Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (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.
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.
Claims 1, 3, 4, and 7-16 are rejected under 35 U.S.C. 103 as being unpatentable over “To Her Core: How to Make Homemade Roasted Hazelnut Milk”, June 10, 2015 (To Her Core) in view of RU 2333657 (Dovgan) and further in view of “Simply So Good, Homemade Coconut Milk” (Simply) (2016) AND/OR CN 113733699 (Xia) OR CN 102524701 (Gao) and further in view of “The Ideal Temperatures for Your Refrigerator and Freezer”, 02/21/2020 (Refrigerator) and “DIY Nut Milk Fans: Don’t Toss Out the Pulp” (DIY), 09/06/2017.
To Her Core discloses a method of making hazelnut milk including the following steps:
Supplying hazelnuts; (meets step a)
Cracking the nuts to remove the shells; (meets step b)
Adding water to the shells; (meets step c)
Soak to provide a smoother, creamier consistency; (meets step d, in part)
Removing the water (straining);
Add the nuts to a blender (mixer) and add fresh water to blend until thick and creamy; (meets steps f, g, and h); and
Straining through a nut bag or cheesecloth (woven cotton gauze fabric) (meets step i).
To Her Core does not disclose keeping the hazelnuts in water for 24 hours at a temperature of 5-15C, weighing the wet hazelnuts obtained in step d, and subjecting the milk to heat treatment.
Regarding the length of time for keeping the hazelnuts in water and the temperature, Dovgan discloses a method of making milk from nuts, including hazelnuts, similar to that disclosed by To Her Core. Note that To Her Core states that the nuts may be soaked for a few hours to overnight, and does not limit the amount of time per se. Indeed, the bottom of page 9 of To Her Core states that if you have a not-so-highly powered blender, to not scrimp on the soaking time which will help you gain a creamier consistency. This indicates to one of ordinary skill that increasing the time of soaking can increase the creaminess of the milk product. Dovgan’s method also comprises the step of soaking the nuts and specifies that the nuts may be soaked for 5-25 hours at 10-40C in water (abstract) before grinding. This step hydrates and swells the nuts (page 2). It would have been obvious to one of ordinary skill to soak the hazelnuts of To Her Core for up to 25 hours at cool temperatures as indicated by Dovgan with a reasonable expectation of providing a hazelnut milk with a creamier consistency as indicated by To Her Core. Dovgan also indicates that too high a temperature can result in undesirable fermentation (page 4).
Regarding weighing the wet hazelnuts that have been soaked, one of ordinary skill would have found it obvious to weight the hazelnuts after soaking since the weight of the hazelnuts will have changed. Determining the precise amounts of water to be added to yield the desired, and repeatable consistency in the final product would benefit from recording the weight of the hazelnuts and also recording the amount of water added to the mixture. The benefit of recording measurables (amounts of ingredients) when processing allows for one of ordinary skill to make changes to the recipe knowledgably, such as increasing the amount of water relative to the hazelnuts will decrease the thickness of the formed milk (discussed above).
Regarding the heat treatment of claims 1, 7, 10, and 11, Dovgan discloses pasteurizing the milk at 80C (examples 2 and 3). It would have been obvious to pasteurize the milk product of To Her Core as taught by Dovgan to confer the known benefits of pasteurization on the nut milk, such as achieving the necessary organoleptic properties of the final product as disclosed by Dovgan.
Regarding step (i) of filtering the mixture from step (h) through a cotton woven fabric to obtain milk, wherein the cotton woven fabric has a pore size of less than 30 microns, the prior art is seen to obviate the use of a cotton woven fabric with the claimed. To Her Core discloses straining through a nut bag or cheesecloth (woven cotton gauze fabric) but does not disclose the pore size. It is noted that in sole example of the instant specification, a diaper is used for filtering. Simply discloses a method of making coconut milk, and states that “just like nut milks, coconut milk is so simply to make with very few ingredients” (page 4). Simply discloses straining to remove pulp and fibers so that only the liquid remains and discloses using tightly wound cotton dish cloths, cheese cloth or a nut bag in the similar manner of To Her Core. Further, a comment was made February 28, 2016 (bubbysoo) that cloth diapers are “greatest for straining almond or coconut milk”. Thus, one of ordinary skill would have found it obvious to use a cloth diaper as indicated by Simply to strain the hazelnut milk of To Her Core to remove pulp and any fibrous materials that would affect the mouthfeel of the remaining milk with a reasonable expectation of success based upon the disclosure of using a cloth diaper in the same manner as cheesecloth and nut bags suggested in To Her Core. Regarding the pore size, to function as a diaper, the pore size must be similar to that used by applicant and have pores less than 30 microns.
