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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-9 and 13-20) in the reply filed on 4/10/2026 is acknowledged. Claims 10-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention of Group II, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112, first paragraph
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 1-9 and 13-20 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. It appears that amount of load applied to cause crushing and the elapsed time are variables that determine extent of crushing (for example, see para 54 of PGPUB of application), and hence the amount of "separated water portion". However, claim 1 does not quantify any of these variables. As such, it is not clear how (i.e. under what load/time conditions explained above) to measure the claimed values of "30 mass% or less" and "0.34 mass% or less" are measured. Further, base claim 1 recites properties of the product obtained without disclosing how they are achieved, including values of variables mentioned above.
Claim Rejections - 35 USC § 112, Second Paragraph
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 1-9 and 13-20 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.
Base claim 1 recites composition of "a separated water portion during crushing" (emphasis added) such as "an amount of a separated water portion during crushing is 30 mass % or less relative to the entire jelly beverage" and "a calcium ion concentration of the separated water portion during crushing is 0.34 mass% or less". It is not clear what this means. The use of the term "during" in the above limitation suggests a stage between when "crushing" starts to when "crushing" is completed, and the "amount of separated water portion" will vary depending on how far crushing has proceeded the claim recitation does not clarify what stage of crushing is the product at. Further, it appears that amount of load applied to cause crushing and the elapsed time are variables that determine extent of crushing (for example, see para 54 of PGPUB of application), and hence the amount of "separated water portion". However, claim 1 does not quantify any of these variables. As such, it is not clear how (i.e. under what
load/time conditions explained above) to measure the claimed values of "30 mass% or less" and "0.34 mass% or less" are measured
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.
Claims 1-5, 9, 13-16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Jun (JP2017201923A), hereinafter Jun. A full English machine translation of Jun reference is being provided with this office action and any reference to text of Jun is with respect to the provided full English machine translation.
Regarding claim 1, Jun (JP2017201923A) teaches a jelly beverage (para 7), wherein an amount of a separated water portion during crushing is 30 mass % or less relative to the entire jelly beverage ("Experimental Example 7" that there was no water separation; i.e. substantially 0 mass% - see para 27; also see Note 1 below), and a calcium ion concentration of the separated water portion during crushing is 0.34 mass% or less (as no water separation occurred - see para 27; also see Note 1 below). Thus, ranges taught by Jun for "an amount of a separated water portion during crushing" as well as "a calcium ion concentration of the separated water portion during crushing" overlap with the claimed ranges. It is noted that in the case where the claimed ranges "overlap or lie inside the ranges disclosed by the prior art" a prima facie case of obviousness exists (In re Wetheim, 541 F2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F2d
1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)).
Note 1: Jun discloses that syneresis or separation of liquid from the jelly food is a choking hazard (para 3; also see para 11) and that it aims to overcome this problem by describing "easy-to-swallow jelly beverage" for those that have "difficulty swallowing" (para 4) by developing a jelly that retains its cohesiveness even after being crushed (para 1 and 3) and does not undergo syneresis for a long period of time (para 7), which is unlike conventional jelly foods (para 3). Further, Jun describes that appropriate content of divalent free metal ions (example includes "calcium lactate" in para 16) varies depending on the degree of esterification of low-methoxyl pectin - as the degree of esterification increases, the amount of divalent free metal ion also needs to be increased (para 1B; also see para 24). Para 13 of Jun reference describes unless otherwise specified, "%" means "mass %". In the above context, Jun discloses related to "Experimental Example 7" that there was no water separation (see para 27; also see para 25), which reads on the claimed "an amount of a separated water portion during crushing is 30 mass % or less relative to the entire jelly beverage" and that calcium ions concentration showed "re-stability in the range of 200 ppm to 500 ppm" to prevent syneresis (para 27, especially last sentence), noting that 500 ppm represents (500 x 1o-6); i.e. (500 x 1o-4)%; i.e. 0.05% by mass, which falls within the claimed "a calcium ion concentration of the separated water portion during crushing is 0.34 mass % or less". As explained above, ranges taught by Jun overlap with the claimed ranges.
Regarding claim 2, Jun teaches the jelly beverage according to claim 1, wherein the condition "a ratio of (the calcium ion concentration of the separated water portion during crushing)/(a calcium ion concentration of the jelly beverage) is 0.80 or more and 0.99 or less" does not apply. This is because separated water portion may be 0% to satisfy claim 1 and claim 2 depends from claim 1; i.e. presence of separated water portion is not required.
Regarding claims 3-4, Jun teaches the jelly beverage according to claim 1, comprising a low-methoxyl pectin (para 8) as gelling agent, which is a known calcium-reactive gelling agent. Note that para 24 of PGPUB of application discloses "LM pectin" as a "calcium-reactive gelling agent").
Regarding claim 5, Jun teaches the jelly beverage according to claim 1, wherein it is advantageous to include free calcium ions in the concentration 200 ppm to 500 ppm (para 27, especially last sentence); noting that 500 ppm represents (500 X 10-6);
i.e. (500 x 1o-4)%; i.e. 0.05% by mass and as such, 200 ppm to 500 ppm
represents 0.02% to 0.05%, which reads on the claimed range of "calcium ion concentration of the jelly beverage is 0.01 mass % or more and 0.34 mass% or less".
Regarding claims 9 and 20, Jun teaches the jelly beverage according to claims 1 and 2, and is as such a product claim, but the remainder of the claim recites details of a "method" describing how "the separated water portion during crushing is collected".
