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 June 26, 2026 is acknowledged. Claims 1-3, 5, 7-11, 13, 14, 16-19, 22, 24, 33, and 34 are pending in the application. Claims 4, 6, 12, 15, 20, 21, 23, and 25-32 have been cancelled.
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 1-3, 5, 7-11, 13, 14, 16-19, 22, 24, 33, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Swenson US 20080233244 (hereinafter “Swenson”) in view of Teleki US 20150297522 (hereinafter “Teleki”) and Mao et al. WO 2016176465 (hereinafter “Mao”).
With respect to claim 1, Swenson teaches a process of producing moist animal food compositions for a companion animal (paragraphs [0082]-[0084], [0101], and [0102]).
Regarding the recitation of “for preparing a pet food product” in the preamble of claim 1, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of said process comprising:(i) providing a composition comprising zein protein in claim 1, Swenson teaches the protein source may be from a plant, such as corn, and suitable corn derived protein-containing ingredients include corn gluten meal, for example, zein (paragraphs [0030] and [0033)).
Regarding the recitation of comprising (ii) extruding the composition from step (i) to denature said zein protein to provide a composition comprising denatured zein protein, wherein the denatured zein protein is in micro-particulate form, has a particle diameter of at least about 75 µm and less than about 1000 µm, has a D(v,90) value less than about 750 µm, and has a degree of denaturation of at least about 75% in claim 1, Swenson teaches extruding the plant protein source to denature the protein (zein protein) (paragraphs [0025], [0026], [0029]-[0033], [0046], and [0063]).
Swenson does not expressly disclose a degree of denaturation of at least about 75%. However, 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 degree of denaturation of the plant protein (zein protein) in the method of Swenson through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Swenson teaches adjusting extrusion parameters such as temperature to denature the protein and achieve the desired properties (paragraphs [0051] and [0063]), 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).
Additionally, Swenson does not expressly disclose the denatured protein is in microparticulate form, has a particle diameter of at least about 75 µm and less than about 1000 µm, and has a D(v,90) value less than about 750 µm.
Teleki teaches obtaining discrete solid particles with a particle diameter lower than 1000 µm, preferably lower than 700 µm, by extruding maize (corn) proteins, and the extruded particles may be used in food or feed products (paragraphs [0011], [0033], [0035], [0037], [0088], [0091], and [0115]-[0117]).
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 particle diameter, including the instantly claimed diameter and D(v,90) value, from the ranges disclosed in the prior art reference with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Swenson and Teleki similarly teach extrusion of corn (maize) protein containing material under similar conditions and using the extruded material in foodstuff (Swenson: [0029]-[0033], [0060], [0063], [(0101]-[0102]; and Teleki: paragraphs [0033], [0035], [0037], [0071], [0074], and [0115]-[0117]), Teleki teaches the obtained products have good storage stability (paragraphs [0118]), and Swenson teaches shearing is applied to the zein protein containing material during extrusion and the extrudate may be further comminuted to reduce the average particle size (paragraphs [0060] and [0072]). There would have been a reasonable expectation of success. "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.
Regarding the recitation of comprising (iii) mixing said composition comprising denatured zein protein with animal protein to form said pet food product in claim 1, modified Swenson teaches this limitation since Swenson teaches mixing animal meat with the structured (denatured) plant protein to form the companion animal food product (paragraphs [0082]-[0084] and [0101]-[0102]).
Regarding the recitation of (iv) preparing a slurry from the mixture of step (iii) and subjecting the slurry to conditions of shear to produce an emulsion of said mixture; (v) heating the emulsion of step (iv) to an internal temperature of at least 700C wherein the duration of heating is at least 30 seconds; and (vi) forming discrete pieces of the heated emulsion to produce the pet food product in claim 1, Swenson does not disclose these steps.
