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 .
Status of Claims
Claims 1-14 are pending in this application. Claims 1-10 are under examination. Claims 11-14 are withdrawn.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Bourke US 20040076731 (cited on IDS dated 12/21/2023) as evidenced by Kerry, Admul MG Safety Data Sheet, www.univarsolutions.com/proxy/index..., Date: 6/24/2015 (hereinafter, Kerry).
Regarding claims 1-3, Bourke teaches a powdered whipping agent (powdered fat composition; Abstract, [0019], [0023] claim 1), comprising, by weight of the whipping agent (a) 10-80 wt.% fat, optimally 40-80 wt.% fat (crystallizing fat; [0024], [0030]), as required by claim 1. This encompasses the claimed wt. % fat of 57-70 wt.%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Bourke teaches the powdered whipping agent (powdered fat composition; [0023]) comprises an emulsifier [0026], where the emulsifier is used singly or in combination with other emulsifiers [0034], [0038]. Bourke teaches (b) an alpha-tending emulsifier selected from lactic acid esters of mono and/or diglycerides of fatty acids (organic acid ester derivatives of mono and diglycerides, such as lactoglycerides (Lactem)), acetic acid esters of mono and/or diglycerides of fatty acids (organic acid ester derivatives of mono and diglycerides, such as acetoglycerides (Acetem)), and mixtures thereof [0034], as required by claim 1. Bourke teaches the combination of emulsifiers can be in the composition at 0.3-20 wt.% [0026], [0038]. Thus, a person of ordinary skill can envisage the alpha-tending emulsifier being in the composition with one or more other emulsifier(s) at an amount of 0.3-19.9 wt.%. This encompasses the claimed range for claim 1 of 1-6.5 wt.%. See MPEP 2144.05(I).
Bourke teaches (c) a nonionic mono- and/or diglycerides of fatty acids having an acyl chain of 14-20 carbon atoms (mono- and diglycerides of fatty acids, such as Admul MG; [0034]), as required by claim 1. Bourke teaches the nonionic mono- and/or diglycerides of fatty acids comprise unsaturated acyl chain, as required by claim 2 and comprise a saturated acyl chain, as required by claim 3 ((mono- and diglycerides of fatty acids, such as Admul MG; [0034]). Regarding carbon chain length and carbon saturation or carbon unsaturation of the acyl chains in the emulsifier Admul MG, Kerry evidences that the Admul MG emulsifier comprises fatty acids having an acyl chain of 14-18 carbon atoms and comprises unsaturated acyl chains and saturated acyl chains (Glycerides, C14-C18 and C16-C18 unsaturated mono- and di-; Pg. 1, Section 1. Identification, Chemical name and Other means of Identification). Thus, the Admul MG emulsifier, as taught by Bourke, is considered to meet the limitation of having an acyl chain of 14-20 carbon atoms, as required by claim 1, and comprising unsaturated acyl chain, as required by claim 2, and saturated acyl chain, as required by claim 3.
Bourke also teaches the combination of emulsifiers can be in the composition at 0.3-20 wt.% [0026], [0038]. Thus, a person of ordinary skill can envisage component (c) the nonionic mono- and/or diglycerides, being in the composition with one or more other emulsifier(s) at an amount of 0.1-19.9 wt.%. This encompasses the claim 1 range of 0.2-2.0 wt.%. See MPEP 2144.05(I).
Bourke discloses the powdered whipping agent (powdered fat composition; [0023]) comprises (d) 0.5-15 wt.% proteinaceous emulsifier (one or more proteins for the formation of the emulsion; [0025]). This encompasses the claim 1 range of 1.0-5 wt.% proteinaceous emulsifier. See MPEP 2144.05(I).
Bourke discloses the powdered whipping agent (powdered fat composition; [0023]) comprises (e) carbohydrates, where the balance of the formula is made up of carbohydrates [0028]. When considering the wt.% ranges of the other required ingredients in the formula [0023-0027], the carbohydrates may be in the powdered whipping agent from 0.1-88.7 wt. %. This encompasses the claim 1 range for carbohydrates of 18-35 wt.%. See MPEP 2144.05(I).
