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 .
Response to Amendment
The amendment filed 04/03/2026 has been entered. Claims 1-4, 7-8, 11-16, and 18-23 remain pending in the application. Claims 11-16 and 18-21 remain withdrawn. Claims 1-4, 7-8, and 22-23 remain rejected.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 22-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 22, it is unclear if the claim is limiting the hardness or the mass of the edible sheet. The claim has a range of hardness of 500 g to 800 g. However, “g” or grams is typically understood to be a unit of mass rather than hardness. The unit grams-force or gf is a unit of hardness, and the Examiner notes that the Applicant’s Specification uses units of “gf” for hardness in Paragraph 0042. Consequently, it is unclear if the claim is limiting the mass or hardness of the edible sheet, and the claim is rejected as indefinite. For the purposes of further examination, claim 9 has been understood to limit hardness in the range of 500 gf to 800 gf.
Also, regarding claim 22, it is unclear how elasticity can have units of seconds, since seconds are understood to be a unit of time, not elasticity. Therefore, claim 22 is rejected as indefinite.
Claim 23 is rejected as indefinite as a result of depending upon indefinite claim 22.
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) 1-4 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chung (US 20140170291 A1) in view of Shay (US 20150237895 A1), Schultz (US 20190364937 A1), Inoue (WO 2015170631 A1), Tutuncu (US 20030118628 A1), Vander (WO 2010103483 A2), Miyake (JP H02100645 A), Karwowski (US 20060246195 A1), Horie (JP S62134070 A), and Choi (KR 20180010518 A).
Regarding claim 1, Chung teaches (Paragraph 0003, 0021-0025) novel laver (seaweed) snacks produced by using cereal sheets, wherein a bonding solution is applied to a cereal sheet (grain sheet), a laver (seaweed) sheet is applied to the cereal sheet with the bonding solution, the cereal sheet and the laver sheet are pressed together to prepare a double-layer sheet, and oil (moisture barrier layer comprising a moisture barrier material) is applied on the double-layer sheet (where the oil applied to the double-layer sheet must necessarily be applied on at least one side of the bonded sheet). Chung further teaches (Paragraph 0041) the oil (moisture barrier layer) may be any oil permitted for food preparation (edible oil).
Chung is silent on the moisture barrier layer comprising the moisture barrier material being formed on one surface of a bonding portion where the grain sheet and the seaweed sheet are bonded or both sides of the bonded sheet. Also, Chung is silent on the edible oil and fat comprising at least one selected from the group consisting of hydrogenated palm kernel oil, and palm olein oil. Chung is further silent on the edible sheet having a moisture content of 0.5 wt% or higher and less than 3.0 wt% per 1 g of the edible sheet 60 days immediately after freezing.
Shay teaches (Paragraph 0004, 0052) an edible paper-like sheet, wherein both sides of the sheet may be coated with the food grade oil (moisture barrier layer).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Chung as modified above to form the moisture barrier layer on both sides of the bonded sheet in view of Shay since both are directed to edible sheet food products with an oil moisture barrier layer since an edible sheet with an oil moisture barrier layer on both sides is known in the art as shown by Shay, since the coatings of oil enhance the moisture barrier (Shay, Paragraph 0052) so providing the oil on both sides of the bonded sheet would ensure that neither the grain nor the seaweed absorbs undesired moisture, and since the coatings of oil preserve the integrity of the sheet when it comes in contact with other materials (Shay, Paragraph 0052) so providing the oil/moisture barrier layer on both sides would preserve the integrity of both the grain and seaweed sheets.
Inoue teaches (Page 1, 7) an oil and fat composition for coating seaweed, wherein the type of fat or oil that may be used for coating the laver includes palm kernel oil, and the processed oils and fats may be hydrogenated.
