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 .
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 11, 13, 15-16, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over “Tillen Farms Jalapeno Onions, 12 oz.” <https://www.amazon.com/Tillen-Farms-Jalapeno-Onions-12/dp/B07KJFDWBT> (published November 27, 2019) (herein referred to as “Tillen Farms” in view of Postner et al. US 4,430,352 (cited on Information Disclosure Statement filed June 12, 2023), Wang US 2017/0166333, and Strauss “how much salt should i use for my fermentation?” <https://nwedible.com/how-much-salt-fermentation/> (published September 3, 2015) (herein referred to as “Strauss”).
Regarding Claim 11, Tillen Farms discloses a method of making an onion food product. The method comprises the steps of providing a container, filling the container with a heat stable flavor (jalapenos), onions and an acidified solution comprising lactic acid, water, and a brine, and capping the container.
Tillen Farms is silent regarding the container being filled with sodium metabisulfite, the acidified solution having a pH of about 4.0 or less and the brine being a brine acid of 1.0% acid or less, agitating the container, inverting the container, thermally pasteurizing the container, and cooling the container.
Postner et al. discloses a method of making an onion food product. The method comprises the steps of providing a container (tube), filling the container (tube) with sodium metabisulfite, onions, and an acidified solution comprising citric acid, wherein the acidified solution has a pH of about 4.0 or less (‘352, Column 2, lines 6-28). The container is capped (reclosable) (‘352, Column 3, lines 38-39), agitated (mixed) (‘352, Column 3, lines 20-29), and thermally pasteurized (‘352, Column 2, lines 36-39) and the container is cooled (‘352, Column 3, lines 32-37).
Both Tillen Farms and Postner et al. are directed towards the same field of endeavor of methods of making onion food products packaged in a container. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Tillen Farms and incorporate sodium metabisulfite into the onion product as taught by Postner et al. since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Postner et al. teaches that there was known utility in the food art to incorporate sodium metabisulfite as a preservative for onion food products. Furthermore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Tillen Farms and adjust the pH of the acidified solution to the claimed pH of about 4.0 or less as taught by Postner et al. since where the claimed pH of the acidified solution ranges overlaps pH of the acidified solution ranges disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). Postner et al. teaches that it was conventional to adjust the pH of an onion food product to the claimed pH levels as desired. Additionally, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Tillen Farms and thermally pasteurize the container as taught by Postner et al. in order to destroy any unwanted bacteria and microorganisms present in the onion food product.
Further regarding Claim 11, Tillen Farms modified with Postner et al. is silent regarding a brine acid of 1.0% acid or less and the container being inverted.
Wang discloses a sealed bottle, container, or pouch including caps and closures wherein the container contains foodstuffs (‘333, Paragraph [0059]) wherein a typical hot fill process involves adding a hot liquid to a bottle while at an elevated temperature typically from about 70 to about 93°C and then immediately sealing the bottle or container with a closure and then inverting the container wherein contact of the hot liquid with the closure sterilizes the closure wherein inversion lasts for about 15 seconds or a time sufficient for sterilization of the closure interior wherein the bottle is cooled to about 40°C following sterilization (‘333, Paragraph [0003]).
Both modified Tillen Farms and Wang are directed towards the same field of endeavor of methods of packaging food products in a container. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Tillen Farms and invert the container as taught by Wang in order to sterilize the cap closure that seals the container.
Further regarding Claim 11, Tillen Farms modified with Postner et al. and Wang is silent regarding a brine acid of 1.0% acid or less.
Strauss discloses fermenting onions in a 2-3% brine solution wherein the concentration of salt in a brine sets up an environment in which the right microbes thrive wherein the more salt is a stronger brine wherein a weaker brine allows for faster fermentation because the lactobacillus and other beneficial microbes are not as suppressed and is good in cooler weather when fermentation needs help to start and less salt allows ferments with softer texture (Strauss, Page 4).
Both modified Tillen Farms and Strauss are directed towards the same field of endeavor of methods of making food products using a brine solution. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Tillen Farms and adjust the concentration of brine acid to fall within the claimed acidity levels since differences in the acidity levels of the brine solution will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such acidity level of the brine solution is critical. 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the acidity level of the brine solution based upon the desired rate of fermentation as taught by Strauss.
