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 without traverse of Group II, claims 17-19 in the reply filed on August 25, 2025 is acknowledged. Claims 1-16 and 20 are subsequently cancelled by the applicant.
Claim Status
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
17-19, 21-37
Withdrawn claims:
None
Previously canceled claims:
None
Newly canceled claims:
1-16, 20
Amended claims:
17
New claims:
21-37
Claims currently under consideration:
17-19, 21-37
Currently rejected claims:
17-19, 21-37
Allowed claims:
None
Claim Objections
Claims 18 and 22 are objected to because of the following informalities:
Claim 18, line two “granulated a sugar” should state “granulated sugar”.
Claim 22, “oak milk” should state “oat milk”.
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.
Claims 18 and 19 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 18 recites the limitation "the capsule" in step (d). There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, it is presumed that “the capsule” refers to the product created by encapsulation.
Claim 19 recites the limitation "the capsule" in step (d). There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, it is presumed that “the capsule” refers to the product created by encapsulation.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 17, 23, 25, 26, 30, and 32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sun (CN102640963A).
Regarding claim 17, Sun teaches a manufacturing method for a juice-encapsulated bursting pearl composition (i.e., a comestible capsule) 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 ([0017]).
Regarding claim 23, Sun also teaches that the flavoring ingredient includes coffee ([0024]).
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 26, Sun 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.
Regarding claim 30, Sun teaches that the first raw material (i.e., core composition) comprises calcium lactate (i.e., a calcium ion source) and that the second raw material (i.e., encapsulating agent) comprises sodium alginate (i.e., a polysaccharide) ([0024]).
Regarding claim 32, Sun also teaches that the use of sodium alginate ([0024]), which is a known polysaccharide.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 18 and 37 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 18, Sun teaches mixing calcium lactate (i.e., a calcium ion source) with a flavoring ingredient (i.e., at least one flavoring base component) to form a core composition ([0017]). Sun also teaches 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). Sun also teaches Sun 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, 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, 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).
Regarding 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 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.
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 claim 37, Sun does not teach rinsing and straining the capsule.
Regarding rinsing the 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 straining the capsule, 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 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).
Claims 19, 24, 27-29, 31, 33, 34, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Sun (CN102640963A) in view of Zwicker (US 2010/0047395 A1).
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; or wherein the core composition remains in the bath for a time period of from about 40 minutes to about 2 hours.
However, in the same field of endeavor, 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 ([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 claim 24, Sun does not teach the core composition comprising a sugar.
However, in the same field of endeavor, Zwicker teaches the composition comprising brown sugar ([0027]).
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).
Regarding claim 27, Sun does not teach wherein the core composition is a gel.
However, in the same field of endeavor, Zwicker further discloses that after the composition is fully mixed, the composition is a viscous solution (i.e., a gel) ([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 substitute the calcium lactate of Sun with the use of calcium chloride 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).
Regarding claim 28, Sun does not teach wherein the core composition comprises a polysaccharide and the encapsulating agent is a calcium ion source.
However, in the same field of endeavor, Zwicker teaches dipping the compound with alginate (i.e., a polysaccharide) into the calcium chloride solution ([0018]).
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 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 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 claims 33 and 34, Sun does not teach further comprising adding a first colorant dropwise into the core composition prior to the dispensing step.
However, in the same field of endeavor, Zwicker teaches that the composition can comprise one or more coloring components ([0038]).
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 one or more coloring components 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 that the colorants are added dropwise to the core composition, it would have been self-evident to add coloring dropwise in order to monitor the color change and obtain the desired color without inadvertently adding excessive coloring. Although the cited prior art does not teach adding a first colorant and then a second colorant, 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).
Regarding claim 36, Sun does not teach the further comprising adding one or more selected from an infusing agent, a flavoring agent, a spice, a vitamin, caffeine, a mineral, an herbal supplement, and a colorant to the core composition.
However, in the same field of endeavor, Zwicker teaches adding coloring agents, an infusing agent, a spice, an herbal supplement, and/or a flavoring agent ([0045]).
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).
Claims 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Sun (CN102640963A) 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 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 (p. 3, ¶ 5).
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Sun (CN102640963A) in view of u/3thanwong (“Have you tried colorful boba pearls yet? I made them with fresh fruits!”, post by u/3thanwong to r/asianeats, Reddit, posted June 28, 2020 [accessed online December 5, 2025] https://www.reddit.com/r/asianeats/comments/hhfvbb/have_you_tried_colorful_boba_pearls_yet_i_made/).
Regarding claim 35, Sun does not teach further comprising adding a plurality of fruit pieces to the core composition.
However, in the same field of endeavor, u/3thanwong teaches making boba pearls using chopped fruits (p. 2, Making Raw Boba Pearls, step 2).
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 fruit pieces as taught by u/3thanwong. One would have been motivated to make this modification because u/3thanwong teaches that adding fruit results in colorful and fruity boba pearls (p. 1, Image).
Conclusion
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 Generally available M-Th 8:00a-5:00p, F 8:00-2:00[.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793