DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claims 1-6, 9-11, 13, 22-23, 25, 33 and 38 are objected to because of the following informalities:
Regarding claim 1, in line 8 after “cellulose derivative” delete “comprising the hydroxyethyl group” since the phrase is redundant and it is clear “the cellulose derivative” refers to “hydroxyethyl methyl cellulose derivative comprising a hydroxyethyl group and a methyl group”.
Regarding claim 2, in line 1 after “claim 1” insert “,” for consistency.
In line 2 before “water” insert “the” since “water” was already recited to be part of the aqueous composition in claim 1.
Regarding claim 3, in line 1 after “claim 2” insert “,”.
Regarding claims 4, 6, 9, 23 and 25, in line 1 after “claim 1” insert “,”.
Regarding claim 5, in line 1 after “claim 4” insert “,”.
Regarding claim 10, in line 1 after “claim 9” insert “,”.
Regarding claim 11, in line 1 after “claim 10” insert “,”.
Regarding claim 13, in line 1 after “claim 2” insert “,”.
In line 1 before “water” insert “the”
Regarding claim 22, in line 1 before “processing” insert “the”.
Regarding claim 33, in line 2 before “water” insert “the”
Regarding claim 38, in line 2 before “saponin” insert “the”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 9-11 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 9 fails to further limit claim 1. The response of 3/17/2025 amended claim 1 to recite a “hydroxyethyl methyl cellulose derivative comprising a hydroxyethyl group and a methyl group”.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 10 and 11 are rejected by virtue of their dependence on a rejected base claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 9, 25, 33, 36-37, and 41-42 are rejected under 35 U.S.C. 103 as being unpatentable over Tuason et al. (US 7,879,382 B2) in view of Wright et al. (US 3,736,182) and deRidder (US 3,940,280). Delbrassinne et al. (US 2011/0294714 A1) is relied on as evidence for claim 42.
The limitation “controls foam” is not defined by the specification, and thus is given its broadest reasonable interpretation in light of the specification to mean any one of reducing, stabilizing, or increasing foam within a product. The term “processing” is interpreted in view of the specification to mean “a physical or chemical action that treats a foodstuff” (page 14 line 3).
Regarding claim 1, Tuason et al. teaches a composition comprising cellulose ether and food products formed from said composition (abstract), where the cellulose ether is a hydroxyethyl methyl cellulose derivative comprising a hydroxyethyl group and a methyl group such as methyl hydroxyethyl cellulose (MHEC) (column 2 lines 45-47). The composition is aqueous and is combined with a foodstuff and subjected to processing such as heat treating or homogenization (column 3 lines 7-8; column 4 lines 24-43; column 6 lines 50-60). Regarding the cellulose derivative controlling foam while processing the composition, Applicant’s specification discloses the cellulose derivative include HEC or MHEC (page 5 lines 10-12). Since there is no evidence of record that the cellulose ether of the claimed invention is any different than that of the prior art, one of ordinary skill in the art would have reasonably expected the HEC or MHEC of the prior art to behave similarly to that of the claimed invention, and thus “control foam” while processing the composition.
Tuason et al. does not teach the foodstuff is selected from the group consisting of a potato, a processed potato, a sugar beet, and a processed sugar beet. For the sake of examination, the alternative “processed potato” is chosen.
Wright et al. teaches potato slices (processed potato) are washed in order to remove surface starch, where the starch is released into water to form a starch-enriched liquid (column 1 abstract). The reference acknowledges starch foaming occurs, and thus employs anti-foaming agents in the wash liquid to control the starch foaming and minimize starch carry over to other parts of the system (column 2 lines 22-25).
deRidder teaches a composition comprising water-soluble cellulose ethers such as HEC (column 2 lines 35-37), where said cellulose ethers are recognized as foam reducers due to their surface-activity, where a “drastic reduction” was achieved (column 2 line 67 to column 3 line 3 and 7-10). The reference shows that a composition (C) comprising HC (HEC) resulted in significantly less foam volume than the composition (A) without HEC (column 8 table, and lines 50-56). deRidder is construed to be analogous art since the reference is reasonably pertinent to the problem with which inventor was concerned i.e., hydroxyethyl cellulose derivatives as antifoaming agents. See MPEP 2141.01(a) I.
deRidder does not explicitly recite MHEC. However, absent compelling evidence to the contrary one of ordinary skill in the art would have reasonably expected similar cellulose ethers to exhibit similar functions. One of ordinary skill would have further understood that addition of a methyl group could adjust the function of the cellulose ether in a particular way and/or facilitate a particular interaction. Since MHEC is a widely recognized substance, one of ordinary skill would have found it “obvious to try” MHEC for “foam control”. See MPEP 2143 I. (E).
