DETAILED ACTION
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 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 reply dated 09 September 2025 to the restriction requirement mailed 15 July 2025 has been received. Applicant has elected Group II, claims 14 – 29 without traverse for prosecution on the merits. Claims 1 – 13 are withdrawn from further consideration and an action on the merits of claims 14 – 29 follows.
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.
Claims 14 – 29 are rejected under 35 U.S.C. 103 as being unpatentable over Ravji et al. US 2012/0096876 in view of Gabby et al. US 3,800,036 in view of Vaghela et al. US 2003/0134025.
Regarding claims 14, 15, and 19 – 21, Ravji discloses a system (1) capable of producing a single serving of a frozen protein shake which system comprises a pod (container 20) comprising a paddle (scrapper 24) rotatably disposed within the pod and ingredients (23) (fig. 9). There is a machine (device 1) comprising a cooling system (compressor) capable of cooling the ingredients of the pod while the machine rotates the paddle to product the single serving of the frozen protein shake while the pod is received in a receptacle of the machine (paragraph [0039]). The machine is capable of rotating the paddle to remove ice crystals from a sidewall of the pod to produce the single serving of the frozen protein shake (paragraph [0052] – [0065]).
Claims 14, 15, and 19 – 21 differ from Ravji in the ingredients having at least 10 grams of protein, a specific protein, and the amounts thereof.
Gabby discloses that it was quite old and conventional in the art to provide ingredients to produce a frozen protein shake (ice milk or a reduced fat imitation ice cream shakes) designed to have a low fat content while designed to have the appearance and taste of a full flavoured protein, i.e., ice cream, shake. Gabby further discloses that the ingredients within the pod would include at least 10 grams of protein (70 g. of soy proteinate containing approximately 81 percent soy protein = 56.7 grams of protein) (example 7) which is in the form of a powder (dry blend mix) (example 5). Once it was known to provide the pod of Ravji with a mixture, that is ingredients to produce a frozen confection, which is what a frozen protein shake is, the substitution of the ingredients in the pod to make the frozen confection of Ravji with the ingredients of Gabby to make a frozen protein shake to obtain predictable results would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Gabby further discloses that it is important to reduce ice crystallization to maintain a desirable texture in the frozen protein shake
Claim 14 differs from Ravji in view of Gabby in the frozen protein shake having a majority of ice crystals smaller than 50 µm.
Vaghela discloses that in the partial freezing of a mixture capable of producing a frozen protein shake in order to have a smooth texture it is important to maintain an ice crystal size of smaller than 50 µm (less than about 30 µm) (paragraph [0008]) and that maintaining an ice crystal size of about 25 µm would maintain a smoother and creamier texture and mouth feel (paragraph [0045]). To therefore modify Ravji in view of Gabby if necessary and have a majority of ice crystals smaller than 50 µm as taught by Vaghela to maintain a smoother and creamier texture and mouth feel would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Regarding claims 16 and 17, once it was known to provide a frozen protein shake it is not seen that patentability would be predicated on the specific size of said shake. The mere scaling up of a prior art frozen protein shake capable of being scaled up, if such were the case, would not establish patentability in a claim to an old frozen shake so scaled. Where the only difference between the prior art and the claims was a recitation of relative size of the claimed frozen protein shake and a frozen protein shake having the claimed relative size would not perform differently than the prior art frozen protein shake, the claimed frozen protein shake is not patentably distinct from the prior art frozen protein shake (MPEP § 2144.04 IV.A.).
Nevertheless, Ravji in view of Gabby in view of Vaghela disclose the single serving of the frozen shake would be at least 3 ounces (100 grams = 3.527 ounces) (‘036, col. 2, ln 27 – 31) and less than 8 ounces (5 ounces) (col. 8, ln 21 – 23).
Regarding claim 18, Ravji in view of Gabby in view of Vaghela disclose the frozen protein shake would have less than 200 calories (about 100 calories per 100 grams) (‘036, col. 2, ln 27-31).
Regarding claim 22, Ravji in view of Gabby in view of Vaghela disclose the ingredients would include between 3% and 10% of milk fat (about 0.5% to about 18%) (‘025, paragraph [0027]) (dairy fat) (‘025, paragraph [0029]).
Claims 23 and 29 are rejected over Ravji in view of Gabby in view of Vaghela for the same reasons given above in the rejection of claim 14. Further regarding claim 14, Ravji discloses the pod would comprise a body having a sidewall extending from a first end of the pod to a second send of the pod, with the first end (38) capable of being opened by an application of a force to dispense the single serving of the protein shape therethrough (paragraph [0032] and fig. 9).
Claim 24 is rejected over Ravji in view of Gabby in view of Vaghela for the same reasons given above in the rejections of claim 16.
Claim 25 is rejected over Ravji in view of Gabby in view of Vaghela for the same reasons given above in the rejections of claim 18.
Claim 26 is rejected over Ravji in view of Gabby in view of Vaghela for the same reasons given above in the rejections of claim 15.
Claim 27 is rejected over Ravji in view of Gabby in view of Vaghela for the same reasons given above in the rejections of claim 19.
Regarding claim 28, Ravji in view of Gabby in view of Vaghela disclose the pod would be capable of rotatably coupled to a machine capable of producing the single serving of the frozen protein shake through the second end of the body of the pod (paragraph [0072] and fig. 12a/12b).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 23 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 25 of Fonte U.S. Patent No. 10,358,284 in view of Gabby U.S. Patent No. 3,800,036 in view of Baghela et al. U.S. Patent Application Publication 2003/0134025.
