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 .
The amendment filed May 28, 2026 is acknowledged. Claims 12, 13, and 16-32 are pending in the application. Claims 1-11, 14, and 15 have been cancelled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 28, 2026 has been entered.
Election/Restrictions
Newly submitted claim 32 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The previously examined claims and newly added claim 32 are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect. For instance, the previously examined claims include a protein containing edible liquid in the process which is not required in the invention of newly added claim 32. Additionally, the process of newly added claim 32 requires cheddar cheese, butter, and skimmed milk powder which are not present in the invention of the previously examined claims. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 32 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 12, 13, and 16-31 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 12 has been amended to recite “heating the combination at a temperature of at least 70⁰C” at lines 11-12. While the instant specification indicates heating to 80⁰C, 85⁰C, 70⁰C, or 141⁰C in the examples (P13, L10-14; P17, L15-21; and P19, L17-21), the specification fails to provide support for all values over 70⁰C as claimed.
Claims 13 and 16-30 are not specifically discussed but are rejected due to their dependence on claim 12.
New claim 31 recites “heating the combination at a temperature of at least 70⁰C” at line 11. While the instant specification indicates heating to 80⁰C, 85⁰C, 70⁰C, or 141⁰C in the examples (P13, L10-14; P17, L15-21; and P19, L17-21), the specification fails to provide support for all values over 70⁰C as claimed.
Accordingly, there is no indication that applicant had possession of the presently claimed invention at the time of the filing the instant application.
Applicant is reminded with respect to changing numerical range limitations, the analysis must take into account which ranges one skilled in the art would consider inherently supported by the discussion in the original disclosure. In the decision in In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), the ranges described in the original specification included a range of "25%- 60%" and specific examples of "36%" and "50%." A corresponding new claim limitation to "at least 35%" did not meet the description requirement because the phrase "at least" had no upper limit and caused the claim to read literally on embodiments outside the "25% to 60%" range. See MPEP 2163.05.
Additionally, the failure to meet the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, commonly arises when the claims are changed after filing to either broaden or narrow the breadth of the claim limitations, or to alter a numerical range limitation or to use claim language which is not synonymous with the terminology used in the original disclosure. To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, or 365(c), each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure. SEE MPEP 2163.05.
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 12, 13, and 16-31 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.
Independent claim 12 recites “dairy-type” at lines 1 and 12. It is unclear what is encompassed by this recitation and what the phrase is intended to convey. More specifically, the recited phrase includes elements not actually disclosed (those encompassed by “type”), and the scope of the claim cannot be readily ascertained. Applicant is reminded that the addition of the word "type" to an otherwise definite expression extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955)
For the purpose of the examination, the recitation of “dairy-type” at lines 1 and 12 of claim 12 (emphasis added) is interpreted as “dairy-analogue” (emphasis added).
Claim 12 also recites “a protein containing edible liquid comprising at least 5 wt% casein” at lines 3-4. It is unclear what is encompassed by this recitation. More specifically, it is unclear what the weight percentage of casein is based upon (i.e., protein content, edible liquid quantity, or amount of protein containing edible liquid). Therefore, the scope of the claim is indefinite.
For the purpose of the examination, the recitation of “a protein containing edible liquid comprising at least 5 wt% casein” at lines 3-4 in claim 12 is interpreted as “a protein containing edible liquid comprising at least 5 wt% casein by weight of the protein containing edible liquid” (emphasis added).
Claims 13, 16, 17, and 18 recite “dairy-type” at line 2. It is unclear what is encompassed by this recitation and what the phrase is intended to convey. More specifically, the recited phrase includes elements not actually disclosed (those encompassed by “type”), and the scope of the claim cannot be readily ascertained. Applicant is reminded that the addition of the word "type" to an otherwise definite expression extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955)
For the purpose of the examination, the recitation of “dairy-type” at line 2 of claims 13, 16, 17, and 18 (emphasis added) is interpreted as “dairy-analogue” (emphasis added).
Claim 18 also recites “vegan dairy alternative product” at line 2, and this claim depends upon claim 12. It is unclear what is intended by this recitation. More specifically, it is uncertain how the claimed product is vegan since claim 12 requires a protein containing edible liquid comprising at least 5 wt% casein (animal protein, see lines 3-4) and vegan is understood in the art as being fully plant based (see the instant specification at P1, L8-9; and P5, L29-30). Therefore, the scope of claim 18 is indefinite.