It would have been obvious to one of ordinary skill in the art at the time of the invention to use the cellulose derivative of Tuason et al. in a process that comprises washing sliced potatoes, such that starch is released into the water and foam is generated, where the composition reduces the foam generated during washing as compared to the same composition without the cellulose derivative, since Tuason et al. does not particularly limit the type of process in which the derivative is employed (see whole document), since washing surface starch from potato slices using wash water is a process recognized by the prior art, and therefore to combine prior art elements according to known methods to yield predictable results, since foaming is acknowledged to occur during said washing, where antifoaming agents can be added to the wash water and HEC has been shown to act as an antifoaming agent by reducing foam volume, and therefore to apply the composition as an antifoaming agent.
Regarding claim 2, Tuason et al. teaches examples where the water content of foodstuff using the composition is at least 20 wt% (column 17 line 49; column 18 lines 21 and 59), and different types of foods can have varying water contents above 20 wt% (column 27 line 35; column 35 line 47).
Tuason et al. does not teach at least 20 wt% water with respect to a composition comprising MHEC or HEC; the examples are directed to compositions comprising carboxymethylcellulose (CMC).
However, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Tuason et al. such that a foodstuff composition comprising MHEC or HEC has at least 20 wt% water since the reference explicitly teaches the cellulose ether can be either carboxy- or hydroxyethyl- (column 2 lines 16-17 and 45-47), the composition comprising the cellulose ether acting as a stabilizer for food products (column 3 lines 4-6 and 11-13), and therefore as a substitution of art recognized equivalents suitable for the same purpose, see MPEP 2133.06 II.
Regarding claim 3, Tuason et al. teaches examples where the water content can be between 30-95 wt% based on the type of foodstuff (column 18 line 21; column 35 line 47; column 36 line 59). While the examples do not teach the water content with respect to MHEC or HEC, modification to use said cellulose ethers would have been obvious for the same reasons stated for claim 2 above.
Regarding claim 4, Tuason et al. does not explicitly teach the claimed range of cellulose derivative in the composition. However, the reference teaches the cellulose ether can be provided as a solids composition in order to provide a suitable intermediate that can be dosed and dispersed with sufficient water and agitation (column 5 lines 7-9 and 13-15). The cellulose ether is provided with microcrystalline cellulose (MCC) in a ratio of 50:50 (column 2 line 29). The amount of said MCC and cellulose ether added to the overall food product can be from about 0.05-3.5 wt% (column 3 lines 27-29). Based on the 50:50 ratio, it would have been reasonable to assume the amount of cellulose ether ranges from about 0.025-1.75 wt% of the composition.
Further, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Tuason et al. to include the claimed amount of cellulose derivative since there is no evidence that the claimed range is critical or yields unexpected results, and since the values would have been used during the course of routine experimentation and optimization procedures due to factors such as the type of foodstuff being made and desired stability characteristics.
Regarding claim 5, Tuason et al. suggests about 0.025-1.75 wt% cellulose derivative as stated for claim 4. Furthermore, it would have been obvious to modify the process of Tuason et al. to include the claimed amount of cellulose derivative for the same reasons stated for said claim.
Regarding claim 9, the cellulose derivative can be methyl hydroxyethyl cellulose as stated for claim 1, which further comprises a methyl group.
Regarding claim 25, the claim is interpreted to recite alternative limitations (a)-(d). For the sake of examination, the limitation of alternative (b) is chosen, and from said limitation the alternative “blending” is chosen.
Tuason et al. teaches blending a composition having a cellulose derivative with foodstuff (column 17 lines 55-65), but does not teach the cellulose composition comprises a cellulose derivative comprising a hydroxyethyl group.
However, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Tuason et al. such that processing comprises blending for the same reasons stated for claim 2.
