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 of the Response and Amendment after Non-Final Office Action filed 4 December 2025 is acknowledged.
Applicant has overcome the following by virtue of amendment of the specification and claims: (1) the objections to the specification and claims have been withdrawn; (2) the 112(b) rejection of claim 15 has been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-6 and 8
Withdrawn claims: None
Previously canceled claims: 7
Newly canceled claims: None
Amended claims: 1
New claims: 8
Claims currently under consideration: 1-6 and 8
Currently rejected claims: 1-6 and 8
Allowed claims: None
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.
Claims 1-6 and 8 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites the limitation, “wherein steam flaking the transgenic corn kernels comprises increasing the mill throughput rate by at least 20% as compared with control corn kernels that do not comprise a recombinant thermotolerant microbial α-amylase”. The claim is indefinite because the state of the control corn kernels is undefined. It is unclear whether the control corn kernels have undergone any treatment, including steam-flaking. It is also considered that there is a non-negligible amount of variability between corn kernels of different strains, any of which not comprising a recombinant thermotolerant microbial α-amylase. Therefore, the same process of steam flaking transgenic corn kernels to produce a steam flaked corn product could fall in or out of scope of the claim, depending on the control corn kernels selected. That is, steam flaking the transgenic corn kernels to produce an identical product, but compared to different control corn kernels can result in a different relative percentage increase of the mill throughput rate depending on which control corn kernels are selected as a reference. For purposes of examination, it is considered that the control corn kernels are of the same genetic background as the transgenic corn kernels, except lacking the recombinant thermotolerant microbial α-amylase, and that the control corn kernels are steam-flaked control corn kernels. Therefore, the limitation is construed as, “wherein steam flaking the transgenic corn kernels comprises increasing the mill throughput rate by at least 20% as compared with the mill throughput rate used to steam-flake control corn kernels of the same genetic background that do not comprise a recombinant thermotolerant microbial α-amylase”.
Claim 2 recites the limitation, “wherein the throughput rate is increased by at least 35% as compared with control corn kernels that do not comprise a recombinant thermotolerant α-amylase”. The limitation renders the claim indefinite because the dependent claim includes all elements of the claims from which it depends, and as such, claim 2 effectively reads, “wherein steam flaking the transgenic corn kernels comprises increasing the mill throughput rate by at least 20% as compared with control corn kernels that do not comprise a recombinant thermotolerant microbial α-amylase, wherein the throughput rate is increased by at least 35% as compared with control corn kernels that do not comprise a recombinant thermotolerant α-amylase”. It is unclear how one could increase the mill throughput rate by 20% as compared to control corn kernels and achieve a throughput rate that is increased by at least 35% as compared to control corn kernels. Additionally, the same issues regarding the control corn kernels described regarding claim 1 apply to claim 2. For purposes of examination, the limitation is construed as, “wherein steam flaking the transgenic corn kernels comprises increasing the mill throughput rate by at least 35% as compared with the mill throughput rate used to steam-flake the control corn kernels”.
Claim 3 recites the limitation, “wherein the time to steam flake the transgenic corn kernels is reduced by at least 20% as compared with the control corn kernels”. The claim is indefinite because it is unclear what property of the control corn kernels is being compared to the time to steam flake the transgenic corn kernels. For purposes of examination, the limitation is construed as, “wherein the time to steam flake the transgenic corn kernels is reduced by at least 20% as compared with the time required to steam flake the control corn kernels”.
Claim 8 recites the limitation “wherein in step (b) the transgenic corn kernels are steam-flaked at the same temperature as the control corn kernels”. There is insufficient antecedent basis for this limitation in the claim. Claim 8 implies that the control corn kernels are steam-flaked. Claim 1, from which claim 8 depends, does not recite steam-flaked control corn kernels. For purposes of examination, it is considered that the control corn kernels have also been steam-flaked.
Claims 2-6 and 8 are also rejected due to their dependency from claim 1.
Applicant is advised to ensure that any future amendments satisfy the written description requirement and do not introduce any new matter as required by 35 U.S.C. § 112(a).
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.