Mao teaches a method of making a wet pet food product by preparing a slurry from a mixture animal material and vegetable protein material, shearing the slurry to produce an emulsion, heating the emulsion to a temperature of at least 70⁰C for at least 30 seconds, and forming discrete pieces (Abstract; and paragraphs [0001], [0023], [0029], [0032], [0071], [0080], [0083], and [0084]).
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 Mao, to select the steps of preparing a slurry, shearing the slurry to produce an emulsion, heating the emulsion, and forming discrete pieces in the method of modified Swenson with the expectation of successfully preparing a functional companion animal food product. One of ordinary skill in the art would have been motivated to do so because Swenson and Mao similarly teach the preparation of animal wet/moist food products comprising similar ingredients, Swenson teaches mixing the animal meat composition with the structured plant protein material at elevated temperature and forming the animal food composition according to methods generally known in the art (paragraphs [0084] and [0112]), and said combination would amount to the use of known process steps for their intended use in a known environment to accomplish entirely expected result. There would have been a reasonable expectation of success with said modification. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
Regarding the recitation of wherein said pet food product is further combined with a sauce or gravy to provide a chunk-in-sauce product that is retort-stable in claim 1, Swenson does not expressly disclose this limitation.
Mao teaches a method of making a wet pet food product by mixing animal material and vegetable protein material, forming discrete pieces, and combining the pieces with sauce to prepare a chunks-and-gravy product (Abstract; and paragraphs [0001], [0023], [0029], [0032], [0070], [0071], and [0084)).
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 Mao, to select the step of combining the mixture of animal meat and structured (denatured) plant protein with sauce or gravy in the method of modified Swenson with the expectation of successfully preparing a functional companion animal moist food product in a chunk-in-sauce form that is retort-stable. One of ordinary skill in the art would have been motivated to do so because Swenson and Mao similarly teach the preparation of wet/moist animal food products comprising similar ingredients, Mao teaches wet or high moisture content products are generally most palatable to pets as well as retorting the composition (paragraphs [0002] and [0084]), Swenson teaches the animal meat composition and the structured plant protein material mixture may be combined with additional ingredients to form the moist food product, the palatability level increases as the moisture level is increased, and the composition may be subjected to further processing applications (e.g., such as retorting) (paragraphs [0003], [0084], [0102], and [0112]), and said combination would amount to the use of a known process step 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 combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
Regarding the recitation of wherein said pet food product comprises a blended proteinaceous matrix or network of animal protein and denatured zein protein in claim 1, modified Swenson teaches this limitation since Swenson teaches blending animal meat, water, and structured (denatured) plant protein (zein protein) to prepare the food product (paragraphs [0033], [0082]-[0084], and [0101]-[0102]).
With respect to claim 2, modified Swenson is relied upon for the teaching of the process of claim 1.
Regarding the recitation of wherein said pet food product is a wet pet food in claim 2, modified Swenson teaches this limitation since Swenson teaches the companion animal food product is a moist animal food composition (moisture content of about 40% to about 85%) (paragraphs [0003] and [0102]).
With respect to claim 3, modified Swenson is relied upon for the teaching of the process of claim 1.
Regarding the recitation of wherein said pet food product comprises reconstituted animal material in claim 3, modified Swenson teaches this limitation since Swenson teaches blending dehydrated animal meat, water, and the structured (denatured) plant protein (zein protein) to prepare the food product (paragraphs [0033], [0082]-[0084] and [0101]-[0102]).
With respect to claim 5, modified Swenson is relied upon for the teaching of the process of claim 1.
Regarding the recitation of wherein the animal protein comprises ground animal material in claim 5, modified Swenson teaches this limitation since Swenson teaches the animal meat may be ground or comminuted (paragraphs [0022], [0023], [0082]-[0085], and [0115]).
With respect to claim 7, modified Swenson is relied upon for the teaching of the process of claim 1.
