DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt of the Request for Continued Examination (RCE under 37 CFR 1.114), the Response, and Amendment filed 04/18/2026 is acknowledged.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-5, 9-12, 14, 26-27, 29, 32
Withdrawn claims: None
Previously cancelled claims: 6-8, 13, 15, 17-20, 21-25, 28
Newly cancelled claims: 16, 31
Amended claims: 1
New claims: None
Claims currently under consideration: 1-5, 9-12, 14, 26-27, 29, 32
Currently rejected claims: 1-5, 9-12, 14, 26-27, 29, 32
Allowed claims: None
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/18/2026 has been entered.
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.
Claims 1-5, 9-12, 14, 26-27, 29, and 32 are rejected under 35 U.S.C. 112(b) 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.
The term “protein-rich” in claims 1, 4, 9, and 32 is a relative term which renders the claim indefinite. The term “protein-rich” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
For the purpose of this examination, the term “protein-rich” will be interpreted as meaning that the composition contains protein in an amount greater than 0 wt.%.
Claims 2-3, 5, 10-12, 14, 26-27, and 29 are rejected by reason of dependency from claim 1.
Claim Rejections - 35 USC § 103
Claims 1-5, 9-10, 12, 14, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Martinez (US 2020/0120964; previously cited) in view of USDA (“Grading Manual for Peanut Butter”, 2011, USDA; page numbers of document relied on for citations; previously cited) as evidenced by Ribeiro (Ribeiro et al., “Zero trans fats from soybean oil and fully hydrogenated soybean oil: Physico-chemical properties and food applications”, 2009, Food Research International, vol., 42, pages 401-410; previously cited) and Chemical (“Stearic acid Properties”, 2024, Chemical Book, https://www.chemicalbook.com/ChemicalProductProperty_EN_CB4853859.htm; previously cited).
Regarding claim 1, Martinez teaches a process of manufacturing a protein-rich supplement composition (corresponding to nut butter composition [0002] containing about 10 wt.% to about 30 wt.% protein [0024]) comprising the following steps: heating a nut butter and combining the heated nut butter with melted fats; adding the remaining ingredients [0027]; and cooling the composition to room temperature [0033]. Martinez teaches that the ingredients in the composition are: a fat system comprising a combination of shortening (corresponding to high melting point vegetable oil fractions) and fully hydrogenated soy oil [0020]; lecithin [0025]; about 25 wt.% to about 70 wt.% nut butter [0019]; and a health-promoting ingredient (corresponding to protein from soy protein concentrate or isolate and fiber from oat and corn) [0024]. This disclosed concentration of nut butter overlaps the claimed concentration.
Fully hydrogenated soy oil contains stearic acid in an amount of approximately 85 wt.% and some amount of palmitic acid as evidenced by Ribeiro (page 402, 1st column, 2nd paragraph; page 403, 1st column, 1st paragraph under “3.1 Fatty acid composition in raw materials and blends”). Therefore, the composition of Martinez contains stearic acid and one additional long chain fatty acid having 13 to 24 carbon atoms in its chain as recited by present claim 1. Since the composition of Martinez contains about 5 wt.% to about 25 wt.% of the fat system [0020], the composition comprises amounts of shortening from an amount greater than 0 wt.% to an amount less than about 25 wt.% and amounts of fully hydrogenated soy oil from an amount greater than 0 wt.% to an amount less than about 25 wt.%. Therefore, the content of stearic acid in the composition is from an amount greater than 0 wt.% to an amount less than 21.3 wt.%, which encompasses the claimed concentration. 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. MPEP §2144.05.I.
Since the nut butter is added to the melted shortening and fully hydrogenated soy oil containing stearic acid (corresponding to melted fats) [0027] and the shortening has a melting point of about 50°C to about 60°C [0020], the blend of shortening and stearic acid is heated to a temperature of about 50°C to about 60°C (i.e., 110°F-154°F with the term “about” implying a deviation of ±10%) to melt the fat prior to mixing with the nut butter. Since stearic acid has a melting point of 67-72°C as evidenced by Chemical (row 1), which equates to 153-162°F, present claim 1 requires the first blend comprising the stearic acid to be heated to a temperature of 148-167°F, which represents a temperature range within 3% of the melting point of stearic acid. Therefore, the blend comprising shortening and stearic acid is heated to a temperature which overlaps temperatures corresponding to a temperature within 3% of the melting point of the stearic acid and which does not exceed 157°F as claimed. The selection of a value within the overlapping range renders the claim obvious. MPEP §2144.05.I.
