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 the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 22 May 2026 is acknowledged.
Applicant has overcome the following by virtue of amendment of the claims: (1) the 112(b) rejection has been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-4, 6-8, and 13-17
Withdrawn claims: 14-15
Previously canceled claims: 9-12
Newly canceled claims: 5
Amended claims: 1, 4, 6, and 8
New claims: 17
Claims currently under consideration: 1-4, 6-8, 13, and 16-17
Currently rejected claims: 1-4, 6-8, 13, and 16-17
Allowed claims: None
Claim Interpretation
The minimum amounts of ingredients for the meat analogue product as recited in claim 1 are 10% by weight vegetable protein, 0.1% by weight of binding agent, 10% by weight of water, and 5% by weight of non-hydrogenated vegetable fat. This totals to 25.1% by weight of the meat analogue product. As such, the meat analogue composition as claimed can comprise up to 74.9% by weight of any other ingredients, including hydrogenated vegetable fat, animal fat, microbial fat, or any other fat. The claims are toward the final product of a meat analogue product. In the final product, one would be unable to discern which fat constituents and parameters (e.g., the claimed elements of saturated fatty acids, polyunsaturated fatty acids, C12 content, C16:0 content, solid fat content at 20 °C) are from which fat source because all fats are subsumed into the overall fat of the final composition. Therefore, the percentages of the claimed elements specifically regarding the non-hydrogenated vegetable fat cannot be given patentable weight.
Claim 1 is construed as a meat analogue product, comprising from 10-60% by weight vegetable protein; at least 0.1% by weight of binding agent; from 10-60% by weight of water; from 5-40% by weight of non-hydrogenated vegetable fat, wherein the vegetable fat comprises interesterified palm stearin, and the composition comprising saturated fatty acids, polyunsaturated fatty acids, C16:0 fatty acids, and a solid fat content at 20°C. C12 fatty acids may be zero and, therefore, are not required by the claim.
For the same reasons, claim 4 is construed as, “The meat analogue product according to claim 1, comprising a monounsaturated fatty acid.”
Additionally, for these reasons, the recitations in claims 6-8 and 17 are not given patentable weight. Claim 8 is construed to further require that C18:0 fatty acids are present in the meat analogue product.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 6-8, 13, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Varadan et al. (US 2017/0188612 A1, US PGPub of WO 2015/153666 A1 cited on the IDS filed on 2 December 2022) in view of Ishikawa et al. (WO 2020/004058 A1, cited on the IDS filed on 18 December 2024) as evidenced by Nutritionix (Calories in 100g Vital Wheat Gluten. (2025). Nutritionix. Retrieved 10 January 2025 from https://web.archive.org/web/20250110123712/https://www.nutritionix.com/food/vital https://oilpalmblog.wordpress.com/2014/01/25/1-composition-of-palm-oil/ -wheat-gluten/100-g), Oil Palm Knowledge Base-1 (Composition of Palm Oil. (2014, January 25). Oil Palm Knowledge Base. Retrieved 19 December 2025 from https://web.archive.org/web/20140131111506/https://oilpalmblog.wordpress.com/2014/01/25/1-composition-of-palm-oil/), and Dhaygude et al. (Dhaygude, V., Soós, A., Zeke, I., & Somogyi, L. (2018). Comparison between static and dynamic analyses of the solid fat content of coconut oil. Hung J Ind Chem, 46(2), 33-36. https://doi.org/10.1515/hjic-2018-0015).
Regarding claims 1, 6-7, and 17, Varadan teaches “a meat replica composition that includes about 5% to about 88%...by weight of a meat dough; about 0% to about 40%…by weight of a carbohydrate-based gel; about 5% to about 35%…by weight of a fat; about 0.00001% to about 10%…by weight of a flavoring agent; about 0% to about 15% (e.g., about 2% to about 15% or about 2% to about 10%) by weight of a binding agent; and about 0.01% to about 4%…by weight of a heme-containing protein and/or an iron salt.” ([0005]; see also claim 114). While the scope of the invention of Varadan is not limited to the examples provided ([0101]), Example 11 is highlighted below as relevant to teaching elements of the claimed invention.
