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 .
The amendment filed March 30, 2026 is acknowledged. Claims 1, 7-10, 12-13, 15-23, and 25-35 are pending in the application. Claims 2-6, 11, 14, and 24 have been cancelled. Claims 31-35 have been withdrawn from consideration.
Definitions and Claim Interpretation
During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification." The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). Under a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification or the term has been given a special definition in the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) (discussed below); Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372, 69 USPQ2d 1857 (Fed. Cir. 2004).
It is noted that the meaning of the following terms and phrases presented in the claims are determined by the definitions and descriptions provided in the instant specification:
Texturized protein product-solid fibrous product (P2, L27-28).
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, 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, 7-10, 13, 15-23, and 25-30 are rejected under 35 U.S.C. 103 as being unpatentable over Hsieh et al. US 20120093994 (hereinafter “Hsieh”) in view of Carpenter et al. US 3891776 (hereinafter “Carpenter”), Spiel US 3912824 (hereinafter “Spiel”), and Okada US 4880654 (hereinafter “Okada”).
With respect to claim 1 and regarding the claim language of a meat replacement product which is a texturized protein product prepared from a legume material, Hsieh teaches an analog meat composition comprising a structured plant protein product wherein the plant protein material is derived from peas, channa, and/or lupin (legumes) (paragraphs [0033]-[0037] and [0041]-[0045]; and P11, claims 1, 10, and 11).
Regarding the claim language of wherein the meat replacement product is free of soy and/or soy-based material and is prepared from legume material comprising a legume protein and a cereal material comprising bran and a cereal protein isolated from grain, and excluding wheat, wherein the cereal material is selected from oat, barley, rye or any mixture of these as recited in claim 1, Hsieh teaches an analog meat composition comprising structured plant protein product wherein the plant protein material is derived from peas (legume), channa (legume), lupin (legume), oats (cereal), rye (cereal), barley (cereal), and combinations thereof (paragraphs [0033]-[0037] and [0041]-[0045]; and P11, claims 1, 10, and 11). The structured plant protein product may comprise cereal components and edible fiber, such as oat bran, barley bran, and/or rice bran, and the plant proteins may be isolated (paragraphs [0033], [0044]-[0048]; P11-P12, claims 1, 13, & 14).
Regarding the claim language of by cooking in an extruder cooker and extruding to form a texturized protein product as recited in claim 1, this recitation relates to product-by-process language. Applicant is reminded that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”, (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113).
As set forth above, Hsieh teaches a meat replacement product which is a texturized protein product prepared from a legume material (paragraphs [0033]-[0037] and [0041]-[0045]; and P11, claims 1, 10, and 11). Additionally, Hsieh teaches the ingredients are mixed and heated in the extruder and the mass is extruded (paragraph [0063]). Thus, Hsieh meets the claim recitation of “by cooking in an extruder cooker and extruding to form a texturized protein product” in claim 1.
Regarding the claim language of comprises particles having at least a partially fibrous structure of proteinaceous fibers formed during extrusion cooking from proteins contained in the materials as recited in claim 1, Hsieh teaches the ingredients are mixed and heated in the extruder, the mass is extruded, and the product is a fibrous material (Abstract; paragraphs [0002], [0063], and [0074]).
Regarding the claim language of wherein the fibrous structure comprises voids between the fibers, wherein the proteinaceous fibers are three-dimensionally entangled such that at least 40% of the proteinaceous fibers are at an angel of 40-90⁰ in relation to each other and a difference in cutting shear resistance values in three perpendicular directions is less than 30% as recited in claim 1, Hsieh teaches the at least about 55% of the fibers are at an angel of less than approximately 45⁰ in relation to each other (paragraph [0077]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
However, Hsieh does not expressly disclose the fibrous material comprises voids between the fibers and the proteinaceous fibers are three-dimensionally entangled.
Okada teaches preparing a foodstuff having a fibrous structure using vegetable protein (C1, L9-12 and C2, L23-25). The fibrous particles of the foodstuff comprise entangled fibers having a three dimensional reticular structure resembling meat (C1, L60-65; and C3, L16-18).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Okada, to prepare a protein product comprising fibers that are three-dimensionally entangled with voids in the product of Hsieh with the expectation of successfully preparing a protein product of desirable texture. One of ordinary skill in the art would have been motivated to do so because Hsieh and Okada similarly teach protein products prepared from vegetable proteins, Okada teaches the shapes of the fibers are controlled by the rate of mixing, kneading, and beating (C3, L20-28) and the foodstuff has a fibrous structure analogous to meat (C1, L9-12 and 65-66; and C3, L13-16), Hsieh teaches blending and mixing the ingredients (paragraph [0063]) as well as the protein product has desirable qualities, such as texture, similar to animal meat (Abstract; and paragraph [0034]), Hsieh also teaches the ingredients are mixed and heated in the extruder, the mass is extruded, and the product is a fibrous material (Abstract; paragraphs [0002], [0063], and [0074]) which is substantially similar to the fibers formed during extrusion cooking of the presently claimed invention, and such a modification would involve a mere change in configuration. There would have been a reasonable expectation of success with said modification. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding the claim language of a difference in cutting shear resistance values in three perpendicular directions is less than 30% as recited in claim 1, it is noted that this recitation relates to functional language. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04.
