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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign mentioned in the description: 104. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-19 and 26 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "a food item" in line 6. It should be written as "the food item" to follow proper antecedent basis. As claims 2-19 depend from claim 1, they are similarly rejected.
Claim 2 recites “wherein forming the food item by further cooking the cooked protein element in the sealed package without sealing the at least one uncooked dough element to any other element in the package comprises cooking only the uncooked dough element”. It is unclear how both the cooked protein element and the uncooked dough element are cooked, yet only the uncooked dough element is cooked. The terminology “further cooking” appears to convey that both elements undergo a cooking process. For examination purposes this claim will be assumed to mean that both elements undergo a cooking process, but the uncooked dough element is the only one that transforms from uncooked to cooked, as the protein is already cooked so it is effectively a second cook of the protein.
Claim 2 recites “wherein forming the food item by further cooking the cooked protein element in the sealed package without sealing the at least one uncooked dough element to any other element in the package comprises cooking only the uncooked dough element”. It is unclear how cooking the cooked protein element and the uncooked dough element which are sealed in a package together could be performed without cooking the protein element. The claim specifically states that both the protein and dough elements are cooked. Further, as they are together in a package it seems that any cooking process would cook all components within the package. Applicant’s specification does not provide any further detail to explain how this is accomplished. As such, the examiner determines this claim to be unexaminable due to lack of clarity of what applicant is trying to claim (See MPEP 2173.06 II).
Claims 3-4 and 9 recite the limitation "the protein element". These should be written as "the cooked protein element" to follow proper antecedent basis.
Claim 26 recites the limitation "a package" in line 4. It should be written as "the package" to follow proper antecedent basis.
Claim Interpretation
Claim 1-2, 9, 20 and claim 26 recite "without sealing the…element to any other element in the package. "Sealing" and "without sealing," are claimed and disclosed broadly and no further details are given in the specification. The drawings show the elements coming in contact/placed atop one another with each other within a singular packaging, so for examination purposes, "sealing" will mean attached in a manner that cannot be easily removed. Claims 3-8, 10-19, and 21-24 are similarly interpreted as they depend from claim 1.
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, 3, 7-8 and 10-19 are rejected under 35 U.S.C. 102(1)(a) as being anticipated by Bertin (US 9808028 B2), found in copending application # 17/218,447.
Regarding Claim 1, Bertin teaches a method of preparing a food item (method of preparing a food item Col. 1 lines 43-44),
comprising the steps of: placing at least one cooked protein element (second food element, meat Col. 3 lines 27-38; at least one food item can be cooked Col. 3 lines 48-49)
and at least uncooked dough element (first food element, crepe dough or raw puff pastry Col. 3 lines 12-14)
into a package without sealing the at least one uncooked dough element to any other element in the package (placing first food element then second food element in a package base Col. 1 lines 45-47 fig. 4-6). There is no mention of sealing the elements together so it can be assumed that can be removed from each other.
sealing the package without sealing the at least one uncooked dough element to any other element in the package (vacuum sealing package Col. 1 line 49). There is no mention of sealing the elements together so it can be assumed that can be removed from each other.
forming a food item by further cooking the cooked protein element and the uncooked dough element in the sealed package without sealing the at least one cooked bread element to any other element in the package. (forming food item by cooking the first and second elements in the sealed package Col. 1 lines 48-51). There is no mention of sealing the elements together so it can be assumed that can be removed from each other.
Regarding Claim 3, Bertin further teaches the protein element comprises meat or fish (meat Col. 3 lines 27-38).
Regarding Claim 7, Bertin further teaches the at least one uncooked dough element is par- cooked prior to placing the par-cooked bread element in the package (at least one of the food items may be par-cooked Col. 3 lines 43-50).
Regarding Claim 8, Bertin further teaches forming the food item comprises using sous vide cooking to cook the cooked element or elements in the sealed package (the food item is sous vide cooked Col. 2 lines 64-65).
