DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 03/12/2026 is acknowledged.
Applicant has overcome the following rejections by cancellation of the claims: (1) the objections to claims 2, 5-6, and 11 have been withdrawn; (2) the 35 U.S.C. §112(b) rejections of claims 1 and 3-12 have been withdrawn; (3) the 35 U.S.C. §103 rejections of claims 1-10 over Shastry and Zalesov have been withdrawn; (4) the 35 U.S.C. §103 rejections of claims 1 and 11 over Baydo has been withdrawn; and (5) the 35 U.S.C. §103 rejections of claim 12 over Baydo and Sollich has been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 14-25
Withdrawn claims: None
Previously cancelled claims: None
Newly cancelled claims: 1-13
Amended claims: None
New claims: 14-25
Claims currently under consideration: 14-25
Currently rejected claims: 14-25
Allowed claims: None
Claim Objections
Claims 14, 21-22, and 25 are objected to because of the following informalities:
In claim 14, “transferring the decor to decorator at a desired temperature and a desired pressure” should be read as “transferring the decor to a decorator, wherein the transferring occurs at a desired temperature and a desired pressure”.
In claim 21, “ratio of the coarse particulate powder flavor by adding a material” should be read as “ratio of the coarse particulate powder flavor by adding to the decor a material”.
In claim 22, “wherein the step of apply the decor comprises” should be read as “wherein the step of applying the decor comprises”.
In claim 25, “humidity so as to convert te decor into a solid phase” should be read as “humidity so as to convert the decor into a solid phase”.
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.
Claims 14 and 16-25 are rejected under 35 U.S.C. 112(b) 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.
The term “coarse” in the phrase “coarse particulate powder” in claims 1, 15, 16, 20, and 21 is a relative term which renders the claims indefinite. The term “coarse” is not defined by the claim; the specification does not provide a standard for ascertaining the requisite degree; and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
For the purpose of this examination, “coarse” will be interpreted as meaning a particle size of greater than 0 mm.
Claim 17 recites that the liquid decor base is a liquid food form or a food additive of liquid form. However, it is unclear as to the difference between a liquid food form and a liquid form food additive. Furthermore, it is unclear as to how a liquid food form or a food additive of liquid form narrows the limitation of a liquid decor base for a food product. Therefore, the claim is indefinite.
For the purpose of this examination, the claim will be interpreted as meaning that the liquid decor base is an edible liquid.
Claim 18 recites that the decor base is selected from a group which includes “cocolin”. Claim 19 recites that the food product is selected from a group which includes cocolin-coated products. However, it is unclear as to what is “cocolin”. Therefore, the claims are indefinite.
For the purpose of this examination, cocolin will be interpreted as being compound chocolate.
Claim 21 recites “pour point”. However, it is unclear as to what is meant by “pour point”. Therefore, the claim is indefinite.
For the purpose of this examination, “pour point” will be interpreted as meaning the point of exit for the decor from the decorator.
Claim 22 recites that the decorator has “a heated manifold and nozzle”. Claim 23 recites that “the heated manifold is adjustable along the X axis and the Y axis and the Z axis”. Claim 24 recites that the decorator has time-adjusted needles within an interior of the nozzle by an actuator located on the nozzle and that the manifold is connected to the nozzle.
However, “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011). In Katz, a claim directed to "[a] system with an interface means for providing automated voice messages…to certain of said individual callers, wherein said certain of said individual callers digitally enter data" was determined to be indefinite because the italicized claim limitation is not directed to the system, but rather to actions of the individual callers, which creates confusion as to when direct infringement occurs. Katz, 639 F.3d at 1318, 97 USPQ2d at 1749 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005), in which a system claim that recited "an input means" and required a user to use the input means was found to be indefinite because it was unclear "whether infringement … occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means."). MPEP 2173.05(p).II.