Absent any clear and convincing evidence to the contrary, the product would naturally display the claimed difference in cutting shear resistance values since this feature is a function of the combination of ingredients, the three-dimensional entanglement of the fibers, and the angle of the fibers in relation to each other in the texturized protein product which have been shown to be obvious in view of modified Hsieh as addressed above. Additionally, Hsieh teaches the ingredients are mixed and heated in the extruder, the mass is extruded, and the product is a fibrous material (Abstract; paragraphs [0002], [0063], and [0074]) which is substantially similar to the fibers formed during extrusion cooking of the presently claimed invention. Hsieh also teaches the fibers were cut, the shearing action was perpendicular to the fiber orientation, the tongue of the extrusion device and the die pressure are indicative of the tenderness of the extruded plant protein product, and the protein product has desirable qualities, such as texture, similar to animal meat (Abstract; and paragraphs [0034], [0078], and [0099]). Further, the functional language is not considered to confer patentability to the claim.
Regarding the claim language of wherein at least 80 % of the proteinaceous fibers have a length in a range of between 1 - 30 mm and a thickness in a range of between 5 - 35 µm as recited in claim 1, Hsieh does not expressly disclose this feature.
Carpenter teaches protein containing food products (C1, L3-4; and C4, L18-20). The protein ingredient is derived from proteins of vegetable origins such as soyabean, groundnut, or cereals (C1, L8-15). The protein ingredient can comprise fibers of from 2-15 mm in length and a thickness of not greater than 2 mm (C2, L3-20; C2, L62-C3, L1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select any portions of the disclosed ranges, including the instantly claimed ranges of length and thickness, from the ranges disclosed in the prior art references. One of ordinary skill in the art would have been motivated to do so because Hsieh and Carpenter similarly teach products prepared from fibrous vegetable protein material, Hsieh teaches the product has desirable qualities, such as texture, similar to animal meat (Abstract; and paragraph [0034]), Carpenter teaches the fibrous material can be usefully employed in imparting a natural fibrous texture to the product (C2, L17-20), and such a modification would have involved a mere change in the size (or dimension) of a component. There would have been a reasonable expectation of success with said modification. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding the claim language of wherein an oil absorption ratio of the product has been controlled by modifying the particle size distribution to result in the oil absorption ratio of between 8% and 45% such that the product comprises at least 70 weight-% of the particles having a particle size greater than or equal to 1 cm and less than 20 weight-% of the particles having a particle size greater than or equal to 4 cm, whereby 100 weight-% of the particles have a particle size less than or equal to 7 cm as recited in claim 1, Hsieh does not expressly disclose this feature.
Spiel teaches a preparation of a composition derived from proteinaceous plant materials, such as legumes, which is a textured or meat-like material (C1, L8-14). The chunks can have any size range but flour size and smaller (C2, L1-3). Preferred chunks pass through a 1 inch opening screen (2.54 cm) and stay on a one-half inch opening screen (1.27 cm) (C2, L1-3; C5, L34-35 and 58; and C6, L5-8).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select any portions of the disclosed ranges, including the instantly claimed particle size ranges, from the ranges disclosed in the prior art references. One of ordinary skill in the art would have been motivated to do so because Hsieh and Spiel similarly teach protein products prepared from plant protein material, Hsieh teaches the desired dimensions of the product may be selected (paragraphs [0074]-[0075]) and the protein product has desirable qualities, such as texture, similar to animal meat (Abstract; and paragraph [0034]), Spiel teaches the chunks are textured vegetable protein resembling the fibrous structure of meat and have a texture similar to meat (C9, L34-38), and such a modification would have involved a mere change in the size (or dimension) of a component. There would have been a reasonable expectation of success with said modification. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Additionally, the product would naturally display the claimed oil absorption ratio since this feature is a function of the combination of ingredients and the particle size distribution which have been shown to be obvious in view of modified Hsieh as addressed above, absent any clear and convincing evidence to the contrary. Applicant is reminded the broadest reasonable interpretation of a system (or a product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. The claimed structure must be present in the system regardless of whether the condition is met and the function is actually performed. See MPEP 2111.04.
Regarding the claim language of the product is prepared from 50-70 weight-% of the legume material and 30-50 weight-% of the cereal material, calculated as dry matter as recited in claim 1, modified Hsieh does not expressly disclose these ranges.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of legume material and cereal material present in the product of modified Hsieh through routine experimentation to obtain a product with desirable texture properties. One of ordinary skill in the art would have been motivated to do so because Hsieh teaches the plant protein material is derived from combinations of protein material, such as leguminous and cereal proteins (paragraphs [0033]-[0037] and [0041]-[0045]; and P11, claims 1, 10, and 11), the dry ingredients of the product comprises about 2 to about 50% of carbohydrate component (cereal bran) and from about 40% to about 90% of protein (paragraphs [0011]-[0014], [0038], and [0046]-[0048]), the amount of protein present in the product may be varied depending upon the application (paragraph [0038]), fiber (cereal bran) may be used in appropriate amounts to bind water when the mixture is extruded (paragraph [0048]), and the product has desirable qualities, such as texture, similar to animal meat (Abstract; and paragraph [0034]), and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[W]here 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) (MPEP 2144.05 II).
