Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 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.
Claim 12 is 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. Claim 12 requires that 53 grams of canola oil is added to the dough during a kneading and folding process. The instant specification does not provide clear support for this step, but does disclose 5 dough containers are obtained and four of the interiors are coated with 12 grams of canola oil and the fifth container has the interior coated with 5.3 grams of canola oil. However, coating the interior of a container and incorporating the canola oil into the dough during a kneading and folding process are not seen to be the same. Thus, it is not clear if the limitation of claim 12 simply does not have support in the specification, in which case it is advised that the subject matter of claim 12 be added to the specification. Or, if the step of claim 12 is reflective of the coating of the containers with specific amounts of canola, the claim should clearly reflect that this is the mechanism of adding canola oil to the dough.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, 8-11, 13-14, 16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Just Cook with Michael Santos, Malasadas Donuts, YouTube Video 02/27/2020 (https://www.youtube.com/watch?v=yFm37-RqEqk) (Santos) in view of US 2022/0225623 (Johnson-Blount, referred to as Johnson), further in view of Homemade Doughnuts and Doughnut Holes, Allie and the Oven, 10/28/2021 (Allie) OR Seasoned Advice, Egg yolks vs Whole eggs, November 2, 2012 (Seasoned Advice), and further in view of JP 2020-5560 (Tsukamoto) and “Beyond Juice: all the ways you can bake with lemon”, Kye Ameden, March 13, 2023 (Ameden). References to the video of Santos are in the form of screenshots provided in a document cited on the 892.
Regarding claims 1, 8, 9, 13, 14 and 18, Santos discloses a recipe for making malasadas, with are doughnuts rolled in sugar and may be filled with a custard or fruit such as strawberry preserves (considered fruit-based) (see screenshots 3 and 7 showing rolling in sugar and discussing custard or strawberry filling). The ingredients in Santos’ recipe include bread flour, milk, cane sugar, whole eggs, butter, nutmeg, lemon juice and vanilla (screenshot 1). Santos’ directions include the steps of mixing all the ingredients, including an instant yeast and water, and forming a dough. This dough is allowed to raise (proof) for about 1-2 hours (screenshot 2). After proofing, the dough is cut using a cutter to form dough rounds (screenshot 4). These dough rounds are then allowed to raise again for about 1 hour. The dough rolls are then fried in hot canola oil (screenshot 5), followed by coating with sugar and finally filling, if desired, the fried dough ball with a filling.
Santos does not teach that the ingredients are formed as a dry mix to which water is added to form the dough ball. Santos does not specifically state the order of steps where the mixture is placed into a mixer with the dry yeast and mixed. Santos does not specify that the eggs may be present as whole egg and egg yolk. Santos does not teach a dough improver.
Johnson teaches a commercially dry sweet dough mix where the dough mix includes a mixture of dry ingredients including flour, leavening (yeast), dry milk solids, eggs and sweetening agents (sugar) (abstract). Johnson also teaches that powdered form of whole eggs, butter, flavoring ingredients, preservation ingredients and nutritional ingredients may be added to the dry mix [0016, 0026]. To use the dry mix, water is added to form a batter and subsequently cooked. In circumstances where yeast dough is prepared, the dough may undergo intermediate and final proofing [0006] in a manner similar to Santos. Johnson teaches that because the dry sweet dough mix is formed only from dry particulate material, its shelf life is generally longer that many conventional batter mixes. In addition, because the dry sweet dough mix can be refrigerated or frozen without effecting the texture of the dry sweet dough mix or the resultant dough (or baked good), the shelf life of the dry sweet dough mix may be extended indefinitely [0035]. Johnson further notes that the inclusion of the non-fat dry milk solids significantly enhances the dough (and baked good) made from the dry sweet dough mix. and the non-fat dry milk solids improve dough mixing and water mixing times, permit the use of more water (for easier mixing without ruining the texture), and to speed the crust coloring of the baked goods (to decrease baking times). And because non-fat dry particulate milk is particularly used (and thoroughly combined through impact mixing), the inclusion of the non-fat dry milk solids does not reduce the range of temperatures at which the dry sweet baking mix can be used. Based upon the teaching of Johnson that a sweet dough mix can be provided in the form of a dry mix where all ingredients, but for water, are provided in dry powder form, it would have been obvious to one of ordinary skill to provide all of the ingredients for the malasada of Santos in the form of a dry mix to extend the shelf-life thereof, with a reasonable expectation of providing a sweet dough with good texture and without reducing the temperature at which the mixture may be cooked when making a baked good.
