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 .
In the claim sets (x2) submitted January 5, 2024, claims 1-20 are pending in the application. Claims 21-44 have been cancelled. Claim 18 is withdrawn from consideration (see below).
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-17 and 19-20 in the reply filed on June 29, 2026 is acknowledged. Claim 18 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claims 6-8, 16, and 20 are objected to because of the following informalities:
In claim 6 at line 1, it is recommended to insert “grinding in” after “to” and before “step”.
In claim 7 at line 1, it is suggested to insert “grinding in” after “to” and before “step”.
In claim 8 at line 1, it is recommended to insert “grinding in” after “to” and before “step”.
In claim 16 at line 2, it is suggested to remove “nuts” after “fruits” and before “to”.
In claim 20 at the end of line 3, it is suggested to remove the duplicated period.
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 4, 5, 12, 13, 17, and 19-20 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.
Claim 4 recites “almonds are added to the mass before step b)” at line 2, and this claim depends upon claim 1. It is unclear what is intended by this recitation. More specifically, it is uncertain how the claimed step of adding almonds to the mass before step b) is performed since the mass is introduced at step b in claim 1 (see line 4). Therefore, the scope of the claim is indefinite.
For the purpose of the examination, the recitation of “almonds are added to the mass before step b)” at line 2 of claim 4 is interpreted as “almonds are added to the mass before grinding in step b)” (emphasis added).
Claim 5 recites “walnuts are added to the mass before step b)” at line 2, and this claim depends upon claim 1. It is unclear what is intended by this recitation. More specifically, it is uncertain how the claimed step of adding walnuts to the mass before step b) is performed since the mass is introduced at step b in claim 1 (see line 4). Therefore, the scope of the claim is indefinite.
For the purpose of the examination, the recitation of “walnuts are added to the mass before step b)” at line 2 of claim 5 is interpreted as “walnuts are added to the mass before grinding in step b)” (emphasis added).
Claim 12 recites “wherein in step c), the ground mass is subjected to a roasting step before step c)”, and this claim depends upon claim 1. It is unclear what is intended by this recitation. More specifically, it is uncertain when the ground mass is subjected to a roasting step since claim 12 indicates roasting is performed in step c) AND before step c (emphasis added). Therefore, the scope of the claim is indefinite.
For the purpose of the examination, the recitation of “wherein in step c), the ground mass is subjected to a roasting step before step c)” in claim 12 is interpreted as “wherein in step c), the ground mass is subjected to a roasting step before further processing in step c)” (emphasis added).
Claim 13 is not specifically discussed but is rejected due to its dependence on claim 12.
Claim 17 recites “wherein step b) is performed as a dry-grinding step without addition of a liquid to provide the nut fruit solids”, and this claim depends upon claim 1. It is unclear what is intended by this recitation. More specifically, it is uncertain how step b) is performed to provide the nut fruit solids since a ground mass is provided from step b) in claim 1 (see lines 4-6). Therefore, the scope of the claim is indefinite.
For the purpose of the examination, the recitation of “wherein step b) is performed as a dry-grinding step without addition of a liquid to provide the nut fruit solids” in claim 17 (emphasis added) is interpreted as “wherein step b) is performed as a dry-grinding step without addition of a liquid to provide the ground mass” (emphasis added).
Claim 19 recites “the nut fruit phase” at line 1, and this claim depends upon claims 1 and 17. However, the recitation of “the nut fruit phase” lacks antecedent basis as there is no prior recitation of a nut fruit phase in claim 1 or claim 17. Therefore, the scope of claim 19 is indefinite.
For the purpose of the examination, the recitation of “the nut fruit phase” at line 1 of claim 19 is interpreted as “the ground mass” (emphasis added; see claim 1 at lines 4-6 and claim 17 as addressed above).
Claim 20 recites “the roasting step” at lines 1-2, and this claim depends upon claims 1 and 17. However, the recitation of “the roasting step” lacks antecedent basis as there is no prior mention of a roasting step in claim 1 or claim 17. Therefore, the scope of claim 20 is indefinite.
For the purpose of the examination, the recitation of “The method according to claim 19, wherein the roasting step is carried out …” at lines 1-2 of claim 20 (emphasis added) is interpreted as “The method according to claim 17, wherein the roasting step is carried out …” (emphasis added).
