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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites in steps g—m and p process steps, but does not recite what the process steps are performed on. Step g recites “carrying out a pasteurization process”, but it is not clear what is pasteurized. Is the product of step f pasteurized, wherein step g should recite “carrying out a pasteurization process on the product of step f”? The same rational applies to steps h-m and p as they do not recite what the process step for performed on.
Further, step o in claim 1 recites “mixing the cooled product”, however, it is not clear what he cooled product is mixed with.
Claim 3recites the limitation "plums" in line 2. There is insufficient antecedent basis for this limitation in the claim as there is no previous recitation of “plums”, only of “prunes”. Therefore, it is not clear what fruit process step (c) is performed on.
Claims 2 and 4-11 are included as they depend from rejected claim 1.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Bu et al. (CN 108740620 A; Nov. 6, 2018; See English Translation) in view of Li et al. (CN 102551143 A; July 11, 2012; See English Translation) and Guo et al. (CN 103892401 A; July 2, 2014; See English Translation).
Regarding claim 1, Bu discloses a process for making prune (e.g. dried plums) juice concentrate, the method comprising:
supplying prunes ([0022]),
softening the prunes by adding water ([0022]),
applying coarse filtration to the prune mixture to obtain prune juice ([0022]),
carrying out an enzymatic process ([0023]),
carrying out a clarification process ([0024]),
carrying out ultrafiltration ([0025]),
cooling the concentrate juice ([0024]),
mixing the cooled juice ([0027]), and
filling the juice product ([0029]).
Bu additionally teaches a pasteurization step, wherein the concentrated juice is pasteurized followed by cooling ([0029] and [0053]). Bu fails to teach that the pasteurization step is performed before the enzymatic process. It would have been obvious to one of ordinary skill in the art to pasteurize the juice at any point in the process, including before the enzymatic process as it would not change the final product. As stated in MPEP 2144.04 IV C: In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results). Therefore, absent a showing that the order of pasteurization produces new of unexpected results, changing the order in Bu would predictably provide a pasteurized product, which is to be expected.
While Bu discloses the process as described above, Bu fails to teach step (b) subjecting the prunes to a cleaning process, step (d) conveying the prunes to a mash tank, step (e) pressing the products form the mash tank to obtain prune juice, step (j) carrying out rotary vacuum filtration, step (l) putting the filtered product into clear tanks, and step (m) carrying out evaporation.
Li teaches a process for making concentrated plum juice, comprising the steps of:
providing plums,
cleaning the plums ([0010]),
softening the plums by adding water ([0033]-[0038]),
conveying the softened plums to an extraction tank, or mash tank ([0038]),
conveying the products from the extraction tank to a press to obtain raw plum juice by pressing the products from the extraction tank ([0040]),
applying filtration to the plum juice ([0040]),
(h) carrying out an enzymatic process ([0042]),
carrying out a clarification process ([0042]),
carrying out filtration ([0042]),
carrying out ultrafiltration ([0044]-[0045]),
(m) carrying out evaporation ([0047]),
(n) cooling the concentrated product ([0049]), and
(p) filling the product into packaging ([0051]).
Therefore, Li teaches a similar process as taught by Bu, and further includes steps (b) subjecting the prunes to a cleaning process, step (d) conveying the prunes to a mash tank, step (e) pressing the products form the mash tank to obtain prune juice, and step (m) carrying out evaporation. While Li teaches plum instead of prunes, the examiner notes that prunes are merely dried plums. Therefore, it would have been obvious to use similar process steps as taught by Li in the process of Bu as it would predictably provide a concentrated fruit juice product. It would have been obvious to clean the prunes of Bu to remove any wanted particles. It would have been obvious to convey the softened prunes of Bu to a mash tank and press from the mash tank as Li teaches that the mash tank is beneficial to the color of the juice while also preserving the nutritional value ([0038]). It would have been obvious to carry out evaporation in Bu to provide a desired concentrate. The process steps missing in Bu are well known in the art of fruit processing and therefore it would have been obvious to perform in Bu for the reasons stated above.
With respect to step (j), Bu in view of Li teach a filtration process but fail to teach using rotary vacuum filtration. Guo discloses a fruit juice filtration process, wherein the filtration uses a rotary vacuum drum filter after an enzymatic process to result in a clear and transparent juice. Guo teaches that rotary drum filters rotate at low speeds and improved efficiency. Guo teaches that the filtration process has improved quality ([0016]-[0024]).
As Guo teaches that rotary vacuum drum filters are known in the art of filtering fruit juice after an enzymatic process, and provide multiple benefits, it would have been obvious to one of ordinary skill in the art to perform a filtration in step (j) of Bu using a rotary vacuum drum filter as taught by Guo. Doing so would provide the predictably result of providing a clear and transparent juice after the enzymatic process, while also improving filtration efficiency, power consumption, and juice quality in the process of Bu as taught by Guo ([0016]-[0019]).
With respect to step (l), the prior art fails to specifically teach putting the filtered product into clear tanks prior to carrying out evaporation, however, it would have been obvious to do so to monitor the color and quality of the juice during evaporation to effectively concentrated the juice product.