For the purpose of the examination, the recitation of “plant based, vegan dairy alternative product” at line 2 of claim 18 (emphasis added) is interpreted as “plant based, dairy alternative product”.
Claim 19 recites “dairy-type” at line 2. It is unclear what is encompassed by this recitation and what the phrase is intended to convey. More specifically, the recited phrase includes elements not actually disclosed (those encompassed by “type”), and the scope of the claim cannot be readily ascertained. Applicant is reminded that the addition of the word "type" to an otherwise definite expression extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955)
For the purpose of the examination, the recitation of “dairy-type” at line 2 of claim 19 (emphasis added) is interpreted as “dairy-analogue” (emphasis added)
Claim 19 also recites “vegan dairy alternative product” at line 2, “vegan beverages” at line 3, “vegan culinary cream” at line 3, and “vegan cheese alternatives” at line 4, and this claim depends upon claims 12 and 18. It is unclear what is intended by these recitations. More specifically, it is uncertain how the claimed products are vegan since claim 12 requires a protein containing edible liquid comprising at least 5 wt% casein (animal protein, see lines 3-4) and vegan is understood in the art as being fully plant based (see the instant specification at P1, L8-9; and P5, L29-30). Therefore, the scope of claim 19 is indefinite.
For the purpose of the examination, the recitation of “vegan dairy alternative product” at line 2, “vegan beverages” at line 3, “vegan culinary cream” at line 3, and “vegan cheese alternatives” at line 4 (emphasis added) is interpreted as “dairy alternative product”, “beverages”, “culinary cream”, and “cheese alternatives”, respectfully.
Claims 20-23 recite “dairy-type” at line 2. It is unclear what is encompassed by this recitation and what the phrase is intended to convey. More specifically, the recited phrase includes elements not actually disclosed (those encompassed by “type”), and the scope of the claim cannot be readily ascertained. Applicant is reminded that the addition of the word "type" to an otherwise definite expression extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955)
For the purpose of the examination, the recitation of “dairy-type” at line 2 of claims 20-23 (emphasis added) is interpreted as “dairy-analogue” (emphasis added).
Claim 24 is not specifically discussed but is rejected due to its dependence on claim 23.
Claim 25 recites “dairy-type” at line 2. It is unclear what is encompassed by this recitation and what the phrase is intended to convey. More specifically, the recited phrase includes elements not actually disclosed (those encompassed by “type”), and the scope of the claim cannot be readily ascertained. Applicant is reminded that the addition of the word "type" to an otherwise definite expression extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955)
For the purpose of the examination, the recitation of “dairy-type” at line 2 of claim 25 (emphasis added) is interpreted as “dairy-analogue” (emphasis added)
Claims 26-30 are not specifically discussed but are rejected due to their dependence on claim 12.
Independent claim 31 recites “the dairy-type product” at line 13. This recitation lacks antecedent basis as there is no prior recitation of a dairy-type product in claim 31. Additionally, it is unclear what is encompassed by this recitation and what the phrase is intended to convey. The recited phrase includes elements not actually disclosed (those encompassed by “type”), and the scope of the claim cannot be readily ascertained. Applicant is reminded that the addition of the word "type" to an otherwise definite expression extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955)
For the purpose of the examination, the recitation of “the dairy-type product is a dairy product selected from” at line 13 of claim 31 (emphasis added) is interpreted as “the dairy product is selected from” (emphasis added).
Claim 31 also recites “a protein containing edible liquid comprising at least 5 wt% casein” at lines 2-3. It is unclear what is encompassed by this recitation. More specifically, it is unclear what the weight percentage of casein is based upon (i.e., protein content, edible liquid quantity, or amount of protein containing edible liquid). Therefore, the scope of the claim is indefinite.
For the purpose of the examination, the recitation of “a protein containing edible liquid comprising at least 5 wt% casein” at lines 2-3 in claim 31 is interpreted as “a protein containing edible liquid comprising at least 5 wt% casein by weight of the protein containing edible liquid” (emphasis added).
