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 . Claims 9-12, 14-15, 17-23 and 25-30 are examined herein.
Election/Restrictions
Newly submitted claim 31 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: New independent claim 31 presents a distinct species of the claimed methods of producing a composition comprising pulse, which does not require the mixing of raw materials (as in independent claims 9 and 21), and further requires difference between a maximum temperature in step (ii) (i.e. 180 °C) and the temperature in step (iii) (i.e. less than 80 °C) is 15 °C or larger, which is distinct from the temperatures of these process steps as recited in independent claims 9 and 21.
Therefore, since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 31 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 103
(Species A of method of producing)
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 9, 14-15 and 18, are rejected under 35 U.S.C. 103 as being unpatentable over Saltmarsh in view of the combination of Kittleson and Alavi.
Saltmarsh: Easy gluten-free pulse pasta; published May 14, 2017 by Hodmedod’s; publish date verified at: https://web.archive.org/web/20170517055457/https://hodmedods.co.uk/
Kittleson: published as WO 2018/140031 A1 on Aug. 02, 2018.
Alavi: Pasta extrusion: Precooked and gluten free products; New Food; published Apr. 23, 2015 (evidenced by the comment at the bottom of the article).
With regard to the prior art, the term/phrase “pulverized pulse”, encompasses: a powdered (i.e. floured) pulse (e.g. in the form of small particles), per pending para. 0017.
Independent claim 9
Method of producing a solid paste composition for heat cooking containing pulse
Saltmarsh teaches methods of making pasta dough that is kneaded (step 2) and extruded (step 5-6), which imparts a kneaded and extruded composition. Saltmarsh teaches the pasta dough comprising pulse, including yellow pea flour (see Ingredients).
Preparing a paste dough comprising a powdered (i.e. pulverized) pulse and kneading it
As discussed above, Saltmarsh teaches how to make pasta dough comprising pulse, including yellow pea flour (see Ingredients), by mixing the ingredients together and kneading them (step 2), which encompasses the claimed steps of preparing a paste dough composition comprising powdered pulse; and kneading the paste dough.
(i) Kneading the paste dough by extruding
Saltmarsh teaches to knead the dough and to use a pasta machine, which is a type of extruder, however, does not discuss the use of extruding for the step of kneading the paste dough (as disclosed).
Kittleson also teaches methods of making pasta, including the use of legume products (0043-0044), and further shows a step of mixing the ingredients used in an extruder (0008), therefore provides a step of kneading the dough by using an extruding process to make the paste dough, as required of the claim.
Kittleson provides the use of a specific mechanical energy (SME) of at least 50 Wh/kg (i.e. at least 180 kj/kg) (0059) while extruding, which encompasses the use of an SME of 350 kJ/kg or higher, as claimed.
Kittleson provides a temperature of greater than 80 °C (0058), while extruding, which encompasses the claim of a temperature in a range from 100 °C to 200 °C, as claimed.
Kittleson provides that the mechanical energy and/or thermal energy imparted to the pasta dough during extrusion mixing forms a continuous matrices of starch interwoven with protein (0022), wherein the resulting product is shelf stable and has the appearance and firmness consistent with that of traditional wheat pasta (0022).
Therefore, it would have been obvious to one of skill in the art, at the time of filing to modify the method of making extruded pasta dough comprising legumes, as the modified teaching above, to include the use on an extruder, -----------------as required of the claim, because Kittleson shows, that:
1) it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed mechanical and thermal energies when extruding the pasta dough comprising legumes, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use (see MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious); and
2) there are advantages to doing such a thing, including that the mechanical energy and/or thermal energy imparted to the pasta dough during extrusion forms a continuous matrices of starch interwoven with protein, wherein the resulting product is shelf stable and has the appearance and firmness consistent with that of traditional wheat pasta, which shows a recognition in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that beneficial result would have been produced by their combination (see MPEP 2144.II that states: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination).
