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 the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 04/09/2026 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment or cancellation of the claims and/or persuasive remarks: the 35 U.S.C. 112(b) rejections of claims 3, 14, 16, and 19-22 have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-9, 13, 14, and 16-24
Withdrawn claims: None
Previously canceled claims: 10-12, 15, and 25
Newly canceled claims: None
Amended claims: 3, 14, 16, and 19-22
New claims: 26 and 27
Claims currently under consideration: 1-9, 13, 14, 16-24, 26, and 27
Currently rejected claims: 1-9, 13, 14, 16-24, 26, and 27
Allowed claims: None
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-9, 13, 14, 16-19, and 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Tikanmaki et al. (U.S. 2014/0017332 A1) in view of Dunker et al. (U.S. 2004/0040448 A1).
Regarding claim 1, Tikanmaki et al. discloses a method for making a yogurt product ([0025]) having a weight ratio of whey protein to casein protein from 40:60 to 80:20 ([0015]), the method comprising:
ultrafiltering a milk product ([0031]-[0032]);
nanofiltering the UF permeate ([0040]);
diafiltering the UF retentate through a microfiltration membrane ([0041], where “a suitable fraction obtained from the membrane filtrations” is considered to implicitly disclose diafiltration of the UF retentate);
combining the NF retentate ([0042]), skim milk ([0040]), and a fat-rich fraction ([0023], [0042], [0035], where the casein-containing material may comprise full-fat milk or cream) to form a dairy composition; and
heat treating the composition ([0039]).
Tikanmaki et al. does not specifically disclose (i) the milk product subjected to ultrafiltration as having a whey protein to casein protein from 15:85 to 25:75; (ii) subjecting the NF retentate to reverse osmosis and incorporating the RO retentate into the combined dairy composition as one of the “at least three” ingredients; (iii) nanofiltering the MF/DF permeate to produce second NF permeate/retentate fractions; or (iv) inoculating the dairy composition with a yogurt culture and fermenting to produce the yogurt product.
Regarding the protein ratio in the starting material, Dunker et al. discloses that milk comprises 3% protein and 0.65% whey ([0004]), which indicates the ratio of whey to casein in milk falls within the claimed range of 15:85 and 25:75. Tikanmaki et al. discloses broadly that the whey protein product can be produced from a method utilizing “[t]wo or more techniques…including microfiltration, ultrafiltration, nanofiltration, and reverse osmosis” ([0029]). Although a preferred method involved performance of a microfiltration step on “a milk-based raw material” ([031]) that may be skim milk ([0049]), omission of the microfiltration in the performance of a method involving only two or three of the listed filtration steps would implicitly involve performance of the ultrafiltration step directly on the skim milk. For such an embodiment, the ultrafiltration step would be performed on a milk product having a whey protein to casein protein ratio in the range of from 15:85 to 25:75.
Regarding the step of subjecting the NF retentate to reverse osmosis, Tikanmaki et al. does disclose subjecting the NF permeate to reverse osmosis in order to concentrate the minerals ([0040], [0052]). The reference also indicates that the NF retentate comprises sugars ([0040]). Since reverse osmosis is discloses as simply concentrating components in a fraction, applying reverse osmosis to the NF retentate would be obvious in order to concentrate the sugars therein and minimize the volume of the component in the interest of optimizing costs related to handling and storing the component. Further, concentration of the NF retentate via the performance of reverse osmosis would result in an RO retentate comprising essentially the same components as the NF retentate. Adding such an RO retentate as an ingredient in place of an NF retentate would be obvious, since the same components would comprise both fractions, while simply being more concentrated in the RO retentate.
Regarding the step of nanofiltering a MF/DF permeate, the UF retentate would comprise primarily protein, as well as some lactose and ash (Tikanmaki et al., [0055], Table 1). Diafiltration is described only as “enhancing” the fractions ([0041]) but it is known in the art that diafiltration facilitates removal of certain relatively small compounds that are expelled through a filter while maintaining the concentration of larger compounds that are retained by the filter by replacing the solvent as it is passes through the filter. Diafiltration of the UF retentate would thus be expected to merely lower the lactose and ash concentrations, where such components would be expelled in the MF/DF permeate. Tikanmaki et al. indicates nanofiltration retains lactose and expels ash/minerals ([0040]). Performing a nanofiltration step on a MF/DF permeate would thus allow for harvesting additional sugars and minerals from the UF retentate, thus optimizing the efficiency of the separation methods. As such, performing a nanofiltration step on a MF/DF permeate would be obvious to a skilled practitioner.
