DETAILED ACTION
Background
The preliminary amendment dated (amendment) canceling claims 1, 3-11 and 13 has been entered. Claims 14-15 and 17-23 as filed with the amendment have been examined. Claims 1-13 and 16 have been canceled.
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 .
Election/Restrictions
Applicant’s election without traverse of claims 14-15 and 17-23, drawn to a method of producing a dessert product in the reply filed on March 13, 2026 is acknowledged. All claims drawn to any non-elected invention have been canceled.
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 14-15 and 17-23 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.
In claim 14, at lines 3-4, and in claim 15 at line 2 and again at line 3, the recited percentage (%) of free fatty acids is indefinite for lacking a weight basis or denominator. Is the amount of free fatty acids based on the weight of the egg yolk, the of total weight of lipids plus phospholipids, the total weight of the dessert product, or some other weight basis?
Claims 17-23 are rejected as depending from a rejected base claim.
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 14-15 and 20-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2012100569 A to Hanyuda (Hanyuda).
Unless otherwise indicated, the Office considers a percentage (%) disclosed without units to be a weight % (wt%) and, further, considers mass% to be interchangeable with wt%.
All references to Hanyuda refer to the Clarivate machine translation, a copy of which is provided with this Office action.
The Office interprets the Hanyuda enzyme-modified egg yolk as having a free fatty acid content equal to its phospholipid lysification rate.
Regarding instant claims 14-15 and 20, Hanyuda discloses at Example 1 on pages 4-5 a method of making a sauce for ice creams (“a method of producing a dessert product”) comprising treating egg yolk with a phospholipase A to hydrolyze the egg yolk phospholipids and mixing (“blending”) 55 g of the phospholipase enzyme-modified egg yolk (lysification rate or “free fatty acid content” of 30%, based on the total weight of lipids and phospholipids), with Yorklan H-1 oil-in-water emulsion (added emulsion) with a 68% fat content (QP Corporation, a “homogeneous liquid” comprising “oil and fat’), 100 g sugar (“sweetener”), 0.2 g xanthan gum and 44.8 g fresh water (“homogeneous liquid”) to prepare an oil-in-water emulsion (oil content: 34%) or the emulsion mixture. Next, the disclosed method comprises blending 100 g of whole milk powder (“a protein source” - claim 20), 550 g of starch syrup (solids 70% - “one or more additives” - claim 20) with the emulsion mixture and then heating at 80 ° C. for 40 minutes (“deactivating the phospholipase” - claim 15).
Regarding instant claim 21, Hanyuda in Test Example 1 on page 5 discloses an ice cream hardened at -10°C (“hard frozen ice cream) comprising its sauce.
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.
Claims 14-15, 17 and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over JP2002165580 A to Satou et al. (Satou) in view of US2003/0003215 A1 to Huang et al. (Huang).
Unless otherwise indicated, the Office considers a percentage (%) disclosed without units to be a weight % (wt%) and, further, considers mass% to be interchangeable with wt%.
All references to Satou refer to the Clarivate machine translation, a copy of each of which is provided with this Office action.
The Office interprets the Satou enzyme-modified egg yolk as having a free fatty acid content equal to its phospholipid lysation rate.
Regarding instant claims 14-15, Satou at Abstract on page 1 discloses an enzyme-deactivated and lysed yolk (“enzyme-modified egg yolk”) made by a method of processing yolk with phospholipase A followed by lysing the resultant product (“treating egg yolk with a phospholipase to hydrolyze the egg yolk phospholipids”) and, further comprising adding water and heating the resultant product (deactivating the phospholipase after the egg yolk comprises greater than or equal to 2 wt% free fatty acids, based on the total weight of lipids in the egg yolk” - claim 15). Further, at [0004] on page 2, Satou discloses that its enzyme-modified egg yolk has a lysation rate of phospholipid is 30 to 80% (“comprising greater than or equal to 2% (w/w) free fatty acids, based on the total weight of lipids in the egg yolk).
Still further, and regarding claims 20, 21 and 22, Satou at Test Example 3 on page 6 and at Table 4 discloses a method of producing a custard cream (“dessert product” as custard in claim 21) comprising blending, in a total of 100.1 g, 70 ml of milk (“in a homogeneous liquid”); 10 g of egg yolk; 2g of enzyme-modified egg yolk from Example 1 (2 wt% - claim 22); 15 g of white soft sugar (15 wt% “sweetener” in claim 22); 3 g cornstarch (“additive”- claim 20); and 0.1 g vanilla flavor (“additive” - claim 20).