Regarding claim 33, the transitional phrase “consists essentially of” is interpreted in view of the specification to mean the composition excludes substances (foam controlling or otherwise) that are not biodegradable (page 1 lines 28-31; page 3 first paragraph). See MPEP 2111.03 III.
Tuason et al. does not explicitly state that the composition consists essentially of the foodstuff, the cellulose derivative, and water as interpreted above. However, the reference does teach that antifoaming agents are optional (column 6 lines 39-40). Examples are provided that do not include antifoaming agents or other non-biodegradable substances (column 17 example 18, column 26 examples 33-34; columns 27-28 examples 34-37). It is noted that the compositions include MCC. However, since MCC is not disclosed in the specification to constitute a material change in the basic and novel characteristics of the invention, MCC is interpreted to not be excluded by the limitation “consists essentially of”.
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Tuason et al. such that the composition consists essentially of the claimed substances since the reference states that antifoaming agents are optional, and therefore not required, since the reference teaches compositions that do not include antifoaming agents and non-biodegradable substances, and as a matter of manufacturing preference based on the desired type of foodstuff and safety of the consumer.
Regarding claim 36, Tuason et al. does not teach the composition has less than 5 wt% of solid that are different than the foodstuff and cellulose derivative. However, the reference teaches additional substances can be added in amounts necessary to achieve desired results, where routine adjustment of the substances and amounts is “fully within the capabilities of one having skill in the art” (column 3 lines 35-43 and 50-56).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Tuason et al. to have less than 5 wt% solids that are different as claimed since the reference already acknowledges that the composition can be adjusted to obtain desired results, since there is no evidence of criticality or unexpected results associated with the feature, and since the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as type of foodstuff, desired flavor, texture/mouthfeel, and nutritional content.
Regarding claim 37, the claim recites alternatives. For the sake of examination, alternative (a) is chosen. Tuason et al. does not specifically teach the composition does not include a non-biodegradable foam control agent. However, the reference does teach that antifoaming agents are optional, and examples are provided that do not include antifoaming agents or other non-biodegradable substances as explained for claim 33.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Tuason et al. such that the composition does not include a non-biodegradable foam control agent since the reference already recognizes that foam control agents are optional, and therefore not required by the composition, and further provides examples that do not include non-biodegradable foam control agents, and for the same reasons stated for claim 33.
Regarding claim 41, the combination applied to claim 1 renders obvious the claimed features as stated for said claim.
Regarding claim 42, The combination applied to claim 1 does not teach beet or sugar beet. However, the prior art recognizes that foam control agents “have found application traditionally in such areas of use as…the sugar beet industry…for reducing or eliminating foam formation” as evidenced by Delbrassinne et al. (paragraph 57). Therefore, the modification to control foam in the claimed foodstuff would have been obvious for the same reasons stated for claim 1, where the selection of material worked upon would have been prima facie obvious for reducing foam in a known process where foam control is desired.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Tuason et al. in view of Wright et al. and deRidder as applied to claims 1 and 9 above, and further in view of Zhang et al. (US 2020/0068881 A1).
Regarding claims 10-11, Tuason et al. teaches the cellulose ethers can have a degree of substitution (DS) value x of between about 0.6 to 1.5 (column 2 lines 18-20), but does not teach a molar substitution (MS) value y, where x is greater than y (claim 10), where y is between 0.11 to 1.0 (claim 11).
Zhang et al. teaches a method of spraying an aqueous solution of an agrochemical comprising methyl hydroxyethyl cellulose (abstract), where inclusion of MHEC reduces the amount of very fine droplets in a spray, and thereby reduces undesired spray drift (paragraph 7). The MHEC has a DS of between 0.1 to 2 and a MS of between 0.2 to 1 (paragraph 11). The ratio between DS and MS can be adjusted to obtain a desired reduction in spray drift while giving desired rain fastness, where the DS can be greater than the MS as indicated by the positive DS:MS ratio (paragraph 12).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the MHEC to have the claimed MS and DS values since the prior art has acknowledged the feature for use with agricultural products, and since the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as reduction in spray drift and rain fastness as taught by Zhang et al., particularly since Tuason et al. already contemplates spray drying (column 1 lines 36-39 and 44-49).
