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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/10/2026 has been entered.
Response to Amendment
The amendment filed 08/10/2026 has been entered. Claims 1-2, 6, 12-13, 21-23, 25-27, 29-30, 36-37, 41-43, and 45 remain pending in the application. Claims 25-27, 29-30, 36-37 and 41-43 are withdrawn from consideration. Claims 1-2, 6, 12-13, 21-23, and 45 are rejected.
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.
Claim(s) 1, 6, 12-13, 21, 23, and 45 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dihel (US 20040121046 A1) in view of Smoot (WO 2019005861 A1) and Fujimura (US 20170208846 A1).
Regarding claim 1, Dihel teaches (Paragraph 0014-0015) providing a starch batter coating for coating a food portion, wherein the native source of the starch can be pea starch. Dihel further teaches (Paragraph 0022, 0024) the starch batter coating may be comprised of a single starch, or a combination of at least two starches, wherein minor amounts, 0.5 to 3.0%, of pre-gelatinized starches may be used to provide viscosity control and suspension of the solids in the batter. Also, Dihel teaches (Paragraph 0013-0014) the food portion is coated with a hydrocolloid prior to application of the starch batter. Since the hydrocolloid is applied to the food portion separately, before the starch batter, the starch batter itself is understood to be free of hydrocolloids. It is noted that, in some embodiments, (Paragraph 0037, 0039), dextrin is used in the batter. However, since dextrin is not a required material, (for example, claim 1 only requires the presence of starch in the starch batter coating), at least some embodiments of the batter of Dihel are understood to comprise less than 0.01% (w/w) of the dry weight in the batter mixture. Additionally, Dihel teaches (Paragraph 0025) optional additives for the starch batter include solvents such as water, and the starch may be in the form of a slurry. Furthermore, Dihel teaches (Paragraph 0022) the starch coating is typically applied by using a high solids starch dispersion, particularly a dispersion with a solids content of at least about 30% (which indicates that up to 70% of the dispersion is not solid, i.e. liquid). Therefore, Dihel, at minimum, suggests that the batter is a liquid mixture in some embodiments.
Dihel does not explicitly state that the pregelatinized pea starch has a granulometry characterized by an "n" value and "d" value according to German norm DIN 66 145, wherein the "n" value is from 1.2 to 1.8 and the "d" value is from 80 to 150 μm. Also, while Dihel teaches a composition comprising 0.5 to 3.0% of pre-gelatinized starches, Dihel does not clarify if the percentage of pre-gelatinized starch is a percentage of the dry weight of the batter, and is silent on the percentage of the pregelatinized pea starch being about 7%. Furthermore, Dihel does not explicitly state that the batter mixture has fewer lumps compared to a control batter mixture containing the same percentage of pregelatinized corn starch or pregelatinized potato starch, wherein the number of lumps in the batter mixture is counted when the batter mixture is at a temperature from 10 to 25°C.
Smoot teaches (Paragraph 0007, 0008, 0047) a pregelatinized starch for use with food products, wherein, in embodiments, the pregelatinized starch is derived from peas. Smoot further teaches (Paragraph 0044, 0045) the pregelatinized starch (e.g., at least 75% or at least 90% by weight thereof) is in the form of individual sheet- or flake-like agglomerates, wherein drum-dried sheets can be ground down to on the order of 5-10 microns for a starch providing a smooth texture to a food, wherein, in some embodiments, the agglomerates of pregelatinized starch have a thickness (diameter) in the range of 20 microns to 100 microns (which overlaps with the claimed range of 80-150 μm). Smoot further teaches (Paragraph 0102, 0103) the starch can be used in a wide variety of foods including batters and breadings, wherein, the starch can be included in dry mixes in an amount of 1-10% or 5-30% (thus disclosing a lower limit of 5% and an upper limit of 10% which would constitute the percentage of the dry weight in a dry mix and encompasses the claimed value of about 7% of dry weight).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Dihel to provide a pre-gelatinized pea starch with a small particle size in the range of 20 to 100 micrometers (which overlaps with the claimed range of 80-150 μm) and a percentage of 5-10% based on dry weight as taught by Smoot since both are directed to compositions and methods of preparing compositions including batters, comprising pregelatinized starch, including pea starch, since providing a pre-gelatinized pea starch with a small particle size in the range of 20 to 100 micrometers and a percentage of 5-10% based on dry weight is known in the art as shown by Smoot, since a small particle size can provide a smooth texture to a food (Smoot, Paragraph 0044), making the food more palatable and easier to swallow for consumers, since a fine granulometry can ensure that the pregelatinized pea starch does not form undesirable clumps in the batter that are visually unappealing or that don’t mix well with other ingredients, since the amount and type of the starches provide the necessary texture and viscosity in the finished food product (Smoot, Paragraph 0103), so excessive starch can make the batter too viscous, while too little starch can render the batter unable to properly adhere to a food product, and since the amount of pre-gelatinized starch will affect the taste and nutritional effects of the batter.