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 12 and 16-31 are rejected under 35 U.S.C. 103 as being unpatentable over Fujisawa et al. EP 0092443 (hereinafter “Fujisawa”) in view of Nozaki et al. JP 2002335915 (hereinafter “Nozaki”) (refer to the corresponding machine translation published in English).
With respect to claim 12 and regarding “for preparation of a dairy-analogue product” in the preamble, it is noted that this claim language is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Fujisawa relates to the production of foodstuff compositions. The compositions are prepared from heat-treated aqueous compositions comprising vegetable seed proteins and milk proteins. A chelating agent may be added during the process (P1, L1-7; P5, L15-19; P16, L1-2; P21, L1-8; P23, L10-11; and P24, L11-11-13).
Regarding the claim language of comprising providing a protein containing edible liquid comprising at least 5 wt% casein by weight of the protein containing edible liquid, adding a sodium phytic acid salt obtained from a plant extract to the protein containing edible liquid to form a combination, wherein the sodium phytic acid salt is a mixture of myo-inositol phosphates, the mixture comprising more than 90 wt% of myo-inositol hexa-phosphate plus myo-inositol penta-phosphate relative to the amount of all myo-inositol phosphates, which when dissolved as a 1% solution in water has a pH between 5 and 10; and heating the combination at a temperature of at least 70⁰C to provide a processed dairy-analogue product having a pH between 4.5 and 8 in claim 12, Fujisawa teaches providing an aqueous protein solution comprising milk proteins, and casein may be used as the milk protein component. Fujisawa also teaches adding chelating agent such as sodium salt of phytic acid to the aqueous protein solution, heating the mixture to a temperature of 65⁰C to the boiling point, and optionally pasteurizing/sterilizing the mixture to obtain the composition. In one embodiment, an aqueous solution comprising 10% milk protein component was used (calculated from 50 g milk protein component/(50 g milk protein component + 450 g water)) and heat treated at 70⁰C (P5, L15-19 and 25-27; P6, L22-25; P7, L7-14 and 19-20; P16, L1-2; P17, L16-18; P21, L1-8; and P30, L24-P31, L1). Fujisawa further teaches the prepared composition has a pH of at most 8.0 and encompasses the presently claimed range (P1, L3-5; and P4, L21-22). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
However, Fujisawa does not expressly disclose the sodium phytic acid salt chelating agent is obtained from a plant extract.
Nozaki relates to the addition of an alkali metal salt of phytic acid to foodstuff. The alkali metal salt of phytic acid may be sodium salts of phytic acid. Salts of phytic acid are obtained from extraction of plant material. Phytic acid is known as a strong chelating compound (paragraphs [0009]-[0012]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Nozaki, to select sodium salts of phytic acid obtained from plant extract as the chelating agents in the method of Fujisawa based in their suitability for their intended purpose with the expectation of successfully preparing a functional beverage composition. One of ordinary skill in the art would have been motivated to do so because Fujisawa and Nozaki similarly teach sodium phytic acid salts and chelating agents, Nozaki teaches phytic acid compositions are considered to be extremely safe and exert physiological effects when administered to living organisms (paragraph [0011]), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected result. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Fujisawa as modified by Nozaki does not expressly disclose wherein the sodium phytic acid salt is a mixture of myo-inositol phosphates, the mixture comprising more than 90 wt% of myo-inositol hexa-phosphate plus myo-inositol penta-phosphate relative to the amount of all myo-inositol phosphates, which when dissolved as a 1% solution in water has a pH between 5 and 10. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the quantities of myo-inositol hexa phosphate and myo-inositol penta phosphate in the phytic acid salt through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because it is well understood that the myo-inositol phosphates present in the phytic acid salt are contingent upon the source of the phytic acid salts, Fujisawa as modified by Nozaki teaches phytic acid salt obtained from a plant extract as addressed above which is identical to the phytic acid salt source of the presently claimed invention, Nozaki teaches myo-inositol hexaphosphate is present in the plant extracts, the pH of the alkali metal salt of phytic acid when dissolved in water is contingent upon the particular salt(s) selected since some alkali metal salts of phytic acid exhibit acidic properties when dissolved in water and other alkali metal salts of phytic acid exhibit alkaline properties when dissolved in water (paragraphs [0010], [0011], and [0013]), and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[W]here 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) (MPEP 2144.05 II).
