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 .
Application Status
Claim 1, 3, 5-6, 8, 10-12 and 26-29 are under examination.
Claim 2, 4, 7, 9, 15-16 and 23-25 are cancelled.
Claim 13-14 and 17-22 are withdrawn from examination.
Claim 1, 3, 5-6, 8, 10-12 and 26-29 are rejected.
The Examiner notes claim 14 has incorrect claim status identifier as “previously presented” and should be “withdrawn” as the claim status identifier. Claim 14 is within the Group II; wherein Claim 13-14 and 17-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II and III, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/15/2025. Additionally, claim 14 was not examined and withdrawn in previous office action, mailed on 06/05/2025.
Withdrawn Rejections
The objections over claim 1, 3, 6, 8, 12, 26, 27, 28 and 29 set forth in previous office action have been withdrawn in light of Applicant’s amendments filed on 09/05/2025.
The 112, second paragraph rejection over claim 1, 3 and 26 over the abbreviations, “UMP”, “GMP” and “AMP” as set forth in previous office action, have been withdrawn in light of Applicant’s remarks.
The 112, second paragraph rejections over claim 12, 22, 23, 27 and 29 as set forth in previous office action have been withdrawn in light of Applicant’s amendments.
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.
Claim 1, 3, 5-6, 8, 10-12 and 26-29 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.
The 112, second paragraph rejections as stated below are the same as in previous office action and are maintained.
Claim 1 recites “…said mass includes at least one…” with listed components and amounts, however the recitation of range of the amounts include a zero amount; hence it is not clear if said mass includes at least one of the listed components since the range of the amounts include a zero amount hence no amounts of the listed components. The claim is indefinite. Claim 3, 5-6, 8, 10-12 and 26-29 are also rejected since the claims are depended upon rejected claim 1.
Claim 3 recites “…said mass includes at least four…” with listed components and amounts, however the recitation of range of the amounts include a zero amount; hence it is not clear if said mass includes at least one of the listed components since the range of the amounts include a zero amount hence no amounts of the listed components. The claim is indefinite.
Claim 5 recites “…said mass includes each of the characteristics (e) to (g) …”, however the recitation of the characteristics (e) to (g) with the range of the amounts include a zero amount; hence it is not clear if said mass includes each of the characteristics (e) to (g) since the range of the amounts include a zero amount hence no amounts of the characteristics (e) to (g). The claim is indefinite.
Claim 26 recites “…said mass includes each of the characteristics (e) to (g) …”, however the recitation of the characteristics (e) to (g) with the range of the amounts include a zero amount in line 3-5; hence it is not clear if said mass includes each of the characteristics (e) to (g) since the range of the amounts include a zero amount hence no amounts of the characteristics (e) to (g). The claim is indefinite.
Claim Interpretation
The recitation of range(s) of amount include a zero amount in claim 1, 3, 5, 26, 27, and 29 as noted in the 112, second paragraph rejection discussed above, encompass zero amount(s), i.e. 0 ppm of the listed components is considered to be in the scope of the claims; and therefore be considered in its broadest meaning to be an edible mass comprising fungal particles of a filamentous fungus, comprising cells of Fusarium venenatum A3/5.
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.
Claim(s) 1, 3, 5, 6, 8, 10, 26 and 28 are rejected under 35 U.S.C. 102(a)(1)as being anticipated by Finnigan et al. (US 2004/0185162).
Regarding claim 1, 3 and 5, Finnigan et al. (Finnigan) discloses a formulation (edible mass) comprising edible fungal particles (‘162, Abstract) of filamentous fungi (‘162, [0008]). With respect to new limitation, Finnigan discloses the edible fungal particles comprises cells of Fusarium venenatum A3/5 (‘162, [0012]).
Regarding claim 6, Finnigan discloses the edible fungal particles comprises cells of Fusarium venenatum A3/5 (‘162, [0012]) as much as Applicant’s disclosure, hence Finnigan’s fungal particles comprises cells of Fusarium venenatum A3/5 is expected to have similar amino acid profile and amounts as recited in claim 6.
Regarding claim 8, 26 and 28, Finnigan discloses the edible fungal particles comprises cells of Fusarium venenatum A3/5 (‘162, [0012]).
Regarding claim 10, Finnigan discloses the edible fungal particles with RNA content less than 2% by wt. (‘162, [0092]), which is in range with the cited range.
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.
Claim(s) 11, 12, 27 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Finnigan et al. (US 2004/0185162).
