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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/21/2025 has been entered.
Drawings
Applicant’s replacement drawings have been accepted; it is noted that only the relabeling of sample 2D is explicitly supported by paragraph [0109] of the specification.
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.
Claims 14-16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Willcocks et al. US 2002/0170446 in view of Murray US 2013/0058875 in view of Wenk WO 2013/142473 in view of Freeman US 6,143,065.
Regarding claim 14, Willcocks discloses a method of printing an edible ink formulation onto a food product (edible pieces) ([0002], [0013], [0025], [0026], Fig. 1) the method comprising, providing a surface of the food product, providing the edible ink formulation and transferring the edible ink formulation to the surface of the food product ([0012]-[0014], Fig. 1). Willcocks discloses that the edible ink formulation can be alcohol-based food grade or pharmaceutical grade inks and that the inks can include pigments ([0025]) and that such inks are well known ([0025]). Thus, Willcocks already suggests the use of an edible ink formulation comprising at least a solvent (alcohol) and pigment. Additionally, since the edible ink is alcohol/water based, Willcocks teaches that the edible ink formulation comprises a non-aqueous solvent (alcohol). Additionally, while Willcocks does not explicitly recite that the method comprises a drying step, it is obvious that after the application of the ink to the edible product the ink is allowed to dry in order for the ink to remain in the design desired on the edible product.
Claim 14 differs from Willcocks in the recitation that the edible ink comprises a binder, and that the solvent specifically includes one or more C2 to C6 alcohols selected from the group consisting of isopropanol, 1-propanol, ethanol, 1-butanol, 3-methyl-1-butanol, 2-butanol, hexanol and combinations thereof, and that the pigment is present in an amount of about 15wt% to about 35wt%.
Murray discloses an edible ink for using in a transfer printing process of food items (pharmaceutical capsule) comprising about 10wt% to 40wt% of at least one pigment ([0006], [0106], [0107], [0110]-[0112]), a solvent ([0108]), wherein the solvent can be at least one of ethanol and isopropanol (isopropyl alcohol) ([0018]) and a binder (shellac) ([0107]). Because Murray discloses that the solvent can be at least one solvent and that the solvent can be at least one of ethanol and isopropanol ([0108]), Murray thus teaches an edible ink formulation comprising a non-aqueous solvent, as water is only an option for the solvent and not required. Murray teaches a known solvent/alcohol based edible ink and Willcocks already discloses that known solvent/alcohol based edible inks can be utilized in the method. Willcocks also discloses that in general that the invention contemplates printing with food grade inks ([0025]).
It would have been obvious to one of ordinary skill in the art to substitute the edible ink of Willcocks with the edible ink as taught by Murray, thereby substituting one known solvent/alcohol based edible ink for use in a transfer printing process of food items another known solvent/alcohol based edible ink for use in a transfer printing process of food items to obtain the predictable result of providing an edible ink suitable for use for transfer printing food items. It has been held that simple substitution of one known element for another to obtain predictable results supports a conclusion of obviousness (MPEP 2141.III.B)
Claim 14 differs from Willcocks in view of Murray in the recitation that the pigment is specifically scalenohedral calcium carbonate particles.
Wenk discloses a pigment suitable for use in food and inks includes scalenohedral calcium carbonate particles ([0005], [0006], [0015], [0037]).
Freeman discloses that calcium carbonate is commonly precipitated in the form of calcite, in which the crystals are typically either rhombohedral, cubic or scalenohedral in shape. Freeman discloses that precipitated calcium carbonate is an extremely versatile filler and pigment that is utilized in a wide variety of manufactured products including printing inks (col.1, lines 17-36). Thus, Freeman recognizes that scalenohedral calcium carbonate particles are suitable for use as a pigment in printing inks.
Thus, the prior art recognizes that scalenohedral calcium carbonate is suitable for use in edible products and as a pigment for printing ink.
It would have been obvious to one of ordinary skill in the art to modify the pigment of Willcocks in view of Murray to be scalenohedral calcium carbonate particles as taught by Wenk and Freeman, since the selection of a known material based on its suitability for its intended use supports a conclusion of obviousness (MPEP 2144.07).