With respect to claim 16, modified Fujisawa is relied upon for the teaching of the process of claim 12 as addressed above.
Regarding wherein the dairy-analogue product is a dairy product as in claim 16, modified Fujisawa teaches this limitation since Fujisawa teaches dairy products (P5, L12-16, and 25-27; P6, L18-21; and P21, L1-5).
With respect to claim 17, modified Fujisawa is relied upon for the teaching of the process of claim 16 as addressed above.
Regarding wherein the dairy-analogue product is a dairy product select from the group of listed components in claim 17, modified Fujisawa teaches this limitation since Fujisawa teaches dairy products such as milk, creamers (whiteners), protein enriched beverages, whipped topping, and storage stable products (P1, L1-2; P5 L12-16 and 25-27; P6, L13-21; P21, L1-5; and P27, L7-10).
With respect to claim 18, modified Fujisawa is relied upon for the teaching of the process of claim 12 as addressed above.
Regarding wherein the dairy-analogue product is a plant based, dairy alternative product in claim 18, modified Fujisawa teaches this limitation since Fujisawa teaches the prepared composition may be a vegetable seed milk, and the seed milk may be used to prepare coffee creamer (whitener) and whipped topping (P5, L2-14; P23, L10-11; and P24, L11-13).
With respect to claim 19, modified Fujisawa is relied upon for the teaching of the process of claim 18 as addressed above.
Regarding wherein the dairy-analogue product is a plant based, dairy alternative product selected from the group of listed components in claim 19, modified Fujisawa teaches this limitation since Fujisawa teaches the prepared composition may be a vegetable seed milk, and the seed milk may be used to prepare coffee creamer (whitener) and whipped topping (P5, L2-14; P23, L10-11; and P24, L11-13).
With respect to claim 20, modified Fujisawa is relied upon for the teaching of the process of claim 12 as addressed above.
Regarding wherein the amount of protein is between about 2 wt% to about 25 wt% in the dairy-analogue product in claim 20, modified Fujisawa teaches this limitation since Fujisawa teaches the protein content of the composition is 0.1 to 10% and overlaps with the presently claimed range (P12, L15). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
With respect to claim 21, modified Fujisawa is relied upon for the teaching of the process of claim 12 as addressed above.
Regarding wherein the amount of said phytic acid salt, calculated as phytic acid in the dairy-analogue product is between about 0.05 - 5 wt% in claim 21, modified Fujisawa does not expressly disclose this limitation.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of phytic acid salt, calculated as phytic acid, in the method of modified Fujisawa through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Fujisawa teaches the phytic acid salt may be used as a chelating agent to inhibit the gelation and coloration of the product (P7, L7-16), Nozaki teaches phytic acid is known as a strong chelating compound (paragraph [0011]), one of ordinary skill in the art would adjust the content of the phytic acid salt, which comprises phytic acid, to ensure a stable product, and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[W]here 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) (MPEP 2144.05 II).
With respect to claim 22, modified Fujisawa is relied upon for the teaching of the process of claim 12 as addressed above.
Regarding wherein the dairy-analogue product has a solid content of about 20-60% in claim 22, modified Fujisawa teaches this limitation since Fujisawa teaches the composition has a solid content of 3 to 20% and overlaps with the presently claimed range (P3, L23-25). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
With respect to claim 23, modified Fujisawa is relied upon for the teaching of the process of claim 12 which has been addressed above.
Regarding wherein the dairy-analogue product is a beverage and has a solid content of 5-27% in claim 23, modified Fujisawa teaches this limitation since Fujisawa teaches the composition is a drinking composition and has a solid content of 3 to 20% and overlaps with the presently claimed range (P1, L1-2; and P3, L23-25). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
With respect to claim 24, modified Fujisawa is relied upon for the teaching of the process of claim 23 as addressed above.
Regarding the recitation of wherein the beverage comprises between about 0.15 to 85 wt% phytic acid salt calculated on solids in claim 24, modified Fujisawa teaches this limitation since Fujisawa teaches the phytic acid salt (chelating agent) is used in an amount of 0.001 to 2% (P7, L21-22) and overlaps with the presently claimed invention. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
With respect to claim 25, modified Fujisawa is relied upon for the teaching of the process of claim 12 as addressed above.
