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 .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed is acknowledged.
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
17, 19, 21-22, 25, 29, 31-32, 38-49
Withdrawn claims:
None
Previously canceled claims:
1-16, 20
Newly canceled claims:
18, 23-24, 26-28, 30, 33-37
Amended claims:
17, 19, 22, 29, 31
New claims:
38-49
Claims currently under consideration:
17, 19, 21-22, 25, 29, 31-32, 38-49
Currently rejected claims:
17, 19, 21-22, 25, 29, 31-32, 38-49
Allowed claims:
None
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 49 is 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 49 recites the limitation "wherein the core composition comprises… the polysaccharide" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. The core composition of claim 44 does not comprise a polysaccharide. For the purposes of examination, it is presumed that “the polysaccharide” of claim 49 is intended to be “the calcium ion source” to align with the composition of the core composition of claim 44.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 17, 25, 31, 32, 38, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Sun (CN102640963A) in view of Barba (MX 2017010529 A) and Zwicker (US 2010/0047395 A1).
Regarding claim 17, Sun teaches of a method of making a popping pearl (i.e., comestible) composition ([0008]) comprising:
Mixing a first raw material (i.e., core composition; [0010]) comprising calcium lactate (i.e., a calcium ion source) and flavoring ingredients such as coffee ([0024]);
Dripping (i.e., dispensing dropwise) the first raw material (i.e., core composition) into a second raw material (i.e., bath) comprising sodium alginate (i.e., a polysaccharide) forming a preform coated with a film (i.e., forming an encapsulation surface around the core composition such that the encapsulation surface together with the core composition form the comestible capsule) ([0017])
Sun also teaches that when the pearl is broken open, the flavor flows out ([0017]). Therefore, it logically follows that the first raw material is a liquid, which is known as a flowable material.
Sun does not teach mixing granulated sugar and a gum into the core composition, the bath having a surface and a depth of about 5.0 inches, wherein the core composition is dispensed from a height of at least 8.0 inches above the surface, straining the capsule, rinsing the capsule, or wherein the core composition remains in the bath for a time period of less than about 30 minutes.
Regarding adding granulated sugar and a gum into the core composition and rinsing the capsule, Barba teaches of popping boba compositions comprising granulated sugar and guar and xanthan gums (p. 3, lines 12-18). Barba also teaches washing the beads with water after forming (p. 7, l. 14).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Sun with the addition of granulated sugar and a gum in the core composition as taught by Barba. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
Although the cited prior art does not teach that the sugar, gum, and calcium ion source are mixed to form a dry blend, then the dry blend and flavored base are mixed together, MPEP §2144.04(IV)(C) states “Selection of any order of mixing ingredients is prima facie obvious.” In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Therefore, it would have been obvious to mix together first the dry ingredients and then the wet ingredients to arrive at the claimed process.
Regarding straining the capsule and wherein the core composition remaining in the bath for a time period of less than about 30 minutes, Zwicker teaches an encapsulated composition (Abstract) where the composition is dipped in sodium alginate (i.e., a encapsulated agent) for between 1-30 minutes ([0048]), which falls within the claimed range of “less than about 30 minutes”. Zwicker also teaches draining the composition (i.e., straining) after dipping in sodium alginate ([0041]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Sun with the time period and draining step taught by Zwicker. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
Although the cited prior art does not teach the size of the bath, one of ordinary skill in the art would have adjusted the size of the bath during routine optimization to find the size required to produce the comestible product. MPEP §2144.05(II) states where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The claimed range would thus be obvious.
Although the cited prior art does not teach height from which the core composition is dispensed, one of ordinary skill in the art would have adjusted the height that the core composition is dispensed from during routine optimization to find the height that results in the desired droplet size without splashing. MPEP §2144.05(II) states where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The claimed range would thus be obvious.
Regarding claim 25, Sun also teaches a list of flavoring agents such as coffee, chocolate and/or fruit juice ([0017]). Thus, one of ordinary skill would recognize that there is an embodiment comprising coffee but not fruit juice.
Regarding claim 31, Sun does not teach wherein the calcium ion source is calcium chloride.
However, in the same field of endeavor, Zwicker teaches the composition comprising calcium chloride or calcium lactate ([0013]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to substitute the calcium lactate of Sun with the use of calcium chloride as taught by Zwicker. The claim would have been obvious because one of ordinary skill in the art would have been able to make this simple substitution of one known element for another and yield predictable results to one of ordinary skill in the art, see MPEP §2143(B).
