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 .
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 11 is 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 11 recites “cooked without being pre-cooked”. Parent claim 10 also recites “thermally treated before the comminution step”. It is not clear whether the cooking step is the thermal treating step, or not. It is not clear how one would differentiate between “cooking” and “precooking”. It is not clear when the cooking occurs, and to what extent. Applicant has failed to provide a specific definition for “cooking” and “pre-cooking”. For examination purposes, the broadest reasonable interpretation of “cooking” is the heating step immediately prior to consumption.
Applicant’s method is primarily directed to a process for preparing dehydrated potato flakes which are subsequently bought by a consumer and cooked at home. Therefore, the claimed “cooking” step of applicant could reasonably be interpreted as being a pre-cooking step, as it occurs in a factory before packaging and retail sale.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 6-11, 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bhaskar et al [US 2008/0299273A1] as evidenced by Edwards [Electric Field on Earth] or,
in the alternative, under 35 U.S.C. 103 as obvious over Bhaskar et al, in view of Ostermeier et al [DE 102017210328A1 here represented by US 2020/0214327A1] and Cousin et al [Pat. No. 6,821,540].
Bhaskar et al teach a method for making potato flakes (Figure 3) by providing raw potatoes (Figure 3), washing, peeling, and slicing the potatoes (Figure 3), thermal treatment by native cooking the potato slices without precooking (Figure 3; paragraph 0030), mashing or comminuting the native cooked slices (Figure 3), applying additives to the comminuted pulp (Figure 3), and drying the comminuted pulp to create potato flakes (Figure 3).
Edwards teaches that the Earth’s electric field was about 120 V/m at sea level (page 1). Clearly, the raw potatoes of Bhaskar et al were inherently treated by an electric field prior to comminution. Also, the electric treatment of Bhaskar et al inherently included softening due to the same material being treated by the same method as that claimed by applicant.
In the event that Bhaskar et al does NOT inherently provide treatment with an electric field:
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.
Claims 1-11, 18, and 21-26 are rejected under 35 U.S.C. 103 as being unpatentable over Bhaskar et al [US 2008/0299273A1] in view of Ostermeier et al [DE 102017210328A1 here represented by US 2020/0214327A1] and Cousin et al [Pat. No. 6,821,540].
Bhaskar et al teach a method for making potato flakes (Figure 3) by providing raw potatoes (Figure 3), washing, peeling, and slicing the potatoes (Figure 3), thermal treatment by native cooking the potato slices without precooking (Figure 3; paragraph 0030), mashing or comminuting the3 native cooked slices (Figure 3), applying additives to the comminuted pulp (Figure 3), and drying the comminuted pulp to create potato flakes (Figure 3).
Bhaskar et al do not explicitly recite treatment with an electric field (claim 1), an energy input of at least 0.1 kJ/kg (claim 2), 0.1-10 kV/cm (claim 3), pulses and electroporation (claim 4), at least 10 pulses (claim 5), a non-thermic electric field and softening (claim 6, 18), 0.3-5 kJ/kg (claim 21), 0.5-2 kV/cm (claim 22, 26), 10-200 pulses (claim 23), 30-50 pulses (claim 24).
Ostermeier et al teach a method for improved introduction of an additive by application of an electric field (title) by supplying potatoes (paragraph 0049), applying a pulsed electrical field providing electroporation (paragraph 0015, 0050), cutting the potatoes into slices (paragraph 0055), an energy input of at least 0.5 kJ/kg (paragraph 0017), an electric field including 0.5-2 kV/cm (paragraph 0018), at least 10 pulses, preferably 10-200 or 30-50 pulses (paragraph 0021), no heating by the electric field (paragraph 0022), applying additives such as flavors, salts, and spices after the electric field treatment (paragraph 0023, 0003, 0007-0008), and preserving by drying (paragraph 0009, claim 12).
Cousin et al teach a process for treating vegetables and fruits before cooking (title) by providing potatoes (column 1, line 15), applying a non-thermic electric field to reduce the resistance to cutting by softening (abstract; column 2, lines 40-55).
It would have been obvious to one of ordinary skill in the art to incorporate the claimed electric field treatment and parameters into the invention of Bhaskar et al, in view of Ostermeier et al and Cousin et al, since all are directed to methods of processing potatoes, since Bhaskar et al already included cutting the potatoes into slices and a later step of applying additives to the potatoes (Figure 3), since potato systems commonly included a pulsed electric field treatment with an energy input of at least 0.5 kJ/kg (paragraph 0017), an electric filed including 0.5-2 kV/cm (paragraph 0018), at least 10 pulses (paragraph 0021), no heating by the electric field (paragraph 0022) as shown by Ostermeier et al; since potato systems commonly included a preliminary electric field treatment of the potatoes to provide electroporation and thus better uptake of additives (paragraph 0015-0016) as shown by Ostermeier et al, since better uptake of additives, such as flavors and spices, would have been beneficial for the potato flakes of Bhaskar et al in order to provide a pleasing flavor/taste/texture, since electric fields were also a commonly known means to provide softening and reduced resistance to cutting as shown by Cousins et al, and since electric field treatment before the slicing of Bhaskar et al would have also enabled easier and more efficient cutting of the potatoes, in view of Cousin et al.
