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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 24, 2026 has been entered. Claims 1-15 and 17-18 are pending. Claims 8-15 and 17-18 are withdrawn as being directed to non-elected inventions. No claim amendments have been made.
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.
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 1-2, 4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Cox et al. (US Patent No. 6,007,856; Dec. 28, 1999).
Regarding claim 1, Cox discloses a clouding emulsion comprising a water-dispersible starch-component (col 5 lines 25-45; col 6 lines 40-60, See Table 1), a water-soluble gum-component (col 6 lines 40-60), an oil-based clouding component (col 7 lines 20-30), and water (col 7 lines 10-20).
Cox is considered to render obvious a clouding emulsion comprising both a starch component and a gum component as Cox teaches the emulsion comprising a stabilizer that can be a mixture of components, including starch and gum (col 6 lines 40-60).
Cox teaches that the oil-based clouding component is present in an amount from about 0.1 to about 25% (col 7 lines 10-15), thus overlapping the claimed range of 0.1 to 5% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Cox teaches that the stabilizer, which can be a combination of starches and gum, is present in an amount from about 1 to about 30% (col 7 lines 10-15), thus overlapping the claimed ranges of 5 to 60% by weight starch component and 0.1 to 5% by weight gum component. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
It would have been obvious to one of ordinary skill in the art to vary the amount of each of the starch and the gum in the stabilizer to result in a desired stability in the clouding emulsion. This is merely routine experimentation that is well within the ordinary skill in the art.
Further, as stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Cox further teaches that the water in present in an amount from about 25 to 97.9% (col 7 lines 10-20), which is equal to the remaining amount to total 100% by weight.
With respect to the ratio of the starch component to the gum component, as stated above, Cox teaches that the starch and gum can be used in combination as a stabilizer in the emulsion, wherein the stabilizer is present in an amount from about 1 to about 30% (col 7 lines 10-15). It would have been obvious to one of ordinary skill in the art to vary the amount of each of the starch and the gum in the stabilizer to result in a desired ratio, thus resulting in a desired stability in the clouding emulsion. This is merely routine experimentation that is well within the ordinary skill in the art.
With respect to the ratio of the starch component to the oil component, as stated above, Cox teaches that the oil can be present in an amount of about 0.1 to about 25% (col 7 lines 10-15), and the starch can be present in an amount of about 1 to about 30% (col 7 lines 10-15). Therefore, Cox renders obvious an overlapping ratio as the starch can be in an amount of 12 times that of the oil. It would have been obvious to one of ordinary skill in the art to vary the amount of each of the starch and the oil in the stabilizer to result in a desired ratio, thus resulting in a desired stability in the clouding emulsion. This is merely routine experimentation that is well within the ordinary skill in the art.
Regarding claim 2, as stated above, Cox teaches that the stabilizer, which can be a combination of starches and gum, is present in an amount from about 1 to about 30% (col 7 lines 10-15), thus overlapping the claimed range of 20 to45% by weight starch component. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Further, it would have been obvious to one of ordinary skill in the art to vary the amount of the starch to result in a desired stability in the clouding emulsion. This is merely routine experimentation that is well within the ordinary skill in the art.
As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding claim 4, as stated above, Cox teaches that the stabilizer, which can be a combination of starches and gum, is present in an amount from about 1 to about 30% (col 7 lines 10-15), thus overlapping the claimed range of 0.1 to 2.5% by weight gum component. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Further, it would have been obvious to one of ordinary skill in the art to vary the amount of the gum to result in a desired stability in the clouding emulsion. This is merely routine experimentation that is well within the ordinary skill in the art.
As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding claim 6, Cox teaches that the oil-based clouding component is present in an amount from about 0.1 to about 25% (col 7 lines 10-15), thus overlapping the claimed range of 0.1 to 2.5% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claim 7, Cox teaches that the oil-based clouding component can be vegetable oil (Table 1).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Cox et al. (US Patent No. 6,007,856; Dec. 28, 1999) as applied to claim 1 above, and further in view of Jelavich et al. (US 2015/0305382 A1; Oct. 29, 2015).
Regarding claim 3, as stated above, Cox teaches that the clouding emulsion comprises starch, but fails to teach that the starch is native rice starch.
Jelavich teaches an opacity modifying agent for edible products, wherein the modifying agent includes a starch that can be unmodified rice starch, or native rice starch, as it is capable of functioning as part of an opacity (e.g. cloudy) modifying agent ([0008], [0020]).
