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 1/21/2026 of IDS and claim amendments of 4/23/2026 has been entered as compliant. Claims 27-29 have been amended and claims 58 and 59 are added to the current application. Claims 1, 3, 27-29, 35-39, 46-48 and 58-59 are pending and elected claims 27-29, 35-37 and 58-59 are examined in the current office action.
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 58 is rejected under 35 U.S.C. 103 as being unpatentable over EP3028583 A1 of prior record, hereinafter D1.
Regarding claim 58, D1 teaches a method of making a nutritional product (liquid drink, abstract, paragraphs 7-9, 18 and 137 of D1), the method comprising:
preparing the nutritional product by diluting (i.e. by adding to liquid; i.e. comprising liquid – see para 17, also see para 137, 140 and 142) a thickener comprising a beta-glucan in a diluent (paragraphs 17, 42 and 137 of D1 where beverage with beta-glucan is taught where the stabilizing agent);
adding to the nutritional product a stabilizer selected from the group consisting of Na2HPO4, sodium azide, potassium sorbate, sodium benzoate, sodium citrate, citric acid, hydrochloric acid, tartaric acid, protease, and combinations thereof (Paragraph 217 of D1, where earlier claimed sodium azide is taught);
heating the nutritional product to a temperature between about 30°C and about 100°C (Paragraph 137 of D1, where heating at a temperature between 20
°
C to 90°C is taught); and
adjusting a pH of the nutritional product to from about 3 to about 7 (paragraph 130 of D1, where pH of the nutritional product is taught between 6-7.5, and para 112 where pH adjustment of beverage is taught).
Regarding the claimed limitations of temperature and pH, the temperature range taught by D1 falls in the claimed range and the pH range as taught by D1 overlaps the claimed range. Further, regarding the overlapping of ranges between the invention and prior art composition it is noted that in the case where the claimed ranges "overlap or lie inside the ranges disclosed by the prior art" a prima facie case of obviousness exists (In re Wertheim, 541 F2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)).
Claims 27-28, 35-37 and 59 are rejected under 35 U.S.C. 103 as being unpatentable over EP3028583 A1 of prior record, hereinafter D1, in view of Ben Yehuda (US 20130203849), hereinafter D2.
Regarding claim 27, D1 teaches a method of making a nutritional product (liquid drink, abstract, paragraphs 7-9, 18 and 137 of D1), the method comprising:
preparing the nutritional product by diluting (i.e. by adding to liquid; i.e. comprising liquid – see para 17, also see para 137, 140 and 142) a thickener comprising a beta-glucan in a diluent (paragraphs 17, 42 and 137 of D1 where beverage with beta-glucan is taught where the stabilizing agent) ; and
optionally subjecting the nutritional product to a treatment selected from the group consisting of:
heating the nutritional product to a temperature between about 30°C and about 100°C (Paragraph 137 of D1, where heating at a temperature between 20
°
C to 90°C is taught);
adjusting a pH of the nutritional product to from about 3 to about 7 (paragraph 130 of D1, where pH of the nutritional product is taught between 6-7.5 and para 112 where pH adjustment of beverage is taught); and combinations thereof.
Regarding the claimed limitations of temperature and pH, the temperature range taught by D1 falls in the claimed range and the pH range as taught by D1 overlaps the claimed range. Further, regarding the overlapping of ranges between the invention and prior art composition it is noted that in the case where the claimed ranges "overlap or lie inside the ranges disclosed by the prior art" a prima facie case of obviousness exists (In re Wertheim, 541 F2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)).
Whereas D1 teaches adding to the nutritional product a stabilizer (see paragraph 42), D1 does not teach that the nutritional stabilizer comprises Na2HPO4 ; i.e. disodium phosphate. D2, which also teaches a method of making a nutritional product (para 7), further teaching that disodium phosphate is a known stabilizer (para 64) that is usable with similar milk products (para 7), and further that the type of stabilizer is known to be modified based on characteristics such as desired degree of stabilization (para 63, especially last sentence). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention so that the nutritional stabilizer comprises Na2HPO4 ; i.e. disodium phosphate.. The ordinary artisan would have been motivated to modify D1 at least for the purpose of using an alternate known stabilizer, knowing that that the type of stabilizer is known to be modified based on characteristics such as desired degree of stabilization (see paragraph 63 of D2, especially last sentence).