Claims 1-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Brown (US 6,428,831 B1) in view of Witherspoon et al. (WO 2016/164732 A2, cited on IDS filed on 8 January 2023), and as evidenced by Johnson et al. (U.S. Patent No. 8,093,453) and ISAAA Inc. (ISAAA Inc, "Event Name: 3272", 2015, obtained 9/17/2024 from http://web.archive.org/web/20150425213225/https://www.isaaa.org/gmapprovaldatabase/event/default.asp?EventID=111&Event=%7BrecEvents.EventName%7D).
Regarding claims 1 and 6, Brown teaches a method of producing an animal feed, the method comprising steam-flaking corn kernels to produce a steam-flaked corn product (col. 1, lines 29-35). The method of Brown reduces variability in the amount of gelatinization in steam-flaked grain, and comprises the steps of providing grain, passing the grain through a steam chest at a predetermined temperature and pressure for a predetermined amount of time, flaking the grain by passing it through a predetermined gap between two rotating corrugated rollers, sampling the flakes to determine the density, and adjusting the temperature, pressure, retention time, and roller gap to achieve a predetermined flake density and a predetermined amount of gelatinization (col. 3, lines 40-56). Brown also teaches that the main purpose for steam-flaking grains is to increase starch digestibility, thereby maximizing net energy intake by cattle, and subsequent performance, such as weight gain or milk production (col. 1, lines 40-43, col. 2, lines 39-45), that is, to increase feed efficiency. During steam-flaking, the starch in grain becomes gelatinized, which increases its susceptibility to enzymatic and bacterial degradation in ruminant animals (col. 2, lines 48-51). Highly processed grains contain a high percentage of gelatinized starches that is rapidly degraded in the rumen (col. 2, lines 56-57). To permanently gelatinize the starch granule, cooking temperature, moisture, and mechanical force must work in combination to fracture it. If the granule is not fractured, upon cooling it will lose water and retrograde to a highly uniform structure. Retrograded starch is lower in digestible energy compared with intact starch because it is extremely resistant to enzymatic and bacterial degradation (col. 3, lines 10-17). Finally, Brown teaches that even minute increases in feed efficiency will result in substantial dollar savings; improving the efficiency of grain utilization by an average of 6% by properly steam-flaking corn can result in a dollar savings of $750,000 to $1.5 million on 30,000 head of feedlot cattle (col. 1, lines 17-24).
Brown does not teach providing transgenic corn kernels comprising a recombinant thermotolerant microbial alpha-amylase. Brown does not discuss that steam flaking the transgenic corn kernels comprises increasing the mill throughput rate by at least 20% as compared with the mill throughput rate used to steam-flake control corn kernels of the same genetic background that do not comprise a recombinant thermotolerant microbial α-amylase, thereby decreasing steam-chest retention time (re: claim 1), or that the transgenic corn kernels comprise corn event 3272 (re: claim 6).
However, Witherspoon discloses the use of transgenic corn kernels comprising a recombinant microbial alpha-amylase to increase daily weight gain or efficiency of feed utilization (p. 4, ¶ 3 and ¶ 5, lines 7-8). The corn kernels may be steam-flaked (p. 6, ¶ 1). The transgenic corn kernels may comprise corn event 3272 (p. 7, ¶ 1). It is noted that while the cited paragraph recites “corn event 3273”, this is believed to be a typographical error as the referenced U.S. Patent No. 8,093,453 (Johnson) (also cited by Applicant in the instant specification at p. 6, ¶ 3) is directed toward corn event 3272, which, as evidenced by Johnson (col. 1, line 65 – col. 2, line 2) and ISAAA Inc. (p. 1, “Summary of Basic Genetic Modification”), comprises a thermostable alpha-amylase. Furthermore, ISAAA has no record of a corn event 3273. Therefore, Witherspoon teaches the use of transgenic corn kernels comprising a recombinant thermotolerant microbial alpha-amylase to increase feed efficiency.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the transgenic corn kernels comprising a thermotolerant microbial alpha-amylase of Witherspoon (i.e., corn event 3272) with the steam-flaking method of Brown to increase feed efficiency, and thereby further save time and energy costs in producing animal feed. One of ordinary skill in the art would have been motivated to modify the teachings of Brown to incorporate the transgenic corn kernels of Witherspoon because Brown teaches that increasing digestive efficiency of steam-flaked grain results from the fact that moisturization, heat, and flaking gelatinizes some of the starch granules of the grain so as to render them more digestible by cattle (col. 1, lines 35-39), and Witherspoon teaches a feed composition comprising a thermostable microbial alpha-amylase that increases the efficiency of feed utilization (p. 4, ¶ 3 and ¶ 5, lines 7-8, p. 7, ¶ 1) and that the corn kernels may be steam-flaked (p. 6, ¶ 1). Increasing the amount of starch gelatinization of the transgenic corn kernels by steam-flaking would provide more readily accessible starch substrate for the alpha-amylase compared to a non-steam flaked corn. