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 .
Status of Application
This action is Final.
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.
Claims 1-2, 4-5, 7-10, 15 are rejected under 35 U.S.C. 103 as being unpatentable over WO2017/010869 (VAN DOORN) in view of WO2017154572 and United States Patent No. 4,182,230 (SAKURAZAWA). United States Patent Application Publication No. 2019/0059423 (KITANO) is the United States equivalent of WO2017154572 and relied upon in this Official Action.
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As to claim 1, VAN DOORN teaches cutting potatoes pg. 2, lines 20-25. At page 6, lines 20-25, it is taught that the shape and dimensions (i.e., width, length, thickness) can vary based on desired. It would have been obvious to provide a flake shape as it is an attractive shape.
As to the providing step, it is taught that the potato can be fried in oil and in the shape of strings/noodles (i.e., pg. 38, lines 14-20).
As to the forming step, a mass of potato noodles are formed by combining them together and frying the noodles (pg. 38, lines 14-20).
As to the frying step, VAN DOORN is silent as to using a retainer in the container and pressing the noodles as claimed.
KITANO teaches a method and apparatus for a method for drying by frying a group of noodle strings held in a retainer [0008]. The retainer has space so that noodles can be added [0008]. See also Figure 1:
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The retainers are identified as reference numeral 31. The retainers are conveyed through the oil [0041]. As the retainers are conveyed through the oil, a lid can be used [0046]. It is taught that a lid is in an open holding position as the noodles are “half-fried” but constrained in the retainer [0044], [0045]. The noodles are then fully fried. The retainer completely enters the oil and the lid is moved to a closed position (not shown). A retainer lid conveyor 4 is constructed so that the openings of the cup-shaped containers can be covered with the retainer lids after the groups of noodle strings to be fried are held in the cup-shaped containers of the retainer 31[0046] – [0047], [0066].
Thus, it would have been obvious to fry the noodles in a similar retainer with two positions so that one can obtain homogenously shaped noodles.
As noted above, Kitano does teach applying pressure to keep the noodles in the retainer and help maintain their shape [0046]-[0047] and [0066].
KITANO silent as applying pressure at point B during or after frying.
However, SAKURAZAWA teaches a process for frying noodles. The frying process uses a frying vessel. While the frying vessel 7 travels onward through the oil tank 3, namely, according as the frying operation proceeds, the frame 9 attached to the frying vessel 7 is progressively pushed downward by the cap board 14 mounted on the upper conveyor 4 to reduce the temporarily enlarged inner volume of the corresponding frying vessel 7, causing the noodles filled therein to be gathered from the loosened state. When that portion of the inner volume of the frying vessel 7 which was temporarily enlarged by the frame 9 attached thereto is substantially eliminated, then the fully fried noodles 16 are gathered with a uniform density into a lump assuming a shape conforming to the inner volume of the frying vessel 7, namely, the inner volume of a container in which the fried noodles are to be finally marketed (col. 4, lines 5-20). This allows the noodles to have a uniform density.
Thus, it would have been obvious to press down on the noodles with the press of during frying in the references above so that a uniform density is obtained.
As to the density, it would have been obvious to vary the density based on the desired density and shape of noodle (SAKURAZAWA, col. 2, lines 15-20).
Moreover, as to the density, applicant has chosen to use parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. 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." In re Spada, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facia case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
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VAN DOORN teaches that a pre-soak comprising sugar and salt can be used (pg. 38, lines 10-15).
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VAN DOORN is silent as to compressing the vegetable material and cooling the product in a compressed state.
KITANO teaches that after the drying by frying, the lid is removed, and the noodle lump is taken out of the container. The noodle lump maintains its shape and is taken out and cooled [0049].
It would have been obvious to combine these steps with VAN DOORN so that the product could be cooled, packaged and distributed for sale [0050].
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VAN DOORN teaches that the strings in are cut to a width and thickness of 2.5 x 2.5 mm and range from 30 -150mm length (pg. 39, lines 19-35). Thus, it would have been obvious to vary the size so as to not overcook or undercook the potato.
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As to claims 7-8, VAN DOORN are silent as to using a cup container and compressing and wrapping the final product.
KITANO teaches that after the drying by frying, the lid is removed, and the noodle lump is taken out of the container. The noodle lump taken out is cooled for a prescribed period of time to obtain instant fried noodles [0049]. The noodles are then wrapped [0050].
It would have been obvious to combine these steps with VAN DOORN so that the product could be sold (KITANO [0050]).
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VAN DOORN teaches that an abrasive peeler can be used (pg. 35, lines 25-35). The abrasive peeler would naturally provide cavities in the vegetable towards the thickness direction of the mass.
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At pg. 14, lines 1-10 of VAN DOORN, it is taught that the potatoes can be rehydrated for consumption.
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VAN DOORN teaches heating the vegetable material at 140oC or greater to cook the material pg. 2, line 20-30 during cooking.
VAN DOORN is silent to the temperature during compression.
