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 .
Status of Claim(s)
Claims 1-15 are pending. Claims 1 and 8-11 are amended. Claims 1-15 are under examination
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.
Claim 10 is 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.
Claim 10 requires the fat to comprise one or more emulsifiers selected from a Markush group. Claim 10 also requires the fat to comprise one or more hydrocolloids or proteins selected from another Markush group. In the instant case, it is not readily apparent how the emulsifying Markush members are also a hydrocolloid or protein. For examination purpose, broadest reasonable is applied. The fat is either an emulsifying Markush member or a member of a hydrocolloid or protein Markush group. Clarification is required.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gillman et al. (WO 2021177972).
The table below details the invention encompassed by claim 1. The table also details the teachings of Gillman and how it relates to the claimed invention.
Item
Limitation
Claim 1
Gillman et al.
Gillman Citation
Observation
1
Insoluble dietary fiber
About 7-about 41 wt.%
at least 20 wt.%, cellulose
Claim 1, [0032]
Overlapping range
2
fat
About 5- about 16 wt.%
<20 wt. %
Claim 12
Overlapping range
3
ratio of insoluble fiber to fat
About 0.5-about 4.5
See items 1-2 above
Claims 1&12, [0032]
Overlapping range
4
low calorie bulking agent, which includes sugar alcohols [0017 of spec]
About 10-about 35 wt.%
About 15-about 35 wt%
Claim 1
Inside claimed range and same endpoint
5
sugar
Up to 10 wt.%
About 5-about 10 wt.%
Claim 7
Inside claimed range
6
moisture
Up to 15 wt.%
About 11-about 15 wt. %
Claim 13
Inside claimed range and same endpoint
7
water activity
Up to 0.7
About 0.55-about 0.65
Claim 14
Inside claimed range
8
total caloric content
about 180-320 kcal per 100 g of composition
60-90 calories per 25g=240-360 calories/100g
Claim 12
Overlapping range
Regarding the overlapping ranges, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997)
Regarding the claimed ratio of insoluble dietary fiber to fat, Gillman et al. does not teach the claimed caloric content ratio.
However, Gillman eat al. teaches that consumers often look for food that fit a desired nutritional profile such as low calorie content. Gillman also notes that fat can add unwanted calories. [0012] In the instant case, Gillman establishes that caloric content may be adjusted. Hence, at the time the invention was filed, it would have been obvious for one of ordinary skill in the art to adjusted the amount of fiber and fat in baked goods. One of ordinary skill in the art at the time the invention was filed would have been motivated to do so to produce a baked good having desired caloric content. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because the art has recognized that fiber and fat are result effective variables.
It is noted that claim 1 also requires the fat accounts for about 20% to about 44% of the total caloric content of the composition.
As noted above, Gilman teaches a composition comprising insoluble dietary fiber, fat, low calorie bulking agent that includes sugar alcohol, sugar, moisture and total caloric content of 240-360 calories/100g. Given that insoluble fiber, sugar alcohol like erythritol, sugar like sucralose has zero calories, and fat has 9 calories per gram, the minimum and maximum weight % of fat present in the composition must have in order to account for about 20% to about 44% of the total caloric content of the composition are: 9% and 17%. When the minimum weight % of fat is 9, the total calories content contributed by the fat is 48 calories. And, in a composition with less than 240 calories, 48 calories from fat accounts for about 20% of the total caloric content of the composition. When the maximum weight % of fat is 17%, the total calories content contributed by the fat is 158 calories. And, in a composition with less than 360 calories, 158 calories from fat accounts for about 44% of the total caloric content of the composition. In summary, when the weight% of the composition of each of the ingredient in Gilliam is considered, along with the caloric content of each of the listed ingredients, it is found that the composition of Gillman also has a fat content that accounts for abut 20% to about 44% of the total caloric content of the composition. The endpoints match.
