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 10, 2024. The earliest effective filing date of the application is April 17, 2023.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d), filed on April 17, 2023.
Status of Application
The amendment filed June 5, 2026 with the Remarks has been entered. The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1 – 6
Withdrawn claims: None
Amended claims: 1 – 3
Claims currently under examination: 1 – 6
By not repeating the previously presented objection/rejection(s), it is sufficiently clear that said objection/rejection(s) are withdrawn.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3, and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by O’Connor et al. (US 20070286933 A1).
Regarding claim 1, the preamble of the claims recites “A beverage” which is interpreted to indicate the composition is an edible liquid.
O’Connor teaches an aerosol food product comprising pancake mix and water in a pressurized spray can ([0005]; Example 6, [0063]; [0068]). O’Connor teaches the water activity of the aerosol food product is 0.96 ([0068]). O’Connor teaches the pancake batter comprises iron (i.e., a functional component – Table 1, Iron). O’Connor treats the aerosol food product as if it is a liquid, and measures its viscosity and liquid separation characteristics, therefore the aerosol food product is a liquid (Example 17). O’Connor teaches a can or container can be sealed and pressurized with a mixture of water soluble and non water-soluble gasses to form the aerosol food product (i.e., the aerosol type spraying container comprises a spraying gas – [0014]).
With respect to the recitation “wherein the beverage is injected directly into a mouth from the aerosol type spraying container”, this recitation is deemed to be an intended use in so far as the structure of the product is concerned. A claimed intended use must result in structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. See MPEP § 2111.02. Given that the aerosol food product of O’Connor is identical to that of the presently claimed in terms of structure and composition, it meets the intended use of the claimed composition.
Regarding claim 3, O’Connor teaches the serving size of the pancake batter is 100g ([0021]). While O’Connor does not explicitly disclose the volumetric serving of the aerosol food product (i.e., pancake batter), one of ordinary skill in the art would understand that 100g of pancake batter is inherently of a greater volume than 0.3 mL.
Regarding claim 6, the instant specification states the flavoring as used herein means a substance that can impart fragrance or taste to the target beverage ([0025]). Therefore, pancake mix is considered a flavoring.
Claim Rejections - 35 USC § 103
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over O’Connor et al. (US 20070286933 A1), as applied to claim 1 above, and further in view of MNT (A complete guide to B vitamins. Medical News Today. (2020). Retrieved from Wayback Machine Archive - https://web.archive.org/web/20201121164400/https://www.medicalnewstoday.com/articles/325292).
O’Connor teaches the pancake mix comprises 0% DV thiamin ([0021]; Table 1).
O’Connor does not teach the pancake mix comprises 0.01 g/L of vitamin B1.
MNT teaches the daily recommended dose of thiamin (vitamin B1) is 12 – 14 mg/ day (p. 3, Table, Thiamin (B-1). MNT teaches thiamin deficiency (i.e., too little thiamin) can result in weight loss, little or no appetite, memory problems or confusion, heart problems, tingling and numbness in the hands and feet, loss of muscle mass, and/or poor reflexes (p. 4, paragraph 2).
O’Connor and MNT are combinable because they are concerned with the same field of endeavor, namely, vitamin B1. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have included at least 0.01 g/L of vitamin B1 in the pancake mix of O’Connor, as taught by MNT, because supplementing vitamin B1 helps prevent the undesirable effects of vitamin B1 deficiency.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over O’Connor et al. (US 20070286933 A1), as applied to claim 1 above, and further in view of BOV Solutions (How the Bag-On-Valve Works. BOVsolutions. (2020). Retrieved from: https://bovsolutions.com/products/how-the-bag-on-valve-works/).
O’Connor does not disclose the type of aerosol spraying container.
BOV Solutions teaches The Bag-On-Valve (B.O.V.) is a barrier packaging technology for liquid or viscous products (p. 1, paragraph 1). BOV Solutions teaches B.O.V. packaging completely separates the product from the eco-friendly air or nitrogen propellant (p. 1, paragraph 1). BOV teaches this separation keeps the product pure (p. 1, paragraph 1). BOV Solutions teaches B.O.V. packaging is 100% recyclable and offers both convenience and reliability for the consumer (p. 1, paragraph 1). BOV Solutions teaches B.O.V. packaging is suitable for both liquid and some viscous product types, including beverages (p. 2, bullet 10; p. 3, Food, bullet 8).