Definitions and Claim Interpretation
During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification." The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). Under a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification or the term has been given a special definition in the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) (discussed below); Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372, 69 USPQ2d 1857 (Fed. Cir. 2004).
It is noted that the meaning of the following term(s) and/or phrase(s) presented in the claims are determined by the definitions and descriptions provided in the instant specification: It is noted that the meaning of the following terms and phrases presented in the claims are determined by the definitions and descriptions provided in the instant specification:
Off-ground harvesting-a method of collecting almond and/or walnut fruits off the trees instead of the ground (paragraph [0030]).
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.
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 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Laux et al. WO 2021219589 (hereinafter “Laux”) in view of Diggs US 4077193 (hereinafter “Diggs”).
Regarding the recitation “of processing nut fruits selected from almond fruits and/or walnut fruits” in the preamble of claim 1, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
With respect to claim 1, Laux relates to a method of processing nuts such as walnuts and almonds (paragraphs [0001], [0015], [0025], and [0027]).
Regarding the recitation of comprising a) off-ground harvesting of the nut fruits in claim 1, Laux does not expressly disclose this recitation.
Diggs relates to methods of harvesting nuts. Nut fruits, such as walnuts and almonds, are picked from the tree which bears it (off-ground harvesting) (Abstract; C1, L5-10 and 15-18).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Diggs, to select the harvesting method based in its suitability for its intended purpose with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Diggs and Laux similarly teach almond and walnut products, Laux teaches the nuts may be harvested and the kernels together with the shell and husk material may be used (paragraphs [0015], [0028], [0030], and [0031]), and said combination would amount to the use of a known step for its intended use in a known environment to accomplish entirely expected results. There would have been a reasonable expectation of success with said modification. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
Regarding the recitation of b) subjecting a mass comprising kernels, inner shell and green outer hull of the nut fruits to grinding to an average particle size of 500 µm or less to provide a ground mass; and c) further processing the ground mass to edible nut fruit solids, edible nut fruit- based products and/or nut fruit beverages; wherein the nut fruits have not been subjected to drying before step b), Laux teaches subjecting walnut and/or almond kernels, shells, and green husks to grinding to an average particle size of 500 µm or less and further processing the ground material to solids, beverages, and/or nut-based products. Laux also teaches that no drying step is performed before the grinding step (paragraphs [0015], [0016], [0025], [0027], [0030], [0031], [0038], [0043], [0057], and [0062]-[0063]).
With respect to claims 2 and 3, modified Laux is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein the green outer hull has a moisture content of more than 20% on a wet basis in claim 2 and wherein the green outer hull has a moisture content of more than 50% on a wet basis in claim 3, Laux does not expressly disclose these recitations. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the moisture content of the outer husk through routine experimentation in the method of Laux with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Laux teaches the water contents of the nut kernels with shell and husk material may vary and can be adjusted (paragraphs [0028]-[0030] and [0034]), and it is understood that, 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. There would have been a reasonable expectation of success. “[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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II).
With respect to claim 4, modified Laux is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding wherein almond kernels or de-hulled almonds are added to the mass before grinding in step b) in claim 4, modified Laux teaches this recitation since Laux teaches almond kernels and/or almonds without the husk material may be added before the grinding step (paragraphs [0025], [0027], [0030], and [0031]).
With respect to claim 5, modified Laux is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding wherein walnut kernels or de-hulled walnuts are added to the mass before grinding in step b) in claim 5, modified Laux teaches this recitation since Laux teaches walnut kernels and/or walnuts without the husk material may be added before the grinding step (paragraphs [0025], [0027], [0030], and [0031]).
With respect to claims 6 and 7, modified Laux is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein the mass subjected to step b) comprises green outer hull of the nut fruits at a content of at least 0.5 wt.-% on a dry basis based on the total weight of the mass in claim 6 and wherein the mass subjected to step b) comprises green outer hull of the nut fruits at a content of between 5 to 63 wt.-% on a dry basis based on the total weight of the mass in claim 7, Laux does not expressly disclose these recitations. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the quantity of the outer husk through routine experimentation in the method of Laux with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Laux teaches the outer husk material provides the product with additional biologically active components and improves the yield of nutritionally useful components in the product (paragraphs [0015] and [0031]), and it is understood that, 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. There would have been a reasonable expectation of success. “[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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II).