Regarding the recitation of wherein said treating step (ii) comprises an application of mechanical energy to denature said zein protein in claim 7, modified Swenson teaches this limitation since Swenson teaches the plant protein source (zein protein) is fed into an extruder that mechanically shears the material and denatures the protein (paragraphs [0025], [0026], [0029]-[0033], [0046], [0060], and [0063]).
With respect to claim 8, modified Swenson is relied upon for the teaching of the process of claim 1.
Regarding the recitation of wherein said treating step (ii) comprises passing said composition comprising zein protein through a twin-screw extruder in claim 8, modified Swenson teaches this limitation since Swenson teaches the plant protein source is passed through a twin screw extruder to denature the protein (zein protein) (paragraphs [0025], [0026], [0029]-[0033], [0046], [0060], and [0063]).
With respect to claim 9, modified Swenson is relied upon for the teaching of the process of claim 1.
Regarding the recitation of wherein said treating step (ii) is conducted at a temperature in the range of from about 1000C to about 1600C in claim 9, modified Swenson teaches this limitation since Swenson teaches the extrusion step is performed at temperatures from about 100⁰C to about 180⁰C (paragraph [0063]) and overlaps with 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 10, modified Swenson is relied upon for the teaching of the process of claim 1.
Regarding the recitation of wherein said composition comprising zein protein of step (i) is in powder form in claim 10, modified Swenson teaches this limitation since Swenson teaches the protein source may be from a plant, such as corn, and suitable corn derived protein-containing ingredients include corn gluten meal, for example, zein (paragraphs [0030], [0033], [0113], and [0118]).
With respect to claim 11, modified Swenson is relied upon for the teaching of the process of claim 1.
Regarding the recitation of wherein prior to or during said treating step (ii) an aqueous medium is added to said composition comprising zein protein in amount such that the weight ratio of said composition to said aqueous medium is from about 70:30 to about 60:40 in claim 11, modified Swenson teaches this limitation since Swenson teaches contacting the plant protein source with water prior to extrusion. The mixture may contain from about 1% to about 80% water (a weight ratio of composition to water of about 99:1 to 20:80) (paragraph [0057]) which overlaps with 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 13, modified Swenson is relied upon for the teaching of the process of claim 1.
Regarding the recitation of wherein said treating step (ii) comprises adjusting the pH of the composition to a pH of no more than 7.00 in claim 13, modified Swenson teaches this limitation since Swenson teaches adjusting the pH of the composition to below approximately 7.0 by contacting the plant protein material with a pH-lowering agent and extruding the mixture (paragraphs [0107]-[0108]).
With respect to claim 14, modified Swenson is relied upon for the teaching of the process of claim 1.
Regarding the claim language of wherein said treating step (ii) avoids formation of gelled zein protein during performance of said step (ii) in claim 14, modified Swenson teaches this limitation since Swenson teaches the process step (ii) as described above in claim 1 and is silent with respect to the formation of gelled plant protein (zein protein) during the extrusion step (paragraphs [0025], [0026], [0029]-[0033], [0046], and [0063]).
With respect to claim 16, modified Swenson is relied upon for the teaching of the process of claim 1.
Regarding the recitation of wherein said denatured zein protein provide by step (ii) is in micro-particulate form such that the micro-particulate forms are non-aggregated in claim 16, Swenson as modified by Teleki teaches this limitation since Teleki is relied upon for the teaching of micro-particulate form as addressed above in claim 1, and Teleki is silent with respect to the discrete solid extruded particles being agglomerated (paragraphs [0011] and [0088]).
With respect to claim 17, modified Swenson is relied upon for the teaching of the process of claim 1.
Regarding the recitation of wherein said denatured zein protein provided by step (ii) is in particulate form such that the particle diameter is no greater than a particle diameter of the native zein protein from which it is derived in claim 17, Swenson as modified by Teleki teaches this limitation since the instant specification asserts that the particle size of the native zein protein (i.e., without denaturation) is 800 µm (P 20, L22-23; and P20, L35-P21, top: Table 1), Teleki is relied upon for the teaching of micro-particulate form as addressed above in claim 1 which has a particle size lower than 1000 µm and preferably lower than 700 µm (paragraph [0088]), and the discrete solid extruded zein particles of Swenson in view of Teleki are smaller than the particle size of the native zein protein.
