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 .
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 1-6, 8-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, 6, 8-12 of U.S. Patent No. 11,723,390. Although the claims at issue are not identical, they are not patentably distinct from each other because they both recite a high protein food comprising nut butter, protein powder, and stabilizing fat.
Claims 1 and 12 of the instant application recite A food, comprising: a. nut butter in an amount of at least 50% by weight of the food;
b. at least 25% protein by weight of the food, the protein including a powdered protein ingredient contributing at least 12% protein by weight of the food; c. a stabilizing fat in an amount of about 10% to about 20% by weight of the food, wherein the stabilizing fat contributes lauric acid in an amount of about 3% to about 10% by weight of the food or the stabilizing fat comprises a palm oil, a palm oil fraction, a palm kernel oil, a palm kernel fraction, a coconut oil, a coconut oil fraction, or any combination thereof; d. a powdered food ingredient in an amount of about 8% to about 25% by weight of the food, wherein (i) the stabilizing fat has a Mettler Dropping Point of from about 38° C to about 45° C, and a 10° C to 40° C solid fat content (SFC₁₀-₄₀) profile, the SFC₁₀₋₄₀ profile having a formula of y = mx + b, where y is solid fat content, X is temperature in Celsius,
m is slope having a value between about -2 and about -5, and
b is a y-intercept having a value between about 95 and about 140;
(ii) the food has a differential scanning calorimetry (DSC) profile having a
stabilizing fat endothermic peak between 30° C and 35° C, wherein the DSC
profile exhibits a curve that has less than 10% of its area between 35° C and 70° C;
or
(iii) the food has a rheology inflection midpoint at 21° C (RIM₂₁) and a
rheology inflection midpoint at 37° C (RIM₃₇), where the RIM₂₁ is at least 1 X 10¹
Pa greater than the RIM₃₇ is at least 1 X 10 Pa greater than the RIM₂₁.
And claim 12 recites wherein the stabilizing fat contributes lauric acid in an amount of about 3% to about 10% by weight of the food.
where, claim 1 of US 11,723,390 recites a. nut butter in an amount of at least 50% by weight of the food; b. at least 25% protein by weight of the food, the protein including a powdered protein ingredient contributing at least 12% protein by weight of the food, the powdered protein ingredient having a protein content of at least 70% by weight of the powdered protein ingredient; c. a stabilizing fat in an amount of about 14% to about 22% by weight of the food, the stabilizing fat contributing lauric acid in an amount of about 3% to about 10% by weight of the food, the stabilizing fat having a Mettler Dropping Point of from about 32° C. to about 48° C., the stabilizing fat having a 26.7° C. to 40° C. solid fat content (SFC.sub.27-40) profile having a formula of y=mx+b, where y is solid fat content, x is temperature in Celsius, m is slope having a value between about −0.01 and about −2, and b is a y-intercept having a value between about 5° C. and about 60° C., and the stabilizing fat having a 10° C. to 40° C. solid fat content (SFC.sub.10-40) profile, the SFC.sub.10-40 profile having a formula of y=mx+b, where y is solid fat content, x is temperature in Celsius, m is slope having a value between about −1.5 and about −3.5, and b is a y-intercept having a value between about 60° C. and about 120° C.; d. a powdered food ingredient in an amount of about 8% to about 25% by weight of the food, the powdered food ingredient having a protein content of less than 70% by weight of the powdered food ingredient; e. a shelf stability of at least 60 days; f. a spreadable texture; g. a texture that exhibits a decrease in shear resistance at 37° C. relative to 21° C.; and h. a moisture content of less than 2.5% by weight of the food, wherein the moisture content does not solubilize the powdered protein ingredient and does not solubilize the powdered food ingredient.
Although the claims are not identical they are obvious over one another.