Varadan teaches a replica burger in Example 11 ([0122]). Table 3 of Varadan ([0122]) has been expanded below to include the protein, fat, and water components of each listed ingredient. As evidenced by Nutritionix, 100g of vital wheat gluten contains 75 g of protein (p. 1, “Nutrition Facts”). Therefore, vital wheat gluten is comprised of 75% protein. Using this information, the percentage of protein, fat, and water were calculated from the information disclosed in Examples 5-7, 10, and 11 as shown in the table below:
Example 11 Burger
Ingredient
%
% Protein
% Fat
% Water
Meat dough (Example 10)
54.1
15.01
4.87
30.16
Vital wheat gluten (75% protein)
25
18.75
Soft connective tissue replica (Example 7)
25
8.75
15
Soy protein
20
20
Wheat gluten (75% protein)
20
15
Water
60
60
Dough broth (Example 5)
50
0.25
9
40.75
LegH
0.5
0.5
Coconut Oil
18
18
Water
81.5
81.5
Coconut oil with flavor system (Example 6)
13.5
13.5
RuBisCO
5.3
5.3
LegH
1.2
1.2
1% agar preparation
20
19.8
16x precursor mix 2
5.9
5.9
Total
100
21.51
18.37
55.86
Bold text indicates main ingredients in the burger composition, plain text indicates subcomponents of the burger ingredients, and italic text indicates ingredients of the subcomponents. Percentages of protein, fat, and water were determined for each subcomponent, and then for the overall burger.
With regard to determining the water amount, the soft tissue replica of Example 7 comprises 60% water as determined by the feed rate of dry protein mixture and water in the extrusion process ([0111]). The dough broth of Example 5 is prepared using 1x precursor mix 1, which appears to be an aqueous solution, 0.5% leghemoglobin, and 18% coconut oil ([0108]). Water was conservatively calculated as the non-leghemoglobin, non-coconut oil component. Similarly, 16x precursor mix 2 was conservatively considered to be 100% water, even though in actuality, 16x precursor 2 comprises many grams of dissolved solids to provide 16x the mM amounts in Table 2. The true amount of water is therefore lower than the 55.86% calculated in the table above.
The proteins used in the burger are wheat gluten, soy, RuBisCo, and LegH, all of which are vegetable proteins. At least RuBisCO and gluten also serve as binders ([0021]). Total protein in the burger was calculated to be 21.51%, and total fat in the burger was calculated to be 18.37%.
Therefore, regarding the limitations of claim 1, Varadan teaches a meat analogue product, comprising:
from 10-60% by weight vegetable protein – The burger of Example 11 comprises 21.51% vegetable protein.
at least 0.1% by weight of binding agent – Varadan teaches a meat replica composition that includes about 2% to about 15% by weight of a binding agent ([0005]). “The binding agent can be an isolated plant protein (e.g., a RuBisCO, an albumin, a gluten, a conglycinin, or mixtures thereof)” ([0021]). The burger of Example 11 comprises 5.3% RuBisCO.
from 10-60% by weight of water – The burger of Example 11 comprises, at most, 55.86% water.
from 5-40% by weight of non-hydrogenated vegetable fat – Varadan discloses, “Broadly, the document provides methods for making ground meat replicas that include preparing a meat replica dough (referred to herein as “meat dough”) that includes an optional edible fibrous component, combining the meat dough with a fat (typically a non-animal-based fat, although it is to be noted that an animal-based fat could be used)…” ([0039]). The meat replica includes about 5% to about 35% by weight of fat ([0005]). Varadan further discloses, “The oils can be hydrogenated (e.g., a hydrogenated vegetable oil) or non-hydrogenated.” ([0073]). The burger of Example 11 comprises 18.37% fat (coconut oil), which is not disclosed as being hydrogenated.
Regarding the claim language, wherein the vegetable fat has: a saturated fatty acid (SAFA) content of at least 40%, a fatty acid content having a C12 content of less than 10% by weight, a fatty acid content having at least 40% C16:0, and a solid fat content (SFC) at 20 °C of at least 40%, as discussed regarding claim interpretation above, these elements of the claim are construed as the composition comprising saturated fatty acids (SAFA), polyunsaturated fatty acids (PUFA), C16:0 fatty acids, and a solid fat content (SFC) at 20°C. C12 fatty acids may be zero and, therefore, are not required by the claim.