With respect to claim 7, modified Hsieh is relied upon for the teaching of the product of claim 1 which has been addressed above.
Regarding the claim language of the product further comprises vegetable oil, including rape seed oil, sunflower oil, olive oil as recited in claim 7, modified Hsieh teaches this limitation since Hsieh teaches the protein product may comprise one or more edible lipids and the edible lipid material is an edible vegetable oil including rapeseed oil and olive oil (paragraphs [0050]-[0052]).
With respect to claim 8, modified Hsieh is relied upon for the teaching of the product of claim 1 which has been addressed above.
Regarding the claim language of the product has a carbohydrates to protein ratio less than 1 as recited in claim 8, modified Hsieh teaches this limitation since Hsieh teaches the dry ingredients of the product comprises about 2 to about 50% of carbohydrate component and from about 40% to about 90% of protein (paragraphs [0011]-[0014] and [0038]) which provides a carbohydrate to protein ratio of from about .05 to about 1.25 and overlaps the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 9, modified Hsieh is relied upon for the teaching of the product of claim 1 which has been addressed above.
Regarding the claim language of wherein the product further comprises potassium in an amount of between 400 – 1600 mg and/or magnesium in an amount of between 80 – 220 mg as recited in claim 9, Hsieh teaches the product may further comprise mineral nutrient(s) such as magnesium and potassium (paragraphs [0088] and [0092]).
However, modified Hsieh does not expressly disclose the quantity of the potassium or magnesium.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of potassium and magnesium present in the product of modified Hsieh through routine experimentation to obtain a product with desirable nutritional properties. One of ordinary skill in the art would have been motivated to do so because Hsieh teaches the minerals may be included to nutritionally enhance the product (paragraph [0088]), these amounts are a matter of choice and may be adjusted to obtain the desired nutritional properties of the product, and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “W]here 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) (MPEP 2144.05 II).
With respect to claim 10, modified Hsieh is relied upon for the teaching of the product of claim 1 which has been addressed above.
Regarding the claim language of the product further comprises zinc in an amount of between 2-20 mg, phosphorous in an amount of between 600-1200 mg, and/or iron in an amount of 6-20 mg as recited in claim 10, Hsieh teaches the product may further comprise mineral nutrient(s) (paragraphs [0088] and [0092]).
However, Hsieh does not expressly disclose the quantity of the zinc, phosphorous, or iron.
Spiel teaches the protein chunks comprise 81 ppm of zinc (8.1 mg/100 g), .660% phosphorous (660 mg/100 g), and 90.5 ppm iron (9.05 mg/100 g) in one example (C11, L61-C12, L10).
It would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges, including the instantly claimed ranges of zinc, phosphorous, and iron, from the ranges disclosed in the prior art references with the expectation of successfully preparing a nutritional product. One of ordinary skill in the art would have been motivated to do so because Hsieh and Spiel similarly teach protein products prepared from plant protein material, Hsieh teaches the minerals may be included to nutritionally enhance the product (paragraph [0088]), and these amounts are a matter of choice and may be adjusted to obtain the desired nutritional properties of the product. There would have been a reasonable expectation of success with said modification. "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages " In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
With respect to claim 13, modified Hsieh is relied upon for the teaching of the product of claim 1 which has been addressed above.
Regarding the claim language of the product is free of animal-based constituents as recited in claim 13, modified Hsieh teaches this limitation since Hsieh teaches the product may optionally comprise animal constituents (paragraphs [0033], [0079], and [0084]).
With respect to claim 15, modified Hsieh is relied upon for the teaching of the product of claim 1 which has been addressed above.
Regarding the claim language of wherein the product comprises the cereal protein in a range of 5-35 weight-% and/or the legume protein in a total amount in a range of 35-60 weight-% of the cereal material, calculated from a total dry mass of the product as recited in claim 15, modified Hsieh does not expressly disclose these ranges.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of legume protein and cereal protein present in the product of modified Hsieh through routine experimentation to obtain an organoleptically desirable product. One of ordinary skill in the art would have been motivated to do so because Hsieh teaches the plant protein material is derived from combinations of protein material, such as leguminous and cereal proteins (paragraphs [0033]-[0037] and [0041]-[0045]; and P11, claims 1, 10, and 11), the dry ingredients of the product comprises from about 40% to about 90% of protein (paragraphs [0011]-[0014], and [0038]), and the amount of protein present in the product may be varied depending upon the application (paragraph [0038]), and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[W]here 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) (MPEP 2144.05 II).
With respect to claim 16, modified Hsieh is relied upon for the teaching of the product of claim 1 which has been addressed above.
Regarding the claim language of wherein the product comprises bran in an amount of 5-44 weight-%, calculated from a total dry mass of the product as recited in claim 16, modified Hsieh teaches this limitation since Hsieh teaches the dry ingredients of the product comprises about 2 to about 50% of carbohydrate component which includes bran (paragraphs [0011]-[0014] and [0046]-[0048]) and encompasses the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 17, modified Hsieh is relied upon for the teaching of the product of claim 1 which has been addressed above.