Regarding the fermentation step, Dunker et al. discloses producing yogurt by inoculating a dairy composition with a yogurt culture and fermenting to produce a yogurt product ([0045]).
It would have been obvious to one having ordinary skill in the art to produce yogurt as disclosed in Tikanmaki et al. according to the conventional fermentation process taught in Dunker et al. Since Tikanmaki et al. indicates yogurt may be produced without specifying actual process steps ([0025]), a skilled practitioner would be motivated to consult Dunker et al. The instruction in Dunker et al. regarding the production of yogurt from a dairy composition renders the claimed step of inoculating the dairy composition with a yogurt culture and fermenting to produce a yogurt product obvious.
As for claim 2, Tikanmaki et al. discloses that diafiltering the UF retentate comprises diafiltering a mixture of the target fraction (e.g., the UF retentate fraction) and water and/or the NF permeate ([0041]).
As for claim 3, “the mixture” apparently refers to “a mixture of the UF retentate fraction and water/NF permeate fraction as claimed in claim 2, where the mixture is subject to diafiltration. However, diafiltration generally involves the addition and subsequent removal of the water/NF permeate fraction in order clarify/remove small compounds from the target fraction being treated. As such, adding any amount of water (and NF permeate fraction to the extent it would be available) would be obvious in order to simply achieve the desired degree of clarification, which renders essentially any solids content in the mixture of the target fraction and water obvious. The claimed solid content of from 5-20 wt.% would thus be obvious.
As for claim 4, Tikanmaki et al. discloses subjecting the NF permeate fraction to a reverse osmosis step to produce RO permeate/retentate fractions ([0040], [0052]).
As for claim 5, combining the RO permeate fraction (i.e., essentially water) with the other components of the mixed dairy composition would be obvious merely to adjust the solids content of the mixture.
Regarding claim 6, Tikanmaki et al. discloses a method for making a yogurt product ([0025]) having a weight ratio of whey protein to casein protein from 40:60 to 80:20 ([0015]), the method comprising:
ultrafiltering a milk product ([0031]-[0032]);
diafiltering the UF retentate through a microfiltration membrane ([0041], where “a suitable fraction obtained from the membrane filtrations” is considered to implicitly disclose diafiltration of the UF retentate);
nanofiltering the UF permeate ([0040]);
subjecting the NF permeate fraction to reverse osmosis ([0040], [0052]);
combining the NF retentate ([0042]), skim milk ([0040]), and a fat-rich fraction ([0023], [0042], [0035], where the casein-containing material may comprise full-fat milk or cream) to form a dairy composition; and
heat treating the composition ([0039]).
Tikanmaki et al. does not specifically disclose (i) the milk product subjected to ultrafiltration as having a whey protein to casein protein from 15:85 to 25:75; (ii) ultrafiltering the MF/DF permeate fraction (i.e., ultrafiltering after the diafiltration step); (iii) subjecting the NF retentate to reverse osmosis and incorporating the RO retentate into the combined dairy composition as one of the “at least three” ingredients; or (iv) inoculating the dairy composition with a yogurt culture and fermenting to produce the yogurt product.
Regarding the protein ratio in the starting material, Dunker et al. discloses that milk comprises 3% protein and 0.65% whey ([0004]), which indicates the ratio of whey to casein in milk falls within the claimed range of 15:85 and 25:75. Tikanmaki et al. discloses broadly that the whey protein product can be produced from a method utilizing “[t]wo or more techniques…including microfiltration, ultrafiltration, nanofiltration, and reverse osmosis” ([0029]). Although a preferred method involved performance of a microfiltration step on “a milk-based raw material” ([031]) that may be skim milk ([0049]), omission of the microfiltration in the performance of a method involving only two or three of the listed filtration steps would implicitly involve performance of the ultrafiltration step directly on the skim milk. For such an embodiment, the ultrafiltration step would be performed on a milk product having a whey protein to casein protein ratio in the range of from 15:85 to 25:75.
Regarding the step of ultrafiltering the MF/DF permeate fraction, MPEP 2144.04 VI B indicates that the duplication of parts is prima facie obvious absent a new/unexpected result. Repeating an ultrafiltration step in order to optimize the separation of components and resultant yield would be obvious, especially where the claim does not even require any subsequent utilization of the second UF permeate fraction or second UF retentate fraction.
