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 .
This office action is in regard to the application filed on June 14, 2022 and in response to a Request for Continued Examination filed on December 16, 2025.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 16, 2025 has been entered.
Status of Application
Claims 1, 2, 4, 5, 10-14, 24, 25, 29, 33, 35, and 36 are currently pending in the application. Claims 24, 25, and 29 are withdrawn; claims 3, 6-9, 15-23, 26-28, 30-32, and 34 have been canceled; claims 1, 2, 5, 11, and 33 have been amended; claims 35 and 36 are new. Claims 1, 2, 4, 5, 10-14, 33, 35, and 36 are hereby examined on the merits.
The previous 112(b) rejection of claim 33 has been withdrawn in view of applicant’s claim amendments; however, claim 33 remains rejected under 112(b) over a new grounds of rejection. The previous claim objections have been withdrawn in light of applicant’s amendments and/or cancelation of the claims.
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 33 and 36 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.
Claim 33 is dependent on a canceled claim, claim 17. For the purposes of examination, the claim will be interpreted as depending from claim 1.
Claim 33 recites the limitation "the aqueous protein fraction" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 36 recites the limitation "the free fatty acid content." There is insufficient antecedent basis for this limitation in the claim.
Additionally, it is unclear what component listed in claim 1 contains this “free fatty acid content.” Is it the insects? Insect pulp? Heated insect pulp? Cooled and heated insect pulp? The nutrient stream? This lack of clarity thereby renders the claim indefinite. For the purposes of examination, the claimed nutrient stream of instant claim 1 will be considered to contain the claimed free fatty acid content.
Claim 36 also refers to a percentage without defining the base unit. The claim limitation is unclear as to whether the percentage is based on weight, volume, molar, etc., and as such, the claim fails to distinctly claim the subject matter of the invention and is therefore indefinite. For the purposes of examination, the claim will be interpreted as percent by weight.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 10-14, 33, 35, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Arsiwalla et al. (US PG Pub. 2015/0374005; listed on IDS dated Oct. 10, 2024) in view of Verhoeven (WO 2019/081287), herein after referred to as Arsiwalla and Verhoeven.
Regarding claims 1, 2, and 12-14, Arsiwalla teaches a method to convert insects into a nutrient stream, comprising the steps of [0010]:
a) obtaining a pulp from insects (i.e., providing insects and preparing an insect pulp thereof) [0011];
b) heating the insect pulp to a temperature of 70-100°C [0012] for a time of 0.1-4 hours [0020];
therewith providing the nutrient stream consisting of heated insect pulp ([0010]; [0013]).
Arsiwalla also teaches that the insect pulp is not enzymatically treated prior to the heating step [0014].
The heating temperature range taught by Arsiwalla overlaps with the claimed ranges of 60-95°C of claims 1 and 12 and 75-95°C of claim 13, and where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
The heating duration taught by Arsiwalla is outside of the claimed ranges of 50-100 seconds of claim 1, 60-90 seconds of claim 12, and 60-95 seconds of claim 14.
However, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). The range taught by Arsiwalla is sufficiently close to the claimed range as to where the difference between the ranges is virtually negligible absent any showing of unexpected results or criticality. Therefore, the range taught by Arsiwalla is considered to meet the claimed limitation.
Additionally, generally differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05.II.A.
Arsiwalla is silent as to cooling the heated insect pulp to the claimed ranges of -20°C to 8°C of claim 1 and 0°C to 4°C of claim 2.
Verhoeven, in the same field of invention, teaches a method of producing a human nutrition and/or animal feed from insects wherein the insects are cooled to a temperature of -2°C to -40°C (claims 1 and 3). Verhoeven offers the motivation that cooling the insects reduces, if not stops, the activity of the enzymes and keeps ice crystals small (p. 2, second paragraph). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of Arsiwalla by incorporating the cooling of Verhoeven, thereby arriving at the claimed invention. One would have been motivated to make this modification for the benefit of reducing enzyme activity and keeping ice crystals small.