Regarding the claim language of the product comprises less than 1 µg/g of acrylamide as recited in claim 17, modified Hsieh does not expressly disclose this feature.
Absent any clear and convincing evidence to the contrary, the product would naturally display the claimed acrylamide content since this feature is a function of the combination of ingredients and Hsieh, as addressed above in claim 1, teaches a product having a fibrous structure comprising a legume protein, cereal protein, and bran that is substantially similar to the presently claimed product.
With respect to claims 18 and 19, modified Hsieh is relied upon for the teaching of the product of claim 1 which has been addressed above.
Regarding the claim language of the product has an oil absorption ratio in a range of 13-15% as recited in claim 18 or 14-35% as recited in claim 19, the product would naturally display the claimed oil absorption ratio since this feature is a function of the combination of ingredients and the particle size distribution which have been shown to be obvious in view of modified Hsieh as addressed above in claim 1, absent any clear and convincing evidence to the contrary. Applicant is reminded the broadest reasonable interpretation of a system (or a product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. The claimed structure must be present in the system regardless of whether the condition is met and the function is actually performed. See MPEP 2111.04.
With respect to claim 20, modified Hsieh is relied upon for the teaching of the product of claim 1 which has been addressed above.
Regarding the claim language of the product is prepared from 56-66 weight-% of the legume material and 34-44 weight-% of the cereal material, calculated as dry matter as recited in claim 20, modified Hsieh does not expressly disclose these ranges.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of legume material and cereal material present in the product of modified Hsieh through routine experimentation to obtain a product with desirable texture properties. One of ordinary skill in the art would have been motivated to do so because Hsieh teaches the plant protein material is derived from combinations of protein material, such as leguminous and cereal proteins (paragraphs [0033]-[0037] and [0041]-[0045]; and P11, claims 1, 10, and 11), the dry ingredients of the product comprises about 2 to about 50% of carbohydrate component (cereal bran) and from about 40% to about 90% of protein (paragraphs [0011]-[0014], [0038], and [0046]-[0048]), the amount of protein present in the product may be varied depending upon the application (paragraph [0038]), fiber (cereal bran) may be used in appropriate amounts to bind water when the mixture is extruded (paragraph [0048]), and the product has desirable qualities, such as texture, similar to animal meat (Abstract; and paragraph [0034]), and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[W]here 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) (MPEP 2144.05 II).
With respect to claims 21 and 22, modified Hsieh is relied upon for the teaching of the product of claim 1 which has been addressed above.
Regarding the claim language of the product has a carbohydrate to protein ratio less than 0.5 as recited in claim 21 or less than 0.35 as recited in claim 22, modified Hsieh teaches these limitations since Hsieh teaches the dry ingredients of the product comprises about 2 to about 50% of carbohydrate component and from about 40% to about 90% of protein (paragraphs [0011]-[0014] and [0038]) which provides a carbohydrate to protein ratio of from about .05 to about 1.25 and overlaps the presently claimed ranges. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 23, modified Hsieh is relied upon for the teaching of the product of claim 1 which has been addressed above.
Regarding the claim language of wherein the cereal material is oat as recited in claim 23, Hsieh teaches the plant protein material is derived from oats (cereal) (paragraphs [0033]-[0037] and [0041]-[0045]; and P11, claims 1, 10, and 11).
With respect to claims 25 and 26, modified Hsieh is relied upon for the teaching of the product of claim 15 which has been addressed above.
Regarding the claim language of wherein the product comprises the cereal protein in a range of 7-25 weight-% and/or the legume protein in a total amount in a range of 37-55 weight-% of the cereal material, calculated from a total dry mass of the product as recited in claim 25 and of wherein the product comprises the cereal protein in a range of 11-17 weight-% and/or the legume protein in a total amount in a range of 41-51 weight-% of the cereal material, calculated from a total dry mass of the product as recited in claim 26, modified Hsieh does not expressly disclose these ranges.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of legume protein and cereal protein present in the product of modified Hsieh through routine experimentation to obtain an organoleptically desirable product. One of ordinary skill in the art would have been motivated to do so because Hsieh teaches the plant protein material is derived from combinations of protein material, such as leguminous and cereal proteins (paragraphs [0033]-[0037] and [0041]-[0045]; and P11, claims 1, 10, and 11), the dry ingredients of the product comprises from about 40% to about 90% of protein (paragraphs [0011]-[0014], and [0038]), and the amount of protein present in the product may be varied depending upon the application (paragraph [0038]), and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[W]here 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) (MPEP 2144.05 II).
With respect to claims 27 and 28, modified Hsieh is relied upon for the teaching of the product of claim 16 which has been addressed above.
Regarding the claim language of wherein the product comprises bran in an amount of 12-40 weight-% as recited in claim 27 or 15-26 weight-% as recited in claim 28, modified Hsieh teaches these limitations since Hsieh teaches the dry ingredients of the product comprises about 2 to about 50% of carbohydrate component which includes bran (paragraphs [0011]-[0014] and [0046]-[0048]) and encompasses the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 29, modified Hsieh is relied upon for the teaching of the product of claim 1 which has been addressed above.