Further regarding Claim 11, modified Tillen Farms is silent regarding performing the filling steps in the claimed order of dosing the sodium metabisulfite, adding the at least one heat stable flavor, adding the onions, and adding the acidified solution comprising water and the one or more acids. However, the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results in view of In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (MPEP § 2144.04.IV.C.).
Regarding Claim 13, Postner et al. discloses the sodium metabisulfite being added in an amount of from 0.05 to 0.1% of the onion food product and from 0.05 to 0.20% citric acid (‘352, Column 2, lines 20-28), which overlaps the claimed concentration of sodium metabisulfite of about 0.01-0.1% wt% and food grade acid of from about 0.1-2% wt%, respectively. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Tillen Farms and incorporate sodium metabisulfite and citric acid in the claimed concentrations as taught by Postner et al. since where the claimed concentrations of sodium metabisulfite and citric acid ranges overlaps concentrations of sodium metabisulfite and citric acid ranges disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.).
Further regarding Claim 13, modified Tillen Farms is silent regarding the concentration of the heat stable flavor being added in an amount ranging from about 0.1-2 wt/wt% relative to the total weight of the onion food product, the concentration of the onion being added in an amount ranging from about 15-25 wt/wt% relative to the total weight of the onion food product, and the water being added in an amount ranging from about 71-84% wt/wt% relative to the total weight of the onion food product. However, differences in the concentration of the heat stable flavor, onion, and water will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration of heat stable flavor, onion, and water is critical. 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the concentrations of the jalapeno heat stable flavor and onion of Tillen Farms based upon the desired intensity of the jalapeno heat stable flavor and onion flavor desired by a particular consumer. Additionally, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the water content of the onion food product disposed in the brine of Tillen Farms to keep the onion and jalapenos moist until ready for use for cooking or consumption.
Regarding Claim 15, modified Tillen Farms is silent regarding the step of adding an acidified solution being the final step for filling the container prior to the capping step. However, the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results in view of In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (MPEP § 2144.04.IV.C.).
Regarding Claim 16, Wang discloses a typical hot fill process involves hot filling a hot liquid beverage to a bottle while at an elevated temperature of from about 70 to about 93°C and then sealing immediately with a closure and inverting while maintaining contact of the hot liquid with the closure to sterilize the closure (‘333, Paragraph [0003]). The disclosure of the inversion step occurring at a temperature of from about 70 to about 93°C for sterilization of the closure converts to an inversion temperature of about 158 to about 199°F, which encompasses the claimed inversion temperature of about 165°F. Where the claimed inversion temperature encompasses inversion temperatures disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). Furthermore, the inversion lasts for a time sufficient for sterilization of the closure interior (‘333, Paragraph [0003]). Differences in the inversion time at the elevated temperatures will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such inversion time at the elevated temperatures is critical. 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the amount of time the container of modified Tillen Farms is inverted until such time is sufficient for sterilization of the closure interior as taught by Wang.
Regarding Claim 20, Tillen Farms discloses the at least one heat stable flavor being jalapenos, which reads on the claimed natural flavor.
Regarding Claim 21, Postner et al. discloses the onions being peeled and chopped (sliced) onions (‘352, Column 3, lines 14-20).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over “Tillen Farms Jalapeno Onions, 12 oz.” <https://www.amazon.com/Tillen-Farms-Jalapeno-Onions-12/dp/B07KJFDWBT> (published November 27, 2019) (herein referred to as “Tillen Farms” in view of Postner et al. US 4,430,352, Wang US 2017/0166333, and Strauss “how much salt should i use for my fermentation?” <https://nwedible.com/how-much-salt-fermentation/> (published September 3, 2015) (herein referred to as “Strauss”) as applied to claim 11 above in further view of Fiwek et al. US 5,050,369.
Regarding Claim 14, Wang discloses capping the container with the closure immediately after filling (‘333, Paragraph [0034]), which reads on capping the container within 30 seconds or less of completing the filling step. Fiwek also discloses a method of assembling a container with a closure immediately following introducing of a selected quantity of liquid into the container (‘369, Column 2, lines 8-11), which also reads on capping the container within 30 seconds or less of completing the filing step. Fiwek et al. discloses avoiding prolonged contact between the contents of the filled containers and the surrounding atmosphere (‘369, Column 1, lines 62-66), which extremely short interval of time greatly reduces the likelihood of splashing, bubbling, or spraying of liquid out of a filled container as well as the likelihood of contamination of the confined liquid as a result of contact with oxygen in the surrounding atmosphere (‘369, Column 9, lines 32-43).
