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 .
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 26-45 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 23-25 of U.S. Patent No. 11980203 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to a pasta product comprising a cooked pasta and a composition reconstituted to provide a cheese product or cheese analog comprising: at least one cheese component or cheese analog; and a color composition comprising: from about 49.7% to about 87.1% curcumin compounds by weight based on a total amount of a color portion of the color composition; from about 2.1% to about 42.8% annatto carotenoids by weight based on the total amount of the color portion of the color composition; and from about 7.5% to about 10.8% paprika carotenoids by weight based on the total amount of the color portion of the color composition, wherein the curcumin compounds are present in an amount from about 2 to about 15 times the amount of annatto carotenoids by weight, and the annatto carotenoids comprise greater than about 51% norbixin by weight.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 26-45 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for cheese sauce, does not reasonably provide enablement for any sauce. Pasta sauces include various types based on their composition. Pasta sauces are diverse, ranging from light olive oil, savory herb, and fresh tomato bases to rich cream, cheese, and hearty meat sauces. Tomato-Based Sauces include:
--Marinara: A simple, quick-cooked sauce with tomatoes, garlic, herbs, and olive oil.
--Pomodoro: A traditional, smooth tomato sauce.
--Arrabbiata: A spicy tomato sauce made with dried red chili peppers.
--Amatriciana: A savory sauce featuring cured pork (guanciale), tomato, and Pecorino cheese.
--Vodka Sauce: A tangy, creamy tomato-based sauce.
Cream & Cheese Sauces include:
--Alfredo: A rich blend of butter, parmesan cheese, and cream.
--Carbonara: A silky sauce made with eggs, cheese, pork, and black pepper.
--Béchamel: A white sauce made from milk, butter, and flour, used as a base for many dishes.
--Cacio e Pepe: A simple, zesty sauce made with black pepper and Pecorino Romano cheese.
--Truffle Cream: A luxurious, earthy cream-based sauce.
Herb & Oil-Based Sauces include:
--Pesto: A fresh, uncooked sauce featuring basil, garlic, pine nuts, Parmesan, and olive oil.
--Aglio e Olio: A simple, flavorful combination of garlic and olive oil.
--Meat & Specialty Sauces:
--Bolognese (Ragù): A slow-cooked, hearty meat sauce.
--Clam Sauce: Either a white (oil/garlic) or red (tomato) sauce based on clams.
--Fra Diavolo: A spicy, tomato-based sauce often paired with seafood.
The instant specification only refers to cheese sauce.
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Case law holds that applicant's specification must be "commensurately enabling [regarding the scope of the claims]" Ex parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1989) otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. Although the statute itself does not use the phrase "undue experimentation", it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation as stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and in In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Specifically, in In re Wands the Court set forth a non-exhaustive list of factors to be considered in determining whether undue experimentation would be involved in making and/or using the claimed invention. These factors include, but are not limited to: (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. Applying these factors to claims 26-45:
(A) The breadth of the claims
The claims are broad in the scope in the sense that it encompasses any pasta sauce.
(B) The nature of the invention
The invention relates to pasta comprising cheese sauce containing natural colors derived from curcumin, annatto and paprika.
(C) - (E) State of the prior art/The level of ordinary skill/The level of predictability
Preparation of pasta sauces is an old art. However, the art is not without uncertainty. Production of cheese sauce containing natural colors derived from curcumin, annatto and paprika lies somewhere between a predictable art and an unpredictable art. However, when the skilled artisan attempts to calculate all the pasta sauce compositions, predictability is lost due to the complexity of art.
F. The amount of direction provided by the inventor
The entirety of the direction offered by the specification relates to cheese sauce. There is no direction provided for any other type of sauce.
G. The existence of working examples
The specification provides working examples relate to cheese powder.
H. The quantity of experimentation
A large amount of experimentation, on the order of a number of man-years would be necessary to practice the invention within the full scope of the claims.
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.
Claim(s) 26-45 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watson (Watson, E. 2012. “Open Innovation: What is Kraft Foods looking for from potential partners?” Downloaded September 19, 2019, from https://www.foodnavigator-usa.com/Article/2012/06/08/Open-innovation-What-is-Kraft-Foods-looking-for-from-partners#) in view of Wilson (Wilson, J. 2013. “Kraft removing artificial dyes from some mac and cheese.” Cited on IDS filed 8/1/2019) with evidence provided by Dairiki et al. (US 2009/0069386).
Regarding claims 26-45, Watson teaches that Kraft is seeking a clean-label “colorant to replace artificial color Yellow 5 & 6 in dry cheese powder in its Macaroni and Cheese.” Therefore, Watson is considered to teach a dry powdered composition that may be reconstituted to provide a cheese product or a cheese analog comprising at least one cheese component. Watson goes on to state that the “desired natural colorant” must “match current cheese powder color profiles” (p. 2).
Watson is silent as to the components that make up the color composition.
Wilson teaches that Kraft Macaroni & Cheese is changing its coloring from artificial coloring agents to a coloring composition that will likely comprise paprika, annatto and turmeric. Dairiki et al. provide evidence that turmeric colorant comprises curcumin [0127].
Neither Wilson nor Watson teach amounts of the color components. However, as Wilson is combining the same components as claimed, and Watson teaches that the intent is to match the color provided by dyes Yellow 5 and Yellow 6, which are the same dyes as in the “Control” sample in the instant invention, the instant claims are considered to be obvious over the prior art. There would have been some experimentation involved in order to have arrived at a color composition that matches the color profile of the commercial product. However, where the objective was to match the color of the synthetic dyes using natural dyes instead, the claims are considered to be obvious over the teachings of the prior art. That is, one of ordinary skill, starting from Watson with the stated objective of replacing Yellow 5 and Yellow 6 with natural colorants, and with Wilson where the natural colorants were taught to be paprika, turmeric, which comprises curcumin, and annatto, would have been able to have arrived at the claimed composition through no more than routine experimentation.
Regarding claims 29 and 39, where the color composition is “free” of synthetically derived colorants, given that Watson teaches that the natural colorants are “to replace” artificial colors, the dry powdered composition is considered to be “free” of synthetically derived colorants.
Regarding claims 35 and 45, Dairiki et al. provide evidence that annatto colorant comprises bixin and norbixin [0126].
Conclusion
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/VERA STULII/Primary Examiner, Art Unit 1791