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 .
Response to Restriction and Status of Claims
Applicant’s election with traverse of the invention of Group I (Claims 1-9), drawn to a method for producing a solid food ingredient, in the reply filed 09/14/2026, is acknowledged by the Examiner. Applicant traversed the restriction requirement on the grounds that Bromley does not disclose the claimed combination of components in the particular concentration ranges recited in the claims, and that mere identification of individual components or overlapping disclosures in Bromley does not establish that the claimed subject matter lacks novelty or inventive step. Applicant further reasons that a prior-art disclosure of a broad or different concentration range does not, by itself, disclose every specific combination of concentration ranges recited in the present claims, and that the claimed composition may not be reconstructed by selecting individual ingredients from separate portions of Bromley and then selecting particular concentrations to have the desired anti-freezing and anti-caking functionality and anticipate the claims. Applicant also argued that Bromley does not recognize that the claimed combination of seven distinct components as fat, fruit puree, lignin/cellulose, vegetable phytosterols/PUFA, PUFA/omega-3 fatty acids, lauric acid and sugars or sugar replacements, within the claimed ranges, and argues hindsight reconstruction.
The Examiner maintains the Unity of Invention restriction requirement at present but would consider rejoining the claims once allowable subject matters are identified.
As indicated in the rejection infra, the claims are not anticipated but are obvious over Bromley because all the features are taught by Bromley.
Regarding the argument that Bromley does not recognize that the claimed combination of seven distinct components, first, the claims do not indicate that the sources of each component need to be different from each other. For example, sesame oil can be a) fat source and also d) phytosterol & PUFA source according to Claims 2 and 5. Second, as discussed in In re Levin, 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 this case, all the components are common ingredients already identified by Bromley taught to be applied in amounts which overlap with the claimed amounts, and as such are not “special” technical features. Further regarding the amounts, it is generally noted that differences in amounts do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such amount is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Given that applicant did not point out the criticality of amount ranges of components of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known, starting from the amount taught by Bromley. NOTE: MPEP 2144.05.
Lastly regarding the alleged hindsight reconstruction, 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).
As such, the technical feature is not above the prior art, and therefore is not a special technical feature. As the technical feature was known in the art at the time of the invention, this cannot be considered a special technical feature. Therefore, the technical feature claim elements are expressly taught or are rendered obvious by Bromley. The technical feature is not above the prior arts, and therefore is not a special technical feature. The requirement is still deemed proper and is therefore made FINAL.
Claims 10-21 are withdrawn pursuant to 37 C.F.R. 1.142(b) as being drawn to non-elected subject matter. The claims corresponding to the elected subject matter are Claims 1-9, and are herein acted on the merits.
Specification
The disclosure is objected to because of the following informalities: Paragraph [0029] of the specification refer to “Fig. 1” but should state The Figure as there is only one figure. Appropriate correction is required.
Drawings
The drawings are objected to because there is only one figure and the drawing refers to “Fig. 1”. However, 37 CFR 1.84(u)(1) indicates when there is only one drawing, it must not be numbered and the abbreviation FIG must not appear. Therefore, the figure must be referred to as The Figure. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1-8 are objected to because of the following informalities:
Claims 1-2 and 4-8 have capitalization of letters where they should not be capitalized e.g.: Omega-3-Fatty acid and Lauric in Claim 1; Avocado in Claim 2; Sugar and Peaches in Claim 4, and so on.
“&” should be spelled out as “and” throughout the claim set.
PUFA acronym should be spelled out and “(PUFA)” indicated in parenthesis when it is first used in Claim 1.
There appears to be inconsistencies with pluralization throughout the claim set, where some nouns are pluralized with “s” and others are not. Applicant is reminded that in a claim using an open-ended transition term "comprising," the article "a" ordinarily means "one or more." SanDisk Corp. v. Kingston Tech. Co., 695 F.3d 1348, 1360 (Fed. Cir. 2012) ("general rule that the use of the indefinite articles 'a' or 'an' means 'one or more"'). As an example, the singular form “prune” would encompass more than one prune, and Claim 3 should recite “prune puree”.
Claim 9 recites “wherein the food product is a frozen dessert product…frozen dough, and frozen noodles. The “and” appears to be a typographical error, and should be “or”.
Appropriate correction is required.