Schultz teaches (Paragraph 0012, 0032, 0049, 0051) coating a cereal piece in a composition comprising an acid component and an oil component, wherein the oil component comprises one or more edible oils/fats including hydrogenated palm kernel oil, and wherein the cereal piece comprises a grain-based core that may be rice in some embodiments.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Chung to use or include hydrogenated palm kernel oil in the edible oil and fat in view of Schultz and Inoue, since each of Chung, Schultz, and Inoue is directed to a seaweed and or grain product treated with oil and fat, since Chung teaches (Paragraph 0041) the oil (moisture barrier layer) may be any oil permitted for food preparation (edible oil), since coating seaweed with hydrogenated palm kernel oil is known in the art from Inoue, since coating grains including rice with hydrogenated palm kernel oil is known in the art from Schultz, since an oil and fat composition that may be hydrogenated palm kernel oil can improve the flavor of the laver, even after storage, enhance saltiness while using less salt and raw materials, improve the umami, and enhance spiciness (Inoue, Page 8), since hydrogenated palm kernel oil is known as a particularly preferred food ingredient for oral comfort, e.g., lubricate, coat and/or moisten, the oral cavity (Tutuncu, Paragraph 0033, 0034), and since hydrogenated palm kernel oil is a preferred coating for a food product since such fats function as a moisture barrier, which minimizes the risk for intrusion of moisture into the food product, but fully melts in the mouth (Vander, Page 13, lines 22-30).
Furthermore, providing hydrogenated palm kernel oil as a moisture barrier for a bonded sheet would have been obvious to one of ordinary skill in the art, since selection of a known material based on its suitability for its intended use is prima facie obvious (See MPEP 2144.07), and hydrogenated palm kernel oil is a known coating material for seaweed and grain food products as demonstrated above by Schultz and Inoue.
Miyake teaches (Page 1, lines 13-15; Page 2, lines 90-82; Page 3, lines 107-109) a frozen mochi processed product, wherein mochi made from 100% glutinous rice (grain) may be used, and, in certain embodiments, the mochi may be wrapped in seaweed and quickly frozen and stored in a frozen state.
Karwowski teaches (Paragraph 0035, 0099) a whole grain, shredded chip-like snack having a substantially uniform shredded net-like appearance and a crisp, shredded texture obtained by substantially compressing a laminate of net-like sheets of the shredded whole grain pellets, wherein products of the present invention may have a moisture content of less than about 5% by weight, preferably about 0.5 to about 3 weight percent.
Horie teaches (Page 2, lines 65-66, 75-77) a laver (seaweed) made by applying oil uniformly and heating with a moisture content of about 2%.
Choi teaches (Paragraph 0001, 0023) a method for producing kelp powder tea by mixing red yeast germinated brown rice powder and kelp powder, wherein fermented germinated brown rice is subjected to freeze-drying so that the moisture content becomes 1.3 to 1.5%, and then the rice is stored frozen, prior to crushing to powder. Choi further teaches (Paragraph 0029) cut kelp (seaweed) is subjected to freeze-drying so that the moisture content becomes 1.3 to 1.5%, and then the kelp is stored frozen, prior to crushing to powder.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Chung to make the edible sheet a frozen edible sheet with a moisture content of 0.5 wt% or higher and less than 3.0 wt% in view of Miyake, Karwowski, Horie, and Choi since each of Chung, Miyake, Karwowski, Horie, and Choi are directed to food products comprising grains and/or seaweed, since grains and seaweed, the two moisture containing components of the bonded sheet, are known to be prepared with moisture contents of 0.5 wt% or higher and less than 3.0 wt% as shown by Karwowski and Horie, since storing frozen grain and frozen seaweed with moisture contents of 0.5 wt% or higher and less than 3.0 wt% is known in the art as shown by Choi, since freezing a food product comprising grains and seaweed is known in the art as shown by Miyake, since both freezing and reduction of moisture content are well known methods of preservation that will extend the shelf life of the edible sheet and allow for transportation for distribution, so that a consumer may eat the edible sheet at a preferred time and location, since the original color, taste, and aroma of the germinated brown rice are not lost under the freeze-drying conditions of a moisture content of 1.3 to 1.5% (Choi, Paragraph 0023), and since the original color, taste, and aroma of kelp are not lost under the freeze-drying conditions of a moisture content of 1.3 to 1.5% (Choi, Paragraph 0029).
Furthermore, the claimed moisture content of 0.5 wt% or higher and less than 3.0 wt% per 1 g of the edible sheet 60 days immediately after freezing would have been used during the course of normal experimentation and optimization procedures in the method of Chung based upon factors such as the intended texture of the edible sheet (where less moisture will make the sheet harder and more brittle while more moisture will make the sheet softer), the type of seaweed and grain used to produce the edible sheet, the structural integrity of the edible sheet (where too little moisture will make the sheet brittle while excess moisture will make the sheet soft and unrigid), consumer preferences in moisture content, desired storage life (where excess moisture can allow bacteria to grow), the intended storage period (where lowering the temperature below freezing and removing moisture will extend the shelf life of the product), etc. Furthermore, the Applicant does not appear to have identified any unique or unexpected benefit from the claimed moisture content of 0.5 wt% or higher and less than 3.0 wt% per 1 g of the edible sheet 60 days immediately after freezing that would render it non-obvious.