The claims of the instant application and the ‘284 patent both recite a pod that contains ingredients for producing a frozen substance that would be ingestible having a body having a sidewall extending from a first end of the pod to a second end of the pod with an end configured to be opened by a force and a paddle rotatably disposed in the body of said pod. Claim 23 differs from the ‘284 patent in the ingredients having at least 10 grams of protein, a specific protein, and the amounts thereof.
Gabby discloses that it was quite old and conventional in the art to provide ingredients to produce a frozen protein shake designed to have a low fat content while designed to have the appearance and taste of a full flavoured protein, i.e., ice cream, shake and that the ingredients within the pod would include at least 10 grams of protein. Once it was known to provide the pod of Ravji with a mixture, that is ingredients to produce a frozen confection, which is what a frozen protein shake is, the substitution of the ingredients in the pod to make the frozen confection of Ravji with the ingredients of Gabby to make a frozen protein shake to obtain predictable results would have been an obvious matter of choice and/or design to the ordinarily skilled artisan. Regarding the frozen protein shake having a majority of ice crystals smaller than 50 µm Gabby further discloses that it is important to reduce ice crystallization to maintain a desirable texture in the frozen protein shake. Vaghela discloses that in the partial freezing of a mixture capable of producing a frozen protein shake in order to have a smooth texture it is important to maintain an ice crystal size of smaller than 50 µm (less than about 30 µm) (paragraph [0008]) and that maintaining an ice crystal size of about 25 µm would maintain a smoother and creamier texture and mouth feel (paragraph [0045]). To therefore modify Ravji in view of Gabby if necessary and have a majority of ice crystals smaller than 50 µm as taught by Vaghela to maintain a smoother and creamier texture and mouth feel would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Claim 23 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 25 of Fonte U.S. Patent No. 10,543,978 in view of Gabby U.S. Patent No. 3,800,036 in view of Baghela et al. U.S. Patent Application Publication 2003/0134025.
The claims of the instant application and the ‘978 patent both recite a pod that contains ingredients for producing a frozen substance that would be ingestible having a body having a sidewall extending from a first end of the pod to a second end of the pod with an end configured to be opened by a force and a paddle rotatably disposed in the body of said pod. Claim 23 differs from the ‘978 patent in the ingredients having at least 10 grams of protein, a specific protein, and the amounts thereof.
Gabby discloses that it was quite old and conventional in the art to provide ingredients to produce a frozen protein shake designed to have a low fat content while designed to have the appearance and taste of a full flavoured protein, i.e., ice cream, shake and that the ingredients within the pod would include at least 10 grams of protein. Once it was known to provide the pod of Ravji with a mixture, that is ingredients to produce a frozen confection, which is what a frozen protein shake is, the substitution of the ingredients in the pod to make the frozen confection of Ravji with the ingredients of Gabby to make a frozen protein shake to obtain predictable results would have been an obvious matter of choice and/or design to the ordinarily skilled artisan. Regarding the frozen protein shake having a majority of ice crystals smaller than 50 µm Gabby further discloses that it is important to reduce ice crystallization to maintain a desirable texture in the frozen protein shake. Vaghela discloses that in the partial freezing of a mixture capable of producing a frozen protein shake in order to have a smooth texture it is important to maintain an ice crystal size of smaller than 50 µm (less than about 30 µm) (paragraph [0008]) and that maintaining an ice crystal size of about 25 µm would maintain a smoother and creamier texture and mouth feel (paragraph [0045]). To therefore modify Ravji in view of Gabby if necessary and have a majority of ice crystals smaller than 50 µm as taught by Vaghela to maintain a smoother and creamier texture and mouth feel would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Claim 23 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 25 of Fonte U.S. Patent No. 11,627,747 in view of Gabby U.S. Patent No. 3,800,036 in view of Baghela et al. U.S. Patent Application Publication 2003/0134025.
The claims of the instant application and the ‘747 patent both recite a pod that contains ingredients for producing a frozen substance that would be ingestible having a body having a sidewall extending from a first end of the pod to a second end of the pod with an end configured to be opened by a force and a paddle rotatably disposed in the body of said pod. Claim 23 differs from the ‘747 patent in the ingredients having at least 10 grams of protein, a specific protein, and the amounts thereof.
Gabby discloses that it was quite old and conventional in the art to provide ingredients to produce a frozen protein shake designed to have a low fat content while designed to have the appearance and taste of a full flavoured protein, i.e., ice cream, shake and that the ingredients within the pod would include at least 10 grams of protein. Once it was known to provide the pod of Ravji with a mixture, that is ingredients to produce a frozen confection, which is what a frozen protein shake is, the substitution of the ingredients in the pod to make the frozen confection of Ravji with the ingredients of Gabby to make a frozen protein shake to obtain predictable results would have been an obvious matter of choice and/or design to the ordinarily skilled artisan. Regarding the frozen protein shake having a majority of ice crystals smaller than 50 µm Gabby further discloses that it is important to reduce ice crystallization to maintain a desirable texture in the frozen protein shake. Vaghela discloses that in the partial freezing of a mixture capable of producing a frozen protein shake in order to have a smooth texture it is important to maintain an ice crystal size of smaller than 50 µm (less than about 30 µm) (paragraph [0008]) and that maintaining an ice crystal size of about 25 µm would maintain a smoother and creamier texture and mouth feel (paragraph [0045]). To therefore modify Ravji in view of Gabby if necessary and have a majority of ice crystals smaller than 50 µm as taught by Vaghela to maintain a smoother and creamier texture and mouth feel would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Conclusion
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/C.S./
Chaim SmithExaminer, Art Unit 1791 04 December 2025
/VIREN A THAKUR/Primary Examiner, Art Unit 1792