Claims 13 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Tuason et al. in view of Wright et al. and deRidder as applied to claims 1-2 above, and further in view of Li et al. (WO 2011/145083 A2).
Regarding claim 13, Tuason et al. does not teach removing water and cellulose derivative from the composition after processing.
Li et al. teaches a method for using aqueous low foaming antimicrobial compositions applicable to food (page 5 lines 10-19), comprising forming an overall composition of the foodstuff and an antimicrobial composition (page 30 lines 1-3 and 7-11), the composition including hydroxyethyl cellulose, or “HEC” (page 23 line 4; page 28 lines 19-23; page 30 lines 1-6), and washing the overall composition (page 32 lines 4-17). It is noted that the term “processing” is interpreted in view of the specification (page 14 lines 3-8). The washing step of Li et al. therefore reads on “processing”.
Li et al. further teaches removing water and the antimicrobial composition from the overall composition, after processing such as washing with agitation, by rinsing, draining, or evaporating the antimicrobial composition from the food product (page 32 lines 14-17).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Tuason et al. to similarly remove water and the cellulose derivative from the composition after processing since the prior art acknowledges that specific substances can be separated from a composition once a desired portion of the processing has been completed, and therefore to combine prior art elements according to known methods to yield predictable results, to adjust characteristics of the final product based on the type of foodstuff, desired flavor, texture/mouthfeel, and nutritional profile.
Regarding claim 22, Tuason et al. does not teach the processing comprises washing the foodstuff.
However, Li et al. teaches washing foodstuff as stated for claim 13. Specifically, the foodstuff can be combined with the antimicrobial composition and washed by spraying the solution with agitation, the washing providing minimal contact time of the composition with the food product for occurrence of a significant microbial effect (page 30 lines 20-23).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Tuason et al. such that processing includes washing since the reference does not disclose or otherwise indicate that the foodstuff cannot be washed, since washing is well known and commonly practiced in the art, and therefore to combine prior art elements according to known methods to yield predictable results of cleaning and removing unwanted materials from the foodstuff, as well as providing an antimicrobial or other desirable effect based on the type composition.
Claims 23 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Tuason et al. Tuason et al. in view of Wright et al. and deRidder as applied to claim 1, and in further view of Han et al. (US 2012/0088015 A1).
Regarding claim 23, the claim is interpreted to recite alternative limitations (a) and (b), each limitation reciting further alternatives. For the sake of examination, the limitation of alternative (c) is chosen, and from said limitation the alternative “not greater than 1% of the original size” is chosen.
Tuason et al. teaches the foodstuff can be vegetable juice or pulp (column 3 lines 35-38), which would have necessarily had an “original, unprocessed, size”. However, the reference does not teach mechanical action that reduces the original size to portions of sizes that are not greater than 1% of the original size.
Han et al. teaches a method of processing whole vegetables for use in beverage and food products (abstract; paragraph 18), where whole vegetables can be subjected to mechanical processing to reduce the size of the foodstuff (paragraph 27). The size reduction obtains a controlled and homogeneous size distribution, where the vegetables can be reduced to a desired particle size to obtain a desired texture and dispersibility (paragraphs 28-30).
While the reference does not explicitly recite the size reduced pieces are “not greater than 1% of the original size”, the reference suggests to one of ordinary skill in the art that whole vegetables can be reduced to particles of micrometer scale. Therefore, one of ordinary skill in the art would have reasonably expected the size reduced vegetable pieces to not be greater than 1% of the original size.
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Tuason et al. to mechanically size reduce the foodstuff as claimed since the prior art acknowledges whole vegetables can be subjected to “micro-grinding” to obtain a desired particle size, since there is no evidence of criticality or unexpected results associated with the claimed feature, and since the claimed values would have been use during the course of routine experimentation and optimization procedures due to factors such as desired texture and dispersibility.
Regarding claim 38, Tuason et al. does not teach the foodstuff comprises starch, and during the step of forming or processing, starch becomes present in the composition.
The combination applied to claim 1 teaches the foodstuff is processed potato such as potato slices. The combination applied to claim 23 teaches mechanical size reduction as taught by Han et al.