(ii) Extruding further provides a step of cooling the mixed dough
When looking for light in the pending disclosure, it is noted that the cooling temperature required is lower than 110 °C, and this is controlled by adjusting the outlet temperature of the extruder (see pending para. 0063).
The modified teaching does not discuss controlling the outlet temperature of the extruder to perform the claimed extrusion sub step (ii) for cool the pasta dough.
Alavi also teaches methods of extruding pasta, and further provides that the maximum dough temperature near the die exit has to be maintained in the range of 85-95oC, which encompasses a step of cooling the composition from step (ii) to a temperature that is lower than 110 °C, as required of the claim (as discussed above).
Alavi provides that this step of cooling is very critical in order to keep steam from forming blisters on the product surface (see Optimising extrusion for pasta innovation).
Therefore, it would have been obvious to one of skill in the art, at the time of filing to modify the method of extruding pasta dough, as the modified teaching above, to include a step of controlling the outlet temperature of the extruder to cool the pasta dough, including a temperature that is lower than 110 °C, as required of the claim, because Alavi shows, that:
1) it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed step of cooling when extruding pasta dough, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use (see MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious); and
2) there are advantages to doing such a thing, including that this step of cooling is very critical in order to keep steam from forming blisters on the product surface, which shows a recognition in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that beneficial result would have been produced by their combination (see MPEP 2144.II that states: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination).
Further, since Alavi provides an encompassing temperature in a step of cooling, as disclosed, therefore it would be reasonable to expect (i.e. obvious) that said step will have similar utility, including that the composition does not swell, as claimed.
Wherein step (ii) and step (iii) are carried out under a pressurized condition
As discussed above, both sub steps of extruding are performed with a process pressure.
Amount of pulse in the composition
The modified teaching, in Kittleson, provides that the dough mixture that is extruded into pasta is made with the gluten free flour and water (ab.), wherein the gluten free flour includes pulses/legumes (0042) therefore the modified teaching provides the use of 15% by mass or higher on a dry mass basis, of pulse in the composition.
Nutritional value of the composition
When looking for light in the pending Specification, on the nutritional content of the composition made, it is noted, that other fractions in the composition, including: protein, insoluble dietary fiber, starch (pending paras. 0007 and 0032) are contained in the pulse used to make the composition.
Therefore, since the modified teaching provides a similar composition comprising similar amounts of similar ingredients (pulse), which reflects the breadth of the claimed composition, it would be reasonable to expect that the composition made, would have similar nutritional properties/contents as those claimed, including:
an insoluble dietary fiber content on a dry mass basis of 3 % by mass or higher,
a starch content on a dry mass basis of 10 % by mass or higher, and
a protein content on a dry mass basis of 4 % by mass or higher; absent a showing of criticality, because the teaching of a similar composition imparts a suggestion in or expectation that the composition taught will have the same or a similar utility.
Therefore, it would have been obvious to one of skill in the art, at the time of filing/the invention to modify the method of making dough compositions, comprising pulse, as the modified teaching above, to include that said composition has similar nutritional properties, including:
an insoluble dietary fiber content on a dry mass basis of 3 % by mass or higher,
a starch content on a dry mass basis of 10 % by mass or higher, and
a protein content on a dry mass basis of 4 % by mass or higher; as claimed, because the composition established through the teachings above, provides a sufficiently close relationship between the ingredients and the methods claimed to create an expectation that such a similar compositions would have similar capabilities, properties or functionality because the claims are not physically or structurally distinguishable over the prior art compositions. See MPEP 2144. III, which states that when case law imparts legal precedence, wherein the facts in this prior legal decision are sufficiently similar to those in an application, wherein the court applied the law of obviousness to similar facts. This includes a wide spectrum of illustrations and accompanying reasoning (i.e. obviousness) that exist in case law. In re Eli Lilly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990). Herein, although not cited in the MPEP, more recent caselaw on the topic, “In re Dillon, 919 F.2d 688 (1990)” (https://cite.case.law/f2d/919/688/) provides that when a claimed compositions has been made obvious from combined teachings, it is clear that the discovery that the claimed composition possesses a property not disclosed for the prior art subject matter, and this itself does not defeat a prima facie case.