In regard to lecithin being included in the first blend with the shortening and stearic acid as claimed, the “selection of any order of mixing ingredients is prima facie obvious”. See MPEP §2144.04.IV(C). As such, the inclusion of lecithin in the first blend as opposed to being separately added to the mixture as disclosed by Martinez (corresponding to the nut butter being added to the melted fats and then remaining ingredients being added) [0027], is rendered obvious, especially in view of there not being any asserted criticality assigned to its inclusion in the first blend by the present application and in view of Martinez disclosing that the ingredients can be combined in any appropriate method [0027]. Therefore, the method of Martinez renders the steps of blending shortening, stearic acid, and lecithin to form a first blend; heating the first blend; and combining the first blend with nut butter to form a second blend obvious. Since Martinez describes shearing the second blend of ingredients [0027]; and cold forming the blend after it has been mixed so as to form it into a sheet [0033], it is presumable that the method of Martinez requires maintaining the temperature of the first blend to allow for thorough incorporation of the ingredients. Therefore, the method of Martinez renders the steps of heating the second blend obvious. Since the health-promoting ingredient may be added after the second mixture is formed and prior to shearing and cooling [0027], Martinez also renders the step of adding a health-promoting agent to form a third blend and blending to uniformity as being obvious.
Martinez teaches that the composition has a putty-like texture that is shapeable (corresponding to being readily formed and holding its form without support) and stable [0018], [0028]. Martinez also discloses that the composition has a firmness of 1.68-2.47 kg, a stickiness of from -0.51 to -0.32 kg; and can form a sheet using rollers [0028]-[0033]. Martinez also: demonstrates flattening of the composition using rollers which do not appear to have any residue on them after flattening the composition (Figure 1); states that the composition is cut into shapes [0035], [0050]; and states that the composition has a spoonable texture (corresponding to putty-like texture) [0018]. Therefore, Martinez at least suggests that the composition is cleanly cuttable, cleanly spoonable, and spreadable; thereby, rendering the claimed features obvious.
Martinez discloses that the composition is a nut butter that has a consistency that allows it to hold its formed shape at room temperature [0018], but does not disclose step (vii) of the claimed method wherein the composition retains its knife path for at least 12 hours at room temperature after step (vii).
However, USDA discloses that a test for the consistency of a nut butter (corresponding to peanut butter) comprises inserting a table knife approximately 2.5 inches into the nut butter at an approximate 45° angle and observing the time at which the knife path collapses (page 9, 2nd paragraph).
It would have been obvious for a person of ordinary skill in the art to have modified the method of Martinez to include inserting a table knife approximately 2.5 inches into the nut butter at an approximate 45° angle as taught by USDA. Since Martinez discloses that its composition is a nut butter that has a consistency that allows it to hold its formed shape at room temperature [0018], but does not disclose a method of testing whether the composition actually maintains its shape at room temperature, a skilled practitioner would have been motivated to consult an additional reference such as USDA in order to determine a suitable test method, thereby rendering step (vii) of present claim 1 obvious. This combination of Martinez and USDA at least suggests that the composition retains a knife path following step (vii) for a time greater than 0 seconds and does not suggest that there is an upper limit to the amount of time that the shape is maintained since a goal in Martinez is to maintain shape at room temperature [0018] and for the composition to have a shelf life at room temperature for at least one month [0042]. Therefore, Martinez at least suggests a time frame that encompasses the claimed time frame. The selection of a value within the overlapping range renders the claim obvious. MPEP §2144.05.I.