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 6 and 9 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 6 is rejected for the recitation of “butter nut”. One skilled in the art would not be able to ascertain what “butter nut” means, e.g. butternut squash, a type of nut butter or something else. As such, the claim is indefinite and rejected.
Claim 9 recites the limitation “flour-based mix” and “cocoa and mixed coffee beverage”, which are indefinite because it is unknown what is encompassed in this recitations. The Specification does not provide definition or scope for these features. As such, the metes and bounds of the claim is unclear and the claim is rejected.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Bromley et al. (US 2014/0227242 A1, cited in the Written Opinion of the ISA), hereinafter Bromley.
Bromley teaches compositions and methods for producing stable foods and beverages that contain additives such as essential fatty acids, phytochemicals, including phytosterols, oils etc. (Abstract).
Regarding Claim 1, Bromley teaches first compositions (concentrates) that contain non-polar compounds, including liquid emulsion concentrates for use in water-based food and beverages [0010]. Non-polar compounds include omega-3 fatty acids, and oils inter alia flaxseed oil, safflower oil, and sesame oil, which reads on the fat source, phytosterols & PUFA source, and omega-3 fatty acid source [0023]-[0024], Any flavor can be added to the concentrates inter alia fruit including banana and mango, reading on the fruit puree and sugar source [0051]. Bromley teaches pastes and sauces, which renders the puree feature obvious ([0249J, [0254]). The liquid emulsion concentrate comprises stabilizers such as cellulose ([0037],[0208], Claim 4). Also included are oil-soluble acids and alcohols, for example, tartaric acid, lignin, phytosterols [0381]. Exemplary non-polar compounds contained in the concentrates include polyunsaturated fatty acids (PUFAs) including omega-3 fatty acid compounds ([0386], [0392]-[0410]). Bromley teaches surfactants including sugar ester surfactants, typically sucrose fatty acid ester surfactants including sucrose laurate [0017].
With regards to the concentrations of the components, Bromley teaches the amount of each individual non-polar compound within the provided compositions is added at a concentration of between 15% and about 50% (w/w) of the concentrate [0383]. The non-polar compound is included at an amount that is between 20% or about 20% and 50% by weight of the concentrate [0383]. The amount of non-polar compounds such as lignin and phytosterols is taught to be up to 50% [0381]-[0382]. The concentration of the flavoring agent is typically less than 5% [0552]. In one example, the non-polar active ingredient contains between 10% or about 10% and 40% or about 40% DHA [0397]. Bromley also teaches flax seed oil, which is rich in omega-3, and also a non-polar solvent for the liquid concentrate ([0410]-[0411], [0548]). Typically, the concentration of the non-polar solvent is within a concentration range of between 1 % to 10% of the liquid concentrate [0549]. Regarding the amount of lauric acid source and sugar, the relative amount of monoester in the sucrose fatty acid ester surfactant can be specified as a percentage of the total esters, e.g. surfactants containing at least at or about 50% sucrose fatty acid monoesters [0019]; in one aspect, the sucrose fatty acid ester surfactant is a blend of sucrose fatty acid esters containing at or about 72% monoesters, at or about 23% diesters, and at or about 5% triesters [0019]. Each of the one or more surfactants is present in an amount between 3% and 16%, by weight, of the concentrate composition (Claim 1).
The prior art teaches all the claimed elements. Therefore, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
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 the “anti-freezing” and “anti-caking” properties of the claimed system, because Bromley teaches all the components in overlapping amounts as the instant claims, which the instant claim and specification notes for the anti-freezing and anti-caking properties, Bromley therefore renders obvious these features of the claim set as it is an inherent property. The composition of Bromley must necessarily have the characteristics instantly claimed. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
Regarding the amounts of components, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See MPEP 2144.05. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05. It would also have been prima facie obvious to one of ordinary skill in the art before the effective filing date to adjust the concentrations of each components based on the teachings of Bromley to optimize the nutritional profile and flavor of the composition as needed or desired.
The patentable features of Claims 2-6 and 8 have been rendered obvious supra.
Regarding Claim 7, Bromley teaches peanut oil ([0024], [0374]).
Regarding Claim 9, Bromley teaches food and beverage compositions including cheese, frozen yogurt and ice cream and other frozen food [0572].
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached M-F, 10-6 EST.
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/JANICE Y SILVERMAN/Examiner, Art Unit 1792
