DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The amendment filed 11/12/2025 has been entered. Claims 1-9 and 13-21 are pending. Prior objections and rejections not included below are withdrawn in view of Applicant’s arguments and amendments.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1, 8, 9, 13- 17, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Sanchez (US 2010/0196575 A1) in view of Chiu (EP 0486936 B1), taken with evidentiary reference of Bayer Crop Sciences (https://www.cropscience.bayer.us/articles/channel/what-is-waxy-corn-and-why-do-some-corn-producers-grow-it)
Regarding Claim 1, Sanchez teaches a substitute cheese product (Abstract) which comprises 5-30 wt% protein (Claim 7), a waxy starch [0085] and 10-30% of a vegetable oil [0064] The waxy starch comprises no more than about 10 wt% amylose [0085], entailing 90% or greater amylopectin. Sanchez additionally teaches an embodiment of the invention comprising less than 1% animal fat (which encompasses no animal fat) [0028], thus teaching a plant-based cheese. Sanchez teaches an amount of protein which encompasses the claimed range, rendering obvious the claimed amount of protein.
Sanchez teaches inclusion of 0.1-5 wt% starch, and 10-30% oil [0064], but does not address a starch amount of 10-20% or a degree of gelatinization of at least about 20%.
Chiu teaches that a starch derived from, e.g. waxy maize starch (Page 3, Line 33) that is gelatinized (Page 3, Line 53) can be used as a replacement for up to 100% of fat (Page 3, Line 34) in products such as cheese (Page 3, Line 44). Chiu teaches that this replacement creates a low fat food with preserved organoleptic properties (Page 14, Line 31). Note that waxy maize starch is nearly 100% amylopectin (see evidentiary references of Bayer Crop Sciences, Paragraph 1). Additionally, note that where Chiu teaches that the gelatinized starch is a “precooked, cold-water-swelling starch” and is converted by methods “well known in the art” (Page 3, Lines 52-54), the starch of Chiu is interpreted to be at least 20% gelatinized, as claimed.
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to replace some amount of the oil of Sanchez with the gelatinized, waxy starch of Chiu, including an amount equivalent to, e.g. 10% of the overall composition (which is 33% of the oil amount). One would have been motivated to make such a modification since Chiu teaches that the starch is a functional fat replacement in foods such as cheese (Page 3, Line 44). Note that the amount of oil (10-30%) provided by Sanchez is sufficient to provide for the fat and waxy starch of the Claim (e.g. 15% fat, 15% waxy starch).
Regarding the limitation of a cheese with the claimed hardness value, where Sanchez in view of Chiu teaches all the limitations of the Claim, the product of modified Sanchez is expected to have the claimed hardness. Note that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP 2112.01 I.
Regarding Claim 8, Sanchez teaches 5-30 wt% protein (Claim 7).
Regarding Claim 9, Sanchez teaches the use of soy, pea, rape (or canola), and corn (or zein) protein [0034].
Regarding Claim 13 and 15, Sanchez teaches the use of vegetable oil triglyceride (which is a fat) at 10-30% of the composition (Page 9, Claim 10), which encompasses the claimed range. The oil may be coconut, sunflower, or palm oil [0056]. It would have been obvious to have selected both coconut and sunflower oil, as claimed, since Sanchez teaches that coconut and sunflower oil are appropriate for use in cheese. The selection of a known material based on its suitability for its intended use support a prima facie obviousness determination. See MPEP 2144.07
Regarding Claim 14, Sanchez teaches the use of a waxy maize starch (which encompasses native waxy maize), tapioca, and cassaya (or cassava) starch [0085].
Regarding Claim 16 and 20, Sanchez teaches a method for producing the substitute cheese product (Page 8, Example 4) which involves combining protein, water, and oil in a high-speed mixer.