Regarding the step of subjecting the NF retentate to reverse osmosis, Tikanmaki et al. does disclose subjecting the NF permeate to reverse osmosis in order to concentrate the minerals ([0040], [0052]). The reference also indicates that the NF retentate comprises sugars ([0040]). Since reverse osmosis is discloses as simply concentrating components in a fraction, applying reverse osmosis to the NF retentate would be obvious in order to concentrate the sugars therein and minimize the volume of the component in the interest of optimizing costs related to handling and storing the component. Further, concentration of the NF retentate via the performance of reverse osmosis would result in an RO retentate comprising essentially the same components as the NF retentate. Adding such an RO retentate as an ingredient in place of an NF retentate would be obvious, since the same components would comprise both fractions, while simply being more concentrated in the RO retentate.
Regarding the fermentation step, Dunker et al. discloses producing yogurt by inoculating a dairy composition with a yogurt culture and fermenting to produce a yogurt product ([0045]).
It would have been obvious to one having ordinary skill in the art to produce yogurt as disclosed in Tikanmaki et al. according to the conventional fermentation process taught in Dunker et al. Since Tikanmaki et al. indicates yogurt may be produced without specifying actual process steps ([0025]), a skilled practitioner would be motivated to consult Dunker et al. The instruction in Dunker et al. regarding the production of yogurt from a dairy composition renders the claimed step of inoculating the dairy composition with a yogurt culture and fermenting to produce a yogurt product obvious.
As for claim 7, Tikanmaki et al. discloses that diafiltering the UF retentate comprises diafiltering a mixture of the target fraction (e.g., the UF retentate fraction) and water ([0041]).
Regarding claim 8, Tikanmaki et al. discloses a method for making a yogurt product ([0025]) having a weight ratio of whey protein to casein protein from 40:60 to 80:20 ([0015]), the method comprising:
ultrafiltering a milk product ([0031]-[0032]);
diafiltering the UF retentate through a microfiltration membrane ([0041], where “a suitable fraction obtained from the membrane filtrations” is considered to implicitly disclose diafiltration of the UF retentate);
nanofiltering the UF permeate ([0040]);
subjecting the NF permeate fraction to reverse osmosis ([0040], [0052]);
combining the NF retentate ([0042]), skim milk ([0040]), and a fat-rich fraction ([0023], [0042], [0035], where the casein-containing material may comprise full-fat milk or cream) to form a dairy composition; and
heat treating the composition ([0039]).
Tikanmaki et al. does not specifically disclose (i) the milk product subjected to ultrafiltration as having a whey protein to casein protein from 15:85 to 25:75; (ii) ultrafiltering the MF/DF permeate fraction (i.e., ultrafiltering after the diafiltration step); (iii) nanofiltering the second UF retentate fraction; (iv) subjecting the NF retentate to reverse osmosis and incorporating the RO retentate into the combined dairy composition as one of the “at least three” ingredients; or (v) inoculating the dairy composition with a yogurt culture and fermenting to produce the yogurt product.
Regarding the protein ratio in the starting material, Dunker et al. discloses that milk comprises 3% protein and 0.65% whey ([0004]), which indicates the ratio of whey to casein in milk falls within the claimed range of 15:85 and 25:75. Tikanmaki et al. discloses broadly that the whey protein product can be produced from a method utilizing “[t]wo or more techniques…including microfiltration, ultrafiltration, nanofiltration, and reverse osmosis” ([0029]). Although a preferred method involved performance of a microfiltration step on “a milk-based raw material” ([031]) that may be skim milk ([0049]), omission of the microfiltration in the performance of a method involving only two or three of the listed filtration steps would implicitly involve performance of the ultrafiltration step directly on the skim milk. For such an embodiment, the ultrafiltration step would be performed on a milk product having a whey protein to casein protein ratio in the range of from 15:85 to 25:75.
Regarding the step of ultrafiltering the MF/DF permeate fraction, MPEP 2144.04 VI B indicates that the duplication of parts is prima facie obvious absent a new/unexpected result. Repeating an ultrafiltration step in order to optimize the separation of components and resultant yield would be obvious, especially where the claim does not even require any subsequent incorporation of the second UF permeate or second UF retentate fractions into the finished product.
Regarding the step of nanofiltering the second UF retentate fraction, there would not likely be any appreciable separation of performing nanofiltration on material that did not pass through an ultrafiltration membrane. All the material that remained in the retentate upon ultrafiltration would be expected to remain in the retentate upon nanofiltration as well. However, to the extent additional clarifying may be achieved via nanofiltration, such a step would be obvious in order to further refine the separation of materials.