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Witherspoon teaches that a corn hybrid comprising an alpha-amylase enzyme (SYN) promotes feed utilization in cattle when compared to control corn (CON), specifically in final body weight (BW), hot carcass weight (HCW), marbling score, and fat depth (p. 36, Table 5, CON vs. SYN), and Brown teaches that the main purpose for steam-flaking grains is to increase starch digestibility, thereby maximizing net energy intake by cattle, and subsequent performance, such as weight gain or milk production (col. 1, lines 40-43, col. 2, lines 39-45). Steam-flaking the transgenic corn of Witherspoon would serve to further improve the digestibility, and hence efficiency. One of ordinary skill in the art would have a reasonable expectation of success in saving time and energy costs because Brown teaches that even minute increases in feed efficiency will result in substantial dollar savings; improving the efficiency of grain utilization by an average of 6% by properly steam-flaking corn can result in a dollar savings of $750,000 to $1.5 million on 30,000 head of feedlot cattle (col. 1, lines 17-24). Properly flaking a corn comprising a thermotolerant microbial alpha-amylase would further increase the efficiency of utilization, and thus the cost savings.
Regarding the limitation, “wherein steam flaking the transgenic corn kernels comprises increasing the mill throughput rate by at least 20% as compared with the mill throughput rate used to steam-flake control corn kernels of the same genetic background that do not comprise a recombinant thermotolerant microbial α-amylase, thereby decreasing steam-chest retention time”, MPEP § 2144.05(II) states, “‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”.
The method of Brown as modified to steam flake the transgenic corn kernels of Witherspoon teaches the general conditions of the claim, and provides parameters to adjust to obtain a desired starch gelatinization amount. Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to adjust the parameters disclosed by Brown to increase the mill throughput rate by at least 20%, as claimed, by routine experimentation in light of the following:
The method of Brown implements regular monitoring and adjustment of parameters such as retention time and roller gap (col. 3, lines 40-56). These parameters are linked to the mill throughput rate – a higher throughput rate results in a decreased retention time, and a larger roller gap results in an increased throughput rate. Brown teaches that the density to which the grain is flaked strongly influences its final gelatinized starch content (col. 4, lines 37-47). The aforementioned parameters are used to control the flake density, and thus, the degree of gelatinization (col. 3, lines 40-56). Figure 1 of Brown shows that grain flaked to a lower density will have a higher percent gelatinization. As evidenced by the instant specification at p. 42, ¶ 2, the inventors “believe high-amylase expression in EFC is likely the reason behind a more productive flaking process, where the starch gelatinizes more rapidly and is able to be flaked with much greater throughput, and decreased processing level (greater bulk density)”. EFC is Enogen Feed Corn, which is corn event 3272 (see ISAAA), the same corn disclosed by Witherspoon (p. 7, ¶ 1). The method of Brown is toward modulating steam flaking process parameters to obtain a consistent amount of gelatinization. Therefore, providing the corn kernels of Witherspoon (i.e., corn event 3272) would require the operator to increase the flake density, and thus, mill throughput, to obtain the same amount of gelatinization of the modified corn kernels as compared with the unmodified control corn kernels. As such, one of ordinary skill in the art would have arrived at the claimed process step of increasing the mill throughput rate, thereby decreasing steam-chest retention time with a reasonable expectation of success by no more than routine experimentation within adjusting the parameters disclosed by Brown when steam flaking the kernels of corn event 3272 of Witherspoon. Indeed, the instant specification on p. 36, ¶ 5 provides:
Grain treatments were designed to target similar daily starch availability [i.e., similar gelatinization]; based on preliminary work, a decision was made to flake EFC to a greater bulk density, and to flake with greater mill throughput to achieve this. Mill-run corn was flaked at approximately 6 tonne/h; EFC was flaked at approximately 9 tonne/h (50% increased mill throughput), decreasing steam-chest retention time.