Modified Tillen Farms, Wang, and Fiwek are all directed towards the same field of endeavor of methods of packaging liquid food or beverage. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Tillen Farms and cap the container immediately with the closure after filling the container with the liquid, which reads on the claimed capping of the container within 30 seconds or less of completing the filling step, as taught by Wang and Fiwek since Fiwek teaches that extremely short intervals of time in which the contents of the filled containers and the surrounding atmosphere is exposed reduces the likelihood of splashing, bubbling, or spraying of liquid out of a filled container as well as the likelihood of contamination of the confined liquid as a result of contact with oxygen in the surrounding atmosphere (‘369, Column 9, lines 32-43).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over “Tillen Farms Jalapeno Onions, 12 oz.” <https://www.amazon.com/Tillen-Farms-Jalapeno-Onions-12/dp/B07KJFDWBT> (published November 27, 2019) (herein referred to as “Tillen Farms” in view of Postner et al. US 4,430,352, Wang US 2017/0166333, and Strauss “how much salt should i use for my fermentation?” <https://nwedible.com/how-much-salt-fermentation/> (published September 3, 2015) (herein referred to as “Strauss”) as applied to claim 11 above in further view of Beach US 2021/0030026.
Regarding Claim 16, modified Tillen Farms renders obvious the limitations of Claim 16 (via Wang) as enumerated in the obviousness rejections above. However, in the event that it can be shown with objective evidence that the claimed time the container being inverted for a minimum of about 2.2 minutes while maintaining a temperature of about 165°F during the inverting step is critical, Beach discloses a method of packaging an herbal energy drink comprising hot filling bottles at a minimum temperature of about 170°F with an infusion liquid, then capping the filled bottles and inverting for at least 5 minutes (‘026, Paragraph [0117]), which overlaps the claimed inversion minimum time of about 2.2 minutes and the claimed temperature of about 165°F during the inverting step.
Both modified Tillen Farms and Beach are directed towards the same field of endeavor of methods of packaging a food product in a container. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Tillen Farms and invert the container for the claimed amount of time during the inverting step as taught by Beach since where the claimed inversion time at elevated temperatures encompasses inversion times at elevated temperatures disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.).
Claims 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over “Tillen Farms Jalapeno Onions, 12 oz.” <https://www.amazon.com/Tillen-Farms-Jalapeno-Onions-12/dp/B07KJFDWBT> (published November 27, 2019) (herein referred to as “Tillen Farms” in view of Postner et al. US 4,430,352, Wang US 2017/0166333, and Strauss “how much salt should i use for my fermentation?” <https://nwedible.com/how-much-salt-fermentation/> (published September 3, 2015) (herein referred to as “Strauss”) as applied to claim 11 above in further view of Jensen US 2015/0056359.
Regarding Claim 17, Postner et al. discloses a method of making an onion food product. The method comprises the steps of providing a container (tube), filling the container (tube) with sodium metabisulfite, onions, and an acidified solution comprising citric acid, wherein the acidified solution has a pH of about 4.0 or less (‘352, Column 2, lines 6-28). The container is capped (reclosable) (‘352, Column 3, lines 38-39) and agitated (mixed) (‘352, Column 3, lines 20-29). However, modified Tillen Farms is silent regarding agitated the container for about 45 seconds or less during the agitating step.
Jensen discloses a sauce comprising onions combined with vegetables and all remaining ingredients into a preheated pan, cooked, and blended using a puree setting for 10-45 seconds until desired consistency is achieved (‘359, Paragraph [0038]), which overlaps the claimed agitation time of 45 seconds or less during the agitating step.
Both modified Tillen Farms and Jensen are directed towards the same field of endeavor of methods of making onion food products. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Tillen Farms and agitate the container for the claimed amount of time of agitation as taught by Jensen since where the claimed agitation time encompasses agitation times disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). One of ordinary skill in the art would also adjust the agitation time of the contents of the container of modified Tillen Farms based upon the desired consistency of the onion food product desired as taught by Jensen.
Regarding Claim 19, Strauss discloses adding spices and herbs to the brine solution (Strauss, Page 6). However, Tillen Farms modified with Postner et al., Wang, and Strauss is silent regarding adding one additional vegetable ingredient different from onion and the heat stable jalapenos.
