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 1-20 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 2-13 are rejected for their dependency on claim 1.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 1 recites the broad recitation of insoluble fiber amount of at least 12% of the dough, and the claim also recites an insoluble fiber amount of about 15% to about 45% weight of the dough, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claims 2-13 are rejected for their dependency on claim 1.
Further in the present instance, claim 1 is further indefinite because it recites that the protein is at least 60%. However, the protein is later recited at 25% to 55% and the insoluble fiber is 15% to 45%. At the combined lower limits of 25% and 15% equaling 40% protein and insoluble fiber,. This recitation is outside of the range of the combination of protein and insoluble fiber being at least 60%. In light of compact prosecution, the claim has been interpreted regarding the individual components of protein and insoluble fiber and not the at least 60% recitation. Appropriate correction is required. Claims 2-13 are rejected for their dependency on claim 1.
Regarding Claim 1, it is further indefinite because claim 1 section b. recites an insoluble fiber content of 15% to about 40% (or at least 12%; see the previous 112 (b) rejection) and then in section c. recites a total fiber content of about 25% to about 45%. It is not clear how the range of upper total fiber content can be less than the insoluble fiber portion inherently falls under the broad umbrella of total fiber. Appropriate correction is required.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 14 recites the broad recitation of insoluble fiber amount of at least 12% of the dough, and the claim also recites an insoluble fiber amount of about 15% to about 45% weight of the dough, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claims 15-20 are rejected for their dependency on claim 14.
Further in the present instance, claim 14 is further indefinite because it recites that the protein is at least 60%. However, the protein is later recited at 25% to 55% and the insoluble fiber is 15% to 45%. At the combined lower limits of 25% and 15% equaling 40% protein and insoluble fiber. This recitation is outside of the range of the combination of protein and insoluble fiber being at least 60%. In light of compact prosecution, the claim has been interpreted regarding the individual components of protein and insoluble fiber and not the at least 60% recitation. Appropriate correction is required. Claims 15-20 are rejected for their dependency on claim 14.
Regarding Claim 14, it is further indefinite because claim 14 section a.ii. recites an insoluble fiber content of 15% to about 40% (or at least 12%; see the previous 112 (b) rejection) but previously in section a. recited a total fiber content of about 25% to about 45%. It is not clear how the range of upper total fiber content can be less than the insoluble fiber portion inherently falls under the broad umbrella of total fiber. Appropriate correction is required.
Claim 8 recites the limitation "the soluble carbohydrate" in line 1. There is insufficient antecedent basis for this limitation in the claim because soluble carbohydrate in not recited in claim 1.
Claim 9 recites the limitation "the HMW soluble carbohydrate" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "the soluble carbohydrate" in line 1. There is insufficient antecedent basis for this limitation in the claim because soluble carbohydrate in not recited in claim 1.
Claim 20 recites the limitation "the HMW soluble carbohydrate" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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 1-5, 8, 9, 11- are rejected under 35 U.S.C. 103 as being unpatentable over Creighton et al. (US 2005/0064080).
Regarding Claim 1: Creighton discloses a high fiber high protein ready to eat cereal product [abstract]. Creighton discloses that the ready to eat cereal contains a combination of plant based protein and insoluble fiber [abstract]. Creighton discloses soybean protein as the protein and that it can be used in combination with other proteins [0046]. Creighton discloses 15% to 30% protein and discloses 5% to 15% insoluble fiber and 5% to 15 soluble fiber [abstract] for a total 10 to 30% dietary fiber. Creighton therefore discloses a combination of protein and insoluble fiber at about 20% to about 45%. Creighton discloses the food prices having a moisture content of 2 to 6% [0059]; or 1 to 4% [0085]. Creighton discloses the density of the cereal pieces being 0.15 g/cc to 0.5 g/cc [0087].
Although Creighton does not explicitly disclose the protein at about 25% to about 55% one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Creighton overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Although Creighton does not explicitly disclose insoluble fiber at 15% to 45% or at least 12% one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Creighton overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Although Creighton does not explicitly disclose total fiber at about 25% to about 40% one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Creighton overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Although Creighton does not explicitly disclose food pieces with a density of 300 to 750 grams per 100 cubic inches (0.183 g/cc -0.457 g/cc) one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Creighton overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Regarding Claim 2: Creighton discloses as discussed above in claim 1. Creighton further discloses soluble fiber at about 5% to about 15% of the dough [0034, 0035]. Creighton discloses psyllium as the soluble fiber [0039].