The combinations applied to claims 1 and 23 are similarly applied to claim 38, and modification would have been obvious for the same reasons stated for said claims.
The resulting combination applies size reduction to a composition comprising the cellulose derivative and the foodstuff, said foodstuff being potato slices. Since potato is known to include starch, one of ordinary skill in the art would have reasonably expected that a process of mechanically size reducing potato would result in release of at least some starch from said potato.
Claims 6 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Tuason et al. in view of Wright et al. and deRidder as applied to claim 1 above, and further in view of Reibert et al. (US 6,235,893 B1).
Regarding claim 6, Tuason et al. does not teach the cellulose derivative, specifically MHEC or HEC, having a viscosity in the range of 0.1-10,000 cps as measured at a concentration of 2 wt% in water at 20oC.
However, the reference provides examples where a composition of MCC/CMC is provided in deionized water as a 2.6% dispersion, the dispersion exhibiting Brookfield viscosity between the claimed values e.g., 2,300-2,800 cps (column 8 lines 18-20). While the examples are not directed to MHEC or HEC, the reference recognizes the equivalency with CMC as explained for claim 2.
Reibert et al. teaches cellulose ethers for use with foods (abstract), where the cellulose ethers include hydroxyethyl methylcellulose (MHEC) (column 3 lines 7-11). The cellulose ether can be subjected to “depolymerization to the desired degree” i.e., partially depolymerized, based on desired molecular weight and viscosity (column 8 lines 39-49; column 10 examples 1A-1D and 2A-2B).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Tuason et al. such that the MHEC exhibits the viscosity values as claimed since the reference has acknowledged similar substances yield viscosities within the claimed range (examples 1-17), since the prior art recognizes treating MHEC intended to be used with foods in a manner that adjusts viscosity and also that it is desirable to maintain a desired viscosity over extended periods of time, since there is no evidence of criticality or unexpected results associated with the claimed feature, in order to adjust molecular weight and/or other characteristics of the composition based on desired function and rheology (e.g., “foam control” for a particular substance, pumpability, blending properties, etc.), since the values would have been used during the course of routine experimentation and optimization procedures due to factors such as those stated above, as well as type of foodstuff, desired mouthfeel/texture, and stability during storage, and to combine prior art elements according to known methods to yield predictable results and to use a known technique to improve similar methods in the same way. See MPEP 2143 I.(A) and (C).
It would have been further obvious to take the viscosity measurements at 20oC since viscosity measurements are understood to be commonly taken at said temperature, since there is no evidence of criticality or unexpected results, and to allow the measurements to be taken under easily achievable conditions such as room temperature.
Regarding claim 40, the combination applied to claim 1 does not teach the cellulose derivative is partially depolymerized.
The combination applied to claim 6 above teaches partial depolymerization to adjust characteristics of the MHEC such as molecular weight and viscosity. The same combination is applied to claim 40 and would have been obvious for the same reasons.
Response to Arguments
The rejection of claims 41-42 under 35 USC 112(b) are withdrawn in view of the amendments to said claims.
Upon further consideration however, new issues are raised for claim 9 under 35 USC 112(d). Therefore, the rejection remains Non-Final.
Applicant argues on page 8 that the rejection does not explain what Tuason is missing, how either secondary reference supplies the missing element, or why a skilled artisan would have modified Tuason as stated, and Examiner selects discrete elements from unrelated references and assembles them to match the claims.
This is not pervasive since item 27 above states that Tuason does not teach the foodstuff consisting of potato or sugar beet, items 28-30 state the prior art recognizes foaming issues during processing potato and cellulose starch ethers are recognized foam reducers due to their surface activity, and item 31 provides motivation for modification.
Applicant argues on pages 8-9 that Tuason uses MHEC as a colloid stabilizer, and never discloses MHEC as a foam control additive as claimed. Applicant argues that Tuason teaches an MCC/salt/cellulose ether composition, which does not include hydroxyethyl cellulose, Tuason teaches a completely different optional antifoaming agent, there is no evidence that the composition is able to act as an antifoaming agent, and there is no basis in Tuason for concluding the cellulose ether component acts as a foam control agent according to applicant’s disclosure.