Herein, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods of mixing and extruding pasta dough with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. The prior art included each element claimed although not necessarily in a single reference, and one of ordinary skill in the art could have combined the elements as claimed by such known methods, and in combination, each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Further, a predictable use of prior art elements according to their established functions to achieve a predictable result is prima facie obvious. See KSR Int'l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
Dependent claims
As for claim 14, when looking for light in the Specification, it is noted that Treatment A and then to ultrasonication, of the pulverized pulse, is to decompose the starch and protein therein, to allow for the measurement of the size of the insoluble dietary fiber in the pulverized pulse (see pending para. 0108).
Therefore, although the decomposed biproduct of the pulse composition is distinct from the product made, or the products used in the method steps herein, absent a showing of criticality, it would be reasonable to expect (i.e. obvious) that when a portion of the pulverized pulse is subjected to Treatment A, comprising: treating a suspension of 6 % by mass of the pulverized pulse in water with 0.4 % by volume of protease and 0.02 % by mass of a-amylase at 20 °C for 3 days; that the insoluble dietary fiber in the pulverized pulse would have a similar particle size distribution represented by a d90 value of 1000 µm or smaller, as claimed because the modified teaching provides similar ingredients within the breadth of the claims.
As for claim 15, although the modified teaching does not discuss the extruder used for steps (ii) and (iii) is a uniaxial extruder or a biaxial extruder, in this case the teaching of the use of an extruder for making pasta encompasses either of them, because in this specific case the various permutations of types of it in the generic are so small (generally uni or bi and possibly tri or quad) that the teaching is as comprehensive and fully as if it had written the name of each permutation. Therefore, it would have been obvious to one of skill in the art, at the time of filing/the invention to modify the method of using the same extruder for steps (ii) and (iii), that they are carried out using a uniaxial extruder or a biaxial extruder, as claimed, because in this specific case the various permutations of types of extruders (generally uni or bi and possibly tri or quad) in the generic are so small (quantity) that the teaching is as comprehensive and fully as if it had written the name of each permutation.
As for claim 18, the modified teaching, in Alvi, provides the maximum dough temperature near the die exit has to be maintained in the range of 85-95oC, which encompasses a step of cooling the composition from step (ii) to a temperature that is 95 °C or lower, as claimed.
In summary, the claims are towards a formulation for making pasta be using ingredients and method steps that use or eliminate common ingredients and method steps, which does not amount to invention in the constantly developing art of preparing pasta because: 1) it would have been obvious for a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle and may take into account "the inferences and creative steps that another person of ordinary skill in the art would employ (see MPEP 2141.03.I.); and 2) there is no specific showing that establishes a coaction or cooperative relationship between the selected ingredients/method steps which produces a new, unexpected and useful function (see In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of this specific instant case, wherein at page 234, the Court stated 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
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Saltmarsh in view of the combination of Kittleson and Alavi, as applied to claims 9, 14-15 and 18 above, further in view of Mamat.
Mamat: Dehydration of Traditional Dried Instant Noodle (Mee Siput) Using Controlled Temperature & Humidity Dryer; Mechanical Engineering, Science and Technology International Conference; IOP Conf. Series: Materials Science and Engineering 203 (2017) 012009.
As for claim 10, the modified teaching does not discuss that after extrusion the pasta is subjected to a moist treatment in an environment where a relative humidity (RH%) of an atmosphere is over 50 RH%.
Mamat also teaches about making pasta, and further provides that after the shaping of the noodle is made, the pasta is subjected to a moist treatment in an environment where a relative humidity (RH%) of an atmosphere is over 50 RH% (see Figure 3.)
Mamat shows that the relative humidity of treatment used to dry pasta, after it is shaped, is result effective based on the drying time, wherein the drying time is shorter, the relative humidity is higher, and visa vera. Therefore it is the examiners position that both process parameters of relative humidity and drying time are known result effective variables.