With respect to claims 18 and 19, modified Swenson is relied upon for the teaching of the process of claim 1.
Regarding the recitation of wherein prior to or during treating step (ii), one or more water-dispersible material(s) is added to the composition comprising zein protein in claim 18 and wherein said one or more water-dispersible material(s) is selected from proteins, plant-derived proteins, hydrocolloids, or gums in claim 19, modified Swenson teaches this limitation since Swenson teaches the plant protein material (zein protein) is combined with other ingredients, such as sugars, starches, oligosaccharides, soy fiber, other dietary fibers, gluten, pectin, gum, and mixtures thereof, and optionally other protein material(s), and the mixture is extruded (paragraphs [0025], [0026], [0029]-[0033], [0042], [0046], [0063], [0092], and [0145]).
With respect to claim 22, modified Swenson is relied upon for the teaching of the process of claim 1.
Regarding the recitation of wherein between steps (ii) and (iii) said composition comprising denatured zein protein is dried, collected and stored for subsequent use in said process for the preparation of a pet food product in claim 22, Swenson as modified by Teleki teaches this limitation since Swenson teaches the extruded protein material may be dried and the dried material may be used immediately or stored (paragraph [0072]), and Teleki teaches the obtained products have good storage stability and may be used in food or feed (paragraphs [0033] and [0115]-[0118]).
With respect to claim 24, Swenson teaches a process of producing moist animal food compositions for a companion animal (paragraphs [0082]-[0084], [0101], and [0102]).
Regarding the recitation of “for preparing a wet pet food product” in the preamble of claim 24, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of said process comprising:(i) providing a composition comprising zein protein in claim 24, Swenson teaches the protein source may be from a plant, such as corn, and suitable corn derived protein-containing ingredients include corn gluten meal, for example, zein (paragraphs [0030] and [0033]).
Regarding the recitation of comprising (ii) extruding the composition from step (i) to denature said zein protein to provide a composition comprising denatured zein protein wherein the denatured zein protein is in micro-particulate form, has a particle diameter of at least about 75 µm and less than about 1000 µm, and has a D(v,90) value of less than about 750 µm in claim 24, Swenson teaches extruding the plant protein source to denature the protein (zein protein) (paragraphs [0025], [0026], [0029]-[0033], [0046], and [0063]).
However, Swenson does not expressly disclose the denatured protein is in microparticulate form, has a particle diameter of at least about 75 µm and less than about 1000 µm, and has a D(v,90) value of less than about 750 µm.
Teleki teaches obtaining discrete solid particles with a particle diameter lower than 1000 µm, preferably lower than 700 µm, by extruding maize (corn) proteins, and the extruded particles may be used in food or feed products (paragraphs [0011], [0033], [0035], [0037], [0088], [0091], and [0115]-[0117]).
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 particle diameter, including the instantly claimed diameter and D(v,90) value, from the ranges disclosed in the prior art reference with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Swenson and Teleki similarly teach extrusion of corn (maize) protein containing material under similar conditions and using the extruded material in foodstuff (Swenson: [0029]-[0033], [0060], [0063], [0101]-[0102]; and Teleki: paragraphs [0033], [0035], [0037], [0071], [0074], and [0115]-[0117]), Teleki teaches the obtained products have good storage stability (paragraphs [0118]), and Swenson teaches shearing is applied to the zein protein containing material during extrusion and the extrudate may be further comminuted to reduce the average particle size (paragraphs [0060] and [0072]). There would have been a reasonable expectation of success. "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.