With respect to claim 8, modified Laux is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein the mass subjected to step b) consists of whole, off-ground harvested almond fruits and/or walnut fruits in claim 8, Laux as modified by Diggs teaches this recitation since Diggs is relied upon for the teaching of off-ground harvesting of almonds and walnuts as addressed above in claim 1, and Laux teaches the almonds and/or walnuts may be harvested and the kernels together with the shell and husk material may be used (paragraphs [0015], [0027], [0028], [0030], and [0031]).
With respect to claim 9, modified Laux is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein the nut fruits are almond fruits in claim 9, modified Laux teaches this recitation since Laux teaches the almonds may be harvested and the kernels together with the shell and husk material may be used (paragraphs [0015], [0027], [0028], [0030], and [0031])
With respect to claim 10, modified Laux is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein sweetening agents and/or sweeteners are added to the ground mass after step b) to provide a mixture, and the mixture is subsequently subjected to a roasting step in claim 10, modified Laux teaches this recitation since Laux teaches adding sugar and/or other sweeteners to the ground material and subjecting the mixture to a roasting process (paragraphs [0015], [0027], and [0052]-[0054]).
With respect to claim 11, modified Laux is relied upon for the teaching of the method of claim 10 as addressed above.
Regarding the recitation of wherein the roasting step is carried out at a temperature of more than 65⁰C and less than or equal to 200⁰C in claim 11, modified Laux teaches this recitation since Laux teaches roasting temperatures are in the range of 65⁰C to 200⁰C (paragraph [0052]).
With respect to claim 12, modified Laux is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding wherein in step c), the ground mass is subjected to a roasting step before further process in step c) in claim 12, modified Laux teaches this recitation since Laux teaches subjecting the ground material to a roasting process and further processing the material (paragraphs [0015], [0039]-[0040], [0052], and [0055]).
With respect to claim 13, modified Laux is relied upon for the teaching of the method of claim 12 as addressed above.
Regarding the recitation of wherein the roasting step is carried out at a temperature of more than 65⁰C and less than or equal to 200⁰C in claim 13, modified Laux teaches this recitation since Laux teaches roasting temperatures are in the range of 65⁰C to 200⁰C (paragraph [0052]).
With respect to claims 14 and 15, modified Laux is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein steps b) and c) are carried out continuously in a time frame of less than 100 minutes in claim 14 and wherein steps b) and c) are carried out continuously in a time frame of less than 20 minutes in claim 15, modified Laux teaches this recitation since Laux teaches the process is carried out continuously in a time frame of less than 100 minutes or less than 20 minutes (paragraphs [0015], [0025], and [0049]).
With respect to claim 16, modified Laux is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of further comprising a step of treating the surface of the almond fruits and/or walnut fruits nuts to remove surface contaminants in claim 16, modified Laux teaches this recitation since Laux teaches the nuts with shell and husk material are processed by sterilization, blanching, shocking, and/or washing to remove residues of pesticides, fertilizers, or other undesired foreign substances (paragraphs [0015], [0027], and [0031]).
Claims 1-3, 6-8, 12, 13, 17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Khachatrjan et al. RU 2159258 (hereinafter “Khachatrjan”) (refer to the corresponding machine translation published in English).
Regarding the recitation “of processing nut fruits selected from almond fruits and/or walnut fruits” in the preamble of claim 1, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
With respect to claim 1, Khachatrjan relates to a method of processing whole walnut fruits (paragraphs [0001], [0012], [0015], and [0017]).
Regarding the recitation of comprising a) off-ground harvesting of the nut fruits in claim 1, Khachatrjan does not expressly disclose this recitation.