It would have been obvious to one of skill in the art, at the time of filing to modify the method of treating pasta after it has been shaped into noodles, as the modified teaching above, to include a step wherein the relative humidity is over 50 %, as claimed, because Mamat shows that it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed processing step when making pasta, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use (see MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious); and it would have been obvious to one with skill in the art at the time of the invention to determine the optimal value for relative humidity used in the modified teaching above in view of Mamat, through routine experimentation, to impart the desired drying time associated with pasta being made because the selection of something based on its known suitability for its intended use has been held to support a prima facie case of obviousness. Sinclair & Carrol Co. v Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
As for claim 11, the modified teaching, in Mamat shows, in Figure 3, that the moist treatment in step is carried out under a condition which satisfies Formula 1 below: A x T ; 40 (Formula 1) where A represents the relative humidity (RH%) of the atmosphere, and T represents a treating time of the moist treatment (hr), provided that A > 50RH%, as claimed.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Saltmarsh in view of the combination of Kittleson and Alavi, as applied to claims 9, 14-15 and 18 above, further in view of Wenger.
Wenger: published as EP 0267368 B1, on 1993-04-14.
As for claim 12, the modified teaching, in Kittleson, provides that the extrusion method, steps (ii) and (iii), are carried out under a pressurized condition (0053), however, does not discuss the amount of pressure, as claimed.
Wenger also teaches methods of extruding pasta, at encompassing temperatures of step (ii), and further provides the pressure is in a range of about 1.38 to 8.28 MPa (see the 1st para. of the Summary), which encompasses am extrusion pressure of 0.1 MPa or higher, as claimed.
It would have been obvious to one of skill in the art, at the time of filing to modify the method of extruding pasta dough, as the modified teaching above, to include the amount of pressure used ----------------------, -as claimed, because Wenger shows that it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed processing parameters when extruding pasta products, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Saltmarsh in view of the combination of Kittleson and Alavi, as applied to claims 9, 14-15 and 18 above, further in view of Sicignano.
Sicignano: From raw material to dish: pasta quality step by step; Received: 28 July 2014 Revised: 11 March 2015 Accepted article published: 18 March 2015 Published online in Wiley Online Library.
As for claim 17, the modified teaching does not discuss the kneading (i.e. mixing) time of the pasta paste (i.e. dough)
Sicignano also teaches methods of making pasta and also discussed that the mixing (i.e. kneading) time is variable based on the water temperature, and further shows mixing (i.e. kneading) times of 12 to 25 minutes (see Mixing section of Fig. 1), which encompasses a kneading time in a range from 0.1 to 60 minutes, as claimed.
Further, since the teaching imparts that water temperature is a variable factor of the kneading, it would be reasonable to expect that one in the art would be able to discover an optimum value thereof, including the claimed range of wherein kneading in a range from 0.1 to 60 minutes.
It would have been obvious to one of skill in the art, at the time of filing to modify the method of making pasta by using a step of kneading (i.e. mixing the pasta dough), as the modified teaching above, to include the process time associated with such a step, including from 0.1 to 60 minutes, -----------------------------as claimed, because Sicignano shows that: 1) it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed processing time for kneading (i.e. mixing) pasta dough when making pasta, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use (see MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious); and 2) Sicignano further provides that water temperature used to make the pasta dough is a variable factor of the kneading time, therefore one in the art would be able to discover an optimum value thereof, including the claimed range of wherein kneading in a range from 0.1 to 60 minutes, by conducting their own experiments, because the teaching provides a convincing line of reasoning based on established scientific principles (see MPEP 2144.II that states: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles).
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Saltmarsh in view of the combination of Kittleson and Alavi, as applied to claims 9, 14-15 and 18 above, further in view of Gbededo.
Gbededo: Evaluation of Value Stream Mapping Application in Pasta Manufacturing: A Case Study of Golden Pasta Company, Lagos; American Journal of Engineering and Technology Management 2018; 3(1): 1-22.