The aforementioned limitations recited in claims 22, 23, and 24 mean that these claims claim both an apparatus and the method steps of using the apparatus. Therefore, these claims are indefinite.
For the purpose of this examination, the decorator in the method of these claims will be interpreted as meaning a food decorator which are known to typically have at least one nozzle.
Claims 23 and 25 are rejected by reason of dependency from claims 14 and 22.
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 14-24 are rejected under 35 U.S.C. 103 as being unpatentable over Shastry (US 2004/0086603; previously cited) in view of Zalesov (RU 2101974; English translation relied on for citations; previously cited).
Regarding claims 14, 15, 16, and 20, Shastry teaches a décor application method [0003], wherein the method comprises the steps of: homogenously mixing a flavorant with a liquid décor base to create an ink [0041], [0058]; transferring the ink to a decorator (corresponding to ink jet system); and applying the mixture in a desired diameter and geometry on a food product at a set temperature and pressure; and then transforming the ink into a solid phase [0011], [0020], [0056], [0058]. Since Shastry discloses that the decor comprising the flavorant is transformed into a solid phase, Shastry is considered to disclose a step of encapsulating the aroma (i.e., the flavorant) in the transformed phase as presently claimed. Therefore, the method of Shastry is considered to be a method for producing decor having a desired aroma in a food product wherein the step of mixing the liquid base with the flavorant preserves a quality of an aroma of the decor through the shelf life of the food product as presently claimed.
Shastry does not teach that the flavorant comprises a coarse particulate powder flavor as recited in present claim 14; that the coarse particle powder has a particle size up to 5 mm as recited in present claim 15; that the coarse particulate powder is a food additive selected from the group recited in present claim 16; or that the coarse particulate powder flavor is coated with the dragee method before being mixed into the liquid décor base as recited in present claim 20.
However, Zalesov discloses a confectionary comprising dragees, wherein the dragees provide a sea buckthorn berry fruit aroma and flavor as well as provide high biological value such as vitamins (page 2, paragraph beginning “The basis of this invention”; page 3, paragraph beginning “The berry juice concentrate”; page 4, paragraph beginning “Dragee “Sea buckthorn”).
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the present application to have modified the method of Shastry by using the dragees of Zalesov as the flavorant. Since Shastry discloses that its ink mixture may comprise a flavorant [0041], but does not disclose such a flavorant, a skilled practitioner would have been motivated to consult an additional reference such as Zalesov in order to determine a suitable flavorant for a confectionary. In consulting Zalesov, the practitioner would also find that the dragee further comprises aromatics and vitamins in addition to the flavorants which Shastry also discloses as being ingredients in its ink mixture [0041], thereby providing further motivation for a skilled practitioner to include the dragee of Zalesov as the flavorant of Shastry, thus rendering the coarse particulate powder flavor of present claims 14 and 16 obvious.
Furthermore, Shastry discloses a desire for particle sizes of smaller than about 50 microns in order to provide a particular quality of images printed by the decorator [0031]. Therefore, it would have been obvious for the dragees to be provided in a diameter of less than 50 microns, which falls within the claimed particle size of the coarse particulate powder recited in present claim 15. For these reasons, the claimed coarse particulate powder flavor having a particle size of up to 5 mm as recited by present claim 15 is rendered obvious by the combination of Shastry and Zalesov.
Since Zalesov discloses that its dragees are coated with the dragee method (page 3, paragraph beginning “A method for preparing”) and Shastry discloses combining the ink ingredients (which includes the flavorant) together before applying the ink to the surface of a food product [0019]-[0020], the combination of prior art discloses that all surfaces of the coarse particulate powder flavor are coated with the dragee method before being mixed into the liquid décor base as recited by present claim 20.
Regarding claims 17 and 18, Shastry teaches the method as described above in claim 14, including the décor base is an oil-based liquid food (corresponding to fat- or wax-based ink that is heated to become ink-jettable) as recited in present claims 17 and 18 [0021].