Regarding the recitation of comprising (iii) mixing said composition comprising denatured zein protein with animal protein source in claim 24, modified Swenson teaches this limitation since Swenson teaches mixing animal meat with the structured (denatured) plant protein (zein protein) (paragraphs [0082]-[0084] and [0101]-[0102]).
Regarding the recitation of comprising (iv) preparing a slurry from said mixture and subjecting the slurry to conditions of shear to produce an emulsion of said mixture; (v) heating the emulsion to an internal temperature of at least 70°C; (vi) forming discrete pieces of the heated emulsion to form a reconstituted animal material; (vii) optionally combining said reconstituted animal material with a sauce; (viii) inserting said reconstituted animal material and optional sauce into packaging; and (ix) sealing and sterilizing the package to provide a packaged wet pet food product in claim 24, modified Swenson does not expressly disclose performing steps (iv)-(ix).
Mao teaches a method of making a pet food product by preparing a slurry from a mixture animal material and vegetable protein material, shearing the slurry to produce an emulsion, heating the emulsion to a temperature of at least 70⁰C, forming discrete pieces to form a reconstituted animal meat, optionally combining the pieces with sauce, packaging the material, closing the package, and sterilizing the product in the package (Abstract; and paragraphs [0001], [0006], [0023], [0029], [0032], [0071], [0080], [0083], and [0084]).
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 Mao, to select the steps of preparing a slurry, shearing the slurry to produce an emulsion, heating the emulsion, forming discrete pieces to form a reconstituted animal material, optionally including sauce, packaging, sealing, and sterilizing the packaged product in the method of modified Swenson with the expectation of successfully preparing a functional companion animal food product. One of ordinary skill in the art would have been motivated to do so because Swenson and Mao similarly teach the preparation of animal food products comprising similar ingredients, Swenson teaches mixing the animal meat composition with the structured plant protein material at elevated temperature, canning the formed product, and forming the animal food composition according to methods generally known in the art (paragraphs [0084] and [0112]), and said combination would amount to the use of known process steps for their intended use in a known environment to accomplish entirely expected result. There would have been a reasonable expectation of success with said modification. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
With respect to claims 33 and 34, modified Swenson is relied upon for the teaching of the process of claims 1 and 24.
Regarding the recitation of wherein the emulsion comprises a viscosity of from about 6X104 cP to 9x104 cP in claims 33 and 34, it is noted that this recitation relates to the resulting effect of practicing the claimed method. 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. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at the claimed viscosity since modified Swenson positively recites the claimed combination of ingredients and teaches a method of producing an emulsion and heating the emulsion that is substantially similar to the presently claimed method as addressed above in claims 1 and 24, and the claimed viscosity is an intended result of the claimed process.
Response to Arguments
Applicant’s remarks filed June 26, 2026 are acknowledged.
Due to the amendments to the claims, the 35 USC 112 rejection in the previous Office Action have been withdrawn (P6).
Applicants arguments have been fully considered, but they are unpersuasive.
Applicant argues the combination of Swenson and Mao is misplaced. A skilled artisan would not be motivated to modify Swenson to add any steps that would decrease the size of the pieces of Swenson's food composition, especially any such steps that would occur after the extrusion step. A skilled artisan would not be motivated to modify Swenson with step (iv) as claimed, which recites a shearing step to produce an emulsion, or step (vi) as claimed, which recites to forming discrete pieces of the food composition, as both of these steps would result in decreasing the size of the food composition and decreasing the degree of protein fibers that are aligned within the protein product. That is, the substantially aligned structure of the food composition would not be maintained if subjected to a step of shearing to produce an emulsion. Because Swenson has explicitly stated that it is desirable for the protein fibers to be substantially aligned, modifying Swenson to add step (iv) or step (vi) would render Swenson unsatisfactory for its intended purpose. Accordingly, since Mao is being relied on for teaching steps (iv) and (vi), a skilled artisan would not be motivated to modify Swenson by adding steps (iv) to (vi) as taught in Mao (P7-P11).
