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 .
Application Status
Amended claim 1-4 and 6-10 are under examination.
Claim 11 and 13-20 are withdrawn from examination.
Claim 5 and 12 are cancelled.
Withdrawn Rejections
The 112 second paragraph rejection over claim 10 has been withdrawn in light of Applicants’ amendments.
The 101 rejection set forth in previous office action has been withdrawn in light of Applicants’ amendments.
The 35 U.S.C. 102 (a)(1) rejection over claim 1, 2 and 10 as being anticipated by Rehault-Godbert et al. as evidenced by Michael Smith Engineers Limited, have been withdrawn in light of Applicants’ amendments.
The 35 U.S.C. 103 rejection over claim 9 as being unpatentable over Rehault-Godbert et al. as evidenced by Michael Smith Engineers Limited, have been withdrawn in light of Applicants’ amendments.
The 35 U.S.C. 103 rejection over claim 1-10 as being unpatentable over Strozier et al. (WO 2016/070017) have been withdrawn in light of Applicants’ amendments to recite new limitations in claim 1.
Claim Objections
Claim 2, 6, 7 and 8 are objected to because of the following informalities: claim 2, 6, 7 and 8 recites “…a weight percentage …on a total weight…” should be “…the weight percentage…on the total weight” since antecedent basis have been established in claim 1, line 4-5. 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.
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.
Claim 2 and 3 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.
Claim 2 recites a range of “from 0.1% to 25%” in line 2, is confusing. It is not clear if the range of claim 2 is farther limiting the range set forth in claim 1, line 4. Since the claim is indefinite. Claim 3 is also rejected since the claim is depended upon claim 2.
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.
Claim(s) 1-4 and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Strozier et al. (WO 2016/070017) in view of Mower (US 2006/0210697).
Regarding claim 1, Strozier et al. (Strozier) discloses a pediatric nutritional composition (‘017, [0009]) comprising milk which contains fat (’017, [0036], [0063]), carbohydrates (‘017, [0022]), protein (‘017, [0035]); and vegetable powder (‘017, [0015]-[0016], [0020]) and natural flavorant (‘017, [0041]-[0044]).
With respect to new limitation of a viscosity of the nutritional composition is from 72 centipoises to 1000 centipoises; Strozier discloses the pediatric nutritional composition has a viscosity (‘017, [0055]). Strozier is silent on the viscosity is from 72 centipoises (cPs) to 1000 cps. However, Mower discloses a composition comprising protein, lipids and carbohydrates (‘697, [0067], [0074], [0079]) for child (‘687, [0050]). Mower discloses the composition with a viscosity from about 20 to about 100 cPs (‘697, [0086]), which overlaps the cited range. Strozier and Mower are of the same field of endeavor with nutritional composition for a child. It would have been obvious to one of ordinary skill in the art to employ Mower’s viscosity from about 20 to about 100 cps in Strozier’s nutritional composition to provide desired advantages including prevention or reduction of regurgitation as taught by Mower (‘697, [0087]).
With respect to new limitation of “…wherein the natural ingredient has a weight percentage from 5% to 22% based on a total weight (100% by weight) of the nutritional composition, and the natural ingredient comprises corn, pumpkin, mushroom, onion, tomato, sesame, nut, or a combination thereof…”, Strozier discloses the vegetable powder (‘017, [0015]-[0016], [0020]) includes pumpkin (‘017, [0020]), wherein the vegetable powder is considered a natural ingredient. Strozier discloses the vegetable powder (natural ingredient) is in a range of about 20% to about 40% by weight of the nutritional composition (‘017, [0017]), which overlaps the cited range of from 5% to 22%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 2, modified Strozier discloses the vegetable powder (natural ingredient) is in a range of about 20% to about 40% by weight of the nutritional composition (‘017, [0017]), which overlaps the cited range of from 0.1 to 25% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
Regarding claim 3, modified Strozier discloses the pediatric nutritional composition (‘017, [0009]) comprising 1% fat milk (‘017, [0063]), which is in range with the cited range. Modified Strozier discloses the protein in a range of about 35 grams to about 70 grams per liter of nutritional liquid (pediatric nutritional composition = nutritional powder plus milk) (‘017, [0036]), which corresponds to the protein in a range of about 3.5% to 7.0%, which is in range with the cited range. Modified Strozier discloses the carbohydrate in a range of about 30% to about 40 wt% of the nutritional powder (‘017, claim 24, claim 39), which overlaps the cited range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 4, modified Strozier discloses the pediatric nutritional composition comprising the carbohydrates including sugar with an average particle size (count median diameter) of about 100 um to about 350 um (‘017, claim 34), which is in range with the cited range.