Regarding claim 19, Shastry teaches the method as described above in claim 14, including the food product may be chocolate, crackers, cakes, biscuits, and/or breads (corresponding to pastries) [0022].
Regarding claim 21, Shastry teaches the method as described above in claim 14, including the ink mixture may further comprise emulsifiers [0037]. Since present claim 21 merely requires the addition of a material from the recited group being adding to the decor, Shastry renders the step of adjusting a decor density, viscosity, and pour point based on a type, size, and ratio of the coarse particulate powder recited in present claim 21 obvious.
Regarding claims 22, 23, and 24 Shastry teaches the method as described above in claim 14, including the decorator is a food decorator having a nozzle (corresponding to ink jet); and that the decorator has a heating element to heat the decor in the printhead [0003], [0024]. It is known in the art that there are decorators which are able to apply decor by moving along the X-axis, Y-axis, and/or Z-axis (e.g., writing “Happy Birthday” on a cake). Therefore, the features of present clams 22 and 23 are rendered obvious.
In regard to the step of moving time-adjusted needles within an interior of the nozzle as recited in present claim 24, as described above in the 35 U.S.C. §112(b) rejection of claim 24, the features recited in this claim (and in claims 22 and 23) rely on a specific structure of a decorator instead of being directed to a method. Therefore, the cited prior art and the general knowledge within the field of the art is considered to render claim 24 obvious.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Baydo (US 2010/0047415; previously cited).
Regarding claim 14, Baydo teaches a décor application method (abstract), wherein the method comprises the steps of homogenously mixing a coarse particulate powder flavor (corresponding to food grade flavor particle that pass through a filter having a pore size of at least 1 micron) [0023] with a liquid décor base (corresponding to all ingredients besides the flavor ingredient) to form a food grade flavored fluid [0026]; transferring the mixture to a decorator at a set temperature and pressure (i.e., it is presumable that some amount of pressure is applied so that the mixture passes through the nozzles of the decorator); applying the mixture in a desired diameter and geometry on a food product; and transforming the applied mixture to a solid phase (corresponding to drying) [0003], [0026], [0046]. Since Baydo discloses that the decor comprising the flavorant is transformed into a solid phase, Baydo is considered to disclose a step of encapsulating the aroma (i.e., the flavorant) in the transformed phase as presently claimed. Therefore, the method of Baydo is considered to be a method for producing decor having a desired aroma in a food product wherein the step of mixing the liquid base with the flavorant preserves a quality of an aroma of the decor through the shelf life of the food product as presently claimed.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Baydo (US 2010/0047415; previously cited) as applied to claim 14 above, and further in view of Sollich (EP 0797923; English translation relied on for citations; previously cited).
Regarding claim 25, Baydo teaches the method as described above in claim 14, including the applied liquid décor should dry and have smear resistance on the food product [0003]. However, Baydo does not teach a method of drying the applied liquid décor or providing smear resistance in the applied liquid décor.
However, Sollich discloses a method of solidifying a liquid covering a food product (corresponding to solidifying a coating of a confectionary) (page 3, 1st-3rd paragraphs) comprising cooling the food product after applying the coating to the food product in a closed cooling tunnel (corresponding to cooling tunnel comprising subdivided zones, i.e., zones closed off from one another) (page 3, 3rd paragraph) in at a temperature of 12-16°C for about 3 minutes (corresponding to the time and temperature of the third cooling zone), wherein the total cooling time may be varied to an average of 3-10 minutes (page 4, 4th-5th paragraphs), which overlaps the claimed temperature range. Since Sollich discloses a time of about 3 minutes at 12-16°C and discloses that the total cooling time may be varied, Sollich at least suggests a time which may overlap or approach the claimed cooling time, especially wherein Sollich has not asserted the cooling time to be critical (e.g., the term “average” implies that the total cooling time may include amounts greater than 10 minutes such as 14 minutes so that the time spent at 12-16°C may be 10 minutes as presently claimed). Sollich also discloses that the humidity is 60% or lower (page 4, 2nd paragraph), which encompasses the claimed humidity. The selection of a value within the encompassing or overlapping ranges renders the claimed timeframe and humidity obvious. MPEP 2144.05.I. Also, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05.I.
