DETAILED ACTION
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 the Application
Receipt of the Response after Final Office Action filed 06/01/2026 is acknowledged.
The status of the claims stands as follows:
Pending claims: 25-46
Withdrawn claims: None
Previously cancelled claims: None
Newly cancelled claims: None
Amended claims: None
New claims: None
Claims currently under consideration: 25-46
Currently rejected claims: 25-46
Allowed claims: None
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.
Claims 25-46 are rejected under 35 U.S.C. 112(b) 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.
Claims 25 and 36 recite a ratio of slowly available glucose (SAG) content to total available starch (TAS) content of from about 0.40:1 to about 0.52:1. However, the claims do not recite a unit of measurement associated with the ratio (e.g., weight ratio, volume ratio). Therefore, the claims are indefinite.
For the purpose of this examination, the ratio will be interpreted as being a weight ratio.
Claim 46 recites “the baked cereal product, wherein the grits”. However, claim 46 does not recite a claim from which to depend. Therefore, the claim is indefinite.
For the purpose of this examination, claim 46 will be considered to depend from claim 25.
Claims 26-35 and 37-45 are rejected by reason of dependency from claim 25 or claim 36.
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 25-45 are rejected under 35 U.S.C. 103 as being unpatentable over Okoniewska (WO 2014/152037; IDS citation) in view of Folz (WO 2012/120154; IDS citation).
Regarding claims 25, 35, and 36, and 45, Okoniewska teaches a baked cereal product (corresponding to biscuit) comprising a SAG content of greater than about 16 per 100 g of the baked product [0014]; a moisture level of about 0.5 wt.% to about 5 wt.% of the baked cereal product [0038]; and a water activity of less than about 0.3 [0015]. These values fall within the SAG content, moisture level, and water activity ranges recited in present claims 25 and 36. Okoniewska teaches that the product may comprise refined flour in an amount from about 30 wt.% to about 70 wt.%, wherein the refined flour may be oat flour, corn flour, tapioca flour, sago flour, and/or legume flour as recited in present claims 25 and 36 [0018]-[0019]. This disclosed amount of refined flour falls within the refined flour concentration recited in present claims 25 and 36.
The disclosed amount of refined flour of from about 30 wt.% to about 70 wt.% means that the total concentration of ingredients other than refined flour in the product of Okoniewska may be from about 30 wt. to 70 wt.%. Therefore, the concentration of each additional ingredient may be from greater than 0 wt.% to 70 wt.%. Okoniewska teaches that the product may further comprise whole grain flour, wherein the whole grain flour may be selected from whole grain oat flour and whole grain corn flour [0018], [0020]. Since whole grain flour is an additional ingredient, whole grain flour may be present in a concentration from greater than 0 wt.% to 70 wt.%, which encompasses the claimed whole grain flour concentration recited in present claims 25 and 36. As such, it would have been obvious to have included up to 6.5 wt.% of whole grain flour in the baked cereal product as this amount falls within the range taught by the prior art.
Okoniewska teaches that the product may further comprise grain cuts and/or grits [0021]. Since the total amount of ingredients other than refined flour in the product may be from about 30 wt.% to about 70 wt.% as described above, the concentration of grain cut and/or grits in the product may be from an amount greater than 0 wt.% to 70 wt.%, which encompasses the concentration of grain cut and/or grits recited in present claims 25, 35, and 36. As such, it would have been obvious to have included 3-25 wt.% or 3.2-15 wt.% of grits and/or cuts in the baked cereal product as these amounts fall within the range taught by the prior art.
In regard to the encompassing ranges would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.I.
Okoniewska teaches that the baked cereal product may be produced by a method comprising the steps of: (a) preparing a dough comprising the flours and grits and/or cuts; (b) forming the dough to provide a dough piece; and (c) baking the dough piece [0036]-[0038] as recited in present claim 36.
Okoniewska teaches that a higher content of SAG is associated with various health benefits [0002]; and that consumers desire food products with SAG [0008]. Okoniewska does not teach that its baked cereal product has a weight ratio of SAG to TAS of from about 0.40:1 to about 0.52:1 as recited in present claims 25 and 36.