Furthermore, the claimed percentage of the pregelatinized pea starch of about 7% (w/w) of the dry weight in the batter mixture would have been used during the course of normal experimentation and optimization procedures in the product of Dihel, as modified above, based upon factors such as the intended texture and viscosity of the batter (where more pre-gelatinized starch would increase the viscosity of the batter), the desired taste and nutritional properties of the batter, the amount of other ingredients, the inclusion of other starches, the intended coloration of the batter, the type of food coated with the batter, etc. Furthermore, the Applicant does not appear to have identified any unique or unexpected benefit from the claimed percentage of the pregelatinized pea starch of about 7% (w/w) (w/w) of the dry weight in the batter mixture that would render it non-obvious.
Additionally, the claimed "n" value from 1.2 to 1.8 and a "d" value from 80 to 150 μm according to German norm DIN 66145 for the pregelatinized pea starch would have been used during the course of normal experimentation and optimization procedures in the product of Dihel, as modified above, based upon factors such as the desired texture for the batter (where the size distribution of the particles will affect the texture of the resultant batter and, therefore, the texture of food products prepared with the batter, where different consumers have different preferences in texture, with some consumers preferring food products with smoother textures), the intended viscosity of the batter, the particle size of other batter ingredients (where similarly sized particles can mix more evenly and have similar textural properties), etc. Furthermore, the Applicant does not appear to have identified any unique or unexpected benefit from the claimed "n" value from 1.2 to 1.8 and a "d" value from 80 to 150 μm according to German norm DIN 66145 that would render it non-obvious.
Fujimura teaches (Paragraph 0001, 0024, 0032) a tempura batter mix, wherein the mix contains wheat flour and gelatinized starch, and 100 to 200 parts by mass of a liquid such as water to 100 parts by mass of the batter mix (i.e., 50 to 67% water or a liquid mixture).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Dihel, as modified above, to provide a liquid as taught by Fujimura since both are directed to batter products comprising gelatinized starch and water, since a liquid batter mixture comprising gelatinized starch is known in the art as shown by Fujimura, since a batter with an amount of water in the range of 50 to 67% (liquid mixture) can provide a viscosity with improved adhesion property to ingredients and can form a fluffier tempura coating (Fujimura, Paragraph 0032), since a liquid batter can provide additional moisture to a coated food product, since water can be used to mix batter components together and help them adhere, and since a food product can be coated by immersion in a liquid batter.
Additionally, since the claimed method is obvious is view of the prior art as explained above, one of ordinary skill in the art would reasonably expect that the resulting properties of a batter produced by the method suggested by the prior art would be the same as the properties of the batter produced by the claimed invention, including having fewer lumps compared to a control batter mixture containing the same percentage of pregelatinized corn starch or pregelatinized potato starch. Furthermore, the applicant has not provided sufficient evidence to show criticality from the claimed “fewer lumps” that would render the claimed invention non-obvious. Additionally, the claim does not specify that batter is at a temperature of about 10 to about 25°C, nor does claim 1 require such a temperature range. The claim simply refers to a step of counting which does not need to occur in the method as currently claimed. Also, a claim’s scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. A wherein clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited (See MPEP 2111.04). Therefore, claim 1 is obvious in view of the prior art.
Regarding claim 6, Dihel teaches (Paragraph 0023) selection of the starch coating materials is dependent upon the desired texture, taste and appearance of the fried food product and is within the skill of the artisan, wherein inclusion of a flour, such as rice, corn or wheat flour, reduces oil content. Dihel further teaches (Paragraph 0025), optional additives include leavening agents.
Regarding claim 12, Dihel teaches (Paragraph 0025) optional additives for the starch batter include solvents such as water and the starch may be in the form of a slurry. Therefore, Dihel, at minimum, suggests that the batter is an aqueous mixture in some embodiments.
