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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/13/2026 has been entered.
Response to Amendment
The amendment filed 02/13/2026 has been entered. Claims 1, 3, and 7-18 remain pending in the application. Claims 14-18 remain withdrawn. Claims 1, 3, and 7-13 remain rejected.
Claim Objections
In Claim 1, the Examiner notes that limitations that appear after “subjecting a potato to a thermal treatment” in the text of the claim, including “subjecting the potato to a scan”, “performing a mechanical emptying of the specified holes using a tubular blade that retains a core of the potato”, “performing a mechanical cutting of the potato” do not explicitly require that “the potato” has been thermally treated, and therefore, the order of the process steps is not necessarily limited. It is suggested to use “the potato that has been subject to the thermal treatment” to clarify the order of the process steps.
Also, regarding claim 1, it is suggested to change “recovering a cap for each hole, which corresponds to one of the ends of the core extracted from the potato” to “recovering the claim language. Additionally, it is suggested to change “covering each one with the corresponding cap” to “covering each one with one of the ends of the core extracted from the potato”.
In addition, “packaging the previously frozen predetermined portions” should read “packaging the previously deep-frozen predetermined portions” to keep the claim language consistent.
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 1, 3, and 7-13 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 1 recites the limitation "the hollowed and filled potato" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the filled holes" in line 7. There is insufficient antecedent basis for this limitation in the claim.
In claim 1, it is unclear what “its” is referring to in the limitation “subjecting the potato to a scan to record its shape and size and creating a potato model”.
Claim 1 recites the limitation "the obtained potato model" in line 9. There is insufficient antecedent basis for this limitation in the claim as “obtained potato model” is not the same as “a potato model” previously recited.
Regarding claim 1, it is unclear what constitutes an “optimal position” since no definition or standard is explained to demonstrate what makes a position for a cut “optimal”.
Furthermore, regarding the limitation “determining on a predetermined portion from the selected number of portions the position of a determined hole with a single inlet orifice to be filled subsequently” in claim 1, it is unclear how many cuts “some” refers to. Is the position of every cut determined on the potato model, or only a portion of the cuts? If so, what proportion of cuts are determined on the model?
Also, in claim 1, in the steps after “determining on the obtained potato model an optimal position of some cuts to subsequently form a selected number of portions” such as “determining on a predetermined portion from the selected number of portions the position of a determined hole with a single inlet orifice to be filled subsequently” it is unclear if the step is performed on the potato model or the potato itself. Consequently, claim is rejected as indefinite.
Regarding the limitation “determining on a predetermined portion from the selected number of portions the position of a determined hole with a single inlet orifice to be filled subsequently” in claim 1, it is noted that this limitation requires determining the position of only a single hole, while subsequent limitations refer to multiple holes, making the claim language inconsistent and unclear as to how many holes are required.
Claim 1 recites the limitation "the specified holes" in lines 13 and 17. There is insufficient antecedent basis for these limitations in the claim.
Claim 1 recites the limitation "the corresponding cap" in line 17. There is insufficient antecedent basis for this limitations in the claim.
Regarding claim 1, it is unclear if “cooling and deep-freezing” comprises a single step or two separate steps since “deep-freezing” is a method of cooling.
In claim 1, it is unclear what “them” is referring to in the limitation “packaging the previously frozen predetermined portions and storing and transporting them to a final preparation site under suitable cold conditions”.
Regarding claim 1, it is unclear what constitutes an “suitable cold conditions” since no definition or standard is explained to demonstrate what makes cold conditions for a cut “suitable”.
Claims 3 and 7-13 are rejected as indefinite as a result of depending upon indefinite claim 1.
Regarding claim 3, it is unclear if “the coating” is the same as or different than the “granular or powdery coating” in claim 1. Consequently, claim 3 is rejected as indefinite.
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.
Claim(s) 1, 3, 7, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weiss (DE 19859362 A1) in view of Yoshida (JP 2008212113 A), Glantz (US 4626438 A), Spraker (How to Blanch Vegetables), Arnason (US 20070293132 A1), Housley (US 5186967 A), Brient (US 20040109924 A1), Aikens (US 20150273719 A1), Delicious meets Healthy (Pan Fried Potatoes), and Capdevila Espeja (WO 2019038460 A1).
