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 .
Applicants’ submission filed on 7/27/2026 has been entered as compliant. Claim 1 has been amended in the current response. Elected claims 1-5 and 9 are examined in the current application.
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 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Rejections of claim 1-5 and 9 made in the previous office action have been withdrawn based on applicant’s amendment to base claim 1. New rejections are presented below.
Claims 1, 4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over IDS reference to Kentaro et al (JP 2019208472 A with Machine translation), hereinafter Kentaro, in view of Schulz (US 4581446A) and Subo et al (US 20210037877A1), hereinafter Subo.
Note :All paragraphs of Kentaro refer to the English translation paragraphs.
Regarding claim 1 Kentaro teaches a method of producing a sponge cake (Para 2 and 39 of translation teach that types of cakes made include sponge cake and the all-in-mix method is taught in Para 8, 10, 16 and 30 of translation). Kentaro teaches comprising foaming a dough composition comprising “cereal flour comprising light flour, egg, sugar, an expander, edible oil and water by the all-in-mix method to obtain a cake dough” as claimed (Para 31 of translation for ingredients and Para 33 for the foaming step in -all-in- mix method). Step of baking is taught by Kentaro , e.g., in para 53 of translation specific baking step for sponge cake is taught.
Kentaro also teaches foam stabilizer for cake batter includes Hydroxypropyl methylcellulose (Para 29 of translation), hereinafter HPMC. Regarding the desired viscosity of foam stabilizer, Kentaro refers to the desired viscosity of pectin as part of Foam stabilizer to be between 200 cP to 2000 cP (Para 24 of translation), however Kentaro is silent regarding the specific HPMC having the viscosity and degree of substitution of methoxy groups as claimed in claim 1.
Cellulose ethers including HPMC were known to be produced with varying degrees of substitution of methoxy groups and varying viscosities before the effective filing date of the invention, based on the intended use of cellulose ethers. HPMC/ hydroxypropyl methylcellulose composition having viscosity in the claimed range where degree of substitution is also in the claimed range were known in the art before the effective filing date of the invention, as taught by Schulz. Schulz teaches hydroxypropyl methylcellulose/ HPMC usable in uses in food and pharmaceutical products as a binder (Column 1, lines 31-35). The HPMC taught by Schulz has a methoxy degree of substitution from about 1.1 to about 1.65, a viscosity measured as 2 percent solution of about 100 cPs (100 ,Pa.s) was known (Column 7, line 65 to column 8, line 4)., where both the viscosity as well as the DS falls in the claimed range recited in claims.
Further, to show the suitability of viscosity and methoxy degree of substitution of HPMC as taught by Schulz as capable of stabilizing foamed or aerated foods, was, reference is made to Sudo. Sudo teaches aerated foods where HPMC used provides foam stability and foam firmness (Para 25, 35, 209) and HPMC has a viscosity of 5 mPa- s to 1000 mPa.s when measured with a viscometer at 20°C using a 2% by mass aqueous solution (Para 39 of Sudo), which overlaps the claimed range of HPMC having a viscosity of 30 mPa- s to 800 mPa - s when measured with a viscometer at 20°C using a 2% by mass aqueous solution as claimed. Further, Sudo also teaches that DS of methoxy groups of HPMC is preferably from 1.0-2.2 and most preferably from 1.6 to 1.95 (Para 41 of Sudo), which overlaps the range of 1.6 to 2.1.
As Kentaro teaches HPMC but does not teach the specific HPMC type as instantly claimed, and based on the teaching of applied art to Kentaro, Schulz and Sudo, the following was known in the art before the effective filing date of the invention:
inclusion of hydroxypropyl methylcellulose, hereinafter HPMC, in cakes, sponge cakes, breads etc., was well known in the art before the effective filing date of the invention, as taught by Kentaro.
polysaccharide combinations including HPMC functioning as foam stabilizers for cake dough where the cakes are made with all-in-mix method was also know as taught by Kentaro.
specific HPMC products having the viscosity range and degree of Methoxy substitution in the claimed range was also known in the art before the effective filing of the invention, as taught by Schulz, Sudo.
HPMC having the viscosity range and degree of Methoxy substitution in the claimed range utilized in foamed or aerated foods to achieve stabilized foam where the aerated product has stable cells (Kentaro foam stabilizer, Sudo Para 25, 35, 209.
