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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-3 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Cortopassi US 4,381,837 in view of Huston US 5,236,727 (cited on Information Disclosure Statement filed August 13, 2024), Cammarota et al. US 2018/0213804 and Andersen et al. US 5,716,675 (cited on Information Disclosure Statement filed August 13, 2024).
Regarding Claim 1, Cortopassi discloses a package of hard taco shells (plurality of fragile articles of taco shells) (‘837, Column 1, lines 6-9) comprising an outer package body (plastic film F) establishing a package interior wherein the outer package body (plastic film F) is hermetically sealed and formed from a material (plastic) establishing a barrier to the transmission of oxygen into the package interior (‘837, Column 2, lines 31-37) and at least one hard shell taco (plurality of fragile packaged articles of taco shells A) located in the package interior with the at least one hard taco shell (plurality of fragile packaged articles of taco shells A) including a first hard shell sidewall, a second hard shell sidewall, and a base portion connecting the first and second hard shell sidewalls (‘837, FIG. 3) (‘837, Column 1, lines 56-65).
Cortopassi discloses the base portion including a spine section hingedly connecting the first and second hard shell sidewalls (‘837, FIG. 3). However, Cortopassi is silent regarding the spine section being a softened, pliable spine section.
Huston discloses at least one hard taco shell (tortilla 1 shaped as U-shaped taco configuration) including a first hard shell sidewall, a second hard shell sidewall, and a base portion connecting the first and second hard shell sidewalls wherein the base portion includes a softened, pliable spine section (flexible spine 3) hingedly connecting the first and second hard shell sidewalls (‘727, FIGS. 1-2) (’727, Column 5, lines 3-29).
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Both Cortopassi and Huston are directed towards the same field of endeavor of taco shells. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the spine section to be a softened, pliable/flexible spine section as taught by Huston in order to make the taco easier to eat because the flexible spine region holds the shell together so that the first bite does not shatter the shell and cause the filling to spill onto clothing and the shell reduces the need for paper holders and the like which act to collect the shattered shell and its content (‘727, Column 1, lines 60-68) (‘727, Column 2, lines 1-6).
Further regarding Claim 1, Cortopassi modified with Huston is silent regarding the spine section being provided with a plasticizing agent.
Cammarota et al. discloses a soft tortilla having a formed shape of a taco shell (‘804, Paragraph [0014]) comprising glycerin humectant to achieve water activity levels and microbial shelf stability at room temperature (‘804, Paragraph [0022]) and at least one hydrocolloid (‘804, Paragraph [0018]) wherein the taco shell comprises starch (‘804, Paragraph [0007]). Andersen et al. discloses a method of treating starch based articles with glycerin due to its non-toxicity to provide a softening and plasticizing effect on starch based food articles (‘675, Column 17, lines 8-20) wherein glycerin improves the resilience and flexibility of starch bound matrix by softening and humectifying the starch based article through a general application to a specific designated portion of a hinged area in the starch based article through an increase in flexibility (‘675, Column 18, lines 46-65).
Modified Cortopassi and Cammarota et al. are directed towards the same field of endeavor of taco shells. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the spine section of the taco shell of modified Cortopassi and dispose a plasticizing agent of glycerin onto the spine section as taught by Cammarota et al. since Andersen et al. teaches that glycerin improves the resilience and flexibility of starch bound matrix by softening and humectifying the starch based article through a general application to a specific designated portion of a hinged area in the starch based article through an increase in flexibility (‘675, Column 18, lines 46-65).
Regarding Claim 2, Cortopassi discloses the at least one hard taco shell comprising a plurality of hard taco shells (plurality of fragile packaged articles of taco shells A) being located in the package interior (‘837, FIG. 3) (‘837, Column 1, lines 56-65).
Regarding Claim 3, Cortopassi discloses the plurality of hard taco shells (plurality of fragile packaged articles of taco shells A) being nested within the package interior (‘837, FIG. 3) (‘837, Column 1, lines 56-65).
Regarding Claim 5, Cammarota et al. discloses the plasticizing agent to be glycerine humectant (‘804, Paragraph [0022]). Andersen et al. discloses the plasticizing agent to be glycerin (‘675, Column 18, lines 46-65).