Regarding claim 6, modified Strozier discloses the vegetable powder (‘017, [0015]-[0016], [0020]) includes the pumpkin (‘017, [0020]), wherein the vegetable powder is considered a natural ingredient. With respect to new limitation of ranges, Strozier discloses the vegetable powder (natural ingredient) is in a range of about 20% to about 40% by weight of the nutritional composition (‘017, [0017]), which overlaps the cited range of from 9% to 22% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Modified Strozier discloses the pediatric nutritional composition comprising the nutritional powder with an average particle size (count median diameter) in a range of about 125 um to about 215 um (‘017, [0054]), which is in range with the cited range.
Regarding claim 7, with respect to new limitation in claim 7; modified Strozier discloses the pediatric nutritional composition (‘017, [0009]) comprising the natural flavorants including pumpkin (natural ingredient) (‘017, [0041]-[0044]) in a range of about 0.1% to about 8% by weight of the nutritional composition (‘017, [0045]), which overlaps the cited range of 5% to 10% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Modified Strozier discloses the pediatric nutritional composition comprising the nutritional powder with an average particle size (count median diameter) (‘017, [0053]). Strozier does not disclose an average particle size as cited; however it would have been obvious to one of ordinary skill in the art to provide pediatric nutritional composition comprising the nutritional powder with the cited average particle size (count median diameter) provide a desirable sensory characteristics (‘017, [0052]).
Regarding claim 8, with respect to new limitation in claim 8; modified Strozier discloses the pediatric nutritional composition (‘017, [0009]) comprising the natural flavorants including pumpkin (natural ingredient) (‘017, [0041]-[0044]) in a range of about 0.1% to about 8% by weight of the nutritional composition (‘017, [0045]), which overlaps the cited range of 5% to 10% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) Strozier discloses the pediatric nutritional composition comprising the nutritional powder with an average particle size (count median diameter) (‘017, [0053]). Strozier does not disclose the average particle size as cited; however it would have been obvious to one of ordinary skill in the art to provide pediatric nutritional composition comprising the nutritional powder with the cited average particle size (count median diameter) provide a desirable sensory characteristics (‘017, [0052]).
Regarding claim 9, modified Strozier discloses the pediatric nutritional composition (‘017, [0009]) comprising the nutritional powder is packaged in a single serving container, which encompass in a sealed container (‘017, [0012]). The phrase “can be stored stably at room temperature”, is considered a functional limitations of the claimed product; hence it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or substantially identical process, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitation that stem from the claimed structure (product). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spade, 15 USPQ2d 655,1658 (Fed. Cir. 1990).
Regarding claim 10, Strozier discloses the pediatric nutritional composition (‘017, [0009]) comprising vitamins and minerals (‘017, [0031]).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-4 and 6-10 have been considered but are moot because the new ground of rejection does not rely on the combined reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Applicant's amendment with new limitations in claim 1, 2, 6, 7 and 8, necessitated the new ground(s) of rejection presented in this Office action.
With respect to new limitation of a viscosity of the nutritional composition is from 72 centipoises to 1000 centipoises; Strozier discloses the pediatric nutritional composition has a viscosity (‘017, [0055]). Strozier is silent on the viscosity is from 72 centipoises (cPs) to 1000 cps. However, Mower discloses a composition comprising protein, lipids and carbohydrates (‘697, [0067], [0074], [0079]) for child (‘687, [0050]). Mower discloses the composition with a viscosity from about 20 to about 100 cPs (‘697, [0086]), which overlaps the cited range. Strozier and Mower are of the same field of endeavor with nutritional composition for a child. It would have been obvious to one of ordinary skill in the art to employ Mower’s viscosity from about 20 to about 100 cps in Strozier’s nutritional composition to provide desired advantages including prevention or reduction of regurgitation as taught by Mower (‘697, [0087]).
With respect to new limitation of “…wherein the natural ingredient has a weight percentage from 5% to 22% based on a total weight (100% by weight) of the nutritional composition, and the natural ingredient comprises corn, pumpkin, mushroom, onion, tomato, sesame, nut, or a combination thereof…”, Strozier discloses the vegetable powder (‘017, [0015]-[0016], [0020]) includes pumpkin (‘017, [0020]), wherein the vegetable powder is considered a natural ingredient. Strozier discloses the vegetable powder (natural ingredient) is in a range of about 20% to about 40% by weight of the nutritional composition (‘017, [0017]), which overlaps the cited range of from 5% to 22%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
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.
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/HONG T YOO/Primary Examiner, Art Unit 1792