Claim 2 recites wherein the stabilizing fat has a SFC₁₀₋₄₀ profile with a formula of y = mx + b, where y is solid fat content, X is temperature in Celsius, m is slope having a value between about -2 and about -3, and b is a y-intercept having a value between about 95 and about 110; where claim 3 of US 11,723,390 recites wherein the SFC.sub.10-40 profile has the formula of y=mx+b, where y is solid fat content, x is temperature in Celsius, m is slope having a value between about −1.5 and about −3, and b is a y-intercept having a value between about 60° C. and about 100° C.
Claims 3 and 4 recites wherein the stabilizing fat has a 26.7° C to 40° C solid fat content (SFC₂₇-₄₀) profile, the SFC₂₇₋₄₀ profile having a formula of y = mx + b, where y is solid fat content, is temperature in Celsius, m is slope having a value between about - -1.5 and about -5, and b is a y-intercept having a value between about 70 and about 150; wherein the stabilizing fat has a SFC₂₇₋₄₀ profile with a formula of y = mx + b, where y is solid fat content, is temperature in Celsius, m is slope having a value between about -1.5 and about -2.5, and b is a y-intercept having a value between about 70 and about 85 (claim 4); where claims 3, 5, 6 of US 11,723,390 recites wherein the SFC.sub.10-40 profile has the formula of y=mx+b, where y is solid fat content, x is temperature in Celsius, m is slope having a value between about −1.5 and about −3, and b is a y-intercept having a value between about 60° C. and about 100° C. (claim 3); wherein the stabilizing fat has a 10° C. to 26.7° C. solid fat content (SFC10 -27) profile, the SFC10-27 profile having a formula of y=mx+b, where y is solid fat content, x is temperature in Celsius, m is slope having a value between about −2.5 and about −6, and b is a y-intercept having a value between about 80° C. and about 135° C; wherein the SFC10-27 profile has the formula of y=mx+b, where y is solid fat content, x is temperature in Celsius, m is slope having a value between about −3 and about −5, and b is a y-intercept having a value between about 105° C. and about 130° C.
Claim 5 recites wherein the stabilizing fat has a 10° C to 26.7° C solid fat content (SFC₁₀₋₂₇) profile, the SFC₁₀₋₂₇ profile having a formula of y = mx + b, where y is solid fat content, is temperature in Celsius, m is slope having a value between about - -1.5 and about -3, and b is a y-intercept having a value between about 100 and about 130; where claim 6 of US 11,723,390 recites the SFC10-27 profile has the formula of y=mx+b, where y is solid fat content, x is temperature in Celsius, m is slope having a value between about −3 and about −5, and b is a y-intercept having a value between about 105° C. and about 130° C.
Claim 6 recites wherein the stabilizing fat has a SFC₁₀₋₂₇ profile with a formula of y = mx + b, where y is solid fat content, is temperature in Celsius, m is slope having a value between about - 1.8 and about -2.5, and b is a y-intercept having a value between about 105 and about 120; where claims 3, 5, 6 of US 11,723,390 recites wherein the SFC.sub.10-40 profile has the formula of y=mx+b, where y is solid fat content, x is temperature in Celsius, m is slope having a value between about −1.5 and about −3, and b is a y-intercept having a value between about 60° C. and about 100° C. (claim 3); wherein the stabilizing fat has a 10° C. to 26.7° C. solid fat content (SFC10 -27) profile, the SFC10-27 profile having a formula of y=mx+b, where y is solid fat content, x is temperature in Celsius, m is slope having a value between about −2.5 and about −6, and b is a y-intercept having a value between about 80° C. and about 135° C; wherein the SFC10-27 profile has the formula of y=mx+b, where y is solid fat content, x is temperature in Celsius, m is slope having a value between about −3 and about −5, and b is a y-intercept having a value between about 105° C. and about 130° C.
Claim 8 recites wherein the stabilizing fat comprises a palm stearin and a palm oil, where claims 9 and 10 of US 11,723,390 recites wherein the stabilizing fat comprises a coconut oil, a palm kernel oil, a palm kernel oil stearin, or a coconut oil stearin; wherein the stabilizing fat comprises a palm stearin and a coconut oil.