Regarding Claims 6-7, Cammarota et al. discloses the taco shell being provided with a migration limiting agent of a hydrocolloid (‘804, Paragraphs [0018] and [0032]). Andersen et al. discloses treating a specific region to increase the flexibility of only the treated region (‘675, Column 18, lines 46-55). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the taco shell of modified Cortopassi and provide the taco shell with a migration limiting agent of a hydrocolloid as taught by Cammarota et al. since the selection of a known material for its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Cammarota et al. teaches that there was known utility in the food packaging art to make taco shells with a migration limiting agent of a hydrocolloid. Andersen et al. teaches a general application to a specific designated portion of a hinged area in the starch based article through an increase in flexibility (‘675, Column 18, lines 46-65).
Further regarding Claims 6-7, although Cammarota et al. does not explicitly state that the hydrocolloid functions as a migration limiting agent, products of identical chemical composition can not have mutually exclusive properties in view of In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP § 2112.01.I.). One of ordinary skill in the art would expect the hydrocolloid disclosed by Cammarota et al. to behave in the same manner as claimed, i.e. function as a migration limiting agent.
Regarding Claim 8, Cortopassi discloses the outer package body (plastic film F) comprising a film (plastic film F) (‘837, Column 2, lines 31-37).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Cortopassi US 4,381,837 in view of Huston US 5,236,727 (cited on Information Disclosure Statement filed August 13, 2024), Cammarota et al. US 2018/0213804, and Andersen et al. US 5,716,675 (cited on Information Disclosure Statement filed August 13, 2024) as applied to claim 8 above in view of Hirst US 6,458,396.
Regarding Claim 9, Cortopassi is silent regard a carton surrounding the outer package body.
Hirst discloses a package of hard taco shells comprising an outer package body (shrink film 40) establishing a package interior wherein the outer package body (shrink film 40) is hermetically sealed and formed from a material (shrink film) establishing a barrier to the transmission of oxygen into the package interior and at least one hard shell taco (taco shells 27) located in the package interior with the at least one hard taco shell (taco shells 27) including a first hard shell sidewall, a second hard shell sidewall, and a base portion connecting the first and second hard shell sidewalls (‘396, FIGS. 1-2) (‘396, Column 3, lines 1-27). Hirst further discloses a carton surrounding the outer package body (‘396, Column 4, lines 52-55).
Both Cortopassi and Hirst are directed towards the same field of endeavor of a package of taco shells. Both packages of taco shells of Cortopassi and Hirst are disposed in an outer package body made of a film. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the package of hard taco shells of Cortopassi and surround the outer package body of film with a carton as taught by Hirst in order to conveniently provide the package of hard taco shells for shipping and transportation purposes.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Cortopassi US 4,381,837 in view of Huston US 5,236,727 (cited on Information Disclosure Statement filed August 13, 2024), Cammarota et al. US 2018/0213804, and Andersen et al. US 5,716,675 (cited on Information Disclosure Statement filed August 13, 2024) as applied to claim 8 above in view of Griebel et al. US 2010/0272863.
Regarding Claims 9-10, Cortopassi is silent regarding a carton surrounding the outer package body.
Griebel et al. discloses a package of taco shells comprising an outer package body establishing a package interior wherein the outer package body is hermetically sealed and formed from a material establishing a barrier to the transmission of oxygen into the package interior and at least one taco located in the package interior (‘863, Paragraphs [0020]-[0021]). Griebel et al. further discloses a carton surrounding the outer package body wherein the carton is made of paperboard (‘863, FIG. 10 (‘863, Paragraph [0125]).
Both Cortopassi and Griebel et al. are directed towards the same field of endeavor of a package of taco shells. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the package of hard taco shells of Cortopassi and surround the outer package body with a carton as taught by Griebel et al. in order to conveniently provide the package of hard taco shells for shipping and transportation purposes. Furthermore, it would have been obvious to one of ordinary skill in the art to construct the carton out of paperboard as taught by Griebel et al. since the selection of a known material for its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Griebel et al. teaches that there was known utility in the food packaging art to package taco shells inside a carton made of paperboard.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 and 5-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 13-20 of U.S. Patent No. 12,458,031. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-3 and 5-10 of the instant invention encompasses Claims 13-20 of US Patent 12,458,031.