However, Folz teaches a baked cereal product (corresponding to biscuit) comprising a refined flour and whole grain flour; and having a moisture content of 0.5-5 wt.% (page 6, lines 26-28; page 18, lines 25-26). Folz teaches that the product has a weight ratio of SAG to TAS of at least 0.40:1 to 0.80:1 (corresponding to (SDS/(SDS+RDS)) of at least 40 wt.% to at most 80 wt.%), wherein the maximum weight ratio of 0.80:1 is for digestibility of the product (page 5, lines 4-8). This disclosed weight ratio of SAG to TAS of at least 0.40:1 to 0.80:1 encompasses the claimed weight ratio. The selection of a value within the encompassing range renders the claimed weight ratio obvious. MPEP 2144.05.I. Folz also teaches that the baked cereal product has a SAG content of at least 15 g per 100 g of the baked cereal product (page 6, line 18).
It would have been obvious for a person of ordinary skill in the art to have modified the product of Okoniewska to have a weight ratio of SAG to TAS of 0.40:1 to 0.80:1 as taught by Folz. Since Okoniewska teaches a baked cereal product comprising refined and whole grain flours and having a SAG content of greater than about 16 per 100 g of the baked product [0014], [0019], [0020], but does not disclose a suitable weight ratio of SAG to TAS in the product, a skilled practitioner would have been motivated to consult an additional reference such as Folz in order to determine a suitable weight ratio of SAG to TAS for a baked cereal product comprising refined and whole grain flours and comprising a SAG content of greater than about 16 per 100 g of the baked product. Therefore, the claimed weight ratio is rendered obvious.
Regarding claims 26, 27, 37, and 38, Okoniewska teaches the invention as described above in claims 25 and 36, including the SAG content may be greater than about 20 g per 100 g of the product [0014], which falls within the range recited by present claims 26, 27, 37, and 38.
Regarding claim 28, Okoniewska teaches the invention as described above in claim 25, including the product is dough-based [0036].
Regarding claims 29, 30, 39, and 40, Okoniewska teaches the invention as described above in claims 25 and 36, including that the disclosed products are intended to retain their initial SAG content after baking [0008]-[0011], [0023]. Therefore, Okoniewska at least suggests that the post-baked SAG content of the product includes a range comprising 0% change from the SAG content of the dough prior to baking, thereby rendering the amounts recited in present claims 29, 30, 39, and 40 obvious. Further, the Office does not have laboratory facilities to test claim limitations drawn toward results of practicing the method as claimed. Accordingly, such a post-baked SAG content difference does not serve to distinguish the product as claimed from the prior art and are thus considered obvious to one having ordinary skill in the art.
Regarding claims 31, 32, 41, and 42, Okoniewska teaches the invention as described above in claims 25 and 36, including the product comprises protein in an amount of about 0.1 wt.% to about 20 wt.% of the product [0026]; and fat in an amount of about 0.1 wt.% to about 20 wt.% of the product [0028], which fall with the protein and fat ranges recited in present claims 31, 32, 41, and 42.
Regarding claims 33, 34, 43, and 44, Okoniewska teaches the invention as described above in claims 25 and 36, including the product may further comprise fruit and/or chocolate chips [0029] as recited in present claims 33, 34, 43, and 44.
Regarding claim 45, Okoniewska teaches the invention as described above in claim 44, including that the product may further comprise grain cuts and/or grits [0021]. Since the total amount of ingredients other than refined flour in the product may be from about 30 wt.% to about 70 wt.% as described above, the concentration of grain cut and/or grits in the product may be from an amount greater than 0 wt.% to 70 wt.%, which encompasses the concentration of grain cut and/or grits recited in present. The selection of a value within the encompassing range renders the claimed concentration obvious. MPEP 2144.05.I.
Claim 46 is rejected under 35 U.S.C. 103 as being unpatentable over Okoniewska (WO 2014/152037; IDS citation) in view of Folz (WO 2012/120154; IDS citation) as applied to claim 25 above, and further in view of Bhattacharya (IN332DE2002A; previously cited).
Regarding claim 46, Okoniewska teaches the invention as described above in claim 25, including that the product may further comprise grain cuts and/or grits [0021]; and that the particle size of the flakes, grains, and seed ingredients in the baked cereal product is dependent upon the desired texture of the final product [0056].
