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 .
This office action is in response to the application filed on April 2, 2024 The earliest effective filing date of the application is April 4, 2023.
Status of Application
Claims 1-18 are pending. Claims 1-18 are presented for examination.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it contains the implied phrase “the disclosure relates to” multiple times. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 2-5, 11-16, and 18 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.
Claims 2-4, 11-16, and 18 refer to percentages without defining the base unit. The claim limitation is unclear as to whether the percentages are based on weight, volume, molar, etc., and as such, the claims fail to distinctly claim the subject matter of the invention and is therefore rendered indefinite. For the purposes of examination, the claims will be interpreted as percent by weight.
Claim 5 recites “a yellow dye is added to the second butter” which renders the claim indefinite as it’s unclear as to when the yellow dye is added to the second butter. Claim 1, upon which claim 5 depends, already recites that the second butter is yellow in color; thus, does the addition of yellow dye make the second butter more yellow, or is this addition of yellow dye the instance where the second butter is turned yellow? As in, is the second butter white or whitish in color originally and this dye makes it yellow, or the second butter already yellow in color originally and this dye makes it more yellow? Neither the claims nor the specification give any clarity to this matter, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Thus, the claim is rendered indefinite.
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Delpinoh (“Rainbow Butter,” Instructables, July 2015).
Regarding claims 1, 6, and 17, Delpinoh teaches a butter product comprising: a striped pattern of multiple butters wherein each butter is a different color (i.e., a first butter having a first color and a second butter having a second color) (Preparation Steps; photos).
Delpinoh is silent as to that the first butter is white or whitish in color and the second color is yellow or brown in color. Delpinoh is also silent as to that the pattern is a marbled pattern. Delpinoh does teach a striped pattern (middle image on page 1).
However, matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). See MPEP 2144.04.I. Both the color and the pattern/design of the butter product are purely aesthetic design changes that do not offer any mechanical function to the claimed invention, and as such, hold no patentable weight. Changes to the color and/or design of the butter product would not change the function of the butter product; a butter is butter is butter, no matter the color or shape. Therefore, the teaching of Delpinoh reads on the instant claim limitations.
Moreover, per In re Levin, 84 USPQ 232 p. 234, “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.
Regarding claims 2-4, 11-13, and 18, Delpinoh teaches that a block of butter is divided into various sections, with 6 sections used as an example (Preparation Step 2). Thus, Delpinoh is considered to teach any amount of colored butter portions in amounts as desired.
Delpinoh is silent as to the specific percentages of the first/second butter in the butter product.
However, where the only difference between the first and second butters is the color, and the color offers no mechanical function to the claimed butter product, the amount of each colored butter is merely ornamentation. Each colored butter will function exactly the same since the butter itself (used as the base for each colored butter) is the same. Matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). See MPEP 2144.04.I. As such, the amounts of each butter hold no patentable weight. Therefore, the teaching of Delpinoh reads on the instant claim limitations.
Regarding claim 5, Delpinoh teaches that a food color (i.e., food dye) of the user’s choice is added to each butter (i.e., a second butter) (Preparation Steps 4 and 5). Delpinoh is silent as to explicitly teaching a yellow dye; however, the teaching of “food color of your choice” is considered to read on a yellow dye since yellow is a common color to use to dye food. Therefore, the teachings of Delpinoh are considered to read on the instant claim limitation.
Regarding claims 7-9, Delpinoh teaches that a first color is red or green and that a second color is different from the first color (photos on pages 2 and 8). Delpinoh is silent as to that a first color is brown and that a second color is white or whitish.
However, the only difference between the butters taught by Delpinoh and the claimed invention is the color of the butters. Matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). See MPEP 2144.04.I. The color of each butter in the claimed butter product is purely an aesthetic design that does not offer any mechanical function to the claimed invention, and as such, holds no patentable weight. Changes to the color of the butter product would not change the function of the butter product. Therefore, the teachings of Delpinoh reads on the instant claim limitations.