Regarding claim 2, Chung teaches (Paragraph 0032) the term "cereal sheet" refers to a thin sheet of any shape that is prepared by using cereals such as rice powder and/or starch, and water.
Regarding claim 3, as shown above, Chung teaches (Paragraph 0023) preparing the bonded sheet using a laver sheet.
Regarding claim 4, Chung teaches (Paragraph 0036) the cereal sheet may be attached to the laver sheet by using a bonding solution selected from alternatives including water, salt water, and starch water.
Regarding claim 8, Chung is silent on the edible sheet being a frozen edible sheet.
Miyake teaches (Page 1, lines 13-15; Page 2, lines 90-82; Page 3, lines 107-109) a frozen mochi processed product, wherein mochi made from 100% glutinous rice (grain) may be used, and, in certain embodiments, the mochi may be wrapped in seaweed and quickly frozen and stored in a frozen state.
Choi teaches (Paragraph 0001, 0023) a method for producing kelp powder tea by mixing red yeast germinated brown rice powder and kelp powder, wherein fermented germinated brown rice is subjected to freeze-drying so that the moisture content becomes 1.3 to 1.5%, and then the rice is stored frozen, prior to crushing to powder. Choi further teaches (Paragraph 0029) cut kelp (seaweed) is subjected to freeze-drying so that the moisture content becomes 1.3 to 1.5%, and then the kelp is stored frozen, prior to crushing to powder.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Chung to make the edible sheet a frozen edible sheet in view of Miyake and Choi since each of Chung, Miyake, and Choi are directed to food products comprising grains and/or seaweed, since storing frozen grain and frozen seaweed is known in the art as shown by Choi, since freezing a food product comprising grains and seaweed is known in the art as shown by Miyake, since both freezing and reduction of moisture content are well known methods of preservation that will extend the shelf life of the edible sheet and allow for transportation for distribution, so that a consumer may eat the edible sheet at a preferred time and location, since the original color, taste, and aroma of the germinated brown rice are not lost under the freeze-drying conditions of a moisture content of 1.3 to 1.5% (Choi, Paragraph 0023), and since the original color, taste, and aroma of kelp are not lost under the freeze-drying conditions of a moisture content of 1.3 to 1.5% (Choi, Paragraph 0029).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chung (US 20140170291 A1) in view of Shay (US 20150237895 A1), Schultz (US 20190364937 A1), Inoue (WO 2015170631 A1), Tutuncu (US 20030118628 A1), Vander (WO 2010103483 A2), Miyake (JP H02100645 A), Karwowski (US 20060246195 A1), Horie (JP S62134070 A), and Choi (KR 20180010518 A), and further in view of Palm kernel Safety Data Sheet.
Regarding claim 7, Chung is silent on the edible oil and fat being in a solid or semi-solid state at room temperature.
As shown above, It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Chung to use hydrogenated palm kernel oil as the edible oil and fat for the reasons stated above with regard to claim 1.
Furthermore, it is known in the art that hydrogenated palm kernel oil is a solid at room temperature.
For example, Palm kernel Safety Data Sheet teaches (Section 3, 9) Hydrogenated Palm Kernel Oil is soft solid with a melting point of 110°F (above room temperature).
Claim(s) 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chung (US 20140170291 A1) in view of Shay (US 20150237895 A1), Schultz (US 20190364937 A1), Inoue (WO 2015170631 A1), Tutuncu (US 20030118628 A1), Vander (WO 2010103483 A2), Miyake (JP H02100645 A), Karwowski (US 20060246195 A1), Horie (JP S62134070 A), and Choi (KR 20180010518 A), and further in view of Villagran (US 20120021113 A1).
Regarding claim 22, Chung does not explicitly state that the edible sheet has a hardness in a range of 500 g to 800 g, and an elasticity in a range of 0.7 seconds to 2.0 seconds.
However, Chung, as modified above, teaches the claimed bonded sheet, and therefore, the bonded sheet of the prior art would be expected to possess the same properties, including hardness and elasticity, as that of the claimed invention.
