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 .
The amendment filed August 18, 2025 is acknowledged. Claims 1-16 are pending in the application.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kawabata et al. US 6537602 (hereinafter “Kawabata”) in view of Kawahara et al. WO 2018193871 (hereinafter “Kawahara”) (refer to the corresponding machine translation).
Regarding the recitation of “for producing a composition for food including a component (A), water, edible oil and fat, and an emulsifying material” in the preamble of claim 1, “for producing a composition for food” in the preamble of claims 2-10 and 16, and “for producing a food” in the preamble of claims 11-12, it is noted that these recitations are a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
With respect to claim 1, Kawabata teaches a method for producing a composition including starchy ingredients, water, fats/oils, and protein (C2, L9-16).
Regarding the recitation of the method comprising: a step of obtaining an emulsion by mixing the component (A), the water, the edible oil and fat, and the emulsifying material, wherein the emulsifying material is at least one kind selected from the group consisting of an emulsifier, a protein, and an oil and fat-processed starch and wherein the component (A) comprises component (A1), wherein the component (A1) is a powdery granular material satisfying the following conditions (1) to (4): (1) a starch content is equal to or more than 75% by mass, (2) a low molecular weight starch obtained from a starch having an amylose content of equal to or more than 5% by mass is included at a proportion of equal to or more than 3% by mass and equal to or less than 45% by mass, and the low molecular weight starch has a peak molecular weight of equal to or more than 3x103 and equal to or less than 5x104, (3) a degree of swelling in cold water at 25°C is equal to or higher than 5 and equal to or lower than 20, and (4) a content of a fraction passing through a sieve with a mesh size of 3.35 mm and remaining on a sieve with a mesh size of 0.038 mm is equal to or more than 60% by mass and equal to or less than 100% by mass in claim 1, Kawabata teaches mixing starchy ingredient(s) (component A), water, fats/oils, and protein (emulsifying material) to obtain an emulsified composition (C2, L9-16; C7, L8-13 and 41-43; C7, L59-C8, L2; C14, L50-62; and C15, L19-24).
However, Kawabata does not expressly disclose the component (A1).
Kawahara teaches a starch composition comprising a starch content of 75% or more by mass, a low molecular weight starch obtained from a starch having an amylose content of 5% or more by mass is included at a proportion of 3% or more by mass and 45% or less by mass, and the low molecular weight starch has a peak molecular weight of 3x103 or more to 5x104 or less, a degree of swelling in cold water at 25°C of 7 or more to 20 or less, and a content of a fraction passing through a sieve with a mesh size of 0.01 mm is 1.5% or less by mass and a content of a fraction remaining on a sieve with a mesh size of 0.5 mm is 50% or less by mass. The starch composition may be combined with water, fats/oils, and protein (paragraphs [0005], [0027], [0038], [0039], [0043], and [0055]; and P31, claim 14). As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Kawahara, to select the starch composition as the starchy ingredient(s) based in its suitability for its intended purpose in the method of Kawabata with the expectation of successfully preparing a functional emulsion composition. One of ordinary skill in the art would have been motivated to do so because Kawabata and Kawahara similarly teach a combination of similarly ingredients including starchy material, Kawabata is not limited to the particular starchy ingredient(s) selected (C7, L8-11), Kawahara teaches the starch composition is used as a taste improver in foodstuff (P31, claim 14), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected results. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Regarding the recitation of wherein a content of oil and fat in the emulsion is equal to or more than 0.1 and equal to or less than 120 in terms of mass ratio with respect to the component (A) and wherein a total amount of the component (A), the water, the edible oil and fat, and the emulsifying material in the emulsion is equal to or more than 50% by mass and equal to or less than 100% by mass with respect to the entirety of the emulsion in claim 1, Kawabata teaches in one embodiment, the composition comprises 50% of the starchy ingredient(s) (component A), water, fats/oils, and protein (emulsifying material) (calculated from [3 parts starchy ingredient(s) + 27 parts milk + 41 parts oil +2 parts egg white protein]/146 total parts) and the ratio of oil to starchy ingredient(s) (component A) is 41 : 3 or about 13.7 : 1 (C14, L50-62; and C15, L19-24).