In Example 11 of Varadan uses coconut oil. As evidenced by Oil Palm Knowledge Base-1, coconut oil comprises a SAFA content of 83%, a polyunsaturated fatty acid content of 2% and a C16:0 content of 9% (p. 6, Table). Dhaygude evidences that non-hydrogenated coconut oil (NHCO) has an SFC at 20°C of 34.54% (p. 34, col. 2, § 3.2, ¶ 2; see also p. 34, Figure 1, “NHCO”). Therefore, the composition of Varadan has the required elements of SAFAs, PUFAs, C16:0 fatty acids and an SFC at 20°C.
Regarding the limitation, wherein the vegetable fat comprises interesterified palm stearin, Varadan teaches, “In some embodiments, a broth such as a flavored broth can be used in the meat dough. For example, a meat dough can be formed using roughly equal proportions of isolated plant protein and a broth.” ([0069]). “…a broth can be made by combining an iron complex…and/or an iron salt…with one or more flavor precursors…and a fat (e.g., a non-animal-based fat), and heating the mixture to obtain a flavored broth containing one or more flavor compounds…Oil fractions such as stearin (e.g., palm stearin) or olein also can be used.” ([0073]). Such a broth was used in preparation of the meat dough used in the burger of Example 11 ([0122]; Table 3). The broth of Example 5 (used in Example 11) comprises an iron complex (LegH (see [0022])), flavor precursors (1x precursor mix 1), and a fat (coconut oil) ([0108]). Although Examples 5 and 11 use coconut oil as the fat, Varadan also discloses that palm stearin is a suitable fat for use in making the broth ([0073]).
Varadan does not discuss that the palm stearin is interesterified palm stearin.
However, Ishikawa teaches edible oils and fats for processed foods containing meat and/or vegetable proteins, including hamburgers ([0001]). One of these edible oils and fats is an interesterified palm stearin (“Interesterified oil 1”), which is a mixture of 75% palm stearin (iodine value 35), 10% palm oil, and 15% soybean oil, which was then subjected to interesterification ([0045]).
Moreover, Varadan teaches, “For example, the non-animal fat can be coconut oil, or a combination of coconut oil and stearin. In some embodiments, the fat can contain non-animal (e.g., plant) products, or it can be a combination of animal and non-animal based precursors (e.g., lard), or exclusively animal-based fat.” ([0073]). Therefore, Varadan teaches combinations of fats may be used in the meat replica composition.
It would have been obvious for one of ordinary skill in the art to use any combination of fats disclosed in Varadan in preparing the meat replica composition in order to provide the meat replica composition with desired organoleptic properties. One of ordinary skill in the art would have had a reasonable expectation of success in doing so because Varadan teaches that the fats disclosed therein are suitable for use in meat replica compositions.
MPEP § 2144.07 states, “The selection of a known material based on its suitability for its intended use support[s] a prima facie obviousness determination”. Therefore, where Varadan teaches that palm stearin is suitable for making the meat dough, and where Ishikawa teaches that the interesterified palm stearin is suitable for use in processed foods containing meat and/or vegetable proteins, including hamburgers, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have substituted the palm stearin of Varadan with the interesterified palm stearin of Ishikawa by simple substitution of one known element for another to obtain the predictable result of a meat dough comprising a fat that is suitable for a meat substitute composition. See also MPEP § 2143(I)(B).
Claims 1, 6-7, and 17 are therefore rendered obvious.
Regarding claim 2, Varadan also teaches that the amount of protein is from 15-50% by weight – As described regarding claim 1 above, the meat replica in Example 11 of Varadan comprises 21.51% protein. This value falls within the claimed range. Claim 2 is therefore rendered obvious.
Regarding claim 3, Varadan also teaches that the amount of non-hydrogenated vegetable fat is from 5-35% by weight – Varadan teaches that the meat replica includes about 5% to about 35% by weight of fat ([0005]). Varadan further discloses, “The oils can be hydrogenated (e.g., a hydrogenated vegetable oil) or non-hydrogenated.” ([0073]). The burger of Example 11 comprises 18.37% fat (coconut oil), which is not disclosed as being hydrogenated. Claim 3 is therefore rendered obvious.