Regarding claim 2, Gillman et al. teaches a cookie. [0013-0014]
Regarding claim 3, Gillman et al. teaches cellulose as an insoluble fiber. [0032]
Regarding claim 4, Gillman et al. teaches sucralose, which is a saccharide having an energy content of less than or equal to 3 kcal/g. [0036] This position is further supported by Applicant’s disclosure that “sugar replacers such as sugar-free/calorie-free sweeteners (some of which may be artificial sweeteners such as aspartame, sucralose…)”.
Regarding claims 5-6, Gillman et al. teaches erythritol, which is a sugar alcohol. [0033] Paragraph 0017 of the instant specification recognizes erythritol as a bulking agent.
Regarding claim 7, Gillman et al. teaches the addition of allulose. [0034]. The instant specification recognizes allulose as a low calorie bulking agent. [0017]
Regarding claim 8, Gillman et al. teaches the use of egg yolk. [0037] The instant specification recognizes egg yolk as a source of fat.
Regarding claim 9, Gillman et al. teaches that the fiber can be soluble, insoluble or combination thereof. [0032] Gillman does not teach the use of about 5wt% to about 12 wt% soluble dietary fiber. However, Gillman teaches that the total fiber content, both soluble and insoluble fibers, may be at least 20%. Gillman also teaches that amount, type and combination of fibers can be selected to adjust viscosity of a dough used to manufacture a soft bake snack. Gillman further teaches that amount, type and combination of fibers can be selected to adjust the rate of spread of a dough during baking to produce a soft bake snack.
It would have been obvious for one of ordinary skill in the art before the effective filing date to have used a varying wt% of soluble fiber, including the claimed range. One of ordinary skill in the art would have been motivated to do so to adjust viscosity and/or rate of spread of dough used in baked goods. One of ordinary skill in the art would have had a reasonable expectation of success in doing so because Gillman recognizes that the wt% of fiber is a result effective variable on viscosity and spread rate.
Gillman et al. does not teach the claimed amount, about 12 wt.% to about 53 wt. % total fiber.
However, Gillman et al. teaches that amount, type and combination of fibers can be selected to adjust viscosity and spread of dough during baking to produce a backed good. In the instant case, Gillman et al. recognizes that amount, type and combination of fibers are result effective variable. Hence, at the time the invention was filed, it would have been obvious for one of ordinary skill in the art to vary the amounts of soluble and insoluble fibers. One of ordinary skill in the art at the time the invention was filed would have been motivated to do so to obtain a dough with the desire viscosity and spread of the dough. One of ordinary skill in the art at the time the invention was filed would have had a reasonable expectation of success for doing so because adjusting result effective variable(s) is routinely practiced in the art.
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Regarding claim 10, Gillman et al. does not teach the claimed caloric content ratio.
However, Gillman eat al. teaches that consumers often look for food that fit a desired nutritional profile such as low calorie content. Gillman also notes that fat can add unwanted calories. [0012] In the instant case, Gillman establishes that caloric content may be adjusted. Hence, at the time the invention was filed, it would have been obvious for one of ordinary skill in the art to adjusted the amount of fiber and fat in baked goods. One of ordinary skill in the art at the time the invention was filed would have been motivated to do so to produce a baked good having desired caloric content. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because the art has recognized that fiber and fat are result effective variables.
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Regarding claim 11, Gillman et al. inulin as a fiber. Inulin is a soluble fiber. [0032]
Regarding claim 12, Gillman teaches that the fat content of their baked good can contribute to less than 20 wt.% of saturated fat, which overlaps with the claimed range. [0040] Regarding the overlapping ranges, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997)
Regarding claim 13, Gillman et al. does not teach that the saturated fat accounts for about 2.9% to about 13.8% of the total caloric content of the baked good.
Regarding claim 14, Gillman et al. does not teach that the sugar accounts for about 0.5% to about 8.5% of the total caloric content of the baked good.
Regarding claim 15, Gillman et al. does not expressly teach that the fat accounts for about 20% to about 44% of the total caloric content of the baked good.