Regarding the claim language of wherein between 8 and 26 weight-% of the particles having a particle size less than or equal to 1 cm; between 66 and 88 weight-% of the particles having a particle size of between 1 cm and less than 4 cm; and between 0 and 16 weight-% of the particles having a particle size of between 4 and less than 7 cm or wherein between 15 and 40 weight-% of the particles having a particle size of between 1 cm and less than 2 cm; between 25 and 45 weight-% of the particles having a particle size of between 2 cm and less than 3 cm; and between 10 and 35 weight-% of the particles having a particle size of between 3 cm and less than 4 cm as recited in claim 29, modified Hsieh does not expressly teach this feature.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of particles having a particle size less than or equal to 1 cm, between 1 cm and less than 4 cm, and between 4 cm and less than 7 cm or having a particle size of between 1 cm and less than 2 cm, between 2 cm and less than 3 cm, and between 3 cm and less than 4 cm in the product of modified Hsieh through routine experimentation to obtain a product with desirable texture properties. One of ordinary skill in the art would have been motivated to do so because Hsieh and Spiel similarly teach protein products prepared from plant protein material, Hsieh teaches the desired dimensions of the product may be selected (paragraphs [0074]-[0075]) and the protein product has desirable qualities, such as texture, similar to animal meat (Abstract; and paragraph [0034]), Spiel teaches the chunks can have any size but flour size and smaller and the size usually ranges up to about one inch (about 2.54 cm) (C2, L1-3; C13, L63-C14, L35), preferred chunks pass through a 1 inch opening screen (2.54 cm) and stay on a one-half inch opening screen (1.27 cm) (C2, L1-3; C5, L34-35 and 58; and C6, L5-8), and sizing is utilized to obtain the characteristic structure of the product (C8, L51-53), and the particle size distribution is a matter of choice and may be adjusted to obtain a product of desired texture. There would have been a reasonable expectation of success with said modification. “[W]here 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) (MPEP 2144.05 II).
With respect to claim 30, modified Hsieh is relied upon for the teaching of the product of claim 1 which has been addressed above.
Regarding the claim language of wherein between 10 and 21 weight-% of the particles having a particle size less than or equal to 1 cm; between 71 and 83 weight-% of the particles having a particle size of between 1 cm and less than 4 cm; and between 0 and 7 weight-% of the particles having a particle size of between 4 and less than 7 cm or wherein between 20 and 35 weight-% of the particles having a particle size of between 1 cm and less than 2 cm; between 30 and 40 weight-% of the particles having a particle size of between 2 cm and less than 3 cm; and between 12 and 34 weight-% of the particles having a particle size of between 3 cm and less than 4 cm as recited in claim 30, modified Hsieh does not expressly teach this feature.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of particles having a particle size less than or equal to 1 cm, between 1 cm and less than 4 cm, and between 4 cm and less than 7 cm or having a particle size of between 1 cm and less than 2 cm, between 2 cm and less than 3 cm, and between 3 cm and less than 4 cm in the product of modified Hsieh through routine experimentation to obtain a product with desirable texture properties. One of ordinary skill in the art would have been motivated to do so because Hsieh and Spiel similarly teach protein products prepared from plant protein material, Hsieh teaches the desired dimensions of the product may be selected (paragraphs [0074]-[0075]) and the protein product has desirable qualities, such as texture, similar to animal meat (Abstract; and paragraph [0034]), Spiel teaches the chunks can have any size but flour size and smaller and the size usually ranges up to about one inch (about 2.54 cm) (C2, L1-3; C13, L63-C14, L35), preferred chunks pass through a 1 inch opening screen (2.54 cm) and stay on a one-half inch opening screen (1.27 cm) (C2, L1-3; C5, L34-35 and 58; and C6, L5-8), and sizing is utilized to obtain the characteristic structure of the product (C8, L51-53), and the particle size distribution is a matter of choice and may be adjusted to obtain a product of desired texture. There would have been a reasonable expectation of success with said modification. “[W]here 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) (MPEP 2144.05 II).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Hsieh et al. US 20120093994 (hereinafter “Hsieh”) in view of Carpenter et al. US 3891776 (hereinafter “Carpenter”), Spiel US 3912824 (hereinafter “Spiel”), and Okada US 4880654 (hereinafter “Okada”) as applied to claim 1 above, and in further view of Kudo et al. US 4204005 (hereinafter “Kudo”).
With respect to claim 12, modified Hsieh is relied upon for the teaching of the product of claim 1 which has been addressed above.
Regarding the claim language of wherein the cereal material further comprises whole grain cereal and cereal bran as recited in claim 12, Hsieh teaches the protein product comprises cereal components including cereal protein and cereal fiber such as bran (paragraphs [0033] and [0044]-[0048]; and P11-P12, claims 1, 10, 11, 13, and 14).
However, modified Hsieh does not expressly disclose the cereal components include whole grain cereal.