Regarding claim 10, Delpinoh teaches that a first color is created with a food color (i.e., a food dye) (Ingredients; Preparation Step 4). Delpinoh is silent as to whether the food dye is natural or artificial, however, since natural and artificial are the only two options for food dyes, the food dye taught by Delpinoh is considered to teach the claimed limitation.
Regarding claims 14-16, Delpinoh teaches that a block of butter is divided into various sections, with 6 sections used as an example (Preparation Step 2). Thus, Delpinoh is considered to teach any amount of colored butter portions in amounts as desired.
Delpinoh is silent as to the specific percentages of the first/second butter in the butter product.
However, where the only difference between the first and second butters is the color, and the color offers no mechanical function to the claimed butter product, the amount of each colored butter is merely ornamentation. Each colored butter will function exactly the same since the butter itself (used as the base for each colored butter) is the same. Matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). See MPEP 2144.04.I. As such, the amounts of each butter hold no patentable weight. Therefore, the teaching of Delpinoh reads on the instant claim limitations.
Claims 1, 6-9, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Walker (US Patent 77,135; also written as US 0077135).
Regarding claims 1, 6-9, and 17, Walker teaches a butter product that is made by mixing different colors of butter (page 2, third paragraph).
Walker is silent as to that a first butter is white in whitish in color and a second butter is yellow in color.
However, the natural colors of butter range from white to various shades of yellow, and as such, the different color butters taught by Walker are considered to be white or whitish and yellow in color, thereby reading on the instant claim limitations.
Walker is silent as to that the butter product has a marbled pattern and that a color is brown, red, or green.
However, matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). See MPEP 2144.04.I. Both the color and the pattern/design of the butter product are purely aesthetic design changes that do not offer any mechanical function to the claimed invention, and as such, hold no patentable weight. Changes to the color and/or design of the butter product would not change the function of the butter product; a butter is butter is butter, no matter the color or shape. Therefore, the teachings of Walker reads on the instant claim limitations.
Claims 6, 7, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Tamarkin (“A butter trick for better chocolate chip cookies,” King Arthur Baking, August 2021).
Regarding claims 6, 7, and 17, Tamarkin teaches mixing creamed butter with sugar (i.e., one butter having a whitish color) and brown butter (butter that has been melted and cooked to a brown color) (i.e., a second butter having a brown color) (page 2, How to add brown butter to any cookie recipe). Thus, Tamarkin teaches a butter product comprising one butter having a whitish color and a second butter having a brown color, and as such, the butters are different colors.
Tamarkin is silent as to that the butter product is in a marbled pattern and/or that there are areas of white or whitish color and areas of brown color.
However, the only difference between the butter product taught by Tamarkin and the claimed invention is the pattern of the butters. Matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). See MPEP 2144.04.I. The pattern of the butter product is purely an aesthetic design that does not offer any mechanical function to the claimed invention, and as such, holds no patentable weight. Changes to the pattern of the butters of the butter product would not change the function of the butter product. Therefore, the teachings of Tamarkin reads on the instant claim limitations.
Regarding claim 18, Tamarkin teaches that half an amount of butter is kept as is and the other half is browned (page 2, How to add brown butter to any cookie recipe). Thus, the second butter is about 50 wt.% of the butter product, thereby reading on the instant claim limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Bell, US Patent 3,372,654, teaches a checkerboard-patterned food product made from different colors of suitable food products such as margarine.
Leas et al., US PG Pub. 2004/0180120, teaches multiple colored fat compositions that are used to create a pattern/design on a food product.
Kim, WO 2007/086678, teaches a butter-containing cheese comprising a colored pattern when the cheese is sliced.
Ito, JP 2022079800, teaches a confectionery product that is decorated with various colored pastes made with butter.
Elise (“Candy Cane Whipped Butter,” Whole Elise, December 2022) teaches a swirled body butter made from two different colored body butters.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAURA E SWEENEY whose telephone number is (571)272-0244. The examiner can normally be reached M-F 8:00-5:00 EST.
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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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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791