As for claims 19-20, the modified teaching does not discuss the raw pasta being crushed and agglomerated, as claimed.
Gbededo also teaches about making pasta and further provides steps of crushing and discharging raw pasta scraps back into the mixing unit (agglomerating) the pasta, for the benefit of eliminating waste (see the Wet Scrap section in Table 6, on pg. 13), when making pasta (see 2nd para. on pg. 10), to lower production cost.
Therefore, it would have been obvious to one of skill in the art, at the time of filing to modify the method of making pasta, as the modified teaching above, to include ------------------------------steps of crushing and agglomerating, as claimed, because Gbededo shows, that:
1) it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed steps when making pasta, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use (see MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious); and
2) there are advantages to doing such a thing, including that the steps of crushing and discharging raw pasta scraps back into the mixing unit (agglomerating) eliminating waste when making pasta, which lowers production cost, and therefore shows a recognition in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that beneficial result would have been produced by their combination (see MPEP 2144.II that states: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination).
Claim Rejections - 35 USC § 103
(Species B of method of producing)
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 21 and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Saltmarsh in view of the combination of Kittleson, Alavi and Wenger.
Wenger: published as EP 0267368 B1, on 1993-04-14.
Independent claim 21
Claim 21 differs from claim 9 in that the temperature of:
step (ii) is in a range of 120 to 180 °C;
step (iii) is further defined as comprising a temperature of lower than 110 °C;
wherein said ranges are encompassed by those discussed in the rejection of claim 9 above. All other limitations are also discussed in the rejection of claim 9 above.
Claim 21 further differs from claim 9, in that the amount od pressure used for the steps of extrusion are claimed.
The modified teaching, in Kittleson provides that the extrusion method, steps (ii) and (iii), are carried out under a pressurized condition (0053), however, does not discuss the amount of pressure, as claimed.
Wenger also teaches methods of extruding pasta, at encompassing temperatures of step (ii), and further provides the pressure is in a range of about 1.38 to 8.28 MPa (see the 1st para. of the Summary), which encompasses am extrusion pressure of 0.1 MPa or higher, as claimed.
It would have been obvious to one of skill in the art, at the time of filing to modify the method of extruding pasta dough, as the modified teaching above, to include the amount of pressure used----------------------, -as claimed, because Wenger shows that it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed processing parameters when extruding pasta products, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious.
Herein, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods of mixing and extruding pasta dough with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. The prior art included each element claimed although not necessarily in a single reference, and one of ordinary skill in the art could have combined the elements as claimed by such known methods, and in combination, each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Further, a predictable use of prior art elements according to their established functions to achieve a predictable result is prima facie obvious. See KSR Int'l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
Dependent claims
As for claim 25, when looking for light in the Specification, it is noted that Treatment A and then to ultrasonication, of the pulverized pulse, is to decompose the starch and protein therein, to allow for the measurement of the size of the insoluble dietary fiber in the pulverized pulse (see pending para. 0108).
Therefore, although the decomposed biproduct of the pulse composition is distinct from the product made, or the products used in the method steps herein, absent a showing of criticality, it would be reasonable to expect (i.e. obvious) that when a portion of the pulverized pulse is subjected to Treatment A, comprising: treating a suspension of 6 % by mass of the pulverized pulse in water with 0.4 % by volume of protease and 0.02 % by mass of a-amylase at 20 °C for 3 days; that the insoluble dietary fiber in the pulverized pulse would have a similar particle size distribution represented by a d90 value of 1000 µm or smaller, as claimed because the modified teaching provides similar ingredients within the breadth of the claims.
As for claim 26, although the modified teaching does not discuss the extruder used for steps (ii) and (iii) is a uniaxial extruder or a biaxial extruder, in this case the teaching of the use of an extruder for making pasta encompasses either of them, because in this specific case the various permutations of types of it in the generic are so small (generally uni or bi and possibly tri or quad) that the teaching is as comprehensive and fully as if it had written the name of each permutation. Therefore, it would have been obvious to one of skill in the art, at the time of filing/the invention to modify the method of using the same extruder for steps (ii) and (iii), that they are carried out using a uniaxial extruder or a biaxial extruder, as claimed, because in this specific case the various permutations of types of extruders (generally uni or bi and possibly tri or quad) in the generic are so small (quantity) that the teaching is as comprehensive and fully as if it had written the name of each permutation.