Furthermore, Fujimura teaches (Paragraph 0001, 0024, 0032) a tempura batter mix, wherein the mix contains wheat flour and gelatinized starch, and 100 to 200 parts by mass of a liquid such as water to 100 parts by mass of the batter mix (i.e., 50 to 67% water or an aqueous mixture).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Dihel, as modified above, to provide an aqueous mixture as taught by Fujimura since both are directed to batter products comprising gelatinized starch and water, since aqueous batter mixture comprising gelatinized starch is known in the art as shown by Fujimura, since a batter with an amount of water in the range of 50 to 67% (liquid mixture) can provide a viscosity with improved adhesion property to ingredients and can form a fluffier tempura coating (Fujimura, Paragraph 0032), since a liquid batter can provide additional moisture to a coated food product, since water can be used to mix batter components together and help them adhere, and since a food product can be coated by immersion in a liquid batter.
Regarding claim 13, Dihel teaches (Paragraph 0025) optional additives for the starch batter include solvents such as water and the starch may be in the form of a slurry. Therefore, Dihel, at minimum, suggests that the batter is an aqueous mixture in some embodiments.
Dihel is silent on the percentage of water being from 40 to 80% (w/w) of the aqueous mixture.
Fujimura teaches (Paragraph 0001, 0024, 0032) a tempura batter mix, wherein the mix contains wheat flour and gelatinized starch, and 100 to 200 parts by mass of a liquid such as water to 100 parts by mass of the batter mix (i.e., 50 to 67% water).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Dihel, as modified above, to provide an aqueous batter mixture with the percentage of water being from 40 to 80% (w/w) of the aqueous mixture as taught by Fujimura since both are directed to aqueous batter products comprising flour and gelatinized starch, since an aqueous batter mixture with the percentage of water being from 40 to 80% (w/w) of the aqueous mixture is known in the art as shown by Fujimura, since a batter with an amount of water in the range of 50 to 67% can provide a viscosity with improved adhesion property to ingredients and can form a fluffier tempura coating (Fujimura, Paragraph 0032), since an aqueous batter can provide additional moisture to a coated food product, since water can be used to mix batter components together and help them adhere, and since a food product can be coated by immersion in a sufficiently aqueous batter.
Furthermore, the claimed percentage of water is from 40 to 80% (w/w) of the aqueous mixture would have been used during the course of normal experimentation and optimization procedures in the product of Dihel, as modified above, based upon factors such as the intended texture and viscosity of the batter (where the amount of water will affect the batter viscosity), the desired moisture content of the food product prepared with the batter, the amount and type of other ingredients, the type of food coated with the batter (where an aqueous batter will adhere to some foods better than a dry mixture), etc. Furthermore, the Applicant does not appear to have identified any unique or unexpected benefit from the claimed percentage of water is from 40 to 80% (w/w) of the aqueous mixture that would render it non-obvious.
Regarding claim 21, Dihel teaches (Paragraph 0024) minor amounts of pre-gelatinized starches may be used to provide viscosity control and suspension of the solids in the batter, wherein the selection of the pre-gelatinized starch must be made carefully to avoid excessive batter viscosity (indicating that the pre-gelatinized starch increases viscosity relative to a batter without the pre-gelatinized starch).
Regarding claim 23, Dihel teaches (Paragraph 0024) minor amounts of pre-gelatinized starches may be used to provide viscosity control and suspension of the solids in the batter, wherein the selection of the pre-gelatinized starch must be made carefully to avoid excessive batter viscosity (indicating that the pre-gelatinized starch increases viscosity relative to a batter without the pre-gelatinized starch).
While Dihel does not explicitly state that the viscosity of the batter mixture comprising the pregelatinized pea starch is at least 5% higher than the viscosity of a control batter, a batter with the claimed viscosity increase would have been used during the course of normal experimentation and optimization procedures in the product of Dihel based upon factors such as the amount of the pre-gelatinized starch (where more pre-gelatinized starch will increase the viscosity), the types and amounts of other ingredients in the batter, the type of food to which the batter is applied (where some foods will require a more viscous batter for the batter to properly adhere to the food product), the presence of any other thickeners in the batter, the liquid content of the batter, etc. Furthermore, the Applicant does not appear to have identified any unique or unexpected benefit from the claimed viscosity increase of at least 5% higher, that would render it non-obvious.
