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 .
The amendment filed June 12, 2026 is acknowledged. Claims 1 and 5-20 are pending in the application. Claims 17-20 are withdrawn from consideration.
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 8, 15, and 16 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 8 recites “wherein the almond size is 23/25”. It is unclear what is intended by this recitation. More specifically, it is uncertain how the size is measured or quantified, and no unit of measurement has been provided. Therefore, the scope of the claim is indefinite. For the purpose of the examination, the recitation of “wherein the almond size is 23/25” in claim 8 (emphasis added) is interpreted as “wherein the size of the almond provides between 23 and 25 almonds per ounce of almonds” (emphasis added).
Claim 15 recites “the almond is size 23/25” at line 3. It is unclear what is intended by this recitation. More specifically, it is uncertain how the size is measured or quantified, and no unit of measurement has been provided. Therefore, the scope of the claim is indefinite. For the purpose of the examination, the recitation of “the almond is size 23/25” in line 3 claim 15 (emphasis added) is interpreted as “the size of the almond provides between 23 and 25 almonds per ounce of almonds” (emphasis added).
Claim 16 recites “the almond is size 23/25” at line 3. It is unclear what is intended by this recitation. More specifically, it is uncertain how the size is measured or quantified, and no unit of measurement has been provided. Therefore, the scope of the claim is indefinite. For the purpose of the examination, the recitation of “the almond is size 23/25” in line 3 claim 16 (emphasis added) is interpreted as “the size of the almond provides between 23 and 25 almonds per ounce of almonds” (emphasis added).
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 and 5-13 are rejected under 35 U.S.C. 103 as being unpatentable over Thomas et al. US 20080317907 (hereinafter “Thomas”) in view of Kenner et al. US 20200008456 (hereinafter “Kenner”).
With respect to claim 1, Thomas teaches an almond product (paragraph [0038], [0089], and [0103]).
Regarding the recitation of comprising a coating, wherein the coating comprises vitamin D and an oil in claim 1, Thomas teaches coated almonds, and the coating comprises an oil. The coating may additionally comprise vitamin(s) (paragraphs [0028], [0038], [0048], [0049], [0089], and [0103]).
However, Thomas does not expressly disclose the vitamin(s) includes vitamin D (paragraphs [0028] and [0048]).
Kenner relates to snacks with nutriments. The snacks include a base, such as nuts, that may be coated with oils and nutriments. The nutriments may include vitamin D (Abstract; and paragraphs [0007], [0043], [0044], [0046], and [0083]).
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 Kenner, to select vitamin D as the vitamin in Thomas 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 Kenner and Thomas similarly teach oil and vitamin coated nuts, Kenner teaches vitamin D increases intestinal absorption of critical nutrients, is useful in supporting bone health, and provides protection against a sun activity side effect (paragraphs [0035], [0036], [0039], and [0070]), Thomas is not limited to the particular vitamin selected (paragraphs [0028] and [0048]), and said combination would amount to the use of a known element 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 selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
With respect to claims 5 and 6, modified Thomas is relied upon for the teaching of the almond of claim 1 as addressed above.
Regarding the recitation of comprising about 200 to about 1800 international units, about 500 to about 1500 international units, about 600 to about 1400 international units, about 700 to about 1300 international units, about 800 to about 1200 international units, about 800 to about 1250 international units, or about 900 to about 1100 international units of the vitamin D per ounce of almond in claim 5 or comprising about 400 or about 1000 international units of the vitamin D per ounce of almond in claim 6, Thomas does not expressly disclose the claimed quantity of the vitamin. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the quantity of vitamin through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Thomas teaches the vitamin is provided in effective amounts to achieve various product benefits which is a matter of choice (paragraphs [0048] and [0049]) 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 7, modified Thomas is relied upon for the teaching of the almond of claim 1 as addressed above.
Regarding the recitation of wherein the almond is skinless, shelled, blanched, and/or roasted in claim 7, modified Thomas teaches this limitation since Thomas teaches the almond is blanched, shelled, and/or roasted (paragraphs [0038], [0089], and [0103]).
With respect to claim 8, modified Thomas is relied upon for the teaching of the almond of claim 1 as addressed above.
Regarding wherein the size of the almond provides between 23 and 25 almonds per ounce of almonds in claim 8, Thomas does not expressly disclose this limitation. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the size of the almonds through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because the size of the almond can be selected as desired and is a matter of choice, the size of the almond does not provide a patentable feature over the prior art, and such a modification would have involved a mere change in the size (or dimension) of a component. There would have been a reasonable expectation of success. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.).
With respect to claim 9, modified Thomas is relied upon for the teaching of the almond of claim 1 as addressed above.