Claim 9 recites wherein the food includes nut butter in an amount of from 50% to about 65% by weight of the food; where claim 11 of US 11,723,390 recites, wherein the food includes nut butter in an amount of from 50% to about 65% by weight of the spreadable food.
Claim 10 recites, wherein the nut butter comprises peanut butter, almond butter, or cashew butter; where claim 12 of US 11,723,390 recites wherein the nut butter comprises peanut butter, almond butter, or cashew butter.
Claim 11 recites wherein the powdered food ingredient comprises a sugar or a sugar alcohol in an amount of about 6% to about 20% by weight of the food., where claim 2 of US 11,723,390 recites the powdered food ingredient comprises erythritol in an amount of about 5% to about 15% by weight of the food.
Claim 13 recites wherein the powdered protein ingredient comprises whey protein and soy protein, the whey protein and soy protein included at a ratio of from about 30:70 to about 70:30. Where claim 8 of US 11, 723,390 recites the powdered protein ingredient comprises whey protein and soy protein, the whey protein and soy protein included at a ratio of from about 30:70 to about 70:30.
Claims 1-6, 8-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims -12 of U.S. Patent No. 12,178,227. Although the claims at issue are not identical, they are not patentably distinct from each other because they both recite a high protein food comprising nut butter, protein powder, and stabilizing fat.
Claims 1, 8, and 12 of the instant application recite A food, comprising: a. nut butter in an amount of at least 50% by weight of the food; b. at least 25% protein by weight of the food, the protein including a powdered protein ingredient contributing at least 12% protein by weight of the food; c. a stabilizing fat in an amount of about 10% to about 20% by weight of the food, wherein the stabilizing fat contributes lauric acid in an amount of about 3% to about 10% by weight of the food or the stabilizing fat comprises a palm oil, a palm oil fraction, a palm kernel oil, a palm kernel fraction, a coconut oil, a coconut oil fraction, or any combination thereof; d. a powdered food ingredient in an amount of about 8% to about 25% by weight of the food, wherein (i) the stabilizing fat has a Mettler Dropping Point of from about 38° C to about 45° C, and a 10° C to 40° C solid fat content (SFC₁₀-₄₀) profile, the SFC₁₀₋₄₀ profile having a formula of y = mx + b, where y is solid fat content, X is temperature in Celsius,
m is slope having a value between about -2 and about -5, and b is a y-intercept having a value between about 95 and about 140;
(ii) the food has a differential scanning calorimetry (DSC) profile having a
stabilizing fat endothermic peak between 30° C and 35° C, wherein the DSC
profile exhibits a curve that has less than 10% of its area between 35° C and 70° C;
or
(iii) the food has a rheology inflection midpoint at 21° C (RIM₂₁) and a rheology inflection midpoint at 37° C (RIM₃₇), where the RIM₂₁ is at least 1 X 10¹ Pa greater than the RIM₃₇ is at least 1 X 10 Pa greater than the RIM₂₁., claim 8 recites the stabilizing fat comprises a palm stearin and a palm oil and claim 12 recites wherein the stabilizing fat contributes lauric acid in an amount of about 3% to about 10% by weight of the food. where, claim 1 of US 12,178,227 recites A food, comprising: a. nut butter in an amount of at least 50% by weight of the food; b. at least 25% protein by weight of the food, the protein including a
powdered protein ingredient contributing at least 12% protein by weight of the food, the powdered protein ingredient having a protein content of at least 70% by weight of the powdered protein ingredient; c. a stabilizing fat in an amount of about 10% to about 20% by weight of the food, wherein the stabilizing fat comprises palm oil, palm kernel stearin, and palm oil stearin, and contributes lauric acid in an amount of about 3% to about 10% by weight of the food, wherein the stabilizing fat has a Mettler Dropping Point of from about 38° C. to about 45° C., and a 10° C. to 40° C. solid fat content (SFC10-40) profile, the SFC10-40 profile having a formula of y=mx+b, where y is solid fat content, x