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 October 7, 2025 is acknowledged. Claims 12, 13, and 16-30 are pending in the application. Claims 1-11, 14, and 15 have been cancelled.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12, 13, and 16-30 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 has been amended to recite “adding a phytic acid salt obtained from a plant extract, wherein the phytic acid salt is a mixture of myo-inositol phosphates…and heating the resultant mixture to provide a processed dairy-type product” at lines 4-10 (emphasis added). It is unclear what is intended by this recitation. It is uncertain whether “the resulting mixture” at line 10 refers to the mixture of myo-inositol phosphates (line 5) or the combination of protein containing edible liquid and phytic acid salt (lines 3-4). Therefore, the scope of claim 12 is indefinite. For the purpose of the examination, the recitation of “adding a phytic acid salt obtained from a plant extract, wherein the phytic acid salt is a mixture of myo-inositol phosphates…and heating the resultant mixture to provide a processed dairy-type product” at lines 4-10 (emphasis added) of claim 12 is interpreted as “adding a phytic acid salt obtained from a plant extract to the protein containing edible liquid to form a combination, wherein the phytic acid salt is a mixture of myo-inositol phosphates…and heating the combination to provide a processed dairy-type product” (emphasis added).
Claims 13 and 16-30 are not specifically discussed but are rejected due to their dependence upon claim 12.
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 16-30 are rejected under 35 U.S.C. 103 as being unpatentable over Fujisawa et al. EP 0092443 (hereinafter “Fujisawa”) in view of Sawai et al. US 5211956 (hereinafter “Sawai”).
With respect to claim 12, Fujisawa teaches the production of drinking compositions (P1, L1-2).
Regarding the recitation of “for preparation of a dairy-type product” in the preamble of claim 12, it is noted that this recitation 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 claim language of comprising providing a protein containing edible liquid, adding a phytic acid salt obtained from a plant extract to the protein containing edible liquid to form a combination, wherein the 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 to provide a processed dairy-type product having a pH between 4.5 and 8 in claim 12, Fujisawa teaches providing an aqueous protein solution, adding chelating agent such as salts of phytic acid to the aqueous protein solution, and heating the mixture to obtain a milk product (P1, L1-15; P7, L7-14; P14, L21-27; P15, L7-11; P16, L1-2; and P21, L6-8). Fujisawa also teaches the milk product 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 phytic acid salt is obtained from a plant extract, which when dissolved as a 1% solution in water has a pH between 5 and 10.
Sawai teaches compositions for oral administration containing phytic acid or its salts. Phytic acid salts may be obtained from plants. The phytates (phytic acid salts) have a pH in a range of 6 to 9 in water, and they may be used as chelating agents (C1, L8-9; C1, L55-C2, L2; C2, L55-59; C3, L1-3; and C3, L55-C4, L48).
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 Sawai, to select phytates (phytic acid salts) 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 Sawai similarly teach phytic acid salts as chelating agents, Sawai teaches phytic acid salts are tasteless and odorless that their oral administration is easily achieved (C3, L22-23), 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 Sawai does not expressly disclose the phytic acid salt is a mixture of myo-inositol phosphates and the mixture comprises more than 90 wt% of myo-inositol hexa phosphate plus myo-inositol penta phosphate relative to the amount of all myo-inositol phosphates. 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 Sawai 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, modified Fujisawa teaches phytic acid materials obtained from rice bran contain myoinositol (Sawai: C1, L55-59), 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 which has been addressed above.
Regarding the recitation of wherein the dairy-type product is a dairy product as in claim 16, modified Fujisawa teaches this limitation since Fujisawa teaches dairy products (P5 L15-19; P5, 25-P6, L25; P6, L18-21; and P15, L16-19).
With respect to claim 17, modified Fujisawa is relied upon for the teaching of the process of claim 16 which has been addressed above.
Regarding the recitation of wherein the dairy-type 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 (P5 L15-19; P5, 25-P6, L25; P6, L18-21; P15, L16-19; and P27, L7-10).
