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 .
The amendment filed 3/23/2026 has been entered. Claims 1-15 are pending. Claims 13-15 are withdrawn. Prior objections and rejections not included below are withdrawn in view of Applicant’s arguments and amendments.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites “a protein fat ratio” and should properly read “a protein to fat ratio”. Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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 1 recites a ratio of protein:fat. However, it is unclear whether the basis is w/w, v/v/, or some other basis. For the purposes of examination, the basis is interpreted as a weight basis.
Claims 2-12 depend from independent Claim 1 and are therefore also rejected.
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.
Claim(s) 1-4, 6-7, 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Herning (GB 2212380 A)
Regarding Claim 1, Herning teaches a method for making a milk concentrate product with an increased amount of milk protein (Page 2, Lines 10-15), which is a “liquid protein concentrate”. Herning teaches the use of added fats (Page 2, Lines 15-16). Herning teaches that the method comprises providing a milk concentrate and mixing the concentrate with fats (which is the same as “adding fat”, Page 3, Lines 3-16). The final product comprises 9-11% protein (Abstract) and 8-12% fat, which is a ratio of 0.75:1 to 1.38:1 of protein:fat, which overlaps the claimed range. Note that Herning teaches that the product may be diluted with water to yield milk substitute product (Page 1, Lines 18-21). Herning is therefore interpreted to teach a method which produces a “ready-to consume” food product, as claimed. Additionally, note that the addition of water does not change the ratio of protein:fat.
Herning teaches the use of added fats, such as milk fats or vegetable fats (Page 2, Lines 34-37), “wholly or in part” as the fat component. Herning additionally teaches the use of a dairy ingredient, such as butter (Page 4, Line 13). It would have been obvious to utilize both vegetable fat (i.e. a fat) and milk fat (i.e. a dairy ingredient) to the composition, since Herning teaches the use of vegetable fats and milk fats “wholly or in part” as the fat ingredient (Page 3, Line 36). Note that the use of milk fat, a dairy ingredient, meets the limitation of “adding a dairy ingredient” as claimed.
Regarding Claim 2, Herning teaches that the liquid protein concentrate is derived from skim milk (Page 2, Line 12).
Regarding Claim 3, Herning teaches that the liquid protein concentrate has a fat content of “about 0.1%” (Page 3, Line 1), which is interpreted to both approach and overlap the claimed range.
Regarding Claim 4, Herning teaches that the liquid protein concentrate has a lactose content of less than 2% (Page 4, Line 30).
Regarding Claim 6, Herning teaches the use of vegetable fat (Page 2, Line 37), which encompasses vegetable oil).
Regarding Claim 7, note that it would have been obvious to have utilized both vegetable fat and milk fat (i.e. a dairy ingredient) in the composition of Herning, as discussed above in regards to Claim 1.
Herning teaches the addition of 128 kg of a dairy ingredient (milk fat, or butter) to 647 kg of the protein concentrate (Page 4, Lines 11-12).
Herning teaches that fats such as milk fats or vegetable fats (Page 2, Lines 34-37), “wholly or in part” as the fat component. Herning additionally teaches the use of a dairy ingredient, such as butter (Page 4, Line 13). It would have been obvious to utilize both vegetable fat (i.e. a fat) and milk fat (i.e. a dairy ingredient) to the composition, since Herning teaches the use of vegetable fats and milk fats “wholly or in part” as the fat ingredient (Page 3, Line 36).
It therefore would have been obvious to have utilized some amount of vegetable fat, e.g. 20 kg, for the dairy ingredient, and formulate a composition comprising 647 kg of protein concentrate, 20 kg of vegetable fat, and 108 kg of a dairy ingredient. The amount of vegetable fat relative to the amount of protein concentrate (20/647 = 3.1%) lies within the claimed range
Regarding Claim 11, Herning teaches the addition of 128 kg of a dairy ingredient (milk fat, or butter) to 647 kg of the protein concentrate (Page 4, Lines 11-12).
Herning teaches that fats such as milk fats or vegetable fats (Page 2, Lines 34-37), “wholly or in part” as the fat component. Herning additionally teaches the use of a dairy ingredient, such as butter (Page 4, Line 13). It would have been obvious to utilize both vegetable fat (i.e. a fat) and milk fat (i.e. a dairy ingredient) to the composition, since Herning teaches the use of vegetable fats and milk fats “wholly or in part” as the fat ingredient (Page 3, Line 36).