The combination of Martinez and USDA does not disclose that the composition does not experience visible oil separation after storage at room temperature for at least 30 days. However, Martinez teaches that the composition holds its formed shape at room temperature [0018]. Since the composition maintains its shape at room temperature, this disclosure at least suggests that the ingredients in the composition remain in a combined state since the combined ingredients are what provides the shape-holding capacity in the composition as a whole. This disclosure also at least suggests that the ingredients remain in a combined state to maintain the shape of the composition for a time greater than 0 seconds and does not suggest that there is an upper limit to the amount of time that the shape is maintained. Therefore, Martinez at least suggests a time frame that overlaps the claimed time frame. The selection of a value within the overlapping range renders the claim obvious. MPEP §2144.05.I.
Also, since Martinez renders steps (i)-(vi) of the presently claimed method obvious as described above, it would have been obvious for the composition of Martinez to have the claimed lack of visible oil separation. When the ingredients in a composition and the method of making the composition recited in the reference are substantially identical to that of the claims, claimed properties are presumed to be present. “The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art' s function, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F .3d 1342, 1347, 51 USPQ2d 1943. 1947 (Fed. Cir. 1999). MPEP §2112.I.
Further, the Office does not have laboratory facilities to test claim limitations drawn toward results of practicing the method as claimed. Accordingly, the claimed retention of a knife path in the composition produced by the claimed method and the claimed lack of visible oil separation in the composition do not serve to distinguish the product as claimed from the prior art and are thus considered obvious to one having ordinary skill in the art.
Regarding claim 2, Martinez teaches the invention as described above in claim 1, including the shortening having a melting point of about 122° to about 140°F (corresponding to about 50°C to about 60°C) [0020], which falls within the claimed temperature range.
Regarding claim 3, Martinez teaches the invention as described above in claim 1, including the shortening is made from vegetable oil [0020].
Regarding claim 4, Martinez teaches the invention as described above in claim 1, including the composition of Martinez contains about 5 wt.% to about 25 wt.% of the fat system comprising a combination of shortening (corresponding to high melting point vegetable oil fractions) and fully hydrogenated soy oil [0020]. Therefore, Martinez discloses that the composition comprises amounts of shortening from an amount greater than 0 wt.% to an amount less than about 25 wt.%, which encompasses the claimed concentration. The selection of a value within the encompassing range renders the claim obvious. MPEP §2144.05.I.
Regarding claim 5, Martinez teaches the invention as described above in claim 1, including the composition contains fully hydrogenated soy oil [0020]. Since fully hydrogenated soy oil contains palmitic acid as evidenced by Ribeiro (page 403, 1st column, 1st paragraph under “3.1 Fatty acid composition in raw materials and blends”), the composition of Martinez contains palmitic acid as an additional long chain fatty acid.
Regarding claim 9, Martinez teaches the invention as described above in claim 1, including the composition comprises lecithin in an amount less than 2 wt.% [0025], which overlaps the claimed concentration. The selection of a value within the overlapping range renders the claim obvious. MPEP §2144.05.I.
Regarding claim 10, Martinez teaches the invention as described above in claim 1, including the nut butter comprises butter made from peanuts, almonds, cashews, macadamia nut, or walnuts [0019].
Regarding claim 12, Martinez teaches the invention as described above in claim 1, including the nut butter comprises peanut butter [0019].
Regarding claim 14, Martinez teaches the invention as described above in claim 1, including adding a health-promoting ingredient selected from plant extracts (corresponding to protein from soy protein concentrate or isolate and fiber from oat and corn) [0024].
Regarding claim 27, Martinez teaches the invention as described above in claim 14, including adding a plant extract as a health-promoting ingredient (corresponding to protein from soy protein concentrate or isolate and fiber from oat and corn) [0024].
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Martinez (US 2020/0120964; previously cited) in view of USDA (“Grading Manual for Peanut Butter”, 2011, USDA; page numbers of document relied on for citations; previously cited) as evidenced by Ribeiro (Ribeiro et al., “Zero trans fats from soybean oil and fully hydrogenated soybean oil: Physico-chemical properties and food applications”, 2009, Food Research International, vol., 42, pages 401-410; previously cited) and Chemical (“Stearic acid Properties”, 2024, Chemical Book, https://www.chemicalbook.com/ChemicalProductProperty_EN_CB4853859.htm; previously cited) as applied to claim 1 above, and further in view of Wilkes (US 2012/0164307; previously cited).