Alternative to Simply, or in addition to Simply, Xia discloses a filter cloth that may be used in the field of pharmacy, food, chemical industry, metallurgy, purification and so on. such as beer in food processing, wine, fruit wine, tea beverage, soy milk and so on. The basic fiber cloth may be cotton filter cloth. The filtering is described as “micro-pore” and examples of a basic filter cloth are micro-hole 500 mesh. 500 mesh corresponds to 25 micron. Thus, anything smaller than 25 microns would pass through the filter resulting in removal of any materials having a size 25 microns or greater. It would have been obvious to use the filter of Xia as the filter in To Her Core in order to remove as much pulp and other materials from the milk mixture to provide only the liquid for consumption. Xia clearly discloses that the filter may be used in the food industry and indicates use in relation to soy milk “and so on”, thus indicating a reasonable expectation in use of filtering other milks. Additionally, Simply discloses the desire to remove pulp and fibers and To Her Core also discloses removal of pulps. It would have been obvious to use the micro-hole filter of Xia with a mesh of 500 to remove as much pulp and any fibers or granularities from the hazelnut milk of To Her Core as it is expressly disclosed that removal of pulp and fibers is desired and the smaller the pore size (the higher the mesh) results in removing more granularities. This concept of using a tightly woven (high mesh) cloth is well known as illustrated by the disclosure in Simply of using a tightly woven cotton dish cloth to prevent fibers and pulp from passing and Xia discloses a pore size for a filter cloth that is known and effective for use in the food industry, thus obviating the use of a cotton filter cloth having a pore size of less than 30 microns. Further regarding Xia, the disclosure of the 500 mesh cotton filter cloth is seen to be woven cloth due to the formation of mesh and the disclosure by Xia that filter cloth is formed by interweaving fibers.
Still further, Gao discloses filtering pulp from a fruit that has been treated with enzymes to separate the pulp. A filter cloth is used with 300-500 mesh. This conveys to one of ordinary skill that up to a 500 mesh is successfully used for filtering pulp using a cloth. Thus, one of ordinary skill in the art would have found it obvious to use a filter cloth as suggested by To Her Core that has a mesh up to 500 which corresponds to 25 microns as explained above. One of ordinary skill would have found it obvious based upon the demonstration by Gao of separating pulp is effectively done with a micron level mesh filter cloth and used a similar mesh to filter the hazelnut milk.
Regarding the newly added limitation of storing the milk at 4C, To Her Core discloses storing the milk in a jar in the fridge (refrigerator) for up to 5 days. Refrigeration discloses that the interior temperature of a refrigerator varies between 3 and 5C. It would have been obvious to one of ordinary skill to store the milk in a refrigerator at a temperature of 4C as refrigeration is known to be in the range of 3-5C and thus obviates the temperature setting of 4C.
Regarding the newly added limitation of filtering the mixture to obtain pulp and milk, and weighing the pulp and milk resulting from the filtration, Dovgan discloses packaging the milk product and that the residue mass (pulp) may be used in food and/or feed purposes. While not expressly disclosed, packaging of milk for distribution is well-known to have the weight of the contents displayed thereon to communicate to the consumer the amount received as well as allowing for calculation of cost basis. Additionally, as Dovgan discloses that the pulp may be used in food or for feed purposes, knowing the weight of the pulp would be beneficial to determine the amount yielded from the process and the amount distributed for use in food. These concepts are widely known to the common person and understood in commercialization of products. Additionally, Simply discloses that pulps can be used in cooking and smoothies, and measuring/weighing amounts of ingredients is well known. Still further, DIY discloses that making a quart of milk (which has an associated weight) one would use 1 cup raw almonds and a specified amount of water and also states that 1 cup of almond pulp is an expected amount of pulp yield from a making a quart of milk. One of ordinary skill would have found it obvious to measure or weight the amounts of milk and pulp yielded to ascertain the consistency with the recipe. Additionally, the amount of pulp yielded can be indicative of the efficiency of the grinding step to remove large solids.