Regarding claim 4, Varadan as modified by Ishikawa teaches the meat analogue product according to claim 1, wherein the meat analogue product comprises monounsaturated fatty acids (see Claim Interpretation hereinabove) – As described regarding claim 1, Varadan as modified by Ishikawa comprises interesterified palm stearin. The interesterified palm stearin of Ishikawa is made from palm stearin, palm oil, and soybean oil ([0045]). As evidenced by the instant specification in the table presented on pages 5-6, interesterified palm stearin comprising 90% palm oil stearin IV 35 has a monounsaturated fatty acid (MUFA) content of 24.9%. As evidenced by Oil Palm Knowledge Base-1, palm oil has a MUFA content of 40%, and soybean oil has a MUFA content of 24% (p. 6, Table).
Therefore, where it would have been obvious to use the interesterified palm stearin of Ishikawa in the meat replica of Varadan as described regarding claim 1, claim 4 is also rendered obvious.
Regarding claim 8, Varadan as modified by Ishikawa teaches the meat analogue according to claim 1, wherein meat analogue composition further comprises C18:0 fatty acids (see Claim Interpretation hereinabove) – As described regarding claim 1, Varadan as modified by Ishikawa comprises interesterified palm stearin. The interesterified palm stearin of Ishikawa is made from palm stearin, palm oil, and soybean oil ([0045]). As evidenced by the instant specification in the table presented on pages 5-6, interesterified palm stearin comprising 90% palm oil stearin IV 35 has C18:0 content of 5.7%. As evidenced by Oil Palm Knowledge Base-1, palm oil has a C18:0 content of 4%, and soybean oil has a C18:0 content of 4% (p. 6, Table).
Therefore, where it would have been obvious to use the interesterified palm stearin of Ishikawa in the meat replica of Varadan as described regarding claim 1, claim 8 is also rendered obvious.
Regarding claim 13, Varadan and Ishikawa teach the meat analogue according to claim 1, wherein the vegetable fat comprises shea stearin – Varadan teaches, “In some embodiments, a broth such as a flavored broth can be used in the meat dough. For example, a meat dough can be formed using roughly equal proportions of isolated plant protein and a broth.” ([0069]). “…a broth can be made by combining an iron complex…and/or an iron salt…with one or more flavor precursors…and a fat (e.g., a non-animal-based fat), and heating the mixture to obtain a flavored broth containing one or more flavor compounds…A non-animal fat can include…palm oil…shea butter…Oil fractions such as stearin (e.g., palm stearin) or olein also can be used.” ([0073]). Hence, Varadan teaches that shea stearin is a suitable ingredient.
Such a broth was used in preparation of the meat dough used in the burger of Example 11 ([0122]; Table 3). The broth of Example 5 (used in Example 11) comprises an iron complex (LegH (see [0022])), flavor precursors (1x precursor mix 1), and a fat (coconut oil) ([0108]). Although Examples 5 and 11 use coconut oil as the fat, Varadan also discloses that palm stearin and shea stearin are suitable fats for use in making the broth ([0073]). Varadan further states, “For example, the non-animal fat can be coconut oil, or a combination of coconut oil and stearin. In some embodiments, the fat can contain non-animal (e.g., plant) products, or it can be a combination of animal and non-animal based precursors (e.g., lard), or exclusively animal-based fat.” ([0073]). Therefore, Varadan teaches combinations of fats.
It would have been obvious for one of ordinary skill in the art to use any combination of fats disclosed in Varadan, including one comprising shea stearin as claimed, in preparing the meat replica composition in order to provide the meat replica composition with desired organoleptic properties. Where Varadan as modified by Ishikawa renders obvious the use of interesterified palm stearin in the burger of Varadan as described regarding claim 1, and where Varadan further teaches that shea stearin is another suitable fat for making the meat dough and that combinations of fats are also suitable, it would have been obvious to add shea stearin to the composition of Varadan as modified by Ishikawa. MPEP § 2144.07 states, “The selection of a known material based on its suitability for its intended use support[s] a prima facie obviousness determination”. One of ordinary skill in the art would have had a reasonable expectation of success in doing so because Varadan teaches that the fats disclosed therein (including shea butter and stearin or olein fractions thereof) are suitable for use in meat replica compositions.
Therefore, claim 13 is rendered obvious.