Regarding claim 1, Weiss teaches (Paragraph 0004) a method of preparing fried potato sticks having an edible filling. The fried potato sticks of Weiss are understood to be potato chips according the broadest reasonable interpretation of the term as a cut piece or section of a potato that has been cooked. Weiss further teaches (Paragraph 0016) in an embodiment, the fried potato sticks are prepared by cutting lengthwise. Also, Weiss teaches (Paragraph 0011, 0018; Fig. 1 #14, 16) a tubular piercing tool can be inserted into the raw potato stick, to which a negative pressure is applied after completion of the piercing process in order to remove the potato material located inside the tubular piercing tool from the raw potato stick (mechanical emptying), and an edible filling 16 is filled into the blind hole 14 which is open at the front. While not explicitly stated, the position of a hole with a single inlet orifice to be filled subsequently must necessarily be determined prior to emptying of said hole. Additionally, Weiss teaches (Paragraph 0013) the filled raw potato stick can be closed at the open end with a plug (cap) made of raw potato. Furthermore, Weiss teaches (Paragraph 0018; Fig. 1 #10, 18) the potato sticks filled with the edible filling 16 and closed with the plug 18 made of raw potato material are then introduced into a deep fryer to produce fried potato sticks 10. In addition, Weiss teaches (Paragraph 0021) the filled potato sticks are shock-frozen (deep frozen) after frying and stored.
While Weiss does not explicitly state that the recovery of the cap for each hole corresponds to one of the ends of the core extracted from the potato, doing so would be obvious to one of ordinary skill in the art since using an end of the extracted core reduces material waste, since using an end of the extracted core from each hole removes the need for additional labor and/or processing to acquire and shape potato caps, and since using an end of the extracted core from each hole will ensure that the cap matches the hole in size, shape, and appearance, preventing the filling from leaking and making the potato chip appear unmodified and natural in appearance.
Weiss is silent on subjecting a potato to a thermal treatment of cooking by single-layer immersion, vacuum cooking or steam cooking at a temperature of between 80°C and 90°C for seven (7) minutes, wherein the thermal treatment simultaneously softens the potato sufficiently to (i) enable mechanical hollowing and (ii) maintain structural integrity so that the hollowed and filled potato can be cut into portions without collapse or rupture of the filled holes. Weiss is further silent on subjecting the potato to a scan to record its shape and size and creating a potato model. Also, Weiss is silent on determining on the obtained potato model an optimal position of some cuts to subsequently form a selected number of portions. Additionally, Weiss is silent on the insertion of the filler being performed mechanically or by injecting. Furthermore, Weiss is silent on the cutting being performed mechanically. Weis is further silent on applying a granular or powdery coating to the predetermined portions. In addition, Weiss indicates that the potato is cut into sticks (predetermined portions) before emptying and filling the holes, rather than after. Weiss is further silent on packaging the previously frozen predetermined portions prior to storing and transporting them to a final preparation site under suitable cold conditions. Also, Weiss is silent on heating the predetermined portions injected with one or more frozen, pre-fried and deep-frozen sauces.
Yoshida teaches (Paragraph 0001, 0008) a method for producing frozen French fries, wherein potatoes are subjected to cutting, washing, and blanching, wherein the blanching step comprises adding potatoes to a water bath (single-layer immersion) and blanching preferably at 70 to 90° C (which encompasses the claimed range of 80° C to 90° C) for 5 to 30 minutes (which encompasses the claimed time of 7 minutes), and wherein the cutting, washing, and blanching steps may be carried out in any order (which includes embodiments for performing blanching before cutting).
Glantz teaches (Col. 1, lines 11-13; Col. 2, lines 38-39; Col. 3, lines 25-37) potato processing and more particularly to a method for preparing skin-on "potato boats," wherein potatoes preferably are blanched in water (single-layer immersion) at a temperature ranging from about 170° F to 210° F (76.7-98.9° C) for about 3-15 minutes, preferably 190° F (87.8° C, which falls withing the claimed range) for about 7 minutes, after which the blanched potatoes are cut in half lengthwise along their major diameter to form potato halves, wherein center portions of the potato halves may be removed mechanically (hollowing).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Weiss to subjecting a potato to a thermal treatment of cooking by single-layer immersion at a temperature of between 80°C and 90°C for seven minutes; wherein the thermal treatment simultaneously softens the potato sufficiently to enable mechanical hollowing and maintain structural integrity so that the hollowed and filled potato can be cut into portions without collapse or rupture of the filled holes in view of Yoshida and Glantz since each of Weiss, Yoshida, and Glantz is directed to a method of preparing a cut potato product, since cutting potatoes after blanching (single-layer immersion) at 70 to 90° C (which encompasses the claimed range of 80° C to 90° C) for 5 to 30 minutes (which encompasses the claimed time of 7 minutes) is known in the art as shown by Yoshida, since blanching potatoes (single-layer immersion) at 190° F (87.8° C, which falls withing the claimed range) for about 7 minutes, after which the blanched potatoes are cut in half lengthwise along their major diameter to form potato halves, wherein center portions of the potato halves may be removed mechanically (hollowing) is known in the art as shown by Glantz, since blanching at 70 to 90° C for 5 to 30 minutes not only heats the potatoes to a certain extent but also sterilizes the potatoes and inactivates the enzymes contained in the potatoes, thereby maintaining the quality of the potatoes (Yoshida, Paragraph 0008), and since blanching at the parameters disclosed by Glantz deactivates enzymes and gelatinizes an outer layer and provides a cohesive cellular structure bonding the potato cells together when parfried along with improved texture, flavor and coloration, while the uncooked center portion may be manually removed as a single piece, allowing for a wide variety of uses (Glantz, Col. 3, lines 19-21; Col. 4, lines 51-68; Col. 5, lines 55-61, Col. 8, lines 18-19).
