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 and 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.
Claims 1-15 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.
Claim 1 requires the ratio of the insoluble fiber to the fat be about 0.5 to about 4.5. In the instant case, it is not readily apparent if the ratio is directed toward the weight % or other unit of measurements, like caloric content. For the purpose of examination, the ratio recited therein are directed toward caloric content. The use of wt. % would be counterintuitive as the claim already recites a wt% range for the insoluble dietary fiber and fat, wherein the recited range does not translate to the recited ratio.
Claims 2-15 recite dependency to claim 1. Said claims are therefore also rejected under 112b for the reason(s) noted for claim 1.
Claim 10, which recites dependency to claim 1 recites “the total dietary fibers”. There is insufficient antecedent basis for this limitation in the claim. In the instant case, claim 1 provides proper antecedent basis for insoluble dietary fibers, not both soluble and insoluble dietary fibers. For the purpose of examination, said recitation is interpreted as being directed toward insoluble dietary fibers.
Claim 10 is further rejected under 112 b for failing to further limit claim 1. When “the total dietary fibers” is interpreted as ““the insoluble dietary fibers”, then the recited ratios of insoluble dietary fibers to fat, “about 1.0 to about 5.5”, fails to further limit the ratio established in the parent claim 1. Claim 1 requires said ratio to be about 0.5 to about 4.5.
Claim 11 recites “resistant dextrins (e.g., soluble corn fiber, soluble wheat fiber, soluble tapioca fiber)” and “cello-oligosaccharides (or cellodextrins)”. Said recitation renders the claim indefinite because it is unclear whether said recitations are limitations or merely examples or preferences. See MPEP § 2173.05(d).
Additionally, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 11 recites the broad recitation “glucan”, and the claim also recites “(i.e, glucose containing)” which is the narrower statement of the range/limitation. Glucan is defined as a polymer composed of glucose monomers, polysaccharide. Meanwhile, glucose is a monomer. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The same analysis is applicable toward “resistant dextrins (e.g., soluble corn fiber, soluble wheat fiber, soluble tapioca fiber)” and “cello-oligosaccharides (or cellodextrins).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of fats is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: at least Markush members gums and polyethoxylated glycols are not fats.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
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.
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 erithol, which is a sugar alcohol. [0033] Paragraph 0017 of the instant specification recognizes erithol 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 et al. does not teach the claimed amount, about 12 wt.% to about 536 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. Insulin 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.
Conclusion
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/EMILY M LE/Supervisory Patent Examiner
Art Unit 1793