Jensen discloses a sauce comprising onions combined with vegetables and all remaining ingredients into a preheated pan, cooked, and blended using a puree setting for 10-45 seconds until desired consistency is achieved (‘359, Paragraph [0038]).
Both modified Tillen Farms and Jensen are directed towards the same field of endeavor of methods of making onion food products. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Tillen Farms and add one additional vegetable ingredient different from onions and heat stable flavors of jalapenos as taught by Jensen based upon the desired flavor profile and ingredients by a particular consumer.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over “Tillen Farms Jalapeno Onions, 12 oz.” <https://www.amazon.com/Tillen-Farms-Jalapeno-Onions-12/dp/B07KJFDWBT> (published November 27, 2019) (herein referred to as “Tillen Farms” in view of Postner et al. US 4,430,352, Wang US 2017/0166333, and Strauss “how much salt should i use for my fermentation?” <https://nwedible.com/how-much-salt-fermentation/> (published September 3, 2015) (herein referred to as “Strauss”) as applied to claim 1 above in further view of Mitra et al. “Onion dehydration: a review” (Journal of Food Science and Technology, May-June 2012) (herein referred to as “Mitra et al.”).
Regarding Claim 18, modified Tillen Farms is silent regarding the onions being dehydrated.
Mitra et al. discloses onions are generally dried from an initial moisture content of about 86% to 7% or less for efficient storage and processing (Mitra et al., Page 269) wherein dehydration of food is aimed to producing a concentrated product which when adequately packaged has a long shelf life after which the food can be simply reconstituted without substantial loss of flavor, taste, color, and aroma (Mitra et al., Page 270).
Both modified Tillen Farms and Mitra et al. are directed towards the same field of endeavor of methods of processing onion food products. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Tillen Farms and packages onions in a container containing a brining solution and dehydrate the brined onions as taught by Mitra et al. in order to concentrate the onion product and increase the shelf life of the onion product.
Response to Arguments
Examiner notes that the previous Claim Objections have been withdrawn in view of the amendments.
Examiner notes that the previous indefiniteness rejections under 35 USC 112(b) have been withdrawn in view of the amendments.
Applicant's arguments filed April 20, 2026 with respect to the previous indefiniteness rejections under 35 USC 103(a) to Tillen Farms in view of Postner et al., Wang, and Strauss have been fully considered but they are not persuasive.
Examiner notes that applicant’s comments on Page 7 of the Remarks does not specifically and distinctly point out the supposed errors of the Office Action and merely summarizes the obviousness rejections under 35 USC 103(a).
Applicant argues on Pages 8-9 of the Remarks that the Office’s reliance upon Strauss is unsupported and that at best Strauss teaches the use of salt brines for microbial fermentation, e.g. by lactic acid bacteria of vegetables. Applicant contends that the LAB microbes are uniquely tolerant of a high salt environment and the salt is used to help them rapidly dominate their environment and make preserved deliciousness happen and Strauss relates to adjusting microbial growth through salt concentration whereas the instant invention does not involve a fermentation step and the thermally pasteurizing step would kill the microorganisms so that fermentation would not occur in the container. Applicant continues that the process of Postner also requires thermal pasteurization after packaging and that the step of thermally pasteurizing would have defeated the intended fermentation in Strauss and that the Office fails to provide any scientifically supported rationale why a skilled artisan would have applied the teachings of Strauss of brine concentrations in a fermentation process to a process in which fermentation could not have occurred because of thermal pasteurization. Applicant continues that the skilled artisan would not have arrived at the claimed acidified solution having a brine acid of 1.0% acid or less since Strauss teaches fermenting firm vegetables, e.g. onions, with a 2-3% brine salt and that the Office conflates the brine concentration of Strauss with the claimed brine acid concentration.