Regarding claim 11, Martinez teaches the invention as described above in claim 1, including the nut butter is peanut butter made from grinding nuts [0019]. Martinez also teaches that the nut butter is combined with an emulsifier and long chain fatty acids having 13-24 carbon atoms [0020]-[0022], [0025]. Martinez does not teach that the peanut butter has a melting point of at least 110°F.
However, Wilkes teaches a peanut butter composition [0001] made from the combination of peanut butter, long chain fatty acids having 13-24 carbon atoms (corresponding to stearidonic acid (SDA)), and an emulsifier [0042], [0058]-[0059]. Wilkes teaches that the nut butter is formed into a paste by grinding peanuts at temperatures of about 140°F to about 180°F [0058]. Since the nut butter is still in the form of a paste instead of a liquid, this disclosure of Wilkes suggests that the nut butter has a melting point higher than about 140°F to about 180°F, which falls within the claimed temperature range.
It would have been obvious for a person of ordinary skill in the art to have modified the peanut butter of Martinez to be the peanut butter of Wilkes. Since Martinez teaches the nut butter is peanut butter made from grinding nuts [0019] and that the nut butter is combined with an emulsifier and long chain fatty acids having 13-24 carbon atoms to form the composition [0020]-[0022], [0025], but does not disclose a method of making the peanut butter, a skilled practitioner would have been motivated to consult an additional reference in order to determine a suitable method of making a peanut butter to combine with an emulsifier and long chain fatty acid. In consulting Wilkes, the practitioner would find that a paste is formed at temperatures of about 140°F to about 180°F [0058], which suggests that the melting point of the peanut butter is higher than at least about 140°F since the peanut butter did not melt into a liquid. Therefore, the claim is rendered obvious.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Martinez (US 2020/0120964; previously cited) in view of USDA (“Grading Manual for Peanut Butter”, 2011, USDA; page numbers of document relied on for citations; previously cited) as evidenced by Ribeiro (Ribeiro et al., “Zero trans fats from soybean oil and fully hydrogenated soybean oil: Physico-chemical properties and food applications”, 2009, Food Research International, vol., 42, pages 401-410; previously cited) and Chemical (“Stearic acid Properties”, 2024, Chemical Book, https://www.chemicalbook.com/ChemicalProductProperty_EN_CB4853859.htm; previously cited) as applied to claim 14 above, and further in view of Perlman (US 10,532,076; previously cited).
Regarding claim 26, Martinez teaches the invention as described above in claim 14, including adding nut butter to the composition [0019]. Martinez does not teach that the health-promoting ingredient in the composition is a probiotic.
However, Perlman teaches a substantially anhydrous fatty food containing probiotics (column 1, lines 8-11), wherein the fatty food is nut butter (column 4, lines 56-60). Perlman teaches that probiotics provide health benefits to the consumer (column 1, lines 16-19).
It would have been obvious for a person of ordinary skill in the art to have modified the composition of Martinez to include probiotics as taught by Perlman. Since Martinez teaches that its composition comprises nut butter [0019], but does not disclose a specific composition of nut butter, a skilled practitioner would have been motivated to consult an additional reference such as Perlman in order to determine a suitable nut butter. In consulting Perlman, the practitioner would find that adding probiotics to a nut butter provides health benefits to the consumer; thereby rendering the claimed addition of probiotics as the health-promoting ingredient obvious.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Martinez (US 2020/0120964; previously cited) in view of USDA (“Grading Manual for Peanut Butter”, 2011, USDA; page numbers of document relied on for citations; previously cited) as evidenced by Ribeiro (Ribeiro et al., “Zero trans fats from soybean oil and fully hydrogenated soybean oil: Physico-chemical properties and food applications”, 2009, Food Research International, vol., 42, pages 401-410; previously cited) and Chemical (“Stearic acid Properties”, 2024, Chemical Book, https://www.chemicalbook.com/ChemicalProductProperty_EN_CB4853859.htm; previously cited) as applied to claim 1 above, and further in view of Chemical II (“Soybean oil, hydrogenated”, 2022, Chemical Book, https://web.archive.org/web/20220623122852/https://www.chemicalbook.com/ChemicalProductProperty_EN_CB6915339.htm; previously cited).