It therefore would have been obvious to have utilized some amount of vegetable fat, e.g. 99 kg, for the dairy ingredient, and formulate a composition comprising 647 kg of protein concentrate, 99 kg of vegetable fat, and 29 kg of a dairy ingredient. The amount of a dairy ingredient relative to the amount of protein concentrate (29/647 = 4.5%) lies within the claimed range.
Regarding Claim 12, Herning teaches that the product is heated to 138 °C for 4 seconds (Page 4, Lines 20-21).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Herning in view of Meyer (“High concentration of skim milk proteins by ultrafiltration: Characterisation of a dynamic membrane system with a rotating membrane in comparison with a spiral wound membrane”, DOI: 10.1016/j.idairyj.2015.07.010)
Regarding Claim 5, Herning teaches that a “chief part” of the liquid protein concentrate is milk proteins (Page 2, Line 15), and additionally teaches the use of ultrafiltration techniques known in the art (Page 2, Line 20) but does not specifically address a milk concentrate (milk concentrate) having greater than 20% (w/v) protein content as claimed.
Meyer teaches that ultrafiltration (Abstract) of milk can achieve protein concentrations of greater than 20% (Figure 8) utilizing conventional techniques (Page 81, Column 2, Paragraph 4). Note that spiral wound membranes are commonly used in the art of milk ultrafiltration (Introduction, Paragraph 2).
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to utilize a milk concentrate having greater than 20% (w/v) protein content, as claimed, for the protein content. One would have been motivated to make such a modification since Herning teaches the use of a protein concentrate produced through ultrafiltration, and Meyer teaches that milk protein concentrations with greater than 20% protein are known in the art of milk ultrafiltration.
Claim(s) 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Herning view of Dairy UK (https://www.dairyuk.org/wp-content/uploads/2018/12/FINAL-Compositional-Standards-Cream.pdf, 2018).
Regarding Claim 8, Herning teaches the method as discussed above in regards to Claim 1, including the use of milk fats (Page 2, Lines 34-37) as the fat component, but does not discuss the use of cream as the source of milk fat.
Dairy UK teaches that cream, which is a dairy ingredient, contains a large amount of milk fat (Page 3).
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to utilize cream as the source of added milk fat in the composition of Herning. One would have been motivated to make such a modification since Herning teaches the addition of milk fats to the composition. It additionally would have been obvious to utilize both vegetable fat (i.e. a fat) and cream (i.e. a dairy ingredient) to the composition, since Herning teaches the use of vegetable fats and milk fats “wholly or in part” as the fat ingredient (Page 3, Line 36).
Regarding Claim 9, Herning teaches the method as discussed above in regards to Claim 1, including the use of milk fats (Page 2, Lines 34-37) as the fat component, but does not discuss the use of cream as the source of milk fat.
Dairy UK teaches that cream, which is a dairy ingredient, has milk fat content ranging from, e.g. 35% - 55% (Page 3).
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to utilize cream as the source of added milk fat in the composition of Herning. One would have been motivated to make such a modification since Herning teaches the addition of milk fats to the composition. It additionally would have been obvious to have utilized a cream with the claimed amount of milk fat, since the claimed range of milk fat lies within the ranges known for a cream product. The selection of a known material based on its suitability for its intended use support a prima facie obviousness determination. See MPEP 2144.07
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Herning as applied to Claim 1, above, in view of Dairy UK and Dairy Management Inc (https://www.thinkusadairy.org/assets/documents/Customer%20Site/C3-Using%20Dairy/C3.7-Resources%20and%20Insights/03-Application%20and%20Technical%20Materials/Cream_Spec.pdf, 2005)
Regarding Claim 10, Herning teaches the method as discussed above in regards to Claim 1, including the use of milk fats (Page 2, Lines 34-37) as the fat component, but does not discuss the use of cream as the source of milk fat.
Dairy UK teaches that cream, which is a dairy ingredient, has high milk fat content (Page 3). Dairy Management Inc teaches that cream typically has protein content greater than 1% (Page 1, Table).
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to utilize cream as the source of added milk fat in the composition of Herning. One would have been motivated to make such a modification since Herning teaches the addition of milk fats to the composition. It additionally would have been obvious to have utilized a cream with the claimed amount of protein, since the claimed range of protein lies within the ranges known for a cream product. The selection of a known material based on its suitability for its intended use support a prima facie obviousness determination. See MPEP 2144.07
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-12 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 DEBORAH LIU whose telephone number is (571)270-5685. The examiner can normally be reached 12-8 Eastern Time.
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/D.L./ Examiner, Art Unit 1791
/Nikki H. Dees/ Supervisory Patent Examiner, Art Unit 1791
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