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 1-7, in the reply filed on May 15, 2026 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)).
Claims 8-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected products, there being no allowable generic or linking claim.
Claim Objections
Claim 4 is objected to because of the following informalities: Claim 4 is missed a period at the end of the claim. Appropriate correction is required.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Mobley (US 2011/0111097 A1; May 12, 2011).
Regarding claims 1-3, Mobley discloses an emulsified food product that can be a “bakery cream” ([0014]-[0015]) comprising a starch component that can be a combination of modified starches ([0026], [0042]).
Mobley discloses that modified starch can be a cold water swellable thermally inhibited waxy maize starch or a cold water soluble thermally inhibited non-waxy tapioca starch. Mobley further provides examples of suitable starches that can be used, including a combination of starches ([0026], [0042]).
While Mobley discloses that it is well know in the art to use two separate starches in combination in an emulsified food product, and suggests the use of cold water swellable starches, Mobley is silent to both starches being specifically cold water swellable starches.
However, as Mobley provides examples of suitable starches, wherein some are cold water swellable, and further teaches that combinations thereof can be used, it would have been obvious to use two cold water swellable thermally inhibited starches together in the food product. Example 2 at [0042] discloses the use of two starch components in the food product, one that is waxy maize and one that is tapioca, and therefore it would have been obvious to have both of the starch components be cold water swellable depending on the desired properties of the food product.
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)
As stated in MPEP 2144.06 ““It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
Therefore, it would have been obvious to use two cold swellable starches from the list provided by Mobley in the food product.
With respect to the amount of each starch component, it is well within the ordinary skill in the art to determine the optimum amount of each to result in a food product having desired properties.
As stated in MPEP 2144.05: 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. "Where 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)
Therefore, it would have been obvious to one of ordinary skill in the art to determine the optimum amount of each starch that gives the food product a desired texture and taste. This is merely routine experimentation that is well within the ordinary skill in the art.
Regarding claim 4, Mobley teaches that the starch component is in an amount of 0.1-5% by weight of the food product ([0026]), thus overlapping the claimed range of 5-20%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claim 5, Mobley teaches that the food product comprises water in an amount from 20-45% by weight ([0019]), which is slightly below the claimed 50%.
However, a difference of 5% is obvious as one of ordinary skill in the art would have expected the same properties. The instantly claimed amount of 50% and that taught by Mobley are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of 45% disclosed by Mobley and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount of 50% disclosed in the present claims is but an obvious variant of the amounts disclosed in Mobley, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Further, it is well within the ordinary skill in the art to vary the amount of water depending on the desired consistency of the food product. As stated in MPEP 2144.05: 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. "Where 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)
With respect to the food product further comprising a powdered milk in an amount from about 1% to about 10%, Mobley discloses the use of dairy flavors that can be in powdered form ([0037]). Mobley even discloses Examples using buttermilk flavor ([0041]-[0042]) and therefore as Mobley teaches that it can be provided in powdered form, it would have been obvious to use powdered milk where desired. Mobley teaches that the flavorants can be present in an amount of 1% by weight, or up to 25% by weight ([0008], [0033]), thus overlapping the claimed range of 1-10%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claim 6, Mobley discloses that the food product can be non-dairy as it does not have to include a dairy component ([0007], [0025], Example 4).
Regarding claim 7, Mobley teaches that the food product comprises water in an amount from 20-45% by weight ([0019]), which is slightly below the claimed 50%.
However, a difference of 5% is obvious as one of ordinary skill in the art would have expected the same properties. The instantly claimed amount of 50% and that taught by Mobley are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of 45% disclosed by Mobley and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount of 50% disclosed in the present claims is but an obvious variant of the amounts disclosed in Mobley, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Further, it is well within the ordinary skill in the art to vary the amount of water depending on the desired consistency of the food product. As stated in MPEP 2144.05: 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. "Where 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)
Mobley further teaches that the food product comprises vegetable oil in an amount from about 30% to about 45%, which is higher than the claimed amount of 1-10% by weight. However, it would have been obvious to one of rdinary skill in the art to decrease the amount of oil depending on the desired taste and texture of the food product, absent a showing that the claimed amount is critical (MPEP 2144.05).
Mobley also teaches that the food product can have vegetable protein and flavors ([0035]-[0037]).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791
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