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.
Modified Swenson teaches the presently claimed methods. As previously addressed, Swenson teaches extruding the plant protein source to denature the protein (zein protein) (paragraphs [0025], [0026], [0032]-[0033], [0046], and [0063]). Although Swenson teaches the plant protein fibers are substantially aligned in some embodiments (paragraphs [0075] and [0116]), Swenson is not limited to these embodiments since the reference also teaches blending animal meat, water, and structured (denatured) plant protein (zein protein) to prepare the food product (paragraphs [0033], [0082]-[0084], and [0101]-[0102]). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). One of ordinary skill in the art would have been motivated, given the teachings of Mao, to select the steps of preparing a slurry, shearing the slurry to produce an emulsion, heating the emulsion, and forming discrete pieces in the method of Swenson with the expectation of successfully preparing a functional companion animal food product because Swenson and Mao similarly teach the preparation of animal wet/moist food products comprising similar ingredients, Swenson teaches mixing the animal meat composition with the structured plant protein material at elevated temperature and forming the animal food composition according to methods generally known in the art (paragraphs [0084] and [0112]), and said combination would amount to the use of known process steps for their intended use in a known environment to accomplish entirely expected result.. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
Applicant argues the combination of Swenson and Teleki is misplaced. A skilled artisan would not be motivated to perform any steps that would decrease the size of the pieces of Swenson's food composition, especially any such steps that would occur after the extrusion step. As such, for the same reasons as described above regarding the combination of Swenson and Mao, a skilled artisan would not be motivated to modify Swenson by performing the steps necessary to achieve the claimed micro-particulate form, particle diameter, and particle size distribution as taught in Teleki (P9-P10).
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.
Modified Swenson teaches the presently claimed methods. While Swenson teaches the plant protein fibers are substantially aligned in some embodiments (paragraphs [0075] and [0116]), Swenson is not limited to these embodiments since the reference also teaches blending animal meat, water, and structured (denatured) plant protein (zein protein) to prepare the food product (paragraphs [0033], [0082]-[0084], and [0101]-[0102]). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). One of ordinary skill in the art would have been motivated to select any portions of the disclosed particle diameter, including the instantly claimed diameter and D(v,90) value, from the ranges disclosed in the prior art reference with the expectation of successfully preparing a functional product because Swenson and Teleki similarly teach extrusion of corn (maize) protein containing material under similar conditions and using the extruded material in foodstuff (Swenson: [0029]-[0033], [0060], [0063], [(0101]-[0102]; and Teleki: paragraphs [0033], [0035], [0037], [0071], [0074], and [0115]-[0117]), Teleki teaches the obtained products have good storage stability (paragraphs [0118]), and Swenson teaches shearing is applied to the zein protein containing material during extrusion and the extrudate may be further comminuted to reduce the average particle size (paragraphs [0060] and [0072]). "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.
Applicant argues Swenson is completely silent with respect to the viscosity of any of the intermediate materials in the process, let alone the viscosity of an emulsion that is prepared following an extrusion step. Additionally, Swenson is completely silent with respect to using denatured zein proteins to achieve such a viscosity. Teleki and Mao fail to cure this deficiency of Swenson. Namely, Teleki and Mao are both also completely silent with respect to the viscosity of an emulsion, and fail to disclose the use of denatured zein proteins to achieve the claimed viscosity (P11).
Examiner disagrees. The method would naturally arrive at the claimed viscosity since modified Swenson positively recites the claimed combination of ingredients and teaches a method of producing an emulsion and heating the emulsion that is substantially similar to the presently claimed method as addressed above in claims 1 and 24, Swenson teaches extruding the plant protein source to denature the protein (zein protein) (paragraphs [0025], [0026], [0029]-[0033], [0046], and [0063]), and the claimed viscosity is an intended result of the claimed process, absent any clear and convincing evidence to the contrary.
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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