It is noted that Yoshida is silent on mechanical hollowing while Glantz performs mechanical hollowing in a manner different from Weiss and the claimed invention, and after cutting rather than before. However, both Glantz and Yoshida indicate successful cutting and structural integrity (e.g., the cohesive cellular structure described by Glantz) after blanching such that one of ordinary skill in the art would recognize that cutting a hollowed and filled potato would succeed without collapse or rupture of the filled holes. Moreover, the Applicant has not demonstrated the criticality or secondary considerations resulting from the claimed time and temperature range that would render the claimed invention non-obvious in view of the prior art.
It is noted that, in the Applicant Arguments of 06/06/2025, the Applicant indicated that “single-layer immersion” is a term of the art in the preparation of potato chips in which potatoes form a single layer and are not stacked on top of each other, though such a definition was not provided in the Applicant’s specification. While Yoshida and Glantz do not explicitly state that the potatoes immersed in water during blanching are not stack on top of each other, such a configuration is known in the art. For example, Spraker discloses (Step 3) a process for blanching vegetables wherein potatoes being blanched are shown to be in a single layer.
Such an arrangement would be obvious to one of ordinary skill in the art to ensure that the potatoes are surrounded by water for even thermal treatment and to ensure that the potatoes are fully immersed at the same depth in the water so that the thermal treatment is consistent in its effect on each potato.
Furthermore, both the cooking temperature of 80-90 degrees centigrade and the cooking time of 7 minutes would have been used during the course of normal experimentation and optimization procedures in the method of Weiss, as modified above, based upon factors such as the type of potatoes (where different types of potatoes will have different properties that require different cooking time and temperature), the size and thickness of the potatoes (where larger potatoes would require a longer time or higher temperature to cook through), the desired firmness of the potato product (where higher temperatures and longer times will soften the potatoes), the conditions of the subsequent frying process (where potatoes intended to be fried for a longer time will need less initial steam cooking), the processing steps after frying (where a firmer, less cooked potato may be needed to prevent damage during subsequent processing), etc.
Arnason teaches (Paragraph 0001, 0014, 0021) a method for bone removal and trimming of products such as fish fillets, wherein a product, for example a fish fillet, is transported to a camera with a laser scanner device which provides a three dimensional model of the product and compares the image to known fillets and a cutting pattern is determined from that comparison, wherein, in an embodiment of the present invention, a three dimensional model is created and the information used for grading the items after processing based on characteristics such as shape, size and the weight of the food items, wherein this information can be used later in the processing. Arnason further teaches (Paragraph 0083, 0084) the scanning process is also used to define and chose the optimal cutting pattern according to the size and shape of the fillet, and the cutting device is controlled by the computer and fillet is portioned into desired pieces.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Weiss to subject the potato to a scan to record its shape and size, to create a potato model, and to determine on the obtained potato model an optimal position of some cuts to subsequently form a selected number of portions in view of Arnason, since both are directed to methods of preparing food products by cutting a food product to individual pieces, since scanning a food product to record the shape and size of the food product and to create a model, and determining on the obtained model an optimal position of some cuts to form a selected number of portions is known in the art as shown by Arnason, since potatoes come in a variety of sizes and shapes and will need to be cut differently based on the size and shape, since determining a cutting pattern from a model will be more accurate than manually assessing and estimating where cuts should be placed, and since, by making a three dimensional model of the fillet (food product) it is possible to use the information for grading with respect to shape, size and the weight of the fillets or the products and use the information for later processing, wherein the scanning process is also used to define and chose the optimal cutting pattern according to the size and shape of the fillet (Arnason, Paragraph 0084).
It is noted that, in the preparation method of Weiss, cutting the potato into portions occurs prior to emptying and filling the holes, while in the Applicant’s claimed process, cutting into portions occurs after emptying and filling the holes. However, it would be obvious to one of ordinary skill in the art to modify the process of Weiss to perform the emptying and filling prior to cutting into portions.
Processes for emptying holes in whole potatoes are known in the art. For example, Housley teaches (Col. 2, lines 51-68; Fig. 1 #12; Fig. 2 #H) a method for preparing and cooking potatoes wherein, drills 12 are used to form an array of holes H in a potato P.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Weiss to empty and fill the holes prior to cutting the predetermined portions since cutting holes in a whole potato is known in the art as shown by Housley, since emptying the holes adding the filler to the potato as a whole allows the emptying and filling for multiple portions to be done simultaneously, without having to individually place or position each portion, since the potato can be kept in the same position if the holes are emptied and filled and then cutting is performed, while the portions would fall away from the potato and have to be repositioned if cutting is performed first, and since the surrounding potato provides structure and reinforcement when emptying the holes so that the uncut portions do not have to be held in place when contacted by the emptying tool.
