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 .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 18-26, 34 and 35, drawn to a dough conditioner having the claimed composition.
Group II, claim(s) 27-33, drawn to a process for making a dough conditioner.
There is no technical feature common to Groups I and II because claims in Group II to the process of making the dough conditioner do not require the dough conditioner composition of Group I. Therefore, this shows evidence of lack of unity between the two groups a priori. As such, the two groups lack unity of invention and the restriction is deemed
proper.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 34 and 35 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. Applicant’s claims recite a “use” for the dough conditioner, but it is unclear what that use is and how it is used in the claimed products. Therefore, the scope of the claims is indefinite.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 34 and 35 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claims recite “Use of the dough conditioner”, which does not fall under the four categories of patent eligible subject matter of a process, a machine, manufacture or a composition of matter. Applicant recite a use of the claimed compound but does not recite how it is used or a manner of use (process) or a composition comprising the claimed compound.
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 18-26, 34 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Merrick et al. (USPN 6,582,749) in view of Fung (USPN 5,308,639), and as evidenced by “Mira-gel 463”.
Regarding new Claims 18, 21, 23, 24, Merrick teaches an edible emulsion having a much lower fat content than conventional emulsions and may be used as alternatives for butter or used as spreads, and in low fat desserts (Column 1, lines 5-10). Merrick’s emulsion is considered to function as a dough conditioner in light of the fact that Applicant also discloses the composition fully or partially replaces fat in baked good and other products. In addition, Merrick teaches the emulsion comprises the following claimed components:
from 0.1 to 10% by weight emulsifiers (Column 2, lines 45-50), and where the disclosed amount overlaps with the claimed range of emulsifiers,
from 0.5 to 3% by weight of a component which includes bulking agents like polydextrose that are used together with thickeners including native and modified starches (Column 2, lines 50-55), where polydextrose functions as a humectant/water binding composition in food systems, in light of Fung (Column 7, lines 20-25), and where the disclosed amount overlaps with the claimed range of humectant.
from about 0.5 to 5% by weight solids and stabilizers as Merrick teaches other components including gelling agents like gelatin (Column 2, lines 60-65), where the disclosed amount overlaps with the claimed range of solids and stabilizers. Claims 18 and 24 do not positively recite or require crosslinkers, as their inclusion can be at 0%, therefore Merrick meets the claimed ranges.
Regarding the limitation of the antioxidants, Merrick teaches the composition includes preservatives and food acids (Column 2, lines 5-6), but does not specifically teach antioxidants in the claimed range and where the antioxidants include citric acid. Merrick also teaches the gelling agents include gelatin as well as alginate, and gel forming starches (Column 2, lines 60-65).
Fung teaches a fat replacement emulsion for use in a variety of foods including baked goods, spreads, etc. (Column 5, lines 1-10) where the composition includes emulsifiers, gel forming compositions including alginate (Column 6, lines 24-25), acidifying agents such as citric acid, which act as pH buffering agents and are present in amounts of 0.1-1% by weight of the emulsion (Column 6, lines 25-27 and 50-55). Since the amount of pH buffering agent of citric acid is present in an amount that overlaps with the amount of antioxidant, the citric acid taught by Fung is seen to function as an antioxidant as well, in light of the same amount being used. Therefore, in light of the teaching of Fung, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used an amount of citric acid as a pH buffering agent within the claimed range in light of the teachings of Fung and the desire to prepare a fat replacement or substitute for use in foods comprising similar ingredients.
Regarding new Claim 19, Merrick in view of Fung teach the emulsifiers include DATEM, CITREM, etc. (Merrick, Column 2, lines 30-50).
Regarding new Claim 20, as set forth above, Merrick in view of Fung teach polydextrose and proteins as bulking agents (Column 2, lines 50-65) but do not specifically teach one of the claimed humectants.
Fung teaches the emulsion contains various water-binding compositions including soluble carbohydrates like polydextrose, polyols including sorbitol and glycerol and proteins (Column 7, lines 20-25). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used any of the known water-binding compositions/bulking agents in comparable emulsions used as fat replacement compositions in food products. It is prima facie obvious to substitute one composition for another that is taught in the prior art to be used for the same purpose, when their equivalency is established or acknowledged by the prior art. See MPEP 2144.06 II.
Regarding new Claim 22, Merrick in view of Fung teach the addition of thickeners and gelling agents including gel forming starches, native and modified starches in the emulsion (Merrick, Column 2, lines 55-65), and Fung teaches using Mira-gel 463 starch in example formulation 13, which is known in the art as a corn starch based product (see evidentiary reference, Page 1). Therefore, it would have been obvious to one of ordinary skill in the art to have corn-based starches as the starch-based thickener or solids component in compositions for fat replacement or substitute.
Regarding new Claim 25, Merrick in view of Fung in combination teach and render obvious the claimed dough conditioner. Merrick teaches mono and di glycerides of fatty acids as a second emulsifier which is capable of creating a desirable texture and structure and teaches the second emulsifier present in an amount from about 0.2 to 2% by weight of the emulsion (Merrick, Column 2, lines 9-11), which is encompassed by the claimed range. Merrick in view of Fung render obvious the use of polydextrose in amounts of 0.5 to 3% by weight, where polydextrose is taught as a water binding agent along with glycerin (see Fung in the rejection of Claim 20). The range taught by Fung for water binding agents overlaps with the claimed range. Therefore, the use of glycerin/glycerol as a humectant/bulking agent in an amount within the claimed range would have been obvious to one of ordinary skill in the art for the reasons set forth above. Merrick in view of Fung in combination teach starches as bulking agents and gelling agents used in amounts of 0.5 to 5% by weight, and Fung teaches starches include corn starch, as set forth above, where the disclosed range overlaps with the amount of corn starch recited. Therefore, it would have been obvious to one of ordinary skill in the art to have corn starch in an amount within the claimed range as a thickener or bulking agent in light of the teachings of the prior art. Merrick in view of Fung are taken as cited above in the rejection of Claim 21 and teach and render obvious an amount of citric acid within the claimed range. Merrick in view of Fung teach gelling agents that can be included include gelatin and teach amounts of gelling agents in the range of 0.5 to 5% by weight, as set forth above, which overlaps with the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art to have used gelatin as a gelling agent in the fat substitute/replacement composition in an amount within the claimed range, in light of the teachings of the prior art. Lastly, calcium sulfate can be included at 0% by weight, therefore optional in the composition.
Regarding new Claim 26, Merrick in view of Fung teach the dough conditioner does not have any required animal components, therefore is of plant origin, is semi-solid (Merrick, Column 2, lines 20-25), and is considered white or cream in color as it is an alternative for butter or margarine (Merrick, Column 1, lines 5-10). Since the emulsion includes fat (Merrick, Column 2, lines 25-30) and is a substitute for butter or margarine, it is deemed to have a lipid aroma and flavor, as claimed.
Regarding new Claims 34 and 35, Merrick in view of Fung teach and render obvious the claimed dough conditioner composition, therefore teaching the use of the dough conditioner in products for human consumption by ingestion and in the preparation of the claimed components such as desserts, in light of the above teachings.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 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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JENNA A. WATTS
Primary Examiner
Art Unit 1791
/JENNA A WATTS/ Primary Examiner, Art Unit 1791 10/29/2025
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