Additionally, the claimed hardness in a range of 500 g to 800 g and elasticity in a range of 0.7 seconds to 2.0 seconds would have been used during the course of normal experimentation and optimization procedures in producing the product of Chung, as modified above, based upon factors such as the type of seaweed and grain used (where different seaweeds and grains would have different structural and texture properties that would affect the hardness and elasticity), the relative amounts of seaweed sheet, grains sheet, and oil used to prepared the bonded sheet, the extent and type of treatment of the bonded sheet (where heating and/or cooling can affect the hardness and elasticity of the bonded sheet), the serving temperature of the edible sheet, the moisture content of the edible sheet, the desired mouthfeel of the edible sheet, etc. Furthermore, the Applicant has neither demonstrated the criticality nor identified any unique or unexpected benefit of the claimed hardness in a range of 500 g to 800 g and elasticity in a range of 0.7 seconds to 2.0 seconds that would render it non-obvious.
Furthermore, since Chung is silent with regards to hardness in a range of 500 g to 800 g one of ordinary skill in the art would have been motivated to look to the art for suitable hardness values.
Villagran teaches (Paragraph 0013, 0096) a fabricated snack product made from rice flour (grain sheet) with a hardness from about 100 gf to about 750 gf (which overlaps with the claimed range of 500 to 800).
Selection of a known hardness (material property value) based on its suitability for its intended use (grain based food product) supports a prima facie obviousness determination (See MPEP 2144.07).
Regarding claim 23, the claim limitations appear to be directed to a method of sampling or testing product properties, rather than actual processing steps or ingredients in making the claimed composition, and thus hold little weight in the product claims present in this application. Furthermore, the product of Chung, as modified in view of the secondary references, would be expected to exhibit the same material properties as those sampled and tested by the applicant due to the use of the same materials. It is acknowledged that, in some instances, the process of measuring would affect the result. However, as previously stated, the claimed hardness and elasticity would have been used during the course of normal experimentation and optimization procedures in producing the product of Chung, as modified above, for the reasons explained above with regard to claim 22, and, therefore, the method of measuring the hardness and elasticity in claim 23 would be obvious to one of ordinary skill in the art in view of the prior art.
Response to Arguments
Applicant' s arguments, see pages 6-12, filed 04/03/2026, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, these arguments have been made in view of amendments to the claims, and, upon further consideration, a new ground(s) of rejection is made over Chung (US 20140170291 A1) in view of Shay (US 20150237895 A1), Schultz (US 20190364937 A1), Inoue (WO 2015170631 A1), Tutuncu (US 20030118628 A1), Vander (WO 2010103483 A2), Miyake (JP H02100645 A), Karwowski (US 20060246195 A1), Horie (JP S62134070 A), and Choi (KR 20180010518 A), as shown above.
Regarding the Applicant’s argument that Chung does not teach the concept that the oil application would prevent moisture transfer or function as a moisture prevention layer since Chung merely applies oil to enhance the flavor of the laver snack, not for the purpose of preventing moisture transfer, and, therefore, Chung fails to disclose or suggest a "moisture barrier layer" as claimed, either structurally or functionally, the Examiner respectfully disagrees. The Applicant’s claimed “moisture barrier layer” comprises “at least one selected from the group consisting of edible oil and fat, shellac, lecithin, carnauba wax, and gelatin,” as stated in claim 1. A product comprising the claimed ingredients is understood to have the same properties of the claimed invention absent evidence that the claimed invention is meaningfully different in composition. Therefore, Chung’s product, comprising oil, satisfies the claim language and is understood to teach a moisture barrier layer. Additionally, the immiscibility of oil and water is well known, and the newly cited prior art Shay teaches (Paragraph 0052) coatings of oil enhance the moisture barrier.