This temperature range taught by Verhoeven overlaps with the claimed range of claim 1 of -20°C to 8°C, and where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.I. This temperature range taught by Verhoeven does not lie within or overlap with the claimed temperature range of claim 2, 0°C to 4°C, but it is close. 0°C taught by Verhoeven is sufficiently close to the claimed -2°C; a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). The difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. See MPEP 2144.05.I.
Verhoeven differs from the claimed process steps in that Verhoeven is silent as to that the cooling is performed after a heating step. However, the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). See MPEP 2144.04.IV.C. Moreover, where Verhoeven teaches that a cooling step provides the benefits of reducing enzyme activity and keeping ice crystals small, as set forth above (as taught on p. 2 second paragraph of Verhoeven), it seems reasonable that these same benefits would be provided whether or not there was heating prior to cooling.
Arsiwalla and Verhoeven are silent as to the water holding capacity of the insect pulp obtained with the method of claim 1.
However, 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). Since the method of modified Arsiwalla is substantially identical to that of the claimed method, the prior art product must necessarily possess the same properties and characteristics as the method and composition claimed. Therefore, the method and product, insect pulp, taught by modified Arsiwalla is considered to possess the water holding capacity as claimed because the method of making the insect pulp is substantially the same and thus must necessarily exhibit the same properties.
Regarding claim 4, Arsiwalla teaches that the insects are larvae [0043].
Regarding claim 10, Arsiwalla teaches that in step a, the insect pulp is prepared by squashing the insects in a micro-cutter mill (i.e., mincing) ([0019]; [0043]).
Regarding claim 11, Arsiwalla teaches that the average particle size of the remains of the insects in the pulp of step a is less than 0.5 mm (500 micron) [0043], which overlaps with the claimed range of 10-500 micron. Where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 33, Arsiwalla teaches that an aqueous protein fraction is dried by spray drying [0024].
Regarding claim 35, Arsiwalla teaches that the pulp (i.e., nutrient stream) can be separated into a fat fraction, an aqueous protein fraction, and a solid-containing fraction [0013]. Therefore, where the pulp prior to the separation step is the insect pulp nutrient stream as claimed, the pulp must necessarily comprise fat, protein, and solids.
Regarding claim 36, Arsiwalla teaches that the fat fraction of the total insect pulp nutrient stream contains less than 0.6 wt.% free fatty acids (claim 11; [0028]-[0030]). Since most, if not all, of the free fatty acids would be contained in the fat fraction, it can be considered that the amount of free fatty acids in the insect pulp nutrient stream is less than the amount contained in the fat fraction and is at most around the same amount, less than 0.6 wt.%. Therefore, the amount of free fatty acids taught by Arsiwalla is considered to meet the instant claim limitation of a free fatty acid content of 1 wt.% or less.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Arsiwalla et al. (US PG Pub. 2015/0374005; listed on IDS dated Oct. 10, 2024) in view of Verhoeven (WO 2019/081287), as applied to claim 4 above, and as further evidenced by Ferrarezi et al. (“UVI/AES Annual Report 2016 – Alternative Sources of Food for Aquaponics in the U.S. Virgin Islands: A Case Study with Black Soldier Flies,” Agricultural Experiment Station University of the Virgin Islands, 2016 Annual Report, 2016, pp. 1-44; listed on PTO-892 dated Feb. 13, 2025), herein after referred to as Ferrarezi.
Modified Arsiwalla teaches the method to convert insects into a nutrient stream as set forth above with regard to claim 4.
Arsiwalla also teaches that the insect larvae are black soldier fly larvae [0043].
Modified Arsiwalla is silent as to that the black soldier fly larvae are between 12 and 30 days of age.