The prior art does not teach that the grits and/or cuts have a particle size from about 1 mm to about 2 mm
However, Bhattacharya teaches that cereal grits may have a particle size of 0.1-0.7 mm (page 12, 4th paragraph).
As the texture of the final baked cereal product is a variable that can be modified, among others, by adjusting the particle size of the grits and/or cuts, the particle size of the grits and/or cuts would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed particle size of the grits and/or cuts cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the particle size of the grits and/or cuts in the in the baked cereal product of Okoniewska by using a particle size of 0.1-0.7 mm disclosed by Bhattacharya as a guide to obtain the desired texture as taught by Okoniewska (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). “[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.).
Response to Arguments in the Pre-Appeal Brief Request
Applicant argued that neither Okoniewska alone nor in combination with Folz discloses a baked cereal product comprising up to 6.5 wt.% whole grain flour as presently claimed as Okoniewska teaches that the product contains about 20 wt.% to about 95 wt.% whole grain flour Applicant argued that the Examiner used hindsight reconstruction to arrive at the presently claimed amount of whole grain flour (Request, pages 1-2, section A).
However, as described above in the rejection of present claim 1, Okoniewska teaches that the product may comprise refined flour in an amount from about 30 wt.% to about 70 wt.% [0018]-[0019]. The disclosed amount of refined flour means that the total concentration of ingredients other than refined flour in the product of Okoniewska may be from about 30 wt. to 70 wt.%. Therefore, the concentration of each additional ingredient in the product may be from greater than 0 wt.% to 70 wt.%. Okoniewska teaches that the product may further comprise whole grain flour [0018]. Since whole grain flour is an additional ingredient, whole grain flour may be present in a concentration from greater than 0 wt.% to 70 wt.%, which encompasses the claimed whole grain flour concentration. The selection of a value within the encompassing range renders the claimed concentration obvious. MPEP 2144.05.I.
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).
Applicant then argued that subrange obviousness analysis under MPEP §2144.05 in the Office Action regarding the claimed SAG to TAS ratio is insufficient. Applicant argued that a prima facie case of obviousness of requires that the prior art range and the claimed range overlap and that the prior art teaches away from values outside the claimed range or that the prior art discloses a specific example falling within the claimed range. Applicant argued that the statement “[t]he selection of a value within the encompassing range renders the claimed weight ratio obvious. MPEP 2144.05.I.” in the Office Action is a conclusory statement as it does not provide any articulated reasoning with some rational underpinning to support the legal conclusion of obviousness (Request, page 2, 1st paragraph under section B – page 3, 2nd paragraph).
However, MPEP §2144.05 does not state any such requirements in relation to overlapping ranges asserted by the Applicant. Instead, MPEP §2144.05 states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists” and “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness”. The claimed range of SAG to TAS ratios “lie inside ranges disclosed by the prior art”, i.e., ranges that are encompassed by Folz. Therefore, according to MPEP §2144.05, those claimed ranges are obvious in view of Folz. As such, the statement “[t]he selection of a value within the encompassing range renders the claimed weight ratio obvious. MPEP 2144.05.I.” is articulated reasoning with some rational underpinning to support the legal conclusion of obviousness, and not a mere conclusory statement. Therefore, Applicant’s arguments asserted requirements for overlapping/encompassing ranges are unpersuasive.
Applicant then argued that the proposed combination of Okoniewska and Folz is inconsistent as combining Okoniewska’s buckwheat grits which inherently raise the SAG:TAS ratio with Folz’s SAG:TAS ratio would drive the resulting product’s ratio above the upper limit of about 0.52:1. Applicant pointed to the experimental data in Examples 1-2 of the present specification as demonstrating that a buckwheat grit concentration of 6-8 wt.% achieves the claimed SAG:TAS ratio (Request, page 3, 3rd -4th paragraphs).