Therefore, it would have been well within the purview of one of ordinary skill in the art at the time of the invention to modify Kentaro and include specific HPMC component that can provide adequate viscosity to the cake batter, i.e., HPMC with a viscosity of a viscosity of 30 mPa- s to 800 mPa - s when measured with a viscometer at 20°C using a 2% by mass aqueous solution as claimed and DS of methoxy groups of HPMC in the range of 1.6 to 2.1, as taught by Schulz (Column 8, lines 1-4) and Sudo (Para 39 and 41). One of ordinary skill before the effective filing date of the invention would have been motivated to modify Kentaro and include HPMC at least for the purpose of including a foam stabilizer component that works well in cake batters as well as breads and other foamed or aerated products as a stabilizer and provides a stable and uniform foam structure where the cake substantially does not contain emulsifiers, as is taught by Kentaro (abstract).
Regarding the overlapping of ranges between the invention and prior art composition it is noted that in the case where the claimed ranges "overlap or lie inside the ranges disclosed by the prior art" a prima facie case of obviousness exists (In re Wetheim, 541 F2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)).
Further, it would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute one art recognized HPMC (i.e. generic as recited in Kentaro) for another (i.e. HPMC with viscosity from 5-100cPs/ mPa.s and DS from 1.0-2.2) in the cake as disclosed by Kentaro, depending on which specific type of batter was being mase and what were the other ingredients of the cake batter.
The Courts have held that the selection of a known material (i.e. aldehydes such as glutaraldehyde, hydroxyacetaldehyde, or malonaldehyde, as cross-linking agents), which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Claim 9 recites the same limitations of cake raw material as claim 1 and differs from claim 1 in the preamble where Caim 9 recites “A method for improving the swelling of sponge cake” Regarding the preamble in the context of the entire claim, the recitation “A method for improving the swelling of sponge cake” in the reading of the claim is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention' s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Claim 9 recites the same limitations of cake raw material as claim 1 including “a raw material hydroxypropyl methylcellulose having a viscosity of 30 mPa - s to 800 mPa -s when measured with a viscometer at 20°C using a 2% by mass aqueous solution and wherein the hydroxypropyl methylcellulose has a degree of substitution (DS) of methoxy groups in the range of 1.60 to 2.10”, which have already been addressed above in claim 1, hence the rejection of claim 1 also applies to claim 9.
Regarding claim 4, Kentaro teaches a method of producing a sponge cake (Para 2 and 39 of translation) using all-in-mix method (Para 8, 10, 16 and 30 of translation). Kentaro teaches comprising foaming a dough composition comprising “cereal flour comprising light flour, egg, sugar, an expander, edible oil and water by the all-in-mix method to obtain a cake dough” as claimed.Para 31 of translation for ingredients where the flours include wheat flour, cake flour, all-pupose flour and rice flour, where cake flour is light flour. Also see example where cake flour is the only flour used . Thus, Kentaro teaches of cereal flour comprises 75% by mass or more light flour.
Claim 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Kentaro, Schulz and Sudo, as applied above to claim 1, further in view of
Fukusawa et al (US 20100021610 A1), hereinafter Fukusawa.
All paragraphs of Kentaro refer to the English translation paragraphs.
Regarding claims 2, Kentaro in view of Schulz and Sudo, as applied above teaches the method of producing a sponge cake according to claim 1, but the prior art is silent regarding the content of HPMC and content of water in the doughThat “content of hydroxypropyl methylcellulose is in the range between 0.05% by mass and 2% by mass relative to the total mass of the cake dough”. However, use of HPMC in baked products like cakes and breads in the claimed range was known in the art before the time of effective filing date of the claimed invention as taught by Fukusawa. Fukusawa teaches of baked products like breads and cakes (Para 22) where HPMC with degree of methoxyl substitution ranges from 1.4-1.9 (Abstract, para 32-33), which overlaps with the claimed range for HPMC, i.e., Fukusawa is pertinent to the field of invention. Fukusawa teaches that HPMC can be “Added in an amount preferably from 0.1 to 3 parts by weight based on the weight of the cereal flour” (Para 50, 53) where the cereal flour used may be specific or commercially available materials (Para 54), which overlaps with the claimed range for HPMC from 0.05% to 2% by mass to the total mass of cake dough.
