Clyde teaches the invention as described above in claim 1, including the creamer can be foamed by shaking by hand (page 5, lines 13-16).
Regarding claim 6, Clyde teaches the invention as described above in claim 1, including the fat is derived from the dairy component and/or nut component of the creamer (page 11, lines 11-12). Clyde teaches that the nut component may be coconut (page 6, lines 6-10). From these disclosures, Clyde at least suggests that the fat may be milk fat and/or coconut oil, thereby rendering claim 6 obvious.
Regarding claim 7, Clyde teaches the invention as described above in claim 1, including the creamer further comprising a sweetener selected from the group consisting of sucrose, fructose, glycose, sorbitol, and erythritol (page 14, lines 19-24).
Regarding claim 8, Clyde teaches the invention as described above in claim 1, including that the creamer does not require added solid particulate whiteners (abstract); therefore, Clyde teaches that the creamer is free from added solid particulate whiteners.
Regarding claim 9, Clyde teaches the invention as described above in claim 1, including the creamer is a shelf-stable liquid creamer (page 2, lines 6-7; page 5, lines 17-19).
Regarding claim 10, Clyde teaches the invention as described above in claim 1, including the creamer further comprising bicarbonate salt (corresponding to sodium bicarbonate) in an amount of 0.05-0.1 wt.% of the creamer (page 14, lines 6-16), which falls within the claimed concentration.
Regarding claim 17, Clyde teaches the invention as described above in claim 1, including the creamer containing nut protein and milk protein (corresponding to dairy protein) (abstract), wherein the nut protein may be flaxseed protein (page 6, lines 8-11). Therefore, Clyde teaches that its creamer comprises protein selected from the group consisting of milk protein and flaxseed protein, wherein these proteins are the only protein in the creamer.
Regarding claim 18, Clyde teaches the invention as described above in claim 1, including exemplifying creamers having a pH of 6.9 and 6.84 (page 25, Table 3). These values do not fall within the claimed pH range. However, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05.I.
Response to Arguments
Claim Objections: Applicant amended claims 2, 7, and 10 to fully address the objections; therefore, the objections are withdrawn.
Claim Rejections – 35 U.S.C. §103 of 1-3 over 5-10 over Clyde: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant argued that the mere silence in Clyde regarding the inclusion of monoacylglycerols, diacylglycerols, diacetylated tartaric acid esters of monoglycerides, propylene glycol monostearate, and sorbitan tristearate does not establish obvious of less than 0.01 wt.% of these compounds in its composition (Applicant’s Remarks, page 5, 6th paragraph – page 6, 1st and 3rd-4th paragraphs).
However, as described above in the rejection of claim 1, Clyde discloses that its creamer may further comprise an emulsifier in the form of diacetylated tartaric acid esters of monoglycerides (corresponding to monoglycerides of tartaric acid), propylene glycol monostearate, and/or sorbitan tristearate (page 11, line 18 – page 12, line 2) in an amount of about 0 wt.% to about 2.0 wt.% (page 12, lines 9-10). Therefore, the concentration of monoacylglycerols, diacylglycerols, diacetylated tartaric acid esters of monoglycerides, propylene glycol monostearate, and sorbitan tristearate in the creamer of Clyde is considered to encompass the claimed concentrations recited in present claims 1 and 16, especially wherein Clyde does not mention monoacylglycerols or diacylglycerols in its disclosure; wherein Clyde discloses a concentration range of emulsifiers that includes 0 wt.%; and wherein Clyde discloses the exclusion of propylene glycol monostearate and sorbitan tristearate from its composition due to the goal of using natural ingredients (page 12, lines 4-8).
Applicant then argued that the present specification discloses that synthetic emulsifiers are typically needed to guarantee the physical stability of a liquid creamer over the shelf life of the product, good foamability, stability after pouring the creamer into a beverage, and whitening and texture/mouthfeel effect in the beverage (Applicant’s Remarks, page 6, 2nd paragraph).
However, “typically needed to guarantee” does not equate to “required to guarantee”. Also, the claimed creamer is not required to display any degree of physical stability over its shelf life, any degree of foamability, any degree of stability after pouring the creamer into a beverage, or any degree of whitening and texture/mouthfeel effect in the beverage. Therefore, Applicant’s arguments regarding these features are unpersuasive.
Since the prior art has been shown to render the present claims obvious and Applicant’s arguments have been shown to be unpersuasive, the rejections of the claims are maintained as written herein.
New Claims 16-18: Applicant argued that the new claims are patentable for the same reasons that claim 1 is patentable. Applicant stated that claim 17 requires that the only protein in the creamer is selected from the recited list. Applicant argued that Clyde requires nut protein in its composition, which is excluded by claim 17; and that removing nut protein from the creamer of Clyde would improperly change its principle of operation (Applicant’s Remarks, page 6, 5th-7th paragraphs).
However, Clyde states that flaxseed protein may be used as the nut protein in its composition (page 6, lines 8-11). Flaxseed protein is stated in the list recited in present claim 17. Therefore, Clyde discloses a composition as recited in present claim 17. New claims 16 and 18 are also shown to be rendered obvious by Clyde as described in their rejections above.
Since the prior art has been shown to render the present claims obvious and Applicant’s arguments have been shown to be unpersuasive, the rejections of the claims stand as written herein.
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 Kelly Kershaw whose telephone number is (571)272-2847. The examiner can normally be reached Monday - Thursday 9:00 am - 4:00 pm.
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/KELLY P KERSHAW/Examiner, Art Unit 1791