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 .
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-26 in the reply filed on 1 December 2025 is acknowledged. Claim 27 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 9 and 19-22 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 9 recites “the composition has one or more of an esterification degree of 40% to 60% or an amidation degree of 5% to 10%”. Claim 1, from which claim 9 depends, recites a composition comprising plant fiber, low and high esterified soluble pectin and optionally sugar. The components of the composition are not all capable of esterification or amidation. It is unclear what is required to be esterified or amidated to read on claim 9 and how to calculate the percentage of esterification or amidation of the composition as a whole. Appropriate correction is required.
Claim 19 recites “the composition is available in powder form”. It is unclear what is intended by the recitation “available”. It is unclear if this recitation requires the composition is available for retail purchase or if this limitation only requires a powdered composition. Appropriate correction is required.
Claim 20 recites “A group consisting of one of an ice cream, low-calorie ice cream, plant-based ice cream or ice cream containing insect protein comprising the composition of claim 1.” This is an improper Markush group. Claim language defined by a Markush grouping requires selection from a closed group "consisting of" the alternative members. Id. at 1280, 67 USPQ2d at 1196. See also Amgen Inc. v. Amneal Pharmaceuticals LLC, 945 F.3d 1368, 1376-78, 2020 USPQ2d 3197 (Fed. Cir. 2020) The way present claim 20 is drafted, there is no selection from a closed group, the claim only recites a closed group. As such, it is unclear if the claim requires each of the ice cream, the low-calorie ice cream, the plant-based ice cream or the ice cream containing insect protein to comprise the composition of claim 1 or if only the ice cream containing insect protein must comprise the composition of claim 1. Claim 21 depends from claim 20 and incorporates the indefinite subject matter therein. Appropriate correction is required.
Claim 22 recites “where, the ice cream contains a proportion of 0.05 to 1.5 wt% relative to the total weight of the ice cream”. It is unclear what element this limitation is referring to and ergo what component must be present in an amount of 0.05-1.5 wt%. Appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 10, 13 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jindra USPN 6706306.
Regarding claims 1 and 3, Jindra teaches a composition comprising plant fiber (apple powder), low-esterified (i.e. low-methoxy) pectin, high-esterified (i.e. high-methoxy) pectin and sugar (corn syrup). (Col. 5, lines 22-46)
Regarding claims 10 and 13, the plant fiber in the composition of Jindra reads on element f of claim 10 since it is not possible to determine the water content of the individual plant fiber when it is in the matrix of the composition. As such, it is presumed the water content of the apple fiber of Jindra is zero and the water present is exogenous. The apple fiber of Jindra is in a composition comprising pectin. Jindra reads on the recitation in claim 13 that the plant fiber is “an activated pectin-containing apple fiber” since the composition disclosed comprises activated pectin and apple fiber. As in claim 10, it is presumed the water content of the apple fiber of Jindra is zero and the water present is exogenous. Therefore, Jindra anticipates element f of claim 10 and element j of claim 13.
Regarding claim 17, Jindra teaches the high-esterified pectin has a DE of 62-72%. (Col. 5, lines 27-29)
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 4-9, 11, 12, 15, 16 and 18-24 are rejected under 35 U.S.C. 103 as being unpatentable over Jindra USPN 6706306.
Regarding claims 4-7, Jindra is silent regarding the proportions of constituents recited in claims 4-7. However, it would have been obvious to one of ordinary skill in the art at the time the application was filed to have varied the proportions of components in Jindra depending on the properties desired in the final product. One would increase or decrease the proportion of sugar depending on the sweetness desired and the amount of structuring provided by the sugar. The amount of pectin would be varied depending on the gel strength required in the final product. No criticality has been demonstrated for the claimed proportions and therefore they do not provide a patentable distinction over the prior 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.