Further, and regarding instant claims 17 and 18, Satou does not disclose blending one or more fats into its homogeneous liquid to make its dessert product; Satou does not disclose a method further comprising refrigerating the homogenous liquid for at least 8 hours at a temperature of less than or equal to 4 °C as in claim 17; and, further, Satou does not disclose a dessert product comprising from 0.5 to 18 wt% of the one or more fats, based on the total weight of the dessert product as in claim 22. However, at [0009] on page 4 Satou discloses adding its enzyme-modified egg yolk in a method of producing a dessert product including ice cream or pudding and that it prevents the aging of the dessert product.
Huang at Abstract discloses stable soft frozen dessert including (at [0011]) fat containing ice cream, pudding, sherbet and sorbet, wherein the dessert product comprises (at [0043]) about 4.5 wt% of egg yolks to improve texture and whipping ability. In Examples 1 and 2 at [0056] and the accompanying Table, Huang discloses stable soft ice cream comprising 4.85 wt% egg yolk, about 39 wt% of cream (40 wt% fat) or about 15.5 wt% fat, about 11 wt% and about 14 wt%, respectively, of sucrose and, respectively, 13.5 wt% and 6.25 wt% (80 wt% solids HMCS or maltose) or about 19 to 21 wt% of sweetener along with milk and water. Further, Huang at [0055] discloses refrigerating its dessert products at 4°C for from 4 to 16 hours, which the claimed at least 8 hours overlaps. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. it would have been obvious in Huang to refrigerate its dessert products for at least 8 hours as Huang discloses that the claimed refrigerating period makes a desirable dessert product.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Huang for Satou to blend fat into its homogeneous liquid in Example 1 or in its ice cream, including from 0.5 to 18 wt% of the one or more fats, based on the total weight of the dessert product and to perform refrigerating its homogenous liquid for at least 8 hours at a temperature of less than or equal to 4 °C. Both references disclose making frozen desserts and ice creams comprising blending egg yolks, sweeteners and a homogeneous liquid. The ordinary skilled artisan in Satou would have desired to blend in the claimed amount of fat as in Huang to make a richer, thicker or harder dessert product. Further, the ordinary skilled artisan in Satou would have desired to refrigerate its dessert product as in Huang to meld the flavor od the ingredients before further processing.
Regarding instant claim 19, Satou at the last paragraph of [0006] on page 3 discloses a method of making the enzyme-modified egg yolk into a dry product by spray drying.
Claims 14-15, 17-21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over JP2002165580 A to Satou et al. (Satou) in view of JP2018057287 A to Tsuchie et al. (Tsuchie).
Unless otherwise indicated, the Office considers a percentage (%) disclosed without units to be a weight % (wt%) and, further, considers mass% to be interchangeable with wt%.
All references to Satou and Tsuchie refer to the Clarivate machine translation, a copy of each of which is provided with this Office action.
The Office interprets the Satou enzyme-modified egg yolk as having a free fatty acid content equal to its phospholipid lysation rate.
Regarding instant claims 14-15, Satou at Abstract on page 1 discloses an enzyme-deactivated and lysed yolk (“enzyme-modified egg yolk”) made by a method of processing yolk with phospholipase A followed by lysing the resultant product (“treating egg yolk with a phospholipase to hydrolyze the egg yolk phospholipids”) and, further comprising adding water and heating the resultant product (deactivating the phospholipase after the egg yolk comprises greater than or equal to 2 wt% free fatty acids, based on the total weight of lipids in the egg yolk” - claim 15). Further, at [0004] on page 2, Satou discloses that its enzyme-modified egg yolk has a lysation rate of phospholipid is 30 to 80% (“comprising greater than or equal to 2% (w/w) free fatty acids, based on the total weight of lipids in the egg yolk).
Still further, and regarding claims 20 and 21, Satou at Test Example 3 on page 6 and at Table 4 discloses a method of producing a custard cream (“dessert product” as custard in claim 21) comprising blending, in a total of 100.1 g, 70 ml of milk (“in a homogeneous liquid”); 10 g of egg yolk; 2g of enzyme-modified egg yolk from Example 1; 15 g of white soft sugar (“sweetener”); 3 g cornstarch (“additive”- claim 20); and 0.1 g vanilla flavor (“additive” - claim 20).