Claims 1-3 and 5-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 13-22 of U.S. Patent No. 11,998,018. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-3 and 5-10 of the instant invention encompasses Claims 13-22 of US Patent 11,998,018.
Response to Arguments
Examiner notes that the previous Double Patenting rejections have been updated to reflect the current amendments of the instant application.
Examiner notes that the previous Claim Objections have been withdrawn in view of the amendments.
Examiner notes that the previous indefiniteness rejection under 35 USC 112(b) has been withdrawn in view of the amendments.
Applicant's arguments filed June 29, 2026 with respect to the obviousness rejections under 35 USC 103(a) have been fully considered but they are not persuasive.
Applicant contends Claim 1 has been amended to include the limitations of Claim 4 and recites the limitations “wherein the softened pliable spine section is provided with a plasticizing agent” and was previously rejected over Cortopassi in view of Huston, Cammarota, and Andersen.
Applicant argues on Page 7 of the Remarks that Cortopassi is directed to packaging fragile articles including taco shells in a plastic film and is primarily concerned with physical protection during shipping and not oxygen barrier properties for shelf life extension of treated taco shells.
Examiner argues Claim 1 recites the limitations “said outer package body being hermetically sealed and formed from a material establishing a barrier to the transmission of oxygen into the package interior.” The primary reference of Cortopassi discloses a plurality of taco shells being overwrapped with a sheet of plastic film (‘837, Column 1, lines 23-26) (‘837, Column 2, lines 31-37). Claim 1 does not specify any particular oxygen transmission properties of the material forming the outer package body providing the hermetic seal. Claim 1 only requires the material forming the outer package body that provides the hermetic seal to have any degree of barrier to the transmission of oxygen. Rosato “Barrier packaging: Novel material and process solutions” <https://exclusive.multibriefs.com/content/barrier-packaging-novel-material-and-process-solutions/engineering> (published April 11, 2016) discloses overwrap wrappers made of a flexible polymer (BOPP) film that is a high oxygen and moisture barrier film that serves to preserve the packaged food from external contamination from oxygen to extend the shelf life of the food (Rosato, Pages 2-3). The overwrap of plastic film surrounding the plurality of taco shells of Cortopassi necessarily forms a hermetic seal that establishes a barrier to the transmission of oxygen into the package interior as evidenced by Rosato. Therefore, this argument is not found persuasive.
Applicant argues on Page 7 of the Remarks that the flexible spine of Huston is achieved through the inherent properties of a soft, flour based tortilla product and through controlled heating and not through the targeted application of a plasticizing agent to a hard taco shell. Applicant contends that the flexible spine in Huston is a structural feature of a soft tortilla product that is fundamentally different from a hard taco shell having a chemically treated spine section. Applicant continues that Huston achieves flexibility through controlled heating and the inherent nature of a soft tortilla and there is no need in the Huston arrangement for an additional chemical treatment to provide a flexible center portion. Applicant concludes that Huston does not teach or suggest applying a plasticizing agent to the spine section of a hard taco shell and there is no apparent reason why one of ordinary skill in the art would look to Huston for guidance on chemically treating the spine of a hard taco shell.
