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 .
Status of Claims
Claims 1-10 are pending and are under examination in this Office Action.
Claim Objections
Claims 1-2, 4, 6, and 10 are objected to because of the following informalities:
In Claims 1, 4, and 6 the semi-colon after “comprising” should be omitted.
In Claim 2, the semi-colon after “wherein” should be omitted.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Hawkins et al. (EP 2175743 B1), hereinafter Hawkins.
Hawkins discloses the invention relating to food and beverage foams, which are suitable, inter alia, for use in the preparation of foam-topped beverages, such as cappuccino-style coffee, and foam toppings on deserts, cocktails and other comestibles [0001].
Regarding Claim 1, Hawkins expressly teaches a foam composition comprising methylcellulose, which reads on the gum, and sucrose oleate and sucrose laurate, and water, anticipating the claim (p. 5, Example II).
Regarding Claim 2, Hawkins teaches an aspect of the invention wherein the foam composition is used as a drink or topping for an aqueous ethanolic solution, wherein the foam comprises at least one surfactant which is suitable for food use and which has an HLB above 9, and ethanol in an amount of more than 15% by weight but no more than 40% by weight [0012]. To obtain satisfactory foam in the absence of auxiliary stabilizers, preferred are non-ionic surfactants with an HLB greater than 10, more preferably HLB greater than 11, even more preferably greater than 12, still more preferably greater than 13, most preferably greater than 14.5… and most preferably less than 16 [0016]. Example suitable surfactants are sucrose esters including sucrose palmitate or stearate, and sucrose oleate [0019]. Hawkins gives an example wherein gum methylcellulose is in combination with sucrose oleate and sucrose laurate, and water in a foam composition (p. 5, Example II).
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 (i.e., changing from AIA to pre-AIA ) 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 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 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Hawkins, as applied to Claim 1 above.
Regarding Claim 3, Hawkins teaches that sugar esters having an HLB greater than 9 provide particularly acceptable foams for food and beverage use, especially when used in conjunction with aqueous alcohol, methylcellulose and/or glycerol [0005]. Methylcellulose typically has an HLB around 11, and is preferable on flavour grounds but gives a less satisfactory foam quality, when used alone, and therefore requires a small amount of a higher HLB surfactant to make a fully stable foam [0021]. To obtain satisfactory foam in the absence of auxiliary stabilizers, preferred are non-ionic surfactants with an HLB greater than 10, more preferably HLB greater than 11, even more preferably greater than 12, still more preferably greater than 13, most preferably greater than 14.5… and most preferably less than 16 [0016]. Hawkins teaches for surfactant systems having low mean HLB, e.g. below 12, inclusion of foam stabilizer, such as propylene glycol alginate, trisodium citrate or xanthan gum are preferred [0036].
As such, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to include the foam stabilizer in the foam composition, and try one of the three preferred stabilizers taught by Hawkins, and therefore also try xanthan gum in the composition comprising methylcellulose and sucrose ester, thereby arriving at a composition with the claimed combination of gums, i.e. xanthan gum and methylcellulose.
