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
Receipt of Remarks/Amendments and Declaration filed on 06/23/2026 is acknowledged. Claims 1-49 are cancelled. Claims 58-60 are new. Claims 50-54 and 58 have been amended. Claims 50-60 are presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/26/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement was considered by the Examiner.
Modified Rejection As Necessitated by the Amendment Filed 06/23/2026
Claim Rejections - 35 USC § 103
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.
Claims 50-56 are rejected under 35 U.S.C. 103 as being unpatentable over Shimek et al. (CA 2474318 C), hereinafter Shimek, in view of Wade, T. (EP 0249446 A2, cited in IDS; Of record).
Shimek discloses dried soft aerated confections and methods of their preparation, wherein the confections comprise sugars, a foaming and a structuring ingredient, preferably each gelatin, and a softening agent, and wherein the confections are aerated to densities of about 0.1 to 0.5 g/cc (Abstract; Claim 1).
Regarding Claim 50, Shimek teaches aerated confection with the density overlapping the claimed range (Claim 1; Abstract; [0078]). Regarding the recited claim feature of “gaseous phase comprises about 40% to about 75% by volume of said confectionery”, Shimek teaches that its food product has the to compress to 50-85% of the original volume, indicating that the gas volume overlaps with the claimed range ([0053]; Claim 8). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See MPEP 2144.05.
The product is prepared using a sugar syrup, and by an aeration step wherein a compressed gas is added to the liquid confection blend, reading on the claimed feature of dispersion of gas in the liquid phase ([0063], [0077]). The composition comprises saccharide supplied by inter alia concentrated fruit juices [0021]-[0022]. The composition has a fat content of less than <5% (Claim 10). The gelatin of Shimek also reads on the gelatin stabilizer in Claim 54 (Claim 4).
Shimek does not expressly teach that its product is at least 70% deionized or demineralized.
Wade also teaches a fruit juice mix for whipped and/or frozen application, and also teaches marshmallow (p. 1, Abstract; Example 2). Wade teaches the use of ion exchange treated and/or ultrafiltered juice or juices to give mixtures with improved storage stability at ambient to freezing temperatures and permitting products such as drinks and frozen creams to be made from a mix stored for months without losing their fresh taste or color as well as whipped frozen product losing their smooth, fine texture appearance or, becoming icy, coarse and gummy (p. 2, lines 39-44; p. 6, lines 12-14; Claims 13 and 1).
Shimek and Wade both teaches aerated confectionery inter alia marshmallow, and concentrated fruit juices. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Wade with that of Shimek and use ion exchange treated-juice for the fruit juice concentrate in the composition of Shimek. One would have been motivated to do so because Wade has taught that the ion exchange treated and/or ultrafiltered fruit juice concentrate result in product with improved storage stability. The conclusion of obviousness is grounded on the rationale that some teaching, suggestion, or motivation in the prior art would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings and arrive at the claimed invention. See MPEP § 2143.01.
Regarding Claim 51, Shimek expressly teaches concentrated fruit juices having 34° to 60° Brix, which overlaps with the claimed range [0065]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding Claim 52-53, Shimek teaches its dried aerated confection comprises about 65% to 98% of a saccharide component, wherein a portion of the saccharide is supplied by inter alia concentrated fruit juice (Claim 1; [0021]-[0022]). Shimek expressly teaches examples of confectionery blend comprising sucrose and corn syrup [0069].
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Regarding Claim 55-56, Shimek teaches embodiment wherein the saccharide is provided in part by inulin or fructooligosaccharide, present in the composition in amounts between 0-20%, which overlaps with the claimed range [0024].
Regarding Claim 57 a), Shimek teaches embodiment wherein the preparation have reduced or no sugar crystals [0067]. Shimek teaches that marshmallow can have moisture content of about 5 to 30%, preferably about 5 to 20%, and more preferably about 5% to 15%, which overlaps with the claimed range in c) ([0068]-[0069], [0081]). Shimek teaches adding one flavor and/or color ingredient from about 0.1 % to 8% (dry weight basis), preferably about 0.5% to 5% of the composition, thereby also rendering d) and e) obvious(Claim 17; [0036]). Shimek does not require any specific artificial ingredients, and teaches natural coloring agent and natural sweeteners, and does not require any of its ingredients to be from animal source, for example teaching fat constituent from cocoa butter, which also satisfies f)-h) ([0036], [0045], [0049]).
Regarding Claim 58, Shimek teaches a preferred embodiment wherein the marshmallow has a fat content of less than 0.5% ([0045]; Claim 68).
Regarding Claim 59, Shimek teaches the saccharide component can include dextrose, sucrose, fructose, dextrin, maltose etc. [0022].
