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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 17 September 2026 has been entered.
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.
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 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Imison USPGPub 20090232954 and Wearly WO 2015095769.
Regarding claims 1, 3-5, 10 and 13-18, Imison teaches an instant coffee composition comprising a foaming agent. [0011] The coffee composition comprises coffee solids that are powdered, dried water extract of roast and ground coffee as recited in claim 5. [0014-0018] The coffee composition is mixed with hot water to form a ready to drink coffee drink. [0023] The composition of Imison can comprise milk. (Table. 3) The composition of Imison is not required to comprise sucrose as recited in claim 10.
Imison is silent regarding the coffee composition comprising enzymatically treated milk powder comprising milk protein, galactose, galactooligosaccharides, lactose and glucose.
Wearly teaches a dairy milk composition which is modified by reaction with the enzyme β-galactosidase to form a composition comprising [0004]:
10-100 g/L of protein
5-40 g/L galactose
1.2-12.7 g/L galactooligosaccharide (GOS)
10-55 g/L glucose
Less than 2000 mg/L of lactose.
This composition is also disclosed to be a dehydrated powder. [0009] Wearly teaches that the GOS is a highly sought after nutritional ingredient that exhibits beneficial prebiotic activity when consumed. [0019] Wearly also discloses that GOS is a commodity ingredient that can be added to compositions. [0019]
The composition of Wearly may also comprise up to 325 g/L of carbohydrate. [0029] Wearly discloses that about 80-95% of the GOS is formed in situ. [0029] The formation of GOS in Wearly utilizes a portion of the glucose and galactose monomers formed as a result of the lactose hydrolysis. [0032] The reduction in reducing sugars via the formation of GOS is particular advantageous in that reducing sugars are well known for their involvement in Maillard browning, which can produce off-flavors and can affect the color of the resulting nutritional composition. [0032]
Imison and Wearly are both directed to composition comprising milk. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have used the modified milk composition of Wearly as a milk composition in Imison in order to provide beneficial prebiotic components. The relative proportions of milk protein, galactose, galactooligosaccharide, lactose and glucose in the dairy milk composition disclosed by Wearly are the encompass the relative proportions of these components recited in the claims but differ only by the dilution factor. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have added the composition of Wearly to Imison in any quantity that satisfies a user’s personally desired organoleptic attributes while ensuring the coffee of Imison is not unduly diluted.
Regarding claim 18, the proportion of GOS in Wearly is lower than that recited in claim 18. However, it would have been obvious to one of ordinary skill in the art at the time the application was filed to have increased the proportion of GOS in the composition of Wearly to increase the amount of prebiotic activity available since this ingredient was known to be such a highly sought after nutritional ingredient. As such, while Imison and Wearly do not explicitly disclose the same proportions of the components claimed, the proportions of these components recited in the instant claims have not been shown to have any criticality and therefore, and in light of the teachings of the prior art, merely represent the obvious optimization of the prior art.
Claims 1, 3-5, 10 and 13-18 are therefore rendered obvious by the modification of Imison with Wearly.
Response to Arguments
Applicant's arguments filed 17 September 2026 have been fully considered but they are not persuasive.
Applicant asserts on page 7 of the remarks that Imison and Wearly are not analogous art. This assertion is not found persuasive as Imison clearly teaches the use of milk in the product disclosed and Wearly teaches a milk composition having beneficial properties that would have logically recommended itself to Imison.
Applicant asserts on page 8 of the remarks that because Imison teaches conventional skim milk, there is no motivation to use the milk of Wearly. This assertion fails to address the merits of the rejection which stated that the motivation to use Wearly in Imison is to provide beneficial prebiotic components. Since applicant’s assertion fails to rebut the merits of the rejection, it is not found persuasive.
Applicant asserts on page 8 of the remarks that Wearly fails to teach the coffee beverage product of the instantly pending claims by referencing a liquid embodiment of Wearly that has a specific amount of carbohydrates. This embodiment was not relied on in the rejection. Applicant’s further reliance on the teachings of the proportion of carbohydrate to assert Wearly cannot teach the content of GOS claimed fails to recognize that Wearly discloses that GOS was known to be added to compositions as well as produced in situ and that GOS was a highly sought after nutritional ingredient. As such, it would have been obvious to vary the proportion of GOS individually which renders obvious the proportions recited.
Applicant asserts on pages 9 and 10 of the remarks that Wearly does not teach the composition disclosed in a coffee matrix, however, this assertion fails to address the merits of the rejection which was based on the modification of Imison with Wearly.
Applicant’s assertions regarding unexpected results on pages 10-11 of the remarks are not commensurate with the instantly pending claims because the data in applicant’s specification does not cover the full scope of the instantly pending claims. Applicant asserts the results are the result of the “unique carbohydrate profile” generated by the specific enzymatic treatment process of the specification. However, claims 1 and 18 have completely different “carbohydrate profiles”. It is unclear from applicant’s remarks which profile is “unique”. Additionally, the present claims do not recite any product by process limitations commensurate with the “specialized” process applicant asserts yields unexpected results. As such, these assertions are not found persuasive.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 Michele L Jacobson whose telephone number is (571)272-8905. The examiner can normally be reached Monday through Friday from 10-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michele L Jacobson/Primary Examiner, Art Unit 1793
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