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 1-5 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 a mass ratio of dry mass (WC) of a “moisture retention agent”. It is unclear from the claim and applicant’s specification what compounds are considered “moisture retention agents” because a clear definition of “moisture retention agent” is not provided. Applicant’s specification states “The moisture retention agent is a moisture retention agent which is generally used in the food technical field” and lists examples including sugar syrup, sorbitol, mannitol, maltitol, erythritol and the like. These compounds are all sweeteners. Compounds within food products can provide many functions. It is unclear if sweeteners added to sweeten a food product and not to retain moisture are moisture retention agents for the purpose of the claims. It is not clear if compounds beyond those listed in applicant’s specification are considered moisture retention agents. Since it is unclear what materials read on “moisture retention agent”, products which read on the positively recited compound limitations will be interpreted to read on the claims. Appropriate correction is required.
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.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka USPGPub 20190200666.
Regarding claims 1, 2 and 5, Tanaka teaches a sheet-shaped food product comprising a flake shaped raw food material and a binding agent. [0017,0023] The food product comprises two sheets of food material that are laminated together and therefore would necessarily comprise irregularities on overlapping surfaces and voids having irregular shapes. [0060] Tanaka teaches a moisture content of 6.5-8.0%. (Tables 1-3)
Tanaka teaches a mass ratio of the dry mass (WA) of the raw food material to the dry mass (WB) of the binding agent of 4.9 to 7.3. Tanaka is silent regarding the mass ratio of the dry mass of the raw material to the dry mass of the sheet-shaped food product. While the values presently claimed are not explicitly taught by Tanaka, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
In the present claims which recited unspecified ingredients, no coaction or cooperative relationship between the claimed components has been shown to product a new, unexpected and useful relationship. As such, claims 1, 2 and 5 are not patentably distinguishable from Tanaka.
Regarding claim 3, Tanaka teaches that the space between the laminated layers has contact points and is substantially void. [0060] One of ordinary skill in the art would reasonably interpret “substantially void” to indicate that the space between the layers is at least 50% void. This proportion reads on claim 3.
Regarding claim 4, Tanaka teaches flakes which can pass through a sieve with a mesh size of 1.5 to 3 mm. [0023] Therefore, a maximum length dimension of the flakes would be between 1.5 and 3 mm.
Response to Arguments
Applicant's arguments filed 21 April 2026 have been fully considered but they are not persuasive.
Applicant asserts on pages 5-7 that the instantly claimed invention has superior flexibility. This assertion is not commensurate with the instantly pending claims because the examples in applicant’s specification are all directed to refined green tea while the instantly pending claims do not specify what the claimed product is made from. Applicant has also failed to compare the claimed invention to the closest prior art. Therefore, applicant’s argument is not found persuasive.
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 Michele L Jacobson whose telephone number is (571)272-8905. The examiner can normally be reached Monday through Friday from 10-6.
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, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michele L Jacobson/Primary Examiner, Art Unit 1793
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