Regarding claim 3, in a comment made Dec. 23, 2016 of To Her Core, a question is raised regarding the proportion of water to hazelnuts and the answer given indicates that you can vary the amount of water or hazelnuts depending upon the thickness desired in the final product. Thus, one of ordinary skill would find it obvious to vary the amounts of hazelnuts or water (adjusting the ratio thereof) to obtain the thickness desired in the final product. Additionally, the recipe of In Her Core calls for 1 cup shelled hazelnuts to 2 cups water.
Regarding claims 4 and 9, the amount of time to mix/blend the hazelnuts and water is optimizable by one of ordinary skill in the art. To Her Core teaches blending until smooth and creamy, “around a minute”. It would have been obvious to one of ordinary skill to increase the amount of time taken to blend (grind) the hazelnut and water mixture until the desired smoothness and creaminess is obtained.
Regarding claims 8, 13, 14 and 16, the background of Dovgan discloses that the pasteurization (heat treatment) may be may be carried out in a homogenizer for a time of 0.25-20 minutes which is indicative of the time known to one of ordinary skill in the art for the amount of time needed for the heat treatment (page 2). Dovgan does not give other times in the discussion of the heat treatment in the rest of the disclosure thus one of ordinary skill would have found it obvious and reasonable to look to the disclosure of 0.25-20 minutes as a suggested time for performing the heat treatment. The time frame of 0.25-20 minutes overlaps the claimed range of 8-10 minutes and is therefore prima facie obvious. In the case where the claimed ranges "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) MPEP 2144.05(I).
Regarding claims 12 and 15, Dovgan teaches 80C for pasteurization and obviates the amount of time for the heat treatment.
Claims 4, 9, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over “To Her Core: How to Make Homemade Roasted Hazelnut Milk”, June 10, 2015 (To Her Core) in view of RU 2333657 (Dovgan) and “Simply So Good, Homemade Coconut Milk” (Simply) (2016) AND/OR CN 113733699 (Xia) OR CN 102524701 (Gao) and “The Ideal Temperatures for Your Refrigerator and Freezer”, 02/21/2020 (Refrigerator) and “DIY Nut Milk Fans: Don’t Toss Out the Pulp” (DIY), 09/06/2017 as applied to claim 1 above, and further in view of WO 2013/010037 (Brown).
Alternative to the rejection of claims 4 and 9 above, Brown teaches making non-dairy milk for use in making cheese including the step of soaking nuts, draining and placing the nuts in a blender, adding water thereto and blending for 5 minutes [0061]. Brown teaches that the blending time and speed may be altered by up to 100% which indicates the range for blending may be optimized by the ordinary artisan. Thus, one of ordinary skill in the art would reasonably find that the time for blending can be adjusted based upon the time in a blender of Brown disclosing 5 minutes variable up to 100% which encompasses the claimed range of 3-10 minutes. Regarding claims 10 and 11, Dovgan teaches pasteurizing at 80C as discussed above.
Response to Arguments
Applicant’s amendments have overcome the objections to the claims.
Regarding the newly added limitations of the temperature of refrigeration and weighing the pulp and milk yield, these limitations are addressed in the rejection of claim 1 above.
As noted by applicant, To Her Core and Simply describe refrigeration storage of the hazelnut milk and the newly added reference “Refrigeration” discloses the known temperature for refrigeration.