Kudo teaches preparing fibrous protein foods from combinations of two or more natural food materials (C1, L7-22 and 58-61; C3, L61-63; and C5, L22-23). The raw materials include cereals and beans (C1, L7-22; C3, L49-58 and 61-63; and C5, L6-23). The raw materials are used without any particular pre-treatment and whole grains can be used and converted into fibers to prepare the fibrous protein food (C1, L44-51; C2, L36-39; and C3, L41-43).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Kudo, to select whole grain cereal in modified Hsieh based in its suitability for its intended purpose with the expectation of successfully preparing a protein product of desired texture. One of ordinary skill in the art would have been motivated to do so because Hsieh and Kudo similarly teach preparing fibrous protein products comprising cereal and leguminous materials, Hsieh teaches the protein product has desirable qualities, such as texture, similar to animal meat (Abstract; and paragraph [0034]), Kudo teaches when whole raw materials including their skins, fibers, and fat, are used, the fibrous matter and fat are mixed with the protein and result in bringing about better texture and taste to the product (C3, L43-49) and the fibrous protein food product has a meat-like texture (C1, L23-27), and said combination would amount to use of a known element for its intended use in a known environment to accomplish entirely expected result. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Response to Arguments
Applicant’s remarks filed March 30, 2026 are acknowledged.
Due to the amendments to the claims, the 35 USC 112 rejection in the previous Office Action has been withdrawn (P9).
Applicant’s arguments have been fully considered, but they are unpersuasive.
Applicant argues none of the references, alone or in combination, teaches or suggests at least "the meat replacement product is free of soy and/or soy-based material and is prepared from legume material comprising a legume protein and a cereal material comprising bran and a cereal protein isolated from grain, and excluding wheat ... wherein the product is prepared from 50-70 weight-% of the legume material and 30-50 weight-% of the cereal material, calculated as dry matter," as recited in amended independent claim 1. Hsieh discloses an analog meat composition based on structured plant protein wherein all eight working examples use soy protein isolate as the sole protein ingredient, combined with amaranth flour, carrot fiber, and canola oil. While Hsieh's claim 11 broadly enumerates oats, rye, and barley among possible protein sources alongside soy, peas, and wheat, this listing is not accompanied by any example, working embodiment, or specific technical guidance directed to a product that affirmatively excludes both soy and wheat simultaneously. Hsieh never teaches a product making that deliberate compositional choice, and such a product is not rendered obvious by the mere appearance of oats and peas on a list of possible ingredients in a claim. In Hsieh the cereal-derived components, namely, amaranth flour and carrot fiber, function exclusively as binding or texturing adjuncts, not as co-equal structural ingredients contributing independent protein. Hsieh expressly treats leguminous materials only as sources of starch or minor protein fractions in the context of the carbohydrate component, not as the dominant protein-contributing material in a defined weight ratio (see Hsieh [0011], [0012], [0031], and [0038].). There is accordingly no basis in Hsieh for the specific and exclusive combination of non- soy legumes with non-wheat cereals (oat, barley, rye) in the defined weight ratio of 50-70 weight- % legume to 3 0-50 weight-% cereal material, calculated as dry matter, as recited in amended claim 1. The Office Action's assertion that arriving at the claimed ratio would constitute routine optimization is not supported by factual basis in the record, and no such reason has been identified in any of the cited references (P9-P10 and P15).
Examiner disagrees. Although Hsieh teaches using soy protein isolate in the examples and typical sources for starch are cereals and legumes, Hsieh is not limited to the examples or only using cereals and legumes as a source of starch since the reference also teaches an analog meat composition comprising structured plant protein product wherein the plant protein material is derived from peas (legume), channa (legume), lupin (legume), oats (cereal), rye (cereal), barley (cereal), and combinations thereof (paragraphs [0033]-[0037] and [0041]-[0045]; and P11, claims 1, 10, and 11). However, “Applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
Additionally, there is ample motivation within Hsieh to arrive at the claimed quantities of legume material and cereal material. As previously addressed, one of ordinary skill in the art would have been motivated to optimize the amount of legume material and cereal material present in the product of modified Hsieh through routine experimentation to obtain a product with desirable texture properties because Hsieh teaches the plant protein material is derived from combinations of protein material, such as leguminous and cereal proteins (paragraphs [0033]-[0037] and [0041]-[0045]; and P11, claims 1, 10, and 11), the dry ingredients of the product comprises about 2 to about 50% of carbohydrate component (cereal bran) and from about 40% to about 90% of protein (paragraphs [0011]-[0014], [0038], and [0046]-[0048]), the amount of protein present in the product may be varied depending upon the application (paragraph [0038]), fiber (cereal bran) may be used in appropriate amounts to bind water when the mixture is extruded (paragraph [0048]), and the product has desirable qualities, such as texture, similar to animal meat (Abstract; and paragraph [0034]), and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here 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) (MPEP 2144.05 II).