Regarding the recitation of further comprising an oil selected from grapeseed oil, olive oil, sunflower oil, or combinations thereof in claim 9, modified Thomas teaches this limitation since Thomas teaches the product comprises sunflower oil (paragraph [0052]).
With respect to claim 10, modified Thomas is relied upon for the teaching of the almond of claim 1 as addressed above.
Regarding the recitation of further comprising a flavor additive selected from salt, black pepper, garlic powder, Mexican spice, everything bagel seasoning, dark chocolate coconut, dark chocolate, honey cinnamon, cinnamon, 5 pepper blend, and combinations thereof in claim 10, modified Thomas teaches this limitation since Thomas teaches the product comprises flavoring such as salt, honey, garlic powder, cinnamon, and mixtures thereof (paragraphs [0028], [0048], [0049], [0055]-[0057] [0089], and [0103]).
With respect to claim 11, modified Thomas is relied upon for the teaching of the almond of claim 10 as addressed above.
Regarding the recitation of wherein the flavor additive is salt, and the salt is sea salt in claim 11, Thomas does not expressly disclose the salt includes sea salt (paragraphs [0028], [0048], [0049], [0055]-[0057] [0089], and [0103]).
Kenner relates to snacks with nutriments. The snacks include a base, such as nuts, that may be coated with oils, nutriments, and salt such as sea salt (Abstract; and paragraphs [0007], [0042]-[0044], [0046], and [0083]).
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 Kenner, to select sea salt as the salt in Thomas based in its suitability for its intended purpose with the expectation of successfully preparing an organoleptically desirable product. One of ordinary skill in the art would have been motivated to do so because Kenner and Thomas similarly teach oil and salt coated nuts, Kenner teaches sea salt may be used to impart a salty flavor (paragraph [0085]), Thomas is not limited to the particular salt selected and teaches the salt is used to achieved enhanced flavor impact (paragraphs [0028], [0048], and [0049]), and said combination would amount to the use of a known element 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 selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
With respect to claim 12, modified Thomas is relied upon for the teaching of the almond of claim 10 as addressed above.
Regarding the recitation of comprising about 0.1 wt% to about 15.0 wt%, about 2.0 wt% to about 12.0 wt%, about 4.0 wt% to about 10.0 wt%, about 6.0 wt% to about 9.0 wt%, or about 7.5 wt% to about 8.5 wt% of the flavor additive in claim 12, modified Thomas teaches this limitation since Thomas teaches the almond product comprises about 2% by weight to about 15% by weight, about 4% by weight to about 8% by weight, or about 0.90% by weight of the flavoring (paragraphs [0057], [0089], and [0103]).
With respect to claim 13, modified Thomas is relied upon for the teaching of the almond of claim 12 as addressed above.
Regarding the recitation of comprising about 8.0 wt% or about 0.5 wt% of the flavor additive in claim 13, modified Thomas teaches this limitation since Thomas teaches the almond product comprises about 4% by weight to about 8% by weight or about 0.90% by weight of the flavoring (paragraphs [0057], [0089], and [0103]) and overlaps with the presently claimed values. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Thomas et al. US 20080317907 (hereinafter “Thomas”) in view of Barnes et al. GB 1086105 (hereinafter “Barnes”) and Kenner et al. US 20200008456 (hereinafter “Kenner”).
With respect to claim 14, Thomas teaches an almond product (paragraphs [0032] and [0038]).
Regarding the recitation of comprising a coating, wherein the almond is skinless, the coating comprises about 200 to about 1800 international units of a nutritional additive per ounce of almond, and the nutritional additive is vitamin D in claim 14, Thomas teaches coated almonds, and the coating comprises vitamin(s) (paragraphs [0028], [0032], [0038], and [0048]).
However, Thomas does not expressly disclose the almond is skinless.
Barnes teaches coated food articles. The food articles may be almonds with the skins absent, and the coating may contain a vitamin (P1, L78-80; and P4, L92-94, 97-99, and 121-126).
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 Barnes, to select skinless almonds based in its suitability for its intended purpose in Thomas with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Barnes and Thomas similarly teach coated almond products comprising vitamin, the type of almond selected is a matter of choice and is not limited in the disclosure of Thomas, coated, skinless almonds were known in the art before the effective filing date of the claimed invention as demonstrated in Barnes, and said combination would amount to the use of a known element 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 selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Thomas also does not expressly disclose the vitamin(s) include vitamin D.
Kenner relates to snacks with nutriments. The snacks include a base, such as nuts, that may be coated with oils and nutriments. The nutriments may include vitamin D (Abstract; and paragraphs [0007], [0043], [0044], [0046], and [0083]).