However, where Arsiwalla teaches that the black soldier fly are larvae (Arsiwalla: [0043]), as evidenced by Ferrarezi, black soldier fly larvae spend 18 days in the larva stage between 5 and 22 days of age (Ferrarezi: Fig.1 p. 35). The age range overlaps with the claimed range of 12 and 30 days of age. Where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Response to Arguments
Applicant’s amendment has overcome the 112(b) rejections of claim 33 from the previous office action and therefore these rejections have been withdrawn. However, claim 33 remains rejected under 112(b) over a new grounds of rejection.
Applicant’s arguments regarding the cooling step of claim 1 (remarks, p. 7-8) have been considered but are moot because the new ground of rejection does not rely on the previously applied reference to teach this claimed step.
Applicant's arguments filed December 16, 2025 have been fully considered but they are not persuasive.
The prior art rejection has been amended in light of applicant’s amendments to the claims, however, the essential prior art rejection has been maintained by the examiner for the following reasons.
Applicant argues that the water holding capacity as claimed in amended claim 1 is an unexpected result as the water holding capacity is improved using the claimed method as opposed to using conventional methods. Applicant goes on to cite “’a prima facie case of obviousness based on structural similarity is rebuttable by proof that the claimed compounds possess unexpectedly advantageous or superior properties.’ In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963)” (remarks, p. 8).
This argument is not persuasive. Applicant has not provided any evidence or showing that the method taught by the prior art does not also result in the alleged unexpected results, which is required in overcoming the rejection. Additionally, the case law cited by the applicant is relevant to instances in which there is a close structural similarity between chemical compounds of the prior art and the claimed invention (see MPEP 2144.09.VII), which in the instant invention is not the case. Moreover, the rejection at hand, directed to the water holding capacity, has been rendered obvious using the rationale of “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),” meaning that when the claimed and prior art products are produced by substantially identical processes, the two are presumed to necessarily possess the same properties and characteristics. In this instance, “the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.” See MPEP 2112.01.I.
Lastly, the fact that the inventor 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. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues that the claimed short heating time provides unexpected results with regard to the water holding capacity and that the claimed short heating time is also critical for obtaining the claimed low free fatty acid content. Additionally, applicant argues that the prior art only teaches heating for phase separation, not water holding capacity, and as such, one of ordinary skill in the art would not have been motivated to modify the heating time (remarks, p. 8-9).
This argument is not persuasive. Regarding the unexpected results, applicant has not proven that it is only the short heating time that provides these alleged unexpected results, and has no showing that these results could not also be obtained by the prior art, with, for example, a lower temperature within the claimed range but a heating time slightly outside of the claimed range. Regarding the critically for the free fatty acid content, this argument is not persuasive where Arsiwalla already teaches a low free fatty acid content obtained by parameters outside of the claimed limitation. Thus, the heating time is not considered to be critical since the claimed free fatty acid content can be achieved using different ranges than claimed.
Additionally, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See MPEP 2144.IV.
Applicant argues that the fundamental purpose and motivation of claim 1 differs from Arsiwalla’s teaching, and that where Arsiwalla teaches separating the insect pulp, the claimed invention keeps the insect pulp as a whole product (remarks, p. 9).
This argument is not persuasive. Claimed inventions and prior art references do not need to have the same purpose and/or motivation; prior art references need only teach the claimed limitations, the reasoning for doing so does not need to be the same. Accordingly, when modifying references, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See MPEP 2144.IV.
Additionally, the insect pulp as taught by Arsiwalla prior to the separation step taught by Arsiwalla reads on the instant claim limitation of a whole insect pulp product. Merely because Arsiwalla teaches additional steps than what is claimed, the prior art product and method do not render the claimed invention nonobvious.
In the absence of any further arguments with regard to the rejections of the additional dependent claims, the rejections of these dependent claims are maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAURA E SWEENEY whose telephone number is (571)272-0244. The examiner can normally be reached M-F 8:00-5:00 EST.
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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791