However, SAKURAZAWA teaches a process for frying noodles. The frying process uses a frying vessel. While the frying vessel 7 travels onward through the oil tank 3, namely, according as the frying operation proceeds, the frame 9 attached to the frying vessel 7 is progressively pushed downward by the cap board 14 mounted on the upper conveyor 4 to reduce the temporarily enlarged inner volume of the corresponding frying vessel 7, causing the noodles filled therein to be gathered from the loosened state. When that portion of the inner volume of the frying vessel 7 which was temporarily enlarged by the frame 9 attached thereto is substantially eliminated, then the fully fried noodles 16 are gathered with a uniform density into a lump assuming a shape conforming to the inner volume of the frying vessel 7, namely, the inner volume of a container in which the fried noodles are to be finally marketed (col. 4, lines 5-20). This allows the noodles to have a uniform density.
Given VAN DOORN already teaches heating the vegetable material at 140oC or greater to cook the material pg. 2, line 20-30 during cooking and SAKURAZAWA teaches a process for compressing and frying noodles, it would have been obvious to one skilled in the art to heat the noodles in a compressed state at a temperature of 120oC or higher, as claimed.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over VAN DOORN, KITANO and SAKURAZAWA as applied to claim 1 above, and further in view of Stacy, Making Celeriac Root Pasta Noodles, Beauty and Foodie accessed at https://beautyandthefoodie.com/making-celeriac-root-pasta-noodles/, June 13, 2017 (STACY).
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The references above are silent as to using a root vegetable. STACY teaches that celeriac root are paleo, low carb, gluten-free, and vegan (see pg. 1). It would have been obvious to one skilled in the art to use celeriac root to make noodles, as they are paleo, low carb, gluten-free, and vegan.
Relevant Art Not Relied Upon
JP7575179 – teaches noodle block density. The noodle block density is calculated by dividing the weight (g) of the fried noodle block by the volume inside the retainer after compression (cm３ ) (see pg. 4 of Translation, paragraph 6).
Response to Arguments
Applicant's arguments filed 4/6/2026 have been fully considered but they are not persuasive.
First, the applicant argues that SAKURAZAWA does not disclose and/or teach the two-step process of claim 1 of the present application -- i.e., frying at the holding position A and then compressing at the compression position B.
However, SAKURAZAWA teaches a process for frying noodles. The frying process uses a frying vessel. While the frying vessel 7 travels onward through the oil tank 3, namely, according as the frying operation proceeds, the frame 9 attached to the frying vessel 7 is progressively pushed downward by the cap board 14 mounted on the upper conveyor 4 to reduce the temporarily enlarged inner volume of the corresponding frying vessel 7, causing the noodles filled therein to be gathered from the loosened state. When that portion of the inner volume of the frying vessel 7 which was temporarily enlarged by the frame 9 attached thereto is substantially eliminated, then the fully fried noodles 16 are gathered with a uniform density into a lump assuming a shape conforming to the inner volume of the frying vessel 7, namely, the inner volume of a container in which the fried noodles are to be finally marketed (col. 4, lines 5-20). This allows the noodles to have a uniform density. Thus, while SAKURAZAWA may not explicitly teach positions A and B. SAKURAZAWA expressly teaches gathering/compressing the noodles to provide a desired density and shape.
Second, it is argued that SAKURAZAWA is directed to just ordinary noodles.
However, VAN DOORN uses cutting potatoes pg. 2, lines 20-25. KITANO teaches a method and apparatus for a method for drying by frying a group of noodle strings held in a retainer [0008]. The retainer has space so that noodles can be added [0008]. SAKURAZAWA teaches that noodles can be gathered/compressed to provide a uniform (col. 4., lines 5-20). Thus, SAKURAZAWA does teach compressing and pushing down the noodles.
As to [0006] of the present specification cited by applicant, it is a generic passage that provides no technical or particular insight as to VAN DOORN, KITANO and SAKURAZAWA.
Third, it is argued that that the claimed density is not taught.
However, SAKURAZAWA teaches that noodles can be gathered/compressed to provide a uniform (col. 4., lines 5-20). The Examiner maintains that it would have been obvious to gather/compress the noodle based on the desired density and shape of noodle
Moreover, as to the density, applicant has chosen to use parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. 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." In re Spada, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facia case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
As to the density and drop-test results of Example 1 [0067]-[0068] pointed out by applicant, the results are based on a highly specific example and do not provide any comparative data. Noodle-shaped vegetable was prepared by cutting (slicing) burdock to 8 mm wide, 2 mm thick, and 120 mm long, boiling for 6 minutes, followed by dehydrating, and then immersion in an immersion treatment liquid (salt: 1% by mass, sorbitol 70% solution: 10% by mass with respect to the mass of the noodle-shaped vegetable after dehydration). Thus, the results are also not commensurate with the claims.
Fourth, it is argued new claim 15 is patentable. However, claim 15 is rejected for the reasons noted above.
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 PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached M-F, 9:30-6:00p.
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/PHILIP A DUBOIS/Examiner, Art Unit 1791 /Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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