Although Creighton does not explicitly disclose soluble fiber at about 8% to about 30% one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Creighton overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Regarding Claim 3: Creighton discloses as discussed above in claim 2. Creighton discloses protein present at 15% and insoluble fiber present at 5% for a total of 20% [abstract]. Creighton discloses soluble fiber at 5% [abstract]. Therefore Creighton discloses the ratio of the combination of protein and insoluble fiber to insoluble fiber at 4:1.
Regarding Claim 4: Creighton discloses as discussed above in claim 1. Creighton discloses the food pieces have a total protein content of about 15% to about 30% and a total fiber content of about 10% about 30% [abstract]. Creighton discloses a ratio of 1.5: 1 when the protein is present at 15% and the total fiber is present at 10% or a ratio of 1:1 when both the protein and total fiber portions are present at 30% each.
Regarding Claim 5: Creighton discloses as discussed above in claim 1. Creighton discloses wherein the insoluble fiber ingredient comprises bran [0032].
Regarding Claim 8: Creighton discloses as discussed above in claim 1. Creighton discloses soluble fiber/psyllium at 5% to 15% [abstract].
Although Creighton does not explicitly disclose soluble fiber at up to about 10% one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Creighton overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Regarding Claim 9: Creighton discloses as discussed above in claim 1. Creighton does not disclose the presence of maltodextrin and therefore renders the claim obvious since the claim calls for 25% or less, and since that range includes 0%.
Although Creighton does not explicitly disclose 25% or less maltodextrin one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Creighton overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Regarding Claim 11: Creighton discloses as discussed above in claim 1. Creighton discloses coated ready to eat food pieces [0095].
Regarding Claim 12: Creighton discloses as discussed above in claim 11. Creighton discloses that the coating is 10% of the food pieces [0110]; discloses the ratio of coating to cereal base being 1:100 to 150:100 [0098] which encompasses an equivalent to 50% coating 50% food piece.
Regarding Claim 13: Creighton discloses as discussed above in claim 1. Creighton discloses further including dried particulates (edible components) other than the claimed food pieces [0106].
Regarding Claim 14: Creighton discloses a method of making a ready to eat cereal piece [abstract; 0061]. Creighton discloses using extrusion to make the food pieces [0067]. Creighton discloses forming cereal dough having a moisture content of about 10 to about 35% [0065]. Creighton discloses extruding the dough [0093] such that pellets are formed [0093; 0109]. It is known in the art that the extrusion method utilized a die in forming the pellets especially in pelletizing extruder and therefore renders obvious extruding through a die. Creighton discloses a high fiber high protein ready to eat cereal product [abstract]. Creighton discloses that the ready to eat cereal contains a combination of plant based protein and insoluble fiber [abstract]. Creighton discloses soybean protein as the protein and that it can be used in combination with other proteins [0046]. Creighton discloses 15% to 30% protein and discloses 5% to 15% insoluble fiber and 5% to 15 soluble fiber [abstract] for a total 10 to 30% dietary fiber. Creighton therefore discloses a combination of protein and insoluble fiber at about 20% to about 45%. Creighton discloses the food prices having a moisture content of 2 to 6% [0059]; or 1 to 4% [0085]. Creighton discloses the density of the cereal pieces being 0.15 g/cc to 0.5 g/cc [0087].
Although Creighton does not explicitly disclose the protein at about 25% to about 55% one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Creighton overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Although Creighton does not explicitly disclose insoluble fiber at 15% to 45% or at least 12% one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Creighton overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Although Creighton does not explicitly disclose total fiber at about 25% to about 40% one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Creighton overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Although Creighton does not explicitly disclose food pieces with a density of 300 to 750 grams per 100 cubic inches (0.183 g/cc -0.457 g/cc) one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Creighton overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Regarding Claim 15: Creighton discloses as discussed above in claim 14. Creighton further discloses soluble fiber at about 5% to about 15% of the dough [0034, 0035]. Creighton discloses psyllium as the soluble fiber [0039].
Although Creighton does not explicitly disclose soluble fiber at about 8% to about 30% one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Creighton overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Regarding Claim 16: Creighton discloses as discussed above in claim 15. Creighton discloses protein present at 15% and insoluble fiber present at 5% for a total of 20% [abstract]. Creighton discloses soluble fiber at 5% [abstract]. Therefore Creighton discloses the ratio of the combination of protein and insoluble fiber to insoluble fiber at 4:1.