Regarding claim 32, Sun also teaches that the use of sodium alginate ([0024]), which is a known polysaccharide.
Regarding claim 38, Sun teaches that the first raw material (i.e., core composition) comprises flavoring ingredients (i.e., flavored base component), calcium lactate (i.e., the calcium ion source), and water ([0017]).
Sun does not teach the core composition also consisting essentially of granulated sugar and a gum.
However, in the same field of endeavor, Barba teaches of popping boba compositions comprising granulated sugar and guar and xanthan gums (p. 3, lines 12-18).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Sun with the addition of granulated sugar and a gum in the core composition as taught by Barba. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
MPEP §2111.03(III) states “The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention.” Although Sun modified by Barba includes water in the core composition, the presence of water would not materially affect the basic and novel characteristics of the claimed invention. The water would merely serve to dilute the flavoring ingredient to the desired concentration, which would not have an impact on the structure of the comestible capsule of the claimed invention. Thus, the limitations of claim 38 are obvious.
Regarding claim 40, Sun does not teach wherein the core composition comprises sugar in an amount of from about 10 wt% to about 20 wt%, the gum in an amount of from about 0.5 wt% to about 1.0 wt%, the calcium ion course in an amount of from about 0.1 wt% to about 0.5 wt%, and the at least one flavored base component in an amount of from about 70 wt% to about 90 wt%.
Regarding the core composition comprising sugar in an amount of from about 10 wt% to about 20 wt%, Barba teaches the flavor pearls comprising 16.7% to 38.52% sugar (p. 4, lines 9-10), which overlaps with the claimed range of “from about 10 wt% to about 20 wt%”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the composition of Sun to comprise sugar in the amount taught by Barba. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
With respect to the overlapping ranges, MPEP §2144.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Regarding the core composition comprising the gum in an amount of from about 0.5 wt% to about 1.0 wt%, Zwicker teaches an exemplary composition comprising 0.75% guar gum ([0026]), which lies within the claimed range of “from about 0.5 wt% to about 1.0 wt%”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the composition of Sun in view of Barba to include the amount of guar gum as taught by Zwicker. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
Although the cited prior art does not teach the amount of the calcium ion source to include in the core composition, Sun discloses that the calcium lactate on the surface of the droplet first raw material (i.e., core composition) undergoes calcification reaction with the sodium alginate of the second raw material ([0026]). Therefore, one of ordinary skill in the art would have adjusted the amount of the calcium ion source during routine optimization to find the amount of calcium ion required to effectively react with the sodium alginate to form the encapsulation surface. MPEP §2144.05(II) states where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The claimed range would thus be obvious.
Although the cited prior art does not teach the amount of the flavored base in the core composition, Sun discloses that when the bursting pearls are consumed, the consumer can taste multiple delicious flavors ([0029]). Therefore, one of ordinary skill in the art would have adjusted the amount of the flavored ingredient during routine optimization to find the amount of flavoring agent to result in the desired flavor profile of the composition. MPEP §2144.05(II) states where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The claimed range would thus be obvious.
Claims 19, 29, 41, and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Sun (CN102640963A) in view of Zwicker (US 2010/0047395 A1) and Barba (MX 2017010529 A).
Regarding claims 19, Sun teaches dripping (i.e., dispensing dropwise) the first raw material (i.e., core composition) into a second raw material (i.e., bath) to form an encapsulated surface ([0017]).
Sun does not teach (a) mixing a sugar and the polysaccharide, thereby forming a dry blend; (b) mixing the dry blend and at least one flavored base component, thereby forming the core composition; (c) dispensing the core composition dropwise into the bath, wherein the encapsulating agent is a calcium ion source, thereby forming the encapsulation surface; (d) straining the capsule; wherein the core composition is a gel after the dispersing step; (e) rinsing the comestible capsule; or wherein the core composition remains in the bath for a time period of from about 40 minutes to about 2 hours.