Regarding claim 29, Martinez teaches the invention as described above in claim 1, including adding fully hydrogenated soy oil to the composition [0020], wherein the fully hydrogenated soy oil contains stearic acid as evidenced by Ribeiro (page 402, 1st column, 2nd paragraph). Martinez does not teach that the stearic acid is added in the form of flakes.
However, Chemical II discloses that fully hydrogenated soy oil for food products occurs in various forms which include flakes (page 2, 2nd paragraph under “Chemical Properties”; page 2, paragraph under “Safety”).
It would have been obvious for a person of ordinary skill in the art to have modified the method of Martinez by adding fully hydrogenated soy oil, and consequently stearic acid, in the form of flakes as taught by Chemical II. Since Martinez discloses the addition of fully hydrogenated soy oil to the composition [0020], but does not disclose a suitable form of fully hydrogenated soy oil, a skilled practitioner would have been motivated to consult an additional reference such as Chemical II in order to determine a suitable form of fully hydrogenated soy oil. Selecting the flake form from the list of various forms disclosed in Chemical II is rendered obvious because doing so would be “choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.” MPEP §2143.I.E.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Martinez (US 2020/0120964; previously cited) in view of USDA (“Grading Manual for Peanut Butter”, 2011, USDA; page numbers of document relied on for citations) as evidenced by Ribeiro (Ribeiro et al., “Zero trans fats from soybean oil and fully hydrogenated soybean oil: Physico-chemical properties and food applications”, 2009, Food Research International, vol., 42, pages 401-410; previously cited) and Chemical (“Stearic acid Properties”, 2024, Chemical Book, https://www.chemicalbook.com/ChemicalProductProperty_EN_CB4853859.htm; previously cited) as applied to claim 1 above, and further in view of Michelle (Michelle, “How to Fill a Kong for Dogs”, 2018, Pooch Parenting, https://poochparenting.net/how-to-fill-a-kong-dogs/; previously cited).
Regarding claim 32, Martinez teaches the invention as described above in claim 1, including the nut butter composition [0002] is made from peanuts or almonds [0019] and that the nut butter composition is used to make layers in food products [0010]-[0011]. Martinez also teaches that the nut butter does not contain salt or xylitol (corresponding to the composition comprising a nut butter, a fat system, a sugar, and a firming agent) (Abstract). Martinez does not teach that the composition is inserted into a shaped toy for a companion animal.
However, Michelle teaches using peanut butter to seal a shaped toy for a companion animal (corresponding to Kong for a dog) containing dog food (page 2, step 7) and using peanut butter or almond butter to form layers of food filled within the dog toy (page 2, second bullet under “Mix It Up”). It also teaches that the peanut butter or almond butter does not contain salt or xylitol (page 2, second bullet under “Mix It Up”).
It would have been obvious for a person of ordinary skill in the art to have modified the multi-layered food product containing the nut butter composition of Martinez to be the shaped dog toy containing nut butter for a companion animal disclosed by Michelle. Since Martinez discloses that its nut butter composition [0002] is made from peanuts or almonds [0019] and that the nut butter composition is used to make layers in food products [0010]-[0011], but only exemplifies one type of multilayered food product (corresponding to a snack bar) [0041], a skilled practitioner would have been motivated to consult an additional reference such as Michelle in order to determine other suitable multi-layered food products in which to use a peanut butter or almond butter composition. Therefore, the claim is rendered obvious.
It is noted that claim 32 is directed toward an intended use of the product produced by the method of claim 1 and not directed toward a method of producing the product as claimed. Statements reciting the purpose or intended use of the claimed invention which do not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art apparatus (or process). MPEP §2111.02, §2112.02 and §2114-2115.
Response to Amendment
The Declaration under 37 CFR 1.132 filed 04/18/2026 is insufficient to overcome the rejections of claims 1-5, 9-12, 14, 16, 26-27, 29, and 31-32 based upon at least Martinez as set forth in the last Office action for the following reasons.
The Declaration argued that oil separation resistance property in nut butter is different from shape retention property in nut butter as a product may avoid oil separation but may not retain its shape and vice versa. The Declaration stated that these properties provide important desirable consumer advantages (Declaration, page 2, section I; page 3, section III).