Regarding Claim 10, Bertin further teaches placing cheese in the package prior to sealing the package (cheese Col. 3 lines 27-34).
Regarding Claim 11, Bertin further teaches placing cooked onions in the package prior to sealing the package (onions, can be combination of elements Col. 3 lines 27-34, at least one food element can be cooked Col. 3 lines 48-50).
Regarding Claim 12, Bertin further teaches placing a sauce or condiment in the package prior to sealing the package (chili Col. 3 lines 27-34).
Regarding Claim 13, Bertin further teaches placing seasoning in the package prior to sealing the package (chili, vegetables, cheese Col. 3 lines 27-34). Examiner notes that under broadest reasonable interpretation “seasoning” can encompass any element which adds flavor.
Regarding Claim 14, Bertin further teaches placing a second protein element in the package prior to sealing the package (second element can include a combination of listed elements – sausage, beef, ham, bacon, turkey Col. 3 lines 27-34).
Regarding Claim 15, Bertin further teaches the second protein element is fully cooked prior to placing the second protein element in the package (at least one of the food elements could be cooked prior to placing in the package Col. 3 lines 48-50).
Regarding Claim 16, Bertin further teaches the second kind of protein is cooked or uncooked bacon (bacon Col. 3 lines 27-34, at least one of the food elements could be cooked prior to placing in the package Col. 3 lines 48-50).
Regarding Claim 17, Bertin further teaches the second protein element is cooked prior to placing the second protein element in the package (at least one of the food elements could be cooked prior to placing in the package Col. 3 lines 48-50).
Regarding Claim 18, Bertin further teaches the protein element is ground meat (hamburger and sausage Col. 3 lines 27-34).
Regarding Claim 19, Bertin further teaches the protein element is one of fish, sausage, beef, chicken, turkey, or pork (sausage, beef, chicken, turkey Col. 3 lines 27-34).
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 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Bertin.
Regarding Claim 4, Bertin discloses egg (Col. 3 lines 7-19), but discloses it as a first element rather than the second element (protein element). It further discloses an embodiment in which the second element is not meat, and a preference for the second element to be a protein. This would motivate one to use the egg of the first element as an additional second element.
Bertin does not disclose that the one of egg and egg white are frozen.
Regarding Claim 5, modified Bertin further discloses the one of frozen egg and frozen egg white further comprises cheese (cheese as second element, may be a combination Col. 3 lines 27-42).
Claims 6 and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Bertin in view of Geisler (US 2834677 A).
Regarding Claim 6, Bertin teaches the limitation of claim 1 above. Bertin further teaches the food product may be frozen after cooking (Col. 5 lines 42-48), but it does not teach the uncooked dough element is frozen prior to cooking.
Geisler, in the same field of endeavor, teaches a bread element which is frozen prior to assembly and packaging (sandwich is made with frozen bread and promptly wrapped Col. 1 lines 44-54).
It would have been obvious for one having ordinary skill in the art, at the time of filing, to modify the uncooked dough element of Bertin with the frozen aspect of Geisler. One would have been motivated to make this modification to avoid the liquid content of the filling being absorbed by the dough element (Geisler Col. 1 lines 44-54).
Regarding Claim 24, Bertin teaches a method of preparing a food item (method of preparing a food item Col. 1 lines 43-44),
comprising the steps of: placing at least one cooked protein element (second food element, meat Col. 3 lines 27-38; at least one food item can be cooked Col. 3 lines 48-49)
and at least one uncooked dough element (first food element, crepe dough or raw puff pastry Col. 3 lines 12-14)
into a package (placing first food element then second food element in a package base Col. 1 lines 45-47 fig. 4-6)
sealing the package (vacuum sealing package Col. 1 line 49).
forming a food item by further cooking the cooked protein element and by cooking the at least one uncooked dough element in the sealed package (forming food item by cooking the first and second elements in the sealed package Col. 1 lines 48-51).
Bertin does not teach a frozen dough element.