(a) mixing a sugar and the polysaccharide, thereby forming a dry blend; (b) mixing the dry blend and at least one flavored base component, thereby forming the core composition; (c) dispensing the core composition dropwise into the bath, wherein the encapsulating agent is a calcium ion source, thereby forming the encapsulation surface; (d) straining the capsule; wherein the core composition is a gel after the dispersing step; and wherein the core composition remains in the bath for a time period of from about 40 minutes to about 2 hours., Zwicker teaches an embodiment of the invention comprising (a) brown sugar, sodium alginate (i.e., a polysaccharide), and (b) maple flavoring (i.e., a syrup flavoring base) ([0036]). Zwicker also teaches dipping the alginate solution into a calcium chloride solution to produce beads (i.e., such that the surface together with the core composition form the comestible capsule) ([0018]). Zwicker also teaches draining the composition (i.e., straining) after dipping in sodium alginate ([0041]). Zwicker further discloses that after the composition is fully mixed, the composition is a viscous solution (i.e., a gel) ([0041]). Zwicker further teaches the composition is placed in the calcium chloride solution for between 1-30 minutes ([0048]), which lies close to the claimed range of “from about 40 minutes to about 2 hours”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Sun with the additions above from Zwicker. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
With respect to the close range, MPEP §2144.05 states 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).
Although the cited prior art does not teach that the sugar and polysaccharide are mixed to form a dry blend, then the dry blend and flavored base are mixed together, MPEP §2144.04(IV)(C) states “Selection of any order of mixing ingredients is prima facie obvious.” In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Therefore, it would have been obvious to mix together first the dry ingredients and then the wet ingredients to arrive at the claimed process.
Regarding rinsing the comestible capsule, Barba teaches washing the beads with water after forming (p. 7, l. 14).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Sun to include a step of washing the beads with water after forming as taught by Barba. One of ordinary skill would have been motivated to make this modification because Barba teaches that the beads are washed with water to remove excess sodium alginate from the surface of the bead (p. 7, l. 14-15).
Regarding claim 29, Sun does not teach wherein the calcium ion source is calcium sulfate.
However, in the same field of endeavor, Zwicker teaches the composition comprising calcium sulfate or calcium lactate ([0013]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to substitute the calcium lactate of Sun with the use of calcium sulfate as taught by Zwicker. The claim would have been obvious because one of ordinary skill in the art would have been able to make this simple substitution of one known element for another and yield predictable results to one of ordinary skill in the art, see MPEP §2143(B).
Regarding claim 41, Sun teaches that the first raw material (i.e., core composition) comprises flavoring ingredients (i.e., flavored base component) and water ([0017]).
Sun does not teach the core composition also consisting essentially of granulated sugar and the polysaccharide.
Regarding the composition consisting essentially of granulated sugar, Barba teaches of popping boba compositions comprising granulated sugar (p. 3, lines 12-18).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Sun with the addition of granulated sugar and a gum in the core composition as taught by Barba. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
Regarding the composition consisting essentially of the polysaccharide, Zwicker teaches an embodiment of the invention comprising sodium alginate (i.e., a polysaccharide) ([0036]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Sun with the additions above from Zwicker. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
MPEP §2111.03(III) states “The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention.” Although Sun modified by Barba and Zwicker includes water in the core composition, the presence of water would not materially affect the basic and novel characteristics of the claimed invention. The water would merely serve to dilute the flavoring ingredient to the desired concentration, which would not have an impact on the structure of the comestible capsule of the claimed invention. Thus, the limitations of claim 41 are obvious.
Regarding claim 43, Sun does not teach wherein the core composition comprises sugar in an amount of from about 10 wt% to about 20 wt%, the polysaccharide in an amount of from about 0.5 wt% to about 2.0 wt%, and the at least one flavored base component in an amount of from about 70 wt% to about 90 wt%.
Regarding the composition comprising sugar in an amount of from about 10 wt% to about 20 wt%, Barba teaches the flavor pearls comprising 16.7% to 38.52% sugar (p. 4, lines 9-10), which overlaps with the claimed range of “from about 10 wt% to about 20 wt%”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the composition of Sun to comprise sugar in the amount taught by Barba. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
With respect to the overlapping ranges, MPEP §2144.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Regarding the composition comprising the polysaccharide in an amount of from about 0.5 wt% to about 2.0 wt%, Zwicker teaches that the dry blend of the composition can comprise 0.05-0.50% sodium alginate by weight ([0033]), which overlaps with the claimed range of “from about 0.5 wt% to about 2.0 wt%”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the composition of Sun with the use of sodium alginate in the amount taught by Zwicker in place of the calcium lactate. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
With respect to the overlapping ranges, MPEP §2144.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Although the cited prior art does not teach the amount of the flavored base in the core composition, Sun discloses that when the bursting pearls are consumed, the consumer can taste multiple delicious flavors ([0029]). Therefore, one of ordinary skill in the art would have adjusted the amount of the flavored ingredient during routine optimization to find the amount of flavoring agent to result in the desired flavor profile of the composition. MPEP §2144.05(II) states where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The claimed range would thus be obvious.
