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 § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Triantafyllou (US 2002/0081367 A1; June 27, 2002).
Regarding claim 1, Triantafyllou discloses an enzyme preparation for non-dairy plant-based ice cream comprising the enzyme beta-amylase ([0010]-[0017], [0062]-[0065], See Examples).
With respect to the enzyme preparation improving the shape-retainability of a plant-base ice cream, as Triantafyllou teaches a plant-based ice cream comprising the same enzyme preparation as claimed, i.e. beta-amylase, the enzyme preparation of Triantafyllou would inherently improve the shape-retainability.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Regarding claim 2, Triantafyllou teaches a plant-base ice cream using the enzyme preparation of claim 1, wherein the enzyme preparation comprises beta-amylase ([0010]-[0017], [0062]-[0065], See Examples 8-12).
With respect to the enzyme preparation improving the shape-retainability of a plant-base ice cream, as Triantafyllou teaches a plant-based ice cream comprising the same enzyme preparation as claimed, i.e. beta-amylase, the enzyme preparation of Triantafyllou would inherently improve the shape-retainability.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Regarding claim 3, Triantafyllou discloses a method for producing a plant-base ice cream comprises a beta-amylase action step in which beta-amylase is allowed to act one a carbohydrate-containing plant-base material, e.g. the cereal starch ([0010]-[0017], [0062]-[0065], See Examples 8-12).
Regarding claim 4, Triantafyllou discloses a method for producing a plant-base ice cream comprises a beta-amylase action step in which beta-amylase is allowed to act one a carbohydrate-containing plant-base material, e.g. the cereal starch ([0010]-[0017], [0062]-[0065], See Examples 8-12).
With respect to the method improving the shape-retainability of a plant-base ice cream, as Triantafyllou teaches a plant-based ice cream comprising the same beta-amylase action step as claimed, the method of Triantafyllou would inherently improve the shape-retainability.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791
Prosecution Insights