Note that Sanchez first teaches the addition of water at an elevated temperature (75 °C) followed by high-speed mixing, which is expected to raise the temperature of the mixture, followed by the addition of palm and coconut oil. Since palm and coconut oil are close to their melting point at 75 °C, it is expected that the palm and coconut oil are melted, as claimed, before the addition of the starch. (Sanchez does not specifically teach that the resulting mixture is an emulsion, but one of ordinary skill in the art would understand that high-speed mixing of a water and oil mixture creates an emulsion).
Starch is then added to the mixture, and the mixture is then heated and subsequently cooled. Sanchez teaches an embodiment of the invention wherein the starch is a waxy starch [0085] and the cheese comprises 5-30 wt% protein (Claim 7).
Sanchez teaches inclusion of 0.1-5 wt% starch, and 10-30% oil [0064], but does not address a starch amount of 10-20% or a degree of gelatinization of at least about 20%.
Chiu teaches that a starch derived from, e.g. waxy maize starch (Page 3, Line 33) that is gelatinized (Page 3, Line 53) can be used as a replacement for up to 100% of fat (Page 3, Line 34) in products such as cheese (Page 3, Line 44). Chiu teaches that this replacement creates a low fat food with preserved organoleptic properties (Page 14, Line 31). Note that waxy maize starch is nearly 100% amylopectin (see evidentiary references of Bayer Crop Sciences, Paragraph 1). Additionally, note that where Chiu teaches that the gelatinized starch is a “precooked, cold-water-swelling starch” and is converted by methods “well known in the art” (Page 3, Lines 52-54), the starch of Chiu is interpreted to be at least 20% gelatinized, as claimed.
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to replace some amount of the oil of Sanchez with the gelatinized, waxy starch of Chiu, including an amount equivalent to, e.g. 10% of the overall composition (which is 33% of the oil amount). One would have been motivated to make such a modification since Chiu teaches that the starch is a functional fat replacement in foods such as cheese (Page 3, Line 44). Note that the amount of oil (10-30%) provided by Sanchez is sufficient to provide for the fat and waxy starch of the Claim (e.g. 15% fat, 15% waxy starch).
Note that the selection of any order of mixing ingredients is prima facie obvious. See MPEP 2144.04 IV C. It would therefore have been obvious to have included the waxy starch as motivated by Chiu at the step of heating and mixing, as claimed.
Sanchez does not specifically teach a second addition of protein in specific amounts along with the waxy starch. However, selection of any order of mixing ingredients is prima facie obvious. See MPEP 2144.04 IV C. Since Applicant has not disclosed that the second addition of protein, or the addition of 2-8% w/v of plant-based protein, yields unexpected results, the claim is made obvious.
Regarding the limitation of a cheese with the claimed hardness value, where modified Sanchez teaches all the limitations of the Claim, the product of modified Sanchez is expected to have the claimed hardness. Note that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP 2112.01 I.
Regarding Claim 17, Sanchez teaches the addition of lactic acid, which is an acidulant [0100].
Regarding Claim 21, Sanchez teaches inclusion of 0.1-5 wt% starch, and 10-30% oil [0064], but does not address a starch amount of 10-16% or a degree of gelatinization of at least about 40%.
Chiu teaches that a starch derived from, e.g. waxy maize starch (Page 3, Line 33) that is gelatinized (Page 3, Line 53) can be used as a replacement for up to 100% of fat (Page 3, Line 34) in products such as cheese (Page 3, Line 44). Chiu teaches that this replacement creates a low fat food with preserved organoleptic properties (Page 14, Line 31). Note that waxy maize starch is nearly 100% amylopectin (see evidentiary references of Bayer Crop Sciences, Paragraph 1). Additionally, note that where Chiu teaches that the gelatinized starch is a “precooked, cold-water-swelling starch” and is converted by methods “well known in the art” (Page 3, Lines 52-54), the starch of Chiu is interpreted to be at least 40% gelatinized, as claimed.