In conclusion, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art.
Claims 1, 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over Roeder et al [CA 3051514 A1] in view of Matsunaga [US 3,829,589].
Roeder et al teach a method for treating shell-fruits (title) by applying an electric field to the shell-fruits (page 3, 4th paragraph), crushing or comminuting the treated shell-fruits into a pulp (page 4, step g), the shell-fruits including peanuts (page 5, 1st full paragraph), as well as an absence of emulsifiers and additives (see whole document).
Roeder et al do not explicitly recite drying the comminuted pulp (claim 1).
Matsunaga teaches a method for making peanut flour (title) by compressing and pulverizing, then spray-drying the peanuts into a flour, free of impurities and objectionable odors (abstract).
It would have been obvious to one of ordinary skill in the art to incorporate the claimed drying step into the invention of Roeder et al, in view of Matsunaga, since both are directed to methods of processing shell-fruits, since Roeder et al already included crushing or comminuting the treated shell-fruits into a pulp (page 4, step g) and the shell-fruits including peanuts (page 5, 1st full paragraph), since peanut systems commonly included compressing and pulverizing then spray-drying the peanuts into a flour free of impurities and objectionable odors (abstract) as shown by Matsunaga, and since drying the crushed pulp of Roeder et al would have enabled it to be used as an enriching component for other food products as taught by Matsunaga (column 1, line 13).
Response to Arguments
Applicant's arguments filed 6/5/26 have been fully considered but they are not persuasive.
Applicant argues that the terms “cooking” and “pre-cooking” were definite and well understood. However, applicant has failed to provide any definition for these terms in the application, therefore they have been given their broadest reasonable interpretation. Applicant has also failed to provide any definitive guidance on these terms in their arguments.
Claim 11 recites “cooked without being pre-cooked”. Parent claim 10 also recites “thermally treated before the comminution step”. It is not clear whether the cooking step is the thermal treating step, or not. It is not clear how one would differentiate between “cooking” and “precooking”. It is not clear when the cooking occurs, and to what extent. Applicant has failed to provide a specific definition for “cooking” and “pre-cooking”. For examination purposes, the broadest reasonable interpretation of “cooking” is the heating step immediately prior to consumption.
Applicant’s method is primarily directed to a process for preparing dehydrated potato flakes which are subsequently bought by a consumer and cooked at home. Therefore, the claimed “cooking” step of applicant could reasonably be interpreted as being a pre-cooking step, as it occurs in a factory before packaging and retail sale.
Applicant argues that Bhaskar et al did not disclose an electric field treatment. However, Edwards teaches that the Earth’s electric field was about 120 V/m at sea level (page 1). Clearly, the raw potatoes of Bhaskar et al were inherently treated by an electric field prior to comminution. It is also noted that claim 1 does not provide any guidance with reqard to the strength or intensity of the claimed electric field, or any achieved results due to the electric field.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., PEF in claim 1) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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). 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 response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
It would have been obvious to one of ordinary skill in the art to incorporate the claimed electric field treatment and parameters into the invention of Bhaskar et al, in view of Ostermeier et al and Cousin et al, since all are directed to methods of processing potatoes, since Bhaskar et al already included cutting the potatoes into slices and a later step of applying additives to the potatoes (Figure 3), since potato systems commonly included a pulsed electric field treatment with an energy input of at least 0.5 kJ/kg (paragraph 0017), an electric filed including 0.5-2 kV/cm (paragraph 0018), at least 10 pulses (paragraph 0021), no heating by the electric field (paragraph 0022) as shown by Ostermeier et al; since potato systems commonly included a preliminary electric field treatment of the potatoes to provide electroporation and thus better uptake of additives (paragraph 0015-0016) as shown by Ostermeier et al, since better uptake of additives, such as flavors and spices, would have been beneficial for the potato flakes of Bhaskar et al in order to provide a pleasing flavor/taste/texture, since electric fields were commonly known means to provide softening and reduced resistance to cutting as shown by Cousins et al, and since electric field treatment before the slicing of Bhaskar et al would have also enabled easier and more efficient cutting of the potatoes, in view of Cousin et al.
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).
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 DREW E BECKER whose telephone number is (571)272-1396. The examiner can normally be reached 8am-5pm Monday-Friday.
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.
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/DREW E BECKER/Primary Examiner, Art Unit 1792
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