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 Kenner, to select vitamin D as the vitamin in Thomas 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 Kenner and Thomas similarly teach oil and vitamin coated nuts, Kenner teaches vitamin D increases intestinal absorption of critical nutrients, is useful in supporting bone health, and provides protection against a sun activity side effect (paragraphs [0035], [0036], [0039], and [0070]), Thomas is not limited to the particular vitamin selected (paragraphs [0028] and [0048]), and said combination would amount to the use of a known element 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 selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Additionally, Thomas does not expressly disclose the claimed quantity of the vitamin. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the quantity of vitamin through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Thomas teaches the vitamin is provided in effective amounts to achieve various product benefits which is a matter of choice (paragraphs [0048] and [0049]) 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 15, modified Thomas is relied upon for the teaching of the product of claim 14 as addressed above.
Regarding wherein the almond is blanched and roasted, the size of the almond provides between 23 and 25 almonds per ounce of almonds, and the coating comprises: about 800 to about 1250 international units of a nutritional additive per ounce of almond, wherein the nutritional additive is vitamin D, about 0.2 wt% to about 1.2 wt% oil, and about 0.1 wt% to about 1.15 wt% of a flavor additive in claim 15, modified Thomas teaches the almond is blanched and roasted as well as the claimed oil and flavor additive quantities in the coating since Thomas teaches the almond is blanched and roasted, and the coating comprises up to about 20%, such as about 1%, by weight of oil and about 1% to about 4% by weight of a flavor additive (paragraphs [0038], [0052], and [0055]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Additionally, Thomas as modified by Kenner teaches the nutritional additive is vitamin D since Kenner is relied upon for the teaching of vitamin D as addressed above in claim 14.
Thomas does not expressly disclose the claimed almond size. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the size of the almonds through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because the size of the almond can be selected as desired and is a matter of choice, the size of the almond does not provide a patentable feature over the prior art, and such a modification would have involved a mere change in the size (or dimension) of a component. There would have been a reasonable expectation of success. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.).
Additionally, Thomas does not expressly disclose the claimed quantity of the vitamin. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the quantity of vitamin through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Thomas teaches the vitamin is provided in effective amounts to achieve various product benefits which is a matter of choice (paragraphs [0048] and [0049]) 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 16, modified Thomas is relied upon for the teaching of the product of claim 14 as addressed above.
Regarding wherein the almond is blanched and roasted, the size of the almond provides between 23 and 25 almonds per ounce of almonds, and the coating comprises: about 300 to about 500 international units of a nutritional additive per ounce of almond, wherein the nutritional additive is vitamin D, about 0.2 wt% to about 1.2 wt% sunflower oil, and about 0.1 wt% to about 1.15 wt% of a flavor additive in claim 16, modified Thomas teaches the almond is blanched and roasted as well as the claimed sunflower oil and flavor additive quantities in the coating since Thomas teaches the almond is blanched and roasted, and the coating comprises up to about 20%, such as about 1%, by weight of sunflower oil and about 1% to about 4% by weight of a flavor additive (paragraphs [0038], [0052], and [0055]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Additionally, Thomas as modified by Kenner teaches the nutritional additive is vitamin D since Kenner is relied upon for the teaching of vitamin D as addressed above in claim 14.
Thomas does not expressly disclose the claimed almond size. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the size of the almonds through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because the size of the almond can be selected as desired and is a matter of choice, the size of the almond does not provide a patentable feature over the prior art, and such a modification would have involved a mere change in the size (or dimension) of a component. There would have been a reasonable expectation of success. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.).
Additionally, Thomas does not expressly disclose the claimed quantity of the vitamin. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the quantity of vitamin through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Thomas teaches the vitamin is provided in effective amounts to achieve various product benefits which is a matter of choice (paragraphs [0048] and [0049]) 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).
Response to Arguments
Applicant’s remarks filed June 12, 2026 are acknowledged.
Applicant’s arguments have been fully considered, but they are unpersuasive.
Applicant argues the recited almond size refers to a range of almond kernels per ounce, which is commonly used in the art without specifying units. The claimed almond size of 23/25 specifies 23-25 almond kernels per ounce of almonds (P5).
Examiner disagrees and maintains the position that the scope of claims 8, 15, and 16 cannot be ascertained. Applicant’s interpretation of “wherein the almond size is 23/25” as recited in claims 8, 15, and 16 is not readily apparent to one of ordinary skill in the art, and no definition for “size” has been provided in the instant specification. It is uncertain how the claimed size is measured or quantified, and no unit of measurement has been provided. Thus, the scope of claims 8, 15, and 16 is indefinite. Applicant is reminded that 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. 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).