Geisler, in the same field of endeavor, teaches a bread element which is frozen prior to assembly and packaging (sandwich is made with frozen bread and promptly wrapped Col. 1 lines 44-54).
It would have been obvious for one having ordinary skill in the art, at the time of filing, to modify the uncooked dough element of Bertin with the frozen aspect of Geisler. One would have been motivated to make this modification to avoid the liquid content of the filling being absorbed by the dough element (Geisler Col. 1 lines 44-54).
Regarding Claim 25, modified Bertin further teaches placing the at least one cooked protein element and the at least one frozen uncooked dough element into a package without sealing the at least one frozen uncooked dough element to any other element in the package; sealing the package comprises sealing the package without sealing the at least one frozen uncooked dough element to any other element in the package; and forming the food item by further cooking the cooked protein element and the at least one uncooked dough element in the sealed package comprises forming the food item by further cooking the uncooked protein element and by cooking the at least one uncooked dough element in the sealed package to from a cooked protein element and at least one cooked bread element without sealing the at least one cooked bread element to any other element in the package.
There is no mention of sealing the elements together so it can be assumed that can be removed from each other.
Claims 9, 20, and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Bertin in view of Pfeiffer (US 2003/0044510 A1).
Regarding Claim 9, Bertin teaches the limitations of claim 1 above. Bertin does not teach the protein element is placed between two dough elements without sealing either of the two uncooked dough elements to any other element in the package.
Pfeiffer, in the same field of endeavor, teaches placing a protein element between two dough elements (patty is disposed between two bread roll halves Par. 0016). Further, there is no mention of sealing the elements together so it can be assumed that can be removed from each other.
It would have been obvious for one having ordinary skill in the art, at the time of filing, to modify the invention of Bertin with the dough placement of Pfeiffer. One would have been motivated to make this modification to create a complete ready meal (Pfeiffer Par. 0016).
Regarding Claim 20, Bertin teaches a method of preparing a food item (method of preparing a food item Col. 1 lines 43-44),
comprising the steps: placing cooked ground meat (second food element, hamburger and sausage Col. 3 lines 27-38; at least one food item can be cooked Col. 3 lines 48-49)
and uncooked dough (first food element, crepe dough or raw puff pastry Col. 3 lines 12-14)
in a package without sealing the uncooked dough to anything in the package (placing first food element then second food element in a package base Col. 1 lines 45-47 fig. 4-6). There is no mention of sealing the elements together so it can be assumed that can be removed from each other.
vacuum sealing the package without sealing the uncooked dough to anything in the package (vacuum sealing package Col. 1 line 49). There is no mention of sealing the elements together so it can be assumed that can be removed from each other.
forming a food item by further cooking the ground meat in the sealed package without sealing the uncooked dough to anything in the package (forming food item by cooking the first and second elements in the sealed package Col. 1 lines 48-51). There is no mention of sealing the elements together so it can be assumed that can be removed from each other.
Bertin does not teach two portions of bun.
Pfeiffer teaches two portions of bun (two bread roll halves Par. 0016).
It would have been obvious for one having ordinary skill in the art, at the time of filing, to modify the invention of Bertin with the buns of Pfeiffer. One would have been motivated to make this modification to create a complete ready meal (Pfeiffer Par. 0016).
Regarding Claim 22, Bertin further teaches placing uncooked or cooked bacon in the package prior to sealing the package (can be a combination of listed elements, bacon Col. 3 lines 27-34).
Regarding Claim 23, Bertin further teaches placing at least one of cheese, cooked onions, one or more sauces, and one or more condiments in the package prior to sealing the package (chili, onions, cheese Col. 3 lines 27-34; at least one food element can be cooked Col. 3 lines 48-50).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Bertin in view of Black (US 2008/0248168 A1).
Regarding Claim 21, modified Bertin teaches the limitations of claim 20 above. Bertin further teaches cooking the ground meat in the package (cooking first and second elements in the package Col. 1 lines 48-51), but does not teach browning at least one of the two uncooked portions of the bun.