Brient teaches (Paragraph 0007) a method of preparing a condiment filled food item such as a French fry, onion ring, hash brown, tater tot, soft pretzel, or other food item, wherein an elongate injection nozzle is configured for facilitating the injection of condiment from a packet (or other container) into the interior of a food item, wherein the elongate injection nozzle is configured much like a hypodermic needle.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Weiss to add the filler to the holes with an injection as taught by Brient since both are directed to methods of preparing fried potato products containing a filler, since adding a filler to the interior of a potato portion using injection is known in the art as shown by Brient, since injection ensures that the filler is delivered to the interior of the potato and does not spill on the exterior of the potato, since injection with an elongate nozzle can precisely target the desired location for delivery of the filler without significant damage to the potato portion due to the narrow width of the nozzle, and since the condiment injection apparatus may be provided with a "desired condiment fill amount" input device that allows users to select whether they would like their French fries to be filled with a "large", "medium", or "small" amount of condiment (Brient, Paragraph 0241), thus allowing control over the amount of filler added for consistent results.
Aikens teaches (Paragraph 0002, 0087; Fig. 2 #100, 104) a method for making cut food products, wherein a blade assembly 100 may include two or more cutting blades 104 which may divide a potato into a number of wedges equal to the number of blades 104. Aikens further teaches (Paragraph 0079; Fig. 1 #12, 22, 26, 28) the potatoes 12 travel through a knife fixture 22 including blade assembly 100, and they are cut into smaller pieces 26 and discharged through outlet conduit 28, wherein, optionally, smaller pieces 26 are subjected to subsequent processing (e.g., cooking, parfrying, freezing, packaging etc.)
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Weiss to mechanically cut the potato into predetermined portions as taught by Aikens since both are directed to methods for preparing cut portions of potatoes that are fried, since mechanically cutting the potato into predetermined portions is known in the art as shown by Aikens, since mechanically cutting with an arrangement of spaced apart blades allows multiple portions to be cut simultaneously, since each cutting blade may be equally spaced apart from each radially adjacent cutting blade (Aikens, Claim 19) ensuring that the resulting cut pieces are equal in size, and since using a series of spaced blades ensures greater accuracy and consistently sized pieces from each cut potato compared to manually cutting the portions.
Delicious meets Healthy teaches (Instructions) a method of making pan fried potatoes, wherein cubed and boiled potatoes are coated with chubritsa, Himalayan salt, paprika, and freshly ground pepper (granular coating) prior to cooking in oil (frying).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Weiss, as modified above, to apply a granular coating to the predetermined portions prior to the pre-frying step in view of Delicious meets Healthy, since both are directed to methods of preparing fried potato portions, since coating potato portions in a granular coating prior to frying is known in the art as shown by Delicious meets Healthy, since the mixture of salt and spices provides flavoring that will improve the taste of the finished product for many consumers, since the chubritsa spice adds a really nice deep, smokey and salty flavor to the potatoes (Delicious meets Healthy, Paragraph 2), and since the chubritsa and the paprika give the potatoes a golden color and delicious flavor (Delicious meets Healthy, Paragraph 2) which many consumers will desire for the improved taste and appearance.
Capdevila Espeja teaches (Paragraph 0011, 0015-0017) a method for preparing potato chips injected with one or more sauces, wherein the fried and injected portions of potatoes are frozen, packaged for distribution (transportation), and heated at the place of consumption.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the method of Weiss to package the frozen portions, transport them to a final preparation site and heat the portions in view of Capdevila Espeja since both are directed to methods for preparing fried portions of a potato containing a filling, since packaging frozen filled potato portions for distribution and heating at a place of consumption is known in the art as shown by Capdevila Espeja, since packaging will protect the potato portions from damage and contamination, since transporting and reheating at the place of consumption will allow a wide variety of consumers to eat the potato portions at their convenience, and since many consumers prefer heated foods and reheating can allow the consumer to choose when they wish to consume the potato portions.
Additionally, while Weiss, as modified above, in view of Capdevila Espeja does not explicitly state that the frozen portions are transported under suitable cold conditions, doing so would be obvious to one of ordinary skill in the art since keeping the frozen portions cold would prevent spoilage that would shorten the shelf life of the product and since moisture from thawing of the product could damage or leak out of the packaging.
Regarding claim 3, Weiss, as modified above, is silent on the coating comprising a mixture of spices and/or vegetable flours.