As the HPMC with DS recited in “Fukusawa” and claimed products are substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 195 USPQ 430, 433 (CCPA 1977) and MPEP 2112.01.
Thus, based at least on the teaching of Fukusawa, it would have been well within the purview of one of ordinary skill in the art before the effective filing of the invention to modify Kentaro and include specific HPMC component in an amount that can provide adequate texture viscosity to the baking batter, i.e., HPMC with a DS of methoxy groups of HPMC in the range as claimed (also as taught by Schulz and Sudo as applied to claim 1). One of ordinary skill before the effective filing date of the invention would have been motivated to modify Kentaro further and include HPMC in a desired amount as taught by Fukusawa at least for the purpose of including a stabilizer component in an amount that is effective in providing in bread or cake batters or dough with appropriate extension/ rise to achieve acceptable texture without making the baked product with “hard texture”, as is taught by Fukusawa (para 50).
Regarding the overlapping of ranges between the invention and prior art composition it is noted that in the case where the claimed ranges "overlap or lie inside the ranges disclosed by the prior art" a prima facie case of obviousness exists (In re Wetheim, 541 F2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)).
Regarding claim 5, Kentaro in view of Schulz and Sudo teaches a method of producing a sponge cake (Para 2 and 39 and examples) where all-in- mix method to achieve desired viscosity or thickness of batter is taught but Kentaro is silent regarding the relative proportion of water in the cake dough/ batter.
Cakes and bread doughs/ batters are either made from dry mixes by including all dry ingredients and adding water/ liquid/ moisture to the dry mix or by using some fresh/ hydrated ingredients that contain moisture and adjusting the amount of water added to accommodate for the water already present in hydrated/ fresh ingredients. Based on the type of ingredients employed, i.e., fresh vs paste vs dry, and the type of end product desired 9soft, medium or hard crust, the amount of water added was known to be altered. Fukusawa teaches bread and cake products and teaches that water may be added to a dough product in amounts ranging from 60-180 parts by weight based on 100 parts of cereal flour (Para 51), which overlaps the claimed range. Thus, based on the teaching of it would have been obvious to one of ordinary skill before the effective filing date of the invention to adjust the amount of added water/liquid to achieve a , to achieve the sponge cake dough with desired consistency before baking which makes a desirable light and fluffy texture of the cake after baking. One of ordinary skill in the art would have been motivated to utilize water in the range as taught by Fukusawa at least to avoid making excessively hard baked product or excessively risen and caved in baked product as taught by Fukusawa (para 51).
Regarding the overlapping of ranges between the invention and prior art composition it is noted that in the case where the claimed ranges "overlap or lie inside the ranges disclosed by the prior art" a prima facie case of obviousness exists (In re Wetheim, 541 F2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kentaro, Schulz and Sudo, as applied above to claim 1, further in view of
Maeda et al (JP 2011067195 A, machine translation), hereinafter Maeda.
All paragraphs of Kentaro refer to the English translation paragraphs.
Regarding claim 3, D1 and 2 teach baking powder (Para 96 of D1 and Para 76 of D2) which is the expander, but are silent regarding “expander free from aluminum salt”. However, baking powders free of aluminum were known in the art before the effective filing date of the invention, as taught by D3 (Abstract, para 6) and its use in cakes including sponge cake as taught in para 2 of D3). D3 also teaches demand for aluminum free baking powder in the market (Para 2 of D3). Therefore, in light of D3, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to utilize a baking powder composition that does not contain aluminum to make cakes including a sponge cake. The ordinary artisan would have been motivated to modify D1 at least for the purpose of choosing a baking powder without aluminum that is in demand by consumers.
Response to Arguments
Applicants’ arguments with respect to claims 1-5 and 9 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Applicant’s amendment to independent claim 1 changes the scope of claims, which necessitated new grounds of rejections. Claims 1-5 and 9 are addressed above.
Applicants’ arguments against D1 not teaching the type of HPMC etc., have been noted but D1 is not relied upon to address the claims, hence the arguments are moot.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JYOTI CHAWLA whose telephone number is (571)272-8212. The examiner can normally be reached M-F 9:30- 5:30.
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/JYOTI CHAWLA/Primary Examiner, Art Unit 1791
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