With respect to claim 2, modified Kawabata is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein a total content of moisture in the emulsion is more than 2 in terms of mass ratio with respect to the component (A) in claim 2, modified Kawabata teaches this limitation since Kawabata teaches in one embodiment, the ratio of moisture to the starchy ingredient(s) (component A) is 16 : 3 or about 5.3 : 1 (C14, L50-62 and 64-65; C15, L19-24 and 31).
With respect to claim 3, modified Kawabata is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein the edible oil and fat is one kind or two or more kinds selected from the group consisting of rapeseed oil, olive oil, lard, and milk fat in claim 3, modified Kawabata teaches this limitation since Kawabata teaches the fat/oil component may include rapeseed oil, olive oil, milk fat and/or lard (C3, L17-24; C7, L33-43; and C15, L19-24).
With respect to claim 4, modified Kawabata is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein the edible oil and fat is one kind or two or more kinds selected from the group consisting of rapeseed oil, olive oil, lard, milk fat, and soybean oil in claim 4, modified Kawabata teaches this limitation since Kawabata teaches the fat/oil component may include rapeseed oil, olive oil, milk fat and/or lard (C3, L17-24; C7, L33-43; and C15, L19-24).
With respect to claim 5, modified Kawabata is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein the protein is one kind or two or more kinds selected from the group consisting of soybean protein, pea protein, milk protein, and egg protein in claim 5, modified Kawabata teaches this limitation since Kawabata teaches the protein includes egg protein, milk protein, and/or soy protein (C2, L55-62; C3, L7-11; C7, L20-26; C14, L15-18 and 50-62; and C15, L19-24).
With respect to claim 6, modified Kawabata is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein the emulsifying material or a formulation component including the emulsifying material is one kind or two or more kinds selected from the group consisting of soybean milk, milk, fresh cream, skim milk powder, whole milk powder, casein, egg yolk, egg white, and whole egg in claim 6, modified Kawabata teaches this limitation since Kawabata teaches the protein includes powdered milk, powdered skim milk, fresh cream, milk, egg white, and/or soy bean milk (C2, L55-62; C3, L7-11; C7, L20-26; C14, L15-18 and 50-62; and C15, L19-24).
With respect to claim 7, modified Kawabata is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein the step of obtaining an emulsion is a step of obtaining the emulsion, in which a heating yield of a dough obtained by heating the emulsion at 200°C for 5 minutes is equal to or greater than 85% by mass and equal to or less than 100% by mass in claim 7, modified Kawabata teaches this limitation since Kawabata teaches heating the entire composition at 200⁰C for 5 minutes (C11, L63-C12, L1; C13, L15; and C15, L24-26).
With respect to claim 8, modified Kawabata is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein a solid fat content at 20°C of the edible oil and fat is equal to or less than 40% in claim 8, modified Kawabata teaches this limitation since Kawabata teaches the fat/oil ingredient(s) may include rapeseed oil, rice oil, corn oil, safflower oil, cottonseed oil, sunflower oil, olive oil, coconut oil, peanut oil, milk fat, and/or lard, and it is well understood in the art that these fat/oil ingredient(s) have a solid fat content equal to or less than 40% at 20⁰C (C3, L17-24; C7, L33-43; and C15, L19-24).
With respect to claim 9, modified Kawabata is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of further comprising, after the step of obtaining an emulsion, a step of performing a pressurized heating treatment in claim 9, modified Kawabata teaches this limitation since Kawabata teaches the composition is heated and homogenized at 5 to 150 kg/cm2 (about 5 to about 150 atm) (C7, L59-C8, L2; and C8, L6-7).
With respect to claim 10, modified Kawabata is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of further comprising, after the step of obtaining an emulsion, one kind or two kinds of steps selected from the group consisting of frozen storage and refrigerated storage in claim 10, modified Kawabata teaches this limitation since Kawabata teaches cooling the composition in a refrigerator after the emulsifying process (C8, L7-9 and 34-35; and C9, L43-44).
With respect to claim 11, Kawabata teaches a method for producing a food (C2, L25-31).
Regarding the recitation of the method comprising: a step of obtaining a composition for food by the method for producing a composition for food according to claim 1; and a step of obtaining a food by preparing ingredients including the composition for food in claim 11, Kawabata as modified by Kawahara teaches obtaining a composition from the method of claim 1 as addressed above, and the composition may be included with other ingredients to manufacture a food product (C2, L9-16 and 25-31; and C8, L14-16).
