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 .
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.
Claim Rejections - 35 USC § 103
Claims 1-7, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Diamond (USPN 2,619,422) in view of Bent (WO 2020/187544), both previously made of record by Applicant.
Regarding amended Claims 1, 2, 4, 5, 6, and 12, Diamond teaches a concentrated premix for making a plant-based frozen confection (Column 2, lines 1-10, Column 4, lines 70-75), wherein the concentrated premix is a concentrated oil in water emulsion in liquid form comprising a preferred amount of fat of 26% by weight, with a suitable range of 3-65% by weight or 2-30% by weight, carbohydrate in a preferred amount of 40%, where carbohydrates include combinations of sugars including dextrose and sucrose, protein of 2.5% by weight with a range of 0.7-25% by weight, and where the protein is a soy protein, therefore teaching plant protein, stabilizer in a preferred amount of 1.3% with a suitable range of 0.2-12% by weight, and water in an amount of 30% with a suitable range of 10-60% by weight (Columns 3-4, Table, “Concentrate” column, and Column 10, lines 1-5, Column 11, lines 20-35, and Example VI).
Regarding amended Claims 1 and 5, Diamond teaches that the concentrated premix contains a stabilizer which can be a lipophilic additive which stabilizes, holds and maintains the emulsion of the present invention in a compound form of dual character, of being both a water in oil emulsion and an oil in water emulsion and can be a partial glyceride product and can be a mixture of two types a monoglyceride and diglyceride (Column 3, lines 55-75, Column 6, lines 70-75 and Column 7, lines 1-10). Diamond also teaches that the word “stabilizer” has been given many definitions and usages, and for example, the stabilizer of ice cream mix is generally gelatin, or similar substance which thickens the mix, and that gums are used in a similar way in certain emulsions to aid in maintaining the discontinuous phase in a dispersed condition (Column 6, lines 60-70). It is also noted that Diamond does not teach away from using these so-called stabilizers like gelatin and gums.
However, Diamond does not specifically teach the concentrated premix contains a claimed amount of a stabilizer consisting of one of the claimed group or a mixture thereof, and an emulsifier, where the emulsifier is in an amount within the claimed range.
Bent teaches a frozen confection comprising the same types of ingredients as taught by Diamond, up to 35% by weight total fat, at most 15% by weight protein, from 5 to 40% by weight sugars (Page 7, lines 30-35), where the protein can be plant proteins (Page 9, lines 15-25), and teaches the frozen confection includes stabilizers in an amount of at most 1% by weight and emulsifiers comprising at most 1% by weight by of the frozen confection product, where suitable emulsifiers include mono and diglycerides (Page 20 lines 15-30 and Page 21, lines 1-15).
Bent teaches that the meltdown behavior of an ice cream is an important measure of the ability of an ice cream to withstand temperature rises and one of the ways to improve meltdown is through the use of stabilizers such as those claimed, including gums, gelatin, alginates, carrageenan, pectin, etc. (Paragraph 9-15) Therefore, it is submitted that the stabilizers discussed by Diamond are actually functionally equivalent to the emulsifiers discussed by Bent, where the stabilizer/emulsifier in both are mono and diglycerides that provide stabilizing/emulsifying functionality. In addition, Bent teaches the importance of using stabilizers in ice cream as a way to improve meltdown properties of ice cream. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have included both a stabilizer such as one of those claimed, and a lipophilic emulsifier/stabilizer such as the one taught by Diamond, in a frozen confection premix in light of the teachings of Bent and the general desire to ensure emulsions thus produced are stable and maintained during further processing of the premix into a frozen confection, and once formed into a frozen confection, to improve meltdown characteristics of ice cream during changes in temperature. It is submitted that it well known in the art to use both stabilizers and emulsifiers such as those claimed in ice cream premixes, including those that are plant-protein based.
Regarding amended Claim 3, as set forth above, Diamond in view of Bent teaches sugars in a preferred amount of 40% but a suitable range of 8-85% by weight of the concentrate (Diamond, Column 3 and 4, Table), which overlaps with the claimed range of 42-60% by weight. Diamond in view of Bent also teaches that the concentration of carbohydrates in the mix is not critical in regard to the final characteristics in the emulsion but merely varies the sweetness of the final product (Diamond, Column 10, lines 65-70). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the amount of sugars in the emulsion premix/concentrate, in order to provide a final product that has the desired sweetness.