Bourke teaches the composition comprises 0.5-6 wt.% moisture (water; [0027]). This overlaps the claim 1 range for moisture of 0.1-4 wt.% moisture. See MPEP 2144.05(I).
As discussed above, the composition of Bourke comprises 10-80 wt.% fat [0024] or optimally 40-80 wt.% fat, and the envisaged range of 0.3-19.9 wt.% for alpha-tending emulsifier or optimally an envisaged range of about 2-19.9% [0034], [0038]. Thus, Bourke discloses the weight/weight ratio of the fat to the alpha-tending emulsifier of 0.5:1 to 266:1, or an optimal ratio range of 2:1 to 40:1. This encompasses the claimed range of the weight/weight ratio of fat or oil to alpha-tending emulsifier for claim 1 of 10 or higher and lower than 30, or in other words a ratio range of fat to alpha-tending emulsifier of 10:1 to 30:1.
Regarding claim 4-6, Bourke discloses the powdered whipping agent according to claim 1, as discussed above. Bourke teaches the fat or oil in the composition may comprises vegetable oil or vegetable fat, as required by claim 4, where the vegetable oil or vegetable fat is selected from palm oil, palm kernel oil (lauric fats), coconut oil (lauric fats), and mixtures thereof, as required by claim 5 ([0030], claim 3).
Bourke teaches the fat or oil in the composition may comprise milk fat and/or butter oil (butter fat; [0030], claim 3).
Bourke teaches the composition may comprise a combination of vegetable oil/fat and milk fat and/or butter oil (crystallizing fat can be from animal or vegetable origin and is used singly or in combinations; [0030], claim 3). Bourke does not limit the combination of oil and fat, so the composition of Bourke is viewed as having any combination of oil and fat as long as it has a pleasant “fast melt away” behavior in the mouth, which is an attribute sought after by Bourke [0022], [0030]. Thus, a person of ordinary skill can envisage a formulation wherein the fat or oil comprise more than 80 wt.% of vegetable oil or vegetable fat or mixtures thereof, as required by claim 4 and comprises less than 20 wt.% of milk fat and/or butter oil, as required by claim 6, based on the total weight of the fat or oil.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Bourke to have any combination of fat and oil, including the combinations outlined in the limitations of claims 4-6, as this combination would be considered to meet the needs at hand. Specifically, this combination has the desired fast melt away behavior of Bourke [0022], [0030], or as noted by the instant specification, dissolves quick in the mouth (pg. 12 L12-31, pg. 13 L1-15 and Table 1, Figure 1), and is considered a result effective variable that can be easily found through routine experimentation as there are a finite number of solutions. Noting, “[W]here 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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Regarding claim 7, Bourke discloses the powdered whipping agent according to claim 1, as discussed above. As noted in the above rejection, Bourke teaches the composition comprises 10-80 wt.% fat [0024] or optimally 40-80 wt.% fat, and the envisaged range of 0.3-19.9 wt.% for the nonionic mono- and/or diglycerides of fatty acids emulsifier (nonionic emulsifier) or optimally an envisaged range of about 2-19.9% [0034], [0038]. Thus, Bourke discloses the weight/weight ratio of the fat to the nonionic emulsifier of 0.5:1 to 266:1, or an optimal ratio range of 2:1 to 40:1. This encompasses the claimed range of the weight/weight ratio of fat or oil to the nonionic emulsifier of higher than 29, or in other words a ratio range of fat to nonionic emulsifier of greater than 29:1.
Regarding claim 8, Bourke discloses the powdered whipping agent according to claim 1, as discussed above. Bourke teaches the composition further comprises 0-10 wt.% of additional components selected from stabilizer, hydrocolloids (gelling agent, thickener), and combinations thereof [0029]. This encompasses the claimed range of 0.1-1.5 wt.% of additional components. See MPEP 2144.05(I).
