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 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No.12219970. Although the claims at issue are not identical, they are not patentably distinct from each other because
Regarding claims 1,2,8,17-20 The ‘970 patent teaches(claim 1)
A baking ingredient piece, the baking ingredient piece having a melting point between 0° C. and 37° C., and comprising:
a. 2% to 15% by weight gelatin or low methoxyl pectin;
b. 5% to 60% by weight fat; and
c. 40% to 93% by weight water, wherein the baking ingredient piece is configured to be a fat replacement in a dough product.
Regarding claim 3, the ‘970 patent teaches
The baking ingredient piece of claim 1, further comprising starch in an amount of up to about 10%(claim 3).
Regarding claim 4, the ‘970 patent teaches(claim 4)
The baking ingredient piece of claim 1, wherein the baking ingredient piece has a melting point between 20° C. and 37° C.
Regarding claim 5, the ‘970 patent teaches(claim 5)
The baking ingredient piece of claim 1, further comprising a flavorant selected from the group consisting of bacon, lemon, vanilla and butter flavorants.
Regarding claim 6, the ‘970 patent teaches(claim 6)
The baking ingredient piece of claim 1, wherein the baking ingredient piece is frozen.
Regarding claim 7,9, the ‘970 patent teaches
A dough, comprising a plurality of baking ingredient pieces as claimed in claim 1, with each of the baking ingredient pieces being a fat replacement in the dough(claim 7)
wherein the dough is a laminating dough having alternating layers of the dough and the baking ingredient(claim 17).
Regarding claim 10, the ‘970 patent teaches
further comprising solid shortening pieces or an oil(claim 8).
Regarding claim 11, the ‘970 patent teaches
The dough of claim 8, wherein the baking ingredient pieces and solid shortening pieces are included in a ratio of 25:75 to 75:25(claim 9).
Regarding claim 12, the ‘970 patent teaches(claim 10)
The dough of claim 7, wherein the dough is packaged.
Regarding claim 13, the ‘970 patent teaches(claim 11)
A cooked dough-based good, made from a dough as claimed in claim 7.
Regarding claim 14, the ‘970 patent teaches
A method of making a baking ingredient piece having a melting point between 0° C. and 37° C., the method comprising: a. combining gelatin or low methoxyl pectin, fat, and water to produce a liquid mixture having: i. 2% to 15% by weight gelatin or low methoxyl pectin; ii. 5% to 60% by weight fat; and iii. 40% to 93% by weight water; b. allowing the liquid mixture to set to produce a solid or semi-solid composition, wherein the baking ingredient piece is configured to be a fat replacement in a dough product.
Regarding claim 15, the ‘970 patent teaches
The method of claim 15, further comprising a step of heating the liquid mixture to a temperature sufficient to ensure gelling of the gelatin or low methoxyl pectin(claim 13)
Regarding claim 16, the ‘970 patent teaches
The method of claim 12, wherein the step of allowing the liquid mixture to set comprises cooling the liquid mixture and wherein the temperature is reduced to 10° C. or less(claim 13)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE D LEBLANC whose telephone number is (571)270-1136. The examiner can normally be reached 8AM-4PM EST M-F.
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/KATHERINE D LEBLANC/Primary Examiner, Art Unit 1791