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to replace some amount of the oil of Sanchez with the gelatinized, waxy starch of Chiu, including an amount equivalent to, e.g. 10% of the overall composition (which is 33% of the oil amount). One would have been motivated to make such a modification since Chiu teaches that the starch is a functional fat replacement in foods such as cheese (Page 3, Line 44). Note that the amount of oil (10-30%) provided by Sanchez is sufficient to provide for amount of fat and waxy starch which lie within the Claimed ranges (e.g. 16% fat, 14% waxy starch).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Sanchez in view of Chiu and taken with evidentiary reference of Bayer Crop Sciences as applied to Claim 1, above, and further in view of Hayden (https://digitalcommons.wku.edu/stu_hon_theses/563/).
Regarding Claim 2, Sanchez teaches a substitute cheese product with added lactic acid [0100], which is an acidulant, but does not discuss the pH of the cheese.
Hayden teaches that the pH of cheese is typically 5.1-5.9 (page 3, “What is pH?”, lines 5-6).
Therefore, it would have been obvious to one of ordinary skill in the art before the
filling date of the claimed invention to produce an imitation cheese with pH as claimed. One would have been motivated to make such a modification to imitate the properties of conventional cheese.
Claims 3-5 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Sanchez in view of Chiu and taken with evidentiary reference of Bayer Crop Sciences as applied to Claim 1, and further in view of Huang (“Comparison of different oleogels in processed cheese products formulation”, https://doi.org/10.1111/ijfs.13846)
Regarding Claims 3-5, Sanchez teaches a substitute cheese as described above in regard to Claim 1. Sanchez teaches the use of vegetable oil but does not teach the addition of wax. Sanchez teaches that the vegetable oil is intended to replace animal fat (such as milk fat) [0050].
Huang teaches a cheese product comprising an oleogel, made with soybean oil and 0.5 or 1% rice bran wax (Summary). The oleogel replaces the milk fat in conventional cheese (Summary). Huang additionally teaches that an oleogel-containing processed cheese products have good rheological and thermomechanical properties compared to commercial processed cheese products (Summary).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the product of Sanchez to include wax as taught by Huang. One would have been motivated to make such a modification to create a cheese product with good texture. Note that rice bran wax is interpreted to meet the limitations of both Claim 3 and 4.
Regarding Claim 18, Sanchez teaches a process for making a cheese substitute as applied to Claim 16, above. Huang teaches the addition of rice bran wax to an oleogel intended to replace animal fat as applied to Claim 3, above. Since Applicant teaches rice bran wax in Claim 4 as meeting the limitation of a wax having a melting point of less than 80 °C in Claim 3, rice bran wax is interpreted to meet the limitations of Claim 18.
Claims 6, 7, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Sanchez in view of Chiu and taken with evidentiary reference of Bayer Crop Sciences as applied to Claim 1 and 16, above, and further in view of Naeli (“Development of innovative ethyl cellulose-hydroxypropyl methylcellulose biopolymer oleogels as low saturation fat replacers: Physical, rheological and microstructural characteristics”, https://doi.org/10.1016/j.ijbiomac.2020.04.087)
Regarding Claims 6 and 7, Sanchez teaches a substitute cheese as described above in regard to Claim 1. Sanchez teaches the use of vegetable oil but does not teach the addition of ethyl cellulose. Sanchez teaches that the vegetable oil is intended to replace animal fat (such as milk fat) [0050].
Naeli teaches an oleogel intended to replace the solid fats in cheese (Introduction, Paragraphs 1-3). The oleogel comprises ethyl cellulose at 1, 3, or 5 wt% of the total oil phase (Section 2.2.1, Oleogels preparation). Naeli teaches that the prepared oleogel is a good alternative fat (Conclusion).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to utilize ethylcellulose in the product of Sanchez. One would have been motivated to make such a modification to formulate a product with a good alternative to animal fat.
Regarding Claim 19, Sanchez teaches a method for making a substitute cheese product as described above in regard to Claim 16. Sanchez does not teach the addition of ethyl cellulose to the fat.