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the present application to have modified the method of Baydo to include solidifying a liquid on the surface of a food product using a cooling tunnel as taught by Sollich. Since Baydo teaches that the applied liquid décor should dry and have smear resistance on the food product [0003], but does not teach a method of drying the applied liquid décor or providing smear resistance in the applied liquid décor, a skilled practitioner would have been motivated to consult an additional reference such as Sollich in order to determine a suitable method of drying and providing smear resistance to the applied décor, thereby rendering the present claim obvious.
Response to Arguments
Claim Objections: Applicant canceled claims 2, 5-6, and 11. Therefore, the objections are moot.
Claim Rejections – 35 U.S.C. §112(b) of claims 1-12: Applicant canceled claims 1-12. Therefore, the rejections are moot.
Claim Rejections – 35 U.S.C. §103 of claims 1-10 over Shastry and Zalesov: Applicant canceled claims 1-10. Therefore, the rejections of these claims are moot. Applicant’s arguments as they relate to the present claims have been fully considered and are found unpersuasive.
Applicant argued that Shastry teaches the use of micro-scale particles in its printable ink decor whereas the present invention uses coarse particulate powder flavors having a size of up to 5 mm. Applicant argued that Shastry discourages the use of “coarse particulate powder” as recited in the present claims because Shastry emphasizes the necessity of having a particle size below 50 microns in order to prevent nozzle clogging and to improve print quality (Applicant’s Remarks, page 6, 1st -2nd paragraphs under “The Shastry Publication”).
However, as described above in the 35 U.S.C. §112(b) rejection of claim 14, the term “coarse” in the phrase “coarse particulate powder” is a relative term which renders the claims indefinite. The term “coarse” is not defined by the claim; the specification does not provide a standard for ascertaining the requisite degree; and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of this examination, “coarse” is being interpreted as meaning a particle size of greater than 0 mm. The particle size of 50 microns disclosed by Shastry falls within a range of greater than 0 mm. This particle size of 50 microns disclosed by Shastry also falls within the size range recited in present claim 15. Therefore, Shastry does not discourage the use of “coarse particulate powder” as presently claimed.
Applicant then argued that Shastry does not disclose: (1) the use of “coarse particulate powder flavor”; (2) the dragee coating of particulate surfaces; (3) the encapsulation of aromas through solidification of the applied decor; (4) localized aroma concentration through geometric deposition of particulate-containing decor (Applicant’s Remarks, page 6, 3rd paragraphs under “The Shastry Publication”).
In regard to Applicant’s assertion that Shastry does not disclose (1) the use of “coarse particulate powder flavor”, see Examiner’s response to Applicant’s argument above. In regard to Applicant’s assertion that Shastry does not disclose (3) the encapsulation of aromas through solidification of the applied decor; and (4) localized aroma concentration through geometric deposition of particulate-containing decor, as recited above in the rejection of present claim 14, since Shastry discloses that the decor comprising the flavorant is transformed into a solid phase, Shastry is considered to disclose a step of encapsulating the aroma (i.e., the flavorant) in the transformed phase as presently claimed. Therefore, the method of Shastry is considered to be a method for producing decor having a desired aroma in a food product wherein the step of mixing the liquid base with the flavorant preserves a quality of an aroma of the decor through the shelf life of the food product as presently claimed.