However, even though a product “may” or “can” avoid oil separation but not retain its shape and vice versa, does not necessarily mean that a product “does” avoid oil separation while not retaining its shape. As such, even though the product of Martinez retains its shape, the product of Martinez may also avoid oil separation, especially wherein (A) Martinez renders steps (i)-(vi) of the presently claimed method obvious as described in the rejection of present claim 1 above, thus making it obvious for the composition of Martinez to have the claimed lack of visible oil separation and shape retention; and (B) the Declaration not demonstrating that the composition of the method of Martinez (or the composition of any method) does not have the claimed lack of visible oil separation and shape retention.
The Declaration then stated that the product produced by the presently claimed method resists oil separation for at least 30 days under room temperature storage conditions and retains a knife path for at least 12 hours while maintaining spreadability. The Declaration stated that typical equivalent products made from other methods in the field exhibit oil separation after 15 days and knife path retention of less than 1 hour (Declaration, page 2, section II).
However, it is not clear what is a “typical equivalent product” or what the “other methods” are. Neither the Declaration nor the present specification have provided data comparing any method and any product thereof with the claimed method and the product thereof. Therefore, arguments regarding such in the Declaration are not supported.
For at least these reasons, the Declaration is insufficient to overcome the rejections of claims 1-5, 9-12, 14, 16, 26-27, 29, and 31-32 as set forth in the last Office action.
Response to Arguments
Claim Rejections – 35 U.S.C. §103 of claims 1-5, 9-10, 12, 14, 16, 27, and 31 over Martinez and USDA as evidenced by Ribeiro and Chemical: Applicant’s amendments and arguments have been fully considered and are considered unpersuasive.
Applicant canceled claims 16 and 31. Applicant argued that Martinez does not contemplate performing a knife path test; and does not teach or suggest a process that produces a composition that can retain a knife path for at least 12 hours and which is spreadable at room temperature. Applicant argued that the term “spreadable” is defined in [0015] of the present specification as meaning that the composition spreads easily on fresh bread having a moderately dense crumb without appreciable tearing or breaking of the bread at room temperature (Applicant’s Remarks, page 5, 1st-5th paragraphs).
However, in response to Applicant’s assertions that Martinez does not contemplate performing a knife path test, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Since Martinez discloses that its composition is a nut butter that has a consistency that allows it to hold its formed shape at room temperature [0018], but does not disclose a method of testing whether the composition actually maintains its shape at room temperature, a skilled practitioner would have been motivated to consult an additional reference such as USDA in order to determine a suitable test method. USDA discloses that a test for the consistency of a nut butter comprises inserting a table knife approximately 2.5 inches into the nut butter at an approximate 45° angle and observing the time at which the knife path collapses (page 9, 2nd paragraph). Therefore, the combination of Martinez and USDA render performing a knife path test obvious. As such, Applicant’s arguments regarding such a feature are unpersuasive.
The Examiner also points out that the claimed step (vii) of testing the composition’s consistency is not considered to be a step required in “manufacturing a protein-rich supplement composition” as presently claimed. Claimed step (vii) is a method of testing the consistency of the already-manufactured composition; and thus, amounts to a statement of intended use of the manufactured composition. Statements reciting the purpose or intended use of the claimed invention which do not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art apparatus (or process). See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). MPEP §2111.02, §2112.02 and §2114-2115.
In response to Applicant’s assertions regarding Martinez not teaching or suggesting that its method produces a composition that can retain a knife path for at least 12 hours, the combination of Martinez and USDA also at least suggests that the composition retains a knife path for a time greater than 0 seconds and does not suggest that there is an upper limit to the amount of time that the shape is maintained since a goal in Martinez is to maintain shape at room temperature [0018] and for the composition to have a shelf life at room temperature for at least one month [0042]. Therefore, Martinez at least suggests a time frame that encompasses the claimed time frame. The selection of a value within the encompassing range renders the claim obvious. MPEP §2144.05.I. As such, Applicant’s arguments regarding such a feature are unpersuasive.