Examiner first notes that the rejection is based on the combination of the primary reference of Cortopassi modified with multiple secondary references including Huston. These comments do not specifically and distinctly point out the supposed errors of the Office Action and merely argues the secondary reference of Huston in isolation. With respect to the arguments pertaining to Huston is isolation, applicant is mischaracterizing the type of taco shell disclosed by Huston. Huston never discloses that the particular type of taco is a soft flour based tortilla product. In fact, Huston never mentions the terms “soft” and/or “flour” and only mentions a generic taco shell. Huston discloses a corn tortilla having a predominantly crispy texture that breaks under flexure and a flexible texture (‘727, Column 3, lines 10-12) wherein all of the tortilla is at least partially cooked such that the crispy texture is cooked to a greater degree than the flexible texture (‘727, Column 3, lines 58-65). The disclosure of the predominantly crispy texture that breaks under flexure indicates that the taco shell disclosed by Huston is a hard taco shell as claimed and not a soft flour based tortilla product as alleged by applicant. Furthermore, Stefan’s Gourmet Blog “Homemade Corn Tortillas and Hard Taco Shells” <https://stefangourmet.com/2014/03/16/homemade-corn-tortillas-and-hard-taco-shells/> (published March 16, 2014) provides evidence that tortillas that are cooked until crispy are considered hard taco shells (Stefan’s Gourmet Blog, Pages 1 and 11). Additionally, the secondary reference of Huston is being relied upon to modify the primary reference of Cortopassi to render obvious the limitations regarding making the spine section to be a softened pliable spine section. The secondary reference is not being relied upon to render obvious the softened pliable section being provided with a plasticizing agent. The secondary references of Cammarota et al. and Andersen et al. are being relied upon to teach the limitations regarding the flexible section being provided with a plasticizing agent. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Therefore, these arguments are not found persuasive.
Applicant argues on Pages 7-8 of the Remarks that Examiner relies on Cammarota to teach disposing glycerin onto a spine section of a taco shell. Applicant contends that Cammarota does not teach targeted application of a plasticizing agent to a spine section and rather Cammarota incorporates glycerin throughout the entire tortilla formulation as a humectant to achieve water activity levels and microbial shelf stability. Applicant concludes that Cammarota does not teach or suggest the targeted topical application of a plasticizing agent to only the spine section of a hard taco shell because Cammarota applies glycerin uniformly throughout the entire tortilla formulation rather than in a targeted manner to a specific region.
Examiner first notes that applicant does admit that Cammarota discloses glycerine. However, it is also noted that Claim 1 does not recite glycerin and Claim 1 only recites a generic plasticizing agent. Only Claim 5 recites glycerine. Furthermore, Cammarota is not being relied upon to teach targeted application of a plasticizing agent to a spine section. Rather, Andersen et al. is being relied upon to teach targeted application of a plasticizer (glycerine) to a specific designated portion of a hinged area in the starch based article through an increase in flexibility (‘675, Column 18, lines 46-65). Modified Cortopassi and Cammarota et al. are directed towards the same field of endeavor of taco shells. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the spine section of the taco shell of modified Cortopassi and dispose a plasticizing agent of glycerin onto the spine section as taught by Cammarota et al. since Andersen et al. teaches that glycerin improves the resilience and flexibility of starch bound matrix by softening and humectifying the starch based article through a general application to a specific designated portion of a hinged area in the starch based article through an increase in flexibility (‘675, Column 18, lines 46-65). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Therefore, these arguments are not found persuasive.
Applicant argues on Page 8 of the Remarks that Andersen is being relied upon by the Examiner to teach that glycerin improves the resilience and flexibility of a starch bound matrix through application to a specific designated portion of a hinged area. Applicant asserts that Andersen is non-analogous art and therefore cannot be properly relied upon in an obviousness rejection. Applicant argues that Andersen is directed to the manufacture of starch based biodegradable containers which are non-food items intended as environmentally friendly substitutes for paper, paperboard, plastic, polystyrene, glass, and metal containers and Andersen is not in the same field of endeavor as the claimed invention directed to a package of hard taco shell food products having a plasticizing agent applied to a targeted spine section to improve hinging flexibility and pliability. Applicant continues that a person of ordinary skill in the art of food packaging and hard taco shells would not look to Andersen, which is directed to manufacturing non-food biodegradable containers for guidance on treating the spine section of a hard taco shell food product. Applicant continues that Andersen is not reasonably pertinent to the problem faced by the inventor of extending the shelf life of hard taco shells treated with a plasticizing agent at a targeted spine section while maintain the hinging flexibility and pliability of that section. Applicant continues that the problem addressed by Andersen is providing environmentally superior substitute materials for single use disposable non-food containers.