This is not persuasive since Tuason explicitly discloses an embodiment where the cellulose ether in the MCC/salt/cellulose ether composition includes hydroxyethyl cellulose or methyl hydroxyethyl cellulose, both of which are cellulose derivatives comprising a hydroxyethyl group (column 2 lines 14-16 and 45-48), see also claim 6. While a composition of MCC/salt/HEC or MHEC is not recited in the examples per se, the reference nonetheless teaches embodiments including said cellulose derivatives. See also MPEP 2123 I.-II.
Regarding Tuason being silent to controlling foam and there being no basis for concluding the cellulose ether component acts as a foam control agent, Examiner emphasizes that the limitation of “controls foam” is not defined by the specification. While the disclosure indicating a preference for foam reduction is acknowledged, there is nothing to indicate that the recitation of “controls foam” is limited only to foam reduction. There are various ways to “control” foam that are known in the art e.g., to adjust size/volume, duration, quantity of bubbles, color, etc. Applicant’s specification does not provide sufficient detail for one of ordinary skill in the art to determine that the term “controls foam” was meant to mean only foam reduction.
Further, Tuason teaches forming a composition comprising the claimed cellulose derivative and a foodstuff, and “processing” the composition as currently recited in claim 1. There is no evidence of record to indicate that the cellulose derivative of the claimed process is any different than that of the cited prior art. “A compound and its properties are inseparable.” In re Papesch, 137 USPQ 43 (CCPA 1963). Applicant’s specification explicitly states HEC or MHEC as a suitable derivative, and the prior art recognizes said derivatives present within food compositions as additives. Furthermore, there is no evidence of criticality or unexpected results associated with the amount of the cellulose derivative in the composition, as it relates to “foam control”. To the contrary, applicant’s specification explicitly states the “cellulose derivative foam control agent can be used in any concentration, such as in the range of 0.01 to 5% (wt)…to control foam formation during processing” (page1-2). Thus, applicant’s disclosure appears to suggest that “foam control” is observed so long as any amount of the cellulose derivative is present in the process. Since the HEC or MHEC of Tuason appears to be the same as that of the claimed cellulose derivative, absent persuasive evidence to the contrary, one of ordinary skill in the art would have reasonably expected the HEC or MHEC of Tuason et al. to exhibit the same properties as those of applicant’s claimed derivative, and thus would have similarly been expected to provide foam control.
Regarding Tuason teaching an optional antifoaming agent, and example 18 teaching the composition comprising said antifoaming agent with CMC as the cellulose ether rather than HEC or MHEC, the cited example is not relevant to the rejection of claim 1. The example teaches CMC as the cellulose derivative, whereas the rejection relies on the embodiment of HEC or MHEC. Likewise, the antifoaming agent is optional, and there is no example that shows a composition comprising HEC or MHEC must also include the optional antifoaming agent. Thus, the reference does not indicate or otherwise suggest to one of ordinary skill that i) a composition comprising HEC or MHEC cannot act as an antifoaming agent, and ii) said composition must include an antifoaming agent separate to the cellulose derivatives.
Applicant argue on page 10 that Wright does not list any suitable foam control agents, does not guide a skilled artisan to consider MHEC has utility as a foam control agent for potato or sugar beet material, and is non-analogous art.
This is not persuasive since Tuason already teaches MHEC and “processing” as interpreted in the rejection above. Wright is relied on to show that it is desirable to control foaming during processing of potato, where one of ordinary skill would expect the MHEC of Tuason to “control foam” during the above processing. Further, the reference is considered analogues art since it is directed to food processing, and in particular foam control.
Applicant argues on pages 10-11 that deRidder teaches HEC reduces foaming in coating solutions that incorporate metal flake or metal powder, does not relate to foodstuff, and does not suggest substituting MHEC for HEC.
This is not persuasive since the reference still teaches using water-soluble cellulose ethers as foam reducers (column 2 line 67 to column 3 line 3 and 7-10), which is reasonably pertinent to the problem with which Applicant was concerned i.e., foam control. Further, “Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art”, see MPEP 2143 I.(F).
Applicant’s arguments against the dependent claims and respective prior art are persuasive for the same reasons stated above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYAN KIM whose telephone number is (571)270-0338. The examiner can normally be reached 9:30-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached on (571)-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRYAN KIM/Examiner, Art Unit 1792