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/Restrictions
Applicant's election with traverse of Invention I in the reply filed on 11/17/2025 is acknowledged. The traversal is on the ground(s) that there would not be a serious burden. This is not found persuasive because the inventions have found a separate status in the art and the burden lies in examining multiple distinct inventions in one application.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/17/2025.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Weaver (US 8982424).
Regarding claim 1, Weaver discloses “an edible body marking device that forms a marking pattern on an edible body by scanning a laser spot (column 2, lines 40-41), wherein the marking pattern includes, as additional information, positional information of one or more index dots that are made by partially deforming or removing one or more dots of the laser spot, or newly adding one or more dots of the laser spot with respect to a basic pattern that is obtained by forming a plurality of the dots of the laser spot (column 2, lines 60-column 3, line 10).” Regarding the limitation “an edible body”, it has been held that a claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). See MPEP §2115. In this instance, since the claim is drawn to an apparatus, the article being worked upon by the apparatus, that is, the edible body, does not impart patentability to the claims. The marking device of Weaver is more than capable of marking an edible body. Regarding claims 2-5, no structure is recited which defines over the marking apparatus of Weaver; the marking device of Weaver is more than capable of marking the marking pattern(s) recited.
Conclusion
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/JOSHUA D ZIMMERMAN/ Primary Examiner, Art Unit 2853