Therefore, in order to obtain the same amount of starch availability/gelatinization between the control corn and EFC (i.e., corn event 3272), the inventors had to increase the mill throughput rate by 50%. It is noted that this is the same principle disclosed by Brown.
It logically follows that one following the teachings of Brown would have increased the mill throughput rate by 50% when steam flaking the corn of Witherspoon (i.e., corn event 3272) during routine experimentation within the parameters disclosed by Brown. The increase in mill throughput rate of 50% lies inside the claimed range of at least 20%.
For these reasons, claim 1 is rendered obvious.
Since Witherspoon teaches that the transgenic corn kernels may comprise corn event 3272 (p. 7, ¶ 1), claim 6 is also rendered obvious for the same reasons.
Regarding claim 2, Brown and Witherspoon teach the method of claim 1.
Brown and Witherspoon do not explicitly discuss that steam flaking the transgenic corn kernels comprises increasing the mill throughput rate by at least 35% as compared with the mill throughput rate used to steam-flake the control corn kernels.
However, as established in claim 1 regarding increasing the mill throughput rate by at least 20%, Brown teaches monitoring and adjusting the process parameters to obtain a target amount of gelatinization, and the instant specification provides evidence that in order to obtain the same amount of starch availability/gelatinization between the control corn and EFC/corn event 3272 the inventors had to increase the mill throughput rate by 50% (p. 36, ¶ 5). It logically follows that one following the teachings of Brown would have increased the mill throughput rate by 50% when steam flaking the corn of Witherspoon (i.e., corn event 3272) during routine experimentation within the parameters disclosed by Brown. The increase in mill throughput rate of 50% lies inside the claimed range of at least 35%.
Therefore, claim 2 is also rendered obvious for the same reasons and with the same expectation of success as described regarding claim 1.
Regarding claim 3, Brown and Witherspoon teach the method of claim 1.
Brown and Witherspoon do not explicitly discuss that the time to steam flake the transgenic corn kernels is reduced by at least 20% as compared with the time required to steam flake the control corn kernels.
However, as established in claim 1 regarding increasing the mill throughput rate by at least 20%, Brown teaches monitoring and adjusting the process parameters to obtain a target amount of gelatinization, and the instant specification provides evidence that in order to obtain the same amount of starch availability/gelatinization between the control corn and EFC/corn event 3272 the inventors had to increase the mill throughput rate by 50% (p. 36, ¶ 5). It logically follows that one following the teachings of Brown would have increased the mill throughput rate by 50% when steam flaking the corn of Witherspoon (i.e., corn event 3272) during routine experimentation within the parameters disclosed by Brown. Because rate is a function of time, an increase in rate requires a concomitant decrease in time to process the same amount of product. Where it would have been obvious to increase the mill throughput rate by 50% when steam flaking the corn of Witherspoon (i.e., corn event 3272) during routine experimentation within the parameters disclosed by Brown as described regarding claim 1, it also would have been obvious that the time to steam flake the transgenic corn kernels is reduced by at least 20% as compared with the time required to steam flake the control corn kernels because such an increase in mill throughput rate requires a decrease in time to steam flake the corn of at least 20% as claimed.
Therefore, where claim 1 is rendered obvious, so too is claim 3.
Regarding claim 4, Brown and Witherspoon teach the method of claim 1.
Brown does not discuss that the digestibility of starch in the steam-flaked corn product is increased as compared with the digestibility of starch in a control steam-flaked corn product produced from the control corn kernels.