As Jelavich is directed towards a cloudy agent comprising starch for incorporating into food products, which is the same as Cox, and further teaches that native rice starch is capable of functioning as part of the cloudy agent, it would have been obvious to one of ordinary skill in the art to have the starch of Cox comprise native rice starch. This is a simply substitution of one know starch stabilizer for another to yield the predictable result of stabilizing a clouding emulsion.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Cox et al. (US Patent No. 6,007,856; Dec. 28, 1999) as applied to claim 1 above, and further in view of Taylor et al. (US Patent No. 6,616,358; April 1, 1997).
Regarding claim 5, as stated above, Cox teaches that the clouding emulsion can comprise gums. Cox, however, fails to teach that the gum is gum Arabic.
Taylor teaches a clouding emulsion also comprising stabilizer that can be gum, wherein the gum is gum Arabic (col 4 lines 15-20).
As Taylor also teaches a clouding emulsion comprising a stabilizer, which is the same as Cox, and further teaches that gum Arabic is a suitable stabilizer for the clouding emulsion, it would have been obvious to one of ordinary skill in the art to have the stabilizer of Cox comprise gum Arabic. This is a simply substitution of one know stabilizer for another to yield the predictable result of stabilizing a clouding emulsion.
Response to Declaration
The Declaration under 37 CFR 1.132 filed August 24, 2026 is insufficient to overcome the rejection of claims 1-7 based upon the 103 rejection as set forth in the last Office action.
Applicant argues that using a water-dispersible starch component, a water-siluble gum component and an oil-based clouding component at the specifically claimed ratios improves the turbidity of beverages. Applicant has provided data showing that compositions comprising only one of the claimed ratios or having one of the claimed ratios outside of the claimed ranges has decreased turbidity.
While the examiner agrees that the data shows that the claimed ratios result in different turbidities, the examiner notes that the data provided is not commensurate in scope with the claims. The data adds the clouding emulsion to a beverage in a specific amount, which is not reflected in the claims. Therefore, it is not clear if the same results apply when the clouding emulsion is used in any product. Additionally, the examples showing unexpected results are specific to using vegetable oil, native rice starch, and gum Arabic, which are also not recited in the independent claim. Claim 1 is very broad with respect to the components, only requiring a water-dispersible starch, a water-soluble gum, and an oil-based clouding component. Therefore, it is not clear if such unexpected results occur with the use of any component that falls under the claimed terms.
Cox teaches the same components as claimed in claim 1 in overlapping ranges. Cox teaches that the oil-based clouding component is present in an amount from about 0.1 to about 25% (col 7 lines 10-15), thus overlapping the claimed range of 0.1 to 5% by weight. Cox teaches that the stabilizer, which can be a combination of starches and gum, is present in an amount from about 1 to about 30% (col 7 lines 10-15), thus overlapping the claimed ranges of 5 to 60% by weight starch component and 0.1 to 5% by weight gum component. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I) It would have been obvious to one of ordinary skill in the art to vary the amount of each of the starch, oil and gum to result in a desired ratio, thus resulting in a desired turbidity in the clouding emulsion. This is merely routine experimentation that is well within the ordinary skill in the art.
As stated in MPEP 2144.05: "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
For the reasons stated above, as the unexpected results are not commensurate in scope with the claims, and Cox teaches the same components as claimed in overlapping ranges, this Declaration is not found persuasive to overcome the 103 rejections above.
Response to Arguments
Applicant’s arguments with respect to the 103 rejection have been fully considered but were not found persuasive.
Applicant argues on pages 5-7 that the instant invention provides unexpected results as shown in the Declaration. This is not found persuasive for the same reasons as stated above.
While the examiner agrees that the data shows that the claimed ratios result in different turbidities, the examiner notes that the data provided is not commensurate in scope with the claims. The data adds the clouding emulsion to a beverage in a specific amount, which is not reflected in the claims. Therefore, it is not clear if the same results apply when the clouding emulsion is used in any product. Additionally, the examples showing unexpected results are specific to using vegetable oil, native rice starch, and gum Arabic, which are also not recited in the independent claim. Claim 1 is very broad with respect to the components, only requiring a water-dispersible starch, a water-soluble gum, and an oil-based clouding component. Therefore, it is not clear if such unexpected results occur with the use of any component that falls under the claimed terms.
Applicant keeps arguing that the turbidity benefit cannot be inferred from Cox alone or in combination with Jelavich and/or Taylor.