Regarding Claim 4, Hawkins teaches the total concentration of surfactant is preferably greater than 0.03%…most preferably greater than 0.3%, but less than 10%...most preferably less than 1% by weight based on the total weight of the solution [0029]. As such, the concentration of sucrose ester in Hawkins overlap with that of the claimed amount of sucrose ester. However, Hawkins recites that the optimum concentration varies according to the surfactant and can readily be determined [0029]. Because Hawkins only requires water and surfactant, with surfactant amount preferably greater than 0.03% but less than 10% ([solution [0029], [0031]), by Examiner’s calculation, water would range most preferably from ~90%-99.96%, which overlaps with the claimed amount of water. In addition to water and surfactant, the solution may contain ancillary ingredients including foam stabilizers [0031]. Regarding the amount of foam stabilizer, Hawkins teaches that foam stabilizers inter alia xanthan gum are at an effective proportion, e.g. at least 0.001%, preferably more than 0.005%, most preferably more than 0.01% by weight, based on the weight of the composition, but less than 2%, preferably less than 1%, more preferably less than 0.5%, most preferably less than 0.1% [0036]. As such, the concentration of xanthan gum taught in Hawkins overlap with that of the claimed amount of gum. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding Claims 5 and 6, Hawkins has taught the amount of foam stabilizers inter alia xanthan gum as discussed in the rejection of Claim 4 supra [0036]. Regarding the amount of methylcellulose, Hawkins teaches that a preferred surfactant is a mixture of methylcellulose with sugar esters [0027]. Hawkins also teaches that the total concentration of surfactant in the composition is from greater than 0.03% to less than 10%, most preferably less than 1% [0029]. This overlaps with the claimed amounts in of methylcellulose and sucrose ester Claims 5 and 6. Hawkins relates that the optimum concentration varies according to the surfactant and can readily be determined for particular cases [0029]. Hawkins teaching would serve as starting point to figure out optimal amounts of methylcellulose and sucrose ester. Since there is an exemplary teaching in the prior art, it would have been obvious to find the best ranges. The optimization of a result effective parameter is considered within the skill of the artisan. See, In re Boesch and Slaney (CCPA) 204 USPQ 215. In addition, “[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); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“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 of percentage ranges is the optimum combination of percentages.”). This is what research chemists do, optimization of result-effective variables through routine experimentation (MPEP 2144.05 IIA and B). There would have been a reasonable expectation of success due to the high level of skill in the art and the teachings of the references in the absence of evidence to the contrary, such as unexpected results.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Hawkins, as applied to Claim 1 above, and in view of Gum Guru (Blending gum with dry ingredients. Video posted on Sep 8, 2010. Obtained on 10/09/2025 from URL: <https://www.youtube.com/watch?v=md9-hQaU-h8>).
Regarding Claim 7, Hawkins teaches a mixture of sucrose ester and gum together, but does not expressly teach the step of mixing the components and then adding to water.
Gum guru teaches that gums are blended with other dry ingredients (p. 1, 16s), and mixed thoroughly (p. 2, 39s) before slowly adding to water while stirring ( p. 3, 47s) to fully hydrate the gum.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Hawkins with Gum guru and mix the sucrose ester and gum together as a first step, and slowly add to water to ensure that the gum is fully hydrated.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hawkins in view of Gum Guru, as applied to Claims 1 and 7 above, and further in view of Cocktail Time with Kevin Kos, (Stop Using Egg White! Super Syrup is here! Video posted on July 22, 2022. Obtained from URL:<https://www.youtube.com/watch?v=8lfWBxtH6hk&t=4s>, on 11/09/2025), hereinafter Super syrup.
Regarding Claim 8, Hawkins teaches different cocktail beverages into which sucrose esters were stirred, but does not teach the claimed step of shaking or whisking.
Super syrup teaches adding the foaming agent at 22.5 mL to 60 mL bourbon and 22.5 mL lemon juice (6m39s), adding ice and shaking hard (7m8s, 7m37s). A nice foam filling about 1/3 of the glass is observed (7m52s).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Hawkins and Super syrup and add the foam composition of Hawkins to the desired cocktail, and shaking vigorously to create foam. For example, one would make a bourbon, starting with the volume of foam composition taught by Super syrup, and modifying as needed to obtain the desired dilution, foam head etc.
Regarding Claim 9, while the exact volume is not disclosed by Super syrup, it is generally noted that differences in volumes do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such volume is critical. "[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). Given that applicant did not point out the criticality of the portion volume of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine the optimum volume. NOTE: MPEP 2144.05.
Regarding Claim 10, Super syrup also discloses making a foaming agent in place of egg white, comprising xanthan gum and methyl cellulose and water, and putting it in a bottle, which reads on the claimed “kit”.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached M-F, 10-6 EST.
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, Erik Kashnikow can be reached on (571) 270-3475. 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.
/J.Y.S./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792