Regarding amended Claim 7, as set forth above, Diamond in view of Bent teaches a formulation in Example VI comprising 2.5% soy protein and 26% fat, which gives a ratio of plant protein:fat of 1:10, which meets the claimed ratio range. While 26% fat is slightly outside the claimed range for Claim 1, as set forth above, Diamond in view of Bent also provides for lower ranges of fat in the emulsion premix/concentrate 3-65% or 2-30% by weight (Diamond, Column 3 and 4, Table and Column 11, lines 20-35). Therefore, where the fat was slightly less than 26%, such as 20% by weight fat, which is still within the ranges disclosed by Diamond in view of Bent, that would provide a ratio of protein:fat of 1:8, which is still within the claimed ratio range. Therefore, the claimed ratio range would have been obvious to one of ordinary skill in the art before the effective fling date of the invention, in light of the teachings of Diamond in view of Bent and it would have been well within the skill of one of ordinary skill in the art to have optimized the amount of fat in a concentrated premix depending on the amount of fat desired in the final product.
Regarding amended Claim 12, Diamond in view of Bent teaches a concentrated oil in water emulsion for making a plant-based frozen confection (Diamond, Column 2, lines 1-10, Column 4, lines 70-75), the concentrated premix is an oil in water emulsion in liquid form comprising a preferred amount of fat of 26% by weight, with a suitable range of 3-65% by weight, carbohydrate in a preferred amount of 40%, where carbohydrates include combinations of sugars including dextrose and sucrose, protein of 2.5% by weight with a range of 0.7-25% by weight, and where the protein is a soy protein, therefore teaching plant protein, stabilizer in a preferred amount of 1.3% with a suitable range of 0.2-12% by weight, and water in an amount of 30% with a suitable range of 10-60% by weight (Diamond, Columns 3-4, Table, “Concentrate” column, and Column 10, lines 1-5, and Example VI). Therefore, Diamond in view of Bent teaches amounts or ranges that meet the ranges recited in Claim 1 and teaches the claimed concentrated premix. It is noted that Claim 12 recites a premix “obtainable” by the process of Claim 9, therefore not requiring the premix to be made by the recited method.
In addition, Applicants' Claim 12 is written in a product-by-process format and as such, it is the novelty of the instantly claimed product that needs to be established and not that of the recited process steps. In re Brown, 173 USPQ 685 (CCPA 1972); In re Wertheim, 191 USPQ (CCPA 1976). Regarding Claim 12, since the product shown by this reference is a concentrated premix in the form of an emulsion comprising the claimed components of plant protein, sugar, fat and stabilizer, the product is met.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Diamond (USPN 2,619,422) in view of Bent (WO 2020/187544) and further in view of Maletto (USPA 2005/0095336), all previously made of record.
Regarding amended Claim 8, Diamond in view of Bent are taken as cited above in the rejection of amended Claim 1 and teaches the concentrated premix but fails to teach an intermediate bulk container containing the concentrated premix which has the claimed tank capacity.
Maletto teaches ice cream base formulations that contain similar components to what is taught by Diamond as Maletto teaches the ice cream base formulations include fat, proteins, sugars, stabilizers, water, etc. (Paragraphs 15-19, 23, 27) and teaches a flowable emulsion base formulation may be shipped in bulk or processed to prepare a finished ice cream, and for shipment, the base formulation is packaged in suitable bulk containers under clean fill, aseptic conditions (Paragraph 35). While Maletto does not teach the tank capacity of the bulk container, it is submitted that a particular tank capacity would not constitute a patentable distinction as it would depend on the particular processing capacities of the processing plant. However, it would have been well within the skill of one of ordinary skill in the frozen confectionery art to have determined the most efficient size bulk container in order to ship an emulsion pre-mix for further processing at a later time.
Furthermore, it has been found that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See MPEP 2144.04 IV A. Therefore, it would have been obvious to one of ordinary skill in the art to have shipped the concentrated premix of Diamond in view of Bent in a bulk container in order to provide for future processing of the concentrated premix into the finished ice cream at a later time.
Response to Arguments
Applicant’s traversal of the restriction requirement has been considered but is not persuasive, as Applicant’s claims were amended after the restriction requirement was set forth and claims were withdrawn. Therefore, since Applicant did not traverse the original restriction requirement set forth, the restriction is maintained by the Examiner and deemed proper and is final. The 112b rejection previously set forth has been withdrawn in light of Applicant’s amendments. Amended prior art rejections have been set forth in light of Applicant’s claim amendments that were made. Therefore, Applicant’s arguments with respect to the amended claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. It is noted that Applicant’s claims recite “comprising” language, therefore not precluding other non-claimed components from also being included. In addition, it is submitted that it well known in the art to use both stabilizers and emulsifiers such as those claimed in ice cream premixes, including those that are plant-protein based.
Therefore, Applicant’s claims are still found to be obvious to one of ordinary skill in the art in light of the teachings of the prior art and the office action is therefore made final and deemed proper at this time.
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.
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JENNA A. WATTS
Primary Examiner
Art Unit 1791
/JENNA A WATTS/ Primary Examiner, Art Unit 1791 9/4/2026
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