Examiner argues Claim 11 recites the transitional phrase “comprising,” which is inclusive and open ended and does not exclude additional, unrecited elements or method steps in view of Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) (MPEP § 2111.03.I.). The transitional phase “comprising” does not preclude the presence of the unrecited fermentation disclosed by the secondary reference of Strauss. The secondary reference of Strauss is being relied upon to modify the primary reference of Tillen Farms to render obvious the limitations regarding the concentration of brine acid. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Tillen Farms and adjust the concentration of brine acid to fall within the claimed acidity levels since differences in the acidity levels of the brine solution will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such acidity level of the brine solution is critical. 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the acidity level of the brine solution based upon the desired rate of fermentation as taught by Strauss. Furthermore, Claim 11 recites an acidified solution comprising one or more acids including lactic acid, which applicant admits is taught by the secondary reference of Strauss. Additionally, the secondary reference of Postner et al. is being relied upon to teach the claimed limitations regarding the thermal pasteurizing step. The secondary references of Strauss and Postner et al. (and also the secondary reference of Wang) are being used to modify the primary reference of Tillen Farms. The teachings of the thermal pasteurization step disclosed by Postner et al. is not being used to modify the secondary reference of Strauss as argued by applicant but is instead being used to modify the onion product of Tillen Farms. In response to applicant's arguments against the references individually, 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). It is noted that the claims do not specify the particular temperature at which the thermal pasteurizing step occurs. Applicant’s allegation that the thermally pasteurizing step would kill the microorganisms so that fermentation would not occur in the container at all thermally pasteurizing temperatures is not supported by any objective evidence provided by applicant. Additionally, the secondary reference of Postner teaches using organic acids in a small quantity (‘352, Column 3, lines 1-11) wherein pH is reduced by the additives of sodium metabisulphite, ascorbic acid, tartaric acid, and/or citric acid (‘352, Column 2, lines 20-28). The secondary reference of Strauss discloses adjusting the pH of the ferment lower and preserving it by the addition of lactic acid (Strauss, Page 3) and the amount of salt determines the brine strength (Strauss, Page 4). The acidity levels is correlated with pH levels of the brine. Both Strauss and Postner teach using acidified solutions to adjust the pH of the brine. The concentration of acid in the brine solution would alter the pH levels of the brine. Both modified Tillen Farms and Strauss are directed towards the same field of endeavor of methods of making food products using a brine solution. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Tillen Farms and adjust the concentration of brine acid to fall within the claimed acidity levels since differences in the acidity levels of the brine solution will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such acidity level of the brine solution is critical. 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the acidity level of the brine solution based upon the desired rate of fermentation as taught by Strauss. Therefore, these arguments are not found persuasive.
Applicant argues on Pages 9-10 of the Remarks that the claimed filling step is performed in the specific order, i.e. by a four stage process and alleges that the Specification provides evidence that the specific order is critical and the specific order results in unexpected results as explained in Paragraph [063] of applicant’s specification by comparing with a conventional two step fill process. Applicant alleges that the inventors surprisingly found that by utilizing the four step fill process certain product attributes were maximized, e.g. SMBS and other sulfites in granulated dry powder will rapidly turn into sulfur dioxide gas in the presence of water, acidified water and increased liquid temperature will substantially speed up this reaction, and flavor components used in the finished onion product carry sulfites to better match onion profiles which sulfites easily degrade under similar conditions of SMBS thereby degrading the finished flavor profile and in turn reducing the shelf life of the product. Applicant continues that in a two step fill process the food grade acid, water, flavor, and SMBS are added to a kettle and heated to a high temperature such as 195°F during which the sulfites within the SMBS and flavor are boiled or evaporated out and functional properties completely deteriorated whereas using the four step process results in the SMBS and flavor added during the initial stages of the process to retain the sulfite composition in both the SMBS and the flavor and that the onion is added after addition of the SMBS and flavor to act as a cap or buffer between the SMBS and flavor to prevent the formation of SO2.
Examiner argues the burden is on applicant to establish results are unexpected and significant and applicants have the burden of explaining the proffered data (MPEP § 716.02(b).I.). Applicant’s must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness in view of In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979) (MPEP § 716.02(e)). The prior art combination teaches all four steps of dosing the sodium metabisulfite, adding the at least one heat stable flavor, adding the onions, and adding the acidified solution. With respect to applicant’s allegations of unexpected results, applicant points to a heating temperature to 195°F. However, none of the claims recite a heating temperature of 195°F. Whether the unexpected results are the result of unexpected improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support in view of In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (MPEP § 716.02(d)). Applicant points to disclosures in the specification of heating temperatures of 195°F that are not claimed. Furthermore, Paragraph [063] of applicant’s Specification also recites that the steps can be performed in any order, which indicates that the order to steps are obvious variants. Paragraph [043] of applicant’s Specification also recites mixing in any relative order onions and any vegetable other than onion, any spice, water, any liquid, any brine salts, and any acids. Additionally, applicant provides no experimental data to support the allegation that acidified water and increased liquid temperature will substantially speed up the reaction. It is also unclear how applicant’s allegation in Paragraph [063] that flavor components used in the finished onion product carry sulfites to better match onion profiles. Applicant provides no objective data, e.g. chromatographic analysis to arrive at this allegation. Therefore, applicant’s allegations of unexpected results are not sufficient to overcome the obviousness rejections due to the deficiencies as explained above.