In response to the Applicant’s argument that there is insufficient teaching or motivation to use hydrogenated palm kernel oil as a moisture barrier layer in the claimed configuration in view of Schultz since Schultz does not disclose or suggest a laminated sheet structure comprising bonded grain and seaweed sheets, nor does it address moisture migration within such a structure or after freezing, and since granular shapes such as cereal pieces, or puffed products, have shapes and surface areas that significantly differ from those of sheet- type products, resulting in fundamentally different moisture penetration and diffusion behavior, the Examiner notes that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, Chung already discloses applying oil on the edible sheet, as explained above, the edible oil satisfies the claim requirements is understood to be a moisture barrier layer as a result. While Schultz does not disclose bonded grain and seaweed sheets, applying oil to such sheets is already known from Chung, and both Chung and Schultz are directed to grain based products including rice based products. The Examiner further maintains that the claimed invention, particularly claim 1, does not limit the type or grain used in the grain sheet or the structure or thickness of the grain sheet itself such that cereal pieces, or puffed products would be excluded. Additionally, the claimed product is not a frozen product, the claimed invention merely describes properties of the claimed product after freezing, and such properties are addressed above in view of Miyake, Karwowski, Horie, and Choi. Additionally, as stated above with regard to claim 1, sufficient motivation is provided for the use of hydrogenated palm kernel oil since an oil and fat composition that may be hydrogenated palm kernel oil can improve the flavor of the laver, even after storage, enhance saltiness while using less salt and raw materials, improve the umami, and enhance spiciness (Inoue, Page 8), since hydrogenated palm kernel oil is known as a particularly preferred food ingredient for oral comfort, e.g., lubricate, coat and/or moisten, the oral cavity (Tutuncu, Paragraph 0033, 0034), and since hydrogenated palm kernel oil is a preferred coating for a food product since such fats function as a moisture barrier, which minimizes the risk for intrusion of moisture into the food product, but fully melts in the mouth (Vander, Page 13, lines 22-30).
Regarding the Applicant’s argument that Inoue does not teach or suggest that such coatings function as a moisture barrier layer, nor does it address moisture migration, moisture retention, or stability after freezing, that, Inoue is directed to coating a single seaweed substrate and does not disclose or suggest a bonded sheet comprising both grain and seaweed layers, or the selective placement of a coating on both outer surfaces or at a bonding interface as required by the claims, and that accordingly, Inoue fails to remedy the deficiencies of Chung and does not provide a motivation to modify Chung to arrive at the present claims, as stated above with regard to Schultz, the Examiner notes that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, Chung already discloses applying oil on the edible sheet, as explained above, the edible oil satisfies the claim requirements and is therefore understood to be a moisture barrier layer as a result. While Inoue does not disclose bonded grain and seaweed sheets, applying oil to such sheets is already known from Chung, and both Chung and Inoue are directed to seaweed based products. Additionally, the claimed product is not a frozen product, the claimed invention merely describes properties of the claimed product after freezing, and such properties are addressed above in view of Miyake, Karwowski, Horie, and Choi. Additionally, as stated above with regard to claim 1, sufficient motivation is provided for the use of hydrogenated palm kernel oil since an oil and fat composition that may be hydrogenated palm kernel oil can improve the flavor of the laver, even after storage, enhance saltiness while using less salt and raw materials, improve the umami, and enhance spiciness (Inoue, Page 8), since hydrogenated palm kernel oil is known as a particularly preferred food ingredient for oral comfort, e.g., lubricate, coat and/or moisten, the oral cavity (Tutuncu, Paragraph 0033, 0034), and since hydrogenated palm kernel oil is a preferred coating for a food product since such fats function as a moisture barrier, which minimizes the risk for intrusion of moisture into the food product, but fully melts in the mouth (Vander, Page 13, lines 22-30).
In response to the Applicant’s argument that Tutuncu is non-analogous art and does not support the Office's position, since Tutuncu is directed to a confectionery product designed to alleviate xerostomia and Tutuncu is concerned with the internal arrangement of functional ingredients within a confectionery product, not with surface treatments or barrier layers, the Examiner notes that it has been held that a prior art reference must either be in the field of the inventor' s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the both the Applicant’s claimed invention and Tutuncu are directed to food products comprising an edible oil, particularly hydrogenated palm kernel oil, and therefore, Tutuncu is pertinent to the problem with which the Applicant is concerned. Even if Tutuncu does not explicitly identify hydrogenated palm kernel oil as a moisture barrier layer, Tutuncu is merely relied upon to demonstrate the beneficial properties of hydrogenated palm kernel oil in food products (oral comfort, e.g., lubricate, coat and/or moisten, the oral cavity) which are also applicable to the claimed bonded sheet.
