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 .
Claim Objections
Claims 1, 4-5, 9, 12, and 17-18 are objected to because of the following informalities: there appears to be typographical errors in each claim as the temperatures recited include a comma (such as “92,5” in claims 1 and 12; “72,5” in claims 4 and 17; “22,5” and “32,5” in claims 5 and 18; and “8,5”, “2,2”, and “3,9” in claim 9), and instead the comma should be replaced with a period.
Claim 11 is objected to as it is missing a period at the end of the claim.
Appropriate correction is required.
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 2-6, 11 and 16-20 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 2, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claims 3-5 and 16-18, the phrase "preferably" renders the claim indefinite because a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the above claims recite a broad recitation, and the claims also recite a narrower statement of the range/limitation. The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claims 3 and 16, the last phrase of the claims state a “viscosity between 76 s at a temperature…”. This limitation is indefinite as it is not clear what the viscosity is between since only one number, 76, is recited.
Regarding claims 6 and 19, the limitation “conventional batter ingredient is selected from….” is indefinite as it is unclear if only one ingredient is selected or is more than one is selected. Claims 6 and 19 depend from claim 1, which recites ingredients in the plural form indicating that more than one ingredient is present, however, claims 6 and 19 recite ingredient in the singular form, which infers that only one ingredient has to be selected. Therefore, it is not clear as to how many ingredients are actually required.
Regarding claim 11, the temperature range of 25 to 35 is indefinite as the temperature range does not include a unit of measure and therefore it is not clear if the temperature is in C or F.
Claim 20 is included as it depends from rejected claim 2.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Carder et al. (US 2014/0193563 A1; July 10, 2014) in view of Triantafyllou Oste et al. (US 2004/0043123 A1; March 4, 2004).
Regarding claim 1, Carder discloses an oat flour suspension that can be used as in ingredient in pancakes (e.g. an ingredient in a batter for a pancake product as pancakes are made using a batter), wherein the oat flour suspension is obtained by mixing oat flour and water to obtain a mixture, wherein the amount of oat flour is 2-10% by weight of the mixture (See Figure 2, [0046]-[0050]), thus overlapping the claimed range of 8-12% by weight of the mixture. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Carder further teaches heating the mixture to a temperature of 90 C for at least 25 minutes to allow gelatinization ([0047]), thus falling within the claimed range of 70-92.5 C for 15-70 minutes, followed by cooling to allow for blending with other ingredients ([0047]).
With respect to the temperature for cooling, Carder fails to specifically teach a temperature in the range of 20 to 50 C, however, it would have been obvious to one of ordinary skill in the art to determine the optimum temperature for cooling depending on the desired texture and use of the oat suspension when it is blended with other ingredients. As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Carder teaches that the oat flour suspension has a viscosity of around 16000 cp when the suspension comprises 8% oat flour at 24 C (Fig 2, [0050]), wherein the weight percent of oat flour in the suspension affects the viscosity as shown in Fig 2. The claim requires a viscosity of 56 s to 155 s at a temperature of 20-25 C, which according to the instant specification corresponds to between 3.0 x 103 and 4.9 x 107 mPa.s, or 3.0 x 103 and 4.9 x 107 cp. Therefore, Carder teaches an oat flour suspension having a viscosity within the claimed range when the oat flour is present in an amount of 8% by weight. Further, it would have been obvious to one of ordinary skill in the art to vary the amount of oat flour and water in the suspension to achieve a desired viscosity.
While Carder teaches a pancake product comprising the oat suspension, Carder fails to further teach providing conventional batter ingredients and mixing the oat suspension with the batter ingredients to obtain a batter for a pancake product.
Triantafyllou discloses a pancake batter prepared from an oat base, wherein the oat base is combined with conventional batter ingredients (Example 1-2, [0048]-[0057], [0074]-[0075]).
As Carder teaches a pancake product comprising an oat suspension and Triantafyllou teaches that it is well known in the art to mix an oat base with conventional batter ingredients to provide a pancake batter, it would have been obvious to provide conventional batter ingredients in the method of Carder in order to make a conventional pancake product.
Regarding claim 2, as stated above, Carder teaches that the oat flour suspension is obtained by mixing oat flour and water to obtain a mixture, wherein the amount of oat flour is 2-10% by weight of the mixture (See Figure 2, [0046]-[0050]), thus overlapping the claimed range of 9-11% by weight of the mixture. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claim 3, as stated above, Carder teaches that the oat flour suspension has a viscosity of around 16000 cp when the suspension comprises 8% oat flour at 24 C (Fig 2, [0050]), wherein the weight percent of oat flour in the suspension affects the viscosity as shown in Fig 2. The claim requires a viscosity of 61 s to 118 s at a temperature of 20-25 C, or 66 s to 98 s at 20-25 C, or 70 s to 86 s at 20-25 C, which according to the instant specification corresponds to between 4.9 x 103 and 1.3 x 106 mPa.s, or 4.9 x 103 and 1.3 x 106 cp. Therefore, Carder teaches an oat flour suspension having a viscosity within the claimed ranges when the oat flour is present in an amount of 8% by weight. Further, it would have been obvious to one of ordinary skill in the art to vary the amount of oat flour and water in the suspension to achieve a desired viscosity.