Claims 21, 22, and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Sun (CN102640963A) in view of Barba (MX 2017010529 A) and Zwicker (US 2010/0047395 A1) as applied to claim 17 above, and further in view of Le (Le, Lisa. “Vegan Boba Milk Tea”, VietVegan, published September 2, 2020 [accessed online December 5, 2025]) https://thevietvegan.com/vegan-boba-milk-tea/).
Regarding claims 21 and 22, Sun does not teach wherein the flavored base component is an alternative dairy product selected from an alternative dairy milk and an alternative dairy creamer (claim 21) or wherein the flavored base is an alternative dairy milk selected from coconut milk, oat milk, soy milk, almond milk, and chia milk (claim 22).
However, in the same field of endeavor, Le teaches making boba tea with soy milk or oat milk (p. 3, ¶ 5).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the invention of Sun to use oat milk or soy milk as the flavoring ingredient of Sun. One of ordinary skill would have been motivating to make this modification because Le teaches that soy milk and oat milk are delicious in boba drinks (p. 3, ¶ 5).
Regarding claim 39, Sun does not teach wherein the flavored base component is an alternative dairy product.
However, in the same field of endeavor, Le teaches making boba tea with soy milk or oat milk (p. 3, ¶ 5).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the invention of Sun to use oat milk or soy milk as the flavored base component. One of ordinary skill would have been motivating to make this modification because Le teaches that soy milk and oat milk are delicious in boba drinks (p. 3, ¶ 5).
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over Sun (CN102640963A) in view of Zwicker (US 2010/0047395 A1) and Barba (MX 2017010529 A) as applied to claim 41 above, and further in view of Le (Le, Lisa. “Vegan Boba Milk Tea”, VietVegan, published September 2, 2020 [accessed online December 5, 2025]) https://thevietvegan.com/vegan-boba-milk-tea/).
Regarding claim 42, the cited prior art does not teach wherein the flavored base component is an alternative dairy product.
However, in the same field of endeavor, Le teaches making boba tea with soy milk or oat milk (p. 3, ¶ 5).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the invention of Sun to use oat milk or soy milk as the flavored base component. One of ordinary skill would have been motivating to make this modification because Le teaches that soy milk and oat milk are delicious in boba drinks (p. 3, ¶ 5).
Claims 44, 48, and 49 are rejected under 35 U.S.C. 103 as being unpatentable over Sun (CN102640963A) in view of Barba (MX 2017010529 A).
Regarding claim 44, Sun teaches a method of making a popping pearl (i.e., comestible) composition ([0008]) comprising:
Preparing a first raw material (i.e., a core composition; [0010]) comprising calcium lactate (i.e., calcium ion course) and flavoring ingredients including coffee ([0024]);
Dripping (i.e., dispensing dropwise) the first raw material (i.e., core composition) into a second raw material (i.e., bath) comprising sodium alginate (i.e., a polysaccharide) forming a preform coated with a film (i.e., forming an encapsulation surface around the core composition such that the encapsulation surface together with the core composition form the comestible capsule) ([0017]).
Sun also teaches that when the pearl is broken open, the flavor flows out ([0017]). Therefore, it logically follows that the first raw material is a liquid, which is known as a flowable material.
Sun does not teach the core composition also consisting essentially of granulated sugar and a gum.
However, in the same field of endeavor, Barba teaches of popping boba compositions comprising granulated sugar and guar and xanthan gums (p. 3, lines 12-18).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Sun with the addition of granulated sugar and a gum in the core composition as taught by Barba. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
MPEP §2111.03(III) states “The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention.” Although Sun modified by Barba includes water in the core composition, the presence of water would not materially affect the basic and novel characteristics of the claimed invention. The water would merely serve to dilute the flavoring ingredient to the desired concentration, which would not have an impact on the structure of the comestible capsule of the claimed invention. Thus, the limitations of claim 38 are obvious.
Regarding claim 48, Sun also teaches a list of flavoring agents such as coffee, chocolate and/or fruit juice ([0017]). Thus, one of ordinary skill would recognize that there is an embodiment comprising coffee but not fruit juice.
