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 .
Election/Restrictions
Applicant’s election of Group I (claims 1-5 and 9) in the reply filed on 12/24/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Based on the response to restriction of 12/24/2025, non-elected claims 6-8 have been withdrawn from consideration and elected claims 1-5 and 9 are examined in the application.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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-2, 4-5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over IDS reference to Ota et al (JP 2018068128 A), hereinafter D1, in view of Ota et al. (JP 2017079737 A), hereinafter D2, where all paragraphs of D1 or D2 refer to the English translation paragraphs.
Regarding the invention as claimed D1 refer to the paragraphs of English translation.
Regarding claims 1 and 3, D1 discloses “In the plastic oil and fat composition of the present invention, hydroxypropyl methylcellulose is blended into the dough of a baked product" (para 27), wherein the baked product may be “a cake” of different types such as “pound cakes, etc.” (para 76). D1 also discloses that the hydroxypropyl methylcellulose, hereinafter HPMC, may have a viscosity of 63.3 mPa-s or 726 mPa-s or 58 mPa-s (para 40) when measured with a viscometer at 20° C. using a 2% by mass aqueous solution (para 40, especially last sentence and para 84), which fall in the recited viscosity range of “30 mPa-s to 800 mPa-s”. D1 describes that cereal flour for dough may be “weak flour” (para 61), which reads on recited “light flour” (as explained in para 49, 1st sentence of PGPUB of application, which discloses “Light flour (soft flour, weak flour)”). D1 also discloses when making cakes, dough may also include egg (para 96), sugar (see “white sugar” in para 99), an expander ( ”baking powder” disclosed in para 96, noting that para 56 of PGPUB of current application states "Examples of the expander include baking powder, baking soda (sodium bicarbonate), ammonium carbonate and ammonium bicarbonate"), edible oil (part of “margarine” described in para 96), followed by baking (para 96) and that the method comprises “foaming” of dough composition and that the dough also contains “water” (as part of margarine includes aqueous phase).
D1 does not teach that the cake is a “sponge” cake, and adding water to the dough, however, both are well known in the art at the time of the effective filing date of the invention as taught by D2. Regarding the type of cake being a sponge cake, D2 teaches of types of cakes including sponge cake and method of making sponge cake (abstract, para 61 and para 76 of D2). D2 para 52 teaches “Sponge cake is basically a dough in which flour, egg and sugar are blended at a mass ratio of 1: 1: 1, and in order to improve oil and fat and foam stability, A fluidized shortening is preferably added. The ratio varies depending on the shape of the sponge cake (sponge table, sheet, busse), for example, flour: egg: sugar: fat etc. (oil, fat, foaming agent, emulsified fat, fluid shortening) is 100: 80-250: 80-180: 0-80 ” (Para 52 of translation). D2 also teaches soft flour/ light flour, sugar, egg, baking powder, and water. Therefore, in light of D2, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to make a sponge cake, which is a light and fluffy cake where the cake dough includes adding water. The ordinary artisan would have been motivated to modify D1 at least for the purpose of choosing a specific type of cake that is well-liked by consumers for its organoleptic qualities of light and fluffy texture.
Regarding claim 2, D1 para 14 discloses "the content of the hydroxypropyl methylcellulose is 0.001 to 5% by mass relative to the mass of the total composition" (see para 14), which overlaps with the range recited in claim 2 which recites “the 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”.
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 Wertheim, 541 F2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)).
Regarding claim 4, D1 teaches soft flour for making cakes (Para 96 and 97) and D2 teaches a method of producing a sponge cake according to claim 1, wherein the cereal flour comprising 75% by mass or more light flour. Both D1 and D2 teaches all of the flour is soft flour for sponge cake (Para 76 of D2 and Para 96-97 of D1).
Regarding claim 5, D1 in view of D2 as applied above teaches sponge cake. D2 teaches a method of producing a sponge cake, where “Sponge cake is basically a dough in which flour, egg and sugar are blended at a mass ratio of 1: 1: 1” (Para 52), i.e., the flour and eggs are in equal amount, where the eggs are whole eggs and contain liquid and contribute to the water content. Further, para 76 of D2 teaches a sponge cake dough has a water/ liquid content in addition to whole eggs, 20 parts by weight of added water,, where the total amount of water or liquid ingredients not including the water in aqueous shortening amounts to about 120 parts for 100 parts by weight of soft flour/cereal flour, which falls in the range of “120 parts by mass to 250 parts by mass relative to 100 parts by mass of the cereal flour” as instantly claimed. Therefore, in light of sponge cake as taught by D2, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to make a sponge cake dough including liquids, and added water. Cakes 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, 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 desired cake/ sponge cake dough consistency.
The ordinary artisan would have been motivated to modify D1 at least for the purpose of including moisture in a desired amount, such that for every 100 parts of flour to 120 parts to 250 parts of water/liquids, to achieve the sponge cake dough with desired consistency before baking to achieve the desirable light and fluffy texture of the cake after baking.
Regarding claim 9, D1 in view of D2 as applied above to claim 1, teaches a method of making cakes by including hydroxypropyl methylcellulose, hereinafter HPMC in cakes (D1, para 96 where HPMC is blended in the dough for cake), where the HPMC has a viscosity of 63.3 mPa-s or 726 mPa-s or 58 mPa-s (para 40 D1 and para 58 of D2) when measured with a viscometer at 20° C. using a 2% by mass aqueous solution (para 40, especially last sentence and para 84), which fall in the recited viscosity range of “30 mPa-s to 800 mPa-s”. D1 teaches that the 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 which overlaps with the invention as recited in claim 2.
In the instant case D1 teaches HPMC, having the same viscosity properties as instantly claimed, in the claimed range, therefore, it follows that the function of HPMC in improving the texture of a baked product swelling would be obvious. The recitation of “improving the swelling” is only a statement of the properties of cake or bread dough containing HPMC . Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of obviousness has been established. In re Best, 195 USPQ 430, 433 (CCPA 1977) and MPEP 2112.01.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over IDS reference to D1, and D2, as applied above to claims 1, further in view of
Maeda et al (JP 2011067195 A, machine translation), hereinafter D3.
All paragraphs of D1 or D2 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 aught 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 at the time of 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.
Conclusion
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/JYOTI CHAWLA/Primary Examiner, Art Unit 1791