However, Witherspoon discloses the use of transgenic corn kernels comprising a recombinant microbial alpha-amylase to increase daily weight gain or efficiency of feed utilization (p. 4, ¶ 3 and ¶ 5, lines 7-8). The corn kernels may be steam-flaked (p. 6, ¶ 1). The transgenic corn kernels may comprise corn event 3272 (p. 7, ¶ 1). It is noted that while the cited paragraph recites “corn event 3273”, this is believed to be a typographical error as the referenced U.S. Patent No. 8,093,453 (Johnson) (also cited by Applicant in the instant specification at p. 6, ¶ 3) is directed toward corn event 3272, which, as evidenced by Johnson (col. 1, line 65 – col. 2, line 2) and ISAAA Inc. (p. 1, “Summary of Basic Genetic Modification”), comprises a thermostable alpha-amylase. Furthermore, ISAAA has no record of a corn event 3273. Therefore, Witherspoon teaches the use of transgenic corn kernels comprising a recombinant thermotolerant microbial alpha-amylase to increase feed efficiency.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the transgenic corn kernels comprising a thermotolerant microbial alpha-amylase of Witherspoon (i.e., corn event 3272) with the steam-flaking method of Brown to increase feed efficiency, and thereby further save time and energy costs in producing animal feed. One of ordinary skill in the art would have been motivated to modify the teachings of Brown to incorporate the transgenic corn kernels of Witherspoon because Brown teaches that increasing digestive efficiency of steam-flaked grain results from the fact that moisturization, heat, and flaking gelatinizes some of the starch granules of the grain so as to render them more digestible by cattle (col. 1, lines 35-39), and Witherspoon teaches a feed composition comprising a thermostable microbial alpha-amylase that increases the efficiency of feed utilization (p. 4, ¶ 3 and ¶ 5, lines 7-8, p. 7, ¶ 1). Increasing the amount of starch gelatinization of the transgenic corn kernels by steam-flaking would provide more readily accessible starch substrate for the alpha-amylase compared to a non-steam flaked corn. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Witherspoon teaches that a corn hybrid comprising an alpha-amylase enzyme (SYN) promotes feed utilization in cattle when compared to control corn (CON), specifically in final body weight (BW), hot carcass weight (HCW), marbling score, and fat depth (p. 36, Table 5, CON vs. SYN), and Brown teaches that the main purpose for steam-flaking grains is to increase starch digestibility, thereby maximizing net energy intake by cattle, and subsequent performance, such as weight gain or milk production (col. 1, lines 40-43, col. 2, lines 39-45). Steam-flaking the transgenic corn of Witherspoon would serve to further improve the digestibility, and hence efficiency. One of ordinary skill in the art would have a reasonable expectation of success in saving time and energy costs because Brown teaches that even minute increases in feed efficiency will result in substantial dollar savings; improving the efficiency of grain utilization by an average of 6% by properly steam-flaking corn can result in a dollar savings of $750,000 to $1.5 million on 30,000 head of feedlot cattle (col. 1, lines 17-24). Properly flaking a corn comprising a thermotolerant microbial alpha-amylase would further increase the efficiency of utilization, and thus the cost savings.
Claim 4 is therefore rendered obvious.
Regarding claim 5, Brown and Witherspoon teach the method of claim 1.
Brown and Witherspoon do not explicitly discuss that the steam-flaked corn product has a decrease in geometric mean particle size as compared with a control steam-flaked corn product produced from the control corn kernels.
However, the modified method of Brown to steam flake the transgenic corn kernels of Witherspoon (i.e., corn event 3272/EFC) would require increasing the flake density of the transgenic corn kernels as compared to control corn kernels as described regarding claim 1 above. As evidenced by the instant specification, on p. 40, ¶ 3, flaking EFC to a greater bulk density results in a smaller mean particle size. As such, the limitation, “wherein the steam flaked corn product has a decrease in geometric mean particle size as compared with a control steam flaked corn product produced from the control corn kernels” necessarily flows from the combination of the prior art elements.
Therefore, claim 5 is also rendered obvious.
Regarding claim 8, Brown and Witherspoon teach the method of claim 1.
Brown and Witherspoon do not explicitly discuss that in step (b) the transgenic corn kernels are steam-flaked at the same temperature as the control corn kernels.
However, Brown teaches that the factors/parameters of moisture content, temperature, time, and flake density all interact, and it is imperative that they be measured and controlled in an attempt to minimize variation so the feed value of processed grains may be optimized (col. 4, lines 43-47).
MPEP § 2144.05(II) states, “‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”. Additionally, MPEP § 2141(II)(C) states, “‘A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.’ KSR, 550 U.S. at 421, 82 USPQ2d at 1397. ‘[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.’ Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account ‘the inferences and creative steps that a person of ordinary skill in the art would employ.’ Id. at 418, 82 USPQ2d at 1396.”