Regarding the step of subjecting the NF retentate to reverse osmosis, Tikanmaki et al. does disclose subjecting the NF permeate to reverse osmosis in order to concentrate the minerals ([0040], [0052]). The reference also indicates that the NF retentate comprises sugars ([0040]). Since reverse osmosis is discloses as simply concentrating components in a fraction, applying reverse osmosis to the NF retentate would be obvious in order to concentrate the sugars therein and minimize the volume of the component in the interest of optimizing costs related to handling and storing the component. Further, concentration of the NF retentate via the performance of reverse osmosis would result in an RO retentate comprising essentially the same components as the NF retentate. Adding such an RO retentate as an ingredient in place of an NF retentate would be obvious, since the same components would comprise both fractions, while simply being more concentrated in the RO retentate.
Regarding the fermentation step, Dunker et al. discloses producing yogurt by inoculating a dairy composition with a yogurt culture and fermenting to produce a yogurt product ([0045]).
It would have been obvious to one having ordinary skill in the art to produce yogurt as disclosed in Tikanmaki et al. according to the conventional fermentation process taught in Dunker et al. Since Tikanmaki et al. indicates yogurt may be produced without specifying actual process steps ([0025]), a skilled practitioner would be motivated to consult Dunker et al. The instruction in Dunker et al. regarding the production of yogurt from a dairy composition renders the claimed step of inoculating the dairy composition with a yogurt culture and fermenting to produce a yogurt product obvious.
As for claim 9, Tikanmaki et al. discloses that diafiltering the UF retentate comprises diafiltering a mixture of the target fraction (e.g., the UF retentate fraction) and water ([0041]).
As for claim 13, Tikanmaki et al. discloses the milk product comprises skim milk ([0035], [0049]).
As for claim 14, Dunker et al. discloses that skim milk contains:
from 7-13 wt.% solids;
less than or equal to 0.5 wt.% fat;
from 2-5 wt.% protein;
from 3-6 wt.% lactose; and
from 0.4-1.2 wt.% minerals ([0054], Table 2, line 2).
As for claim 16, Dunker et al. discloses a fat-rich fraction that contains:
from 30-60 wt.% solids;
from 20-50 wt.% fat;
from 1-4 wt.% protein;
from 2-5 wt.% lactose; and
from 0.2-0.9 wt.% minerals ([0054], Table 2, line 3).
As for claim 17, Tikanmaki et al. discloses the heat treatment as comprising pasteurization at a temperature in the range of 63-75°C for a time ranging from 5 seconds to 45 minutes ([0044]).
As for claim 18, Dunker et al. discloses adding a flavorant ([0043]), a sweetener ([0047], or a vitamin/mineral ([0046]) to such a product when combining ingredients.
As for claim 19, Dunker et al. indicates the weight ratio of whey protein to casein protein in the milk product is in the range from 16:84 to 24:76 ([0004]).
As for claim 21, Dunker et al. discloses that whole milk and skim have component concentrations that overlap all of the claimed ranges ([0054], Table 2, lines 1-2). Tikanmaki et al. suggests generally that membrane filtration fractions may be combined to form the final products ([0040]). Recombining fractions to obtain component concentrations that are equivalent to those found in milk would at least be obvious, which renders the claimed ranges of from 8-15 wt.% solids, from 1-3 wt.% protein, from 0.05 to 4 wt.% fat, and from 0.1-1 wt.% minerals obvious.
As for claim 22, Tikanmaki et al. discloses the dairy composition contains 4-10 wt.% lactose ([0060], Table 3).
As for claim 23, Tikanmaki et al. discloses treating the dairy composition with lactase enzyme ([0046]).
As for claim 24, Dunker et al. disclose packaging the compositions into a container ([0051]).
Claims 20, 26, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Tikanmaki et al. (U.S. 2014/0017332 A1) in view of Dunker et al. (U.S. 2004/0040448 A1) as applied to claims 1, 6, and 8 above, and further in view of Greenberg et al. (U.S. 4,840,813).
Regarding claim 20, Tikanmaki et al. and Dunker et al. disclose the method of claim 1.
The cited prior art does not disclose the weight ratio of whey protein to casein protein of the yogurt product as being from 60:40 to 75:25.