With respect to claim 12, modified Kawabata is relied upon for the teaching of the method of claim 11 as addressed above.
Regarding the recitation of wherein the step of obtaining a food includes cooking by heating in claim 12, modified Kawabata teaches this limitation since Kawabata teaches heating the composition and ingredients by baking, cooking, steaming, or frying (C2, L25-31; and C8, L17-21).
With respect to claim 13, Kawabata teaches a method for producing a composition including starchy ingredients, water, fats/oils, and protein (C2, L9-16).
Regarding the recitation of “for enhancing workability when mixing raw materials including component (A), water, edible oil and fat, and an emulsifying material to produce a dough for a bakery food” in the preamble of claim 13, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of the method comprising: a step of obtaining an emulsion by mixing the component (A), the water, the edible oil and fat, and the emulsifying material, wherein the emulsifying material is at least one kind selected from the group consisting of an emulsifier, a protein, and an oil and fat-processed starch and wherein the component (A) comprises component (A1), wherein the component (A1) is a powdery granular material satisfying the following conditions (1) to (4): (1) a starch content is equal to or more than 75% by mass, (2) a low molecular weight starch obtained from a starch having an amylose content of equal to or more than 5% by mass is included at a proportion of equal to or more than 3% by mass and equal to or less than 45% by mass, and the low molecular weight starch has a peak molecular weight of equal to or more than 3x103 and equal to or less than 5x104, (3) a degree of swelling in cold water at 25°C is equal to or higher than 5 and equal to or lower than 20, and (4) a content of a fraction passing through a sieve with a mesh size of 3.35 mm and remaining on a sieve with a mesh size of 0.038 mm is equal to or more than 60% by mass and equal to or less than 100% by mass in claim 13, Kawabata teaches mixing starchy ingredient(s) (component A), water, fats/oils, and protein (emulsifying material) to obtain an emulsified composition (C2, L9-16; C7, L8-13 and 41-43; C7, L59-C8, L2; C14, L50-62; and C15, L19-24).
However, Kawabata does not expressly disclose the component (A1).
Kawahara teaches a starch composition comprising a starch content of 75% or more by mass, a low molecular weight starch obtained from a starch having an amylose content of 5% or more by mass is included at a proportion of 3% or more by mass and 45% or less by mass, and the low molecular weight starch has a peak molecular weight of 3x103 or more to 5x104 or less, a degree of swelling in cold water at 25°C of 7 or more to 20 or less, and a content of a fraction passing through a sieve with a mesh size of 0.01 mm is 1.5% or less by mass and a content of a fraction remaining on a sieve with a mesh size of 0.5 mm is 50% or less by mass. The starch composition may be combined with water, fats/oils, and protein (paragraphs [0005], [0027], [0038], [0039], [0043], and [0055]; and P31, claim 14). As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Kawahara, to select the starch composition as the starchy ingredient(s) based in its suitability for its intended purpose in the method of Kawabata with the expectation of successfully preparing a functional emulsion composition. One of ordinary skill in the art would have been motivated to do so because Kawabata and Kawahara similarly teach a combination of similarly ingredients including starchy material, Kawabata is not limited to the particular starchy ingredient(s) selected (C7, L8-11), Kawahara teaches the starch composition is used as a taste improver in foodstuff (P31, claim 14), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected results. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Regarding the recitation of wherein a content of oil and fat in the emulsion is equal to or more than 0.1 and equal to or less than 120 in terms of mass ratio with respect to the component (A) and wherein a total amount of the component (A), the water, the edible oil and fat, and the emulsifying material in the emulsion is equal to or more than 50% by mass and equal to or less than 100% by mass with respect to the entirety of the emulsion in claim 13, Kawabata teaches in one embodiment, the composition comprises 50% of the starchy ingredient(s) (component A), water, fats/oils, and protein (emulsifying material) (calculated from [3 parts starchy ingredient(s) + 27 parts milk + 41 parts oil +2 parts egg white protein]/146 total parts) and the ratio of oil to starchy ingredient(s) (component A) is 41 : 3 or about 13.7 : 1 (C14, L50-62; and C15, L19-24).
