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 .
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 1-2 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Dalibard et al. (US 2010/0215806 A1) in view of MacKenzie (US 2013/0330413 A1) and Guilfoyle et al. (US 2014/0295051 A1).
Regarding claim 1, Dalibard et al. teaches a method for making a “heat-resistant composition” that withstands temperatures greater than 90oC and is to be consumed by animals (paragraph 35), the composition comprising at least one “active principle” including vitamins (paragraph 75) and a coating agent selected from a group consisting of materials including chitin (paragraph 11). The composition comprises from 25-60 wt% of the coating agent (paragraph 16). The composition is made into a granular powder form, heated to a temperature of up to 100oC, pelletized in a granulating press, sized, dried and cooled (paragraphs 91-95). The reference explicitly recites chitin, which is understood to be different from chitosan. Thus, the chitin is construed to “not include chitosan”. The composition provides heat-resistance to components that are “by nature sensitive to heat temperature” (paragraphs 6-7).
Dalibard et al. does not teach the vitamins are water-soluble vitamins and comprise at least 0.005 wt% of the composition, the vitamins including at least 0.004 wt% vitamins B6 and/or B9 relative to the total weight of the composition,
MacKenzie teaches a nutritional composition comprising chitin (abstract), where the composition can include vitamins B6, C, and folic acid (B9) in order to obtain a desired nutritional profile (paragraphs 25 and 27).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Dalibard et al. to use the claimed amount of water-soluble vitamins B6 and/or B9 since the reference already contemplates incorporating vitamins into the composition, since water-soluble vitamins are well understood in the art and commonly added to food products, in order to combine prior art elements according to known methods to yield predictable results, and since the values would have been used during the course of routine experimentation and optimization procedures due to factors such as the type of food, intended user, and desired nutritional profile. Furthermore, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation, In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It is the normal desire of scientists or artisans to improve upon what is already generally known that provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages, In re Peterson, 315 F.3d at 1330, 65 USPQ2d 1379, 1382.
Dalibard et al. does not teach the chitin results from the introduction of an insect meal.
Guilfoyle et al. teaches a method for an arthropod based nutritional supplement (abstract) comprising preparing an arthropod (paragraph 21) by dehydration and blending into a powder form (paragraph 47), mixing the powdered arthropod with additional nutritional or flavoring components e.g., glutamine, vitamin C, flavorings, protein isolate and coconut (paragraphs 48-50, 53 and 56). The chitin results from the introduction of powdered arthropods (paragraph 51), and provide an alternative source of nutrition for individuals with particular dietary needs (paragraph 4). The powdered arthropod is construed to be a type of “insect meal” as disclosed in Applicant’s specification i.e., powder prepared from insects (page 2 line 20). The reference further teaches adding other nutritional components such as vitamin C based on the type of supplement, amount and nutritional profile of the powder (paragraphs 38, 48 and 50).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Dalibard et al. to introduce chitin via insect meal since the reference does not limit the chitin source (see whole document), since the prior art recognizes that chitin can be introduced into food products using insect meal, to provide an alternative source of nutrients for consumers with particular dietary needs, and therefore to combine prior art elements according to known methods to yield predictable results.
Dalibard et al. does not teach degradation of said water-soluble vitamins, salts thereof and/or provitamins thereof is reduced by at least 50% relative to a composition without chitin or avoided during heat treatment.
However, the reference is directed to a “heat-resistant composition” to protect heat sensitive components, said composition capable of withstanding elevated temperatures e.g., 100oC, where the composition includes a coating of chitin as stated above. Further, the combination above teaches the water-soluble vitamins and insect meal as claimed. Applicant’s specification states that the protection occurs due to the presence of chitin in the composition via addition of insect meal (page 5 lines 27-29), where the added insect meal is present in amounts as low as 10 wt% (column 8 line 14).
Since the process of the prior art combination appears to be the same as that of the claimed process, absent evidence to the contrary, it would have been reasonable for one of ordinary skill in the art to expect the process of the prior art combination to exhibit similar reduction or avoidance of vitamin degradation. Additionally, a compound and its properties are inseparable. In re Papesch, 137 USPQ 43 (CCPA 1963).
Regarding claim 2, Dalibard et al. does not teach vitamins from group B and group C of at least 0.05 wt%.
MacKenzie et al. and Guilfoyle et al. teach vitamins group B and C as stated for claim 1.
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Guilfoyle et al. to include the claimed amounts of group B and C vitamins since the reference already teaches adding vitamins as desired, since adding vitamins to foods is well known and commonly practiced in the art, and therefore as a matter of manufacturing preference based on the type of food and animal which the food is intended for, since Applicant discloses in the specification that the quantities of vitamins can be determined by methods well known to a person skilled in the art (page 5 lines 13-14), and since the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as type of food, dietary needs of the consumer, and desired nutritional profile.
