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 .
This office action is in regard to the application filed on December 22, 2021 and in response to a Request for Continued Examination filed on October 13, 2025.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on October 13, 2025 has been entered.
Election/Restrictions
Newly submitted claim 20 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 20 is directed to a method for producing a powder duster composition while the claims of the invention originally claimed are directed to a powder duster composition for deep fried foods. Claim 20 is drawn to a method while the invention originally claimed is drawn to a composition.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 20 has been withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Status of Application
The amendment filed October 13, 2025 has been entered. Claims 9, 11-16, and 18-20 are currently pending in the application; claims 14-16 and 20 have been withdrawn; claims 1-8, 10, and 17 have been canceled; claims 18-20 are new. Claims 9, 11-13, 18, and 19 are hereby examined on the merits.
The previous 112(b) rejection of claim 17 has been withdrawn in light of applicant’s cancelation of the 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 9, 11-13, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Yasuda (JP H0339053; also published as JP 2775302) in view of De Sadelleer et al. (US PG Pub. 2010/0105872; cited on PTO-892 dated Jan. 15, 2025), herein after referred to as Yasuda and De Sadelleer.
Regarding claims 9, 12, 18, and 19, Yasuda teaches a powder duster for fried foods (claim 2) comprising 5-100 wt.% partially hydrolyzed wheat gluten powder and 5-95 wt.% wheat flour ([0001]: page 3).
The range of partially hydrolyzed wheat gluten taught by Yasuda encompasses the claimed range of 14-65 wt.% and the range of wheat flour taught by Yasuda encompasses the claimed ranges of 10-86 wt.% of instant claim 9 and 40-86 wt.% of instant claim 12. Where the claimed ranges 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). See MPEP 2144.05.I.
Yasuda is silent as to that the hydrolyzed wheat gluten has a hydrolysis degree of between 0.5% to 5%.
De Sadelleer, in the same field of invention, teaches a partially hydrolyzed cereal protein ([0001]; [0043]-[0044]) in a fry coating [0050] that has a degree of hydrolysis of 3-8 (Abstract), which overlaps with the claimed ranges of 0.5-5% of instant claim 9, 1-4% of instant claim 18, and 2-3% of instant claim 19. Where the claimed ranges 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). See MPEP 2144.05.I. De Sadelleer also teaches that the particle size is a function of the degree of hydrolysis [0079] and that one suitable degree of hydrolysis is 4.7% [0076].
De Sadelleer teaches suitable degrees of hydrolysis for powder duster compositions where Yasuda is silent, thereby offering a guideline as to suitable degrees of hydrolysis. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the powder duster composition of Yasuda to have a degree of hydrolysis of De Sadelleer, thereby arriving at the claimed invention, with the reasonable expectation that the degree of hydrolysis is suitable for use in the claimed composition.
Regarding claim 11, Yasuda is silent as that the powder duster composition comprises native wheat gluten.
However, where Yasuda teaches that the wheat gluten is only partially hydrolyzed ([0001]: page 3 line 4) and as modified by De Sadelleer that the hydrolysis degree is only 3-8%, and since hydrolyzed wheat gluten is vital/native wheat gluten that has been hydrolyzed (as defined in the instant specification on page 5 lines 16-21 and page 6 lines 1-2), the partially hydrolyzed gluten inevitably contains some amount of residual native wheat gluten in the composition. Thus, modified Yasuda meets the instant claim limitation.
Claim 13 is met through the rejection of claim 9 has set forth above with regard to the wheat flour. Claim 9 requires the selection of native wheat gluten or wheat flour; by selecting wheat flour to meet claim 9, claim 13 is also considered to be met.
Regarding claim 13, Yasuda teaches that the powder duster composition may only comprise of a water-dispersible protein such as partially hydrolyzed wheat gluten powder in an amount of 5-100 wt.% ([0001]: page 2 last 4 lines to page 3 line 9), which encompasses the claimed amount of 50 wt.%. Where the claimed ranges 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).
Yasuda is silent as that the powder duster composition comprises native wheat gluten.
However, where Yasuda teaches that the wheat gluten is only partially hydrolyzed ([0001]: page 3 line 4) and as modified by De Sadelleer that the hydrolysis degree is only 3-8%, and since hydrolyzed wheat gluten is vital/native wheat gluten that has been hydrolyzed (as defined in the instant specification on page 5 lines 16-21 and page 6 lines 1-2), the partially hydrolyzed gluten inevitably contains some amount of residual native wheat gluten in the composition. Thus, the powder duster composition taught by modified Yasuda consists of partially hydrolyzed wheat gluten and native wheat gluten.
Modified Yasuda is silent as to that the composition consists of 50 wt.% native wheat gluten.
However, differences in the concentration will not generally support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05.II.
Concentration of a component in a composition is a known variable that affects various properties of a resulting product, and thereby, concentration is a result effective variable. As such, one of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed amount through no more than routine experimentation. It is well known within the art that a change in concentration of gluten, particularly in coatings for fried food, will affect the overall profile and properties of the final product. It would have been obvious to one of ordinary skill in the art to have adjusted the concentration levels through no more than routine experimentation until the desired end product was achieved. Thus, the parameters of the amounts of gluten taught by modified Yasuda renders obvious the instant claim limitations.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Yasuda (JP H0339053; also published as JP 2775302) in view of De Sadelleer et al. (US PG Pub. 2010/0105872; cited on PTO-892 dated Jan. 15, 2025), as applied to claim 9 above, and further in view of Noznick et al. (US Patent 3,314,800; cited on IDS dated Dec. 22, 2021), herein after referred to as Noznick.
Modified Yasuda teaches the powder duster composition as set forth above with regard to claim 9.
Modified Yasuda teaches that the powder duster composition comprises a water-dispersible protein such as partially hydrolyzed wheat gluten powder in an amount of 5-100 wt.% ([0001]: page 2 last 4 lines to page 3 line 9), which encompasses the claimed amount of 50 wt.%. Where the claimed ranges 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). See MPEP 2144.05.I.
Modified Yasuda is silent as to that the powder duster composition also consists of 50 wt.% native gluten.
Noznick, in the same field of invention, teaches a coating composition comprising 5-50 wt.% vital wheat gluten (i.e., native gluten) on a dry basis (Example 2, col. 4). This range overlaps with the claimed amount of 50 wt.%, and where the claimed ranges 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).
Noznick offers the motivation that the inclusion of native gluten increases the binding capability of the coating onto the food product (col. 1). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have incorporated the native wheat gluten at the taught amounts of Noznick into the duster composition of modified Yasuda, thereby arriving at the claimed invention. One would have been motivated to make this modification for the benefit of improving the binding properties of the duster composition.
Response to Arguments
The previous 112(b) rejection of claim 17 has been withdrawn in light of applicant’s cancelation of the claim.
Applicant’s arguments with respect to claims 9, 11, 12, and 17 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The new grounds of rejection now relies on a different primary prior art reference, Yasuda, to reject the instant claims. While the secondary prior art references, De Sadelleer and Noznick, remain the same, applicant has only challenged these references in relation to their modification of the previous primary prior art reference, Shulman, and as such, these arguments are moot.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAURA E SWEENEY whose telephone number is (571)272-0244. The examiner can normally be reached M-F 8:00-5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (571)-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791