Regarding claim 2, Bu teaches that the amount of water in the softening step © is more than twice the weight of the amount of prunes (e.g. 1:4-7 [0022]), however, it would have been obvious to one of ordinary skill in the art to vary the amount of water added to the prunes depending on the amount of juice to be extracted as well as the desired concentration of plum juice. Adding less water will result in less juice but would be a more concentrated juice product. This is merely routine experimentation that is well within the ordinary skill in the art.
As stated in MPE 2144.05: Generally, 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. "[W]here 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)
Regarding claim 3, Bu teaches that the softening step (c) is carried out by heating the prunes to a temperature of 90C for 50-90 minutes until a desired Bx is reached ([0022]), while the instant claim requires a slightly lower temperature of 80 C and a slightly higher time of 100 minutes.
It would have been obvious to vary the temperature and time for the softening step depending on the amount of prunes and water to be heated, as well as a desired Bx as taught by Bu. Heating at a lower temperature for a longer amount of time is merely an obvious variant over Bu and would have been obvious to do so depending on the desired softness and Bx of the prunes. Again, as stated above, generally, 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. "[W]here 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)
Regarding claim 4, as stated above, Bu in view of Li render obvious step d conveying the softened prunes to a mash tank, or extraction tank ([0061]). Li further teaches that the products are kept in the mash tank, or extraction tank, at 65-70 C for 30-45 minutes ([0061]), thus overlapping the claimed temperature of 40-70 C and claimed times of 45-70 minutes. 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, as stated above with respect to claim 1, Bu teaches step (f) of carrying out coarse filtration on the pressed juice ([0022]). Bu, however, fails to teach that the filtration in step (f) is carried out with a rotary drum filter.
Guo discloses a fruit juice filtration process, wherein the filtration uses a rotary drum filter. Guo teaches that rotary drum filters rotate at low speeds and improved efficiency. Guo teaches that the filtration process has improved quality ([0016]-[0019]).
As Guo teaches that rotary drum filters are known in the art of processing fruit juice and provide multiple benefits, it would have been obvious to one of ordinary skill in the art to have the filtration in step (f) of Bu be carried out with a rotary drum filter. Doing so would provide the predictably result of improving filtration efficiency, power consumption, and quality in the process of Bu as taught by Guo ([0016]-[0019]).
Regarding claim 6, Guo teaches that the rotary drum filter can filter particles larger than 0.1 mm ([0015]) thus overlapping the pore size of 0.4-0.6 mm. Guo teaches that larger pore size allows for maximum retention of the juice’s nutrients with minimal turbidity loss, resulting in better color and richer flavor ([0024]). It would have been obvious to one of ordinary skill in the art to vary the pore size depending on the color and flavor of the juice as taught by Guo.
Regarding claim 7, as stated above with respect to claim 1, both Bu and Li teach a pasteurization process. Bu teaches performing pasteurization at 135-137 C for 4 seconds ([0029]), and Li teaches performing pasteurization at 96 C for 30 seconds ([0072]). Therefore, the temperature and time for pasteurization is known to vary, where a higher temperature uses less time than a lower temperature as shown by Bu and Li. It would have been obvious to one of ordinary skill in the art to vary the temperature and time for pasteurization through routine experimentation to achieve a product that is sufficiently pasteurized. Again, as stated above, generally, 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. "[W]here 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)
Regarding claim 8, as stated above with respect to claim 1, both Bu and Li teach carrying out an enzymatic process. Li further teaches that the juice is cooled to 50-55 C for the enzymatic process ([0040]), thus falling within the claimed range of 30-70 C.
With respect to the cooling being performed on the product obtained in step (g), which is the pasteurization step, as stated above with respect to claim 1, both Bu and Li fail to teach the pasteurization step in the order as claimed. However, it would have been obvious to one of ordinary skill in the art to pasteurize the juice at any point in the process, including before the enzymatic process as it would not change the final product. As stated in MPEP 2144.04 IV C: In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results). Therefore, absent a showing that the order of pasteurization produces new of unexpected results, changing the order in Bu and Li would predictably provide a pasteurized product, which is to be expected.
Regarding claim 9, Bu teaches that the enzymatic process is performed with a pectinase enzyme ([0044]).
Regarding claim 10, as stated above, both Bu and Li teach a clarification process. Bu teaches a clarifying agent ([0024]), but fails to teach bentonite. Li teaches carrying out clarification with bentonite ([0042]). It would have been obvious to use bentonite in the clarifying process of Bu as Li teaches that it is a suitable clarifying agent to yield the same predictable result of producing a clarified prune juice. This is a simple substitution of one known clarifying agent for another, and it would have been obvious to use bentonite for the same predictable result.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Bu et al. (CN 108740620 A; Nov. 6, 2018; See English Translation), Li et al. (CN 102551143 A; July 11, 2012) and Guo et al. (CN 103892401 A; July 2, 2014; See English Translation) as applied to claim 1 above, and further in view of Wasserman et al. (US Patent No 2,625,488; Jan. 13, 1953).
Regarding claim 11, Bu teaches cooling step n as described above with respect to claim 1 but fails to teach that the cooling is carried out with a plate cooler.
Wasserman discloses a method for processing fruit juice, wherein the fruit juice can be cooled using a plate cooler (col 6 lines 10-15).
As it is well known in the art to use a plate cooler for performing a cooling step on fruit juice, it would have been obvious to one of ordinary skill in the art to have the cooling step of Bu carried out using a plate cooler. Doing so would provide the predictable result of effectively cooling the fruit juice as taught by Wasserman.
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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