Regarding claim 45, Dihel, as modified above, does not explicitly state that the viscosity of the batter mixture comprising the pregelatinized pea starch is higher than the viscosity of a liquid batter mixture containing the same percentage of pregelatinized com starch or pregelatinized potato starch. However, since the claimed method is obvious is view of the prior art as explained above, one of ordinary skill in the art would reasonably expect that the resulting properties of a batter produced by the method suggested by the prior art would be the same as the properties of the batter produced by the claimed invention, including having a higher viscosity than the viscosity of a liquid batter mixture containing the same percentage of pregelatinized com starch or pregelatinized potato starch. Furthermore, the applicant has not provided sufficient evidence to show criticality from the claimed “high viscosity” that would render the claimed invention non-obvious. Also, a claim’s scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. A wherein clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited (See MPEP 2111.04).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dihel (US 20040121046 A1) in view of Smoot (WO 2019005861 A1), and Fujimura (US 20170208846 A1), and further in view of Hyun (KR 101432183 B1), Guthrie (WO 9742827 A1), Huber (US 20070031543 A1), Moorcroft (GB 2551050 A), Lichtendonk (US 20090304862 A1), Moore (US 3956515 A), and Gusek (US 5456930 A).
Regarding claim 2, Dihel teaches (Paragraph 0023) selection of the starch coating materials is dependent upon the desired texture, taste and appearance of the fried food product and is within the skill of the artisan, wherein inclusion of a flour, such as rice, corn or wheat flour, reduces oil content. Dihel further teaches (Paragraph 0022, 0024) the starch batter coating may be comprised of a single starch, or a combination of at least two starches, wherein minor amounts, 0.5 to 3.0%, of pre-gelatinized starches may be used to provide viscosity control and suspension of the solids in the batter. Dihel also teaches (Paragraph 0025) the use of leavening agents, for example SAPP (sodium acid pyrophosphate) in the starch slurry, to provide crisping and control browning.
Regarding claim 2, Dihel does not explicitly state that the "d" value is from 100 to 120 μm. Dihel is silent on the combined pregelatinized pea starch and wheat flour constituting 92 to 94% of the dry weight in the batter mixture. Dihel is further silent on providing 4 to 6% (w/w) of salt, 0.5 to 1.5% (w/w) of sodium acid pyrophosphate, 0.6 to 1% (w/w) of sodium bicarbonate, and 0.6 to 1% (w/w) of dextrose to the batter mixture. Also, Dihel is silent on providing water at 7°C to the batter mix, wherein the ratio of water to dry ingredients in the batter mixture is 3:2 (w/w), wherein the water and the dry ingredients is mixed for 8 to 12 minutes and maintained at 16 to 20.5°C.
Smoot teaches (Paragraph 0007, 0008, 0047) a pregelatinized starch for use with food products, wherein, in embodiments, the pregelatinized starch is derived from peas. Smoot further teaches (Paragraph 0044) the pregelatinized starch (e.g., at least 75% or at least 90% by weight thereof) is in the form of individual sheet- or flake-like agglomerates, wherein drum-dried sheets can be ground to agglomerates hundreds of microns (e.g., 750 microns) in major dimension to provide a starch providing a pulpy texture to a food, down to on the order of 5-10 microns (fine granulometry) for a starch providing a smooth texture to a food, wherein, in some embodiments, the agglomerates of pregelatinized starch have a thickness (diameter) in the range of 20 microns to 100 microns (which overlaps with the claimed range of 100-120 μm).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Dihel to provide a pre-gelatinized pea starch with a small particle size in the range of 20 to 100 micrometers (which overlaps with the claimed range of 100-120 μm) as taught by Smoot since both are directed to compositions and methods of preparing compositions comprising pregelatinized starch, including pea starch, since providing a pre-gelatinized pea starch with a small particle size in the range of 20 to 100 micrometers is known in the art as shown by Smoot, since a small particle size can provide a smooth texture to a food (Smoot, Paragraph 0044), making the food more palatable and easier to swallow for consumers, and since a fine granulometry can ensure that the pregelatinized pea starch does not form undesirable clumps in the batter that are visually unappealing or that don’t mix well with other ingredients.