With respect to claim 14, Kawabata teaches a method for producing a composition including starchy ingredients, water, fats/oils, and protein (C2, L9-16).
Regarding the recitation of “for enhancing a texture of a meat processed food or a meat-like processed food, both including raw materials including component (A), water, edible oil and fat, and an emulsifying material” in the preamble of claim 14, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of the method comprising: a step of obtaining an emulsion by mixing the component (A), the water, the edible oil and fat, and the emulsifying material, wherein the emulsifying material is at least one kind selected from the group consisting of an emulsifier, a protein, and an oil and fat-processed starch and wherein the component (A) comprises component (A1), wherein the component (A1) is a powdery granular material satisfying the following conditions (1) to (4): (1) a starch content is equal to or more than 75% by mass, (2) a low molecular weight starch obtained from a starch having an amylose content of equal to or more than 5% by mass is included at a proportion of equal to or more than 3% by mass and equal to or less than 45% by mass, and the low molecular weight starch has a peak molecular weight of equal to or more than 3x103 and equal to or less than 5x104, (3) a degree of swelling in cold water at 25°C is equal to or higher than 5 and equal to or lower than 20, and (4) a content of a fraction passing through a sieve with a mesh size of 3.35 mm and remaining on a sieve with a mesh size of 0.038 mm is equal to or more than 60% by mass and equal to or less than 100% by mass in claim 14, Kawabata teaches mixing starchy ingredient(s) (component A), water, fats/oils, and protein (emulsifying material) to obtain an emulsified composition (C2, L9-16; C7, L8-13 and 41-43; C7, L59-C8, L2; C14, L50-62; and C15, L19-24).
However, Kawabata does not expressly disclose the component (A1).
Kawahara teaches a starch composition comprising a starch content of 75% or more by mass, a low molecular weight starch obtained from a starch having an amylose content of 5% or more by mass is included at a proportion of 3% or more by mass and 45% or less by mass, and the low molecular weight starch has a peak molecular weight of 3x103 or more to 5x104 or less, a degree of swelling in cold water at 25°C of 7 or more to 20 or less, and a content of a fraction passing through a sieve with a mesh size of 0.01 mm is 1.5% or less by mass and a content of a fraction remaining on a sieve with a mesh size of 0.5 mm is 50% or less by mass. The starch composition may be combined with water, fats/oils, and protein (paragraphs [0005], [0027], [0038], [0039], [0043], and [0055]; and P31, claim 14). As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Kawahara, to select the starch composition as the starchy ingredient(s) based in its suitability for its intended purpose in the method of Kawabata with the expectation of successfully preparing a functional emulsion composition. One of ordinary skill in the art would have been motivated to do so because Kawabata and Kawahara similarly teach a combination of similarly ingredients including starchy material, Kawabata is not limited to the particular starchy ingredient(s) selected (C7, L8-11), Kawahara teaches the starch composition is used as a taste improver in foodstuff (P31, claim 14), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected results. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Regarding the recitation of wherein a content of oil and fat in the emulsion is equal to or more than 0.1 and equal to or less than 120 in terms of mass ratio with respect to the component (A) and wherein a total amount of the component (A), the water, the edible oil and fat, and the emulsifying material in the emulsion is equal to or more than 50% by mass and equal to or less than 100% by mass with respect to the entirety of the emulsion in claim 14, Kawabata teaches in one embodiment, the composition comprises 50% of the starchy ingredient(s) (component A), water, fats/oils, and protein (emulsifying material) (calculated from [3 parts starchy ingredient(s) + 27 parts milk + 41 parts oil +2 parts egg white protein]/146 total parts) and the ratio of oil to starchy ingredient(s) (component A) is 41 : 3 or about 13.7 : 1 (C14, L50-62; and C15, L19-24).
With respect to claim 15, Kawabata teaches a method for producing a composition including starchy ingredients, water, fats/oils, and protein (C2, L9-16).