Delicious meets Healthy teaches (Instructions) a method of making pan fried potatoes, wherein cubed and boiled potatoes are coated with chubritsa, Himalayan salt, paprika, and freshly ground pepper (mixture of spices) prior to cooking in oil (frying).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Weiss, as modified above, to apply a coating comprising a mixture of spices to the predetermined portions in view of Delicious meets Healthy, since both are directed to methods of preparing fried potato portions, since coating potato portions in a coating comprising a mixture of spices is known in the art as shown by Delicious meets Healthy, since the mixture of salt and spices provides flavoring that will improve the taste of the finished product for many consumers, since the chubritsa spice adds a really nice deep, smokey and salty flavor to the potatoes (Delicious meets Healthy, Paragraph 2), and since the chubritsa and the paprika give the potatoes a golden color and delicious flavor (Delicious meets Healthy, Paragraph 2) which many consumers will desire for the improved taste and appearance.
Regarding claim 7, Weiss is silent on the cuts that determine the predetermined portions being made by a single cut with a guillotine with radial branches, circular blades or metallic wires, obtaining portions in the form of a wedge.
As shown above, Aikens teaches (Paragraph 0002, 0087; Fig. 2 #100, 104) a method for making cut food products, wherein a blade assembly 100 (guillotine) may include two or more cutting blades 104 which may divide a potato into a number of wedges equal to the number of blades 104. Aikens further teaches (Paragraph 0079; Fig. 1 #12, 22, 26, 28) the potatoes 12 travel through a knife fixture 22 including blade assembly 100, and they are cut into smaller pieces 26 and discharged through outlet conduit 28, wherein, optionally, smaller pieces 26 are subjected to subsequent processing (e.g., cooking, parfrying, freezing, packaging etc.) As shown in Figure 2, the blades 104 of the blade assembly 100 (guillotine) are arranged radially.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Weiss for the cuts that determine the predetermined portions being made by a single cut with a guillotine with radial branches, obtaining portions in the form of a wedge as taught by Aikens since both are directed to methods for preparing cut portions of potatoes that are fried, since the cuts that determine the predetermined portions being made by a single cut with a guillotine with radial branches, obtaining portions in the form of a wedge is known in the art as shown by Aikens, since cutting with a guillotine with radial branches allows multiple portions to be cut simultaneously, since each cutting blade may be equally spaced apart from each radially adjacent cutting blade (Aikens, Claim 19) ensuring that the resulting cut pieces are equal in size, since using a series of spaced blades ensures greater accuracy and consistently sized pieces from each cut potato compared to manually cutting the portions, and since cutting once with a single blade assembly is faster than making multiple individual cuts.
Regarding claim 13, Weiss teaches (Paragraph 0005, 0006) the edible filling can be tomato ketchup, chilli sauce (spicy sauce), a filling of creamy consistency, a cheese mass, etc.
Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weiss (DE 19859362 A1) in view of Yoshida (JP 2008212113 A), Glantz (US 4626438 A), Spraker (How to Blanch Vegetables), Arnason (US 20070293132 A1), Housley (US 5186967 A), Brient (US 20040109924 A1), Aikens (US 20150273719 A1), Delicious meets Healthy (Pan Fried Potatoes), and Capdevila Espeja (WO 2019038460 A1), and further in view of RecipeTips (French Fry Cutter) and Mamane (FR 2715045 A1).
Regarding claim 8, Weiss, as modified above, is silent on the tubular blade and the guillotine with radial branches, circular blades or metallic wires having a vertical movement on each potato to be processed.
RecipeTips teaches a French fry cutter is a kitchen utensil used to cut uniform shapes for French fries from raw potatoes, wherein one type of cutter is a simple hand cutter consisting of a grid of stainless wires or blades (guillotine), which is placed on the top of the potato and pressed downward cutting through the potato and separating it into square lengths of fries.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Weiss, as modified above, to operate the guillotine with a vertical movement on each potato to be processed in view of RecipeTips, since both are directed to methods of producing cut potato products, since operating a mechanical cutting device with vertical movement on each potato is known in the art as shown by RecipeTips, since orienting and operating the cutting tool vertically allows gravity to assist in pushing the cutting tool through the potato, since orienting the cutting tool vertically allows the potato to be cut while sitting on a supporting surface like a table, without the need for additional structures like a wall or barrier to hold the potato in place when cutting horizontally, and since orienting both the guillotine and the tubular blade vertically allows the potato portions to be cut by both devices without having to reposition the portions, simplifying the production process.