Further, and regarding instant claims 17, 18 and 23, Satou does not disclose blending one or more fats into its homogeneous liquid to make its dessert product; Satou does not disclose a method further comprising refrigerating the homogenous liquid for at least 8 hours at a temperature of less than or equal to 4 °C as in claim 17; and, further, Satou does not disclose a method of producing a dessert product further comprising storing the dessert product at less than -18 °C for two or more months as in claim 23. However, at [0009] on page 4 Satou discloses a method of producing a dessert product including ice cream and that its enzyme-modified egg yolk prevents the aging of the dessert product. Further, Satou at the last paragraph before [0016] on page 5 discloses storing its stable homogenized oil-in-water emulsion composition comprising its enzyme-modified egg yolk for 3 months and 6 months with (at the last paragraph on page 5) no cream separation.
Tsuchie at the Abstract on page 1 discloses a method of producing a multi-layer frozen dessert product, wherein egg yolk is blended into an ice cream. At page 3, last 3 full paragraphs, Tsuchie discloses ice cream as comprising milk ingredients, egg yolk, fats and water as a solution or homogeneous liquid that is homogenized (blended) and sterilized to form a mixture. At page 4, 3rd paragraph, Tsuchie discloses refrigerating the mixture at 1 °C or more and 5 °C or less, which the claimed less than or equal to 4 °C in claim 17 overlaps and aging for 15 hours to hydrate the protein and crystallize fat. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. The ordinary skilled artisan in Tsuchie would have desired to age its ice cream at a temperature of less than or equal to 4 °C because Tsuchie discloses that aging at such a temperature provides a desirable ice cream dessert product. Still further, Tsuchie at page 4, 7th full paragraph discloses storing its ice cream product at -25 °C. phospholipase to hydrolyze the egg yolk phospholipids and yield an enzyme-modified egg yolk comprising greater than or equal to 2% (w/w) free fatty acids; and, blending into a homogenous liquid one or more fats, one or more sweeteners, and the enzyme-modified egg yolk.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Tsuchie for Satou to blend fat into its homogeneous liquid in Example 1 or in its ice cream, to perform refrigerating its homogenous liquid for at least 8 hours at a temperature of less than or equal to 4 °C as in claim 17, and to store an ice cream dessert product at less than -18 °C for two or more months as in claim 23. Both references disclose methods of making storage stable dessert products and making ice creams comprising blending egg yolks, sweeteners and a homogeneous liquid. The ordinary skilled artisan in Satou would have desired to blend in a fat as in Tsuchie to make a richer, thicker or harder dessert product. Further, the ordinary skilled artisan in Satou would have desired to refrigerate its dessert product for the claimed amount of time at less than or equal to 4 °C as in Tsuchie to hydrate proteins therein, and would have desired to store its ice cream dessert product at less than -18 °C as in Tsuchie for two or more months in the same way it successfully stores its own liquid dessert product.
Regarding instant claim 19, Satou at the last paragraph of [0006] on page 3 discloses a method of making the enzyme-modified egg yolk into a dry product by spray drying.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over JP2002165580 A to Satou et al. (Satou) in view of US2003/003215 A1 to Huang et al. (Huang) as applied to claim 14 above, and further in view of US2008/0069940 A1 to Underdown (Underdown).
As applied to claim 14, Satou at [0004] on page 2, [0009] on page 4 and at Test Example 3 on page 6 and Table 4 as modified by Huang at Examples 1 and 2 at [0056] and [0055] a method of producing a dessert product, comprising: treating egg yolk with a phospholipase to hydrolyze the egg yolk phospholipids and yield an enzyme-modified egg yolk comprising greater than or equal to 2% (w/w) free fatty acids; and, blending into a homogenous liquid one or more fats, one or more sweeteners, and the enzyme-modified egg yolk.
Satou as modified by Huang does not disclose a method further comprising processing the homogenous liquid using a continuous freezer equipped with a heat exchanger.
