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 14, 16-19, 21-24, 26-29, 31-34 and 36-38 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.
Regarding claims 14, 19, 24, 29 and 34, the limitation “golden brown” renders the claim indefinite since the limitation is subjective. The limitation is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The specification does not provide sufficient detail regarding the particular value(s) associated with “golden brown” for one of ordinary skill to determine boundary encompassed by the limitation. Methods for determining the value of a color are known e.g., CIELAB. Without such values for guidance, an individual may consider a particular hue to be “golden brown” while another individual may not consider the same hue to be described by “golden brown” e.g., said individual may consider a darker or lighter color to be “golden brown”.
Claims 16-18, 21-23, 26-28, 31-33 and 36-38 are rejected by virtue of their dependence on a rejected base claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 14, 16-19, 21-24, 26-29, 31-34, and 36-38 (particularly claim 14) are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-13 (particularly claims 1 and 5) of U.S. Patent No. 11,517,038 B1.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the ‘038 patent recites a method for producing a reheatable food product comprising a butter mixture including maltodextrin and breadcrumbs, as well as the features recited by claim 14 (among other independent claims) of the instant application, and claim 5 recites weight percentages of butter, maltodextrin, and breadcrumbs encompassing that of the instant claims. The weight percentages include embodiments totaling 100 wt%, and therefore claim 5 of the patent is construed encompass the “consisting of” limitation in the instant application.
Regarding the mixture moving and filling the pores of the slices of bread, the grilling until the surfaces of the bread are “golden grown”, and the mixture in the pores providing heat transfer from the exterior of the food product to the filling, the composition of the mixture taught by the ‘038 patent encompasses that of the claimed mixture as stated above. The mixture is applied in the same manner, and the food product is similarly compressed and grilled. Absent evidence to the contrary, one of ordinary skill would have expected the mixture of the patent to behave similarly to that of the claimed mixture.
Allowable Subject Matter
Claims 14, 19, 24, 29 and 34 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Lonergan as applied in the previous Office Action is directed to a non-hydrogenated fat replacement mixture for preparing laminated baked goods and an alternative to traditional fats (paragraphs 7 and 15). While the reference teaches use of milk solids, the solids are “non-fat” milk solids (paragraphs 31-32).
Nafisi-Movaghar as applied in the previous Office Action requires the presence of “effective amounts of a coagulant” such as 10-25 wt% powdered egg whites (abstract; column 3 lines 15-20; column 4 lines 24-26).
The prior art does not teach or suggest applying a butter mixture consisting of 70-80 wt% butter, 5-10 wt% maltodextrin, and 10-16 wt% breadcrumbs to the first (outer) surface of the first and second slices of bread.
Response to Arguments
The objections are rejections under 35 USC 112(a) and 112(b) raised in the previous Office Action are withdrawn in view of the instant amendments. However, the limitation “golden brown” renders the claim indefinite since it is relative and subjective as stated above. The rejection may be overcome by removing the limitation from the respective claims.
The double patenting rejection to U.S. Patent No. 11,517,038 B1 is maintained.
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 BRYAN KIM whose telephone number is (571)270-0338. The examiner can normally be reached 9:30-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached on (571)-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRYAN KIM/Examiner, Art Unit 1792