In regard to Applicant’s assertion that Shastry does not disclose (2) the dragee coating of particulate surfaces, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As described above in the rejection of present claim 20, which is the only claim which requires dragee coating of the powder flavor, the dragee coating is taught by Zalesov. Zalesov discloses a confectionary comprising dragees, wherein the dragees provide a sea buckthorn berry fruit aroma and flavor as well as provide high biological value such as vitamins (page 2, paragraph beginning “The basis of this invention”; page 3, paragraph beginning “The berry juice concentrate”; page 4, paragraph beginning “Dragee “Sea buckthorn”), thereby rendering the dragee coating recited in present claim 20 obvious.
Applicant then argued that Zalesov does not disclose: (1) mixing dragee-coated particulates into a liquid decor base; (2) applying such mixtures to a decorator system; (3) controlling geometry and diameter of applied decor; and (4) encapsulating the aromas through surface solidification of the applied decor (Applicant’s Remarks, 1st-3rd paragraphs under “The Zalesov Russian Patent”).
However, in response to Applicant's arguments against Zalesov individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Features (1)-(4) in Applicant’s arguments against Zalesov alone are disclosed by Shastry as described in the rejection of claim 14 above.
Applicant then argued that neither Shastry or Zalesov contain any teaching or suggestion to lead a skilled practitioner to combining the dragees of Zalesov with the liquid decor of Shastry (Applicant’s Remarks, page 7, 1st paragraph under heading beginning “The Combination” – page 8, 1st paragraph).
However, as described above in the rejection of present claim 14, since Shastry discloses that its ink mixture may comprise a flavorant [0041], but does not disclose such a flavorant, a skilled practitioner would have been motivated to consult an additional reference such as Zalesov in order to determine a suitable flavorant for a confectionary. Zalesov discloses dragees for confectionaries, wherein the dragees provide a sea buckthorn berry fruit aroma and flavor as well as provide high biological value such as vitamins (page 2, paragraph beginning “The basis of this invention”; page 3, paragraph beginning “The berry juice concentrate”; page 4, paragraph beginning “Dragee “Sea buckthorn”). Since Zalesov discloses a dragee comprising a flavorant wherein the dragee is suitable for confections, Zalesov discloses a flavorant suitable to be the flavorant in the liquid decor base of Shastry. In consulting Zalesov, the practitioner would also find that the dragee of Zalesov further comprises aromatics and vitamins in addition to the flavorants which Shastry also discloses as being ingredients in its ink mixture [0041], thereby providing further motivation for a skilled practitioner to include the dragee of Zalesov as the flavorant of Shastry. Therefore, Shastry and Zalesov provide sufficient teaching and motivation to combine a coarse particulate powder with a liquid decor base as presently claimed.
Applicant then argued that neither Shastry nor Zalesov provide any teaching or suggestion of how to modify their systems to achieve encapsulated particulate aroma release, control geometry-based aroma localization, and shelf life preservation through solid-phase formation. Applicant argued that such modification of these references requires hindsight analysis (Applicant’s Remarks, page 8, 2nd paragraph).
However, the Examiner points out that the combination of Shastry and Zalesov disclose the claimed steps of mixing, applying, transforming, and encapsulating recited in present claim 14. Therefore, the cited prior art renders obvious any results of such steps including the asserted encapsulated particulate aroma release, control geometry-based aroma localization, and shelf life preservation through solid-phase formation, even though the present claims do not even recite encapsulated particulate aroma release or control geometry-based aroma localization.
In response to Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant then argued that the present invention produces synergistic and unexpected results not disclosed by the cited prior art references including: (1) the preservation of aroma intensity throughout shelf life; (2) the prevention of lost volatile compounds; (3) stable dispersion of course particulates; (4) controlled and localized aroma perception; and (5) reduced sedimentation and clogging. Applicant argued that the claimed parameters are independent and directly related to particle encapsulation and aroma preservation and that the present invention overcomes long-standing barriers in applying coarse aromatic particles in liquid decoration systems (Applicant’s Remarks, page 8, 3rd paragraph – page 9, 1st paragraph).
