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 .
DETAILED ACTION
Status of Claims
Claims 1-11 are currently under examination and the subject matter of the present Office Action.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 02/27/2024, 10/01/2025, 12/09/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements were considered by the Examiner.
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 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 1, 3-4, 6 and 8 are rejected under 35 U.S.C. 103(a) as being unpatentable over Goto et al. (JP 2010-94066 A, cited in IDS, machine translated in IP.com), hereinafter Goto, as evidenced by Ako Kasei (Potassium Chloride. KCl. Obtained on 03/16/2026 from URL: <https://web.ako-kasei.co.jp/en/index> and https://web.ako-kasei.co.jp/en/business/mukienrui, available 2017), and Silk (Soymilk. Obtained on 03/16/2026 from WayBack Machine URL: <https://web.archive.org/web/20191022183653/https://silk.com/plant-based-products/soymilk/original-soymilk/>).
Goto teaches the preparation of tofu with smooth and dense structure using oils, emulsifier and magnesium chloride from seawater (Abstract).
Regarding Claim 1, Goto teaches oil in water emulsion wherein the oil phase/water phase ratio (mass ratio) of 60/40 to 25/75 (p. 7, Claim 2). As such, the amount of oil overlaps with the claimed oil component in (4). The emulsion comprises magnesium, sodium and potassium, wherein the concentration of magnesium chloride is 5 to 20% by mass, the mass ratio of magnesium chloride/sodium is 3/1 to 25/1, and the mass ratio of magnesium chloride/ potassium is 2/1 to 18/1 (Claim 1). By Examiner’s calculation, the concentration range of sodium is ~0.2%-6.7%, and the concentration range of sodium is ~0.3%-10. Therefore, the ratio of Na:K overlaps with the claimed ratio in (3). Furthermore, Goto recites the sodium is 4% or less, and when the weight ratio of magnesium chloride/potassium is 2/1 there is little bitterness (p. 2, 3rd para from bottom to last para). Goto teaches potassium from marine source Ako Kasei reading on feature (2), as shown in Table 1 (translated), and as evidenced by Ako Kasei. Goto teaches the coagulant is dispersed in 150 g soymilk (p. 5 4th paragraph to bottom). Soymilk contains 8g of protein per serving/cup (250 grams), as evidenced by Silk. Translated Table 1 of Goto shows water:oil at 70/30, and varying amounts of Na and K, for example, Na at 2.2% and K at 1.1%. Goto teaches blending the emulsion coagulation preparation with 150 g soymilk (p. 5, Example). In order to achieve a magnesium chloride hexahydrate (molecular weight 202 g/mol) concentration of 0.3%, approximately 1.5% of the water-in-oil emulsion coagulant from Example 2, which contains 11.5% MgCl2 (molecular weight 95 g/mol), should be included. By Examiner’s calculation, the protein in 150 g soy milk is 4.8 g, and would give a mass of ~3.4% protein in the oil-in-water emulsion, which meets the required range for feature (1).
Regarding Claims 3-4, Goto teaches soy milk, which is a plant-based milk (Examples 1-2 and Comparative Examples 1-2).
Regarding Claims 6, Goto teaches soy milk, and does not require addition of other protein sources (Examples 1-2 and Comparative Examples 1-2).
Regarding Claims 8, Goto has rendered the ratio of Na:K and the marine source obvious as discussed in Claim 1 supra. Regarding the recitation of “for imparting milk flavor…”, because the prior art composition is the identical composition claimed, the composition must necessarily have the characteristics claimed in Claim 8. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
Claims 2, 5, 7, 9-11 are rejected under 35 U.S.C. 103(a) as being unpatentable over Goto, as applied to Claim 1 above, and in view of BDA (Food Fact Sheet. June 2018. Milk Allergy. Obtained on 03/16/2025 from URL: <https://ashfordstpeters.net/paediatric-allergy/docs/BDA%20Milk%20Allergy%20Food%20Factsheet%20Jun%202018.pdf>.)
Regarding Claim 2, Goto does not expressly teach non-fat milk solids content of less than 3 mass%.
BDA cures the deficiency by teaching that milk allergy are caused by different factors including non-fat milk solids (p. 1, R. Col., red box).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of BDA with Goto and use a milk substitute that does not have or have negligible non-fat milk solids because they are considered allergens in the emulsion of Goto.
Regarding Claim 5, BDA teaches milk-free-milk alternatives including oat and soy (p. 2, L. Col., red box). BDA also teaches that for young children, milks with higher fat and protein content are preferred (p. 1, R. Col. last sentence to 1st sentence of p. 2). Furthermore, soy and oat milks contain iodine and calcium (p. 2, R. Col., 1st sentence). BDA teaches that when adding to coffee as creamer, soy milk tends to curdle (p. 2, L. Col., red box).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of BDA with Goto and use oat milk as milk substitute in place of soy milk in the emulsion of Goto as both are alternative milk free food that provide many advantages. One of ordinary skill would be motivated by factors such as cost, taste, availability etc. to make the modifications required to arrive at the instant invention with reasonable expectation of success for obtaining a milk with similar utility as soy milk in the emulsion. Furthermore, in certain applications such as coffee creamer, soymilk curdles according to BDA, therefore one of ordinary skill in the art would be motivated to try oat milk, which also renders the coffee whitener in Claims 7 and 11 obvious.
The features of Claims 9-10 have been rendered obvious by Goto supra.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached on M-F, 10-6 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached on (571) 270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.Y.S./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792