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 Request for Continued Examination (RCE under 37 CFR 1.114), the Response and Amendment filed 08/24/2026 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment or cancellation of the claims and/or persuasive remarks: (1) the 35 U.S.C. 102(a)(1) rejections of claims 1-6, 8, 11, 12, 16, 17, 20, 25, 29, and 39-49 over Bhaskar et al. have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-6, 8, 11, 12, 16, 17, 20, 25, 29, and 39-49
Withdrawn claims: None
Previously canceled claims: 7, 9, 10, 13-15, 18, 19, 21-24, 26-28, and 30-38
Newly canceled claims: None
Amended claims: 1, 2, 6, 20, and 29
New claims: None
Claims currently under consideration: 1-6, 8, 11, 12, 16, 17, 20, 25, 29, and 39-49
Currently rejected claims: 1-6, 8, 11, 12, 16, 17, 20, 25, 29, and 39-49
Allowed claims: None
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/24/2026 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-6, 8, 11, 12, 16, 17, 20, 25, 29, and 39-49 are rejected under 35 U.S.C. 103 as being unpatentable over Bhaskar et al. (U.S. 2013/0196051 A1) in view of Havea et al. (U.S. 2012/0114795 A1).
Regarding claim 1, Bhaskar et al. discloses a beverage ([0010]) comprising about 4-15% w/w casein ([0010], 2-25% w/w milk protein concentrate (MPC); [0016], where the MPC comprises “most preferably greater than 70% of the solids-not-fat” of milk protein with a casein:whey ratio “most preferably between 90:10 and 80:20”) with a calcium to casein ratio of about 1.8-3.2g calcium to 100g casein ([0066], Table 1, where the “Low Viscosity MPC” comprises 1.5% calcium and 83% protein, which equates to 1.81g calcium per 100 g protein, and approximately 2.13g calcium per 100g casein, assuming the MPC comprised 85% casein by weight of the total protein), about 0-15% w/w fat ([0010]), about 0-30% w/w carbohydrate ([0010]), where the casein is provided by a calcium-depleted MPC ([0010]), and wherein the beverage does not contain stabilizers that are a polysaccharide thickener or a calcium chelator ([0010], where no stabilizer is indicated as being required; [0044]-[0045], where calcium chelation is optional).
Bhaskar et al. does not disclose about 50-100% w/w of whey protein in the MPC as being denatured.
However, Havea et al. discloses denatured whey protein (Abstract).
It would have been obvious to one having ordinary skill in the art to incorporate denatured whey protein in the MPC of Bhaskar et al. First, Bhaskar et al. discloses the inclusion of up to 49% whey proteins that is preferably “prepared to mimimise its tendency to gel (e.g., by methods as described in co-pending applications PCT/NZ2010/000072 and U.S. Ser. No. 61/169,437)” ([0048]). Havea et al. corresponds to the noted co-pending applications. As such, addition of up to 49% denatured whey protein to the composition of Bhaskar et al., as well as denaturing any whey protein present in the MPC portion of the composition, would be obvious to a skilled practitioner in order to minimize the tendency of the whey protein to gel.
As for claim 2, Bhaskar et al. discloses a beverage ([00010]) comprising about 7.5-15% w/w casein ([0010], 2-25% w/w milk protein concentrate (MPC); [0016], where the MPC comprises “most preferably greater than 70% of the solids-not-fat” of milk protein with a casein:whey ratio “most preferably between 90:10 and 80:20”) with a calcium to casein ratio of about 1.8-3.2g calcium to 100g casein ([0066], Table 1, where the “Low Viscosity MPC” comprises 1.5% calcium and 83% protein, which equates to 1.81g calcium per 100 g protein, and approximately 2.13g calcium per 100g casein, assuming the MPC comprised 85% casein by weight of the total protein), about 0-15% w/w fat ([0010]), about 0-30% w/w carbohydrate ([0010]), where the casein is provided by a calcium-depleted MPC ([0010]), and wherein the beverage contains about 0-5% w/w polysaccharide thickener and does not contain a calcium chelator ([0010], where no stabilizer is indicated as being required; [0044]-[0045], where calcium chelation is optional).
Bhaskar et al. does not disclose about 50-100% w/w of whey protein in the MPC as being denatured.
However, Havea et al. discloses denatured whey protein (Abstract).
It would have been obvious to one having ordinary skill in the art to incorporate denatured whey protein in the MPC of Bhaskar et al. First, Bhaskar et al. discloses the inclusion of up to 49% whey proteins that is preferably “prepared to mimimise its tendency to gel (e.g., by methods as described in co-pending applications PCT/NZ2010/000072 and U.S. Ser. No. 61/169,437)” ([0048]). Havea et al. corresponds to the noted co-pending applications. As such, addition of up to 49% denatured whey protein to the composition of Bhaskar et al., as well as denaturing any whey protein present in the MPC portion of the composition, would be obvious to a skilled practitioner in order to minimize the tendency of the whey protein to gel.