Regarding claim 9, Bourke discloses the powdered whipping agent according to claim 1, as discussed above. Bourke teaches the composition wherein the proteinaceous emulsifier is a milk protein (a protein selected from dairy origin such as sodium caseinate) or a plant protein (a protein selected from vegetable origin like rice) or a combination thereof ([0032], claims 4 and 5). Bourke teaches in claim 5 that the protein is selected from a group consisting of either proteins from milk (dairy) or vegetable origin or mixtures thereof. Thus, the proteinaceous emulsifier of Bourke (one or more proteins, for the formation of the emulsion) may have 100 wt.% of proteinaceous emulsifier from a milk protein or plant protein or combinations thereof, since they can be used singly or in combination ([0025], [0032], claims 4 and 5). This is within the claimed range of at least 50 wt.% of the proteinaceous emulsifier is a milk protein or a plant protein or combinations thereof.
Regarding claim 10, Bourke discloses the powdered whipping agent according to claim 1, as discussed above. Bourke teaches the composition comprises carbohydrates. Bourke does not specify which type of carbohydrate is used, such as lactose, but in an example states “sugar” is used [0069]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Bourke to use any sugar, including lactose, with the composition as taught by Bourke. See MPEP 2144.08.
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.
Claims 1-5 and 8-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/806,349 (hereinafter ‘349). Although the claims at issue are not identical, they are not patentably distinct from each other.
Conflicting claim 1 of ‘349 teaches a powdered whipping agent suitable for preparing a whipped topping. This reads on 1 of the instant application. It is evidenced by the instant specification that the powdered whipping agent of the invention relates to a powdered whipping agent suitable for preparing a whipped topping (pg. 2 L:22-24).
Conflicting claim 1 teaches the composition comprises by weight of the whipping agent (a) 20-57 wt.% fat or oil or mixtures thereof. This reads on instant application claim 1 that has the same end point of 57 wt.% fat or oil. See MPEP 2144.05(I).
Conflicting claim 1 teaches the composition comprises (b) 1.0-5.5 wt% of an alpha-tending emulsifier selected from the group consisting of lactic acid esters of mono and/or diglycerides of fatty acids, acetic acid esters of mono and/or diglycerides of fatty acids, propylene glycol monostearate, and mixtures thereof. This reads on instant application claim 1.
Conflicting claim 1 teaches the composition comprises (c) 0.2-2.0 wt.% of nonionic mono- and/or diglycerides of fatty acids having at least one acyl chain of 14-20 carbon atoms. This reads on instant application claim 1.
Conflicting claim 1 teaches the composition comprises (d) 1.0-5.0 wt.% proteinaceous emulsifier. This reads on claim 1 of the instant application.
Conflicting claim 1 teaches the composition comprises (e) 25.5-75.5 wt.% carbohydrates. This reads on instant application claim 1, which has an overlapping range for carbohydrates. See MPEP 2144.05(I).
Conflicting claim 1 teaches the composition comprises (f) 0.1-4 wt.% moisture. This reads on instant application claim 1.
Conflicting claim 2 of ‘349 reads on instant application claim 2.
Conflicting claim 3 of ‘349 reads on instant application claim 3.
Conflicting claim 4 of ‘349 reads on instant application claim 4.
Conflicting claim 5 of ‘349 reads on instant application claim 5.
Conflicting claim 6 of ‘349 teaches wherein the weight/weight ratio of the fat or oil to the alpha-tending emulsifier is 10 or higher. This reads on claim 1 of the instant application.
Conflicting claim 7 of ‘349 teaches wherein the weight/weight ratio of the fat or oil to the alpha-tending emulsifier is 30 or lower. This reads on claim 1 of the instant application.
Conflicting claim 8 of ‘349 reads on instant application claim 8.
Conflicting claim 9 of ‘349 reads on instant application claim 9.
Conflicting claim 10 of ‘349 reads on instant application claim 10.
Response to Arguments
Applicant's arguments filed 04/30/2026 have been fully considered but they are not persuasive.