Applicant argues the Examiner has acknowledged that Thomas does not teach or suggest adding vitamin D as a nutritional additive. Kenner does not explicitly state that the snack may be a nut or seed product, let alone the specifically claimed almond. The Examiner has not identified any disclosure in Kenner that describes applying a coating comprising an oil and a nutritional additive to a snack product. Kenner has a broad disclosure that covers a long list of possible snacks, sun defense nutriments, and sun defense attributes. The Examiner has not identified any disclosure in Kenner that teaches or suggests adding vitamin D to a snack food, let alone adding vitamin D to an almond. The selection of vitamin D from the long list of sun defense attributes disclosed in Kenner requires the use of impermissible hindsight. A person of skill in the art would not look to readily combine Thomas and Kenner. A person of skill in the art would not look to Kenner, which relates to bars, chews, chips, cookies, candy, gum, crumbles, juices, shakes, smoothies, smoothie mixes, and flavored water, in the preparation of a coated almond. Even if a person of skill in the art were to combine Thomas and Kenner, which Applicant maintains they would not, the method of Thomas would not be useful for the preparation of almonds coated with vitamin D and an oil. The method of Thomas, if applied to nut or seed products coated with vitamin D, may result in significant degradation of vitamin D (P5-P8).
Examiner disagrees. The claimed invention is obvious in view of modified Thomas. Applicant is reminded that 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).
Additionally, the Examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation to combine the references is found within the references themselves as well as in the knowledge generally available to one of ordinary skill in the art.
It is noted that the invention as claimed is directed to a product, and the claimed product is obvious in view of Thomas and Kenner. As previously addressed, Thomas teaches coated almonds, and the coating comprises an oil. The coating may additionally comprise vitamin(s) (paragraphs [0028], [0038], [0048], [0049], [0089], and [0103]). While Thomas does not expressly disclose the vitamin(s) includes vitamin D, Kenner is relied upon for this teaching. The snacks of Kenner include a base, such as nuts, that may be coated with oils and nutriments such as vitamin D (Abstract; and paragraphs [0007], [0043], [0044], [0046], and [0083]). Given the teachings of Kenner, one of ordinary skill in the art would have been motivated to select vitamin D as the vitamin in Thomas based in its suitability for its intended purpose with the expectation of successfully preparing a functional product because Kenner and Thomas similarly teach oil and vitamin coated nuts, Kenner teaches vitamin D increases intestinal absorption of critical nutrients, is useful in supporting bone health, and provides protection against a sun activity side effect (paragraphs [0035], [0036], [0039], and [0070]), Thomas is not limited to the particular vitamin selected (paragraphs [0028] and [0048]), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected results. Applicant is reminded that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Although Kenner does not disclose all the features of the presently claimed invention, Kenner is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Additionally, Applicant is reminded that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues not only does Barnes not disclose vitamin D as a possible additive to almonds, it does not broadly disclose that “vitamins” as a class may be added to the food article. It is noted that Barnes relates to methods of cleansing and preserving food articles, whereas the instantly claimed coated almonds are foods fortified with nutritional additives (e.g., vitamin D), which are intended to increase ones daily intake of nutritional additives. Accordingly, Barnes does not remedy the deficiencies of Thomas and Kenner (P8-P9).
Examiner disagrees. As discussed above, Kenner is relied upon for the teaching of vitamin D. Thomas does not expressly disclose the almond is skinless. However, Barnes is relied upon for this teaching since Barnes teaches coated food articles such as almonds with the skins absent, and the coating may contain a vitamin (P1, L78-80; and P4, L92-94, 97-99, and 121-126). Although Barnes does not disclose all the features of the presently claimed invention, Barnes is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). One of ordinary skill in the art would have been motivated to select skinless almonds based in its suitability for its intended purpose in Thomas with the expectation of successfully preparing a functional product because Barnes and Thomas similarly teach coated almond products comprising vitamin, the type of almond selected is a matter of choice and is not limited in the disclosure of Thomas, coated, skinless almonds were known in the art before the effective filing date of the claimed invention as demonstrated in Barnes, and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected results. Applicant is reminded that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Applicant is also reminded that as stated in MPEP 2145 III., “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]I is not necessarily that the inventions of the references be physically combinable to render obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve the ability to combine their specific structures.”).
Conclusion
Applicant's 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 TYNESHA L. MCCLAIN whose telephone number is (571)270-1153. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at 571-272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793
/T.L.M/Examiner, Art Unit 1793
Prosecution Insights