is temperature in Celsius, m is slope having a value between about −2 and about −5, and b is a y-intercept having a value between about 95 and about 140, and the stabilizing fat has a 26.7° C. to 40° C. solid fat content (SFC.sub.27-40) profile, the SFC27-40 profile having a formula of y=mx+b, where y is solid fat content, x is temperature in Celsius, m is slope having a value between about −1.5 and about −5, and b is a y-intercept having a value between about 70 and about 150, and the stabilizing fat has a 10° C. to 26.7° C. solid fat content (SFC.sub.10-27) profile, the SFC.sub.10-27 profile having a formula of y=mx+b, where y is solid fat content, x is temperature in Celsius, m is slope having a value between about −1.5 and about −3, and b is a y-intercept having a value between about 100 and about 130; d. a powdered food ingredient in an amount of about 8% to about 25% by weight of the food, the powdered food ingredient having a protein content of less than 70% by weight of the powdered food ingredient; e. a differential scanning calorimetry (DSC) profile having a stabilizing fat endothermic peak between 30° C. and 35° C., wherein the DSC profile exhibits a curve that has less than 10% of its area between 35° C. and 70° C.; f. a rheology inflection midpoint at 21° C. (RIM.21) and a rheology inflection midpoint at 37° C. (RIM37), where the RIM37 is at least 1×10.sup.1 Pa greater than the RIM21; and g. a moisture content of less than 2.5% by weight of the food, wherein the moisture content does not solubilize the powdered protein ingredient and does not solubilize the powdered food ingredient.
Although the claims are not identical they are obvious over one another.
Claims 2-4 recite wherein the stabilizing fat has a SFC₁₀₋₄₀ profile with a formula of y = mx + b, where y is solid fat content, X is temperature in Celsius, m is slope having a value between about -2 and about -3, and b is a y-intercept having a value between about 95 and about 110; wherein the stabilizing fat has a 26.7° C to 40° C solid fat content (SFC₂₇-₄₀) profile, the SFC₂₇₋₄₀ profile having a formula of y = mx + b, where y is solid fat content, is temperature in Celsius, m is slope having a value between about - -1.5 and about -5, and b is a y-intercept having a value between about 70 and about 150; wherein the stabilizing fat has a SFC₂₇₋₄₀ profile with a formula of y = mx + b, where y is solid fat content, is temperature in Celsius, m is slope having a value between about -1.5 and about -2.5, and b is a y-intercept having a value between about 70 and about 85 (claim 4); where claims 2-4 of US 12,178,227 recites wherein the SFC.sub.10-40 profile has the formula of y=mx+b, where y is solid fat content, x is temperature in Celsius, m is slope having a value between about −1.5 and about −3, and b is a y-intercept having a value between about 60° C. and about 100° C. (claim 3); wherein the stabilizing fat has a 10° C. to 26.7° C. solid fat content (SFC10 -27) profile, the SFC10-27 profile having a formula of y=mx+b, where y is solid fat content, x is temperature in Celsius, m is slope having a value between about −2.5 and about −6, and b is a y-intercept having a value between about 80° C. and about 135° C; wherein the SFC10-27 profile has the formula of y=mx+b, where y is solid fat content, x is temperature in Celsius, m is slope having a value between about −3 and about −5, and b is a y-intercept having a value between about 105° C. and about 130° C.
Claim 5 recites wherein the stabilizing fat has a 10° C to 26.7° C solid fat content (SFC₁₀₋₂₇) profile, the SFC₁₀₋₂₇ profile having a formula of y = mx + b, where y is solid fat content, is temperature in Celsius, m is slope having a value between about - -1.5 and about -3, and b is a y-intercept having a value between about 100 and about 130; where claims 2 and 5 US 12,178,227 recites wherein the stabilizing fat has a SFC10-40 profile with a formula of y=mx+b, where y is solid fat content, x is temperature in Celsius, m is slope having a value between about −2 and about −3, and b is a y-intercept having a value between about 95 and about 110; wherein the RIM37 is from about 1×102 to 1×104 Pa greater than the RIM21.