Diggs relates to methods of harvesting nuts. Nut fruits, such as walnuts, are picked from the tree which bears it (off-ground harvesting) (Abstract; and C1, L5-10 and 15-18).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Diggs, to select the harvesting method based in its suitability for its intended purpose with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Diggs and Khachatrjan similarly teach walnut products, Khachatrjan teaches whole walnut fruits including the outer green skin may be used as raw material (paragraphs [0012], [0015], and [0017]), and said combination would amount to the use of a known step for its intended use in a known environment to accomplish entirely expected results. There would have been a reasonable expectation of success with said modification. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
Regarding the recitation of b) subjecting a mass comprising kernels, inner shell and green outer hull of the nut fruits to grinding to an average particle size of 500 µm or less to provide a ground mass; and c) further processing the ground mass to edible nut fruit solids, edible nut fruit- based products and/or nut fruit beverages; wherein the nut fruits have not been subjected to drying before step b), Khachatrjan teaches subjecting whole walnut fruits with green outer shell to grinding to a particle size of no larger than 0.2 mm (less than 200 µm) and further processing the ground material to walnut fruit solids and walnut fruit-based product. Khachatrjan is also silent with respect to performing a drying step before grinding (paragraphs [0012], [0015]-[0018] and [0021]).
With respect to claims 2 and 3, modified Khachatrjan is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein the green outer hull has a moisture content of more than 20% on a wet basis in claim 2 and wherein the green outer hull has a moisture content of more than 50% on a wet basis in claim 3, modified Khachatrjan teaches this recitation since Khachatrjan teaches the moisture content of the whole walnut fruits with green outer skin is 65-70% (paragraphs [0012], [0015], and [0017]).
With respect to claims 6 and 7, modified Khachatrjan is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein the mass subjected to step b) comprises green outer hull of the nut fruits at a content of at least 0.5 wt.-% on a dry basis based on the total weight of the mass in claim 6 and wherein the mass subjected to step b) comprises green outer hull of the nut fruits at a content of between 5 to 63 wt.-% on a dry basis based on the total weight of the mass in claim 7, Khachatrjan does not expressly disclose these recitations. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the quantity of the outer green skin through routine experimentation in the method of Khachatrjan with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Khachatrjan teaches the whole walnut fruits with green skin and the separated green material itself may also be used in the method (paragraphs [0012], [0015], and [0017]), and it is understood that, 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. There would have been a reasonable expectation of success. “[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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II).
With respect to claim 8, modified Khachatrjan is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein the mass subjected to step b) consists of whole, off-ground harvested almond fruits and/or walnut fruits in claim 8, Khachatrjan as modified by Diggs teaches this recitation since Diggs is relied upon for the teaching of off-ground harvesting of walnuts as addressed above in claim 1, and Khachatrjan teaches whole walnut fruits may be used as raw material (paragraphs [0012], [0015], and [0017]).
With respect to claim 12, modified Khachatrjan is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding wherein in step c), the ground mass is subjected to a roasting step before further process in step c) in claim 12, modified Khachatrjan teaches this recitation since Khachatrjan teaches subjecting the ground material to a heating treatment and further processing the material (paragraphs [0012] and [0017]).
With respect to claim 13, modified Khachatrjan is relied upon for the teaching of the method of claim 12 as addressed above.
Regarding the recitation of wherein the roasting step is carried out at a temperature of more than 65⁰C and less than or equal to 200⁰C in claim 13, modified Khachatrjan teaches this recitation since Khachatrjan teaches the heat treatment temperatures are from 100⁰C to 120⁰C (paragraphs [0012] and [0017]).
With respect to claim 17, modified Khachatrjan is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding wherein step b) is performed as a dry-grinding step without addition of a liquid to provide the ground mass in claim 17, modified Khachatrjan teaches this recitation since Khachatrjan is silent with respect to the addition of water during the grinding step (paragraphs [0012] and [0017]).
With respect to claim 19, modified Khachatrjan is relied upon for the teaching of the method of claim 17 as addressed above.
Regarding wherein the ground mass is subjected to a roasting process in claim 19, modified Khachatrjan teaches this recitation since Khachatrjan teaches subjecting the ground material to a heating treatment (paragraphs [0012] and [0017]).
With respect to claim 20, modified Khachatrjan is relied upon for the teaching of the method of claim 19 as addressed above.
Regarding the recitation of wherein the roasting step is carried out at a temperature of more than 65⁰C and less than or equal to 200⁰C in claim 20, modified Khachatrjan teaches this recitation since Khachatrjan teaches the heat treatment temperatures are from 100⁰C to 120⁰C (paragraphs [0012] and [0017]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TYNESHA L. MCCLAIN whose telephone number is (571)270-1153. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM ET.
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793