Applicant argues, on pgs. 6-7 of their remarks, that Bourke does not teach or suggest the claimed combination of emulsifier components. Applicant states while Bourke describes compositions containing protein and emulsifier generally, the reference does not describe the presently claimed combination of these three components in the same formulation nor does it describe separate amounts for the claimed alpha-tending emulsifier and the claimed nonionic mono- and or diglyceride. Applicant contends that Bourke only discloses a generic total emulsifier amount. Applicant argues that this is hindsight bias and ex post reasoning, since Bourke does not teach the specific amounts for each emulsifier and the rejection only cites hypothetical reconstruction of the Applicant’s claims. However, the Office disagrees for the following reasons.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Regarding components (b) and (c) and their claimed amounts, Bourke teaches specific conventional emulsifiers and also specifies a specific range of 0.3-20% that these emulsifiers can be present in the composition [0026], [0034], [0038]. With these finite parameters, Bourke notes that you can have a combination of one or more of these specifically named components [0038]. Thus, it would be obvious for a person skilled in the art, to mix and match these named emulsifiers within these set bounds to produce a composition that has a pleasant “fast melt away” behavior in the mouth, which is an attribute sought after by Bourke [0022], [0030] and the same type of sought after attribute described in the instant specification of dissolving quick in the mouth (pg. 12 L12-31, pg. 13 L1-15 and Table 1, Figure 1).
Additionally, the powdered whipping agent recited in claim 1, specifically components (b)-(d) in the amounts disclosed, is rendered obvious by Bourke. As stated in the above rejection, Bourke teaches (b) an alpha-tending emulsifier selected from lactic acid esters of mono and/or diglycerides of fatty acids (organic acid ester derivatives of mono and diglycerides, such as lactoglycerides (Lactem)), acetic acid esters of mono and/or diglycerides of fatty acids (organic acid ester derivatives of mono and diglycerides, such as acetoglycerides (Acetem)), and mixtures thereof [0034]. Bourke teaches (c) a nonionic mono- and/or diglycerides of fatty acids having an acyl chain of 14-20 carbon atoms (mono- and diglycerides of fatty acids, such as Admul MG; [0034]). Bourke teaches the combination of emulsifiers, specifically components (b) and (c) can be in the composition at 0.3-20 wt.% [0026], [0038]. Therefore, it would have been obvious for a person of ordinary skill in the art to have the (b) alpha-tending emulsifier and (c) nonionic mono- and/or diglycerides in the composition with one or more other emulsifier(s) at an amount of 0.3-19.9 wt.%. This encompasses and overlaps the claimed ranges for components (b) and (c), respectively. Bourke also discloses the powdered whipping agent (powdered fat composition; [0023]) comprises (d) 0.5-15 wt.% proteinaceous emulsifier (one or more proteins for the formation of the emulsion; [0025]). This encompasses the claimed range of 1.0-5 wt.% proteinaceous emulsifier. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). Thus, Bourke does teach the combination and amounts of the claimed components (b)-(d).
Applicant argues on pg. 7 that Bourke does not teach the claimed fat to alpha tending emulsifier ratio. Applicant contends the ratio analysis in the rejection depends on hindsight from first creating an undisclosed alpha tending emulsifier amount from Bourke’s generic total emulsifier disclosure and only then calculating the claimed ratio from the assumed amount. Applicant states claim 1 requires a ratio of fat to alpha-tending emulsifier, not a ratio of fat to total emulsifier. Applicant argues Bourke does not teach the claimed fat/alpha-tending emulsifier ratio. However, the Office disagrees for the following reasons.
As previously discussed regarding applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
The ratio of fat to alpha tending emulsifier recited in claim 1 is rendered obvious by Bourke. Bourke teaches an alpha-tending emulsifier selected from lactic acid esters of mono and/or diglycerides of fatty acids (organic acid ester derivatives of mono and diglycerides, such as lactoglycerides (Lactem)), acetic acid esters of mono and/or diglycerides of fatty acids (organic acid ester derivatives of mono and diglycerides, such as acetoglycerides (Acetem)), and mixtures thereof [0034]. Bourke also teaches an optimal range where these emulsifiers can be used singly or in combination with other emulsifiers of 2-20%. Bourke also teaches the amount of an optimal amount of 40-80 wt.% of fat (crystallizing fat; [0024], [0030]). Therefore, it would be reasonable for a person of ordinary skill in the art to see these teachings disclosed by Bourke for the amounts of alpha tending emulsifier and amounts of fat and calculate the already present ratio of fat to alpha tending emulsifier that would be possible in the composition of Bourke. Thus, Bourke is considered to suggest the claimed fat/alpha tending emulsifier ratio.