Regarding claim 16, Varadan as modified by Ishikawa teaches the meat analogue product according to claim 1, wherein the meat analogue product has a ratio by weight of the protein to the non-hydrogenated vegetable fat of from 3:1 to 1:2 – Varadan teaches a replica burger in Example 11 ([0122]). Table 3 of Varadan ([0122]) has been expanded below to include the protein and fat components of each listed ingredient. As evidenced by Nutritionix, 100g of vital wheat gluten contains 75 g of protein (p. 1, “Nutrition Facts”). Therefore, vital wheat gluten is comprised of 75% protein. Using this information, the percentage of protein and fat were calculated from the information disclosed in Examples 5-7, 10, and 11 as shown in the table below:
Example 11 Burger
Ingredient
%
% Protein
% Fat
Protein:Fat
Meat dough (Example 10)
54.1
15.01
4.87
Vital wheat gluten (75% protein)
25
18.75
Soft connective tissue replica (Example 7)
25
8.75
Soy protein
20
20
Wheat gluten (75% protein)
20
15
Water
60
Dough broth (Example 5)
50
0.25
9
LegH
0.5
0.5
Coconut Oil
18
18
Water
81.5
Coconut oil with flavor system (Example 6)
13.5
13.5
RuBisCO
5.3
5.3
LegH
1.2
1.2
1% agar preparation
20
16x precursor mix 2
5.9
Total
100
21.51
18.37
1.17
Bold text indicates main ingredients in the burger composition, plain text indicates subcomponents of the burger ingredients, and italic text indicates ingredients of the subcomponents. Percentages of protein and fat were determined for each subcomponent, and then for the overall burger.
Total protein in the burger was calculated to be 21.51%, and total fat in the burger was calculated to be 18.37%. The ratio of protein to fat was calculated to be 1.17:1. This value lies inside the claimed range of 3:1 to 1:2.
Claim 16 is therefore rendered obvious.
Response to Arguments
Claim Rejections – 35 U.S.C. § 103: Applicant’s arguments filed on 22 May 2026 have been fully considered, but they are not persuasive.
Applicant first argued that Varadan does not mention interesterified palm stearin, nothing in Varadan teaches or suggests the specific fatty acid content required by amended claim 1, and accordingly, there is nothing in Varadan that would have motivated the skilled person to make the modifications to the replica burger in Example 11 of Varadan to arrive at the meat analogue product of amended claim 1 (p. 5, “The Deficiencies of Varadan”). Applicant asserted that to establish prima facie obviousness, the prior art must first teach or suggest all claim limitations, citing In re Royka (Id.).
Applicant’s argument has been considered, but it is not persuasive. The rejection relies upon modification of Varadan with the teachings of Ishikawa. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Furthermore, Applicant is invited to the Claim Interpretation section hereinabove, which considers that the percentages of the claimed elements specifically regarding the non-hydrogenated vegetable fat cannot be given patentable weight. This is in light of the fact the claim allows for other fats to be present, and that the claims are toward the final product of a meat analogue product, and in the final product, one would be unable to discern which fat constituents and parameters (e.g., the claimed elements of saturated fatty acids, polyunsaturated fatty acids, C12 content, C16:0 content, solid fat content at 20 °C) are from which fat source because all fats are subsumed into the overall fat of the final composition. Therefore, Claim 1 is construed as a meat analogue product, comprising from 10-60% by weight vegetable protein; at least 0.1% by weight of binding agent; from 10-60% by weight of water; from 5-40% by weight of non-hydrogenated vegetable fat, wherein the vegetable fat comprises interesterified palm stearin, and the composition comprising saturated fatty acids, polyunsaturated fatty acids, C16:0 fatty acids, and a solid fat content at 20°C. C12 fatty acids may be zero and, therefore, are not required by the claim.
As such, the prior art need not disclose the specific percentages of the features of the non-hydrogenated vegetable fat as written in amended claim 1.
Applicant next argued that the person of ordinary skill in the art would not have turned to “Interesterified Oil 1” of Ishikawa (p. 5, ¶ 4 – p. 6). Applicant argued that Varadan does not mention any interesterified fats or oils, let alone an interesterified oil comprising 75% by mass of palm stearin, 10% by mass of palm oil, and 15% by mass of soybean oil, as disclosed by Ishikawa (p. 5, ¶ 4 – p. 6, ¶ 1). Applicant argued that Ishikawa discloses other fats and oils that are disclosed in Varadan, and there is nothing that would have led the skilled person in the field of the invention to select “Interesterified Oil 1” in preference to these other fats and oils (p. 6, ¶ 2).