Claim 6 recites wherein the stabilizing fat has a SFC₁₀₋₂₇ profile with a formula of y = mx + b, where y is solid fat content, is temperature in Celsius, m is slope having a value between about - 1.8 and about -2.5, and b is a y-intercept having a value between about 105 and about 120; where claims 2 and 4 of US 12,178,227 recites wherein the stabilizing fat has a SFC.sub.10-40 profile with a formula of y=mx+b, where y is solid fat content, x is temperature in Celsius, m is slope having a value between about −2 and about −3, and b is a y-intercept having a value between about 95 and about 110; wherein the stabilizing fat has a SFC.sub.10-27 profile with a formula of y=mx+b, where y is solid fat content, x is temperature in Celsius, m is slope having a value between about −1.8 and about −2.5, and b is a y-intercept having a value between about 105 and about 120.
Claim 9 recites wherein the food includes nut butter in an amount of from 50% to about 65% by weight of the food; where claim 6 of US 12,178,227 recites wherein the food includes nut butter in an amount of from 50% to about 65% by weight of the spreadable food.
Claim 10 recites, wherein the nut butter comprises peanut butter, almond butter, or cashew butter; where claim 7 of US 12,178,227 recites wherein the nut butter comprises peanut butter, almond butter, or cashew butter.
Claim 11 recites wherein the powdered food ingredient comprises a sugar or a sugar alcohol in an amount of about 6% to about 20% by weight of the food., where claim 8 of US 12,178,227 recites wherein the powdered food ingredient comprises a sugar or a sugar alcohol in an amount of about 6% to about 20% by weight of the food.
Claim 13 recites wherein the powdered protein ingredient comprises whey protein and soy protein, the whey protein and soy protein included at a ratio of from about 30:70 to about 70:30.; where claim 9 of US 12, 178,227 recites wherein the powdered protein ingredient comprises whey protein and soy protein, the whey protein and soy protein included at a ratio of from about 30:70 to about 70:30.
Claim 14 recites wherein the powdered protein ingredient comprises whey protein isolate in an amount of from about 5% to about 15% by weight of the food and soy protein isolate in an amount of from about 5% to about 15% by weight of the food.; where claim 10 of US 12,178,227 recites wherein the powdered protein ingredient comprises whey protein isolate in an amount of from about 5% to about 15% by weight of the food and soy protein isolate in an amount of from about 5% to about 15% by weight of the food.
Claim 15 recites wherein the food comprises a defatted nut flour in an amount of up to about 10% by weight of the food; where claim 11 of US 12,178,227 the food comprises a defatted nut flour in an amount of up to about 10% by weight of the food.
Claim 16 recites wherein the powdered protein ingredient and the powdered food ingredient each include particles, where at least 80% of the pass through a No. 325 mesh; where claim 12 of US 12,178,227 recites wherein the powdered protein ingredient and the powdered food ingredient each include particles, where at least 80% of the pass through a No. 325 mesh.
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 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 1-12, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Martinez (WO 2018236365) in view of Azure (“Azure Market Organics Palm Kernel Stearin, Organic”), Shakerardekani (“Textural, Rheological and Sensory Properties and Oxidative Stability of Nut Spreads A Review”), Heussen (“Practical Food Applications of Differential Scanning Calorimetry”), and FnB (“Measuring dropping point of fat or oil using Mettler Toledo's instruments”) with evidence from Ngatirah (“Enzymatic Glycerolysis of Palm Kernel Olein-Stearin Blend for Monolaurin Synthesis as an Emulsifier and Antibacterial”) and ADM (“Soy Protein”).
Regarding Claims 1-12: Martinez teaches a composition that includes 25-70 wt.% nut butter, 5-20 wt.% fat, 15-30 wt.% sugar, and 10-55 wt.% firming agents [0003]. The nut butter can be peanut, almond, or cashew butter [0019]. Possible fats include palm stearin, palm oil, and coconut oil [0020]. These are known stabilizing fats. The firming agent can be a protein such as whey protein, soy protein isolate or soy protein concentrate [0024]. These are considered to be powdered protein sources. The sugar component can be powdered sugar [0023]. This is a powdered food ingredient with <70 wt.% protein. The product contains <1 wt.% moisture [0026].