Furthermore, the claimed "d" value from 100 to 120 μm according to German norm DIN 66145 for the pregelatinized pea starch would have been used during the course of normal experimentation and optimization procedures in the product of Dihel, as modified above, based upon factors such as the desired texture for the batter (where the size distribution of the particles will affect the texture of the resultant batter and, therefore, the texture of food products prepared with the batter, where different consumers have different preferences in texture, with some consumers preferring food products with smoother textures), the intended viscosity of the batter, the particle size of other batter ingredients (where similarly sized particles can mix more evenly and have similar textural properties), etc. Furthermore, the Applicant does not appear to have identified any unique or unexpected benefit from the claimed "d" value from 100 to 120 μm according to German norm DIN 66145 that would render it non-obvious.
Fujimura teaches (Paragraph 0001, 0024) a tempura batter mix, wherein the mix contains wheat flour and gelatinized starch, and the total content of the grain flour and the starch is preferably from 90 to 97% by mass (which encompasses the claimed range of 92-94%).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Dihel, as modified above, to provide 90 to 97% by mass of wheat flour and gelatinized starch in the batter as taught by Fujimura, since both are directed to methods of preparing batters containing flour and gelatinized starch, since providing 90 to 97% by mass of wheat flour and gelatinized starch in the batter is known in the art as shown by Fujimura, since inclusion of a flour, such as rice, corn or wheat flour, reduces oil content (Dihel, Paragraph 0023), so the amount of flour can be selected to prevent the batter from being too oily, since the amount pregelatinized starch and wheat flour will determine the texture and viscosity in the finished food product, so the amount of the ingredients can be controlled for a suitable viscosity, and since the amount of pre-gelatinized starch and wheat flour will affect the taste and nutritional effects of the batter.
Furthermore, the claimed combined percentage of pregelatinized pea starch and wheat flour constituting 92 to 94% of the dry weight in the batter mix would have been used during the course of normal experimentation and optimization procedures in the product of Dihel, as modified above, based upon factors such as the intended texture and viscosity of the batter (where more pre-gelatinized starch would increase the viscosity of the batter), the desired taste and nutritional properties of the batter, the amount of other ingredients, the inclusion of other starches or flours, the intended coloration of the batter, the type of food coated with the batter, etc. Furthermore, the Applicant does not appear to have identified any unique or unexpected benefit from the claimed combined percentage of pregelatinized pea starch and wheat flour constituting 92 to 94% of the dry weight in the batter mix that would render it non-obvious.
Hyun teaches (Paragraph 0025) a batter mix comprising starch and wheat flour, 1-5% refined salt (which overlaps with the claimed range of 4-6%), 1-5% baking powder (sodium bicarbonate) 1-5% (which overlaps with the claimed range of 0.6-1%). Thus, the claimed amounts of salt and sodium bicarbonate are known in the art to be used in batter compositions and would be obvious to one of ordinary skill in the art to include in the composition to provide flavor from salt, leavening from sodium bicarbonate, affect the taste and texture of the batter, etc.
Furthermore, the claimed 4 to 6% (w/w) of salt would have been used during the course of normal experimentation and optimization procedures in the product of Dihel, as modified above, based upon factors such as the intended taste of the batter (where salt is commonly used to provide flavor to food products, but excess salt can adversely affect taste), the desired nutritional properties of the batter (where excess sodium can be harmful to consumers), the amount of other ingredients, the intended coloration of the batter, the type of food coated with the batter (where some foods may have low or high sodium contents prior to addition of the batter), etc. Furthermore, the Applicant does not appear to have identified any unique or unexpected benefit from the claimed 4 to 6% (w/w) of salt that would render it non-obvious.
Also, the claimed 0.6 to 1% (w/w) of sodium bicarbonate would have been used during the course of normal experimentation and optimization procedures in the product of Dihel, as modified above, based upon factors such as the intended texture of the batter, the desired nutritional properties of the batter, the amount of other ingredients, the intended volume of the batter (since sodium bicarbonate functions as a leavening agent), the type of food coated with the batter, the amount of other leavening agents in the batter, etc. Furthermore, the Applicant does not appear to have identified any unique or unexpected benefit from the claimed 0.6 to 1% (w/w) of sodium bicarbonate that would render it non-obvious.
Guthrie teaches (Claim 1) an aqueous batter mix for coating vegetables or pieces thereof, said batter mix comprising up to 1% by weight of sodium acid pyrophosphate (which overlaps with the claimed range of 0.5-1.5%). Thus, the claimed amount of sodium acid pyrophosphate is known in the art to be used in batter compositions and would be obvious to one of ordinary skill in the art to include to provide crisping and control browning.