In response, Varadan does not need to disclose the same oil composition as Ishikawa in order to motivate modification of Varadan with said oil composition. Varadan discloses that palm stearin may be used in the meat replica, and Ishikawa discloses an interesterified palm stearin that is suitable for plant-based hamburger compositions. MPEP § 2144.07 states, “The selection of a known material based on its suitability for its intended use support[s] a prima facie obviousness determination”. Therefore, it would have been obvious to substitute the palm stearin with interesterified palm stearin because it was known to be used for the same purpose in making meat replica products.
Applicant further argued that there is no teaching in Ishikawa to use “Interesterified Oil 1” as such in a meat analogue product because Ishikawa teaches “Interesterified Oil 1” in combination with other fat compositions, some of which also containing hydrogenated oils, which fall outside the scope of amended claim 1, which requires that the vegetable fat is non-hydrogenated (p. 6, ¶¶ 2-6). Applicant asserted that the skilled person starting from Varadan would only have selected “Interesterified Oil 1” by using hindsight (p. 6, last ¶).
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).
Varadan teaches that palm stearin may be used as a fat in the meat replica composition, and that combinations of fats can be used ([0073]). Where Ishikawa teaches that “Interesterified Oil 1” is suitable for plant-based hamburger compositions, even if in combination with other fats, it would have been obvious as a choice for a fat for use in the meat replica of Varadan based on suitability for its intended purpose as described above. Additionally, Applicant is reminded that the scope of the amended claim 1 is not limited to only non-hydrogenated vegetable fat. The claim only requires 5-40% of the composition to be non-hydrogenated vegetable fat, and no total amount of fat; other fats may be present. It is also noted that the claim requires no specific amount of interesterified palm stearin.
Applicant next argued that “Interesterified Oil 1” in Ishikawa does not remedy the deficiencies of Varadan (p. 7). Applicant argued that one cannot arrive at the claimed features of a PUFA content of less than 10% by weight and a C16:0 content of at least 50% by weight by replacing the coconut oil of Varadan with “Interesterified Oil 1” of Ishikawa or blending the cocoa butter of Varadan with “Interesterified Oil 1” of Ishikawa as proposed in the previous rejection of claim 1 (p. 7, ¶¶ 2-6).
In response, in light of the Claim Interpretation presented hereinabove, these arguments are moot because specific percentages of oil components cannot be given patentable weight.
Applicant next asserted that the inventors have surprisingly found that interesterified palm stearin provides more desirable organoleptic properties than palm stearin, and this unexpected property is evidence of non-obviousness (p. 8, ¶ 2).
Applicant’s assertion of unexpected technical results is acknowledged. Applicant’s argument has been considered, but it is not found to be persuasive. MPEP § 2145 states, “If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc)”, and “[r]ebuttal evidence may include evidence of ‘secondary considerations,’ such as ‘commercial success, long felt but unsolved needs, [and] failure of others.’ Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 4459, 467. See also, e.g., In re Piasecki, 745 F.2d 1468, 1473, 223 USPQ 785, 788 (Fed. Cir. 1984) (commercial success). Rebuttal evidence may also include evidence that the claimed invention yields unexpectedly improved properties or properties not present in the prior art. Rebuttal evidence may consist of a showing that the claimed compound possesses unexpected properties. Dillon, 919 F.2d at 692-93, 16 USPQ2d at 1901. A showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997)”. However, as provided by MPEP § 2145(II), “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979)”, and “‘[t]he fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.’ Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)”. Furthermore, “[e]vidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978).” See MPEP § 716.02(c)(I). “‘Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof.; In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967)”. See MPEP § 716.02(c)(II).
“Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the ‘objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.’ In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)”. See MPEP § 716.02(d).
In the present case, Applicant’s does not provide objective evidence to support their assertion of unexpected results. It is also noted that the examples in the instant specification are much more narrow than the scope of the claims, and therefore are not commensurate in scope with the claimed invention. Applicant’s assertion of unexpected results is therefore not persuasive.
Claims 1-4, 6-8, 13, and 16-17 are rejected under 35 U.S.C § 103 as presented hereinabove.
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.
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/JAMES P. SHELLHAMMER/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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