Regarding the remaining limitation that the dried edible ink formulation has a reflectance of from about 30% to about 75% over a wavelength range of from about 440nm to about 700nm as measured as the dried film created from a wet film of thickness equal to 6 mil (152.4 micrometers), and a lightness value of at least about 40 under CIE standard Illuminant D65 when dried from a wet film with a thickness of about 13 micrometers or less, since the prior art teaches the same edible ink formulation as the claimed edible ink formulation, it is expected that when the edible ink formulation is dried from a wet film with a thickness of about 13 micrometers or less that the dried edible ink formulation has a reflectance of from about 30% to about 75% over a wavelength range of from about 440nm to about 700nm and a lightness value of at least about 40 under CIE standard Illuminant D65. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, claimed properties or functions are presumed to be inherent” (MPEP 2112.01.I).
Regarding claim 15, Modified Willcocks discloses that the surface of the food product has a sugar shell coating (‘446, [0015], [0027]) and therefore application of a sugar shell coating to the food product can be considered a step of treating the surface of the food product prior to transferring the edible ink formulation to the surface of the food product.
Regarding claim 16, Modified Willcocks discloses that the food product is a confectionery product (‘446, [0015]).
Regarding claim 18, Modified Willcocks discloses that the food product is a snack food product (‘446, [0026]).
Regarding claim 19, Modified Willcocks discloses that the calcium carbonate particles are present in an amount of about 20 wt% to 30wt% (about 10wt% to 40wt% of at least one pigment, encompassing the claimed range) (‘875, [0107]). 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 20, Modified Willcocks discloses that the calcium carbonate particles have a particle size of 2 to 3 microns (‘473, [0033]).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Willcocks et al. US 2002/0170446 in view of Murray US 2013/0058875 in view of Wenk WO 2013/142473 in view of Freeman US 6,143,065 in view of Shastry US 2004/0021757 in view of Shastry US 2004/0086603.
Regarding claim 17, Modified Willcocks discloses that the food product is a panned candy (‘446, [0015], [0026]). Willcocks discloses that the food product can be M&M’s and Shastry ‘757 provides evidence that M&M’s are hard panned candy (‘757, [0004]).
Claim 17 differs from Modified Willcocks in the recitation in that the hard panned candy specifically comprises a polish coating, however Shastry ‘603 discloses that M&M’s have a sugar shell with a carnauba wax polish coating ([0003]), therefore it is obvious that the hard panned candy (M&M’s) of Modified Willcocks comprises a polish coating.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Willcocks et al. US 2002/0170446 in view of Murray US 2013/0058875 in view of Wenk WO 2013/142473 in view of Freeman US 6,143,065 in view of Tabayashi JP 2013-212864 (Espacenet Translation).
Regarding claim 21, Modified Willcocks discloses that the solvent can include isopropanol (isopropyl alcohol) (‘875, [0108]).
Claim 21 differs from Willcocks in view of Murray in view of Wenk in recitation that the solvent consists of the isopropanol and isoamyl alcohol.
Tabayashi discloses a suitable solvent for use in edible inks includes isoamyl alcohol ([0037], [0038]). It would have been obvious to one of ordinary skill in the art to modify the solvent of Willcocks in view of Murray in view of Wenk (isopropanol (isopropyl alcohol)) to include isoamyl alcohol as suggested by Tabayashi, since the selection of a known material based on its suitability for its intended use supports a conclusion of obviousness (MPEP 2144.07). Since Murray teaches that composition can include “at least one solvent” implying more than one solvent can be used, such as two solvents and the prior art teaches suitable solvents for edible inks are isopropanol and isoamyl alcohol, it would have been obvious to one of ordinary skill in the art to utilize a solvent consisting of isopropanol and isoamyl alcohol for the known purpose of performing functions of a solvent for the edible ink composition. Additionally, it is noted that "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." (MPEP 2144.06).
Response to Arguments
Applicant's arguments filed 10/21/2025 have been fully considered and Freeman US 6,143,065 was additionally brought to teach that calcium carbonate is commonly precipitated in the form of calcite, in which the crystals are typically either rhombohedral, cubic or scalenohedral in shape. Freeman discloses that precipitated calcium carbonate is an extremely versatile filler and pigment that is utilized in a wide variety of manufactured products including printing inks (col.1, lines 17-36). Thus, Freeman recognizes that scalenohedral calcium carbonate particles are suitable for use as a pigment in printing inks and Wenk is being relied upon to show that precipitated calcium carbonate is suitable for use in food products. Thus, the prior art recognizes that scalenohedral calcium carbonate is suitable for use in edible products and as a pigment for printing ink and therefore is suitable to be used in an edible printing ink. "The fact that appellant 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." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (MPEP 2145.II).