Regarding claim 49, Sun does not teach wherein the core composition comprises sugar in an amount of from about 10 wt% to about 20 wt%, the gum in an amount of from about 0.5 wt% to about 1.0 wt%, the calcium ion course in an amount of from about 0.1 wt% to about 0.5 wt%, and the at least one flavored base component in an amount of from about 70 wt% to about 90 wt%.
Regarding the core composition comprising sugar in an amount of from about 10 wt% to about 20 wt%, Barba teaches the flavor pearls comprising 16.7% to 38.52% sugar (p. 4, lines 9-10), which overlaps with the claimed range of “from about 10 wt% to about 20 wt%”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the composition of Sun to comprise sugar in the amount taught by Barba. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
With respect to the overlapping ranges, MPEP §2144.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Although the cited prior art does not teach the amount of the calcium ion source to include in the core composition, Sun discloses that the calcium lactate on the surface of the droplet first raw material (i.e., core composition) undergoes calcification reaction with the sodium alginate of the second raw material ([0026]). Therefore, one of ordinary skill in the art would have adjusted the amount of the calcium ion source during routine optimization to find the amount of calcium ion required to effectively react with the sodium alginate to form the encapsulation surface. MPEP §2144.05(II) states where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The claimed range would thus be obvious.
Although the cited prior art does not teach the amount of the flavored base in the core composition, Sun discloses that when the bursting pearls are consumed, the consumer can taste multiple delicious flavors ([0029]). Therefore, one of ordinary skill in the art would have adjusted the amount of the flavored ingredient during routine optimization to find the amount of flavoring agent to result in the desired flavor profile of the composition. MPEP §2144.05(II) states where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The claimed range would thus be obvious.
Claim 45 is rejected under 35 U.S.C. 103 as being unpatentable over Sun (CN102640963A) in view of Barba (MX 2017010529 A) as applied to claim 44 above, and further in view of Le (Le, Lisa. “Vegan Boba Milk Tea”, VietVegan, published September 2, 2020 [accessed online December 5, 2025]) https://thevietvegan.com/vegan-boba-milk-tea/).
Regarding claim 45, the cited prior art does not teach wherein the at least one flavored base component is an alternative dairy product.
However, in the same field of endeavor, Le teaches making boba tea with soy milk or oat milk (p. 3, ¶ 5).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the invention of Sun to use oat milk or soy milk as the flavored base component. One of ordinary skill would have been motivating to make this modification because Le teaches that soy milk and oat milk are delicious in boba drinks (p. 3, ¶ 5).
Claims 46 and 47 are rejected under 35 U.S.C. 103 as being unpatentable over Sun (CN102640963A) in view of Barba (MX 2017010529 A) as applied to claim 44 above, and further in view of Zwicker (US 2010/0047395 A1).
Regarding claim 46, Sun and Barba do not teach the process further comprising straining the comestible capsule.
However, in the same field of endeavor, Zwicker teaches an encapsulated composition (Abstract) and draining the encapsulated composition (i.e., straining) after dipping in sodium alginate ([0041]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Sun with the straining step taught by Zwicker. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
Regarding claim 47, Sun and Barba do not teach wherein the core composition remains in the bath for a time period of less than about 30 minutes.
However, in the same field of endeavor, Zwicker teaches an encapsulated composition (Abstract) where the composition is dipped in sodium alginate (i.e., a encapsulated agent) for between 1-30 minutes ([0048]), which falls within the claimed range of “less than about 30 minutes”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Sun with the time period taught by Zwicker. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
Response to Arguments
Claim Objections: Applicant has overcome the objections to the claims based on amendments in the Claims. Accordingly, the objections have been withdrawn.
Claim Rejections - 35 U.S.C. §112(b): Applicant has overcome the 35 U.S.C. § 112(b) rejections of claims 18 and 19 based on amendments to the claims and/or cancelation. Accordingly, the 35 U.S.C. § 112(b) rejections have been withdrawn.
Claim Rejections – 35 U.S.C. §102 of claims 17, 23, 25-26, 30, and 32 over Sun: Applicant' s arguments have been fully considered and are persuasive to the extent that the claims as presently amended would not be anticipated/obvious in view of Sun. However, upon further consideration, a new ground(s) of rejection is made in view of Sun in view of Barba and Zwicker.
Claim Rejections – 35 U.S.C. §103 of claims 18 and 37 over Sun, Barba, and Zwicker: Applicant’s arguments filed March 18, 2026 have been fully considered but they are not persuasive.