However, Okoniewska does not disclose a baseline SAG:TAS ratio from which to compare the SAG:TAS of its products (i.e., Okoniewska does not disclose a comparative product having a SAG:TAS ratio lower than the SAG:TAS ratio of Okoniewska from which to conclude that the SAG:TAS ratio in the product of Okoniewska is higher). As such, even if the goal of Okoniewska is to produce a product having a higher SAG:TAS ratio, the higher SAG:TAS ratio in the product of Okoniewska may be in comparison to a product having a SAG:TAS ratio of 0.1:1 whereas the product of Okoniewska may have a SAG:TAS ratio of 0.41:1 due to the presence of the buckwheat grits. Since Applicant has not pointed to any baseline SAG:TAS in Okoniewska that would necessarily cause the SAG:TAS ratio of Okoniewska to be above the claimed SAG:TAS ratio (e.g., a baseline SAG:TAS ratio of 0.9:1) and Applicant’s experimental data demonstrates that the buckwheat grits, such as those disclosed by Okoniewska, achieve the claimed SAG:TAS ratio, Applicant’s arguments asserting that the proposed combination of Okoniewska and Folz is inconsistent are unpersuasive.
Applicant then argued that the modification proposed in the Office Action would improperly change the principle of operation of Okoniewska as achieving Folz’s SAG:TAS ratio in the product of Okoniewska would require fundamental reformulation and a change to the principle of operation of Okoniewska (Request, page 3, 5th paragraph – page 4, 2nd paragraph).
However, Okoniewska teaches that: its product has a SAG content of at least 16 g per 100 g of the baked cereal product [0014]; a higher content of SAG is associated with various health benefits [0002]; and consumers desire food products with SAG [0008]. As such, Okoniewska at least suggests that the baked cereal product of Okoniewska has a SAG:TAS ratio that would provide health benefits. Folz discloses a baked cereal product having a SAG content of at least 15 g per 100 g of the baked cereal product; and having a SAG:TAS ratio of 0.40:1 to 0.80:1 wherein the ratio provides digestibility of the product (page 5, lines 4-8; page 6, line 18). Both references disclose a baked cereal product comprising at least refined flour and whole grain flour and having a water content of 0.5-5 wt.%. Okoniewska discloses the inclusion of buckwheat grits in its product. Folz does not teach against the product containing buckwheat grits. Since there is such overlap between the teachings of ingredients and SAG content in the baked cereal products of Okoniewska and Folz; and since one reference does not teach away from the disclosures of the other, it is unclear as to how and what reformulation is necessary to achieve the SAG:TAS ratio of Folz in the product of Okoniewska that would lead to a change in the principle of operation of Okoniewska. Therefore, Applicant’s arguments regarding such reformulation and change in principle of operation is unpersuasive.
Applicant then argued that Bhattacharya is non-analogous art as Bhattacharya is directed to a fundamentally different technical problem than the problem addressed by the Applicant. Applicant argued that the grits of Bhattacharya serve as a substrate for protein coating and are intended for further cooking while the present invention is directed toward incorporating grits into a baked cereal product (Request, page 4, 1st paragraph under section A – page 5, 2nd paragraph).
In response to applicant's argument that Bhattacharya is non-analogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Bhattacharya is concerned with preparing cereal grits for food products while the presently claimed invention is concerned with using cereal grits in a food product. Therefore, both Bhattacharya and the presently claimed invention are related as being within the field of the present inventor’s endeavor. Therefore, Applicant’s arguments regarding Bhattacharya being non-analogous art is unpersuasive.
Applicant then argued that Bhattacharya teaches away from the claimed particle size as the particle size in Bhattacharya is smaller than the claimed particle size. Applicant argued that Bhattacharya teaches that grits should be small for coating purposes and not made larger (e.g., 1-2 mm) (Request, page 5, 1st-3rd paragraphs under section B).
However, Okoniewska discloses that grit particle size is a result-effective variable [0056]; and Bhattacharya does not criticize, discredit, or otherwise discourage using a particle size outside of 0.1-0.7 mm, especially wherein the term “may” used in the phrase “wherein the particle size of the cereal grit may be in the range of 100-700 microns” in Bhattacharya (page 12, 4th paragraph) suggests that the particle size range may be outside of the range of 0.1-0.7 mm (e.g., 1 mm). MPEP 2123.II. Therefore, Bhattacharya does not teach away from the claimed particle size and Applicant’s arguments regarding such teaching away is unpersuasive.
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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/K.P.K./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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