Regarding claims 13-15, however, Gillman eat al. teaches that consumers often look for food that fit a desired nutritional profile such as low calorie content. Gillman also notes that fat can add unwanted calories. [0012] The same can be said for sugar. In the instant case, Gillman establishes that caloric content may be adjusted. Hence, at the time the invention was filed, it would have been obvious for one of ordinary skill in the art to adjusted the amount of sugar and fat in baked goods. One of ordinary skill in the art at the time the invention was filed would have been motivated to do so to produce a baked good having desired caloric content. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because the art has recognized that fat is result effective variable.
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Response to Arguments
Applicant argues that Gillam does not teach or disclose insoluble fiber as in claim 1. More specifically, Applicant argues that nowhere Gillman teaches or suggest using insoluble dietary fiber as the primary or significant fiber component of the baked snack, much less in the about recited in claim 1, from about 7 wt% to about 41wt%.
Applicant’s argument has been considered. It is not found persuasive. As noted in the office action, Gillman teaches the use of at least 20wt% of fiber, wherein one of the fibers taught by Gillman is cellulose. It is acknowledged that Gillman also teaches a few other fibers. However, Gillman is clear that any of the listed fibers can be used as the fiber encompassed by their teachings. Additionally, the amount of fiber overlaps with the claimed range. As stated above, regarding the overlapping ranges, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). Moreover, it should be noted that claim 1 is directed toward a genus of insoluble dietary fiber. If the same argument is applied, it can readily be said that Applicant has not shown that Applicant has a baked good comprising every possible insoluble fiber, in the claimed wt%.
Applicant argues that Gillan does not disclose the ratio of insoluble dietary fiber to fat as in claim 1. To advance the position taken here, Applicant referred back to the argument summarized above that Gillam does not teach or disclose insoluble fiber as in claim 1. Applicant also notes that the claimed radio is not a routine design variable achievable by routine experimentation. That is, Applicant notes that the ratio results in either a successful or unsuccessful biscuit, wherein the unsuccessful biscuit mass falling apart as a powder.
In response, Applicant’s attention is redirected to the response provided in paragraph 41.
Applicant’s argument has been considered. It is not found persuasive. In the absence of evidence showing unexpected results, Applicant’s assertion that the claimed ratio is not a routine design variable is not persuasive. As noted in the office action, Gillman teaches a ratio of insoluble fiber to fat that overlaps with the claimed range.
Applicant further argues that Gillman contains no recognition of the criticality of the relationship between fat and fiber.
Applicant’s argument has been considered. It is not found persuasive. Gillman does not need to recognize criticality. In the instant case, as noted above, Gillman teaches an overlapping ratio.
Applicant argues that Gillman does not disclose that the fat accounts for 20%-44% of caloric content.
Applicant’s argument has been considered. It is not found persuasive. In the instant case, Applicant’s argument is directed toward newly added limitation, which is currently being examined. For a full understanding of how Gillman render this limitation obvious, Applicant’s attention is redirected toward the full content of the instant office action.
Applicant argues impermissible hindsight.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In the instant case, the rejection of the claims takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure. That is, the claimed invention is rendered obvious over Gillman and Applicant’s disclosure is not used to render the claimed invention obvious.
Applicant also argues that Gillman teaches away. To support this position, Applicant notes that Gillman teaches away from the claimed invention as Gillman is directed entirely to achieving soft brownie or a cookie like textures and intentionally targets moisture content of 10%-18% by weight. And by contrast, claim 1 is directed toward a baked good with a moisture of up to 15wt% and a water activity below 0.7.
Applicant’s argument has been considered. It is not found persuasive. Applicant has taken the teachings of Gillman out of it’s intended context, and has not fully given Gillman credit for its full teachings. As noted above, Gillman teaches a water activity of about 0.55 to about 0.65, which is “below 0.7”. With respect to moisture, Gillman teaches about 11 to about 15 wt%. This is within the claimed range of “up to 15 wt%”.
Conclusion
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 Emily M Le whose telephone number is (571)272-0903. The examiner can normally be reached M-F, 8 am-4:30pm.
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/EMILY M LE/Supervisory Patent Examiner
Art Unit 1793
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