Regarding claim 11, Finnigan discloses the edible fungal particles at less than 50% wt. on a dry basis (‘162, [0019], which overlaps the cited range. In the case 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 12, Finnigan discloses the edible fungal particles and water content is at least 89% by wt., (‘162, [0016]), which overlaps the cited range. In the case 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 27, Finnigan discloses the edible fungal particles with RNA content less than 2% by wt. (‘162, [0092]), which is in range with the cited range. Finnigan discloses the edible fungal particles at less than 50% wt. on a dry basis (‘162, [0019], which overlaps the cited range. In the case 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Finnigan discloses the edible fungal particles and water content is at least 89% by wt., (‘162, [0016]), which overlaps the cited range. In the case 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 29, Finnigan discloses the edible fungal particles comprises cells of Fusarium venenatum A3/5 (‘162, [0012]).
Finnigan discloses the edible fungal particles with RNA content less than 2% by wt. (‘162, [0092]), which is in range with the cited range. Finnigan discloses the edible fungal particles at less than 50% wt. on a dry basis (‘162, [0019], which overlaps the cited range. In the case 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Finnigan discloses the edible fungal particles and water content is at least 89% by wt., (‘162, [0016]), which overlaps the cited range. In the case 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
Applicant asserts “…[t]he present invention is directed to a process which produces fungal particles of a filamentous fungus which comprises cells of Fusarium venenatum A3/5 which has reduced or even zero ppm levels of the undesirable components referred to in (a) to (j) of claim 1…”.
Applicant's arguments filed 09/05/2025 have been fully considered but they are not persuasive. The instant claims is directed to a composition claim and not a process claim.
The recitation of range(s) of amount include a zero amount in claim 1, 3, 5, 26, 27, and 29 as noted in the 112, second paragraph rejection discussed above, encompass zero amount(s), i.e. 0 ppm of the listed components is considered to be in the scope of the claims; and therefore be considered in its broadest meaning to be an edible mass comprising fungal particles of a filamentous fungus, comprising cells of Fusarium venenatum A3/5. Finnigan clearly discloses a formulation (edible mass) comprising edible fungal particles (‘162, Abstract) of filamentous fungi (‘162, [0008]). With respect to new limitation in claim 1, Finnigan discloses the edible fungal particles comprises cells of Fusarium venenatum A3/5 (‘162, [0012]).
Applicant asserts “…there is no treatment of the edible fungal particles in Finnigan, much less the treatment in accordance with Applicant’s invention, and does not carry out any treatment which addresses the problems described at [0002] to [0006] of Applicant’s specification, Finnigan cannot obtain the edible mass as defined by Applicants claims..”.
In response, Applicant’s remarks are do not commensurate the instant claim, wherein the instants claims are to a composition and not a process claim with treatment steps.
Applicant asserts “…Finnigan does not even discuss the problems identified by Applicant. Whilst Finnigan and Applicant use the same starting material; Applicant treats the starting material to address and solve the problems described at [0002] to [0006] of Applicant’s specification. Finnigan does not recognize the problem with which the present invention is concerned and does not provide any solution to the problem. Finnigan simply uses the specified fungal material in various foodstuffs described in Finnigan. Those foodstuffs will suffer from the problems described at [0002] to [0006] and may need to include masking agents as appropriate or other means may be used to address the problems. Thus an object of the present invention, to provide an edible mass comprising fungal particles of a filamentous fungus which has reduced mushroom taste whilst maintaining desired nutritional attributes, is not achieved by Finnigan. Furthermore, Finnigan provides no motivation to undertake the process described in Applicant’s specification and Finnigan provides no insight that a process can be undertaken as described by Applicant to produce the advantageous materials described in the present claims”.
In response to applicant's argument that “solve the problems described at [0002] to [0006]”, 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). The instant claims is directed to a composition claim and not a process claim. The recitation of range(s) of amount include a zero amount in claim 1, 3, 5, 26, 27, and 29 as noted in the 112, second paragraph rejection discussed above, encompass zero amount(s), i.e. 0 ppm of the listed components is considered to be in the scope of the claims; and therefore be considered in its broadest meaning to be an edible mass comprising fungal particles of a filamentous fungus, comprising cells of Fusarium venenatum A3/5. Finnigan clearly discloses a formulation (edible mass) comprising edible fungal particles (‘162, Abstract) of filamentous fungi (‘162, [0008]). Finnigan discloses the edible fungal particles comprises cells of Fusarium venenatum A3/5 (‘162, [0012]).
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., reduced mushroom taste whilst maintaining desired nutritional attributes) 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).
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 HONG THI YOO whose telephone number is (571)270-7093. The examiner can normally be reached M-F, 7AM to 3PM.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HONG T YOO/Primary Examiner, Art Unit 1792