DETAILED ACTION
Amendments made January 13, 2026 have been entered.
Claims 1-3, 7, 10-13, and 14-22 are pending;
Claims 1-3, 7, and 13-22 have been withdrawn.
The Species with a pH above 5 was previously elected.
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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Claim 13 has been amended to be an independent claim that is directed to a process for preparing a frozen dairy product, and not to a mix as previously claimed. The method of making a frozen confection, which is now recited in claim 13, was previously withdrawn for the reasons as stated in the restriction requirement mailed August 6, 2025. Thus, claim 13 has been withdrawn for the same reasons claims 16-19 were previously withdrawn. It is further noted that mixes similar to those recited in the elected claim group are found in the prior art in non-frozen form. See for example EP 3,236,784 which teaches a denatured protein mix that can be at ambient temperatures (abstract and paragraph 20).
Claim Objections
The objection to claims 10-13 has been withdrawn in light of applicant’s amendments made January 15, 2026.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The rejection of claims 11-13 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joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention has been withdrawn in light of applicant’s amendments made January 15, 2026.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The rejection of claims 10-13 under 35 U.S.C. 103 as being unpatentable over Gunes et al (WO 2012/130654) in view of Arbuckle (Ice Cream 4th Edition Springer 1986, pages 34 and 43-44) has been withdrawn in light of applicant’s amendments made January 15, 2026.
Notes:
The term “added sugar” means sugar added in addition to the sugar endogenous to other ingredients, such as dairy ingredients or flavorings, naturally containing sugar. See instant specification page 9 lines 4-7.
The term “exogenous whey protein” refers to whey protein added in addition to those naturally present in milk or yogurt used to prepare the mix for the frozen dairy product. See instant specification page 6 lines 17-19. It is noted that the specification page 6 lines 20-27 also discloses milk and whey powders and/or concentrates may be included in the mix as a source of exogenous protein.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Sharp et al (US 2019/0133149) in view of Arbuckle (Ice Cream 4th Edition Springer 1986, pages 20, 28-34, and 67).
Sharp et al (Sharp) a method of preparing a frozen dairy confections, including ice cream, comprising: forming a mix for freezing (abstract and paragraphs 15 and 53-57).
Regarding the method as including adding exogenous native protein to other ingredients and denaturing the exogenous native whey protein at least in part to form the mix as recited in claim 10, Sharp teaches that the ingredient mix comprises one or more protein(s), which is preferably dairy protein including whey protein, wherein the protein(s) present in the mix is at least partially denatured, to form the mix when exposed to known amounts of acid (paragraphs 39-40, 43-47, and 53-54). As the whey is added to the mix as a protein component before it is denatured, it is considered to encompass an exogenous native protein as claimed.
Regarding the composition of the mix as recited in claim 10, Sharp teaches that the mix has a pH of 5.0-6.5 (paragraph 49) and comprises:
preferably 3.0-11.0% fat (paragraph 32);
non-fat milk solids (paragraph 39);
typically, 13-19% added sugars (paragraph 38); and
preferably 35-45% total solids (paragraph 28).
Sharp is not specific to the mix as comprising about 6-13% non-fat milk solids, at least 1% of the denaturized whey protein, and about 1-8% egg yolk solids.
Regarding the mix as comprising about 6-13% non-fat milk solids (NFMS) as recited in claim 10, as discussed above Sharp teaches non-fat milk solids within the ice cream. Sharp is not specific for a general range of inclusion of the ingredient. Arbuckle teaches that approximate compositions of commercial, and thus successful, ice creams have a NFMS content ranging from 5-11% depending on the ice cream type (page 29). Arbuckle teaches that NFMS are high in food value, inexpensive, and enhance ice cream palatability (page 32 Milk Solids Not Fat). Specifically, the proteins help to make ice cream more compact and smoother and thus tend to prevent a weak body and coarse texture (page 32 Milk Solids Not Fat). Arbuckle teaches that an excess amount of NFMS may result in a salt, overcooked, or condensed milk flavor (page 32 Milk Solids Not Fat). Thus, as Sharp teaches non-fat milk solids within the ice cream, but is not specific for a general range of inclusion of the ingredient it would have been obvious to use a known and commercial amount, including from 5-11% depending on the type of ice cream in order to add food value, enhance palatability, and help to make ice cream more compact and smoother while avoiding salt, overcooked, or condensed milk flavor in view of Arbuckle. To use a known amount of a disclosed ingredient would have been obvious and well within the purview of one of ordinary skill in the art.
Regarding the mix as comprising at least 1% of the denaturized whey protein as recited in claim 10, Sharp teaches that partially desaturating proteins within the ice cream mix allow the proteins to act as natural stabilizers for the air cells and enable the creation of a very fine and stable microstructure resulting in a smooth, rich, and creamy product (paragraph 45), wherein the mix comprises one or more protein selected from the group including whey (paragraph 39).
Thus, it would have been specifically obvious for the composition of Sharp to contain partially denatured whey to act as a natural stabilizer for the air cells and enable creation of a very fine and stable microstructure resulting in a smooth, rice, and creamy product as taught by Sharp. Sharp however is silent to the amount of denatured whey protein. Arbuckle teaches that approximately 3% of a total ice cream milk can be whey solids without objectionable effects on the flavor and with improved body and whipping quality at a reduced cost (page 67 paragraph 2). Thus, it would have been further obvious for the denatured whey to be included at around 3% to produce a product without objectionable effects on the flavor and with improved body and whipping quality at a reduced cost in view of Arbuckle. To use a known amount of a disclosed ingredient would have been obvious and well within the purview of one of ordinary skill in the art.
Regarding the mix as comprising about 1-8% egg yolk solids as recited in claim 10, Sharp teaches that “the frozen aerated confection can also be egg free” (paragraph 30), thus at least suggesting in an alternative embodiment that the frozen confection comprise egg. Arbuckle teaches that ice creams are composed of egg products (page 28 paragraph 1) and that in French ice creams the egg yolk solids are not less than 1.12% for bulk flavored products and not less than 1.4% for custard products (page 20 paragraph 6 and page 31, Table 4.2). Arbuckle teaches that egg yolk solids are high in food value, impart a characteristic delicate flavor which aids in obtaining a desirable blending of other flavors, can have a pronounced effect in improving the body and texture, and improve whipability (page 34 Egg Yolk Solids). It would have been obvious for the frozen airy products of Sharp, including the ice cream to include a known amount of egg components, including not less than 1.12% egg yolk solids, or not less than 1.4% egg yolk solids, for the known benefits of egg yolk solids, including high food value, delicate flavor which aids in obtaining a desirable blending of other flavors, and improved body, texture, and whipability in view of Arbuckle.
Regarding claims 11-12, Sharp teaches that the final mix is preferably pasteurized between 75-90C (paragraphs 56 and 62), and that when the proteins are subject to heat, for example pasteurization, they undergo denaturation (paragraph 42). Thus, the teachings of Sharp encompass a process wherein pasteurization also denatures at least in part the exogenous native whey protein in the mix.
Regarding all of the claimed ranges, the prior art discloses overlapping ranges. It would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
Response to Arguments
Applicant’s arguments filed January 13, 2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 5336515 teaches that protein material may be at least partially denatured as it has higher water absorption properties than undenatured proteins (paragraph 14).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELLY BEKKER whose telephone number is (571)272-2739. The examiner can normally be reached Monday-Friday 8am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at 571-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792
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