Applicant has argued modifying Sun in view of Barba would result in a traditional popping pearl and the pearl of Sun would no longer have the benefits of Sun (Remarks, p. 9, ¶ 5- p. 10, ¶ 2).
This argument has been considered. However, Barba is relied upon to teach the addition of sugar and a gum to the core composition. The addition of these ingredients would not result in a difference to the end product of Sun and would merely change the flavor of the core composition. Barba is additionally relied upon to teach rinsing the comestible after dipping. One of ordinary skill would recognize that the method of making the boba composition of Sun can be modified to include the rinsing step of Barba without altering the key inventive properties of Sun. One of ordinary skill would recognize a reasonable expectation of success in modifying Sun with the disclosure of Barba.
Furthermore, MPEP §2123(I) states “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments.” Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989) and “The court held that the prior art anticipated the claims even though it taught away from the claimed invention. ‘The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.’” Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998). Additionally, 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). Examiner maintains that Barba is adequate for all that is relied on in the present claim rejections, and the combination of references is adequate to deem the present claims obvious.
Applicant then argued that Zwicker is not directed to capsules that contain a liquid core, and that modifying Sun to include the elements of Zwicker would render Sun inoperable for the intended purpose (Remarks, p. 10, ¶ 3- p. 11, ¶ 1).
This argument has been considered. However, the Examiner maintains that one of ordinary skill would have been capable of performing the described modifications with a reasonable expectation of success. Zwicker is not relied upon to teach any of the method steps beyond straining the comestible. Thus, one of ordinary skill would expect that the modifications to Sun that merely involve ingredients of the first raw material or second raw material to not have an impact to the functionality of the Sun’s method.
Furthermore, MPEP §2123(I) states “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments.” Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989) and “The court held that the prior art anticipated the claims even though it taught away from the claimed invention. ‘The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.’” Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998). Additionally, 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). Examiner maintains that Zwicker is adequate for all that is relied on in the present claim rejections, and the combination of references is adequate to deem the present claims obvious.
Applicant argued that none of the cited references mention anything about the depth of the bath or the height from which the core composition (Remarks, p. 11, ¶ 2- p. 12, ¶ 1).
This argument has been considered. However, the Examiner maintains that one of ordinary skill would have adjusted the size of the bath and the height from which the core composition is dropped during routine optimization. MPEP §2144.05(II) states where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Absent evidence to support a showing of unexpected results, the claimed bath size and dispensing height are obvious.
Applicant also argued Zwicker is directed to solid tapioca pearls whereas Sun is directed to pooping boba. Thus, if one were to modify Sun with the time limit of Zwicker, it would render Sun inoperable for its intended purpose (Remarks, p. 12, ¶ 2).
This argument has been considered. However, the composition of Zwicker is formed by boiling the core composition before dipping in the sodium alginate solution ([0027]; [0029]), whereas the process of Sun does not involve boiling water. Thus, one of ordinary skill in the art would presume that boiling the composition before soaking it in the sodium alginate solution is what results in the solid pearl composition rather than the length of exposure to the film forming solution. Absent evidence to the contrary, the Examiner maintains that one of ordinary skill in the art would have found it obvious to apply the time period taught by Zwicker to the process of Sun because Sun is silent regarding the time period for soaking the core composition.
MPEP §2123(I) states “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments.” Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989) and “The court held that the prior art anticipated the claims even though it taught away from the claimed invention. ‘The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.’” Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998).
Claim Rejections – 35 U.S.C. §103 of claims 19, 24, 27-29, 31, 33-34, and 36 over Sun and Zwicker: Applicant’s arguments filed March 18, 2026 have been fully considered but they are not persuasive.
Applicant argued that one of ordinary skill would not have been motivated to combine Sun (a method of producing popping or liquid-filled pearls) with that of Zwicker (a method for producing solid pearls) because they are different food products. Applicant further argued that modifying the method of Sun to include elements of Zwicker would render the method of Sun inoperable for its intended use (remarks, p. 12, ¶ 4- p. 13, ¶ 2).