In response to Applicant’s assertions regarding Martinez not teaching or suggesting that its method produces a composition that is spreadable at room temperature, according to the definition of the term “spreadable” in [0015] of the present specification, [0015] of the present specification states “ “Spreadable,” “spreadability,” and variations thereof have a standard meaning as understood by persons skilled in the art”. The same paragraph merely recites that the composition “preferably” spreads easily on fresh bread having a moderately dense crumb without appreciable tearing or breaking of the bread. The term “preferably” used in conjunction with the spreading easily on fresh bread and the clear definition provided for the term “spreadable” in the first two lines of [0015] means that the term “spreadable” in the claims is not defined as being easily spread on bread. Therefore, Applicant’s arguments regarding such a definition are not supported.
Furthermore, even if this asserted definition were used, such a definition would be rendered indefinite as “fresh”, “moderately dense”, and “appreciable” are relative terms which are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Applicant then argued that a particular parameter must be first recognized as a result-effective variable and that there is nothing of record to establish that the teachings of Martinez are art-recognized result-effective variables. As such, Applicant argued that there would be no motivation of a skilled practitioner to optimize or modify the teachings of Martinez (Applicant’s Remarks, page 5, 6th paragraph – page 6, 2nd paragraph).
However, the statement regarding “optimization” made in the 9th paragraph of the previous Office Action was in relation to Martinez at least suggesting a stearic acid concentration which encompasses the claimed stearic acid concentration. An encompassing range disclosed in the prior art renders the claimed concentration obvious. MPEP §2144.05.I. There is no need to provide a basis for optimization of encompassing ranges as Applicant has not provided any evidence that such a stearic acid concentration is critical to the present invention. MPEP §2144.05.II.A. Therefore, Applicant’s arguments regarding optimization and result-effective variables are unpersuasive.
Applicant then argued that Martinez teaches using methods outside of room temperature to create a flat “sheet” of its composition; and teaches that the sheeted composition is resistant to spreading when a force is applied. For these reasons, Applicant argued that Martinez does not contemplate producing a composition that can be spread on fresh bread at room temperature and thus, teaches away from the claimed invention (Applicant’s Remarks, page 6, 3rd-4th paragraphs).
However, as described in the responses above, the present claims do not require the composition to be spread onto fresh bread at room temperature or onto any surface at any temperature at all. Therefore, Martinez cannot be said to teach away from the current invention and Applicant’s arguments regarding such a feature are unpersuasive.
Applicant then argued that Martinez does not teach or suggest multiple aspects of the present invention such as the specific order of steps recited in present claim 1. Applicant argued that a skilled practitioner would have no reason to modify the teachings of Martinez to arrive at the claimed invention (Applicant’s Remarks, page 6, 5th paragraph - page 7, 3rd paragraph’ page 9, 3rd paragraph).
However, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As described above in the rejection of present claim 1 and in the responses above, present claim 1 is rejected by the combination of Martinez and USDA as evidenced by Ribeiro and Chemical, not by Martinez alone. The combination of cited references at least suggests all of the steps recited in present claim 1. Specifically in regard to the order of steps recited in present claim 1, the “selection of any order of mixing ingredients is prima facie obvious”. See MPEP §2144.04.IV(C), especially in view of there not being any asserted criticality assigned to the order of claimed method steps and in view of Martinez disclosing that the ingredients can be combined in any appropriate method [0027]. For at least these reasons, a skilled practitioner would have reason to modify teachings of Martinez to arrive at the presently claimed order of mixing steps. As such, Applicant’s arguments regarding such features are unpersuasive.
Applicant then argued that the claimed process produces a composition that is surprisingly spreadable at room temperature and excels at the knife test which are advantageous qualities for consumers. Applicant argued that these advantageous qualities are the result of the claimed process, not just the ingredients, as other processes produce products lacking these qualities even when the other processes use the same ingredients. Applicant stated that this is evidence of non-obviousness of the claimed process (Applicant’s Remarks, page 7, 4th – 6th paragraphs- page 9, 4th-5th paragraphs).
However, Applicant has not provided any evidence comparing: test data from a product made by the presently claimed process with test data from the same product made by any other process; or test data from a product comprising the claimed ingredients made using the claimed process with test data from a product comprising different ingredients and/or different concentrations of the same ingredients made using the claimed process. Therefore, Applicant has not provided any evidence to demonstrate that any characteristic of the product made by the presently claimed process is the result of the process itself or the ingredients within the product. As such, Applicant’s arguments regarding such features are unpersuasive.
