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 Objections
Claim 8 objected to because of the following informalities:
Before “granulated objects” delete “the” and amend to instead recite “mix-in”. While the claim as currently drafted is clear in view of Applicant’s disclosure to mean the “granulated objects” mixed into the dough are distinct from the “granulated objects” supplied in step (b) of claim 1, the claim should be amended as proposed above such that the language more accurately represents the feature as disclosed in the specification (paragraph 29), and in order to place the claim in better form.
Appropriate correction is required.
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.
Claims 1-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Onoguchi et al. (US 5,916,601) in view of Kobayashi et al. (JP 4516158 B1).
Citations to Kobayashi et al. are made with respect to the EPO translation provided with the Office Action dated 7/7/2025.
Regarding claim 1, Onoguchi et al. teaches a method for manufacturing raised-brim products comprising a filling material enclosed within a cylindrical dough sheet, construed to be a type of “combined food product” (abstract), comprising discharging a tubular food dough with filling from a discharging device and forming a bottom of the tubular food dough (figures 7a and 7e; column 4 lines 62-65; column 5 lines 25-31) and cutting the tubular food dough with shutter cutting members 1A to divide the combined food product (figures 7b-d; column 5 lines 1-15 and 21-24), wherein the food product is formed without fully closing the upper end of the dough so that an upper surface of the filling is exposed (figure 7e; column 5 lines 48-58). Since the bottom end of the tubular food dough is closed and sealed by the upper surface of the shutter, the reference teaches “forming a bottom of the tubular food dough” as recited in step (a).
Regarding the limitation of “the upper surface of the filling partially and uniformly covered with the food dough”, the limitation “ununiformly covered” is not defined by the specification. Therefore, the limitation “ununiformly covered” is given its broadest reasonable interpretation in view of the specification to mean that the upper surface of the covered objects has any degree of inconsistency with respect to any parameter (e.g., contact area, location, dough thickness, degree of coverage, etc.).
Onoguchi et al. teaches that the formed combined food product has a “raised brim” around exposed filling (figures 6, 7e, 11e, and 19e), where it would have been reasonable to expect that at least some of the filling adjacent to the brim is “covered” thereby. Further, the cutting action is shown to cause some dough to be moved inward over the filling (figures 7c, 11c, and 19c). Therefore, the reference is construed to read on the filling “partially and ununiformly covered with food dough” since some of the upper surface is exposed, and since at least some degree of variation (e.g., dough thickness, material contact, shape, inconsistencies in the filling, etc.) would have been present at the surface locations at which the filling is covered by the dough. Additionally, a filling which is “partially covered” by the dough as explained above would have necessarily been “ununiformly covered” since the dough extends only part way across the filling surface; the variation between covered and uncovered parts is construed to read on the “ununiform” structure.
Onoguchi et al. does not teach supplying a predetermined amount of granulated objects to an inside of the tubular food dough formed with the bottom.
Kobayashi et al. teaches a method for forming a food product by encasing a solid food ingredient in a skin material (paragraph 1), where the solid food ingredient H comprises granulated objects e.g., “granulated sweetened beans and nuts” (paragraph 25) and the skin comprises extruded food such as dough (paragraphs 17 and 20). The skin forms a tubular product having a bottom (figure 5) into which the granulated objects are supplied (figures 6-7) before the combined food product is divided from the skin (figures 8-11).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Onoguchi et al. to supply granulated objects to the tubular food dough since the reference does not particularly limit the filling materials nor the method by which the filling is introduced, and states other methods can be used (column 4 lines 8-17; column 9 lines 14-16), since the prior art recognizes granulated objects as filling in co-extruded dough products, in order to control and/or vary the amount of granulated objects fed to the dough, thereby allowing for the amount to be adjusted as desired, particularly since there is no evidence of criticality or unexpected results associated with the claimed feature.
Regarding claim 2, Onoguchi et al. teaches shutter cutting members 1A comprising cutting edges, where closing the shutter opening cuts the tubular food dough and divides the combined food product (figures 1-5 and 7b-e; column 3 lines 41-64).
Regarding claim 3, Onoguchi et al. teaches the cutting members comprise surface 101 (figure 1), where closing the shutter causes the tubular food dough to be sealed by the surfaces 101 to form the bottom of a subsequent product (figures 7c-e; column 5 lines 41-44).
Regarding claim 4, Onoguchi et al. teaches a scraping part formed between surface 101 and groove 6 (figures 1-3 and 5), where closing the shutter causes the upper surface of the supplied granulated objects to be ununiformly covered as stated for claim 1 above.