Furthermore, the claimed 0.5 to 1.5% (w/w) of sodium acid pyrophosphate would have been used during the course of normal experimentation and optimization procedures in the product of Dihel, as modified above, based upon factors such as the intended texture of the batter, the desired nutritional properties of the batter, the amount of other ingredients, the intended volume of the batter (since sodium acid pyrophosphate functions as a leavening agent), the type of food coated with the batter, the amount of other leavening agents in the batter, the desired amount of crisping and browning, etc. Furthermore, the Applicant does not appear to have identified any unique or unexpected benefit from the claimed 00.5 to 1.5% (w/w) of sodium acid pyrophosphate that would render it non-obvious.
Huber teaches (Paragraph 0033) a bread crumb type food coating comprising wheat flour and 1.0% dextrose.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Dihel, as modified above, to include 1% dextrose in the batter in view of Huber, since both are directed to food coating mixes comprising flour, since including 1% dextrose in a food coating mix is known in the art as shown by Huber, since dextrose can providing flavor and sweeting to a food, while excess dextrose may render the food too sweet, and since some consumers prefer foods containing natural sugars like dextrose.
Also, the claimed 0.6 to 1% (w/w) of dextrose would have been used during the course of normal experimentation and optimization procedures in the product of Dihel, as modified above, based upon factors such as the intended taste and flavor of the batter (where dextrose can sweeten a food product), the desired nutritional properties of the batter, the amount of other ingredients, the type of food coated with the batter (since some foods naturally contain differing amounts of sugar), the amount of other sweetening agents in the batter, etc. Furthermore, the Applicant does not appear to have identified any unique or unexpected benefit from the claimed 0.6 to 1% (w/w) of dextrose that would render it non-obvious.
Moorcroft teaches (Page 1, lines 4-6, 18-20), a batter coating for a food product, wherein the batter is mixed using chilled water at 5 °C. Thus, batter coatings prepared by mixing with water at low temperatures near 7°C are known in the art.
Furthermore, the claimed water at 7°C provided to the batter mix would have been used during the course of normal experimentation and optimization procedures in the product of Dihel, as modified above, based upon factors such as the desired viscosity of the batter (where temperature affects viscosity), the ingredients in the batter (where some ingredients are sensitive to temperature changes or will be altered at higher temperatures), the temperature of the food to which the batter is applied, the intended storage temperature of the batter (where the water can help cool the batter to the desired temperature), etc. Furthermore, the Applicant does not appear to have identified any unique or unexpected benefit from the claimed water at 7°C provided to the batter mix that would render it non-obvious.
Lichtendonk teaches (Paragraph 0001, 0032) a batter and a food product having a coating comprising the batter, wherein the water content of the batter is preferably 50-60 wt.% (where a 60% water to 40% dry ingredient ratio is 3:2). Thus, the claimed ratio of water to dry ingredients in a batter coating is known in the art, and it would be obvious to use to prevent the batter from being too viscous or too runny.
Furthermore, the claimed ratio of water to dry ingredients in the batter mix of 3:2 (w/w)would have been used during the course of normal experimentation and optimization procedures in the product of Dihel, as modified above, based upon factors such as the desired viscosity of the batter (where the water content affects viscosity), the ingredients in the batter, the storage life of the batter, the food to which the batter is added (where different foods have different moisture contents), etc. Furthermore, the Applicant does not appear to have identified any unique or unexpected benefit from the claimed ratio of water to dry ingredients in the batter mix of 3:2 (w/w) that would render it non-obvious.
Moore teaches (Col. 2, lines 21-23; Col. 10, lines 18-21) a batter starch dry mix which can be easily reconstituted in an aqueous medium and applied to food pieces, wherein the starch batter dry mix was reconstituted in tap water by mixing in a Hobart mixer at a medium speed for 10 minutes.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Dihel, as modified above, to mix the water and dry ingredients for 10 minutes as taught by Moore since both are directed to batters comprising starch, since mixing dry ingredients with water for 10 minutes is known in the art as shown by Moore, since insufficient mixing will result in a batter with an inconsistent texture and viscosity that may not properly adhere to a food product, and since excessive mixing time will extend the total production time and render the product less cost effective to produce.
Furthermore, the claimed mixing time of 8-12 minutes would have been used during the course of normal experimentation and optimization procedures in the product of Dihel, as modified above, based upon factors such as the intended texture of the batter, the types of ingredients in the batter (where some ingredients mix more easily than others), the amount of the batter, the type of mixer and mixing speed. etc. Furthermore, the Applicant does not appear to have identified any unique or unexpected benefit from the claimed mixing time of 8-12 minutes that would render it non-obvious.