As for claim 3, Bhaskar et al. discloses the beverage as being a sterilized beverage ([0034]).
As for claim 4, Bhaskar et al. discloses the beverage as having a calcium to casein ratio of about 1.8-3.1g of calcium per 100g of casein ([0066], Table 1, where the “Low Viscosity MPC” comprises 1.5% calcium and 83% protein, which equates to 1.81g calcium per 100 g protein, and approximately 2.13g calcium per 100g casein, assuming the MPC comprised 85% casein by weight of the total protein).
As for claim 5, Bhaskar et al. discloses the casein as being provided by a combination of a non-calcium depleted dairy ingredient with a calcium depleted dairy ingredient ([0047]).
As for claim 6, Bhaskar et al. discloses the casein as being provided by an MPC with about 5-45% calcium depletion ([0038]).
As for claim 8, Bhaskar et al. discloses the casein as being provided at least in part by calcium depleted MPC ([0010]).
As for claim 11, Bhaskar et al. discloses the beverage comprises about 4.5-19% w/w milk protein ([0010]).
As for claim 12, Bhaskar et al. discloses the beverage as having a shelf life of at least 3 months ([0113]-[0114]).
As for claim 16, Bhaskar et al. discloses the beverage as further comprising whey protein ([0048]).
As for claim 17, Bhaskar et al. discloses the beverage comprises about 0-20% w/w carbohydrate ([0010]).
As for claim 20, Bhaskar et al. discloses the beverage wherein about 7-100% of the energy is provided by protein ([0010]).
As for claim 25, Bhaskar et al. discloses the beverage as having received a sterilizing heat treatment ([0034]).
As for claim 29, Bhaskar et al. discloses a process of making a beverage, the process comprising heating at a sterilization temperature an aqueous mixture ([0034]) comprising about 4-15% w/w casein ([0010], 2-25% w/w milk protein concentrate (MPC); [0016], where the MPC comprises “most preferably greater than 70% of the solids-not-fat” of milk protein with a casein:whey ratio “most preferably between 90:10 and 80:20”) with a calcium to casein ratio of about 1.8-3.2g calcium to 100g casein ([0066], Table 1, where the “Low Viscosity MPC” comprises 1.5% calcium and 83% protein, which equates to 1.81g calcium per 100 g protein, and approximately 2.13g calcium per 100g casein, assuming the MPC comprised 85% casein by weight of the total protein), about 0-15% w/w fat ([0010]), about 0-30% w/w carbohydrate ([0010]), where the casein is provided by a calcium-depleted MPC ([0010]), and wherein the beverage does not contain stabilizers that are a polysaccharide thickener or a calcium chelator ([0010], where no stabilizer is indicated as being required; [0044]-[0045], where calcium chelation is optional).
Bhaskar et al. does not disclose about 50-100% w/w of whey protein in the MPC as being denatured.
However, Havea et al. discloses denatured whey protein (Abstract).
It would have been obvious to one having ordinary skill in the art to incorporate denatured whey protein in the MPC of Bhaskar et al. First, Bhaskar et al. discloses the inclusion of up to 49% whey proteins that is preferably “prepared to mimimise its tendency to gel (e.g., by methods as described in co-pending applications PCT/NZ2010/000072 and U.S. Ser. No. 61/169,437)” ([0048]). Havea et al. corresponds to the noted co-pending applications. As such, addition of up to 49% denatured whey protein to the composition of Bhaskar et al., as well as denaturing any whey protein present in the MPC portion of the composition, would be obvious to a skilled practitioner in order to minimize the tendency of the whey protein to gel.
As for claim 39, Bhaskar et al. discloses the beverage as being a sterilized beverage ([0034]).
As for claim 40, Bhaskar et al. discloses the beverage as having a calcium to casein ration of about 1.8-3.1g of calcium per 100g of casein ([0066], Table 1, where the “Low Viscosity MPC” comprises 1.5% calcium and 83% protein, which equates to 1.81g calcium per 100 g protein, and approximately 2.13g calcium per 100g casein, assuming the MPC comprised 85% casein by weight of the total protein).
As for claim 41, Bhaskar et al. discloses the casein as being provided by a combination of a non-calcium depleted dairy ingredient with a calcium depleted dairy ingredient ([0047]).
As for claim 42, Bhaskar et al. discloses the casein as being provided by an MPC with about 5-45% calcium depletion ([0038]).
As for claim 43, Bhaskar et al. discloses the casein as being provided at least in part by calcium depleted MPC ([0010]).
As for claim 44, Bhaskar et al. discloses the beverage comprises about 4.5-19% w/w milk protein ([0010]).
As for claim 45, Bhaskar et al. discloses the beverage as having a shelf life of at least 3 months ([0113]-[0114]).