Martinez does not teach the claimed concentrations of the composition ingredients, the protein content of the protein powder, the use of palm kernel stearin, the amount of lauric acid contributed by the stabilizing fat, a Mettler Dropping Point (MDP) of the stabilizing fat of from about 38°C to about 45°C and a 10°C to 40°C solid fat content (SFC10-40) profile, the solid fat content (SFC) profiles of the stabilizing fat at various temperatures, the differential scanning calorimetry (DSC) profile of the stabilizing fat having an endothermic peak between 30°C and 35°C and a curve that has less than 10% of its area between 35°C and 70°C, and a rheology inflection midpoint at 21°C (RIM21) and a rheology inflection midpoint at 37°C (RIM37), where RIM21 is at least 1x101 Pa greater than the RIM37. Martinez also does not teach the DSC profile exhibiting a curve having less than 10% of its area between 35°C and 70°C.
The values of ingredients in the claims are included in the prior art values. Therefore, the claimed values of nut butter, stabilizing fat, protein, and powdered food ingredients are obvious over the prior art.
Regarding the protein concentration of the protein powder, Martinez discloses soy protein isolate and concentrate as a firming agent. ADM states that soy protein isolate is 90 wt.% protein and soy protein concentrate is 65-90 wt.% protein [pg. 3]. The claimed value of >70 wt.% is obvious over the ADM values.
Regarding the stabilizing fats used, Azure discloses using palm kernel stearin as a nut butter stabilizer [pg. 1, Directions]. The Court has determined that "it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from there having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Therefore, it would have been obvious to combine palm kernel stearin with the palm oil and palm oil stearin of Martinez which are also known to be nut butter stabilizers.
Regarding the lauric acid concentration, Martinez and Azure disclose 5-20 wt.% fat such as palm oil, palm oil stearin, and palm kernel stearin. Ngatirah states that palm kernel stearin having 56- 59.7 wt.% lauric acid [pg. 2, ¶1]. Using palm kernel stearin as the primary stabilizing fat would result in the product being 2.8 – 11.9 wt.% lauric acid. The claimed value of lauric acid is obvious over the prior art. As the amount of palm oil and palm oil stearin are not claimed, they can be considered minor contributors to the amount of lauric acid in the composition with palm kernel stearin as the main contributor.
Regarding to MDP, FnB teaches the dropping point of a fat as the temperature at which the sample becomes fluid to flow under the conditions of the test [pg. 1, ¶2]. The test can be used to determine the quality of raw materials which can negatively affect the end-product as well as consumer satisfaction [pg. 1, ¶1]. It would have been obvious to a person having ordinary skill in the art to choose a Mettler Dropping Point that would be associated with the desired quality of the stabilizing fat used.
Heussen discloses fats existing in three crystalline forms, including the β’ form [pg. 2, Col 1, ¶1]. DSC can be used to identify the stable β’ form which results in a grainy mouth feel [pg. 2, Col 2, ¶1]. It would have been obvious to a person have ordinary skill in the art to choose the stabilizing fat of the composition so as to obtain the DSC profile associated with the desired mouth feel.
While Martinez does not teach the SFC profiles of the stabilizing fat, the courts have held that where 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 the claimed product. Whether the rejection is based on "inherency" under 35 USC § 102, or “prima facie obviousness" under 35 USC § 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. In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977). Therefore, the SFC profiles of the stabilizing fat is similar to the one in prior art.
In addition, Heussen teaches that solid fat content over a given melting range can be determined by DSC [pg. 2, Col 2, ¶2]. Therefore, as DSC profiles are associated with mouth feel, the SFC profiles must also affect mouth feel. It would have been obvious to a person having ordinary skill in the art to optimize the solid fat content profiles of the stabilizing fat so as to get the desired mouth feel.