However, Greenberg et al. discloses dairy dessert products (C1, L10) that may have a whey protein to casein protein ratio ranging from 1:0.5 to 1:4 (C6, L39-L41).
It would have been obvious to one having ordinary skill in the art to produce yogurt according to Tikanmaki et al. and Dunker et al. First, Tikanmaki et al. discloses that whey protein products were previously well known in the art, particularly for athletes, but were alleged as suffering from various organoleptic drawbacks ([0002]-[0006]). A skilled practitioner would thus be aware that relatively higher whey:casein ratio products were known in the art. Consultation of Greenberg et al. confirms that whey:casein ratios ranging from 1:0.5 to 1:4 were known as being suitable for dairy products (C1, L10; C6, L39-L41; C8, L39-L41). A skilled practitioner would be motivated to produce a product with a relatively higher whey:casein ratio at least because “whey proteins are excellent protein sources”, especially for athletes, as taught in Tikanmaki et al. ([0002]).
As for claim 26, Tikanmaki et al. and Dunker et al. disclose the method of claim 6.
The cited prior art does not disclose the weight ratio of whey protein to casein protein of the yogurt product as being from 60:40 to 75:25.
However, Greenberg et al. discloses dairy dessert products (C1, L10) that may have a whey protein to casein protein ratio ranging from 1:0.5 to 1:4 (C6, L39-L41).
It would have been obvious to one having ordinary skill in the art to produce yogurt according to Tikanmaki et al. and Dunker et al. First, Tikanmaki et al. discloses that whey protein products were previously well known in the art, particularly for athletes, but were alleged as suffering from various organoleptic drawbacks ([0002]-[0006]). A skilled practitioner would thus be aware that relatively higher whey:casein ratio products were known in the art. Consultation of Greenberg et al. confirms that whey:casein ratios ranging from 1:0.5 to 1:4 were known as being suitable for dairy products (C1, L10; C6, L39-L41; C8, L39-L41). A skilled practitioner would be motivated to produce a product with a relatively higher whey:casein ratio at least because “whey proteins are excellent protein sources”, especially for athletes, as taught in Tikanmaki et al. ([0002]).
As for claim 27, Tikanmaki et al. and Dunker et al. disclose the method of claim 8.
The cited prior art does not disclose the weight ratio of whey protein to casein protein of the yogurt product as being from 60:40 to 75:25.
However, Greenberg et al. discloses dairy dessert products (C1, L10) that may have a whey protein to casein protein ratio ranging from 1:0.5 to 1:4 (C6, L39-L41).
It would have been obvious to one having ordinary skill in the art to produce yogurt according to Tikanmaki et al. and Dunker et al. First, Tikanmaki et al. discloses that whey protein products were previously well known in the art, particularly for athletes, but were alleged as suffering from various organoleptic drawbacks ([0002]-[0006]). A skilled practitioner would thus be aware that relatively higher whey:casein ratio products were known in the art. Consultation of Greenberg et al. confirms that whey:casein ratios ranging from 1:0.5 to 1:4 were known as being suitable for dairy products (C1, L10; C6, L39-L41; C8, L39-L41). A skilled practitioner would be motivated to produce a product with a relatively higher whey:casein ratio at least because “whey proteins are excellent protein sources”, especially for athletes, as taught in Tikanmaki et al. ([0002]).
Response to Arguments
Claim Rejections - 35 U.S.C. § 112: Applicant has overcome the 35 U.S.C. § 112(b) rejections of claims 3, 14, 16 (erroneously listed as 15 in the previous Office Action), and 19-22 based on amendments to the claims. Accordingly, the 35 U.S.C. § 112(b) rejections have been withdrawn.
Claim Rejections - 35 U.S.C. § 103 of claims 1-9, 13, 14, and 16-24 over Tikanmaki et al. and Dunker et al.: Applicant’s arguments have been fully considered but they are not persuasive.
Applicant first argued that Tikanmaki et al. does not teach a first step of ultrafiltering a milk product but instead allegedly only teaches microfiltration as a first step (Applicant’s Remarks, p. 9, ¶3 – p. 10, ¶3).