Regarding Claim 60, Shimek teaches corn syrup as preferred liquid sugar syrup but also teaches invert sugar as alternative [0065]. Shimek teaches the preferred range of corn syrup is 10-20% [0069]. Therefore, it would also have been prima facie obvious to one of ordinary skill in the art before the effective filing date to substitute the corn syrup with invert sugar, starting with the amounts taught by Shimek for corn syrup. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. See MPEP 2143.
Response to Arguments:
Applicant traversed the 103 rejection over Cavallini in view of Wade, arguing that Cavallini does not teach the amended features. Applicant also alleges impermissible hindsight.
Applicant’s arguments have been considered but are moot because the new ground of rejection necessitated by the amendment does not rely on Cavallini for any teaching or matter specifically challenged in the argument.
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).
Applicant argues that Wade teaches away from the brix range required by Claim 51.
In response, the Examiner notes that Wade is not relied on to teach the Brix, which is already taught in the primary art Shimek. 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). Wade is compatible with Shimek in that both references teaches marshmallow products utilizing fruit juices. In this case, one of ordinary skill in the art would be motivated to replace the fruit juice concentrate in Shimek with ion exchange treated-juice because Wade has taught that the ion exchange treated and/or ultrafiltered fruit juice concentrate result in product with improved storage stability. Applicant is reminded that a standard of absolute predictability in order to find obviousness is not required. Rather, to find obviousness, only a reasonable expectation of success is required. Please see MPEP 2143.02 and In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976).
Applicant argues that the role of deionization in the claimed invention differs from its role in Wade because Wade used the ion-exchange treatment to remove color etc. whereas the instant invention uses deionization for stabilizing the dispersed gaseous phase within the liquid phase.
The Examiner has weighed the argument but was not persuaded. In the instant case, the cited prior art meets each and every structural and physical limitation of the instantly claimed composition and, thus, would be reasonably expected to be capable of performing the intended uses as instantly claimed, absent factual evidence to the contrary and further absent any apparent structural difference between the composition of the prior art and that of the instant claims. Importantly, The Examiner has weighed the argument but found it unpersuasive. As amended, the claim is drawn to an aerated composition. Regardless of the recitation of its role or use, a composition claim is examined based on the components and not by how it is used. As such, the claim rejection is proper.
Applicant pointed to the Declaration filed by the inventor showing that the compositions made from non-deionized juice concentrates failed to produce stable aerated confectionary products. “Only when at least 70% of the plant-based product was replaced with deionized concentrate (Examples 7.6 and 7.7) was a stable aerated confectionary with a density of 0.24 to 0.26 g/ml and a favorable taste profile achieved.”
In response, the Examiner points out that a Declaration is due full consideration and weight for all that it discloses. Declarations are reviewed for the following considerations: 1) whether the Declaration presents a nexus such as a side-by-side or single-variable comparison (In re Huang, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996)), 2) whether the Declaration presents a comparison to the closest art, 3) whether the Declaration is commensurate in scope with the scope of the claims (In re Kulling, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)), 4) whether the Declaration shows a difference in kind rather than merely a difference in degree (In re Waymouth, 182 USPQ 290, 293 (C.C.P.A. 1974)), and 5) whether the prima facie case is sufficiently strong that allegedly superior results are insufficient to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed. Cir. 2007)).
It appears that the Declarant is pointing to the demineralized/deionized fruit concentrate as source of stability of the marshmallow. In order to be persuasive, Applicant, hereinafter Declarant, may present a comparison to the closest art in this amended rejection, Shimek et al., having the same density, volume, Bx etc. of the confectionery. If a difference with Shimek is found, the burden is on Declarant to explain why the difference is of a statistical and practical significance. Any differences between the claimed invention and the prior art is expected to result in some difference in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. The burden is on the Declarant to establish that the results are in fact unexpected, unobvious, and of statistical and practical significance. See MPEP 716.02(b).
Regarding the scope, the Declaration is not commensurate in scope with the scope of the claims. The Declaration stated pointed that the “boiled mass was successfully aerated to an excellent, stable product density of 0.28-0.29 g/ml” and the showing in the Specification is the same (pp. 23-24). However, the density claimed is up to about 0.8 g/mL.
With the above reasonings, the rejection is found to be proper.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Marshmallow Masher - Steve Spangler. (Obtained on 07/20/2026 from URL: <https://stevespangler.com/experiments/marshmallow-masher/>. Earliest publication on WayBack Machine Published March 3, 2021.) – teaches marshmallows are about 40-60% air.
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 JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached M-F, 10-6 EST.
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/J.Y.S./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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