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 .
DETAILED ACTION
Claims 1-43 are cancelled.
Claims 44-64 are pending and examined in the current application.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 44-64 are rejected under 35 U.S.C. 103 as being unpatentable over IDS Reference Ur-Rehman et al., (US 2013/0309354 A1).
Regarding claim 44-46: Ur-Rehman discloses a method of separating milk components and subsequently mixing the separated components in the desired combination and ratio to attain desired milk product. The method comprises ultrafiltering milk to produce a UF permeate fraction and a UF retentate fraction, nanofiltering the UF permeate fraction to produce a NF permeate fraction and a NF retentate fraction, diafiltering the NF retentate fraction to produce a DF/NF permeate fraction and a DF/NF retentate fraction, subjecting the NF permeate fraction, the DF/NF permeate fraction, or a combination thereof, to a reverse osmosis step to produce a concentrated mineral fraction and a milk water fraction; and combining any of the separated milk components in the desired combination and ratio to attain desired products (see Ur-Rehman abstract; paragraphs [0015]-[0037]; figures 1-3), which encompasses claim 44: “combining at least the UF retentate fraction and the mineral concentrate, or at least the UF retentate fraction, the mineral concentrate, and a fat-rich fraction, to form the dairy composition” and the combinations of claims 45-46.
Regarding claims 47 and 51-53: Ur-Rehman discloses the milk product comprises skim milk, or whole milk that is fortified with vitamins (see Ur-Rehman paragraphs [0018] and [0048]).
Regarding claims 48: Ur-Rehman discloses separating a raw milk into the milk product and the fat-rich fraction (see Ur-Rehman paragraphs [0018] and [0019]).
Regarding claims 49 and 54: Ur-Rehman discloses heat treating the milk product and of treating the dairy composition with a lactase enzyme (see Ur-Rehman paragraphs [0030]-[0035]).
Regarding claims 50 and 58-60: Ur-Rehman discloses a method of separating milk components and subsequently mixing the separated components in the desired combination and ratio to attain desired milk product that is similar to the method recited in the claims, but fails to disclose the relative contents of the different fractions and of the separated components as recited in claims 50 and 58-60; However, given the fact the method in Ur-Rehman is similar to the method recited in the claims, it is examiner’s position the relative contents of the different fractions and of the separated components recited in claims 50 and 58-60 are inherently present in Ur-Rahman. As set forth in MPEP §2112.01, "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 his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "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. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claims 50 and 55: Ur-Rehman discloses the concentrated mineral fraction comprises less than or equal to about 0.5 wt. % lactose and at least about 0.3 wt. % minerals and the milk water fraction comprises less than or equal to about 0.1 wt. % lactose and less than or equal to about 0.1 wt. % minerals (see Ur-Rehman table 1).
Regarding claim 56: Ur-Rehman discloses subjecting the DF/NF retentate fraction to a reverse osmosis step and/or a forward osmosis step; and/or a step of diafiltering the UF retentate fraction prior to the nanofiltering step (see Ur-Rehman paragraph [0037]).
Regarding claim 57: Ur-Rehman discloses diafiltering the NF retentate fraction comprises diafiltering a mixture of any of the NF retentate fraction and water, the concentrated mineral fraction, the milk water fraction, the NF permeate fraction (see Ur-Rehman paragraphs [0024]-[0030]).
Regarding claims 61-64: Ur-Rehman discloses separating milk components such as minerals and lactose wherein the final filtered product comprises less than 2wt% lactose and from 0.65wt% to 2wt% minerals (see UR-Rehman paragraphs [0036]-[0038]). Ur-Rehman discloses the concentrated mineral fraction comprises less than or equal to about 0.5 wt. % lactose and at least about 0.3 wt. % minerals and the milk water fraction comprises less than or equal to about 0.1 wt. % lactose and less than or equal to about 0.1 wt. % minerals (see Ur-Rehman table 1), which renders the claimed invention prima facie obvious, as the relative contents overlap (see MPEP §2144.05).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASSAF ZILBERING whose telephone number is (571)270-3029. The examiner can normally be reached M-F 8:30-5:00.
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/ASSAF ZILBERING/Examiner, Art Unit 1792
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