Regarding claim 5, Onoguchi et al. does not teach the discharging device includes an annular space defined between a plurality of concentrical and overlapping cylinders, where the tubular food dough is discharged through the annular space.
Kobayashi et al. teaches the discharging devices includes a plurality of concentrical and overlapping nozzles (cylinders) 30-33, where the material of the skin is discharged through the annular space between said cylinders (figure 5; paragraph 18).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Onoguchi et al. such that the dispensing device comprises the claimed features since the reference does not particularly limit the dispensing device and already suggests a coaxial double nozzle (column 4 lines 11-17), since the prior art recognizes such features for discharging a tubular edible material to be filled, since there is no evidence of criticality or unexpected results associated with the claimed feature, and to allow multiple layers to be simultaneously formed.
Regarding claim 7, the combination applied to claim 1 teaches the dough partially and ununiformly covers the upper surface of the granulated objects. While the reference does not explicitly recite that the dough is embedded into gaps between the discrete pieces of granulated objects at the upper surface, the process of the prior art combination appears to be the same as that of Applicant’s claimed process. This is particularly since Onoguchi et al. employs the same method of shutter cutting to divide the combined food product from the dough of the subsequent product, where the shutter cutting does not entirely seal the upper surface of product to leave a “raised brim”. Therefore, absent evidence to the contrary, one of ordinary skill in the art would have expected the food dough of the prior art combination to similarly be embedded in gaps between the granulated objects as claimed.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Onoguchi et al. in view of Kobayashi et al. as applied to claims 1-5 and 7 above, and further in view of Roth et al. (US 4,447,458).
Regarding claim 6, the combination applied to claims 1 and 5 teaches supplying the granulated objects through the innermost cylinder 50 as taught by Kobayashi et al. (figures 5-7), but does not teach the granulated objects are dropped due to their own weights.
Roth et al. teaches a method for forming a food product comprising bits or pieces of edible material (abstract), where the pieces 100 are supplied to chamber 70 of funnel 68 and then combined with ice cream 94 (figure 3). The pieces are fed into the funnel by feed belts 230 formed around the forming device (figure 8; column 12 lines 6-9 and 32-35). The structure of the belts in relation to the chamber 240 necessarily drops the pieces 100 “due to their own weights” (figure 8).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Onoguchi et al. such that the combined food product comprises granulated objects that are supplied under their own weights through the innermost cylinder since the prior art recognizes such a feature for supplying granulated foods to an extruded material to form a combined product, in order to minimize process energy requirements and/or reduce the number of devices requiring maintenance, thereby increasing process efficiency, and since there is no evidence of criticality or unexpected results associated with the claimed feature. It is noted that while Roth et al. teaches gravity feeding to the outer layer of the device, one of ordinary skill in the art would have been capable of making the appropriate modifications to gravity feed pieces to the center for the filling of Onoguchi et al.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Onoguchi et al. in view of Kobayashi et al. as applied to claims 1-5 and 7 above, and further in view of Thulin et al. (US 4,579,744).
Regarding claim 8, Onoguchi et al. does not teach the dough comprises granulated objects mixed therein prior to step (a).
Thulin et al. teaches a co-extruded food product (abstract) comprising filling 34 enclosed by an outer doughy mass 32 containing particulate material 26 (figures 3 and 5; column 6 lines 40-46), where the particulate material is mixed into the dough prior to extrusion (column 8 lines 47-55). Various types of particulate matter can be used to obtain a desired dissimilarity in composition between the inner and outer layers, thereby producing different tastes, colors, appearances, textures, consistencies, or the like (column 1 lines 23-26 and 29-31).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Onoguchi et al. to mix the dough with particulates prior to extrusion since the reference does not limit the type and composition of the dough (column 9 lines 10-15), since the prior art recognizes that particulates can be mixed into outer dough layers prior to co-extruding a food product, and therefore to provide a product having dissimilarity in composition between the inner and outer layers for desired tastes, colors, appearances, textures, and/or consistencies.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Onoguchi et al. in view of Kobayashi et al. as applied to claims 1-5 and 7 above, and further in view of Schmidt (US 2013/0156919 A1).
Regarding claim 9, Onoguchi et al. does not teach pressing the combined food product which is formed to force the food dough between discrete pieces of the supplied granulated objects.
