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
Non-compliance and Status of the Claims
The reply filed on 06/23/2026 is not fully responsive to the prior Office action because of the following omission(s) or matter(s): The Examiner notes on the record that Applicant filed a new Claim 13, but there appears to be a missing Claim 12, or there is a typographical error, and therefore the amendment is non-compliant, i.e. not meeting the requirement of 37 C.F.R. 1.121 (D) Claim Numbering: All of the claims in each amendment paper must be presented in ascending numerical order. See MPEP 714. Since the above-mentioned reply appears to be bona fide, for compact prosecution, Claim 13 will be considered a typographical error, and be treated as Claim 12 in lieu of issuing a noncompliance in order to move the prosecution forward.
Claim 12 is newly added. Claims 1 and 8 have been amended. Claims 1-12 are presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/07/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement was considered by the Examiner.
Modified Rejection As Necessitated by the Amendment Filed 04/27/2023
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 1-12 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 1 and 8 recite “wherein the marine-derived potassium salt has a potassium chloride content of 51 mass% or more in solids content”. This recitation is vague because it is unclear if the 51% being referred to is the source material or the oil-in-water composition, and if it is being based only on potassium content, i.e. KCl, K2CO3 etc. or if it is based on the entire solid-contributing materials e.g. NaCl, MgCl2 etc. To move prosecution forward, the Examiner will interpret the phrase to mean the total source raw material and include all solid-contributing materials e.g. NaCl, MgCl2 etc.
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.
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 1-4, and 6-12 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kikuchi et al. (JP 2018-29547 A, cited in the IDS, machine translated in IP.com), hereinafter Kikuchi.
Kikuchi discloses the provision of a salt composition capable of reducing sodium intake without impairing the flavor and taste quality of foods and drinks, comprising a lactic acid fermented product using an oil-in-water emulsion containing a dairy raw material as a substrate, and wherein a part of sodium chloride is preferably replaced with potassium chloride (Abstract).
Regarding Claim 1, Kikuchi teaches preparing the oil-in-water emulsion so that protein is at 75-250 mass parts and carbohydrates 120-300 mass parts with respect to 100 mass parts of fats and oils in this oil-in-water emulsion (p. 8, 3rd to 4th paragraph). In one example of lactic acid fermented product, the total milk protein is 1%, which meets criteria (1) of Claim 1 (p. 12, Production Example 1). The lactic acid fermented product is added to the salt composition (p. 13, 2nd to last paragraph). Example 6 describes combination of 2650 g sodium chloride and 3950 potassium chloride (derived from minerals), which gives a ratio of 1:1.5, which meets criteria (3) of Claim 1, and also meats the requirement for KCl to be 51% or more of the solids. The fat content in the oil-in-water emulsion is preferably 1.5 to 50% by mass, more preferably 1.5 to 30% by mass, and most preferably 2 to 20% by mass, which meets criteria (4) of Claim 1 (p. 7, 4th paragraph). Regarding feature (2) of Claim 1, Example 13 of Kikuchi teaches combining 2500 g of purified NaCl, and 2500 g of ocean potash (potassium chloride 99.5% or more, derived from seawater). As such, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
Regarding Claim 2, Kikuchi teaches a fermented product comprising 4.5% by mass non-fat dry milk in, wherein the non-fat milk solid content is 95.2% by mass (Production Example 1). By Examiner’s calculation, this is equivalent to 4.28%. However, Kikuchi also teaches that the content of the milk raw material in the oil-in-water emulsion is preferably 2 to 50% by mass as the non-fat milk solid content to obtain a table lactic acid fermented product having a good flavor (p. 6, last paragraph). The range encompasses the claimed range, and it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to adjust the amount of non-fat milk solid content in the emulsion to obtain the desired flavor profile. The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Regarding Claims 3-4, 6, and 9-10 Kikuchi teaches soy milk and soybean protein (Production Example 4).
Regarding Claims 7 and 11, Kikuchi teaches food products of the invention include mayonnaise, pasta sauce, white sauce, tea sauce food/beverage products which do not contain salt (Claims 5-6; p. 4, 3rd paragraph). Furthermore, because soy milk is a commercially known milk substitute, and Kikuchi teaches emulsion with soy milk, the claim is therefore obvious (Production Example 4).
Regarding Claims 8, Kikuchi has rendered all the claimed features obvious 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.
Regarding Claims 12, Kikuchi teaches Comparative Example 3 wherein the salt solution added to the fermented lactic acid product comprises only KCl.
Claim 5 is rejected under 35 U.S.C. 103(a) as being unpatentable over Kikuchi, as applied to Claim 1-4 and 6-12 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>; Of record.)
Regarding Claim 5, Kikuchi is silent on the oat milk.
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).
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 Kikuchi and use oat milk as milk substitute in place of soy milk in the emulsion of Kikuchi 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.
Response to Arguments:
Applicant’s argument were with regards to Goto. However, these arguments are moot because the new ground of rejection necessitated by the amendment does not rely on Goto for any teaching or matter specifically challenged in the argument.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Tokunaga et al. (JP 2021-35339 A, machine translated in IP.com) teaches improving milk flavor of an oil-in-water emulsion containing fat and milk component, for example, whipped cream, comprising one calcium source selected from lactate calcium, potassium chloride, sodium chloride etc.
Shi et al. (Journal of Petroleum Science and Engineering 171 (2018) 928–937) describes phase inversion point from water-in-oil to oil-in-water with changes in volume and viscosity.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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.
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/J.Y.S./Examiner, Art Unit 1792 /ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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