Examiner argues that in order for a reference to be proper for use in an obviousness rejection under 35 USC 103, the reference must be analogous art to the claimed invention in view of In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). A reference is analogous art to the claimed invention if 1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem or 2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention. As for the “reasonably pertinent” test, the examiner should consider the problem faced by the inventor, as reflected either explicitly or implicitly, in the specification. In order for a reference to be “reasonably pertinent” to the problem, it must logically have commended itself to an inventor’s attention in considering his problem in view of In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656,658, 23 USPQ2d 1058, 1061 (Fed. Cir. 1992)). See also In re Klein, 647 F.3d 1343, 1348, 98 USPQ2d 1991, 1993 (Fed. Cir. 2011) (MPEP § 2141.01(a).I.). In the present instance, applicant discloses the taco shell having a softened base portion having some hinging flexibility or pliability to reduce the potential for any crack propagation (Specification, Paragraph [0004]) wherein the base or spine portion of the taco shell has the plasticizing agent applied thereto thereby softening the base or spine portion at this targeted region wherein the softened base or spine section has some hinging flexibility or pliability which reduces the potential for any crack propagation to better maintain the structural integrity of the taco shell while eaten (Specification, Paragraph [0020]). Andersen et al. discloses a method of improving the properties of starch bound articles by treating the surfaces of such articles with glycerin to improve the flexibility of and stabilize the dimensional integrity of starch bound articles (‘675, Column 1, lines 7-14). Andersen et al. also discloses treating only a specific region of a starch based article with glycerin to increase the flexibility of the article only in the treated region while the untreated remainder of the article remains unchanged and to soften or plasticizer only one side of a portion of the article such as at specific points of flexure (‘675, Column 16, lines 64-67) (‘675, Column 17, lines 1-6). Furthermore, treating a specific region to increase the flexibility provides the benefits of repeatedly bending the treated region without failure while the dimensional stability of the untreated portion of the article is better maintained wherein the hinged area of the starch based article benefits from an increase in flexibility wherein treating the hinge area with glycerin causes a general increase in flexibility and resilience to increase the life and efficacy of the hinge (‘675, Column 18, lines 46-65). The primary reference of Cortopassi teaches a generic taco shell. Huston teaches the taco shell being made from a corn tortilla having two separate textures of a fully cooked, crispy, crunchy texture making up most of the shell surface and a second pliable texture forming a flexible spine allowing the shell to be flexed without cracking (‘727, Column 1, lines 46-61). Talbott “Taco Shells: Corn vs. Flour” <https://www.byrontalbott.com/taco-shells-corn-vs-flour/> (published September 1, 2015) provides evidence that it was known in the food art that corn tortillas contain starch (Talbott, Page 2). Therefore, taco shells are conventionally made from starch based compositions, e.g. corn tortilla. Andersen et al. discloses “starch based composition” refers to starch containing compositions of appropriate rheology that can be molded within headed molds to form articles having a starch bound cellular matrix which compositions typically including a thickening agent, plasticizers, and humectants (‘675, Column 8, lines 49-59) wherein the starch bound article includes any article that can be formed using the disclosed compositions and processes (‘675, Column 9, lines 31-34) wherein the starch is molded into the desired shape of the article (‘675, Column 10, lines 6-20) (‘675, Column 14, lines 34-41). While Andersen et al. does not explicitly disclose the starch based article to be edible, Andersen et al. does not explicitly exclude the starch based composition to be edible and only that the starch based composition is moldable into a desired shape. Andersen et al. is reasonably pertinent to the problem faced by the inventor, i.e. a moldable starch based composition (applicant’s taco shell) having a portion containing a plasticizing agent applied thereto thereby softening the plasticizing agent containing portion at this targeted region wherein the plasticizing agent containing portion has some hinging flexibility or pliability which reduces the potential for any crack propagation to better maintain the structural integrity of the starch based composition (applicant’s taco shell). Anderson et al. meets the second prong of analogous art of being reasonably pertinent to the particular problem with which the inventor is involved. Therefore, this argument is not found persuasive.