Applicant then argued that the ability of nut butter to resist oil separation is a property distinct from retaining shape. Applicant pointed to the Declaration filed 04/18/2026 for support in this stance (Applicant’s Remarks, page 7, 7th paragraph – page 8, 3rd paragraph; page 9, 2nd paragraph).
See the section labeled “Response to Amendment” above.
Applicant then argued that the cited art does not disclose or suggest a process that results in a product with the recited oil separation resistance (Applicant’s Remarks, page 8, 4th paragraph).
However, as described above in the rejection of present claim 1, Martinez teaches that the composition holds its formed shape at room temperature [0018]. Since the composition maintains its shape at room temperature, this disclosure at least suggests that the ingredients in the composition remain in a combined state since the combined ingredients are what provides the shape-holding capacity in the composition as a whole. This disclosure also at least suggests that the ingredients remain in a combined state to maintain the shape of the composition. Also, since Martinez renders steps (i)-(vi) of the presently claimed method obvious as described above, it would have been obvious for the composition of Martinez to have the claimed lack of visible oil separation. When the ingredients in a composition and the method of making the composition recited in the reference are substantially identical to that of the claims, claimed properties are presumed to be present. MPEP §2112.I. Further, the Office does not have laboratory facilities to test claim limitations drawn toward results of practicing the method as claimed. Accordingly, the claimed lack of visible oil separation in the composition does not serve to distinguish the product as claimed from the prior art and is thus considered obvious to one having ordinary skill in the art.
Applicant argued that the USDA reference teaches a knife test with a threshold of path collapse of “within 3 seconds” which is not close to the claimed time of at least 12 hours. Applicant added that the primary purpose for performing the knife test in the USDA reference is for categorization of the composition, not to measure shape retention, so that a skilled practitioner would not be motivated to consult the USDA reference to measure shape retention (Applicant’s Remarks, page 8, 5th paragraph – page 9, 1st paragraph).
However, in response to Applicant’s assertions that the USDA reference teaches a knife test with a threshold of path collapse of “within 3 seconds” which is not close to the claimed time of at least 12 hours, the USDA reference discloses a time frame of “within 3 seconds” in relation to nut butters have a Grade of B and below. Since the USDA reference discloses nut butters having a Grade of A, USDA discloses nut butter that retains a knife path for a time period of greater than 3 seconds, which is a range that includes the presently claimed at least 12 hours.
In response to Applicant’s assertions that Martinez does not exclude its nut butter composition from being graded; and Martinez discloses that its nut butter composition has a consistency that allows it to hold its formed shape at room temperature [0018]. Therefore, even if a knife test for consistency is typically associated with grading of nut butter, Martinez does not exclude such a test from being performed. Therefore, Applicant’s arguments regarding combining Martinez with the USDA reference are unpersuasive.
For at least the reasons discussed above, the prior art is shown to render the present claims obvious and Applicant’s arguments have been shown to be unpersuasive. Therefore, the rejections of the claims are maintained as written herein.
Claim Rejections – 35 U.S.C. §103 of claim 11 over Martinez, USDA, and Wilkes as evidenced by Ribeiro and Chemical; claim 26 over Martinez, USDA, and Perlman as evidenced by Ribeiro and Chemical; claim 29 over Martinez, USDA, and Chemical II as evidenced by Ribeiro and Chemical; claim 32 over Martinez, USDA, and Michelle as evidenced by Ribeiro and Chemical: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant argued that none of Wilkes, Perlman, Chemical II, and Michelle remedy the aforementioned deficiencies of Martinez and USDA in regard to present claim 1 (Applicant’s Remarks, page 9, 6th paragraph - page 11, 7th paragraph).
However, as discussed above in the rejection of present claim 1 and in the responses above, Martinez and USDA were shown to sufficiently render present claim 1 obvious. Therefore, Applicant’s arguments regarding Wilkes, Perlman, Chemical II, and Michelle are unpersuasive and the rejections of the claims are maintained as written herein.
Conclusion
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/KELLY P KERSHAW/Examiner, Art Unit 1791
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