Applicant argues products based on soy have unpleasant textures and flavors, including a gummy or beany taste, and lack the desired crispy texture after frying. The ability to produce an acceptable fibrous structure without wheat gluten is identified as a surprising result, directly contrary to the expectation of a skilled artisan familiar with the functional role of gluten in protein texturization. It is unexpected that a texturized product with high protein content can be prepared without using soy or soy-based material. The application further explains that soy exclusion addresses allergenicity concerns and facilitates GMO-free production-additional technical benefits not suggested by any cited reference. The specific legume/cereal ratio of 50-70/30-50 weight-T enables the product to be optimized not only for structural performance but also for balanced micronutrient content, which is a further unexpected results arising from the claimed composition. These unexpected results, documented in the specification, constitute evidence rebutting any prima facie case of obviousness. None of the cited references acknowledge these effects, and none suggests that the simultaneous exclusion of both soy and wheat while maintaining the recited proportions would produce a texturized product with the claimed structural and organoleptic properties (P11 and P16).
Examiner disagrees. As previously addressed, Hsieh teaches preparing a meat replacement product from legume material and cereal material that is free from soy and soy-based material and excludes wheat, and the claimed proportions of legume material and cereal material are obvious in view of the prior art. Additionally, the features as described by the Applicant are indeed expected in view of Hsieh since the reference teaches that meat analog compositions having qualities (e.g., texture, mouthfeel, and flavor) similar to that of whole muscle animal meat may be produced using structured plant protein products formed using extrusion, and selecting the ingredients of the meat analog composition to nutritionally enhance the product (paragraphs [0034] and [0088]). Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (differences in sedative and anticholinergic effects between prior art and claimed antidepressants were not unexpected). In other words, the unexpectedness must be sufficient “to secure the validity of the claims in suit.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1381 (Fed. Cir. 2005) and MPEP 716.02.
Applicant argues microscale fibers in the 5-35 pm range produce fundamentally different structural, textural, and mouthfeel properties than the millimeter-scale extruded filaments and ribbons of Carpenter. The difference between these ranges is one of kind, not merely degree, and no reference in the combination teaches, discloses, or provides motivation to arrive at the 5-35 pm range (P11-P12 and P15).
Examiner disagrees. The Examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation to combine the references is found within the references themselves as well as in the knowledge generally available to one of ordinary skill in the art.
As addressed above, Carpenter is relied upon for the teaching of the claimed thickness. Carpenter teaches the protein ingredient can comprise fibers with a thickness of not greater than 2 mm which encompasses the presently claimed range of 5-35 µm (C2, L3-20; C2, L62-C3, L1). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). One of ordinary skill in the art would have been motivated to select any portions of the disclosed range, including the instantly claimed range of thickness, from the range disclosed in the prior art because Hsieh and Carpenter similarly teach products prepared from fibrous vegetable protein material, Hsieh teaches the product has desirable qualities, such as texture, similar to animal meat (Abstract; and paragraph [0034]), Carpenter teaches the fibrous material can be usefully employed in imparting a natural fibrous texture to the product (C2, L17-20), and such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Applicant argues the fiber orientation and shear isotropy requirements are not taught by the applied references, and the overlapping ranges doctrine does not apply. Hsieh’s fiber alignment is a two-dimensional visual determination made in a single horizontal plane. The three-dimensional structural characterization of fiber entanglement is not a measurement of planar alignment and are fundamentally different measurements of fundamentally different structural properties. Hsieh’s two-dimensional alignment data says nothing about three-dimensional fiber entanglement or shear isotropy. Hsieh’s product is anisotropic by design. Claim 1 is a recitation of structural isotropy that is the direct opposite of what Hsieh seeks to achieve. This is not a matter of degree; it reflects a different structural principle and a different design objective. The recitation that “a difference in cutting shear resistance values in three perpendicular directions is less than 30%” is a quantitative structural characteristic of the product, expressed as a measurable ratio. It is not a statement of intended use or purpose, rather it is a physical property of the product itself, confirmed by the specification at paragraph [0043]). This is a functional, quantifiable mechanical outcome tied to a specific structural feature of the claimed product, and it distinguishes the claim from the prior art as a matter of structure, not merely language. The proposed combination of Hsieh and Okada is improper because it would fundamentally destroy the operating principle of Hsieh’s process and product. Introducing Okada’s entanglement mechanism into Hsieh’s process would require abandoning the cooling die alignment that is the foundation of Hsieh’s technical disclosure. There is no reasonable expectation of success. Okada’s description of fiber entanglement is qualitative only because it discloses no fiber orientation percentages, no measurement of shear resistance in multiple directions, and no quantitative shear anisotropy parameter whatsoever. Even accepting the combination of Hsieh and Okada for argument’s sake, there is no basis in either reference for concluding that the combination would produce a product in which “at least 40% of the proteinaceous fibers are at an angle of 40-90⁰ in relation to each other and a difference in cutting shear resistance values in three perpendicular directions is less than 30%,” as recited in independent claim 1 (P12-P15).
Examiner disagrees. The Examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation to combine the references is found within the references themselves as well as in the knowledge generally available to one of ordinary skill in the art.