Regarding the order of steps of mixing the yeast and dry ingredients and water in a mixer, Johnson teaches combining the dry ingredients, leavening agent (yeast) and milk solids and mixing [0027] followed by addition of water to form a dough [0031]. Additionally, changing the order of mixing the ingredients together is considered prima facie obvious in the absence of new or unexpected results. See MPEP 2144.04(IV)(C) Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Regarding the use of whole eggs and egg yolks in combination, Allie teaches making yeast doughnuts where the eggs is present in the form of whole eggs and egg yolks. Also, Seasoned Advice suggests that a softer, moister end product results when the ratio of egg yolk to egg whites is increased (using more yolk that whole eggs). Thus, it would have been obvious to use whole eggs and egg yolks in the Santos recipe as suggested by Allie or Seasoned Advice with a reasonable expectation of successfully forming a yeast doughnut and adjusting the texture of the finalized product based upon the amount of yolk relative to egg white. The amount of egg yolk to egg white is adjusted by adding egg yolk alone in addition to whole eggs and the skilled artisan is aware of the uses of the yolk and egg white in different proportions.
Regarding the use of a dough improver, the instant specification does not define the material used as the dough improver. Thus, any material that is seen to perform the function of a dough improver is seen to meet this limitation. Tsukamoto teaches a yeast doughnut which incorporates a bread improver and mixed with yeast, salt, sugar, milk powder, shortening, eggs water is added to form a dough [Example 1]. As Tsukamoto teaches that it is known to add a bread improver to a yeast doughnut recipe, it would have been obvious to one of ordinary skill to add a bread (dough) improver to the recipe of Santos with the expectation of providing expected improvements to the formed product.
Regarding the use of lemon peel, Santos teaches the use of lemons but does not expressly teach lemon peel. Ameden teaches that using lemon zest delivers flavorful oils from the rind of the lemon and provides background flavor notes in a manner similar to vanilla extract. Depending upon the flavor profile desired, one of ordinary skill would have found it obvious to use lemon peel in the recipe of Santos as modified above with a reasonable expectation that the zest will perform as described by Ameden and the amounts can be varied also depending upon the desired taste effect. Using zest in a powder form is obviated as explained above.
Further regarding claim 14, Santos teaches using a packet of instant yeast (Screenshot 9).
Regarding claims 3, 11, 16, and 20, the weight of the mixture would depend upon the number of doughnuts desired to be made. In other words, if one of ordinary skill in the art wants to size up the recipe, they would double, triple or quadruple etc. the amounts in the recipe. The weight of the mixture is seen to be obviated based upon the number of doughnuts that are needed. The amount of water added is also dependent somewhat on the overall amount of dough being prepared. Commercial preparations of large numbers of doughnuts would require a large amount of ingredients, thus obviating increased amounts relative to recipes.
Regarding claims 10, and 19, Santos teaches the particular amounts of each of the ingredients. While the amounts of Santos are small relative to the claimed amounts, sizing up to meet demand would have been obvious to one of ordinary skill if a large number of doughnuts are desired. Johnson also teaches amounts of leavening agent (yeast) in a range of 0.2-4wt% of the dry mix which is consistent with the 1.15wt% in the instant specification. The relative amounts of flavoring are considered obvious based upon desired taste. Moreover, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients, which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Here, there is nothing in the record to indicate that the amounts of the ingredients amount to more than routine experimentation and optimization of the amounts of ingredients. The ingredients are all known and common for making doughnuts and the amounts selected are not seen to demonstrate any new, unexpected or useful function.
Claims 2 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Just Cook with Michael Santos, Malasadas Donuts, YouTube Video 02/27/2020 (https://www.youtube.com/watch?v=yFm37-RqEqk) (Santos) in view of US 2022/0225623 (Johnson-Blount, referred to as Johnson), further in view of Homemade Doughnuts and Doughnut Holes, Allie and the Oven, 10/28/2021 (Allie) OR Seasoned Advice, Egg yolks vs Whole eggs, November 2, 2012 (Seasoned Advice) and further in view of JP 2020-5560 (Tsukamoto) as applied to claims 1 and 14 above, and further in view of “Malassadas-Portuguese Doughnuts, David Leite, July 27, 2023” (Leite).
Santos teaches coating the malasadas with sugar, but does not further add cinnamon to the coating. Leite discloses a recipe for malasadas that are fried and coated with sugar and cinnamon. It would have been obvious to one of ordinary skill to further add cinnamon to the sugar coating of Santos as Leite discloses that this is a known option for malasadas and depending upon the desires of the consumer, the addition of cinnamon flavoring is known.
