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 .
Claim Interpretation
Paragraph [0101] of the published version of the specification teaches that the humidification treatment and the drying treatment can be performed under the same temperature and humidity, and in this case, the humidification treatment and the drying treatment can be performed at the same time. For the purposes of examination, it is considered that the hardening treatment and drying treatment can occur at the same time.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO2007/077970 (SHIBATA).
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SHIBATA teaches at pg. 19, lines 23-28 teaches the use of low humidity and high temperature to produce a solid milk product. The humidity is 0%RH-30%RH. The temperature can be 20°C-150°C. This overlaps the temperature of the humidification and drying treatments. No other parameters for the drying treatment are recited. Paragraph [0101] of the published version of the specification teaches that the humidification treatment and the drying treatment can be performed under the same temperature and humidity, and in this case, the humidification treatment and the drying treatment can be performed at the same time. For the purposes of examination, it is considered that the hardening treatment and drying treatment can occur at the same time. The recited humidification treatment occurs at “a temperature of higher than 100oC and 330oC or lower” and drying treatment”. The drying treatment occurs “a temperature of higher than 80oC and 330oC or lower”. Thus, treatments can occur at the same temperature and would include performing a hardening treatment and a drying treatment on the humidified molded body.
Moreover, the manner in which the solid food or solid milk of the claims is obtained by is a product-by-process recitation. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.).
In the alternative, any slight differences in the solid milk composition of SHIBATA as a result of the recited process steps would have been obvious to one of ordinary skill in the art and well within the ordinary level of skill to have produced.
It is also noted that the Patent Office does not have the facilities to measure the claimed hardening index. Applicant has chosen to use parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facia case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
Response to Arguments
Applicant's arguments filed 6/10/2026 have been fully considered but they are not persuasive.
CHAURIN is no longer recited.
The applicant argues that Para. [0094] of the specification states that the humidification treatment and the drying treatment can be performed at the same time in some cases. But argues that this does not mean that any drying treatment necessarily also serves as a humidification treatment. It is argued that claim 1 clearly recites a hardening treatment comprising "a humidification treatment on the molded body to obtain a humidified molded body" and "a drying treatment on the humidified molded body".
Paragraph [0101] of the published version of the specification teaches that the humidification treatment and the drying treatment can be performed under the same temperature and humidity, and in this case, the humidification treatment and the drying treatment can be performed at the same time. For the purposes of examination, it is considered that the hardening treatment and drying treatment can occur at the same time. The recited humidification treatment occurs at “a temperature of higher than 100oC and 330oC or lower” and drying treatment”. The drying treatment occurs “a temperature of higher than 80oC and 330oC or lower”. Thus, treatments can occur at the same temperature and would include performing a hardening treatment and a drying treatment on the humidified molded body. Given the breadth of the claims and applicant’s own specification indicates that they can occur at the same time, SHIBATA is revisited.
The applicant also argues that the solid milk of claim 1 recites the two structural features of (i) a hardening index IF represented by Formula (1) of "0.477 mm² or more", and (ii) a content ratio FF of free fat in the solid milk is "1.23% by weight or less". As explained in the Amendment filed July 23, 2025, the comparative experimental results in the specification demonstrate that a humidification treatment on the molded body at a temperature of "higher than 100°C" is a process step that creates the IF and FF structural properties of the claimed solid milk. Accordingly, the process steps recited in claim 1, including the "humidification treatment", impart distinctive structural characteristics to the final solid milk product.
However, the claims recite a particular hardening index “when the solid milk” recites these two structural features. They are only structural requirements for purposes of determining the hardening index.
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 PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached M-F, 9:30-6:00p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached on 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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/PHILIP A DUBOIS/Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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