This argument has been considered. However, as stated above, the Examiner maintains that one of ordinary skill would have been capable of performing the described modifications with a reasonable expectation of success. The composition of Zwicker is formed by boiling the core composition before dipping in the sodium alginate solution ([0027]; [0029]), whereas the process of Sun does not involve boiling water. Thus, one of ordinary skill in the art would presume that boiling the composition before soaking it in the sodium alginate solution is what results in the solid pearl composition rather than the length of exposure to the film forming solution. Absent evidence to the contrary, swapping the calcium ion source and sodium alginate to have the sodium alginate in the core and the calcium ion in the second composition would still result in a liquid filled pearl as is intended in Sun. Sun teaches that the calcium lactate on the surface of the first raw material reacts with the sodium alginate of the second raw material. Thus, it logically follows that including sodium alginate in the first raw material and calcium lactate in the second raw material would result in the same reaction, and thus the same liquid filled product.
MPEP §2123(I) states “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments.” Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989) and “The court held that the prior art anticipated the claims even though it taught away from the claimed invention. ‘The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.’” Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998).
Applicant further argued than a time period of 1-30 minutes is significantly different from the claimed time period of about 40 minutes to 2 hours (Remarks, p. 13, ¶ 3).
This argument has been considered. However, the claim currently recites “about 40 minutes”, and the specification does not provide a further definition as to the limits of “about”. MPEP §2111.01(IV)(A) states “Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1370, 73 USPQ2d 1641, 1646 (Fed. Cir. 2005) (The Federal Circuit reversed the district court’s construction of the claim term "about" as "exactly." The appellate court explained that a passage in the specification the district court relied upon for the definition of "about" was too ambiguous to redefine "about" to mean "exactly" in clear enough terms. The appellate court held that "about" should instead be given its plain and ordinary meaning of "approximately.").”
Furthermore, MPEP §2144.05 states 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). Additionally, see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%). Absent evidence demonstrating the criticality of the endpoint of the range, the Examiner maintains that Sun in view of Zwicker renders the claims obvious.
Claim Rejections – 35 U.S.C. §103 of claims 21 and 22 over Sun and Le: Applicant’s arguments filed March 18, 2026 have been fully considered but they are not persuasive.
Applicant argued that Le is silent regarding how the pearls are prepared (Remarks, p. 14, ¶ 2-3).
This argument has been considered. 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). Examiner maintains that Le is adequate for all that is relied on in the present claim rejections, and the combination of references is adequate to deem the present claims obvious.
Applicant further argued that none of the references teach, suggest, or disclose using an alternative dairy product as the flavor base in the boba. Applicant argued that Le does not disclose that soy milk and oat milk are delicious in boba, but are delicious in milk beverages that contain boba (Remarks, p. 14, ¶ 4-5).
This argument has been considered. However, as stated above in the 35 USC 103 rejections, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the invention of Sun to use oat milk or soy milk as the flavored base component. One of ordinary skill would have been motivating to make this modification because Le teaches that soy milk and oat milk are delicious in boba drinks (p. 3, ¶ 5). Although Le does not explicitly disclose the use of soy or oat milk in the boba, the Examiner maintains that one of ordinary skill would have found it obvious to include the soy or oat milk as the flavoring ingredients in the first raw material of Sun to make a boba with a flavor that is known to be good in boba drinks.
Claim Rejections – 35 U.S.C. §103 of claim 35 over Sun and u/3thanwong: Applicant’s arguments with respect to the subject matter of claim 35 have been considered but are moot because the limitations of claim 35 are optional in claim 17. u/3thanwong is not relied upon in the current rejections.
New Claims 44-49 – Applicant’s arguments filed March 18, 2026 have been fully considered but they are not persuasive.
Applicant argued that the limitation requiring the composition to “consist essentially of” the claim ingredients is very different from the methods of Sun and Barba, which require significant quantities of water in the core composition (Remarks, p. 15, ¶ 5- p. 16, ¶ 1).
This argument has been considered. However, as described in the rejections above, MPEP §2111.03(III) states “The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention.” Although Sun modified by Barba includes water in the core composition, the presence of water would not materially affect the basic and novel characteristics of the claimed invention. The water would merely serve to dilute the flavoring ingredient to the desired concentration, which would not have an impact on the structure of the comestible capsule of the claimed invention. Thus, the limitations of claim 38 are obvious.
The rejections of claims 17, 19, 21-22, 25, 29, 31-32, 38-49 have been maintained herein.
Conclusion
THIS ACTION IS MADE FINAL. 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 Amanda S Hawkins whose telephone number is (703)756-1530. The examiner can normally be reached M-Th 8:00a-4:00p, F 8:00a-1:00p ET.
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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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