Gusek teaches (Col. 1, line 17) mixes for batter based baked goods, wherein ingredients are mixed for a period of 8-20 minutes at a mix temperature of 18°C and the mix after blending is at 18-21°C. Thus, maintaining a batter mix at a temperature of 16 to 20.5°C is known in the art and would be obvious to prevent spoilage or harm of the ingredients.
Furthermore, the claimed maintained temperature of 16 to 20.5°C would have been used during the course of normal experimentation and optimization procedures in the product of Dihel, as modified above, based upon factors such as the intended storage time, the types of ingredients in the batter (where some ingredients are altered or react to temperature changes), the energy costs of maintaining the batter at a set temperature, etc. Furthermore, the Applicant does not appear to have identified any unique or unexpected benefit from the claimed maintained temperature of 16 to 20.5°C that would render it non-obvious.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dihel (US 20040121046 A1) in view of Smoot (WO 2019005861 A1) and Fujimura (US 20170208846 A1), and further in view of Moore (US 3956515 A).
Regarding claim 22, Dihel, as modified above, is silent on the viscosity of the batter mixture being measured at the temperature of 15 to 25°C.
Moore teaches (Col. 2, lines 21-23; Col. 10, lines 21-23) a batter starch dry mix which can be easily reconstituted in an aqueous medium and applied to food pieces, wherein the viscosity of the starch batter is measured at 23°C.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Dihel, as modified above, to measure the viscosity of the batter mixture at the temperature of 15 to 25°C in view of Moore since both are directed to starch based batter coatings, since measuring the temperature of a batter mixture at 23°C is known in the art as shown by Moore, and since 15-25°C is around room temperature, and, therefore, will not require heating or cooling of the mixture to determine viscosity, while also demonstrating the viscosity of the batter at room temperature conditions.
Response to Arguments
Applicant's arguments filed 07/08/2026 Applicant’s arguments, see pages 7-12, with respect to the rejection(s) of claim(s) 1 under 35 USC 103 have been fully considered but are not persuasive.
Regarding the Applicant's argument that Dihel, Smoot, and Fujimura, alone or in combination, do not provide or suggest the percentage of the pregelatinized pea starch being about 7% (w/w) of the dry weight in the batter mixture since Smoot at best provides a list of ranges, since Smoot's pregelatinized starch is derived from a list of sources including peas, and since, given the breadth of these choices regarding both the percentage and the type of pre-gelatinized starch, the rejection has failed to demonstrate that one of ordinary skill in the art would have selected that the percentage of the pregelatinized pea starch is about 7% (w/w) of the dry weight in the batter mixture, from the plethora of options allegedly provided by Dihel and Smoot, the Examiner notes that the number of embodiments on an invention in the prior art does not nullify the disclosure of those embodiments. In this case, the embodiments of Smoot include pre-gelatized pea starch in a range of 5-10%, which encompasses the claimed range. The fact that Smoot discloses other sources of starch and other ranges of the starch in the mixture, does not change the fact that Smoot contains a disclosed embodiment with features that read upon the claimed invention. Furthermore, regarding the selection of pea starch specifically, the Examiner notes that Dihel, the primary reference, already discloses the use of pea starch, and, therefore, one of ordinary skill in the art would recognize the applicability of the claimed ranges of Smoot to the pea starch containing batter of Dihel.
In response to the Applicant’s argument that it would require undue experimentation to arrive at Applicant's recited about 7% pregelatinized pea starch based on the dry weight in the batter mixture, since the Examiner has not provided any reference that would direct one of skill in the art to test the claimed percentage of pregelatinized pea starch as a matter of routine, given the various other components and variables that may be optimized to achieve a desirable batter mixture, and instead is relying solely on the Applicant's disclosure to provide the about 7% (w/w) pregelatinized pea starch, the Examiner maintains 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." 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 of percentage ranges is the optimum combination of percentages. (See MPEP 2144.05 II A). In this case, Dihel teaches a composition comprising 0.5 to 3.0% of pre-gelatinized starches, but does not clarify if the percentage of pre-gelatinized starch is a percentage of the dry weight of the batter, while Smoot teaches the starch can be included in dry mixes in an amount of 1-10% or 5-30% (thus disclosing a lower limit of 5% and an upper limit of 10% which would constitute the percentage of the dry weight in a dry mix and encompasses the claimed value of about 7% of dry weight). Thus, the general conditions of a claim are disclosed in the prior art, since Smoot suggests a range of 5-10%, for example, and the claimed value of about 7% would have been used during the course of normal experimentation and optimization procedures in the product of Dihel, as modified above, based upon the factors stated above with regard to claim 1.
