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 .
Election/Restrictions
Applicant’s election without traverse of Group I claims 12-20 in the reply filed on 3/12/26 is acknowledged.
Claim 21-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/12/26.
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 14-20 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.
Regarding Claim 14, the phrase "preferably" at line 2 renders claim 14 indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP §2173.05(d).
Regarding Claim 15, the phrase "preferably" at line 1, renders claim 15 indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP §2173.05(d).
Regarding Claim 15, the phrase "preferably" at line 3, renders claim 15 indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP §2173.05(d).
Regarding Claim 15, the phrase "preferably" at line 3, renders claim 15 indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP §2173.05(d).
Regarding Claim 15, the phrase "and the like" renders the claims indefinite because the addition of the word “like” is interpreted as "type" and the addition of “type" to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite. See MPEP § 2173.05(b). Claim 16 is rejected by its dependency upon claim 15.
Regarding Claim 17, the phrase "preferably" at line 1, renders claim 17 indefinite because it is unclear whether the limitations following the phrase is part of the claimed invention. See MPEP §2173.05(d).
Regarding Claim 18, the phrase "preferably" at line 1, renders claim 18 indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP §2173.05(d).
Regarding Claim 19, the phrase "more favorably" at line 2, renders claim 19 indefinite because it is unclear whether the limitation following the phrase is part of the claimed invention. See MPEP §2173.05(d).
Regarding Claim 20, the phrase "more favorably" at line 2, renders claim 20 indefinite because it is unclear whether the limitation following the phrase is part of the claimed invention. See MPEP §2173.05(d).
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.
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, 14 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Sridhar et al. (US 2013/0129900).
Regarding Claim 12: Sridhar discloses a method for making a non-dairy protein beverage wherein the protein can be egg protein [abstract; 0005]. Sridhar discloses performing heat treatment at 68 to 93°C [0006]. Sridhar discloses performing homogenization [0015]. Sridhar discloses homogenization at total pressure between 40 bar and 300 bars and between 100 bars and 190 bars [0079]. Sridhar discloses that the process results in a smooth creamy texture and one that is shelf stable and has superior organoleptic and textural properties [0021; 0080]. Sridhar discloses that the non-dairy beverage can be any beverage composition including milk beverages [0048; 0049].
However, in claim 12 “ to obtain a beverage that has a microbiological and organoleptic characteristics similar to cow’s milk” is a recitation of the intended use of the claimed invention and in order to patentably distinguish the claimed invention from the prior art, the recitation must result in a structural difference between the claimed invention and the prior art. MPEP 2103 states that intended use language "does not limit a claim to a particular structure does not limit the scope of a claim". The above mentioned phrase does not limit the claim to any particular structure, so it is not interpreted to limit the scope of the claims. If the prior art structure is capable of performing the intended use, then it meets the claim.
Further since Sridhar discloses the same treated egg, it can be said to have the same characteristics as claimed. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Although Sridhar does not explicitly disclose between 58°C and 75°C one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Sridhar overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Regarding Claim 14: Sridhar discloses as discussed above in claim 12. Sridhar discloses egg white and water [0100, 0101]. Regarding the parts, this is considered optional as discussed in the above 112 rejection.
Regarding Claim 19: Sridhar discloses as discussed above in claim 12. Sridhar discloses performing the first heat treatment at 68 to 93°C [0006; 0013].
Although Sridhar does not explicitly disclose between 58°C and 75°C one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Sridhar overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Claims 13, 15, 16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sridhar et al. (US 2013/0129900) as applied to claim 12 above and in further view of Hao CN 104738767 Machine Translation 2015.
Regarding Claim 13: Sridhar discloses as discussed above in claim 12. Sridhar discloses a second thermal treatment/sterilization step at 121°C or 136°C-150°C [0016]. Sridhar discloses homogenizing occurring before or after heat treatment [0079]. Sridhar discloses homogenizing occurring at between 100 and 190 bars [0079]. Sridhar discloses that the process results in a smooth creamy texture and one that is shelf stable and has superior organoleptic and textural properties [0021; 0080].
Sridhar does not disclose a second homogenization at a pressure between 100 and 400 bar.
Hao discloses adding egg liquid and additional ingredients, heating, homogenizing, homogenizing and heating [abstract; claim 1].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to include after the second heat treatment step in Sridhar a second homogenizing step as in Hao in order to further improve the texture and organoleptic properties of the product.
Further since Sridhar discloses the same treated egg, it can be said to have the same characteristics as claimed. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claim 15: Sridhar discloses as discussed above in claim 13. Sridhar discloses including an additive adding phosphoric acid (acidity regulator) before pasteurization [0101-0102]. Sridhar discloses smoother and improved texture as a result [0102].
Regarding Claim 16: Sridhar discloses as discussed above in claim 15. Sridhar discloses ascorbic acid [0049]. Sridhar discloses egg white protein present at 10 g/kg of the beverage (liquid) [0101].
Regarding Claim 20: Sridhar discloses as discussed above in claim 13. Sridhar discloses a second thermal treatment/sterilization step at 121°C or 136°C-150°C [0016].
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Sridhar et al. (US 2013/0129900) and Hao CN 104738767 Machine Translation 2015 as applied to claim 13 above and in further view of Ahmed et al. (CA 1308295).
Regarding Claim 17: Sridhar discloses as discussed above in claim 13. Sridhar discloses carbonated beverages and discloses the addition of carbon dioxide [0048; 0049].
Sridhar does not disclose comprising, prior to the step chosen preferably from said first and said second thermal treatment of the egg white, performing a step of eliminating air content, respectively from said solution and from said beverage, in order to limit a content of oxygen and therefore reduce onset of oxidation phenomena.
Ahmed discloses the addition of carbon dioxide to a protein containing beverage [col. 9, lines 24-50]. Ahmed discloses adding carbon dioxide in increments for 15 minutes and then for 20 minutes for a total of 35 minutes [pg. 19, Ex. 1]. Ahmed discloses the removal of undissolved air [pg. 19, Ex. 1].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the method of Sridhar to include the step of removing undissolved air as in Ahmed in order to help provide a stabilized product.
Regarding the effect of limiting the content of oxygen and reducing the onset of oxidation phenomena, “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claim 18: Sridhar discloses as discussed above in claim 13. Sridhar discloses carbonated beverages and discloses the addition of carbon dioxide [0048; 0049].
Sridhar does not disclose prior to the step chosen preferably from said first and said second thermal treatment of the egg white, administering carbon dioxide, respectively to said solution and to said beverage, for a time comprised between 30 minutes and 2 hours, in order to limit a content of oxygen and therefore reduce onset of oxidation phenomena.
Ahmed discloses the addition of carbon dioxide to a protein containing beverage [col. 9, lines 24-50]. Ahmed discloses adding carbon dioxide in increments for 15 minutes and then for 20 minutes for a total of 35 minutes [pg. 19, Ex. 1]. Ahmed discloses the removal of undissolved air [pg. 19, Ex. 1].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the method of Sridhar to include the step of removing undissolved air and adding carbon dioxide for 35 minutes as in Ahmed in order to help provide a stabilized product and to provide a carbonated protein beverage.
Regarding the effect of limiting the content of oxygen and reducing the onset of oxidation phenomena, “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Clark et al. (US 6403129) Clark discloses the addition of carbon dioxide to a protein containing beverage [col. 9, lines 24-50].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FELICIA C TURNER whose telephone number is (571)270-3733. The examiner can normally be reached Mon-Thu 8:00-4:00 pm.
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/Felicia C Turner/ Primary Examiner, Art Unit 1793
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