Regarding claims 5-7, Dalibard et al. teaches the composition is heated to a temperature of up to 100oC and pelletized in a granulating press (paragraphs 91-93), which would have necessarily applied pressure to the heated composition.
Regarding claim 8, Dalibard et al. teaches pelletizing as stated above, where said process includes pushing the heated composition through a die outlet and cutting to a desired size (paragraphs 94-95 and 163-169). One of ordinary skill in the art would understand the described process as a type of extrusion.
Response to Arguments
Applicant's arguments filed 2/10/2026 have been fully considered but they are not persuasive.
Applicant argues on pages 8-10 that Examiner’s conclusion of obviousness is based on hindsight by selectively combining isolated elements from unrelated references to achieve Applicant’s claimed method, despite the absence of any teaching or suggestion in the cited references that chitin from insect meal would prevent or reduce thermal degradation of water-soluble vitamins. Applicant argues that Dalibard focuses on a composition comprising an enzymatic mixture which is heat-resistant, does not teach or suggest chitin from insect meal would prevent or reduce thermal degradation of water-soluble vitamins, and there is no evidence of record indicating why one of ordinary skill would have selected and modified Dalibard according to the prior art rejection without knowledge of Applicant’s invention.
This is not persuasive since it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
While Dalibard may focus on the enzymatic mixture, the reference nonetheless teaches a “heat-resistant composition”, where heat resistance is one of the “important properties of the composition” at a temperature of greater than 90oC (paragraph 35). The composition includes a coating agent selected from a closed group of alternatives including chitin, the coating agent present in an amount of 25-60 wt% of the composition (paragraphs 11 and 16). The composition includes “active principles” that are generally known to supplement the food intakes of farmed animals, where the active principles include vitamins (paragraph 75). Therefore, the reference suggests to one of ordinary skill in the art that vitamins can be included in chitin-containing compositions that are heat resistant at the claimed temperature.
Regarding the content of water-soluble vitamins, vitamins B6, B9, and C are recognized to be micronutrients useful in animal foods as taught by MacKenzie (paragraphs 27 and 29), where one of ordinary skill would have modified the heat-resistant composition of Dalibard to include such vitamins based on the desired nutritional profile for a particular type of feed and animal as stated for claim 1.
Regarding the chitin resulting from introduction of an insect meal into the composition, the prior art recognizes combining insect meal with vitamin C and other nutrients to obtain a nutritional supplement as taught by Guilfoyle et al. (paragraph 48). Arthropods are known to comprise chitin (paragraph 51).
The above findings teach one of ordinary skill that chitin can be introduced into a composition by way of an insect meal, where the chitin-containing composition of Dalibard is disclosed to exhibit heat resistance at temperatures greater than 90oC. Further, Dalibard teaches the object of the invention is to impart resistance to enzymes which are heat sensitive in order to prevent undesired loss of activity when high temperatures are used (paragraphs 6-7). Vitamins are also understood to be heat sensitive, where both pelleting and extrusion reduce vitamin activity in proportion to the amount of heat applied during processing (see DSM NPL pages 2-3 “Factors affecting vitamin stability” cited in the Office Action of 8/8/2019). One of ordinary skill would have recognized that the heat resistance of Dalibard’s composition can also extend to other sensitive substances such as vitamins, where the motivation to combine would be to similarly ensure against excessive loss of vitamin activity during known heat treatment processes.
Applicant argues on pages 10-12 that Dalibard discloses the coating agent must be capable of forming “a satisfactory film”, and one of ordinary skill in the art would not have added insect meal to the composition of Dalibard since such a film could not be obtained. Applicant argues the claimed invention does not involve any coating step and instead relies on mixing insect meal into the composition such that the chitin is structurally embedded within the bulk matrix thereof, and the fundamentally different approaches would preclude obviousness since there is no reasonable expectation of success.
This is not persuasive since Dalibard teaches “granulation by impregnation of the intermediate base with a coating agent…chitin” (paragraphs 65 and 85), which indicates the chitin can also be distributed throughout the matrix of the intermediate base. It is noted that Dalibard does not particularly limit the composition of the intermediate base itself (paragraphs 74-75). The coating itself does not require modification, and therefore the film-forming property is retained. Further, claim 1 does not positively recite mixing insect meal into the composition to structurally embed chitin in the matrix, and does not exclude a coating layer as argued. The claim only requires a composition comprising at least 1.5% by weight chitin resulting from introduction of an insect meal into the composition. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant’s argument against the dependent claims is not persuasive for the same reasons stated above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/BRYAN KIM/Examiner, Art Unit 1792