Claims 4 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Just Cook with Michael Santos, Malasadas Donuts, YouTube Video 02/27/2020 (https://www.youtube.com/watch?v=yFm37-RqEqk) (Santos) in view of US 2022/0225623 (Johnson-Blount, referred to as Johnson), further in view of Homemade Doughnuts and Doughnut Holes, Allie and the Oven, 10/28/2021 (Allie) OR Seasoned Advice, Egg yolks vs Whole eggs, November 2, 2012 (Seasoned Advice), and further in view of JP 2020-5560 (Tsukamoto) as applied to claims 1 and 14 above, and further in view of WO 2010/048487 (Anderson).
Regarding claims 4 and 17, Santos places the dough into a bowl, considered a tub, and proofs the dough for about one to two hours. The specific structure of a proofer is not claimed. Anderson teaches a dough preparing machine with a proofer with climate control to provide an optimal environment for proofing bread. It would have been obvious to one of ordinary skill to place the dough to be proofed in Santos in a proofer such as Anderson with climate control to provide a controlled environment for proofing.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Just Cook with Michael Santos, Malasadas Donuts, YouTube Video 02/27/2020 (https://www.youtube.com/watch?v=yFm37-RqEqk) (Santos) in view of US 2022/0225623 (Johnson-Blount, referred to as Johnson), further in view of Homemade Doughnuts and Doughnut Holes, Allie and the Oven, 10/28/2021 (Allie) OR Seasoned Advice, Egg yolks vs Whole eggs, November 2, 2012 (Seasoned Advice), and further in view of JP 2020-5560 (Tsukamoto) and further in view of WO 2010/048487 (Anderson) as applied to claim 4 above and further in view of US US 20140072667 (Meade).
Santos teaches proofing the dough for about 1-2 hours, forming dough balls, proofing the dough balls for about an hour and then frying for about a minute on each side (screenshot 8). Santos does not teach using a rounder. Meade teaches using a rounder to quickly form a plurality of round dough balls (abstract, [0019]). It would have been obvious to use the rounder of Meade in the process of Santos to quickly form a plurality of round dough balls resulting in improved efficiency.
Regarding the amount of time of proofing, it would have been obvious to one of ordinary skill in the art to adjust the time for allowing the dough to raise (either intermediate or final proofing) as the time the dough takes to rise is dependent upon factors such as temperature and humidity. The time of 45 minutes for the final proofing is seen to be obvious based upon the teaching in Santos of about an hour and is considered an obvious alternative based upon the level of ordinary skill in the art.
Regarding the amount of time to fry the dough balls, this is seen to be optimizable depending upon the desired consistency in the outside of the fried dough as well as adjustable dependent upon the temperature of the oil. Santos teaches about one minute on either side and the phrase “about” is seen to allow for adjustment based upon the parameters of temperature and desired texture. Thus, a time of 3 and a half minutes is seen to be an obvious alternative based upon the level of ordinary skill in the art.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Just Cook with Michael Santos, Malasadas Donuts, YouTube Video 02/27/2020 (https://www.youtube.com/watch?v=yFm37-RqEqk) (Santos) in view of US 2022/0225623 (Johnson-Blount, referred to as Johnson), further in view of Homemade Doughnuts and Doughnut Holes, Allie and the Oven, 10/28/2021 (Allie) OR Seasoned Advice, Egg yolks vs Whole eggs, November 2, 2012 (Seasoned Advice), and further in view of JP 2020-5560 (Tsukamoto) as applied to claim 1 above and further in view of US 2016/0262407 (Kumar).
Santos teaches oil in the form of butter is an ingredient but does not provide oil in other forms. Kumar teaches a process for preparation of a spray dried powder for use in the preparation of fried bakery products, particularly doughnuts and teaches that the doughnut base powder may include fats of animal, vegetable or dairy origin and specifically lists canola oil and that the fat component preferably has a slip melting point that will exert the desired effect during proofing [0019]. It would have been obvious to use canola oil as an ingredient as taught by Kumar and the amount thereof is seen to be adjustable based upon the desired proofing effect absent a showing that the amount is critical. One of ordinary skill would have found it obvious to use the canola oil as suggested by Kumar as an ingredient in Santos as modified to be a powder composition with a reasonable expectation of successfully using the mixture to form doughnuts useful for frying as taught by Kumar.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
“Malasadas-Leonard’s Copy Cat, So Good!” by Reigel, 09/07/2022 and Malasadas-Portuguese Doughnuts, The Culinary Chronicles, 06/05/2015 are cumulative to the references of record.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER C MCNEIL whose telephone number is (571)272-1540. The examiner can normally be reached M-F 9-5.
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JENNIFER C. MCNEIL
Primary Examiner
Art Unit 1793
/Jennifer McNeil/Primary Examiner, Art Unit 1793