Regarding wherein the dairy-analogue product comprises between about 0.3 - 40 wt% of said phytic acid salt calculated on solids in claim 25, modified Fujisawa teaches this limitation since Fujisawa teaches the phytic acid salt (chelating agent) is used in an amount of 0.001 to 2% (P7, L21-22) and overlaps with the presently claimed invention. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
With respect to claims 26-28, modified Fujisawa is relied upon for the teaching of the process of claim 12 as addressed above.
Regarding the recitation of wherein said phytic acid salt is obtained from a cereal extract in claim 26, wherein said phytic acid salt is obtained from a cereal grain extract in claim 27, and wherein said phytic acid salt is obtained from a rice bran extract in claim 28, Fujisawa as modified by Nozaki teaches this limitation since Nozaki is relied upon for the teaching of the phytic acid salt obtained from a plant extract as addressed above in claim 12, and Nozaki teaches the phytic acid salt is obtained from rice bran (paragraph [0010]).
With respect to claims 29 and 30, modified Fujisawa is relied upon for the teaching of the process of claim 12 as addressed above.
Regarding the recitation of wherein said extract comprises 5-95 wt% of phytic acid in claim 29 and wherein said extract comprises 80 wt% of phytic acid or less in claim 30, Fujisawa as modified by Nozaki does not expressly disclose the quantity of phytic acid in the extract. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of phytic acid through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Nozaki teaches phytic acid is present in the extraction of plant material and phytic acid is known as a strong chelating compound (paragraphs [0010]-[0011]), and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[W]here 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) (MPEP 2144.05 II).
With respect to claim 31 and regarding “for preparation of a dairy product” in the preamble, it is noted that this claim language is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of “consists essentially of” at lines 3-4, it is noted that this phrase is limited to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)”. See MPEP 2111.03 and In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976). See also PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 (“PPG could have defined the scope of the phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention.").
Upon review of Applicant’s disclosure, there does not appear to be any explicit or implicit disclosure of additional materials that would materially change the characteristics of the protein containing edible liquid. Applicant is reminded that Applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of the claimed invention. In re De Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964). Thus, for the purpose of the examination, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, the recitation of “consisting essentially of” at lines 3-4 of claim 31 will be construed as equivalent to “comprising”.
Fujisawa relates to the production of dairy products. The compositions are prepared from heat-treated aqueous compositions comprising vegetable seed proteins and milk proteins. A chelating agent may be added during the process (P1, L1-7; P5, L12 and 15-19; P16, L1-2; P21, L1-8; P23, L10-11; and P24, L11-11-13).
Regarding the claim language of comprising providing a protein containing edible liquid comprising at least 5 wt% casein by weight of the protein containing edible liquid, and wherein the protein in the protein containing edible liquid consists essentially of dairy protein; adding a sodium phytic acid salt obtained from a plant extract to the protein containing edible liquid to form a combination, wherein the sodium phytic acid salt is a mixture of myo-inositol phosphates, the mixture comprising more than 90 wt% of myo-inositol hexa-phosphate plus myo-inositol penta-phosphate relative to the amount of all myo-inositol phosphates, which when dissolved as a 1% solution in water has a pH between 5 and 10; and heating the combination at a temperature of at least 70⁰C to provide a processed dairy product having a pH between 4.5 and 8 in claim 31, Fujisawa teaches providing an aqueous protein consisting of milk proteins, and casein may be used as the milk protein. Fujisawa also teaches adding chelating agent such as sodium salt of phytic acid to the aqueous protein solution, heating the mixture to a temperature of 65⁰C to the boiling point, and optionally pasteurizing/sterilizing the mixture to obtain the composition. In one embodiment, an aqueous solution containing 10% milk protein component was used (calculated from 50 g milk protein component/(50 g milk protein component + 450 g water)) and heat treated at 70⁰C (P5, L15-19 and 25-27; P6, L22-25; P7, L7-14 and 19-20; P16, L1-2; P17, L16-18; P21, L1-8; and P30, L24-P31, L1). Fujisawa further teaches the prepared composition has a pH of at most 8.0 and encompasses the presently claimed range (P1, L3-5; and P4, L21-22). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
However, Fujisawa does not expressly disclose the sodium phytic acid salt chelating agent is obtained from a plant extract.