Underdown at Abstract discloses methods of making a frozen aerated confection and at Example 2 discloses making an ice cream by aging a mixture at 4 °C and then freezing the mixture in a continuous freezer fitted with an open dasher (“heat exchanger”) to aerate the mixture prior to hardening.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Underdown for Satou as modified by Huang to process its homogenous liquid using a continuous freezer equipped with a heat exchanger to aerate the mixture. All references disclose methods for making ice cream. The ordinary skilled artisan in Satou and Huang would have desired to process its homogeneous liquid using a continuous freezer equipped with a heat exchanger as in Underdown to enable whipping and aeration of its ice cream.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over JP2012100569 A to Hanyuda (Hanyuda) as applied to claim 14, above and further as evidenced by JP2005052052 A to Matsumoto et al (Matsumoto).
As applied to claim 14, Hanyuda discloses at Example 1 on pages 4-5 a method of producing a dessert product, comprising: treating egg yolk with a phospholipase to hydrolyze the egg yolk phospholipids and yield an enzyme-modified egg yolk comprising greater than or equal to 2% (w/w) free fatty acids; and, blending into a homogenous liquid one or more fats, one or more sweeteners, and the enzyme-modified egg yolk.
Example 1 of Hanyuda does not disclose how much added emulsion it contains. However, the amounts of fat, sweetener and enzyme-modified egg yolk in the dessert product of Example 1 of Hanyuda are determined as follows:
The Example 1 emulsion mixture of Hanyuda having a 34 wt% fat content comprises a total of (55g + 100g + 44.8g + 0.2 or) 200 g plus the amount of “Yorklan H-1” as an added emulsion. Matsumoto at page 1, last 2 lines and page 2, first line discloses that egg yolk contains about 16.5% by weight of protein and 33.5% by weight of lipid; and the emulsion mixture has (33.5% x 55 g or) 18.4 g of fat from the egg yolk plus the fat or oil from the added emulsion; and the added emulsion is 68 wt% fat. For the total amount of the emulsion mixture, 34% of X g of the total emulsion mixture is Xg emulsion mixture= (200g+ Yg added emulsion); and for the amount of fat (0.34)X = (18.4 g fat from egg yolk + (0.68g fat/g added emulsion • Yg added emulsion)). Solving for X and Y gives X=(200 +Y) or X -Y = 200; and, 0.34X=(18.4 + 0.68Y) is 0.34X -0.68Y=18.4 or 2.94(0.34X -0.68Y) = 2.94•18.4 or X-2Y= 54.1. Taken together, these equations give Y = 145.9 g added emulsion and X = 345.9 g of emulsion mixture in Example 1 of Hanyuda. Accordingly, the Example 1 dessert product of Hanyuda comprises a total of 650 + 345.9 or about 996 g, of which (18.4 g plus 145.9g added emulsion(0.68) or) 18.4 + 99.2 or 117.6 g is fat, giving about 11.5 wt% of fat (claim 22); about 10.1 wt% (110g/996 g) is sweetener (claim 22); and about 5.5 wt% (55g/996g) is enzyme-modified egg yolk.
Hanyuda does not provide an example of its sauce dessert product having from 0.1 to 5 wt% egg yolk; however, at page 3, 5th full paragraph Hanyuda discloses its dessert product comprising from 0.5 to 15 wt% of enzyme-modified egg yolk, which the claimed 0.1 to 5 wt% overlaps. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. The ordinary skilled artisan in Hanyuda would have found it obvious to include the claimed amount of enzyme-modified egg yolk because Hanyuda discloses that the claimed amount of such an enzyme-modified egg yolk provides a desirable sauce for ice cream.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. 1) US2010/0203202 A1 to Quessette et al. (Quessette) discloses stabilized frozen desserts comprising rice starch, egg yolks and plant fibre as the stabilizer, wherein at Example 1 the method of producing a dessert product comprises blending the stabilizers with milk, milkfat and sugar, pasteurizing the blend, then refrigerating and aging and then packing and hardening the product. 2) JP2000050805 A to Yamashita (Clarivate machine translation) in the Abstract on page 1 discloses an aging stable frozen custard cream comprising an enzyme-modified egg yolk. At [0007] on page 2, Yamashita discloses a list of suitable phospholipase enzymes for treating egg yolks. At Example 3 on page 4, Yamashita discloses the custard comprising the enzyme-modified egg yolk, sugar, milk and starch aged at -25 °C for 2 weeks without separation or deterioration in its texture.
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/ANDREW E MERRIAM/Examiner, Art Unit 1791
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