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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 14 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Amended Claim 14 recites “cooking a mixture of isomalt, MCT oil and water”…and this method step does not appear to be supported by the specification, Paragraphs 69-70, where the MCT oil appears to be considered as an additional ingredient which is added after cooling along with the flavorant. Therefore, Applicant’s claim as amended constitutes new matter.
Claim Rejections - 35 USC § 102
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.
Claims 1-6, 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mintel (“Hydrating mints candy” (November, 2006), both made of record by Applicant.
Regarding Claims 1-6, 10, Mintel teaches a hard candy product (Aquadrops lemon lime and mint flavor) comprising isomalt, flavorants including natural and artificial flavors, and medium chain triglycerides (MCT) (Pages 1-2). Mintel does not show the Aquadrops hard candy containing ethanol, propylene glycol, glycerol, or alcohols in the ingredients listing (Pages 1-2), therefore meeting the claims as well as the flavorant being a mint flavorant.
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 1-11 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Giersch (USPA 2006/0249167), made of record by Applicant, and as evidenced by “Neobee” (www.stepan.com) (2026).
Regarding original and amended Claims 1-11, Giersch teaches a hard candy product or a hard-boiled candy, comprising isomalt, a flavorant (Example 6) made in the method of Example 4, where the hard candy product is free of ethanol and propylene glycol, as Giersch teaches in Example 6 the flavors are mint-based (menthol and menthyl succinate along with a flavor enhancer/functional agent or sensate referred to as Compound I were dissolved in triacetin (instead of propylene glycol, as seen in Example 4), prior to mixing with molten isomalt and water. Giersch also do not teach any ethanol or glycerol in the hard candy (Examples 4 and 6), therefore also teaching 0 wt% ethanol and propylene glycol, and 0 wt% glycerol, and also free of the claimed alcohols, in light of the above taught composition and absence of the claimed alcohols. Therefore, Giersch teaches that both the hard candy and the flavorant are free of ethanol, propylene glycol and glycerol, as well as branched or linear chain alcohols, for the reasons set forth above and the teaching in Giersch of using triacetin instead of propylene glycol to dissolve the flavors prior to mixing with the isomalt and water.
Regarding amended Claim 1, Giersch also teaches that if appropriate, the compounds of the composition of the invention may have to be dissolved in a suitable solvent, such as propylene glycol, triacetin, ethanol, NEOBEE RTM (www.stepan.com), etc. (Paragraph 18). The evidentiary reference to Stepan.com shows that Neobee is known in the art as a medium chain triglyceride (MCT) (Page 1 of the evidentiary reference). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention, for the Compound I discussed above to have been dissolved in either triacetin or MCT oil, in light of the teachings of Giersch. Therefore, Giersch teaches or renders obvious the inclusion of MCT oil in the disclosed hard candy.
Regarding amended Claim 15, Giersch is taken as cited above in the rejection of amended Claim 1 and teaches a hard candy product or a hard-boiled candy and method of making, comprising using a flavorant in the isomalt hard candy composition (Example 6) made in the method of Example 4, where the hard candy product is free of ethanol and propylene glycol, as Giersch teaches in Example 6 the flavors are mint-based (menthol and menthyl succinate along with a flavor enhancer/functional agent or sensate referred to as Compound I) were dissolved in triacetin (instead of propylene glycol, as seen in Example 4), prior to mixing with molten isomalt and water. Giersch also teaches that if appropriate, the compounds of the composition of the invention may have to be dissolved in a suitable solvent, such as propylene glycol, triacetin, ethanol, NEOBEE RTM (www.stepan.com), etc. (Paragraph 18). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention, for the Compound I discussed above to have been dissolved in either triacetin or MCT oil, in light of the teachings of Giersch. Therefore, Giersch teaches or renders obvious the inclusion of MCT oil in the method of making the disclosed hard candy.
Giersch also do not teach any ethanol or glycerol in the hard candy (Examples 4 and 6), therefore also teaching 0 wt% ethanol and propylene glycol, and 0 wt% glycerol, and also free of the claimed alcohols, in light of the above taught composition and absence of the claimed alcohols. Therefore, Giersch teaches that both the hard candy and the flavorant are free of ethanol, propylene glycol and glycerol, as well as branched or linear chain alcohols, for the reasons set forth above and the teaching in Giersch of using triacetin or MCT oil instead of propylene glycol to dissolve the flavors prior to mixing with the isomalt and water. Since Giersch teaches the claimed method of using a flavorant in an isomalt hard candy composition, where the flavorant is free of ethanol and propylene glycol, and optionally further free of glycerol, one of ordinary skill in the art would have reasonably expected that any additional benefits resulting from using such a flavorant composition, such as extending shelf life, would also be expected to be the case for the hard candy of the prior art as well. 'It is well settled that a patent cannot be properly granted for [an invention] which would flow naturally from the teaching of the prior art.' See Ex parte Obiaya, 227 USPQ 58, 60 (Bd.Pat. App. & Inter. 1985) as cited in MPEP 2145 II. Therefore, for the above mentioned reasons, Giersch is seen to render obvious to one of ordinary skill in the art the claimed method of extending the shelf life of an isomalt hard candy by using a flavorant free of ethanol and propylene glycol, along with MCT.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Giersch (USPA 2006/0249167), made of record by Applicant, and as evidenced by “Neobee” (www.stepan.com) (2026), and in view of Mintel (“Hydrating mints candy” (November, 2006) and Kabse (USPA 2015/0056325).