Schmidt teaches a method for introducing visible ingredients into the surface of a food present as a flowable mass (abstract), where the flowable mass is sprinkled with said ingredients (paragraph 9) and then pressed slightly to embed the ingredients therein (paragraphs 10 and 17).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Onoguchi et al. to press the combined food product as claimed in order to similarly ensure the granulated objects of the combination applied to claim 1 become embedded in the dough such that the risk of the granulated objects falling out and/or away from the dough is minimized, thereby facilitating consistency and stability during transport and handling.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Onoguchi et al. in view of Kobayashi et al. as applied to claims 1-5 and 7 above, and further in view of Conrad et al. (US 3,057,732).
Regarding claim 10, Onoguchi et al. does not teach quick freezing the combined food product.
Conrad et al. teaches a method for making a food product comprising a mashed potato product filling and edible container (column 1 lines 9-13), where the product is quick frozen in order to retain natural vegetable flavoring relative to slow freezing, and quickly slowing and stopping the diffusion of moisture from the filling to the shell (column 6 lines 12-19). The frozen product can be stored “more or less indefinitely” at temperatures below 0oF (column 6 lines 36-37).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Onoguchi et al. to quick freeze the combined food product since the reference suggests further processing (column 8 lines 11-14), since the prior art recognizes quick freezing filled products for preservation, for the advantages taught by Conrad et al., and to combine prior art elements according to known methods to yield predictable results.
Response to Arguments
The amendment to claim 8 necessitated new grounds of rejection. Onoguchi et al. is modified with Thulin et al., which teaches mixing particulates into dough prior to co-extruding the dough with a filling.
Applicant's arguments filed 10/6/2025 have been fully considered but they are not persuasive.
Applicant argues on page 4 that neither Onoguchi nor Kobayashi teach or suggest the use of granulated objects, where paragraph 25 of Kobayashi describes solid food materials, not granulated objects.
This is not persuasive since the cited portion of Kobayashi explicitly states “granulated sweetened beans and nuts”, as well as other substances known to form “granulated objects” as interpreted by one of ordinary skill, such as “diced flesh of apples”, “diced meat”, and “sliced carrots”. See also figures 6-16 which all show granular objects within the dough.
Further, Applicant’s specification does not define the limitation “granulated objects” to require particular features. Rather, the specification provides generic examples such as “raisins, crushed nuts, or granulated grains” (paragraph 2). One of ordinary skill in the art in view of the specification would have recognized the substances disclosed by Kobayashi to be “granulated objects”.
Applicant argues neither Onoguchi nor Kobayashi teach or suggest incorporating granulated objects into an inside of tubular dough and a combined food product wherein the granulated objects are partially and [ununiformly] covered with the dough, stating Kobayashi states the solid food ingredients are evenly distributed, one of ordinary skill would not be motivated to combine the references as they are directed to different technologies, and the combination would not arrive at the claimed invention.
This is not persuasive since Kobayashi nonetheless teaches the filling includes granulated objects as explained above. Onoguchi already teaches that the formed combined food product has a “raised brim” around exposed filling (figures 6, 7e, 11e, and 19e), where it would have been reasonable to expect that at least some of the filling adjacent to the brim is “covered” thereby. The cutting action is also shown to cause some dough to be moved inward over the filling (figures 7c, 11c, and 19c). Thus, at least some degree of variation (e.g., dough thickness, material contact, shape, inconsistencies in the filling, etc.) would have been expected at the surface locations where the filling is covered by the dough.
Further, Onoguchi does not particularly limit the type of filling used (column 9 lines 14-16). Since the granular filling material of Kobayashi would have been expected to form an upper surface having uneven structure i.e., spaces formed between the granular objects as shown by the cited figures, one of ordinary skill in the art would have similarly expected the partially covered upper surface of the granulated objects to be “ununiformly covered” with the dough.
In response to Applicant's arguments against Roth, Schmidt, and Conrad individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The combination of Onoguchi and Kobayashi teaches the features of claim 1 as explained above. Roth is relied on to show that ingredients of a food product can be fed to an extrusion device by gravity, where one of ordinary skill would have been motivated to supply the filling by such means based on known features such as material flowability, degree of compaction within the dough, and ease of switching between different filling materials. Schmidt is relied on to show that visible ingredients (granulated objects) are applied to a flowable mass and pressed slightly to facilitate embedding the ingredients therein, thereby enhancing product form and stability. Conrad is relied on to show quick freezing is known in the art and has recognized advantages. There is no evidence of record to indicate that the features recited by the respective claims yield unexpected results.
Applicant’s argument against the dependent claims is not persuasive for the same reasons stated above.
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 BRYAN KIM whose telephone number is (571)270-0338. The examiner can normally be reached 9:30-6.
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, Erik Kashnikow can be reached at (571)-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRYAN KIM/Examiner, Art Unit 1792
Prosecution Insights