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 .
Applicant's submission filed on 7/16/2026 has been entered as compliant. Claims 1 and 3 have been amended. Elected claims 1-7 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 (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.
Claim(s) 1 and 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Ando (US 20160165921) of prior record, hereinafter Ando, in view of Baydo (US 20100047415), hereinafter Baydo.
Regarding claim 1, Ando teaches a process for producing a food product, comprising the following process steps:
a) introducing ice cream (item 76 disclosed in para 68 as "ice cream material 76"; best seen in Figure 2) into a cup (item C, disclosed in para 69 as " Cup C"; best seen in Figure 2), so that the ice cream occupies a lower region of the cup (best seen in Figure 2);
b) introducing a specified quantity of liquid coolant into a metering container (i.e., item N shown in Figure 4 is transferred from the “liquid nitrogen tank 90” to “liquid nitrogen nozzle 94”; see para 71);
c) after completion of process steps a) and b), introducing the coolant from the metering container into the cup, so that the coolant cools a top side of the ice cream in the cup (Figure 4 and para 71 discloses "liquid nitrogen in a liquid state onto the ice cream layer 76L in cup C"; best seen in Figure 4 where liquid nitrogen is designated as N, also see para 33 where Ando teaches “step in which the ice cream surface is cooled and hardened comprises a step for pouring in liquid nitrogen in a liquid state); and
d) after completion of process step c), introducing an at least partially melted (see "melted state" and “viscosity: described in para 78) garnishing substance (102, disclosed in para 73 as "first sauce material 102"; see step of Figure 5 into the cup C), so that a solid garnishing layer composed of the garnishing substance is formed on the top side of the ice cream as a result of hardening of the garnishing substance (Also see Figure 1, first sauce depositing step and figure of ice cream containing cup below box # 40, where sauce/ garnish substance layer formed on the top side of the ice cream is visible). Although, Ando does not specifically state that “the garnishing substance” hardens, however, the following was known to one of ordinary skill before the effective filing date of the claimed invention:
a surface patterned frozen dessert having, within a cup, an ice cream layer, a first sauce material layer on said ice cream layer, and a second sauce layer of a different color from the first sauce layer, partially injected on the top surface of the first sauce layer after the first sauce material, whereby the first sauce layer and second sauce layer are stirred together to form an inscribed pattern (para 20 of Ando).
Physics (Laws of thermodynamics) teach, when two conductive substances differing in temperature are layered together, that heat flows spontaneously from the hot to the cold substance until they reach a shared final temperature or thermal equilibrium is obtained and the two substances.
Thus, based on discussion above and the method steps taught by Ando, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that in a process of producing a surface patterned frozen dessert in a cup, a hardened frozen confection or ice-cream at approximately −10° C. to −15° C (para 71 of Ando), when topped with a garnishing substance(s) or sauce(s), the temperature of applied layer(s) of garnishing substance(s) or sauce(s) will gradually reduce in temperature until thermal equilibrium is achieved with the base layer of frozen confection or ice-cream.
Further, regarding hardening of the garnishing substance, applicant ‘s claimed garnish of chocolate (claim 6), is known to harden upon cooling to freezing temperatures. Since chocolate and white chocolate garnish is also taught by Ando (para 73), therefore, it follows that the chocolate or chocolate containing garnish as a topping layer in a frozen confection will harden, as is instantly claimed.
The ordinary artisan before the effective filing date of the claimed invention would have been motivated to modify Ando, at least for purpose of making a surface patterned frozen dessert wherein after making the garnish/ sauce material solidifies or hardens on the top surface of an ice cream layer such that there is no bleeding of the sauce material colors into the ice cream layer occurs in normal ice cream storage conditions and that the ice cream material is not exposed to the outside to become unsightly, as disclosed by Ando (Para 18-19).
