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 .
Status of the Application
Receipt is acknowledged of the amendment and response filed 8/20/2025. Claims 1,2 and 8 are pending in the application. Claim 1 was amended and claims 3-7 and 9 were canceled.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/20/2025 was submitted before close of prosecution in the application. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1,2 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Shidara et al. (JPH05153915A) in view of Nishiura et al. (JP20021856A) cited in an IDS.
Regarding claims 1, 2 and 8, Shidara discloses a method to obtain a thermally coagulable food having the texture of boiled fish paste without containing minced fish meat, and a product thus produced. The food is obtained by including a thermally coagulable proteinaceous raw material such as soy protein, starch, thickening polysaccharides such as gellan , an edible oil and water as principal ingredients, in amounts falling within or overlapping the claimed values, psyllium as fiber, mixing the ingredients and thermally coagulating the resultant mixture. This food has texture similar to that of genuine boiled fish paste.
Shidara does not specifically disclose adding a divalent metal salt to the paste. Nishiura et al. however disclose a fish-paste product is obtained by using textured soybean protein with addition of starch, or by addition of starch and an alkaline earth metal compound so as to be easily dispersed during a kneading process. The process produces an improved product.
As both Shidara and Nishiura are directed to making fish paste or fish paste like products with good texture, it would have been obvious to one of ordinary skill in the art to have added a divalent metal salt such as a calcium salt, as disclosed in Nishiura, to the paste in Shidara to effect efficient kneading and an improved product that does not contain minced fish, with a reasonable expectation of success.
Regarding claim 8 producing a powder that can be mixed with water to produce seafood paste is an obvious modification of the art with a view towards improved shelf life and convenience to the consumer. A dry product thus made is therefore obvious over the art.
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
No coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function has been established in the claimed method. Claims 1,2 and 8 are therefore prima facie obvious in view of the art.
Response to Arguments
Applicant’s arguments in view of claim amendments have been considered and are partially persuasive. The rejection of claims under 35 USC 112(b) is withdrawn. However the claims remain obvious over Shidara in view of Nishiura for the reasons provided in the current Office action. Formation of a stretchable film by balancing a formulation having a known mixture of ingredients is achievable by routine experimentation by one of ordinary skill in the art.
Furthermore, the rejection is based on a combination of references. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The modification of the method in Shidara with added divalent metal salt as disclosed in Nishiura, is expected to produce a kneadable and therefore formable product.
For these reasons, applicant’s arguments are not fully persuasive, and the rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 Subbalakshmi Prakash whose telephone number is (571)270-3685. The examiner can normally be reached Monday-Friday.
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/SUBBALAKSHMI PRAKASH/Primary Examiner, Art Unit 1793