However, in response to the asserted synergistic and unexpected results recited in points labeled as (1)-(5) in the paragraph above; and in response to the assertion that the claimed parameters are independent and directly related to particle encapsulation and aroma preservation, “evidence must show unexpected results” MPEP 716.02(a). Applicant has not provided any evidence of synergistic or unexpected results; or provided any evidence demonstrating that the claimed parameters are independent and directly related to particle encapsulation and aroma preservation. Therefore, Applicant’s arguments regarding synergistic and unexpected results; and arguments regarding the importance of specific parameters are unpersuasive.
In response to Applicant’s assertion that the present invention overcomes long-standing barriers in applying coarse aromatic particles in liquid decoration systems, “the claimed invention must satisfy a long-felt need which was recognized, persistent, and not solved by others”. MPEP 716.04.I-III. Applicant has not sufficiently demonstrated a long-felt need in the art. Therefore, Applicant’s arguments directed to long-felt need are unpersuasive.
Since the prior art has been shown to render the present claims obvious and Applicant’s arguments have been shown to be unpersuasive, the rejections of the claims stand as written herein. The rejections of claims 1-10 are moot due to the cancelation of these claims.
Claim Rejections – 35 U.S.C. §103 of claims 1 and 11 over Baydo; claim 12 over Baydo and Sollich: Applicant canceled claims 1 and 11-12. Therefore, the rejections of these claims are moot. Applicant’s arguments as they relate to the present claims have been fully considered and are found unpersuasive.
Applicant argued that Baydo does not teach physical encapsulation of coarse particulate flavor materials within a solid matrix so that the fundamental principles of Baydo differ from those of the present invention (Applicant’s Remarks, page 9, 1st-2nd paragraphs under “The Baydo Publication”).
However, as described above in the rejection of claim 14 over Baydo and Sollich, Baydo teaches a method comprising homogenously mixing a coarse particulate powder flavor (corresponding to food grade flavor particle that pass through a filter having a pore size of at least 1 micron) [0023] with a liquid décor base (corresponding to all ingredients besides the flavor ingredient) to form a food grade flavored fluid [0026]; transferring the mixture to a decorator at a set temperature and pressure (i.e., it is presumable that some amount of pressure is applied so that the mixture passes through the nozzles of the decorator); applying the mixture in a desired diameter and geometry on a food product; and transforming the applied mixture to a solid phase (corresponding to drying) [0003], [0026], [0046]. Therefore, Baydo teaches physical encapsulation of coarse particulate flavor materials within a solid matrix.
Applicant then argued that Baydo does not disclose or suggest: (1) the dragee coating of particulate flavor materials; (2) the use of millimeter-scale particulates; (3) encapsulation of particulate aromas through solidification; and (4) the formation of localized aroma zones via controlled geometry (Applicant’s Remarks, page 9, 3rd paragraph under “The Baydo Publication” – page 10, 1st paragraph).
However, in reference to point (1) in the paragraph above, claim 20 is the only claim that requires dragee coating and Baydo is cited for its teachings regarding claims 14 and 25. Therefore, Applicant’s argument regarding dragee coating and Baydo are unpersuasive. In reference to point (2) in the paragraph above, the size of the “coarse particulate powder flavor” in claim 14 is being interpreted as any size greater than 0 mm as described above in the 35 U.S.C. §112(b) rejection of claim 14. Since Baydo discloses combining a food grade flavor particle that passes through a filter having a pore size of at least 1 micron [0023] with a liquid décor base to form a food grade flavored fluid [0026], Baydo discloses a coarse particulate powder flavor as presently recited in claim 14.
In response to points (3) and (4), Baydo discloses applying the mixture comprising the powder and liquid decor base in a desired diameter and geometry on a food product; and transforming the applied mixture to a solid phase (corresponding to drying) [0003], [0026], [0046]. Therefore, Baydo discloses points (3) and (4).