With respect to claim 18, modified Fujisawa is relied upon for the teaching of the process of claim 12 which has been addressed above.
Regarding the recitation of wherein the dairy-type product is a plant based, vegan dairy alternative product in claim 18, modified Fujisawa teaches this limitation since Fujisawa teaches the prepared drinking 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 which has been addressed above.
Regarding the recitation of wherein the dairy-type product is a plant based, vegan dairy alternative product selected from the group of listed components recited in claim 19, modified Fujisawa teaches this limitation since Fujisawa teaches the prepared drinking 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; & P24, L11-13).
With respect to claim 20, modified Fujisawa is relied upon for the teaching of the process of claim 12 which has been addressed above.
Regarding the recitation of wherein the amount of protein is between about 2 wt% to about 25 wt% in the dairy-type 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 which has been addressed above.
Regarding the recitation of wherein the amount of said phytic acid salt, calculated as phytic acid in the dairy-type 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 to inhibit the gelation and coloration of the product (P7, L7-16), 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 which has been addressed above.
Regarding the recitation of wherein the dairy-type 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 the recitation of wherein the dairy-type 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 which has been 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 which has been addressed above.
Regarding the recitation of wherein the dairy-type 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 which has been 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 Sawai teaches this limitation since Sawai is relied upon for the teaching of the phytic acid salt obtained from a plant extract in claim 12 as addressed above, and Sawai teaches the phytic acid salt is obtained from rice bran (C1, L55-59).
With respect to claims 29 and 30, modified Fujisawa is relied upon for the teaching of the process of claim 12 which has been 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 in view of Sawai 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 Sawai teaches phytic acid and its salts are the main components as well as the compositions may be in the form of liquids or powders (C3, L38-41; and C4,L49-53), 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).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Fujisawa et al. EP 0092443 (hereinafter “Fujisawa”) in view of Sawai et al. US 5211956 (hereinafter “Sawai”) 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 which has been addressed above.
Regarding the recitation of wherein the dairy-type product is subjected to spray drying, to provide a spray dried product in claim 13, modified Fujisawa does not expressly disclose this limitation.
Beeson teaches 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 October 7, 2025 are acknowledged.
Due to the amendments to the claims, the claim objections and the 35 USC 112 rejection in the previous Office Action have been withdrawn. However, the 35 USC 112 rejection above is necessitated by the amendments made to the claims.
Applicant’s arguments have been fully considered, but they are unpersuasive.
Applicant argues the art’s “routine optimization” rationale does not apply where the composition proportion is critical and yields performance different in kind. Nothing in the cited references teaches or predicts that selecting a phytate whose InsP6+InsP5 fraction is ≥ 90 wt% will produce: (i) whiter cheese compared to phosphate melting salts; (ii) a more neutral, less-metallic flavor in processed cheese and high-protein beverages; or (iii) improved pH stability over storage in cheese blocks-all under otherwise comparable process conditions which are unexpected and different-in-kind results of the invention (P5-P10).
Examiner disagrees. Although Fujisawa as modified by Sawai does not expressly disclose the mixture comprises more than 90 wt% of myo-inositol hexa phosphate plus myo-inositol penta phosphate relative to the amount of all myo-inositol phosphates, one of ordinary skill in the art would have been motivated 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 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 Sawai teaches phytic acid salt obtained from a plant extract as addressed above in claim 1 which is identical to the phytic acid salt source of the presently claimed invention, modified Fujisawa teaches phytic acid materials obtained from rice bran contain myoinositol (Sawai: C1, L55-59), 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. “[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).
Additionally, the features described by Applicant are indeed expected in view of the prior art since Sawai teaches phytic acid salts are tasteless and odorless that their oral administration is easily achieved (C3, L22-23) and Fujisawa teaches the phytic acid salt may be used to inhibit the gelation (stability) and coloration of the product (P7, L7-16). Thus, Applicant has failed to establish criticality of the claimed range. 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. Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
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.
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793