Regarding the Applicant’s argument that Vander does not teach or suggest the claimed configuration, and a person of ordinary skill in the art would not look to particulate coating techniques in ice cream products to modify a laminated grain/seaweed sheet to include a moisture barrier layer as recited in the present claims, and the Office's reliance on Vander therefore reflects improper hindsight rather than a reasoned analysis under § 103, In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, 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 case, Vander the use of hydrogenated palm kernel oil with rice/grain and seaweed products is already known from Shultz and Inoue. Moreover, Vander is relied upon simply as an evidentiary reference to show that hydrogenated palm kernal oil functions as a moisture barrier. While the food product disclosed by Vander is different than that of the claimed invention, the properties of hydrogenated palm kernel oil would remain unchanged. Furthermore, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding Miyake, Karwowski, Horie, and Chung, the Applicant argues that each of these references does not disclose or suggest a bonded sheet comprising a grain sheet and a seaweed sheet, nor does it teach forming a moisture barrier layer on such a structure or address moisture migration within such a laminated structure. However, as stated above, Chung already discloses applying oil on the edible sheet, as explained above, the use of edible oil satisfies the claim requirements and is therefore understood to be a moisture barrier layer as a result. Furthermore, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In response to the Applicant’s argument that the Office's rejection relies on selectively combining disparate teachings from unrelated food products and assigning a new function to known ingredients without support, and such reasoning is based on improper hindsight rather than a reasoned analysis under § 103, the Examiner notes that 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).
Regarding the Applicant’s argument that Appendix A includes transcript excerpts of Federal Circuit oral arguments in which many judges expressed concern and skepticism regarding obviousness rejections that combine many references (e.g., more than four references), the Examiner maintains that reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).
In response to the Applicant’s argument that new claims 22-23 recite that the edible sheet has a hardness of 500-800 g and an elasticity of 0.7-2.0 seconds, and these limitations are not mere recitations of general physical properties, but instead define functional parameters that are important for the performance of the claimed edible sheet, where, the claimed ranges of hardness and elasticity are selected such that the structure simultaneously achieves (i) sufficient mechanical strength to prevent breakage during handling and distribution, and (ii) appropriate deformation and recovery during chewing to provide a crispy masticatory texture, and as demonstrated in Experimental Example 4, sheets falling outside the claimed ranges fail to achieve this balance, and the specified ranges of hardness and elasticity are conditions necessary to simultaneously achieve appropriate structural stability and texture, the Examiner maintains that Chung, as modified above, teaches the claimed bonded sheet, and therefore, the bonded sheet of the prior art would be expected to possess the same properties, including hardness and elasticity, as that of the claimed invention. Furthermore, the Applicant’s Example 4 is directed to particular values (e.g. 653.262 g and 1 second) that fall within the claimed ranges, but this is not sufficient to demonstrate the criticality of the claimed ranges in their entirety. Moreover, Example 4 (Paragraph 00148) refers to a product produced with a cone-shaped mold, and it is unclear if a cone-shaped product is the same as the claimed bonded sheet. Additionally, a hardness of 500-800 g and an elasticity of 0.7-2.0 seconds would have been used during the course of normal experimentation and optimization procedures in producing the product of Chung, as modified above, for the reasons stated above with regard to claims 22 and 23.
Regarding the Applicant’s argument that Villagran measures hardness as fracture strength (i.e., maximum load at break) of an individual chip, whereas the present claims define hardness as compressive resistance under controlled deformation conditions in a laminated sheet. Thus, even though both references use the term "hardness," the measured property, testing methodology, and technical significance differ fundamentally, the Examiner notes that differences in measurement methods hold very little weight in the product claims present in this application. Furthermore, the product of Chung, as modified in view of the secondary references, would be expected to exhibit the same material properties as those sampled and tested by the applicant due to the use of the same materials. Additionally, it is unclear if the claim is limiting the hardness or the mass of the edible sheet, since the claim has a range of hardness of 500 g to 800 g. However, “g” or grams is typically understood to be a unit of mass rather than hardness.
In response to the Applicant’s argument that Villagran does not disclose or suggest elasticity, while the present claims require that both hardness and elasticity fall within specific ranges, and as shown in Experimental Example 4, only when both parameters are satisfied simultaneously is the desired combination of crisp texture and structural stability achieved, the Examiner notes that no objective evidence is provided that that the “desired combination of crisp texture and structural stability is achieved” only when both hardness and elasticity fall within specific ranges. 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)). Furthermore, it is unclear how elasticity can have units of seconds, since seconds are understood to be a unit of time, not elasticity.
Therefore, for the reasons stated above, claim 1 and all dependent claims remain rejected under 35 U.S.C. 103.
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 AUSTIN P TAYLOR whose telephone number is (571)272-2652. The examiner can normally be reached M-F 8:30am-5pm.
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 at (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.
/AUSTIN PARKER TAYLOR/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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