DETAILED ACTION
Election/Restrictions
Applicant’s election of Group I in the reply filed on 10/20/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Abstract
The abstract of the disclosure is objected to because it refers to a “second emulsifier component” and not a “first emulsifier component”. If there is only one emulsifier listed in the Abstract, then Applicant can consider deleting the term “second”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 14 and 17 are objected to because of the following informalities:
Claim 14 recites the limitation "shortening" in line 4. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider stating "of the shortening" as “shortening” was mentioned earlier.
Claim 14 recites the limitation "flavor" in line 4. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider stating "of the flavor" as “flavor” was mentioned earlier.
Claim 14 recites the limitation "water" in line 4. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider stating "of the water" as “water” was mentioned earlier.
Claim 14 recites the limitation "a second emulsifier component" in line 4. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider stating "of the second emulsifier component" as “second emulsifier component” was mentioned earlier.
Claim 17 recites the limitation "shortening" in line 4. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider stating "of the shortening" as “shortening” was mentioned earlier.
Claim 17 recites the limitation "flavor" in line 4. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider stating "of the flavor" as “flavor” was mentioned earlier.
Claim 17 recites the limitation "water" in line 4. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider stating "of the water" as “water” was mentioned earlier.
Claim 17 recites the limitation "a second emulsifier component" in line 4. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider stating "of the second emulsifier component" as “second emulsifier component” was mentioned earlier.
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 1-20 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.
The phrase "second emulsifier component" in Claim 1, line 8 is vague and indefinite as it is unclear how there can be a “second emulsifier component” when there is no “first emulsifier component”.
Claim 1 recites the limitation "the ingredients" in line 9. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider earlier stating “ingredients”.
Clarification and/or correction required.
Claim Rejections - 35 USC § 102
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)(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.
Claim(s) 1-5, 7-12 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sargent et al. (US 2004/0062846).
The claims are interpreted as being directed to a composition and not a method of making or using. The method language is interpreted to the extent that it further describes the composition.
Regarding Claim 1, Sargent (‘846) teaches a shelf stable liquid composition for sweetening, flavoring, and lightening coffee, comprising: a sweetener system; a dairy-based lightener system; flavor; water; shortening; and a second emulsifier component (See Abs., para. 131+, Table 6, Claims.).
Regarding Claim 2, Sargent (‘846) teaches wherein the dairy-based lightener system comprises 5-13% dairy solids (See para. 17.).
Regarding Claim 3, Sargent (‘846) teaches wherein the liquid composition has a pH of from about 6.0 to about 6.5 (See para. 76.).
Regarding Claim 4, Sargent (‘846) teaches wherein the sweetener system is present in the shelf stable liquid composition in an amount of from about 40.0 wt. % to about 85.0 wt. %, based on a total weight of the shelf stable liquid composition (See paras. 86+, 131+, Table 6.).
Regarding Claim 5, Sargent (‘846) teaches wherein the sweetener system comprises corn syrup, liquid fructose, and granulated sugar (See para. 87.).
Regarding Claim 7, Sargent (‘846) teaches wherein the shortening is included in the shelf stable liquid composition in an amount of from about 5 wt. % to about 13 wt. %, based on a total weight of the shelf stable liquid composition (See para. 31.).
Regarding Claim 8, Sargent (‘846) teaches wherein the second emulsifier component is included in the shelf stable liquid composition in an amount of less than about 0.2 wt. %, based on a total weight of the shelf stable liquid composition (See para. 15.).
Regarding Claim 9, Sargent (‘846) teaches wherein the second emulsifier component comprises lecithin, hydroxylated lecithin, soy lecithin, or combinations thereof (See para. 54.).
Regarding Claim 10, Sargent (‘846) teaches further comprising a buffer, salt, an anti-foam agent, a preservative, a polyol, or a combination thereof (See paras. 76, 77.).
Regarding Claim 11, Sargent (‘846) teaches wherein the shelf stable liquid composition is homogenized but is not subjected to colloidal milling during processing (See para. 131+.).
Regarding Claim 12, Sargent (‘846) teaches wherein the shelf stable liquid composition contains less whey protein than dairy-based ingredients (See para. 131+ where whey is one of plural dairy ingredients, thus, less than total dairy-based ingredients.).
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.
Claim(s) 6, 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sargent et al. (US 2004/0062846).
Regarding Claim 6, Sargent (‘846) teaches the composition discussed above including sweeteners (See para. 87+, 131+.), however, fails to expressly disclose wherein the shelf stable liquid composition comprises from about from about 35.0 wt. % to about 45.0 wt. % liquid fructose and from about 20 wt. % to about 25 wt. % granulated sugar.
Applicant does note set forth any non-obvious unexpected results for providing any particular amount of a combination of sweeteners.
It would have been foreseeable and obvious prior to the earliest effective filing date to select any combination and amounts of sweeteners known in the art, including those set forth in the claims to provide a composition that satisfies the taste and physical requirements of a consumer. The selection would have been within the skill set of a person having ordinary skill in the art.
Regarding Claim 13, Sargent (‘846) teaches the composition discussed above, however, fails to expressly disclose wherein the shelf stable liquid composition has a water activity (aw) of less than 0.85.
Applicant does note set forth any non-obvious unexpected results for providing any particular water activity (aw) over another.
It would have been foreseeable and obvious prior to the earliest effective filing date since Sargent’s (‘846) composition is substantially the same or the same as Applicants that it would also have the same water activity (aw). The selection of processing conditions would have been within the skill set of a person having ordinary skill in the art.
Regarding Claim 14, Sargent (‘846) teaches a composition for sweetening, flavoring, and lightening coffee comprising: sugars/(sweeteners); dairy powder; shortening; flavor; water; and a second emulsifier component; and water and having a pH of 6.0-6.5 (See Abs., para. 131+, Table 6, Claims.), however, fails to expressly disclose the amounts of the ingredients.
It would have been foreseeable and obvious prior to the earliest effective filing date to add more or less of the various ingredients based on consumer taste. The selection of amounts would have been within the skill set of a person having ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENT T O'HERN whose telephone number is (571)272-6385. The examiner can normally be reached M-Th 5:00 am - 3:30 pm.
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/BRENT T O'HERN/ Primary Examiner, Art Unit 1793 October 23, 2025
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