Applicant argues on Page 9 of the Remarks that the proposed combination requires combining Cortopassi, which is directed to packaging fragile articles including taco shells in a plastic film primarily for physical protection during shipping with Huston, which is directed to a soft flour based tortilla product, with Cammarota, which is directed to a soft tortilla formulation incorporating glycerin uniformly throughout and with Andersen, which is directed to manufacturing non-food biodegradable starch based containers. Applicant contends that the combination of these four references are drawn from fundamentally different fields and directed to fundamentally different problems that requires impermissible hindsight reconstruction of the claimed invention. Applicant asserts that modifying the hard taco shell packaging of Cortopassi by applying a targeted plasticizing agent to only the spine section of a hard taco shell would require a fundamental modification of the nature of the product that is not suggested by any of the cited references individually or in combination.
Examiner argues that in order for a reference to be proper for use in an obviousness rejection under 35 USC 103, the reference must be analogous art to the claimed invention in view of In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). A reference is analogous art to the claimed invention if 1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem or 2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention. As for the “reasonably pertinent” test, the examiner should consider the problem faced by the inventor, as reflected either explicitly or implicitly, in the specification. In order for a reference to be “reasonably pertinent” to the problem, it must logically have commended itself to an inventor’s attention in considering his problem in view of In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656,658, 23 USPQ2d 1058, 1061 (Fed. Cir. 1992)). See also In re Klein, 647 F.3d 1343, 1348, 98 USPQ2d 1991, 1993 (Fed. Cir. 2011) (MPEP § 2141.01(a).I.). In the present instance, the secondary references of Huston and Cammarota et al. meet the first prong pertaining to analogous art of the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem). The primary reference of Cortopassi is directed to taco shells. Huston is also directed to packaged taco shells (‘727, Column 5, lines 1-26) (‘727, Column 6, lines 1-7). Cammarota et al. is also directed to taco shells (‘804, Paragraph [0014]). The secondary reference of Andersen et al. meets the second prong pertaining to analogous art of the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention. The primary reference of Cortopassi teaches a generic taco shell. Huston teaches the taco shell being made from a corn tortilla having two separate textures of a fully cooked, crispy, crunchy texture making up most of the shell surface and a second pliable texture forming a flexible spine allowing the shell to be flexed without cracking (‘727, Column 1, lines 46-61). Talbott “Taco Shells: Corn vs. Flour” <https://www.byrontalbott.com/taco-shells-corn-vs-flour/> (published September 1, 2015) provides evidence that it was known in the food art that corn tortillas contain starch (Talbott, Page 2). Therefore, taco shells are conventionally made from starch based compositions, e.g. corn tortilla. Andersen et al. discloses “starch based composition” refers to starch containing compositions of appropriate rheology that can be molded within headed molds to form articles having a starch bound cellular matrix which compositions typically including a thickening agent, plasticizers, and humectants (‘675, Column 8, lines 49-59) wherein the starch bound article includes any article that can be formed using the disclosed compositions and processes (‘675, Column 9, lines 31-34) wherein the starch is molded into the desired shape of the article (‘675, Column 10, lines 6-20) (‘675, Column 14, lines 34-41). While Andersen et al. does not explicitly disclose the starch based article to be edible, Andersen et al. does not explicitly exclude the starch based composition to be edible and only that the starch based composition is moldable into a desired shape. Andersen et al. is reasonably pertinent to the problem faced by the inventor, i.e. a moldable starch based composition (applicant’s taco shell) having a portion containing a plasticizing agent applied thereto thereby softening the plasticizing agent containing portion at this targeted region wherein the plasticizing agent containing portion has some hinging flexibility or pliability which reduces the potential for any crack propagation to better maintain the structural integrity of the starch based composition (applicant’s taco shell). Anderson et al. meets the second prong of analogous art of being reasonably pertinent to the particular problem with which the inventor is involved. Therefore, these arguments are not found persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Patrick “Baked Taco Shells Are Just As Good As Fried” <https://www.mexicanplease.com/baked-taco-shells-just-good-fried/> (published May 13, 2016) discloses a taco shell having crispy edges but still pliable in the middle when baked at 375F for 10 minutes (Patrick, Pages 4-5).
Laura “Crispy Baked Taco Shells” <https://www.realmomkitchen.com/crispy-baked-taco-shells/> (published August 22, 2012) discloses crispy baked taco shells made by baking for 5 minutes so they are a little soft and pliable (Laura, Page 2).