Mamane teaches (Paragraph 0007; Fig. 4 #9, 10; Fig. 5 #12, 13, 25; Fig. 10 #26) a method of using a device for making stuffed fried vegetables, in particular potatoes or aubergines, wherein a potato is pressed into an envelope 9 and cut by a grid 10 into elements 25, then a punch 12-13 is placed above the envelope 9 and pressed such that each of the tubes 13 (tubular blades) penetrates the axis of an element 25 by cutting out an axial perforation 26 and then removed. As shown in Figure 5, the tubes 13 (tubular blades) are moved vertically.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Weiss, as modified above, to operate the tubular blade with a vertical movement on each potato to be processed in view of Mamane, since both are directed to methods of producing cut potato products and emptying holes in the potato portions, since operating a tubular blade with vertical movement on each potato is known in the art as shown by Mamane, since orienting and operating the tubular blade vertically allows gravity to assist in pushing the tubular blade through the potato, since orienting the tubular blade vertically allows the potato to be cut while sitting on a supporting surface like a table, without the need for additional structures like a wall or barrier to hold the potato in place when cutting horizontally, since orienting both the guillotine and the tubular blade vertically allows the potato portions to be cut by both devices without having to reposition the portions, simplifying the production process, and since cutting the holes to be filled vertically allows the filling to be injected downward into the hole, better ensuring that the filling goes all the way to the bottom of the hole.
Regarding claim 9, Weiss is silent on the injection or mechanical insertion of the filler being carried out by means of an injector needle provided with movement in the same direction as that of the tubular blade.
As shown above, Brient teaches (Paragraph 0007) a method of preparing a condiment filled food item such as a French fry, onion ring, hash brown, tater tot, soft pretzel, or other food item, wherein an elongate injection nozzle is configured for facilitating the injection of condiment from a packet (or other container) into the interior of a food item, wherein the elongate injection nozzle is configured much like a hypodermic needle. Brient further teaches (Paragraph 0153) in one embodiment of the invention, the nozzle is a reusable stainless steel 18 gauge dispensing needle.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the method of Weiss such that the injection of the filler is carried out by means of an injector needle as taught by Brient since both are directed to methods of preparing fried potato products containing a filler, since adding a filler to the interior of a potato portion using an injection needle is known in the art as shown by Brient, since an injection needle ensures that the filler is delivered to the interior of the potato and does not spill on the exterior of the potato, since injection with an injection needle can precisely target the desired location for delivery of the filler without significant damage to the potato portion due to the narrow width of the nozzle, since a needle prevents excessive amounts of filler from spilling or accidently flowing into the potato portion since the narrow aperture of the needle restricts the flow of the filler, and since the condiment injection apparatus may be provided with a "desired condiment fill amount" input device that allows users to select whether they would like their French fries to be filled with a "large", "medium", or "small" amount of condiment (Brient, Paragraph 0241), thus allowing control over the amount of filler added for consistent results.
Mamane teaches (Paragraph 0007; Fig. 4 #9, 10; Fig. 5 #12, 13, 25; Fig. 10 #26) a method of using a device for making stuffed fried vegetables, in particular potatoes or aubergines, wherein a potato is pressed into an envelope 9 and cut by a grid 10 into elements 25, then a punch 12-13 is placed above the envelope 9 and pressed such that each of the tubes 13 (tubular blades) penetrates the axis of an element 25 by cutting out an axial perforation 26 and then removed. As shown in Figure 5, the tubes 13 (tubular blades) are moved vertically. Mamane further teaches (Paragraph 0007; Fig. 8 #19, 20, 21, 27) an envelope 19 filled with stuffing 27 is placed above the envelope 9, the piston 21 is pressed, and the stuffing is expelled from the envelope through the holes 20 and enters the holes 26 of the potato elements 25. As shown in Figure 8, the filling insertion apparatus is positioned vertically above the potato portions and inserts the filling in the same direction as the tubular blade.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Weiss, as modified above, to insert the filling with movement in the same direction as that of the tubular blade as taught by Mamane, since both are directed to methods of producing cut and filled potato products and emptying holes in the potato portions, since inserting the filling with movement in the same direction as that of the tubular blade is known in the art as shown by Mamane, since orienting and operating the filling insertion device vertically allows gravity to assist in pushing the filling into the potato portions, since orienting both the filling insertion device and the tubular blade vertically allows the potato portions to be emptied and filled by both devices without having to reposition the portions, simplifying the production process, and since vertically filling the holes better ensures that the filling goes all the way to the bottom of the hole.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weiss (DE 19859362 A1) in view of Yoshida (JP 2008212113 A), Glantz (US 4626438 A), Spraker (How to Blanch Vegetables), Arnason (US 20070293132 A1), Housley (US 5186967 A), Brient (US 20040109924 A1), Aikens (US 20150273719 A1), Delicious meets Healthy (Pan Fried Potatoes), and Capdevila Espeja (WO 2019038460 A1), and further in view of Shanbhag (US 5004616 A).
Regarding claim 10, Weiss, as modified above, is silent on the pre-frying step being carried out by a continuous fryer.