Black, in the same field of endeavor, teaches browning the dough during cooking (enhancing browning reactions during cooking Par. 0010).
It would have been obvious to one having ordinary skill in the art to further modify the invention of modified Bertin with the browning of Black. One would have been motivated to make this modification to provide a product which may be cooked without thawing that is acceptable to consumers (Black Par. 0010, Abstract).
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 1-19 (in particular Claim 1), 20-23 (in particular Claim 20), and 24-25 (in particular Claim 24) are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-19 (in particular claim 1), 20-24 (in particular Claim 20), and claims 25-26 (in particular Claim 25) of copending Application No. 17/813,416 in view of Bertin.
Regarding claim 1 of the present application, claim 1 of the copending application teaches a method of preparing a food item
comprising the steps of: placing at least one protein element and at least one dough element into a package without sealing the at least one dough element to any other element in the package
sealing the package without sealing the at least one dough element to any other element in the package
forming a food item by cooking the protein element and the dough element in the sealed package without sealing the at least one cooked bread element to any other element in the package (dough element is in the package with the protein element so it can be assumed it is also cooked with the protein element).
It does not teach the protein element is cooked and the dough element is uncooked.
Bertin teaches a cooked protein element (second food element, meat Col. 3 lines 27-38; at least one food item can be cooked Col. 3 lines 48-49)
and an uncooked dough element (first food element, crepe dough or raw puff pastry Col. 3 lines 12-14).
It would have been obvious to one having ordinary skill in the art to modify the invention of the copending application with the cooked protein and uncooked dough of Bertin. One would have been motivated to make this modification to prevent the juices of the protein element to be included in the final product (Bertin Col. 3 lines 43-49) and providing a product which does not require culinary skill of the user and offers consistent results (Col. 5 lines 38-46).
Regarding claim 20 of the present application, claim 20 of the copending application teaches a method of preparing a food item
comprising the steps: placing ground meat and two portions of bun in a package without sealing the two portions of the bun to anything in the package
vacuum sealing the package without sealing the two portions of the bun to anything in the package
forming a food item by further cooking the ground meat in the sealed package without sealing the two portions of the bun to anything in the package.
It does not teach the ground meat in cooked and the two portions of bun are uncooked.
Bertin teaches cooked ground meat (second food element, hamburger and sausage Col. 3 lines 27-38; at least one food item can be cooked Col. 3 lines 48-49)
and an uncooked dough element (first food element, crepe dough or raw puff pastry Col. 3 lines 12-14).
It would have been obvious to one having ordinary skill in the art to modify the invention of the copending application with the cooked ground meat and uncooked dough of Bertin. One would have been motivated to make this modification to prevent the juices of the protein element to be included in the final product (Bertin Col. 3 lines 43-49) and providing a product which does not require culinary skill of the user and offers consistent results (Col. 5 lines 38-46).
Regarding claim 24 of the present application, claim 25 of the copending application teaches a method of preparing a food item
comprising the steps of: placing at least one protein element and at least one frozen uncooked dough element into a package
sealing the package
forming a food item by cooking the protein element and by cooking the at least one frozen uncooked dough element in the sealed package
It does not teach the protein element is cooked.
Bertin teaches a cooked protein element (second food element, meat Col. 3 lines 27-38; at least one food item can be cooked Col. 3 lines 48-49)
It would have been obvious to one having ordinary skill in the art to modify the invention of the copending application with the cooked ground meat and uncooked dough of Bertin. One would have been motivated to make this modification to prevent the juices of the protein element to be included in the final product (Bertin Col. 3 lines 43-49) and providing a product which does not require culinary skill of the user and offers consistent results (Col. 5 lines 38-46).
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARIEL M RODGERS whose telephone number is (571)272-7857. The examiner can normally be reached Monday - Friday 9:00 am - 6:00 pm.
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, Erik Kashnikow can be reached at 5712703475. 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.
/A.M.R./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792