Regarding amended Claim 12, Giersch is taken as cited above in the rejection of Claim 1 and does teach using MCT oil as a solvent for the disclosed compounds Giersch teaches a mint-based flavored hard candy, but does not specifically teach where the hard candy includes an amount of MCT oil in the claimed range.
Mintel teaches of hydrating mints candy that quickly hydrate and give the mouth a lasting, cool refreshment, and teach where the mints include medium chain triglycerides (MCT). Kabse teaches of confectionery products that can include hard candy (Paragraphs 13-15) and where hard candies can also include an edible fat or oil in amounts of 0.5-2% by weight (Paragraphs 46-51), and also teaches that fats and oils can be used for mouth moistening as humectants in confections in amounts of 0.1-1% by weight of the confectioneries, where suitable fats as humectants include MCT oil (Pages 46, 51 and 96), where the disclosed ranges of fats/MCT meet the claimed range. Therefore, in light of the teachings of both Mintel and Kabse, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention, for the mint-based flavored hard candy of Giersch to have included a claimed amount of MCT for its art recognized function as a humectant, providing mouth moistening properties to mint-flavored hard candies. One of ordinary skill in the art would have looked to similar prior art of Mintel and Kabse in determining a suitable amount of a fat-based humectant like MCT oil to add to hard candies to provide the art recognized hydrating/mouth moistening functionality.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Giersch (USPA 2006/0249167), made of record by Applicant, and as evidenced by “Neobee” (www.stepan.com) (2026), and in view of Serpelloni et al. (USPN 5,629,042), previously made of record.
Regarding amended Claim 13, Giersch is taken as cited above in the rejection of amended Claim 1 and teaches a hard candy product but does not specifically teach water in an amount of less than or equal to 4% by weight, based on the total weight of the hard candy product. It is noted that Giersch teaches a method of making the hard candy or hard boiled candy comprising adding isomalt and water to a pan, heating to 160̊C and mixing the ingredients, and also refers to a mass of molten isomalt and water that flavors are then added to, further teaching putting the pan in water to cool after which the flavors were added, pouring the mixed ingredients into a mold and leaving until solidification under cooling to room temperature, and then once cooled, the hardboiled candies were ejected from the mold (Paragraphs 152-154 and 159).
Serpelloni teaches known methods of preparing boiled sweets and teaches that mixtures of polyols including isomalt are mixed with water and boiled until 150-200̊C to evaporate most of the water, optionally adding vacuum so as to further reduce the water content and to bring the water content now to less than 2.5%, and even less than 1.5%, the obtained mass is cooled and cast into molds after having added various substances such as flavorings. After returning to room temperature, the so obtained products have a texture and an appearance similar to those of glass (Column 1, lines 30-40). Serpelloni teaches using the above known method in Example 2 to make boiled sweets having a water content of 3%. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention, for the hard candy product of Giersch to have had a moisture content of less than 4% by weight, in light of the commonality in method steps taught by both Giersch and Serpelloni and known methods of making hard boiled sweets. In addition, given that the cooking temperature taught by Giersch is within the temperature range discussed by Serpelloni along with the balance of the method steps being the same and the final product having a glass appearance and texture, one of ordinary skill in the art would have reasonably expected the hard boiled sweet of Giersch to also have a comparable water content to the hard boiled candy taught by Serpelloni.
Regarding amended Claim 14, Giersch in view of Serpelloni are taken as cited above in the rejection of amended Claim 13 and teach a method of preparing a hard candy product comprising, cooking a mixture of isomalt and water or melting isomalt to form a cooked mass, as taught by Giersch, where the limitation of “optionally under vacuum to achieve a moisture content at or below 4% by weight” is rendered obvious by the combination of Giersch in view of Serpelloni, as discussed in the rejection of Claim 13. Giersch in view of Serpelloni teach further teaching putting the pan in water to cool after which the flavors were added, pouring the mixed ingredients into a mold and leaving until solidification under cooling to room temperature, and then once cooled, the hardboiled candies were ejected from the mold (Giersch, Paragraphs 152-154 and 159). Giersch in view of Serpelloni are seen to teach forming a melt and forming the melt into the hard candy product in light of Giersch teaching adding flavorant to molten isomalt, as set forth above, thereby forming a melt. Giersch in view of Serpelloni teach where the hard candy is free of ethanol and propylene glycol in light of the teachings of Claim 1 above. Regarding amended Claim 14 and the limitation of cooking a mixture of isomalt, MCT oil and water, as set forth above, Giersch teaches using MCT as a solvent for the disclosed compounds, therefore rendering obvious to one of ordinary skill in the art before the effective filing date of the invention the addition of MCT to the hard candy as a solvent for the compounds. Since Giersch teaches adding flavorant to molten isomalt, it would have been obvious to one of ordinary skill in the art to have added the flavorant plus MCT to the molten isomalt as the MCT is disclosed as the solvent by Giersch.
Response to Arguments
The prior art rejections have been amended in light of Applicant’s amendments made. New prior art rejections have also been set forth in order to reject Applicant’s amended claims. Therefore, Applicant’s arguments with respect to the pending claims 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. Therefore, the office action is made final and deemed proper at this time.
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 JENNA A WATTS whose telephone number is (571)270-7368. The examiner can normally be reached Monday-Friday. 9am-4:30pm.
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JENNA A. WATTS
Primary Examiner
Art Unit 1791
/JENNA A WATTS/ Primary Examiner, Art Unit 1791 5/1/2026
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