Shanbhag teaches (Col. 2, lines 60-63) a process for preparing cooked potato strips suitable for subsequent reheating, comprising frying potato strips in a continuous fryer.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Weiss, as modified above, to carry out the pre-frying step in a continuous fryer in view of Shanbhag since both are directed to methods of producing fried potato portions, since frying potato portions in a continuous fryer is known in the art as shown by Shanbhag, since using a continuous fryer would allow for the potato portions to be constantly fried at a steady rate without interruption, increasing the production rate and the profitability of the production process, and since the potato portions may be moved into and out of the fryer by conveyors (Shanbhag, Col. 8, lines 65-66; Col. 9, lines 44-46), removing the need for an operator to lift a basket or other container out of the oil, lowering labor costs and preventing risks to operators from the hot oil.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weiss (DE 19859362 A1) in view of Yoshida (JP 2008212113 A), Glantz (US 4626438 A), Spraker (How to Blanch Vegetables), Arnason (US 20070293132 A1), Housley (US 5186967 A), Brient (US 20040109924 A1), Aikens (US 20150273719 A1), Delicious meets Healthy (Pan Fried Potatoes), and Capdevila Espeja (WO 2019038460 A1), and further in view of Pinegar (US 4590080 A).
Regarding claim 11, Weiss, as modified above, is silent on the deep-freezing of the predetermined portions being carried out at a temperature of -35 degrees centigrade, or below.
Pinegar teaches (Claims 1, 5) a process for parfrying and freezing potato strips for subsequent reconstitution, comprising the steps of: blanching the potato strips; parfrying the potato strips; freezing the strips; parfrying the temperature-reduced potato strips a second time; and freezing and storing the twice-parfried potato strips, wherein said freezing and storing step comprises blast freezing the potato strips at a temperature of about -40° F (-40° C).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the method of Weiss to deep-freeze the predetermined portions at a temperature of -35 degrees centigrade, or below, in view of Pinegar since both are directed to methods of preparing fried and frozen potato pieces, since freezing fried potato portions at a temperature below -35 degrees centigrade is known in the art as shown by Pinegar, since a lower freezing temperature will freeze the potato portions faster, increasing the overall production rate, since freezing at lower temperatures will ensure that the food freezes completely and prevent spoilage, and since freezing at a temperature below -35 centigrade will lower the temperature of the potato portions faster and prevent damage to the food and preserve nutrients.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weiss (DE 19859362 A1) in view of Yoshida (JP 2008212113 A), Glantz (US 4626438 A), Spraker (How to Blanch Vegetables), Arnason (US 20070293132 A1), Housley (US 5186967 A), Brient (US 20040109924 A1), Aikens (US 20150273719 A1), Delicious meets Healthy (Pan Fried Potatoes), and Capdevila Espeja (WO 2019038460 A1), and further in view of Roullet (US 4462221 A).
Regarding claim 12, Weiss, as modified above is silent on the deep-freezing of the predetermined portions being carried out in a spiral freezing tunnel, or continuously.
Roullet teaches (Col. 1, lines 55-56; Col. 3, lines 21-25; Col. 4, lines 36-44; Fig. 1 #10, 12; Fig. 2 #60) a cooling device and process for providing continuous deep-freezing of foodstuffs, wherein bulk product (60) which is continuously fed in by feed chute (10) and continuously collected by the discharge chute (12) from the rotating drum, and wherein the invention applies particularly to the deep-freezing of bulk products, and in particular solid products of agricultural origin of relatively small dimensions such as, for instance: potatoes cut to make French fried or diced potatoes.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Weiss, as modified above, to carry out the deep-freezing step continuously as taught by Roullet since both are directed to methods of producing frozen potato portions, since deep-freezing potato portions continuously is known in the art as shown by Roullet, since using a continuous deep-freezing system would allow for the potato portions to be constantly frozen at a steady rate without interruption, increasing the production rate and the profitability of the production process, since the potato portions may be moved into and out of the freezer without an operator needing to manually move them, lowering labor costs and preventing risks to operators, since fast cooling of the bulk products is obtained, going as far as fast deep-freezing of bulk foodstuffs, basically by the convection effect through the product layer, so that all sorts of products may be processed in this way, whatever their shape, dimension and type (Roullet, Col. 2, lines 13-18), and since, because of the mixing resulting from products being turned over, better uniformity of temperature within the product layer is obtained and any adhesion or other damage harmful to the good quality of the product is certainly avoided (Roullet, Col. 2, lines 18-22).
Response to Arguments
Applicant's arguments filed 06/06/2025, regarding the 35 USC 103 rejection of claim 1 have been fully considered but they are not persuasive.
Regarding the Applicant’s argument that neither Weiss, Chase, Delicious Meets Healthy, nor Capdevilla-Espeja (W02019038460), Housley, nor Mamane, alone or in combination teach or suggest the method claimed resulting in the technical effect achieved in the present application in which the thermal treatment "simultaneously softens the potato sufficiently to (i) enable mechanical hollowing and (ii) maintain structural integrity so that the hollowed and filled potato can be cut into portions without collapse or rupture of the filled holes," the Examiner notes that Chase is no longer relied upon, and that the new combination of references including the newly cited prior art Yoshida (JP 2008212113 A), Glantz (US 4626438 A), and Spraker (How to Blanch Vegetables) render the claimed softening of the potato “sufficiently to (i) enable mechanical hollowing and (ii) maintain structural integrity so that the hollowed and filled potato can be cut into portions without collapse or rupture of the filled holes” obvious for the reasons stated above with regard to claim 1.