Applicant then argued that Sollich does not disclose: (1) the cooling of decor layers containing coarse particulate flavors; (2) the encapsulation-based aroma preservation; (3) controlled humidity conditions for preventing aroma loss; and (4) cooling parameters selected for particulate aroma stabilization. As such, Applicant argued that dependent claim 25 is distinctive of the combination of Baydo and Sollich and would not be rendered obvious by this prior art combination (Applicant’s Remarks, page 10, 1st paragraph under the heading beginning “The Combination”).
However, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The combination of Baydo and Sollich render the feature labeled as (1) in the paragraph above obvious. Baydo discloses transforming the applied mixture of powder and liquid decor base to a solid phase (corresponding to drying) [0003], [0026], [0046], thereby rendering the feature labeled as (2) obvious. Sollich discloses a cooling time of about 3 minutes at 12-16°C and discloses that the total cooling time may be varied (page 4, 4th-5th paragraphs), Sollich teaches a temperature within the claimed range and at least suggests a time which may overlap or approach the claimed cooling time, especially wherein Sollich has not asserted the cooling time to be critical (e.g., the term “average” implies that the total cooling time may include amounts greater than 10 minutes such as 14 minutes so that the time spent at 12-16°C may be 10 minutes as presently claimed). Sollich also discloses that the humidity is 60% or lower (page 4, 2nd paragraph), which encompasses the claimed humidity. The selection of a value within the encompassing or overlapping ranges renders the claimed timeframe and humidity obvious. MPEP 2144.05.I. Also, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05.I. As such, the combination of Baydo and Sollich renders claim 25 obvious.
Applicant argued that Baydo relates to liquid flavoring and find-particle dispersions whereas Sollich relates to bulk chocolate coating solidification. Applicant argued that neither reference suggests applying the cooling tunnel of Sollich to the liquid flavor printing of Baydo as the problems addressed by each reference differs from the other. Applicant argued that the problems addressed by these references are also different from the preservation of encapsulated coarse particulates as directed by the present invention (Applicant’s Remarks, page 10, 2nd paragraph under the heading beginning “The Combination” - page 11, 1st paragraph).
However, as described above in the rejection of present claim 25, Baydo teaches that the applied liquid décor should dry and have smear resistance on the food product [0003], but does not teach a method of drying the applied liquid décor or providing smear resistance in the applied liquid décor. Sollich discloses a method of solidifying a liquid covering a food product (corresponding to solidifying a coating of a confectionary) (page 3, 1st-3rd paragraphs) comprising cooling the food product after applying the coating to the food product in a closed cooling tunnel (corresponding to cooling tunnel comprising subdivided zones, i.e., zones closed off from one another) (page 3, 3rd paragraph). Therefore, a skilled practitioner would have been motivated to consult an additional reference such as Sollich in order to determine a suitable method of drying and providing smear resistance to the applied décor of Baydo. Furthermore, the flavoring and dispersions of Baydo are applied to the surface of confectionaries (e.g., cake) [0002], [0006], [0045] while the chocolate coating of Sollich are also applied to the surface of confectionaries (page 1, 1st paragraph). Therefore, the technical fields, material structures, and processing objectives of Baydo and Sollich are not fundamentally different.
In response to Applicant’s assertion that the problems addressed by Baydo and Sollich are also different from the preservation of encapsulated coarse particulates as directed by the present invention, the combination of Baydo and Sollich render the claimed method obvious as described above in the claim rejections and in Examiner’s responses to arguments. Furthermore, 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).
Since the prior art has been shown to render the present claims obvious and Applicant’s arguments have been shown to be unpersuasive, the rejections of the claims stand as written herein. The rejections of claims 1 and 11-12 are moot due to the cancelation of these claims.
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 Kelly Kershaw whose telephone number is (571)272-2847. The examiner can normally be reached Monday - Thursday 9:00 am - 4:00 pm.
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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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/KELLY P KERSHAW/Examiner, Art Unit 1791
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