While Hsieh does not expressly disclose the proteinaceous fibers are three-dimensionally entangled, Okada is relied upon for this teaching since Okada teaches fibrous particles of the foodstuff comprise entangled fibers having a three dimensional reticular structure resembling meat (C1, L60-65; and C3, L16-18). One of ordinary skill in the art would have been motivated to prepare a protein product comprising fibers that are three-dimensionally entangled in the product of Hsieh with the expectation of successfully preparing a protein product of desirable texture because Hsieh and Okada similarly teach protein products prepared from vegetable proteins, Okada teaches the shapes of the fibers are controlled by the rate of mixing, kneading, and beating (C3, L20-28) and the foodstuff has a fibrous structure analogous to meat (C1, L9-12 and 65-66; and C3, L13-16), Hsieh teaches blending and mixing the ingredients (paragraph [0063]) as well as the protein product has desirable qualities, such as texture, similar to animal meat (Abstract; and paragraph [0034]), Hsieh also teaches the ingredients are mixed and heated in the extruder, the mass is extruded, and the product is a fibrous material (Abstract; paragraphs [0002], [0063], and [0074]) which is substantially similar to the fibers formed during extrusion cooking of the presently claimed invention, and such a modification would involve a mere change in configuration. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Additionally, even though Okada does not disclose all the features of the presently claimed invention, Okada is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Further, as stated in MPEP 2145 III., “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]I is not necessarily that the inventions of the references be physically combinable to render obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve the ability to combine their specific structures.”).
Also, absent any clear and convincing evidence to the contrary, the product would naturally display the claimed difference in cutting shear resistance values since this feature is a function of the combination of ingredients, the three-dimensional entanglement of the fibers, and the angle of the fibers in relation to each other in the texturized protein product which have been shown to be obvious in view of modified Hsieh as addressed above. Additionally, Hsieh teaches the ingredients are mixed and heated in the extruder, the mass is extruded, and the product is a fibrous material (Abstract; paragraphs [0002], [0063], and [0074]) which is substantially similar to the fibers formed during extrusion cooking of the presently claimed invention. Hsieh also teaches the fibers were cut, the shearing action was perpendicular to the fiber orientation, the tongue of the extrusion device and the die pressure are indicative of the tenderness of the extruded plant protein product, and the protein product has desirable qualities, such as texture, similar to animal meat (Abstract; and paragraphs [0034], [0078], and [0099]).
Further, while the testing in Hsieh is different than that used in the instant invention, modified Hsieh teaches the invention as presently claimed and addressed above. Applicant has failed to show that modified Hsieh is incapable at arriving at the claimed invention. Applicant is reminded that mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) (Claims were directed to grooved carbon disc brakes wherein the grooves were provided to vent steam or vapor during a braking action. A prior art reference taught noncarbon disc brakes which were grooved for the purpose of cooling the faces of the braking members and eliminating dust. The court held the prior art references when combined would overcome the problems of dust and overheating solved by the prior art and would inherently overcome the steam or vapor cause of the problem relied upon for patentability by applicants. Granting a patent on the discovery of an unknown but inherent function (here venting steam or vapor) "would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art." 596 F.2d at 1022, 201 USPQ at 661.); In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Appellant argued that the presence of DEHP as the plasticizer in a blood collection bag unexpectedly suppressed hemolysis and therefore rebutted any prima facie showing of obviousness, however the closest prior art utilizing a DEHP plasticized blood collection bag inherently achieved same result, although this fact was unknown in the prior art.).
Applicant argues Hsieh does not measure, disclose, or suggest oil absorption as a property of the product, and discloses no relationship between particle size distribution and oil absorption. Spiel discloses particle size ranges for compacted soybean chunks but similarly makes no reference to oil absorption and does not suggest any relationship between particle size and oil absorption behavior. Neither reference, alone or in combination, provides any basis for the Office Action's assertion that the claimed oil absorption ratio would "naturally" arise from the modified Hsieh product. The Office Action's inherency position conflates two distinct issues. Even accepting that oil absorption is influenced by physical structure in general, this does not establish that the prior art discloses or suggests "modifying the particle size distribution to result in the oil absorption ratio of between 8% and 45%." (P14-P16).
Examiner disagrees. The product would naturally display the claimed oil absorption ratio since this feature is a function of the combination of ingredients and the particle size distribution which have been shown to be obvious in view of modified Hsieh as addressed above, absent any clear and convincing evidence to the contrary. Applicant is reminded the broadest reasonable interpretation of a system (or a product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. The claimed structure must be present in the system regardless of whether the condition is met and the function is actually performed. See MPEP 2111.04.
Further, modified Hsieh teaches the presently claimed particle sizes, and Applicant has failed to show that modified Hsieh is incapable at arriving at the claimed oil absorption ratio. Applicant is reminded that mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) (Claims were directed to grooved carbon disc brakes wherein the grooves were provided to vent steam or vapor during a braking action. A prior art reference taught noncarbon disc brakes which were grooved for the purpose of cooling the faces of the braking members and eliminating dust. The court held the prior art references when combined would overcome the problems of dust and overheating solved by the prior art and would inherently overcome the steam or vapor cause of the problem relied upon for patentability by applicants. Granting a patent on the discovery of an unknown but inherent function (here venting steam or vapor) "would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art." 596 F.2d at 1022, 201 USPQ at 661.); In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Appellant argued that the presence of DEHP as the plasticizer in a blood collection bag unexpectedly suppressed hemolysis and therefore rebutted any prima facie showing of obviousness, however the closest prior art utilizing a DEHP plasticized blood collection bag inherently achieved same result, although this fact was unknown in the prior art.).
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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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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