Regarding claim 4, as stated above, Carder teaches heating the mixture to a temperature of 90 C to allow gelatinization ([0047]), thus falling within the claimed range of 72.5-90 C.
Regarding claim 5, as stated above, Carder fails to specifically teach cooling to a temperature in the range of 22.5 to 45 C, however, it would have been obvious to one of ordinary skill in the art to determine the optimum temperature for cooling depending on the desired texture and use of the oat suspension when it is blended with other ingredients. As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding claim 6, as state above, Triantafyllou discloses a pancake batter prepared from an oat base, wherein the oat base is combined with convention batter ingredients (Example 1-2, [0048]-[0057], [0074]-[0075]).
Triantafyllou teaches that the conventional batter ingredients include oil, salt, egg, and sugar additives ([0038], See Examples 1-2).
It would have been obvious to use the same conventional batter ingredients as taught by Triantafyllou in the pancake product of Carder in order to provide a conventional pancake product.
Regarding claim 7, Carder teaches that the pancake product comprises the oat suspension, which comprises 2-10% oat flour and therefore 90-98% water ([0046]-[0050], but fails to specifically disclose the water content of the prepared batter.
Triantafyllou teaches a pancake batter comprising a high-water activity ([0016]), but fails to specifically disclose the water content of the prepared batter.
It would have been obvious to one of ordinary skill in the art to vary the water content of the prepared batter depending on the desired thickness and texture of the pancake as a higher water content will result in a thinner pancake. This is merely routine experimentation that is well within the ordinary skill in the art. As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding claim 8, as stated above with respect to claim 1, Carder in view of Triantafyllou teach a batter obtained by the method of claim 1.
Regarding claim 9, as stated above, Carder teaches the viscosity of the oat suspension (Fig 2), but fails to teach a viscosity of pancake batter.
Triantafyllou teaches a pancake batter comprising a viscosity of 5000 cp to 60,000 cp at 4C ([0019]), which is 5,000 mPa.s to 60,000 mPa.s. Triantafyllou, however, fails to teach the viscosity at the claimed temperature of 20-25 C.
However, it would have been obvious to one of ordinary skill in the art to vary the amount of ingredients in the batter to result in a desired viscosity. It is well known in the art that pancakes can have different thicknesses and texture and therefore one of ordinary skill in the art can vary the amount of ingredients to result in a desired viscosity in order to provide a desired pancake product. This is merely routine experimentation that is well within the ordinary skill in the art.
Regarding claim 10, as stated above with respect to claim 8, Carder in view of Triantafyllou teach a batter obtained by the method of claim 1.
Carder teaches preparing a pancake product ([0044]) and Triantafyllou teaches preparing a pancake product from a batter of conventional ingredients (See Examples 1-2).
Therefore, as stated above, the combined teachings render obvious a method for manufacturing a pancake product comprising provided a batter according to claim 8.
While the prior art fails to specifically teach applying the batter to a heating plate and baking the batter, both Carder and Triantafyllou teach a final pancake product, which is well known in the art to be made by applying the batter to a heated surface and cooking. Triantafyllou further teaches a ready to use batter for pancakes ([0043]).
As it is well known in the art to make pancakes by applying batter to a heating plate and cooking the batter, it would have been obvious to one of ordinary skill in the art to use the batter of Carder in view of Triantafyllou in the conventional way of making pancakes (e.g. applying batter to a heating plate and cooking the batter).
Regarding claim 11, Triantafyllou further teaches pre-heating the batter to lower microbial count ([0043]). With respect to the temperature, it is not clear what unit of measurement the temperature is. Further, it would have been obvious to vary the temperature for pre-heating depending on the desired properties of the batter before consuming as taught by Triantafyllou.
Regarding claim 12, as stated above, Carder in view of Triantafyllou teach a batter obtained by the method of claim 1.
Carder discloses an oat flour suspension that can be used as in ingredient in pancakes (e.g. an ingredient in a batter for a pancake product as pancakes are made using a batter), wherein the oat flour suspension is obtained by mixing oat flour and water to obtain a mixture, wherein the amount of oat flour is 2-10% by weight of the mixture (See Figure 2, [0046]-[0050]), thus overlapping the claimed range of 8-12% by weight of the mixture. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Carder further teaches heating the mixture to a temperature of 90 C for at least 25 minutes to allow gelatinization ([0047]), thus falling within the claimed range of 70-92.5 C for 15-70 minutes, followed by cooling to allow for blending with other ingredients ([0047]).
