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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-14 in the reply filed on 6/29/26 is acknowledged. The traversal is on the grounds that the use of a surfactant is optional and further it is not mandatory to use a surfactant comprising mono and diglycerides of c6-c12 carboxylic acids. This is not found persuasive because Thomas clearly shows that a surfactant can be a combination of citric acid esters of mono- and/or diglyceride and polysorbates.
While citric acid esters of mono- and/or diglyceride is one from a list of emulsifiers, the fact remains that it would have been obvious to choose any emulsifier from the list, including citric acid esters of mono- and/or diglyceride. Absent evidence to the contrary. Further, the mere fact that a reference teaches alternatives does not by itself render any particular alternative any less obvious. See Merck, 874 F.2d at 807; Susi, 440 F.2d at 445; Kubin, 561 F.3d at 1359.
It is noted that inventions listed as Groups Groups I-III do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features as set forth in the previous Office Action.
Therefore, given that the Examiner has properly established that Groups I-III lack unity as set forth in the Office Action mailed 5/13/26, it is the Examiner's position that the restriction is proper.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 103
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.
Claims 1-6 and 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over Thomas et al (US20080317907).
Thomas, abstract, teaches a cooked snack food or cooked edible core material, is tumbled and sprayed with an aqueous solution of a water-soluble, film-forming coating component.
Thomas, paragraph 28 of the PGPUB, teaches the aqueous coating solution may further include emulsifiers.
Thomas, paragraph 35 of the PGPUB, teaches the thin coating may be transparent.
Thomas, paragraph 40 of the PGPUB, teaches the film forming coating may be a vegetable gum such as gum Arabic.
Thomas, paragraph 45 of the PGPUB, teaches the moisture content of the sprayable aqueous solution may be from about 25% by weight to about 75% by weight, based upon the weight of the aqueous solution.
Thomas, paragraph 46 of the PGPUB, teaches the aqueous coating solution may contain a film-forming coating component in an amount of from about 25% by weight to about 75% by weight.
Thomas, paragraph 53 of the PGPUB, teaches the edible emulsifiers which may be employed are citric acid esters of mono- and/or diglycerides, sorbate esters, sugar esters, polyglycerol esters, propylene glycol esters, lecithin, polysorbates, and combinations thereof. Exemplary amounts of the optional emulsifier which may be used are up to about 10% by weight, based upon the weight of the aqueous coating solution.
An aqueous solution comprising 25% by weight to about 75% by weight gum Arabic, 25% by weight to about 75% by weight water and up to 10 wt% of a combination of citric acid esters of mono- and/or diglycerides and sorbate esters reads on the composition as claimed in claim 1.
As set forth in MPEP 2144.05, in the case where the claimed range “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 composition as taught by the reference is the same composition as claimed in claim 1 and therefore it would be expected that the composition as taught by the reference would dry to form a transparent film as claimed in claim 1.
Regarding claim 2, Thomas, abstract, teaches a cooked snack food or cooked edible core material, is tumbled and sprayed with an aqueous solution of a water-soluble, film-forming coating component.
The coating component as taught by the reference reads on a primer layer as claimed in claim 2.
Regarding claim 3, How the product is made, particularly the process steps of “printing on with edible inks” are process limitations not positively claimed as part of the process but as process steps of the claimed product-by-process material. The claimed product, a coated product, is the same product cited to in the prior art of Thomas.
In the event any differences can be shown for the product of the product-by- process claims 3, as opposed to the product taught by the reference, such differences would have been obvious to one of ordinary skill in the art as a routine modification of the product in the absence of a showing of unexpected results; see also In re Thorpe, 227 USPQ 964 (CAFC 1985).
When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or 103 of the statute is appropriate. As a practical matter, the Patent and Trademark Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claims 4-5, Thomas, paragraph 40 of the PGPUB, teaches the film forming coating may be a vegetable gum such as gum Arabic.
Regarding claim 6, Thomas, paragraph 53 of the PGPUB, teaches the edible emulsifiers which may be employed are citric acid esters of mono- and/or diglycerides, sorbate esters, sugar esters, polyglycerol esters, propylene glycol esters, lecithin, polysorbates, and combinations thereof.
Regarding claim 8, it 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 to use common polysorbates in the composition such as polysorbate 80 or 60.
Regarding 9, Thomas, paragraph 53 of the PGPUB, teaches the edible emulsifiers which may be employed are citric acid esters of mono- and/or diglycerides.
Regarding claim 10, Thomas, paragraph 35 of the PGPUB, teaches the thin coating of the present invention may be transparent.
Regarding claims 11-14, the reference teaches a composition that does not include organic solvents, sugars, starch, modified starch, polysaccharides, alcohols or glycols or than the gums.
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Although the reference teaches emulsifiers, the reference does not teach the first surfactant to be a blend of mono, di, and triglycerides of caprylic and capric acid.
US20200330425, paragraph 52 of the PGPUB, teaches the oil carrier is selected from the group consisting of natural fatty acids; medium-chain triglycerides of caprylic (C8) and capric (010) acids; propylene glycol esters of caprylic (C8) and capric (010) acids; mono-, di- and triglycerides of mainly linoleic (C18:2) and oleic (C18:1) acids; fatty acid 18:1 cis-9; natural fatty acids; mono-, di- and triglycerides of oleic (C18:1) acid, and mixtures and combinations thereof.
There is no motivation in ‘425 or in Thomas to modify the composition to include a blend of mono, di, and triglycerides of caprylic and capric acid.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US20080317824 teaches chocolate coated spherical filled capsules.
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/STEFANIE J COHEN/Examiner, Art Unit 1732 8/6/26
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