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 1-22 and 25-27 are pending in this application. Claims 20-22 and 26-27 are under examination. Claims 1-19 and 25 are withdrawn. Any objections or rejections not repeated below have been withdrawn.
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 20-22 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Wild et al. US 20150264952 (cited on IDS dated 01/26/2024) and in view of Yoshihiro US 20160326472.
Regarding claim 20, Wild teaches a method for preparing an infusion of a citrus fruit (the process of obtaining carbohydrate from orange pulp; [0026]). Wild teaches grinding citrus fruit (milling orange pulps; [0027) into a size of preferably 2-3 mm [0027] to obtain a ground citrus fruit (milled orange pulp). This is within the claimed size range of 0.5-30 mm.
Wild is silent as to what part of the citrus fruit is being ground (milled) and only specifies the type of citrus, lemon or orange [0026].
Yoshihiro teaches a method for preparing an infusion of a citrus fruit (Abstract) where the whole citrus fruit is used and ground (cut) into pieces of a suitable size [0028]. Yoshihiro discloses that using the whole fruit is preferred from the viewpoints of flavor balance and ease of handling [0028].
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Wild by incorporating the teachings of Yoshihiro to grind the whole citrus fruit because using the whole fruit is preferred from the viewpoints of flavor balance and ease of handling, as recognized by Yoshihiro [0028].
Wild teaches immersing the ground citrus fruit in water to obtain an infusion (water is added to the milled orange pulp to obtain a water extraction; [0027]).
While Wild is silent as to the temperature of the water used for the infusion process (extraction process; [0027]), the reference would have necessarily taught an ambient temperature for the water. Since the water temperature of Wild is not specified and a person of ordinary skill in the art would infer it to be ambient or natural temperature of water in its immediate surroundings, specifically around 20°C. See MPEP 2144.01. Otherwise, an elevated or reduced water temperature would be identified. This is within the claimed range of a temperature of 55 °C or less.
Wild teaches removing the ground citrus fruit by centrifugation (the aqueous extract of orange is centrifuged, and the insoluble parts are removed; [0028]).
Regarding claim 21 and 26, modified Wild discloses the method according to claim 20, as discussed above. Wild teaches wherein the grinding of the whole fruit of the citrus fruit is conducted with equipment comprising a plurality of openings, as required by claims 21 and 26. Wild teaches wherein said equipment is a mesh (the milling of the orange pulps is preferably performed by a hammer mill [0027]), as required by claim 26. It is noted that a hammer mill uses a mesh screen, also known as a perforated screen or sieve to control the particle size of the output. Wild discloses after milling the orange pulp has a particle size of preferably 2-3 mm, which is construed as the diameter of the plurality of openings on the mesh screen in the hammer mill [0027]. This is within claim 21 and claim 26 range of 0.5-30 mm.
Regarding claim 22, modified Wild discloses the method according to claim 20, as discussed above. Wild teaches optionally adding further beverage ingredients (other food ingredients for a beverage application; [0110]). Wild discloses diluting the infusion with water to produce a beverage (beverages prepared from the composition of the invention are preferably diluted with water; [0116]).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Wild et al. US 20150264952 in view of Yoshihiro US 20160326472 as applied to claim 22 above, and further as evidenced by EPA, National Primary Drinking Water Regulations, Accessed at: https://www.epa.gov/ground-water-and-drinking-water/national-primary-drinking-water-regulations.
Regarding claim 27, modified Wild discloses the method according to claim 22, as discussed above. Wild teaches that the composition, before the addition of water to produce a beverage, has the turbidity of preferably 1.5 NTU at most [0043-0045], [0052]. This is within the claimed range of 75 NTU or less. Therefore, after the composition of the invention is diluted with water to prepare a beverage [0116], the turbidity of the beverage would still be within the claimed range of 75 NTU or less. As evidenced by EPA, the turbidity of drinking water is below 1 NTU (pg. 20 Turbidity bullet point). Since the turbidity of drinking water is below that of the composition of Wild, which has a turbidity of preferably 1.5 NTU at most, the addition of water to produce a beverage would not raise the turbidity above 1.5 NTU. Thus, Wild would have necessarily taught the turbidity of the beverage as claimed. See MPEP 2112. "In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990).
Response to Arguments
Rejection under 35 U.S.C 103 over Wild in view of Yoshihiro
Applicant's arguments filed 08/12/2026 have been fully considered but they are not persuasive.