Whereas claims 9 and 20 are each product claims, the claims recites a method of steps therein; i.e. "the following method, comprising: applying a load to a spout-attached pouch container containing 180 g of the jelly beverage to discharge the jelly beverage; and leaving, for one minute, the crushed jelly beverage on a sieve on which only a liquid drops to collect the separated water portion during crushing, which has dropped under the sieve, wherein the spout-attached pouch container is in a form in which a straw is provided in a bag-shaped container made of a flexible sheet obtained by laminating a plastic film and a metal foil, and wherein the sheet has a surface dimension of 80 mmx120 mm, a folded part provided in the sheet has a length of 54 mm, a mouthpiece of the straw has a diameter of 12.3 mm, and the straw has a length of 94.5 mm". Therefore, the claim amounts to a product by process claim. "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed.Cir. 1985). See MPEP 2113.
Regarding claims 13-14, Jun teaches the jelly beverage according to claim 2, comprising a low-methoxyl pectin (para 8) as gelling agent, which is a known calcium-reactive gelling agent. Note that para 24 of PGPUB of application discloses "LM pectin" as a "calcium-reactive gelling agent").
Regarding claim 15, Jun teaches jelly beverage according to claim 3, wherein the calcium-reactive gelling agent is a low-methoxyl pectin (para BJ; i.e. LM pectin.
Regarding claim 16, Jun teaches the jelly beverage according to claim 2, wherein it is advantageous to include free calcium ions in the concentration 200 ppm to 500 ppm (para 27, especially last sentence); noting that 500 ppm represents (500 X 10-6);
i.e. (500 x 1o-4)%; i.e. 0.05% by mass and as such, 200 ppm to 500 ppm
represents 0.02% to 0.05%, which reads on the claimed range of "calcium ion concentration of the jelly beverage is 0.01 mass % or more and 0.34 mass% or less"..
Claims 6-8 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Juna in view of Noguchi (JP 2020089291A), hereinafter Noguchi. A full English machine translation of Noguchi reference is being provided with this office action and any reference to text of Noguchi is with respect to the provided full English machine translation.
Regarding claims 6 and 17, Jun teaches the jelly beverage according to claims 1 and 2, but does not specifically state that the jelly beverage has "a Brix of 5 or more and 40 or less". Noguchi, which also teaches a jelly beverage (para 1 and 2), further disclosing that in a jelly type food, the Brix is preferably 5 to 40 (para 38), which overlaps with the claimed range of "a Brix of 5 or more and 40 or less” It would have been obvious to one of ordinary skills in the art before the effective filing of the claimed invention to modify Jun so that the jelly beverage has "a Brix of 5 or more and 40 or less". The ordinary artisan would have been motivated to modify Jun for at least the purpose of providing a Brix range that gives the jelly a body-like texture and also stabilizes the gel (see para 38 of Nogichi). It is noted that in the case where the claimed ranges "overlap or lie inside the ranges disclosed by the prior art" a prima facie case of obviousness exists (In re Wetheim, 541 F2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff,
919 F2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)).
Regarding claims 7 and 18, Jun teaches the jelly beverage according to claim 1 and 2, but does not teach that the jelly beverage has "a gel strength of 0.1 Nor more and 2 N or less". Noguchi, which also teaches a jelly beverage (para 1 and 2), further disclosing that gel strength may be 0.4 Nor more and 2.0 N or less (para 29), which lies within the claimed range of "a gel strength of 0.1 Nor more and 2 N or less". It would have been obvious to one of ordinary skills in the art before the effective filing of the claimed invention to modify Jun so that the jelly beverage has "a gel strength of 0.1 Nor more and 2 Nor less". The ordinary artisan would have been motivated to modify Jun for at least the purpose of forming a jelly wherein the gel strength provides target gel texture that is neither insufficient or too hard (see para 30 of Noguchi). It is noted that in the case where the claimed ranges "overlap or lie inside the ranges disclosed by the prior art" a prima facie case of obviousness exists (In re Wetheim, 541 F2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F2d 1575, 1578, 16 USPQ2d
1934, 1936 (Fed. Cir. 1990)).
Regarding claims 8 and 19, Jun teaches the jelly beverage according to claims 1 and 2, but does not teach wherein "12 months after production of the jelly beverage, the amount of the separated water portion during crushing is 30 mass % or less relative to the entire jelly beverage, and the calcium ion concentration of the separated water portion during crushing is 0.34 mass % or less". Noguchi, which also teaches a jelly beverage (para 1 and 2), further disclosing that the amount of separated water portion depends among other variables on temperature (see para 34 and 36 which describe measuring properties under "heated conditions") and the type and concentration of gelling agent (such as "gellan gum" described in para 36) and Ca ions (described in para 36). Given that temperature is a known results effective variable and its dependence on other properties such as the amount of the separated water portion during crushing and the calcium ion concentration is also known (as explained above), varying the temperature to achieve a target storage time such as 12 months after production would not be cause for undue experimentation. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) see MPEP 2144.05. Therefore,
would have been obvious to one of ordinary skills in the art before the effective filing of the claimed invention to modify Jun so that storage temperature is such that after a target storage period (such as 12 after production of the jelly beverage), the amount of the separated water portion during crushing and the calcium ion concentration of the separated water portion achieve a target value, such as "the amount of the separated water portion during crushing is 30 mass % or less relative to the entire jelly beverage, and the calcium ion concentration of the separated water portion during crushing is 0.34 mass% or less". The ordinary artisan would have been motivated to modify Jun for at least the purpose of forming a jelly that can be stored for a target period at a target temperature that does not require refrigeration or is similar to serving temperature of the jelly food.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JYOTI CHAWLA whose telephone number is (571)272-8212. The examiner can normally be reached M-F 9:30- 5:30.
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, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JYOTI CHAWLA/Primary Examiner, Art Unit 1791
Prosecution Insights