Applicant’s arguments have been considered with regard to the pore size, but are not persuasive. Applicant argues that none of the references disclose a cotton woven fabric having a pore size of less than 30 microns. “To Her Core” discloses a nut bag or cheesecloth (which is woven cotton gauze fabric) but does not specify the pore size thereof. “Simply” also discloses making a nut milk, albeit coconut, and removes pulp with tightly wound cotton dish cloths, cheese cloth or a nut bag in a manner similar to that of “To Her Core”. As stated in the rejection, the comments section of “Simply” notes that cloth diapers are “greatest for straining almond or coconut milk”. It is noted that applicant discloses in their example the use of a diaper. The conclusion is made that one of ordinary skill would have found it obvious to use a cloth diaper as indicated in the comments of “Simply” and that to function as a diaper, the pore size would be expected to be similar to that used by applicant. In other words, as both the cloth diaper of “Simply” and the cloth diaper of applicant are used to strain the pulp from the water and nut mixture, and are also functional as cloth diapers, the pore size is expected to be commensurate. “Simply” disclose that the pulp will not squeeze through the fibers of a tightly woven cotton dish cloth which indicates that the pore size must be small enough to retain all of the pulp and large enough to allow passage of milk. Applicant has not disclosed that any particular diaper is used, per se, only that a cloth diaper is used which is the same as that disclosed by the comments in “Simply” and these comments are reasonably considered indicative of the level of ordinary skill in the art. In other words, use of a diaper, which is commensurate with applicant’s disclosed medium having the claimed pore size is taken to indicate that the pore size is reasonably met.
The rejection went further to rely on Xia for a filter cloth used in the food industry and Gao for teaching the use of a filter for separating pulp using a filter cloth with 300-500 mesh. Applicant argues that these references are industrial filtration media/processing and do not supply a reasonably pertinent teaching to selecting a consumer cotton straining fabric by microns for hazelnut milk. Applicant states that the pore size is a deliberate choice tied to producing hazelnut milk that preserves the natural milk color and achieves high purity, not merely “using some cloth”. As explained above, “To Her Core” and “Simply” do not disclose merely “using some cloth” but specifically disclose using tightly woven cloth and the comment in “Simply” specifically used a cloth diaper which is the same medium disclosed by applicant. These teaching amount to more that “some cloth”. Xia discloses that is it known to use cotton filter cloth with 500 mesh which corresponds to 25 microns pore size and that this filter can be used in the food industry. Applicant’s argument that Xia relates to an engineered self-cleaning filter membrane/cloth system does not negate the disclosure of using a cotton filter cloth of fine mesh in the food industry. Likewise, Gao discloses specifically filtering pulp from fruit using a filter cloth of up to 500 mesh. Thus, the pore size of less than 30 microns is known in the food industry, and known in filtering pulp, thus the use of a fine mesh commensurate with the pore size claimed is considered obvious to one of ordinary skill in the art. The instant claims do not require any particular color of the milk yielded by the process, nor do the claims require and degree of purity. The specification has also not established that the pore size achieves something unexpected when used for forming hazelnut milk. In each case, the cloth material is used as a filter, and one of ordinary skill would reasonably expect that these materials would successfully separate the pulp from the water and hazelnut mixture.
Regarding the heat treatment in step (j), applicant argues that the claimed step is limited to 8-10 minutes and that while Dovgan’s disclosure of 0.25-20 minutes overlaps, the narrow range claimed is critical to achieve pasteurization without destabilizing the emulsion formed with the sub-30 micron filtration method. There is no data to support the assertion that the narrow range of 8-10 minutes is critical, thus the prima facie case made is not overcome. See MPEP 2144.05(III)(A) which states in part “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). See also Minerals Separation, Ltd. v. Hyde, 242 U.S. 261, 271 (1916) (a patent based on a change in the proportions of a prior product or process (changing from 4-10% oil to 1% oil) must be confined to the proportions that were shown to be critical (1%)); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205 (CCPA 1946) (Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies."); In re Becket, 88 F.2d 684 (CCPA 1937)”. Here, applicant has asserted criticality but there is no actual showing with facts in support of the assertion. Thus, the argument is not persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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JENNIFER C. MCNEIL
Primary Examiner
Art Unit 1723
/Jennifer McNeil/Primary Examiner, Art Unit 1723
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