Regarding claim 28, D1 teaches the method of Claim 27, wherein the stabilizer further comprises at least sodium azide ( Paragraph 217 of D1, where claimed sodium azide is taught).
Regarding claim 35, D1 teaches the method of Claim 27 comprising at least one of adding NaN3 or microwave heating the nutritional product (Paragraph 217 of D1, where claimed sodium azide /NaN3 is taught) .
Regarding claim 36, D1 teaches the method of Claim 27 comprising heating in the claimed range (see rejection of claim 27 and Paragraph 137 of D1), but D1 does not specify the method of heating; i.e. does not specify that the heating is specifically “microwave” heating the nutritional product “for about 10 seconds”. However, heating comestibles using a microwave is a well-known method for quick heating small amounts of comestible, and it is also known that the heating duration for a microwave depends at least on microwave power and amount of food to be heated, the higher the microwave power – the shorter the heating time; and smaller the amount of comestible to be heated, shorter the microwave heating time. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include heating using a microwave. The ordinary artisan would have been motivated to modify D1 at least for the purpose of heating small amounts of comestibles quickly and to pick a heating time at least based on microwave unit power.
Regarding claim 37, D1 teaches method of Claim 27 comprising adjusting a pH of the nutritional product to from about 6 to about 7(paragraph 130 of D1, where pH of the nutritional product is taught between 6-7.5), the pH range as taught by D1 overlaps the claimed range.
Regarding the overlapping of ranges between the invention and prior art composition it is noted that in the case where the claimed ranges "overlap or lie inside the ranges disclosed by the prior art" a prima facie case of obviousness exists (In re Wertheim, 541 F2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)).
Regarding claim 59, D1 teaches the method of claim 27, wherein the stabilizer further comprises one selected from the group consisting of sodium azide, potassium sorbate, sodium benzoate, sodium citrate, citric acid, hydrochloric acid, tartaric acid, protease, and combinations thereof ( Paragraph 217 of D1, where earlier claimed sodium azide is taught).
Claims 29 is rejected under 35 U.S.C. 103 as being unpatentable over D1 in view of D2, as applied to claim 27, and further in view of Ebel et al (US 20090196921 A1), hereinafter D3
Regarding claim 29, D1 teaches the method of claim 27, wherein the stabilizer comprises at least sodium azide ( Paragraph 217 of D1, where earlier claimed sodium azide is taught) but does not teach “protease”. D3 teaches a nutritional composition (Paragraph 2, also see Paragraph 60) comprising prebiotics that may comprise xanthan gum (Paragraph 51), and may further comprise beta-glucans (Paragraph 534, 137) still further teaching that stabilizers and biological additives may be enzymes such as protease and that may be used in conjunction with phosphate stabilizers such as dibasic sodium phosphate that stabilize pH (Paragraph 210). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention wherein the stabilizer comprises protease.. The ordinary artisan would have been motivated to modify D1 at least for the purpose of using a known additive such as protease for stabilizers (see Paragraph 187 of Ebel)
Response to Arguments
Applicant’s arguments with respect to claims 4/23/3036 have been fully considered.
The arguments related to amendment to claim 27 that has been amended to now recite “Na2HPO4” and removes other previously recited stabilizers, the arguments 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. More specifically, the new grounds of rejection do not rely on D1 for Na2HPO4 (especially see page 7 of applicant’s response of 4/23/2026).
The argument that the claimed stabilizer exhibits “better stability” (especially see page 7 of applicant’s response of 4/23/2026, last paragraph) is “unexpected” is not persuasive because improvements in stability by changing stabilizers is known in the art (as explained in revised rejections in view of D2 (paragraph 63, especially last sentence).
Regarding applicant’s arguments about claim 58 (see pages 9-10 of applicant’s response, the diluting is indeed taught (i.e. by adding to liquid; i.e. comprising liquid milk – see para 17 of D1 reference, also see para 137).
As for the requirement of “actively adjusting pH” (see pages 10, especially 2nd last paragraph), the same is not recited in the claims. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a requirement for “actively adjusting pH”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JYOTI CHAWLA/Primary Examiner, Art Unit 1791
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