Applicant argues on pg. 8 that Bourke does not provide a reasoned motivation to arrive at the powdered whipping agent formulation. Applicant contends Bourke describes a broad list of possible emulsifiers and a broad total emulsifier amount, but does not direct the skilled person to the specific combination and quantitative relationships of amended claim 1, specifically to the amount of alpha tending emulsifier, the claimed nonionic mono- and/or diglyceride, or the ratio of fat to alpha-tending emulsifier. Applicant states the present application addresses a specific problem of conventional powdered whipping agents providing good overrun and firmness but still exhibiting a sticky, long-lingering mouthfeel and sensory properties unlike whipped dairy cream. Applicant argues Bourke does not recognize this problem and does not provide a reasoned basis to select the claimed formulation as a solution to that problem. However, the Office disagrees for the following reasons.
As shown in the response to arguments above and in the rejection above, the powdered whipping agent recited in claim 1, the specific combination and quantitative relationships of component (b) alpha tending emulsifier, component (c) nonionic mono- and/or diglycerides, and the ratio of fat to alpha tending emulsifier are rendered obvious by Bourke. Please see the above response to arguments and rejection for these teachings.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a reasoned solution to overcome a sticky, long-lingering mouthfeel and sensory properties that are unlike whipped dairy cream) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Additionally, even though Bourke do not disclose or suggest the importance of quantitative relationships of amended claim 1, specifically to the amount of alpha tending emulsifier, the claimed nonionic mono- and/or diglyceride, or the ratio of fat to alpha-tending emulsifier in forming a composition that overcomes a sticky mouthfeel and sensory properties that are unlike whipped dairy cream, that does not render nonobvious an otherwise known invention. MPEP 2145(II) states, "Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention, In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979)."
Furthermore, a prior art reference is available for all it teaches and is not limited to what the patentees of the prior art describe as their own inventions or to the problems with which they are concerned, see MPEP 2123.
Applicant argues on pgs. 8-9 that their comparative data show unexpected results and provide objective evidence of non-obviousness. Applicant discusses from their specification pg. 18, table 4, comparative example 8 and pg. 16 table 3B comparative example from EP 3639672 Vasbinder et al. Comparative example 8 omits component (c) nonionic mono- and/or diglyceride and exhibits unacceptably low foam firmness. Applicant states that this demonstrates that component (c) is not merely an optional selection from a broad list of emulsifiers. Applicant discusses comparative example from table 3B, noting that this example exhibits very low foam firmness and sticky mouthfeel, supporting the need for the fat/alpha tending emulsifier ratio, which is not arbitrary. Applicant states the desirable properties exhibited by having the claimed amounts and specific components in claim 1, arguing that these results would not have been expected from Bourke who discloses only a broad generic emulsifier system. However, the Office disagrees for the following reasons.
Regarding applicant’s comparative data showing unexpected results, the comparative data the applicant has discussed is not looking at the closest prior art, Bourke, but is looking at an example that does not have component (c), which component is present in Bourke, and the other comparative example is looking at a different reference not discussed in the rejection, EP 3639672 Vasbinder et al. As stated in MPEP 716.02(b), evidence of unexpected properties may be in the form of a comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. However, the applicant hasn’t compared Bourke with the claimed invention. The Office is unable to do an analysis comparing the composition of Bourke as taught in the above rejection and the claimed product, and until the applicant has a reasonable case for obviousness the burden is on the applicant to show otherwise. If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc). Thus, the burden of proof lies with the applicant to demonstrate that their claimed invention has unexpected results and is not obvious over the prior art.
Regarding applicant’s argument that Bourke teaches a broad generic emulsifier system, "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See MPEP 2123(I).
Double Patenting Rejection
Applicant states on pg. 10 that the Examiner should continue holding the provisional rejection in abeyance until such time as the claims at issue are deemed otherwise allowable, at which time the Applicant will address the rejection and may file a terminal disclaimer. Applicant has not argued any specifics with the double patenting rejection. Thus, the double patenting rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/S.R.G./Examiner, Art Unit 1791
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759
Prosecution Insights