While Heussen does not teach the area under the DSC curve at any specific temperature range, the courts have held that where 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 the claimed product. Whether the rejection is based on "inherency" under 35 USC § 102, or “prima facie obviousness" under 35 USC § 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. In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977). Because the prior art discloses stabilizing fats that are substantially similar to the claimed ones, the claimed fats would be expected to behave in much the same way as the prior art fats.
Regarding the area under the curve between 35°C and 70°C, the courts have held that where 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 the claimed product. Whether the rejection is based on "inherency" under 35 USC § 102, or “prima facie obviousness" under 35 USC § 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. In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977). Therefore, the as the fats are similar, the area under the curve between 35°C and 70°C would also be expected to be <10%.
Shakerardekani discloses the rheological behavior of semi solid food products affecting the preparation, processing, and storage stability of the product [pg. 4228, ¶2]. Rheological behavior is considered to include the rheological inflection midpoint (RIM) as that describes the behavior at different temperatures. It would have been obvious to a person having ordinary skill in the art to adjust RIM21 and RIM-37 so as to get the desired preparation, processing, and storage stability characteristics.
Regarding Claim 15: Martinez as modified discloses as discussed above in claim 1. Martinez discloses that the nut butter can include up to 35 wt.% nut flour (which is commonly known as defatted nut flour) [0019]. Since the nut butter is 20-70 wt.% of the final composition, nut flour would be 7-24.5 wt.% of the product. The claimed value overlaps with and is obvious over the prior art.
Regarding Claim 16: Martinez as modified discloses as discussed above in claim 1. Martinez, Azure, Shakerardekani, Heussen, and FnB disclose a composition comprising a nut butter, protein, fat, and sugar. However, they do not teach the powdered protein and food ingredients including at least 80 wt.% of the particles passing through a No. 325 mesh.
Shakerardekani teaches particle size determining the preparation, processing, and storage stability of the semi-solid food product as well as affecting the shear viscosity [pg. 4228, ¶2]. It would have been obvious to a person having ordinary skill in the art to alter the size of the powdered particles so as to obtain the desired preparation, processing, storage stability, and viscosity of the product.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Martinez, Azure, Shakerardekani, Heussen, and FnB as applied to claim 1 above, and further in view of Mobin (“Whey Protein Vs Soy Protein - Which One To Consider?”).
Regarding Claims 13 and 14: Martinez as modified discloses as discussed above in claim 1. Martinez discloses the use of powdered protein isolates as firming agents, including whey and soybean protein [0024]. However, Martinez does not teach a whey-to-soy protein ratio of the powdered protein component of about 30:70 to about 70:30 nor each powdered protein source being from about 5-15 wt.% of the composition.
Mobin teaches the use of whey and soy protein powders in health products. While the two proteins have the nine essential amino acids, they have different amino acid profiles [pg. 9, “7. Type of Amino Acids”]. The two still have the same basic function so they can be combined. Soy protein products are also much cheaper than whey protein products [pg. 6, “The Final Scoop”]. It would have been obvious to a person having ordinary skill in the art to modify the concentrations and ratios of whey and soy protein powders so as to get the desired amino acid profile in the composition and the desired price.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Erickson et al. (US 2013/0337145) Erickson discloses a shortening particle composition containing [abstract]. Erickson discloses the shortening particle compositions of the invention comprise a plurality of shortening particles wherein the particles comprise a shortening composition that comprises: (i) an interesterified base oil; and (ii) a hardstock fat; wherein the shortening composition has a Solid Fat Content (SFC) profile that fits the equation: y=mx+b where: y is the SFC in % solids; [0008] m is the slope of the SFC profile which ranges from about -0.45 to -1.77 (% solids/.degree. C.); x is the temperature in .degree. C.; and b is the intercept of the SFC profile which ranges from about 40 to about 74 (% solids); and wherein the shortening composition has a Mettler Drop Point of about 54.degree. C. to about 61.degree. C. [0005-0013].
Conclusion
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/Felicia C Turner/ Primary Examiner, Art Unit 1793