O’Connor and BOV Solutions are combinable because they are concerned with the same field of endeavor, namely, aerosol beverages. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have selected BOV packaging for the pancake mix of O’Connor, as taught by BOV Solutions, because BOV packaging keeps the beverage product pure, is 100% recyclable, and is suitable for liquid products, including beverages.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over O’Connor et al. (US 20070286933 A1), as applied to claim 1 above, and further in view of Msomi et al. (Suitability of sugar alcohols as antidiabetic supplements: A review. J Food Drug Anal. Vol 29, Iss (1). Pp. 1–14. (2021)).
O’Connor teaches the serving size of the pancake batter is 100g ([0021]). O’Connor teaches the pancake batter comprises 4g sugar (i.e., disaccharides). Assuming the pancake batter has a similar density to water, one of ordinary skill in the art would estimate the sugar content of the pancake batter of O’Connor to be about 40g/L.
O’Connor does not teach a total content of monosaccharides and disaccharides, excluding sugar alcohols, is 20 g/L or less.
Msomi teaches xylitol is a sugar alcohol with comparable sweetness to sucrose while having only a fraction of the caloric content per gram, and a lower glycemic index than sucrose (p. 2, paragraph 3).
O’Connor and Msomi are combinable because they are concerned with the same field of endeavor, namely, sweeteners. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have replaced some or all of the sugar in the pancake batter of O’Connor with xylitol such that the pancake batter has a total content of monosaccharides and disaccharides, excluding sugar alcohols, is 20 g/L or less, as taught by Msomi, because xylitol is a sugar alcohol with comparable sweetness to sucrose while having only a fraction of the caloric content per gram, and a lower glycemic index than sucrose. Furthermore, MPEP § 2144.06.II states an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). One of ordinary skill in the art would have substituted sugar with xylitol before the effective filing date of the application because xylitol, like sugar is a known sweetener suitable for use in foods and beverages.
Response to Arguments
Applicant's arguments filed June 5, 2026 have been fully considered but they are not persuasive.
Applicant argues O'Connor does not disclose, expressly or inherently, at least the limitation that "the beverage is injected directly into a mouth from the aerosol type spraying container," as recited in amended claim 1. Therefore, O'Connor does not anticipate amended claim 1 (p. 6, paragraph 3).
Applicant’s argument has been carefully considered however the argument is not persuasive. The limitation “the beverage is injected directly into a mouth from the aerosol type spraying container” is an intended use, and is not considered to limit the composition of claim 1. See MPEP § 2111.02. Given that the aerosol food product of O’Connor is identical to that of the presently claimed in terms of structure and composition, it meets the intended use of the claimed composition.
Applicant argues Li does not disclose that the beverage is filled in "an aerosol type spraying container" that "comprises a spraying gas" (p. 8, paragraph 1).
Applicant’s argument has been fully considered and it is persuasive. The previous rejections of claims 1 – 6 over Li have been withdrawn in light of applicants amendments.
Applicant argues Li does not disclose that "the beverage is injected directly into a mouth from the aerosol type spraying container," (p. 8, paragraph 1).
Applicant’s argument has been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues Makdesi does not establish that the beverage of Li inherently has a water activity of 0.94 or above (p. 9, paragraph 5).
Applicant’s argument has been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues Makdesi provides no teaching or reasoning to modify Li to arrive at the presently claimed invention (p. 9, paragraph 5).
Applicant’s argument has been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues MNT does not remedy the deficiencies of Li and Makdesi (p. 10, paragraph 4).
Applicant’s argument has been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues BOV Solutions does not address Li's ultrasonic atomization inhalation beverage and does not provide a reason to replace Li's ultrasonic electronic cigarette atomizer, which is used for inhalation to the upper respiratory tract, with an aerosol type spraying container comprising a spraying gas, wherein "the beverage is injected directly into a mouth from the aerosol type spraying container," (p. 11, paragraph 3).
Applicant’s argument has been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 LARK JULIA MORENO whose telephone number is (571)272-2337. The examiner can normally be reached 6:30 - 4:30 M - F.
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/L.J.M./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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