Ando does not teach that the at least partially melted garnishing substance (e.g. chocolate sauce - see par 73) is introduced in the cup "at a temperature in the range from 30°C to 60°C", but teaches that control of viscosity of the garnishing substance is an important process control (see "viscosity" descried in para 74) and that specific viscosity is known to targeted for specific garnishing materials and garnishing processes (para 75). Baydo (US 20100047415) teaches that a garnishings (described as "food grade flavored fluids" in para 3), with various flavors (including at least "caramel", "cherry" and "chocolate" - see para 12), are known to be applied on an edible substrate (which may be "ice cream" - see para 6). Similar to Ando, Bayda also identifies "viscosity" of garnishing material is at least one of the properties known to be critical depending on process used for deposition. Bayda, however, further teaches that viscosity in turn depends on at least the temperature range of the specific garnishing composition, and that viscosities are typically evaluated in temperature range of 20°C to 70°C (see para 20, especially last sentence), noting that this temperature range
70°C overlaps with the claimed temperature range of "from 30°C to 60°C". Baydo also gives examples of suitable viscosities at temperature of 60°C (see para 30); and gives examples of processes that apply garnishings a temperature of "about 50 to 70°C" (see para 35, especially last sentence)., which also overlaps with the claimed temperature range of "from 30 °c to 60°C". Thus, temperature of garnishing substance is a known results effective variable related to at least desired viscosity for a given process. As temperature of garnishing substance has been established as a results effective variable (as explained above), it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Ando so that the at least partially melted garnishing substance is introduced in the cup at a specific temperature, such as "at a temperature in the range from 30°C to 60°C". The ordinary artisan would have been motivated to modify Ando at least for the purpose of achieving a target viscosity for the specific garnishing substance and for the specific garnishing processes used.
Regarding claim 3, Ando teaches the process of claim 1, wherein the coolant is pressurelessly introduced into the cup in process step c). Figure 4 and para 71 discloses a step in which the ice cream surface is cooled and hardened comprises a step for pouring in liquid nitrogen in a liquid state (see para 33, para 71 and figure 1, step of ice cream surface hardening and cup figure placed below the box 34, where coolant/ nitrogen in a liquid state is placed onto the ice cream layer 76L in cup C.
Regarding claim 4, Ando teaches the process of claim 1, wherein the coolant is nitrogen (i.e. N shown in Figure 4 is transferred from the “liquid nitrogen tank 90” to “liquid nitrogen nozzle 94”; see para 71).
Regarding claim 5, Ando teaches the process of claim 1, further comprising the following process step, which is carried out between process steps c) and d): c′) straightening the top side of the ice cream in the cup (see step of Figure 3 and para 70 discloses "flattening the surface of ice cream layer 76L" with reference to Figure 3).
Regarding claim 6, Ando teaches the process of claim 1, wherein the garnishing substance contains chocolate and/or nougat (para 73 discloses " first sauce material 102" may be "chocolate sauce").
Note: The recitation of the recitation of term “and/or” in line 3 of the claim, which will be assumed to be equivalent of either “and” OR “or”; i.e. the “/” is equivalent of or, so is being interpreted as “OR”.
Regarding claim 7, Ando teaches the process of claim 1, wherein the solid garnishing layer covers the entire top side of the ice cream after completion of process step d) (see figure 11, with garnishing layer 102L covers the entire top side of the ice cream, best seen I figure 1, Cup C shown under the process step 40 where the sauce is covering the entire top side of the ice cream, also see abstract and para 73).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Ando and Baydo as applied to claims 1 and 3-7 above, and further in view of Noth et al. (US 20150296831A1) of prior record, hereinafter Noth.
Regarding claim 2, Ando teaches of the process of claim 1 (see rejection of claim 1 above) where process includes utilizing cups for ice-cream, but Ando does not teach “wherein the cup has a volume in the range between 30 and 500 ml” as recited in claim 2. However, utilizing cup shaped containers of various sizes, various volumes and /or shapes were known for holding frozen confection/ ice-cream in the art before the effective filing date of the invention was known to be made and were stored for sale in a typical grocery store freezer, where ice-cream packed in individual sized cups of about 100 ml to family size containers of 500 ml or more. Thus, the cup or container size as claimed was known in the art before the effective filing date of the claimed invention
as taught by Noth (abstract, para 13-14 and 44). Noth teaches of making aerated confections including ice-cream (abstract) and “Depending on the resulting confectionary product to be prepared within the specific container, the container may comprise a dedicated volume such as for example 150 ml for light aerated desserts, 200 ml for an ice-cream product or 300 ml for a milkshake.” (Para 47), where the cup or container size/ volume for frozen confections or ice-cream as taught Both falls in the claimed range “between 30 and 500 ml”. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include cup has a volume in the range between 30 and 500 ml. The ordinary artisan would have been motivated to modify Ando and specify the volume or capacity in the range between 30 and 500 ml. at least for the purpose of creating a frozen dessert/ ice-cream in variety of known sizes to cater to consumer demand.
Response to Arguments
Applicants’ arguments filed 7/16/2026 have been fully considered.
Applicants’ arguments regarding overcoming 35 USC 112, 2nd paragraph rejection of claim 3 in view of amendments to claim 3 are persuasive. As such, 35 USC 112, 2nd paragraph rejection of claim 3 is being withdrawn.
Applicants’ arguments with respect amended claim 1 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.
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