Nozaki relates to the addition of an alkali metal salt of phytic acid to foodstuff. The alkali metal salt of phytic acid may be sodium salts of phytic acid. Salts of phytic acid are obtained from extraction of plant material. Phytic acid is known as a strong chelating compound (paragraphs [0009]-[0012]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Nozaki, to select sodium salts of phytic acid obtained from plant extract as the chelating agents in the method of Fujisawa based in their suitability for their intended purpose with the expectation of successfully preparing a functional beverage composition. One of ordinary skill in the art would have been motivated to do so because Fujisawa and Nozaki similarly teach sodium phytic acid salts and chelating agents, Nozaki teaches phytic acid compositions are considered to be extremely safe and exert physiological effects when administered to living organisms (paragraph [0011]), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected result. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Fujisawa as modified by Nozaki does not expressly disclose wherein the sodium phytic acid salt is a mixture of myo-inositol phosphates, the mixture comprising more than 90 wt% of myo-inositol hexa-phosphate plus myo-inositol penta-phosphate relative to the amount of all myo-inositol phosphates, which when dissolved as a 1% solution in water has a pH between 5 and 10. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the quantities of myo-inositol hexa phosphate and myo-inositol penta phosphate in the phytic acid salt through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because it is well understood that the myo-inositol phosphates present in the phytic acid salt are contingent upon the source of the phytic acid salts, Fujisawa as modified by Nozaki teaches phytic acid salt obtained from a plant extract as addressed above which is identical to the phytic acid salt source of the presently claimed invention, Nozaki teaches myo-inositol hexaphosphate is present in the plant extracts, the pH of the alkali metal salt of phytic acid when dissolved in water is contingent upon the particular salt(s) selected since some alkali metal salts of phytic acid exhibit acidic properties when dissolved in water and other alkali metal salts of phytic acid exhibit alkaline properties when dissolved in water (paragraphs [0010], [0011], and [0013]), and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[W]here 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) (MPEP 2144.05 II).
Regarding wherein the dairy product is selected from the group of listed components in claim 31, modified Fujisawa teaches this limitation since Fujisawa teaches dairy products such as milk, creamers (whiteners), protein enriched beverages, whipped topping, and storage stable products (P1, L1-2; P5 L12-16 and 25-27; P6, L13-21; P21, L1-5; and P27, L7-10).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Fujisawa et al. EP 0092443 (hereinafter “Fujisawa”) in view of Nozaki et al. JP 2002335915 (hereinafter “Nozaki”) as applied to claim 12 above, and in further view of Beeson et al. US 20110189373 (hereinafter “Beeson”).
With respect to claim 13, modified Fujisawa is relied upon for the teaching of the process of claim 12 as addressed above.
Regarding wherein the dairy-analogue product is subjected to spray drying, to provide a spray dried product in claim 13, modified Fujisawa does not expressly disclose this limitation.
Beeson relates to liquid and powder whitener (creamer) compositions. The compositions comprise at least one chelating agent such as phytic acid salts. After heat treatment of the mixture of ingredients, the resulting liquid may be spray dried (paragraphs [0001]-[0003], [0020], [0037], [0045], and [0048]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Beeson, to select the step of spray drying in the method of modified Fujisawa based in its suitability for its intended purpose with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Beeson and Fujisawa similarly teach preparing whitener (creamer) compositions comprising phytic acid salt chelating agents (Fujisawa: P24, L11-13), Beeson teaches the whitener compositions are stable and easily dispersible (paragraphs [0017] and [0046]), and said combination would amount to the use of a known step for its intended use in a known environment to accomplish entirely expected result. There would have been a reasonable expectation of success with said modification. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
Response to Arguments
Applicant’s remarks filed May 28, 2026 are acknowledged.
Due to the amendments to the claims, the 35 USC 112 rejection in the previous Office Action has been withdrawn (P7). However, the 35 USC 112 rejection above is necessitated by the amendments made to the claims.
Upon further searching and consideration of the amended claims, the 35 USC 103 rejection of claims 12 and 16-30 over Fujisawa in view of Sawai and claim 13 over Fujisawa in view of Sawai and Beeson in the previous Office Action have been withdrawn. A new ground(s) of rejection has been made. As addressed above, Fujisawa in view of Nozaki teaches the presently claimed invention. Applicant’s arguments with respect to Sawai have been considered but are moot as the reference is no longer being used in the current rejection (P12-P16).