Regarding Claim 17: Creighton discloses as discussed above in claim 14. Creighton discloses the food pieces have a total protein content of about 15% to about 30% and a total fiber content of about 10% about 30% [abstract]. Creighton discloses a ratio of 1.5: 1 when the protein is present at 15% and the total fiber is present at 10% or a ratio of 1:1 when both the protein and total fiber portions are present at 30% each.
Regarding Claim 19: Creighton discloses as discussed above in claim 14. Creighton discloses soluble fiber/psyllium at 5% to 15% [abstract].
Although Creighton does not explicitly disclose soluble fiber at up to about 10% one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Creighton overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Regarding Claim 20: Creighton discloses as discussed above in claim 14. Creighton does not disclose the presence of maltodextrin and therefore renders the claim obvious since the claim calls for 25% or less, and since that range includes 0%.
Although Creighton does not explicitly disclose 25% or less maltodextrin one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Creighton overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Claims 6, 7, 10, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Creighton et al. (US 2005/0064080) as applied to claims 1 and 14 as discussed above and in further view of Spicer (US 5,169,662).
Regarding Claims 6 and 7: Creighton discloses as discussed above in claim 1. Creighton discloses including grain flour at 25% to about 50% [0027; 0029]. Creighton does not explicitly disclose cereal grain at 1 to 15%.
Spicer discloses a dietary food product at least 10% protein and more than 20% fiber from about 55 to 70% soluble and 30% to 45% insoluble fiber at percent of the total fiber [abstract]. Spicer discloses adding cereal grain in the form of flour or corn meal at about 10% to about 25% [col. 3, lines 54-59].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the composition of Creighton to include cereal flour or specifically corn meal as in Spicer and at 10% to about 25% as in Spicer in order to provide a source of protein other than soybean protein.
Although Spicer does not explicitly disclose grain flour at about 1 to 15% one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Spicer overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Regarding Claim 10: Creighton discloses as discussed above in claim 1. Creighton discloses 15% to 30% protein and discloses 5% to 15% insoluble fiber and 5% to 15 soluble fiber [abstract] for a total 10 to 30% dietary fiber. Creighton discloses soybean protein as the protein and that it can be used in combination with other proteins [0046]. Creighton therefore discloses a combination of protein and insoluble fiber at about 20% to about 45%. Creighton discloses the food prices having a moisture content of 2 to 6% [0059]; or 1 to 4% [0085]. Creighton discloses adjuvants at 0.01% to about 5% [0052; 0053]. Creighton discloses including grain flour at 25% to about 50% [0027; 0029].
Creighton does not explicitly disclose cereal grain at 1 to 15%.
Spicer discloses a dietary food product at least 10% protein and more than 20% fiber from about 55 to 70% soluble and 30% to 45% insoluble fiber at percent of the total fiber [abstract]. Spicer discloses adding cereal grain in the form of flour or corn meal at about 10% to about 25% [col. 3, lines 54-59].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the composition of Creighton to include cereal flour or specifically corn meal as in Spicer and at 10% to about 25% as in Spicer in order to provide a source of protein other than soybean protein.
Although Spicer does not explicitly disclose grain flour at about 1 to 15% one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Spicer overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Although Creighton does not explicitly disclose the protein at about 28% to about 48% one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Creighton overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Although Creighton does not explicitly disclose insoluble fiber at 15% to 35% one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Creighton overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Although Creighton does not explicitly disclose total fiber at about 26% to about 36% one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Creighton overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Regarding Claim 18: Creighton discloses as discussed above in claim 14. Creighton discloses including grain flour at 25% to about 50% [0027; 0029]. Creighton does not explicitly disclose cereal grain at 1 to 15%.
Spicer discloses a dietary food product at least 10% protein and more than 20% fiber from about 55 to 70% soluble and 30% to 45% insoluble fiber at percent of the total fiber [abstract]. Spicer discloses adding cereal grain in the form of flour or corn meal at about 10% to about 25% [col. 3, lines 54-59].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the composition of Creighton to include cereal flour or specifically corn meal as in Spicer and at 10% to about 25% as in Spicer in order to provide a source of protein other than soybean protein.
Although Spicer does not explicitly disclose grain flour at about 1 to 15% one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Spicer overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FELICIA C TURNER whose telephone number is (571)270-3733. The examiner can normally be reached Mon-Thu 8:00-4:00 pm.
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/Felicia C Turner/ Primary Examiner, Art Unit 1793
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