“Softening hard shell tacos.” <https://boards.straightdope.com/t/softening-hard-shell-tacos/299077> (published April 2005) discloses a taco comprising a crispy upper half and a lower half portion having the meat that is softened wherein fried corn tortilla taco shells have a center that is much softer than the outer edges (Softening hard shell tacos, comment by wonky Guest on Page 1).
Petito “How to Make Tacos Dorados” <https://www.americastestkitchen.com/articles/678-how-to-make-tacos-dorados> (published May 30, 2018) discloses a taco made by frying the tortilla with the filling already inside to create a taco that is crispy on the flat sides and softened just enough at the spine so that it does not break apart when you eat it (Petito, Pages 3-4).
Speck et al. US 2014/0370158 discloses a molded food product comprising one or more edible ingredients of grains, starches, and humectants (‘158, Paragraph [0036]).
Nakatsuka et al. US 4,076,846 discloses an edible, thermoplastic molding composition comprising a protein material, a starch material, water, and a plasticizer.
Bower et al. US 2011/0274796 discloses it is common in the film industry to produce specialty high oxygen and moisture barrier films for use as protective overwrap materials on foods and other oxygen or moisture sensitive products (‘796, Paragraph [0003]).
Tye US 2008/0096803 discloses an oxygen impermeable film including polymer films, e.g. an essentially oxygen impermeable polyester, ethylene vinyl alcohol (EVOH), or nylon or an oxygen impermeable overwrap (‘803, Paragraph [0144]).
Bagley US 2007/0039838 discloses an overwrap for packaging a food product wherein the overwrap is a plastic (polyolefin shrink film) having oxygen barrier properties (‘838, Paragraph [0029]) wherein it is known to package food products in a tray in which the product is placed and an outer plastic wrapping covering the product and surrounding the tray to complete the package (‘838, Paragraph [0002]) for providing enhanced shelf life for the product (‘838, Paragraph [0001]).
The prior art made of record, cited on a previous Information Disclosure Statement, and not relied upon is considered pertinent to applicant's disclosure.
Skarra et al. US 4,781,932 discloses a food shell made from any starch source such as a cereal grain wherein the dough includes starch, e.g. cereal flour, plasticizers such as water and fat, polyhydric alcohol, etc. and other ingredients such as salt, flavors, yeast, chemical leavening, preservatives, gum, etc. (‘932, Column 1, lines 43-20) wherein the shell is misted with a volatilizable softening agent which can be the same as the volatilizable plasticizer after deoiling wherein the softening agent of water is added to the shell in an amount sufficient so that it in combination with the plasticizer in the shell results in the shell regaining its soft and flexible, prefried texture wherein flexible means that the product is not friable and when bent 90 degrees does not appreciably crack or break at room temperature (‘932, Column 5, lines 23-49) wherein the plasticizer is a material, generally liquid, incorporated in a polymer such as flour to increase the workability, flexibility, or extensibility changing the rheological character of the flour to a viscous plastic mass wherein the plasticizer includes polyhydric alcohol (‘932, Column 7, lines 33-47) wherein the polyhydric alcohol is glycerol and is present in a range of between 1% and about 10% weight of dough (‘932, Column 8, lines 1-15).
Kent US 2013/0224363 discloses a tortilla comprising left and right portions that are fully fried and a middle central strip that is unfried (‘363, Paragraph [0028]).
Thomas et al. US 5,932,268 discloses a glycerol plasticizer added to dough wherein the plasticizer increases or improves the flexibility or workability of a polymer based system such as a dough wherein the plasticizer is liquid or solid and volatile or non-volatile wherein the plasticizer is a combination of water, fat or oil, and glycerol or polypropylene glycol wherein the dough comprises total plasticizers in amounts ranging from about 20 wt% to about 60 wt%.
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 ERICSON M LACHICA whose telephone number is (571)270-0278. The examiner can normally be reached M-F, 8:30am-5pm, EST.
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/ERICSON M LACHICA/Examiner, Art Unit 1792
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