In response to the Applicant’s argument that the thermal treatment window is critical and not routine optimization since the potato is not a mere ingredient but a physical substrate with mechanical and thermal properties that are not linear and minor variations in temperature or time result in radical failures and, as a result, no person of ordinary skill in the art can say with a reasonable expectation of success that the parameters chosen would yield reproducible results since experimental results shown below prove that only within this range the potato can be processed, re-filled, capped, and later sliced, without losing the required integrity, the Examiner respectfully disagrees. The Applicant’s provided Table 1 provides experimental results for cooking at five different potato conditions. The type of cooking is unspecified, it is not clear if the cooking is any of single-layer immersion, vacuum cooking or steam cooking as claimed. Furthermore, while one set of cooking conditions matches the claimed invention, two others are for < 80°C/ < time (assumed to be less than 7 minutes) and >90 °C/ > time (assumed to be greater than 7 minutes). However, these ranges are extremely open ended and no specific time and temperature values are provided. The “insufficient cooking” condition could include 30 °C for 1 second while the “overcooking” condition could include 200 °C for 2 hours, for example. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range, and 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" (See MPEP 716.02(d)). Therefore, these open ended ranges do not adequately demonstrate the criticality of the claimed range. Also, the remaining categories for “Cooling to Room Temperature” and “Refrigerated Temperature” are irrelevant to the claimed invention, which is entirely silent on whether or not cooling occurs after thermal treatment. Also, the results are not quantifiable values, but subjective evaluations like “loss of cohesion” and “unreliable process”.
Furthermore, as stated in the rejection above, factors such as the type of potatoes (where different types of potatoes will have different properties that require different cooking time and temperature), the size and thickness of the potatoes (where larger potatoes would require a longer time or higher temperature to cook through), the desired firmness of the potato product (where higher temperatures and longer times will soften the potatoes), the conditions of the subsequent frying process (where potatoes intended to be fried for a longer time will need less initial steam cooking), the processing steps after frying (where a firmer, less cooked potato may be needed to prevent damage during subsequent processing), etc., would affect both the cooking temperature and the cooking time. Such factors are disclosed neither by the claims nor accounted for in the provided tables, and, therefore, there is insufficient data to demonstrate the criticality of the claimed time and temperature range. Consequently, Table 1 fails to demonstrate that the thermal treatment window is critical and not routine optimization.
Regarding Table 2, all the above issues with Table 1 persist. Additionally, while numerical values are provided, these values describe “valid wedges”, “failed wedges”, “success rate”, and “failure rate” based on the valid and failed wedges. However, no criteria is provided for how a wedge is determined to be “valid” or “failed”, such that an objective evaluation of results is clearly discernable.
In response to the Applicant’s argument that the claimed thermal treatment results in a double technical effect that was not obvious in the prior art of softening of the potato to allow mechanical removal of a portion of the potato while maintaining sufficient structural integrity so that after re-filling the empty holes, adding caps, and further slicing the potatoes do not collapse or crack, as demonstrated by the experimental results in included Table 1, the Examiner notes that new prior art is used in the rejection as shown above, and that Table 1 is insufficient to demonstrate that the thermal treatment window is critical as shown above.
Regarding the Applicant’s argument that, as shown in Table 3, only the thermal treatment using a die-cut tube results in above average/excellent performance and Table 4 shows the results of how the potatoes behave during the cutting process, the Examiner notes that Table 3 and Table 4 have the same issues highlighted with Tables 1 and 2 (open ended ranges, subjective evaluations, lack of consideration for other factors that affect the time and temperature, etc.). Furthermore, regarding Table 3, the primary reference, Weiss already discloses a tubular blade, and the results provided by the Applicant show that the die-cut tube has “optimal performance” with “insufficient cooking” which would not suggest that the claimed thermal treatment parameters are critical. Additionally, regarding Table 4, the wire cutter is stated to deform and not properly penetrate the skin for any condition of the potato, while the Applicant’s claimed invention (claims 7 and 8) includes wires as optional cutting instruments. Consequently, these Tables are insufficient to demonstrate the criticality of the claimed invention.
Regarding the affidavit-traversing rejections or objections under rule 132 filed 02/13/2026, the Examiner notes that the arguments made in the affidavit correspond to those made in the Applicant’s Arguments, which are addressed above.
Therefore, for the reasons stated above, claim 1, and all dependent claims remain rejected under 35 USC 103.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN P TAYLOR whose telephone number is (571)272-2652. The examiner can normally be reached M-F 8:30am-5pm.
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.
/AUSTIN PARKER TAYLOR/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792