Regarding the Applicant’s argument that Dihel, Smoot, and Fujimura, alone or in combination, do not provide or suggest the batter mixture having fewer lumps compared to a control batter mixture containing the same percentage of pregelatinized corn starch or pregelatinized potato starch, and wherein the number of lumps in the batter mixture is counted when the batter mixture is at a temperature from 10 to 25°C since the Examiner has not shown that given all the different variables that could be optimized to arrive at a desired batter mixture, that one of ordinary skill in the art would not arrive at Applicant's recited batter mixture with improved lumping characteristics without undue experimentation, and since none of the cited references provides or suggests optimizing a percentage of pre-gelatinized pea starch in the batter mixture to achieve fewer lumping as compared to the same percentage of pre-gelatinized corn starch or pre-gelatinized potato starch, the Examiner maintains, as stated above with regard to claim 1, the claimed method is obvious is view of the prior art as explained above, and one of ordinary skill in the art would reasonably expect that the resulting properties of a batter produced by the method suggested by the prior art would be the same as the properties of the batter produced by the claimed invention, including having fewer lumps compared to a control batter mixture containing the same percentage of pregelatinized corn starch or pregelatinized potato starch. Furthermore, the applicant has not provided sufficient evidence to show criticality from the claimed “fewer lumps” that would render the claimed invention non-obvious. Additionally, the claim does not specify that batter is at a temperature of about 10 to about 25°C, nor does claim 1 require such a temperature range. The claim simply refers to a step of counting which does not need to occur in the method as currently claimed. Also, a claim’s scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. A wherein clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited (See MPEP 2111.04).
In response to the Applicant’s argument that the Applicant has surprisingly demonstrated in Figure 1 and Paragraph 0186 that 7% (w/w) pregelatinized pea starch based on dry weight in the batter mixture shows the least number of lumps in the batter mixture when compared to 7% pregelatinized corn starch or 7% pregelatinized potato starch, and no combination of cited references provides or suggests the observed result, the Examiner notes that 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. Unexpected results for a claimed range as compared with the range disclosed in the prior art had been shown by a demonstration of "a marked improvement, over the results achieved under other values (See MPEP716.02). However, no comparison is made to other values outside of the claimed range of pregelatinized pea starch comprising about 7% (w/w) of the dry weight in the batter mixture. The Applicant's Specification (Paragraph 0186; Figure 1) simply indicates that a 7% pea starch composition has less lumping than potato or corn starch composition, which are completely different substances rather than different ranges of the same substance. This is insufficient to demonstrate unexpected results. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance" (See MPEP 716.02(b)). Since no comparison is made to other pregelatinized pea starch values, the alleged results do not provide a sufficient showing of unexpected results.
Regarding the Applicant’s argument that the Examiner's allegation that the percentage of pregelatinized pea starch in the batter mixture is not inventive for the reason that a person of ordinary skill in the art could have used it through normal experimentation and optimization is a rejection based entirely on hindsight, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this instance, the prior art (Smoot) teaches an amount of pregelatinized starch of 5-10% for the purpose of preparing food compositions including batters, and, therefore, provides motivation to modify Dihel.
Also, the Applicant argues that additional prior art cited to address dependent claims, do not provide or suggest (1) wherein the percentage of the pregelatinized pea starch is about 7% (w/w) of the dry weight in the batter mixture; and (2) wherein the batter mixture has fewer lumps compared to a control batter mixture containing the same percentage of pregelatinized corn starch or pregelatinized potato starch, and wherein the number of lumps in the batter mixture is counted when the batter mixture is maintained at a temperature from 10 to 25°C. However, such features are known or obvious over Dihel in view of Smoot and Fujimura as explained above. Consequently, all claims depending from claim 1 also remain rejected under 35 USC 103.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Billmers (US 20050042331 A1) teaches starch coatings containing starch succinates for reduced fat fried foods, wherein sources for the starches include peas and wherein the starches may be pregelatinized.
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/AUSTIN PARKER TAYLOR/Examiner, Art Unit 1792
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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