With respect to the temperature for cooling, Carder fails to specifically teach a temperature in the range of 20 to 50 C, however, it would have been obvious to one of ordinary skill in the art to determine the optimum temperature for cooling depending on the desired texture and use of the oat suspension when it is blended with other ingredients. As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Carder teaches that the oat flour suspension has a viscosity of around 16000 cp when the suspension comprises 8% oat flour at 24 C (Fig 2, [0050]), wherein the weight percent of oat flour in the suspension affects the viscosity as shown in Fig 2. The claim requires a viscosity of 56 s to 155 s at a temperature of 20-25 C, which according to the instant specification corresponds to between 3.0 x 103 and 4.9 x 107 mPa.s, or 3.0 x 103 and 4.9 x 107 cp. Therefore, Carder teaches an oat flour suspension having a viscosity within the claimed range when the oat flour is present in an amount of 8% by weight. Further, it would have been obvious to one of ordinary skill in the art to vary the amount of oat flour and water in the suspension to achieve a desired viscosity.
While Carder teaches a pancake product comprising the oat suspension, Carder fails to further teach providing conventional batter ingredients and mixing the oat suspension with the batter ingredients to obtain a batter for a pancake product.
Triantafyllou discloses a pancake batter prepared from an oat base, wherein the oat base is combined with convention batter ingredients (Example 1-2, [0048]-[0057], [0074]-[0075]).
As Carder teaches a pancake product comprising an oat suspension and Triantafyllou teaches that it is well known in the art to mix an oat base with conventional batter ingredients to provide a pancake batter, it would have been obvious to provide conventional batter ingredients in the method of Carder in order to make a conventional pancake product.
Regarding claim 13, as stated above, the combined prior art renders obvious a pancake product. Carder further teaches that the product can be a crepe ([0044]).
Regarding claim 14, as stated above with respect to claim 10, Carder in view of Triantafyllou render obvious a pancake product obtained by the method of claim 10. Carder teaches preparing a pancake product ([0044]) and Triantafyllou teaches preparing a pancake product from a batter of conventional ingredients (See Examples 1-2).
Regarding claim 15, as stated above, the combined prior art renders obvious a pancake product. Carder further teaches that the product can be a crepe ([0044]).
Regarding claim 16, as stated above, Carder teaches that the oat flour suspension has a viscosity of around 16000 cp when the suspension comprises 8% oat flour at 24 C (Fig 2, [0050]), wherein the weight percent of oat flour in the suspension affects the viscosity as shown in Fig 2. The claim requires a viscosity of 61 s to 118 s at a temperature of 20-25 C, or 66 s to 98 s at 20-25 C, or 70 s to 86 s at 20-25 C, which according to the instant specification corresponds to between 4.9 x 103 and 1.3 x 106 mPa.s, or 4.9 x 103 and 1.3 x 106 cp. Therefore, Carder teaches an oat flour suspension having a viscosity within the claimed ranges when the oat flour is present in an amount of 8% by weight. Further, it would have been obvious to one of ordinary skill in the art to vary the amount of oat flour and water in the suspension to achieve a desired viscosity.
Regarding claim 17, as stated above, Carder teaches heating the mixture to a temperature of 90 C to allow gelatinization ([0047]), thus falling within the claimed range of 72.5-90 C.
Regarding claim 18, as stated above, Carder fails to specifically teach cooling to a temperature in the range of 22.5 to 45 C, however, it would have been obvious to one of ordinary skill in the art to determine the optimum temperature for cooling depending on the desired texture and use of the oat suspension when it is blended with other ingredients. As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding claim 19, as state above, Triantafyllou discloses a pancake batter prepared from an oat base, wherein the oat base is combined with convention batter ingredients (Example 1-2, [0048]-[0057], [0074]-[0075]).
Triantafyllou teaches that the conventional batter ingredients include oil, salt, egg, and sugar additives ([0038], See Examples 1-2).
It would have been obvious to use the same conventional batter ingredients as taught by Triantafyllou in the pancake product of Carder in order to provide a conventional pancake product.
Regarding claim 20, Carder teaches that the pancake product comprises the oat suspension, which comprises 2-10% oat flour and therefore 90-98% water ([0046]-[0050], but fails to specifically disclose the water content of the prepared batter.
Triantafyllou teaches a pancake batter comprising a high-water activity ([0016]), but fails to specifically disclose the water content of the prepared batter.
It would have been obvious to one of ordinary skill in the art to vary the water content of the prepared batter depending on the desired thickness and texture of the pancake as a higher water content will result in a thinner pancake. This is merely routine experimentation that is well within the ordinary skill in the art. As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791