As for claim 46, Bhaskar et al. discloses the beverage as further comprising whey protein ([0048]).
As for claim 47, Bhaskar et al. discloses the beverage comprises about 0-20% w/w carbohydrate ([0010]).
As for claim 48, Bhaskar et al. discloses the beverage wherein about 7-100% of the energy is provided by protein ([0010]).
As for claim 49, Bhaskar et al. discloses the beverage as having received a sterilizing heat treatment ([0034]).
Response to Arguments
Claim Rejections - 35 U.S.C. § 102(a)(1) of claims 1-6, 8, 11, 12, 16, 17, 20, 25, 29, and 39-49 over Bhaskar et al.: Applicant has overcome the 35 U.S.C. § 102(a)(1) rejections of claims 1-6, 8, 11, 12, 16, 17, 20, 25, 29, and 39-49 based on amendments to the claims. Accordingly, the 35 U.S.C. § 102(a)(1) rejections have been withdrawn. However, the claims are newly rejected under 35 U.S.C. § 103. To the extent Applicant’s arguments are relevant to the new claim rejections, the arguments are addressed below.
Applicant argued that the claim rejections improperly relied on inherency in deeming the claims anticipated by Bhaskar et al. (Applicant’s Remarks, p. 10, ¶6 – p. 11, ¶1).
However, the claim rejections did not rely on any inherency determination. The assumed casein concentration in the MPC of 85% by weight of the total protein was a value chosen within the scope of the disclosed range of concentrations ([0016]) for the sake of determining a calcium:casein ratio. The concentration was not relied on as inherently occurring in the MPC.
Applicant then again argued that Bhaskar et al. does not teach the absence of a calcium chelator (Applicant’s Remarks, p. 11, ¶1-¶2; Hewitt Declaration). Applicant asserted that the claimed beverage has a good shelf life without the addition of undesirable artificial ingredients and is consequently commercially viable (Applicant’s Remarks, p. 11, ¶2 – p. 12, ¶1; Hewitt Declaration, ¶8). Applicant asserted that calcium chelators were “well-known in the industry” to be required components in a dairy protein beverage (Applicant’s Remarks, p. 12, ¶1, ¶5, p. 13, ¶1; Hewitt Declaration, ¶6, ¶9). Applicant alleged that Bhaskar et al. “includes potassium citrate as a calcium chelator” (Applicant’s Remarks, p. 12, ¶3). Applicant asserted that paragraph [0010] leaves open the possibility of including stabilizers (Applicant’s Remarks, p. 12, ¶4). Regarding paragraph [0044]-[0045] of Bhaskar et al., Applicant again argued that they only relate to an MPC ingredient but not to the overall beverage (Applicant’s Remarks, p. 13, ¶2; Hewitt Declaration, ¶7-¶8). Applicant highlighted examples of commercially-available dairy protein beverages comprising calcium chelators (Applicant’s Remarks, p. 13, ¶3; Hewitt Declaration, ¶9-¶10).
Examiner maintains that paragraphs [0044] and [0045] of Bhaskar et al. are properly read as teaching that calcium concentration may be manipulated via acidification and dialysis/ultrafiltration/diafiltration ([0044]) OR addition of a chelating agent ([0045]), such that the addition of a chelating agent is not required when acidification/filtration is used to manipulate calcium concentration. Whether paragraphs [0044] and [0045] apply only to the MPC or to the overall beverage does not matter, since the only calcium that would be present would be from the MPC, such that the calcium manipulation techniques would be applicable to either composition.
Examiner further maintains that paragraph [0010] is properly read as not teaching the inclusion of a chelating agent, simply because it does not recite such an ingredient. As indicated in the previous Office Action, the potassium citrate in the beverage of Example 2 is added as part of a mineral mixture and is not described as being a chelating agent or a required component. Applicant has not persuasively shown that the potassium citrate was added for any purpose other than as a mineral supplement ([0030]), such that the disclosed shelf life cannot be directly attributed only to the presence of potassium citrate as a stabilizer.
The commercial viability of a protein dairy beverage due to shelf life or stability does not weigh into the patentability analysis. MPEP 2145 VII (“The fact that a ‘combination would not be made by businessmen for economic reasons’ does not mean that a person of ordinary skill in the art would not make the combination because of some technological incompatibility.”). The presence of calcium chelators in other commercial products also does not factor into the analysis, at least because (i) the selected sample of beverages has not been shown to be a comprehensive representation of the state of the art, and (ii) calcium chelators may have been determined by the manufacturers to be desirable for their functionality despite any labeling requirements regarding the nature of the ingredients.
Conclusion
Claims 1-6, 8, 11, 12, 16, 17, 20, 25, 29, and 39-49 are rejected.
No claims are allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY P MORNHINWEG whose telephone number is (571)270-5272. The examiner can normally be reached 8:30AM-5:00PM.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793