Applicant argues, on pgs. 10-11 of their remarks, that the Yoshihiro reference, which is a secondary reference relied upon for the position that using the whole fruit is preferred from the viewpoints of flavor balance and ease of handling [0028], infuses a citrus fruit in alcohol and does not provide a sufficient reason to replace Wild’s orange pulp with whole citrus fruit as claimed. However, the Office disagrees for the following reasons.
In response to applicant's argument that Yoshihiro does not provide sufficient reason to modify Wild by incorporating the whole citrus fruit as claimed, the 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. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Yoshihiro does provide sufficient reason to use whole citrus fruit in the method for preparing an infusion of a citrus fruit as claimed. Thus, it would have been obvious for one of ordinary skill in the art to have modified Wild by incorporating the teachings of Yoshihiro to grind the whole citrus fruit because using the whole fruit is preferred from the viewpoints of flavor balance and ease of handling, as recognized by Yoshihiro [0028].
Additionally, although Yoshihiro does not disclose all the features of the present claimed invention, Yoshihiro is used as a teaching reference to show that whole citrus fruit can be used in preparing an infusion of citrus fruit. 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). Rather this reference teaches a certain concept, namely, the use of whole citrus fruit in a method for preparing an infusion of a citrus fruit. Thus, Yoshihiro in combination with the primary reference discloses the presently claimed invention.
Applicant argues, on pgs. 11-12, that the processing methods of Wild are concerned with processing orange pulp extract and not with a method that processes a whole citrus fruit that is ground and immersed in water as claimed. Applicant states that while the secondary reference of Yoshihiro does remove insoluble solids after alcohol infusion, there is no sufficient reason to modify Wild’s orange-pulp water extraction to arrive at the claimed method as a whole. Applicant continues by stating that Wild in view of Yoshihiro does not teach or suggest the claimed step of removing the ground citrus fruit by centrifugation or filtration in the context of the claimed whole fruit water infusion method, since Wild’s processing is concerned with orange pulp extract, rather than ground whole citrus fruit and Yoshiro’s processing is concerned with an alcohol infusion. Applicant contends that the cited references do not provide an articulated reason to arrive at the claimed method as a whole, including the recited removal step. However, the Office disagrees for the following reasons.
Applicant is arguing the references individually, first by arguing that Wild does not process the whole fruit and second by arguing that Yoshihiro is an alcohol infusion and not a water infusion. In response to applicant's arguments against the references individually, 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).
The rejection modifies Wild in view of Yoshihiro to use the whole citrus fruit, see rejection above. Therefore, Wild in view of Yoshihiro is viewed as a method for preparing an infusion of citrus fruit comprising grinding a whole fruit of the citrus fruit as claimed. The rejection continues where Wild teaches removing the ground citrus fruit by centrifugation (the aqueous extract of orange is centrifuged, and the insoluble parts are removed; [0028]). Thus, Wild in view of Yoshihiro does provide an articulated reason to arrive at the claimed method, including the recited removal step.
Applicant argues, on pg. 12, that Wild in view of Yoshihiro does not teach or suggest the invention recited in new claim 27. Applicant states Yoshihiro does not address a beverage having a turbidity of 75 NTU or less, and Wild’s low-turbidity disclosure concerns a refined carbohydrate composition or orange pulp extract processing, and not a beverage produced from the claimed whole-fruit water infusion method. Applicant concludes that the cited combination does not teach or suggest new claim 27. However, the Office disagrees for the following reason.
As shown by the rejection above, the method recited in claim 27 is rendered obvious by Wild in view of Yoshihiro. Modified Wild discloses the method according to claim 20, as discussed above. Wild teaches that the composition, before the addition of water to produce a beverage, has the turbidity of preferably 1.5 NTU at most [0043-0045], [0052]. This is within the claimed range of 75 NTU or less. Therefore, after the composition of the invention is diluted with water to prepare a beverage [0116], the turbidity of the beverage would still be within the claimed range of 75 NTU or less. As evidenced by EPA, the turbidity of drinking water is below 1 NTU (pg. 20 Turbidity bullet point). Since the turbidity of drinking water is below that of the composition of Wild, which has a turbidity of preferably 1.5 NTU at most, the addition of water to produce a beverage would not raise the turbidity above 1.5 NTU. Thus, Wild would have necessarily taught the turbidity of the beverage as claimed. See MPEP 2112. "In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990).
Rejection under 35 U.S.C 103 over Siriano
Applicant’s arguments, see pgs. 13-15, with respect to the Siriano reference and claim 20 have been fully considered and are persuasive. The rejection under 35 U.S.C 103 over Siriano of claim 20 has been withdrawn.
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.
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/S.R.G./Examiner, Art Unit 1791 /ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759
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