This is not found persuasive as the claims do not even require a specific turbidity value. Further, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Cox teaches the presence of the claimed components in overlapping ranges and therefore the claimed invention is merely an obvious variant over the prior art.
Applicant argues that the claimed amounts and ratios of starch to gum and starch to oil provided compositions with stability, homogeneity, and efficient clouding. Applicant states that Cox does not disclose such compositions and is directed towards the stability of carotenoids against oxidation as Cox teaches that the ratio of stabilizer to oil must be low.
This is not found persuasive as Cox teaches that the oil can be present in an amount of about 0.1 to about 25% (col 7 lines 10-15), and the starch can be present in an amount of about 1 to about 30% (col 7 lines 10-15). Therefore, Cox renders obvious an overlapping ratio as the starch can be in an amount of 12 times that of the oil. It would have been obvious to one of ordinary skill in the art to vary the amount of each of the starch and the oil in the stabilizer to result in a desired ratio, thus resulting in a desired stability in the clouding emulsion. This is merely routine experimentation that is well within the ordinary skill in the art.
Cox clearly teaches that the starch can be present in a higher amount than the oil. When the oil is present in an amount of 0.1% and the starch component in an amount of 1%, the starch to oil ratio is 10:1, which is close to the 12:1 claimed ratio. Further, Cox clearly teaches a range of each component and therefore one of ordinary skill in the art can determine the optimum ratio to achieve a desired effect.
Regarding applicant’s arguments that the examples in Cox use an amount of oil greater that the starch component and therefore would not suggest a ratio of starch to oil as claimed. Again, this is not found persuasive as the examiner is relying on the broader teaching in Cox showing that the ranges of each component can vary.
As stated in MPEP 2123: The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)
With respect to Cox not teaching improved stability, homogeneity, and efficient clouding, the examiner notes that such features are not claimed and therefore applicant’s arguments are not commensurate in scope with the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument on page 6 that Cox addresses a fundamentally different technical problem than the claimed invention, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Cox teaches the presence of the claimed components in overlapping ranges and therefore the claimed invention is merely an obvious variant over the prior art.
Applicant’s arguments regarding Cox failing to teach or suggest the specific weight percent ranges of starch, gum and oil-based clouding component and the claimed ratios being recognizes as result-effective variables for cloud stability is not found persuasive for the same reasons as stated above. Additionally, as stated above, Cox teaches overlapping ranges for the claimed components. Cox teaches that the oil-based clouding component is present in an amount from about 0.1 to about 25% (col 7 lines 10-15), thus overlapping the claimed range of 0.1 to 5% by weight. Cox teaches that the stabilizer, which can be a combination of starches and gum, is present in an amount from about 1 to about 30% (col 7 lines 10-15), thus overlapping the claimed ranges of 5 to 60% by weight starch component and 0.1 to 5% by weight gum component. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Therefore, as stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Further, with respect to the data in the specification to show that the claimed invention provided improved turbidities as well as more intense and homogenous cloudiness compared to comparative examples. Applicant states that the turbidity is significantly better than the turbidity caused by starch-free clouding agents. This is not found persuasive to overcome Cox as Cox teaches the presence of starch and therefore is not starch-free.
Applicant further argues that the claimed amounts of starch and oil and gum gives a ready to drink beverage appealing appearance and texture without causing a negatively perceived mouthfeel. This is not found persuasive as the data applicant refers to involves adding the composition to a beverage is a desired dosage. The claims do not require such limitations. It appears that a drink beverage having appealing appearance and texture without causing a negatively perceived mouthfeel is dependent upon the particle size of the clouding emulsion and the dosage added to the beverage. Again, the claims do not require that the starch based clouding emulsion be spray dried to a desired particle size.
Additionally, the data provided in the instant specification at Table 1 shows that the clouding emulsion comprises gum in an amount of 0.5% by weight, oil in an amount of 0.5% by weight, and starch in an amount of 35% by weight. These amounts only represent one data point for the claimed ranges and therefore it is not clear how unexpected results can occur across the entire claimed range for each component when there is not data to support such conclusion. Therefore, applicant’s arguments of unexpected results are not found persuasive, especially as the claims do not accurately reflect the data showing unexpected results as the claimed ranges are broader, and Cox teaches overlapping ranges for the claimed components.
Applicant’s arguments on pages 8-9 with respect to the secondary references Jelavich and Taylor are not found persuasive for the same reasons as stated above. Cox is being relied upon to render obvious the claimed ratios. The secondary references are merely being relied upon to teach known starch components.
For the reasons stated above, the 103 rejections are maintained.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791
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