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 without traverse of Group I, claims 1-16, in the reply filed on August 24, 2026 is acknowledged.
Claim 17 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim.
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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Bonar et al. (US 2020/0221722 A1; July 16, 2020) in view of Vemulapalli et al. (US Patent No. 10,264,804 B2; April 23, 2019).
Regarding claim 1, Bonar discloses a spreadable granola butter comprising:
rolled oats that can be reduced in particle size to oat flour (Fig 1 step 106) in an amount from 20-50% by weight ([0047]), thus overlapping the claimed range of 30-50%,
a fat component that can comprise two fats, such as olive oil and coconut oil (Fig 4, [0036], [0045]), wherein a first amount of fat can range from 20-25% by weight and the second or additional fat can range from 1-20% by weight ([0050]), and
maple syrup, e.g. sugar, in an amount from 5-30% by weight ([0048]), thus overlapping the claimed range of 15-25% by weight.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
With respect to the oat flour having a moisture content of 6-10%, Bonar fails to specifically teach the moisture content, however, Bonar teaches that the oats are heated for a predetermined time and then reduced in size to form oat flour ([0039]), and therefore it would have been obvious to one of ordinary skill in the art to vary the heating time to result in a desired moisture content of the oat flour. It would have been obvious to determine an optimum moisture content for the oat flour such that the spreadable composition does not have too much moisture.
While Bonar teaches that the fat component can comprise two different fats, Bonar fails to specifically teach the fat component comprising a shortening as claimed.
Vemulapalli discloses a heat-stable grain-based filling, wherein the grain can be oat flour (col 5 lines 26-34; col 13 Tables 8-9). Vemulapalli further teaches that the filling comprises a fat component that includes a blend of first and second lipids, such as a lower melting point lipid and a higher melting point lipid, such as a blend of high oleic canola oil and palm fat. Therefore, Vemulapalli teaches a fat component comprising a shortening, e.g. the palm fat, in an amount of 20-40% by weight, thus overlapping the claimed range of 18-35% by weight, and an oil in an amount from 3-15% by weight, thus overlapping the claimed range of 7-10% by weight (col 6 line 50 – col 7 line 3).
With respect to the shortening having a Mettler Dropping Point of from about 40-50 C, Vemulapalli teaches that the shortening is palm fat, which is the same as claimed (claim 5) and therefore the palm fat of Vemulapalli would be expected to have the same Mettler Dropping Point.
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.
Furthermore, it would have been obvious to one of ordinary skill in the art provide a shortening having desired properties by varying the type of fat in the shortening and amount of shortening. This is merely routine experimentation that is well within the ordinary skill in the art.
Vemulapalli teaches the fat component as described above, and further teaches that the oil to shortening ratio can overlap the claimed ratio (0.075:1 to 0.75:1 using the ranges of palm fat in an amount of 20-40% by weight and oil in an amount from 3-15% by weight (col 6 line 50 – col 7 line 3). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
As Vemulapalli teaches a fat component as described above, wherein the fat comprises a shortening and an oil, that is suitable for providing a soft and creamy filling, spread, it would have been obvious to one of ordinary skill in the art to have the two oil fat component of Bonar comprise a fat component that includes a blend of a lower melting point lipid and a higher melting point lipid, such as a blend of oil and shortening. This would yield the predictable result of providing the spread of Bonar with a soft and creamy texture as taught by Vemulapalli.
With respect to the total moisture content and water activity of the food composition, Bonar fails to specifically teach such properties. However, Vemulapalli teaches that an oat-flour spread/filling is known to have a moisture content of 3.99% (Table 9) and a water activity of 0.5 or less (col 5 lines 20-25), both falling within the claimed ranges.
As Vemulapalli teaches that it is well known in the art for oat flour-based spreads to comprise a moisture content and water activity falling within the claimed ranges, it would have been obvious for the spread of Bonar to comprise a similar moisture content and water activity in order for the spread of Bonar to have sufficient texture as a spread.
Regarding claim 2, Bonar discloses that the oat flour is in an amount that is greater than the amount of the shortening as Vemulapalli teaches that the shortening, e.g. palm fat or higher melting point lipid, is present in an amount of 20-40% by weight (col 7 lines 1-3), specifically 20% in Table 8, and the oat flour can be present in an amount of 20-50% by weight ([0047]), specifically 36% in Fig. 4.