Naeli teaches an oleogel intended to replace the solid fats in cheese (Introduction, Paragraphs 1-3). The oleogel comprises ethyl cellulose at 1, 3, or 5 wt% of the total oil phase (Section 2.2.1, Oleogels preparation) blended with a plant oil to make an organogel. Naeli teaches that the prepared oleogel is a good alternative fat (Conclusion).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to utilize ethylcellulose in the product of Sanchez by blending ethylcellulose with a plant oil. One would have been motivated to make such a modification to formulate a product with a good alternative to animal fat.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-9 and 13-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 43-47, 49, 52-54, 59-60, and 62 of copending Application No. 18/698,946 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following features:
Claim #
Feature
Overlapping Feature
Claim # in reference app
1
10-25% protein, waxy starch comprising at least 70% amylopectin and 20% gelatinized, fat
Claim 1 - 10-25% protein, starch comprising at least 65% amylopectin, fat. Claim 49- starch is at least 25% gelatinized
43, 49
4
Orange wax, rice bran wax, sunflower wax, beeswax, propolis wax, candelilla wax
Orange wax, rice bran wax, sunflower wax, beeswax, propolis wax, candelilla wax
47
5
0.5-5 wt% wax
0.1-5% oleogelator
48
6
Ethyl cellulose
Ethyl cellulose
46
7
0.1-2 wt% ethylcellullose
0.1-5% oleogelator
48
8
14-20% protein
14-20% protein
53
9
Faba, chickpea, mung bean, soy, zein, lupin, canola, pea, lentil, or flax protein
Faba, chickpea, mung bean, soy, zein, lupin, canola, pea, lentil, or flax protein
54
10
5-20 wt% waxy starch
5-20 wt% waxy starch
52
13
Coconut oil, shea oil, shea stearin, shea olein, shea butter, palm oil, palm oil fraction, sunflower oil, cocoa butter, cottonseed glycerolysis product
Coconut oil, shea oil, shea stearin, shea olein, shea butter, palm oil, palm oil fraction, sunflower oil, cocoa butter, cottonseed glycerolysis product
58
15
Coconut oil, sunflower oil
Coconut oil, sunflower oil
58
16
Method of making a plant-based cheese, comprising emulsifying an aqueous protein mixture w/ a fat, adding additional protein + waxy starch, heating and mixing, then cooling. Cheese comprises 10-25% protein and starch comprises 70% amylopectin
Method of making a plant-based cheese, comprising emulsifying an aqueous protein mixture w/ a fat, adding additional protein + waxy starch, heating and mixing, then cooling. Cheese comprises 10-25% protein and starch comprises 65% amylopectin
57
19
Ethyl cellulose
Ethyl cellulose
59
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments filed 11/12/2025 have been fully considered but they are not persuasive.
Regarding rejections under 35 U.S.C. 103, Applicant argues (Pages 6-7 of Remarks) that Sanchez teaches, at most, 5% of starch, and Chiu provides no guidance as to the amount of gelatinized starch that should be included in a plant-based cheese product. Applicant argues that the amount of starch in the instant Claim is therefore not taught by the combination of the prior art.
This argument is not convincing. Chiu teaches that the gelatinized starch may be used to replace up to 100% of the fat in cheese products, as discussed above in regards to Claim 1. It would therefore would have been obvious to use gelatinized starch to replace any amount of the fat in the composition of Sanchez.
Applicant additionally argues (Page 7 of Remarks) that Sanchez does not teach a plant-based cheese having the claimed hardness. Applicant additionally argues that Sanchez teaches cheese have a rating of 2-3 on a 1-5 scale of hardness.
This argument is not convincing. First, note that Example 5 of Sanchez provides sliceability properties for one example only, and one having ordinary skill would not expect the results of Example 5 to generalize for all the teachings of Sanchez. Second, where modified Sanchez teaches all the limitations of the Claim, the product of modified Sanchez is expected to have the claimed hardness, absent evidence to the contrary. Note that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP 2112.01 I.
Additionally, note that lacking quantitative guidelines for the 1-5 rating of Sanchez, no specific conclusions can be drawn regarding the hardness of the cheese of Sanchez.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH LIU whose telephone number is (571)270-5685. The examiner can normally be reached 12-8 Eastern Time.
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, 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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/D.L./ Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791