As noted in the claim rejection, though, Tikanmaki et al. discloses that the whey protein product can be produced from a method utilizing “[t]wo or more techniques…including microfiltration, ultrafiltration, nanofiltration, and reverse osmosis” ([0029]). Examiner maintains that such instruction is adequate to suggest that any two of those techniques may be selected and that none of the techniques was considered to be required. Ur-Rehman et al. (U.S. 9,538,770 B2, cited on the 10/09/2023 IDS) confirms that omission of a microfiltration step is known in the art (C3, L23-L25, L44-49), thus supporting Examiner’s interpretation of the disclosure of Tikanmaki et al. That the reference may disclose examples that all include an initial microfiltration step does not constitute teaching away from the omission of such a step. MPEP 2123 II (“Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.”). Applicant’s arguments are thus unpersuasive.
Applicant next argued that Tikanmaki et al. does not disclose subjecting the NF retentate fraction to a reverse osmosis step but instead discloses subjecting the NF permeate to reverse osmosis (Applicant’s Remarks, p. 10, ¶4 – p. 11, ¶2). Applicant asserted that the NF retentate and the NF permeate are compositionally different and that the claim rejection improperly treated the two streams as being interchangeable (Applicant’s Remarks, p. 11, ¶1). Applicant alleged that the claim rejection relied on impermissible hindsight rationale (Applicant’s Remarks, p. 11, ¶2).
However, the claim rejection clearly acknowledged that Tikanmaki et al. discloses subjecting the NF permeate to reverse osmosis in order to concentrate the minerals ([0040], [0052]) but not the NF retentate. Since reverse osmosis is known in the art as being suited for concentrating components in a liquid, the application of reverse osmosis to the NF retentate in order to concentrate sugars was determined to be obvious, where the motivation to do so was described as being to minimize the volume of the component in the interest of optimizing costs related to handling and storing. MPEP 2144 I (“The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law.”). Examiner maintains that performing reverse osmosis on the NF retentate was adequately supported as being obvious. The claim rejection did not rely on the NF retentate and the NF permeate as being compositionally the same or being interchangeable, as Applicant asserts.
In response to Applicant's argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, 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). Examiner maintains that the present claim rejection as related to the performance of reverse osmosis on the NF retentate does not rely on knowledge gleaned only from Applicant’s disclosure and is consequently proper. Applicant’s arguments are thus unpersuasive.
Applicant next argued that the cited references do not teach or suggest diafiltering the UF retentate through a microfiltration membrane, since Tikanmaki et al. allegedly only addresses the liquid used as diawater but not the membrane used for such a process (Applicant’s Remarks, p. 11, ¶3 – p. 12, ¶1).
Paragraph [0041] of Tikanmaki et al. continues beyond the citation noted by Applicant to state, “[w]hen diafiltration is associated with microfiltration”, which was interpreted as implicitly indicating the use of a microfiltration membrane. Applicant’s argument did not consider the full disclosure of the cited paragraph and is consequently unpersuasive.
Applicant then argued that the cited references do not teach nanofiltering the MF/DF permeate to produce second NF permeate/retentate fractions on the basis that the references do not teach the previous step of diafiltrating the UF retentate (Applicant’s Remarks, p. 12, ¶2).
However, Applicant’s arguments regarding the diafiltration step were not persuasive, and Examiner maintains that the claimed step would be obvious. Accordingly, the rationale described for deeming the nanofiltration step obvious remains valid in that it would allow for harvesting additional sugars and minerals from the UF retentate, thus optimizing the efficiency of the separation methods. Applicant’s argument is unpersuasive.
Applicant concluded that the cited references do not teach combining at least three of the noted fractions to form a dairy composition, again on the basis that earlier separation steps are not taught (Applicant’s Remarks, p. 12, ¶3).
Applicant’s previous arguments regarding the various separation steps were not persuasive, though. The obviousness of each step was properly established, and fractions produced according to such steps would likewise be obvious. Examiner maintains that the claimed combining step would be obvious, as detailed in the claim rejection.
Further, the claimed combining step actually undermines all of Applicant’s previous arguments. Since it includes the addition of “skim milk” and “a fat-rich fraction” and no amounts of any component are required, the claim encompasses embodiments wherein overwhelming amounts of either skim milk and/or a fat-rich fraction may be added to inconsequential amounts of any of the obtained fractions. Such embodiments would result in a dairy composition where the contribution from fractions of any of the claimed separation steps would be of no consequence whatsoever.
The rejections of claims 1-9, 13, 14, and 16-24 have been maintained herein.
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.
Claims 1-9, 13, 14, 16-24, 26, and 27 are rejected.
No claims are allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY P MORNHINWEG whose telephone number is (571)270-5272. The examiner can normally be reached 8:30AM-5:00PM.
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793
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