Regarding the recitation of “for enhancing a texture after storage of a food including raw materials including component (A), water, edible oil and fat, and an emulsifying material” in the preamble of claim 15, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of the method comprising: a step of obtaining an emulsion by mixing the component (A), the water, the edible oil and fat, and the emulsifying material, wherein the emulsifying material is at least one kind selected from the group consisting of an emulsifier, a protein, and an oil and fat-processed starch and wherein the component (A) comprises component (A1), wherein the component (A1) is a powdery granular material satisfying the following conditions (1) to (4): (1) a starch content is equal to or more than 75% by mass, (2) a low molecular weight starch obtained from a starch having an amylose content of equal to or more than 5% by mass is included at a proportion of equal to or more than 3% by mass and equal to or less than 45% by mass, and the low molecular weight starch has a peak molecular weight of equal to or more than 3x103 and equal to or less than 5x104, (3) a degree of swelling in cold water at 25°C is equal to or higher than 5 and equal to or lower than 20, and (4) a content of a fraction passing through a sieve with a mesh size of 3.35 mm and remaining on a sieve with a mesh size of 0.038 mm is equal to or more than 60% by mass and equal to or less than 100% by mass in claim 15, Kawabata teaches mixing starchy ingredient(s) (component A), water, fats/oils, and protein (emulsifying material) to obtain an emulsified composition (C2, L9-16; C7, L8-13 and 41-43; C7, L59-C8, L2; C14, L50-62; and C15, L19-24).
However, Kawabata does not expressly disclose the component (A1).
Kawahara teaches a starch composition comprising a starch content of 75% or more by mass, a low molecular weight starch obtained from a starch having an amylose content of 5% or more by mass is included at a proportion of 3% or more by mass and 45% or less by mass, and the low molecular weight starch has a peak molecular weight of 3x103 or more to 5x104 or less, a degree of swelling in cold water at 25°C of 7 or more to 20 or less, and a content of a fraction passing through a sieve with a mesh size of 0.01 mm is 1.5% or less by mass and a content of a fraction remaining on a sieve with a mesh size of 0.5 mm is 50% or less by mass. The starch composition may be combined with water, fats/oils, and protein (paragraphs [0005], [0027], [0038], [0039], [0043], and [0055]; and P31, claim 14). As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Kawahara, to select the starch composition as the starchy ingredient(s) based in its suitability for its intended purpose in the method of Kawabata with the expectation of successfully preparing a functional emulsion composition. One of ordinary skill in the art would have been motivated to do so because Kawabata and Kawahara similarly teach a combination of similarly ingredients including starchy material, Kawabata is not limited to the particular starchy ingredient(s) selected (C7, L8-11), Kawahara teaches the starch composition is used as a taste improver in foodstuff (P31, claim 14), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected results. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Regarding the recitation of wherein a content of oil and fat in the emulsion is equal to or more than 0.1 and equal to or less than 120 in terms of mass ratio with respect to the component (A) and wherein a total amount of the component (A), the water, the edible oil and fat, and the emulsifying material in the emulsion is equal to or more than 50% by mass and equal to or less than 100% by mass with respect to the entirety of the emulsion in claim 15, Kawabata teaches in one embodiment, the composition comprises 50% of the starchy ingredient(s) (component A), water, fats/oils, and protein (emulsifying material) (calculated from [3 parts starchy ingredient(s) + 27 parts milk + 41 parts oil +2 parts egg white protein]/146 total parts) and the ratio of oil to starchy ingredient(s) (component A) is 41 : 3 or about 13.7 : 1 (C14, L50-62; and C15, L19-24).
With respect to claim 16, modified Kawabata is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein the component (A) further comprises component (A2) which is pregelatinized starch in claim 16, modified Kawabata teaches this limitation since Kawabata teaches the starchy ingredient(s) may also include pre-gelatinized starch (C7, L8-13).
Response to Arguments
Applicant’s remarks field August 18, 2025 are acknowledged.
Due to the amendments to the claims, the claim objections as well as the 35 USC 102(a)(1) rejection of claims 1-15 over Kawabata and claims 1-6, 8, and 10-15 over Hagiri in the previous Office Action have been withdrawn. Upon further searching and consideration, a new ground(s) of rejection has been made. As discussed above, Kawabata in view of Kawahara teaches methods that are substantially similar to that as presently claimed. Applicant’s arguments with respect to Kawabata and Hagiri have been considered but are moot as Hagiri is not being used in the current rejection and Kawahara is relied upon for the teaching of component (A1).
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 TYNESHA L. MCCLAIN whose telephone number is (571)270-1153. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at 571-272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793