Regarding claim 8, Jindra teaches high fructose corn syrup. (table 1)
Regarding claim 9, the pectin of Jindra has a DE of 10-72. (Col. 5, lines 27-31) 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 claims 11 and 12, Jindra teaches that the pectin in the invention can be derived from sources such as citrus fruits. (Col. 5, lines 32-33) Pectin can also be combined with fruit powders. (Col. 5, lines 35-37) It would have been obvious to one of ordinary skill in the art at the time the application was filed to have selected a pectin-containing citrus fiber since Jindra teaches pectin derived from citrus and fruit powders. 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) The plant fiber in the composition of Jindra reads on element j of claims 11 and 12 since it is not possible to determine the water content of the individual plant fiber when it is in the matrix of the composition. As such, it is presumed the water content of the apple fiber of Jindra is zero and the water present is exogenous. High and low methoxy pectin are both activatable as recited in claim 12.
Regarding claims 15 and 16, the low-esterified pectin of Jindra may be derived from citrus or apple. (Col. 5, lines 32-33) The DE of such pectins is disclosed to be 10-61% which encompasses the DEs recited in claims 15 and 16. 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 18, Jindra discloses the composition has a pH of 3.0-5.0. (Col. 5, lines 18-21). 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 19, it would have been obvious to one of ordinary skill in the art at the time the application was filed to have provided the composition of Jindra in powdered form for ease of shipping and packaging.
Regarding claims 20 and 21, Jindra discloses a fruit paste. The examiner takes official notice that including fruit paste in ice cream as a flavorant was universally known in the food art. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have used the composition of Jindra as a semi-finished product as a component in ice cream.
Regarding claim 22, ice cream is universally known to be a combination of milk, cream, sugar and flavoring. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have varied the proportions of these components based on personal preference.
Regarding claim 23, It would have been obvious to one of ordinary skill in the art at the time the application was filed to have mixed the composition of Jindra into an ice cream having a melting point below the freezing point of water, 0°C, since commercial freezers operate below this temperature.
Regarding claim 24, it would have been obvious to one of ordinary skill in the art at the time the application was filed to have mixed the composition of Jindra into an ice cream having any desired caloric content depending on the desired caloric intake of the end user.
Claims 2 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Jindra USPN 6706306 and Chen “Pectin Modifications: A Review”, Critical Reviews in Food Science and Nutrition, 55(12), 1684–1698 (2015).
Regarding claims 2 and 14, Jindra teaches what has been recited above but is silent regarding low-esterified amidated pectin.
Chen teaches that gels from amidated pectin can be heated and solidify again after cooling, whereas conventional pectin-gels will afterwards remain liquid. (Pg. 1687)
Jindra and Chen are both directed to pectin containing compositions. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have used amidated pectin in the composition of Jindra since Jindra discloses that the composition is to be used in baked goods and therefore the ability of amidated pectin to solidify again after heating would be beneficial. The low-methoxyl pectin of Jindra has a DE of 10-61% which encompasses the range in claim 14. 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)
Therefore, the modification of Jindra with Chen renders obvious claims 2 and 14.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Jindra USPN 6706306 and Desai USPGPub 20180317519.
Regarding claim 25, Jindra teaches what has been recited above but is silent regarding plant based ice cream.
Desai teaches a plant based ice cream comprising water, plant fat, plant protein and sugar. [0019,0025,0021,0038]
Jindra and Desai are both directed towards plant based confections. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have used the fruit filling if Jindra as a component of the plant based ice cream of Desai to provide desirable fruit flavor without adding animal components. Therefore, claim 25 is obvious over Jindra in view of Desai.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Jindra USPN 6706306 and Gonzalez “Insects as ingredients for bakery goods. A comparison study of H. illucens, A. domestica and T. molitor flours” Innovative Food Science & Emerging Technologies, Vol. 51, Jan. 2019, Pg. 205-210.
Regarding claim 26, Jindra teaches what has been recited above but is silent regarding insect protein.
Gonzalez teaches that the flour of baked goods could be successfully supplemented with protein rich flour derived from insects. (Abstract)
Jindra and Gonzalez are both directed towards baked goods. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have substituted some of the flour of the baked goods of Jindra with insect flour as disclosed by Gonzalez since this material was known to be suitable for increasing the protein content of baked goods. The modification of Jindra with Gonzalez would have produced a composition that reads on claim 26.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michele L Jacobson whose telephone number is (571)272-8905. The examiner can normally be reached Monday through Friday from 10-6.
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/Michele L Jacobson/Primary Examiner, Art Unit 1793