Applicant’s arguments have been fully considered, but they are unpersuasive.
Applicant agues Fujisawa does not explicitly teach any combination of the phytic acid salt from the page 7 list with the example 15 simulated dairy formulation. The closest specific embodiment in Fujisawa, and the correct comparator for purposes of the presentation of unexpected superior results, is Fujisawa Example 15 itself, which uses disodium hydrogen phosphate, or an embodiment that is even closer to the claims than Example 15 of Fujisawa. Applicant’s Comparative Experiments A-E employ controls that are functionally analogous to Fujisawa’s disodium hydrogen phosphate-namely, commercial phosphate-based stabilizer/melting-salt systems, each of which is an inorganic-phosphate-based system performing the same buffering, pH regulating, and protein-stabilizing role in a heat-processed protein-containing dairy-type composition (P7-P10).
Examiner disagrees. Fujisawa is not limited to Example 15 and the use of disodium hydrogen phosphate since the reference also teaches sodium salts of phytic acid may be used as chelating agents (P7, L7-14). However, “Applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
Applicant argues the data in the Specification demonstrate unexpected superior results across a spectrum of independent properties (color, flavor, pH stability), and across multiple product categories spanning both dairy (processed cheese spread, processed cheese block, high-protein dairy beverage) and plant-based (high-protein soy beverage) categories. The magnitude of these improvements is substantial and exceeds what an ordinary artisan would have predicted. Such substantial improvement in long-term storage stability stands in direct contrast to Fujisawa’s own candid acknowledgement that the generic chelating-agent class-the class within which Fujisawa places phytate in its page 7 disclosure-is unreliable for storage stability: “the effect on prolonged storage stability is not always satisfactory.” Fujisawa at 7. Fujisawa’s explicit qualification of its own teaching is affirmative evidence that one of ordinary skill, reading Fujisawa, would not have predicted-and indeed would have predicted against-the substantial pH stability improvement that Applicant’s data actually demonstrate. Fujisawa nowhere compares phytate-stabilized to phosphate-stabilized compositions, nor does it predict that phytate would yield whiter color, less metallic flavor, or improved pH stability relative to phosphate stabilizers in any product category, let alone in heat-processed diary or dairy-type compositions. Generic teachings of Fujisawa do not establish that the specific superior performance Applicant demonstrates is ”expected” within the meaning of the unexpectedness prong. The expectedness inquiry is what one of ordinary skill in the art would have predicted in view of the prior art as a whole-not whether, with the benefit of hindsight, isolated phrases from the reference can be mapped post hoc to the observed results (P11-P13).
Examiner disagrees. Applicant is reminded that it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
As previously addressed, Fujisawa teaches sodium salts of phytic acid may be used as chelating agents (P7, L7-14). As pointed out by Applicant, Fujisawa indicates that the effect on prolonged storage stability is not always satisfactory with the selected chelating agents. However, contrary to Applicant’s assertion, this disclosure does not preclude the use of sodium salts of phytic acid as chelating agents in Fujisawa. Applicant is reminded that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).
Additionally, the features described by Applicant are indeed expected in view of the prior art since Fujisawa teaches the phytic acid salt may be used to inhibit the gelation (stability) and coloration of the product and the product is superior in taste and color (P3, L11-14; P6, L15-17; and P7, L7-16). Applicant is reminded that any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (differences in sedative and anticholinergic effects between prior art and claimed antidepressants were not unexpected). In other words, the unexpectedness must be sufficient “to secure the validity of the claims in suit.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1381 (Fed. Cir. 2005) and MPEP 716.02.
Applicant argues Fujisawa nowhere exemplifies a protein-containing edible liquid having at least 5 wt% casein (P13-P15).
Examiner disagrees. Modified Fujisawa teaches the claimed invention. As previously addressed, Fujisawa teaches providing an aqueous protein solution comprising milk proteins, and casein may be used as the milk protein component. In one embodiment, an aqueous solution comprising 10% milk protein component was used (calculated from 50 g milk protein component/(50 g milk protein component + 450 g water)) (P5, L15-19 and 25-27; P6, L22-25; P21, L1-5; and P30, L24-P31, L1).
Conclusion
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/T.L.M/
Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