In response to Applicant’s arguments regarding Willcocks, Willcocks does not limit the particular food grade ink utilized in the invention, thus suggesting that any known food grade ink can be utilized in the invention. One of ordinary skill in the art would have been motivated to seek out known food grade ink compositions utilized in similar types of printing processes of Willcocks and try to utilize them in the invention of Willcocks and arrived at the disclosure of Murray which teaches a known food grade ink (edible ink) utilized in a similar type of printing process to that of Willcocks (transfer printing process). “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”. (MPEP 2145.X.B). Regarding motivation to combine with Wenk and Freeman, it is noted that Murray does not limit the particular pigment utilized in the edible ink and explicitly recites that any known pigment approved for human consumption can be used (‘875, [0107]). One of ordinary skill in the art would have been motivated to look to known types of pigments utilized in edible inks when selecting the pigment to include as the pigment in the ink of Murray and arrived at the disclosure of Freeman and Wenk. Freeman discloses that precipitated calcium carbonate is an extremely versatile filler and pigment that is utilized in a wide variety of manufactured products including printing inks (col.1, lines 17-36). Thus, Freeman recognizes that scalenohedral calcium carbonate particles are suitable for use as a pigment in printing inks and Wenk is being relied upon to show that precipitated calcium carbonate is suitable for use in food products. Thus, the prior art recognizes that scalenohedral calcium carbonate is suitable for use in edible products and as a pigment for printing ink and therefore is suitable to be used in an edible printing ink. “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”. (MPEP 2145.X.B). "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” (MPEP 2144.07).
While Wenk discloses that the scalenohedral calcium carbonate is utilized as a filler ([0015]), the scalenohedral calcium carbonate is still a known pigment as also shown by Freeman and Wenk already teaches that it is known to utilize calcium carbonate as both a filler and due to its white color as a coating pigment ([0002]). Because Murray discloses that any known pigment can be utilized, and Freeman and Wenk discloses a pigment suitable for use in food and inks includes scalenohedral calcium carbonate particles ([0005], [0006], [0015], [0037]), it would have been obvious to one of ordinary skill in the art to modify the pigment of Willcocks in view of Murray to be scalenohedral calcium carbonate particles as taught by Freeman and Wenk, since the selection of a known material based on its suitability for its intended use supports a conclusion of obviousness (MPEP 2144.07).
On Pg. 8 of the remarks Applicant argues that it was unexpected that that only scalenohedral calcium carbonate among the many forms of calcium carbonate, exhibited a similar reflectance value as titanium dioxide. On pg. 8-9 of the remarks Applicant argues that thin films prepared at a wet film thickness of about 13 micrometers or less with scalenohedral calcium carbonate unexpectedly demonstrated comparable lightness values as those prepared with titanium dioxide.
As discussed above, the prior art recognizes that scalenohedral calcium carbonate is suitable for use in edible products and as a pigment for printing ink and therefore is suitable to be used in an edible printing ink. "The fact that appellant 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." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (MPEP 2145.II). It is additionally noted that the prior art has already recognized that calcium carbonate is a suitable replacement for titanium dioxide and has optimum light scattering properties. See for example, CN 102295788 discloses calcium carbonate is used to replace titanium dioxide (Abstract). EP 3400810 discloses using calcium carbonate as an opacifier or whitening agent in an edible coating as a replacement for titanium dioxide (Pg. 1). CN 105229087 discloses using precipitated calcium carbonate to replace titanium dioxide in ink. Bleakly US 5,558,850 discloses that high light scattering pigments include titanium dioxide, and also discloses that the scalenohedral form of calcium carbonate may be produced relatively inexpensively and the process conditions may be readily controlled to give aggregates of fine crystals separated by spaces of substantially the optimum size for light scattering (col. 1, lines 59-67, col. 2, lines 1-24). JP 2010235764 discloses precipitated calcium carbonate as a pigment to produce ink having whiteness comparable to that using titanium dioxide (Abstract).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Lott US 6,245,384 discloses applying a polish coating to food product prior to printing on the food product (Example 3). CN 102295788 discloses calcium carbonate is used to replace titanium dioxide (Abstract). EP 3400810 discloses using calcium carbonate as an opacifier or whitening agent in an edible coating as a replacement for titanium dioxide (Pg. 1). CN 105229087 discloses using precipitated calcium carbonate to replace titanium dioxide in ink. CA 02261388 discloses that precipitated calcium carbonate having 83.7% reflectance to light of wavelength 457nm and 88.9% reflectance to light of 570nm wavelength and discloses that the precipitate product will generally comprise either rhombohedral or the scalenohedral variant (Example 3, Pg. 30, pg. 15, lines 7-10).
Conclusion
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/A.A/
Ashley AxtellExaminer, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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