Further, it would have been obvious to one of ordinary skill in the art to vary the specific amounts of oat flour and shortening depending on the desired texture, taste, and nutritional content of the spread.
Regarding claims 3-5, with respect to the shortening having a 10-40 C solid fat content product having the claimed formula, and a rate of crystallization measured between 30 and 300 seconds having the claimed formula, the examiner notes that Bonar in view of Vemulapalli teach that the shortening is palm fat, e.g. palm oil (col 6 line 65, See Examples), and therefore the shortening would be expected to have the same solids fat content and rate of crystallization as claimed as it is the exact same ingredient.
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.
Furthermore, it would have been obvious to one of ordinary skill in the art provide a shortening having desired properties by varying the type of fat in the shortening and amount of shortening. This is merely routine experimentation that is well within the ordinary skill in the art.
Regarding claim 6, Bonar teaches that the composition comprises maple syrup, e.g. sugar, in an amount from 5-30% by weight ([0048]), thus overlapping the claimed range of 16-20% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claim 7, Bonar teaches that the composition comprises maple syrup ([0048], Fig. 4), which is a natural sweetener.
Regarding claim 8, Bonar teaches the composition as described above, but fails to teach the composition further comprising starch in an amount of about 0.5-12% by weight.
Vemulapalli discloses that the grain-based soft and creamy fillings can include starch as a thickener in a small amount of 1% or less (col 4 lines 20-40; Tables 5-6), thus overlapping the claimed range of 0.5-12%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
It would have been obvious to include starch in the composition of Bonar in order to provide more thickness if needed. It would have been obvious to include the starch in a similar amount as taught by Vemulapalli as Vemulapalli teaches that such amount is suitable for thickening grain, or oat-based spreads and therefore would predictably provide the same benefit to the spread of Bonar.
Regarding claim 9, Vemulapalli teaches that the fat component can comprise a hydrogenated fat (col 6 line 50) and therefore it would have been obvious to include a hydrogenated fat in the composition of Bonar for the reasons previously stated in claim 1.
Regarding claim 10, Bonar teaches that the composition is a substitute for a nut-based spread, which is known to be combined with a particulate, but fails to specifically teach combining the oat-based spread with a particulate.
Vemulapalli further teaches that the grain-based spreads can be used as fillings in cookies, crackers, biscuits, pastries, snacks, and other edible foods (col 3 lines 20-25). Therefore, Vemulapalli teaches combining the spread with a particulate.
It would have been obvious to one of ordinary skill in the art to combine the composition of Bonar with a particulate as taught by Vemulapalli in order to provide a food product comprising the spread of Bonar, especially as Bonar is directed to a replacement for nut-based spreads, which are known to be combined with a particulate.
Regarding claims 11-15, Bonar teaches packaging the food composition ([0070]-[0071]), but fails to teach the packaged food product comprising a base piece and the spread composition.
As stated above with respect to claim 10, it is well known in the art to combine cheese or nut-based fillings with a food product, such as crackers and cookies, wherein the filling is layered between two base cookie pieces or a filling inside the based food product. These types of products are well known in the art and would have been obvious to make with the oat flour spread of Bonar. It would have been obvious to package such food products, wherein the filling is layered between two base cookie pieces or a filling inside the based food product, so that they can be sold to consumers.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Bonar et al. (US 2020/0221722 A1; July 16, 2020) and Vemulapalli et al. (US Patent No. 10,264,804 B2; April 23, 2019) as applied to claim 11 above, and further in view of Gugger et al. (US 2020/0260765 A1; Aug. 20, 2020).
Regarding claim 16, Bonar and Vemulapalli render obvious a packaged food product as described above, but fail to teach that the packaged food product is a pet food.
Gugger discloses an oat-based peanut-butter flavored composition that is a spread, wherein the spread can be included in a pet food product ([0015]).
It would have been obvious to one of ordinary skill in the art include the composition of Bonar in a pet food as Gugger teaches that oat-based spreads are well known in the art to be useful in pet food to provide desirable flavor, while being peanut, or allergen free.
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.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791
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