Applicant argues on Pages 10-11 of the Remarks that the onion preparation of Postner is intended for tubes and contains vegetable oil and emulsifying agents to maintain cube shape when squeezed out whereas the onion product of Tillen Farms is not placed in a tube or designed to be squeezed out. Applicant contends that the objective of the present application is to provide a shelf stable onion food product in an acidified solution.
Examiner argues Claim 11 recites the transitional phrase “comprising,” which is inclusive and open ended and does not exclude additional, unrecited elements or method steps in view of Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) (MPEP § 2111.03.I.). The transitional phase “comprising” does not preclude the presence of the unrecited tubes or squeezing method disclosed by the secondary reference of Postner. The secondary reference of Postner is being relied upon to modify the primary reference of Tillen Farms to render obvious the limitations regarding incorporating sodium metabisulfite into the onion product as taught by Postner et al. since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Postner et al. teaches that there was known utility in the food art to incorporate sodium metabisulfite as a preservative for onion food products. Therefore, this argument is not found persuasive.
Applicant argues on Page 11 of the Remarks with respect to Claim 16 that the reliance on Beach is unsupported since Tillen Farms contains whole onions in an aqueous solution and that Tillen Farms discloses an onion food product that is not a beverage drink and that the claimed onion food could not be a drink.
Examiner argues Beach discloses a method of packaging an herbal energy drink comprising hot filling bottles at a minimum temperature of about 170°F with an infusion liquid, then capping the filled bottles and inverting for at least 5 minutes (‘026, Paragraph [0117]), which overlaps the claimed inversion minimum time of about 2.2 minutes and the claimed temperature of about 165°F during the inverting step. Both modified Tillen Farms and Beach are directed towards the same field of endeavor of methods of packaging a food product in a container. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Tillen Farms and invert the container for the claimed amount of time during the inverting step as taught by Beach since where the claimed inversion time at elevated temperatures encompasses inversion times at elevated temperatures disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). Therefore, this argument is not found persuasive.
Applicant argues on Pages 11-12 of the Remarks with respect to Claims 17 and 19 that the Office reliance on Jenson is unsupported since Tillen Farms product contains onion in an aqueous solution and that Tillen Farms onion food product is not a sauce and is not cooked and blended before filling.
Examiner argues Claim 11 recites the transitional phrase “comprising,” which is inclusive and open ended and does not exclude additional, unrecited elements or method steps in view of Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) (MPEP § 2111.03.I.). The transitional phase “comprising” does not preclude the presence of the unrecited cooking disclosed by the secondary reference of Jensen. The claims also do not specify the particular form factor of the claimed onions. The secondary reference of Jensen is being relied upon to modify the primary reference of Tillen Farms to render obvious the limitations regarding the claimed agitation time and adding spices. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Tillen Farms and onions combined with vegetables and all remaining ingredients into a preheated pan, cooked, and blended using a puree setting for 10-45 seconds until desired consistency is achieved (‘359, Paragraph [0038]), which overlaps the claimed agitation time of 45 seconds or less during the agitating step. Both modified Tillen Farms and Jensen are directed towards the same field of endeavor of methods of making onion food products. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Tillen Farms and agitate the container for the claimed amount of time of agitation as taught by Jensen since where the claimed agitation time encompasses agitation times disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). One of ordinary skill in the art would also adjust the agitation time of the contents of the container of modified Tillen Farms based upon the desired consistency of the onion food product desired as taught by Jensen. Therefore, these arguments are not found persuasive.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICSON M LACHICA whose telephone number is (571)270-0278. The examiner can normally be reached M-F, 8:30am-5pm, EST.
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/ERICSON M LACHICA/Examiner, Art Unit 1792
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