The method of Brown as modified to steam flake the transgenic corn kernels of Witherspoon teaches the general conditions of the claim, and provides parameters to adjust to obtain a desired starch gelatinization amount (col. 3, lines 40-56). It is noted that Brown teaches:
After the flake density is determined by the above-described method, the variables of steam temperature, retention time, and the gap are adjusted on the basis of said density of said sampled flakes, so that said flakes have a predetermined density and a predetermined amount of gelatinization as indicated above. (col. 6, lines 57-62)
However, it is considered to be within the level of one of ordinary skill in the art to have recognized that holding a parameter, such as temperature, constant could be compensated for by adjusting the other, interrelated parameters disclosed by Brown during the routine experimentation as described regarding claim 1. Therefore, one of ordinary skill in the art would have arrived at the claimed invention by no more than routine experimentation, and would have had a reasonable expectation of success in doing so because Brown teaches that the factors/parameters of moisture content, temperature, time, and flake density all interact, and it is imperative that they be measured and controlled in an attempt to minimize variation so the feed value of processed grains may be optimized.
Claim 8 is therefore rendered obvious.
Response to Arguments
Claim Rejections – 35 U.S.C. § 103: Applicant’s arguments filed on 4 December 2025 have been fully considered, but they are not persuasive.
Applicant first argued that the claimed methods would not “necessarily flow” from the combination of Brown and Witherspoon, nor would the combination “necessarily lead” to the person of ordinary skill in the art to the presently claimed invention because Brown requires that multiple parameters (3 or 4) are all modified so as to achieve the targeted steam-flaked product in terms of flake density and amount of gelatinization (p. 5, ¶ 3 – p. 6, ¶ 2). Applicant argued that the outstanding rejection failed to satisfy the legal requirements for a showing of inherency under 35 U.S.C. § 103 and therefore also failed to establish a prima facie case of obviousness (p. 7, ¶ 3).
Applicant’s argument has been considered, but is moot because the present rejection does not rely inherency under 35 U.S.C. § 103, and instead uses the same teachings of the cited references to demonstrate that Applicant is effectively applying a known method (i.e., that of Brown) to a known material (i.e., that of Witherspoon). That is, Brown teaches how to adjust parameters of steam flaking corn relating to obtaining a desired amount of gelatinization, and Witherspoon teaches the claimed transgenic corn kernels comprising a recombinant microbial alpha-amylase. The rejection states that the claimed invention would have required no more than routine experimentation within the parameters disclosed by Brown when steam flaking the corn of Witherspoon. The level of experimentation is not undue because Brown teaches the level of ordinary skill in the art. This is further delineated in the rejection of claim 1 hereinabove.
Regarding new claim 8, Applicant asserted that Brown requires modification of the temperature (among other parameters) to achieve the targeted product (e.g., gelatinization level), and Brown actually teaches away from the method of claim 8 (p. 6, ¶ 3).
Applicant’s assertion has been considered, but it is not persuasive. Although Brown teaches, “the variables of steam temperature, retention time, and the gap are adjusted” (col. 6, lines 57-62), MPEP § 2141(II)(C) states, “‘A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.’ KSR, 550 U.S. at 421, 82 USPQ2d at 1397. ‘[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.’ Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account ‘the inferences and creative steps that a person of ordinary skill in the art would employ.’ Id. at 418, 82 USPQ2d at 1396.”.
It is considered to be within the level of one of ordinary skill in the art to have recognized that holding a parameter, such as temperature, constant could be compensated for by adjusting the other, interrelated parameters disclosed by Brown during the routine experimentation as described regarding claim 1. Therefore, one of ordinary skill in the art would have arrived at the claimed invention by no more than routine experimentation, and would have had a reasonable expectation of success in doing so because Brown teaches that the factors/parameters of moisture content, temperature, time, and flake density all interact, and it is imperative that they be measured and controlled in an attempt to minimize variation so the feed value of processed grains may be optimized.
Therefore, Applicant’s arguments are not persuasive, and the amended claims 1-6 and new claim 8 are rejected on the grounds presented hereinabove.
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.
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/JAMES P. SHELLHAMMER/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793