In summary, the claims are towards a formulation for making pasta be using ingredients and method steps that use or eliminate common ingredients and method steps, which does not amount to invention in the constantly developing art of preparing pasta because: 1) it would have been obvious for a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle and may take into account "the inferences and creative steps that another person of ordinary skill in the art would employ (see MPEP 2141.03.I.); and 2) there is no specific showing that establishes a coaction or cooperative relationship between the selected ingredients/method steps which produces a new, unexpected and useful function (see In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of this specific instant case, wherein at page 234, the Court stated 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
Claims 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Saltmarsh in view of the combination of Kittleson, Alavi and Wenger, as applied to claims 21 and 25-26 above, further in view of Mamat.
Mamat: Dehydration of Traditional Dried Instant Noodle (Mee Siput) Using Controlled Temperature & Humidity Dryer; Mechanical Engineering, Science and Technology International Conference; IOP Conf. Series: Materials Science and Engineering 203 (2017) 012009.
As for claim 22, the modified teaching does not discuss that after extrusion the pasta is subjected to a moist treatment in an environment where a relative humidity (RH%) of an atmosphere is over 50 RH%.
Mamat also teaches about making pasta, and further provides that after the shaping of the noodle is made, the pasta is subjected to a moist treatment in an environment where a relative humidity (RH%) of an atmosphere is over 50 RH% (see Figure 3.)
Mamat shows that the relative humidity of treatment used to dry pasta, after it is shaped, is result effective based on the drying time, wherein the drying time is shorter, the relative humidity is higher, and visa vera. Therefore it is the examiners position that both process parameters of relative humidity and drying time are known result effective variables.
It would have been obvious to one of skill in the art, at the time of filing to modify the method of treating pasta after it has been shaped into noodles, as the modified teaching above, to include a step wherein the relative humidity is over 50 %, as claimed, because Mamat shows that it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed processing step when making pasta, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use (see MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious); and it would have been obvious to one with skill in the art at the time of the invention to determine the optimal value for relative humidity used in the modified teaching above in view of Mamat, through routine experimentation, to impart the desired drying time associated with pasta being made because the selection of something based on its known suitability for its intended use has been held to support a prima facie case of obviousness. Sinclair & Carrol Co. v Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
As for claim 23, the modified teaching, in Mamat shows, in Figure 3, that the moist treatment in step is carried out under a condition which satisfies Formula 1 below: A x T ; 40 (Formula 1) where A represents the relative humidity (RH%) of the atmosphere, and T represents a treating time of the moist treatment (hr), provided that A > 50RH%, as claimed.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Saltmarsh in view of the combination of Kittleson, Alavi and Wenger, as applied to claims 21 and 25-26 above, further in view of Sicignano.
Sicignano: From raw material to dish: pasta quality step by step; Received: 28 July 2014 Revised: 11 March 2015 Accepted article published: 18 March 2015 Published online in Wiley Online Library.
As for claim 27, the modified teaching does not discuss the kneading (i.e. mixing) time of the pasta paste (i.e. dough)
Sicignano also teaches methods of making pasta and also discussed that the mixing (i.e. kneading) time is variable based on the water temperature, and further shows mixing (i.e. kneading) times of 12 to 25 minutes (see Mixing section of Fig. 1), which encompasses a kneading time in a range from 0.1 to 60 minutes, as claimed.
Further, since the teaching imparts that water temperature is a variable factor of the kneading, it would be reasonable to expect that one in the art would be able to discover an optimum value thereof, including the claimed range of wherein kneading in a range from 0.1 to 60 minutes.
It would have been obvious to one of skill in the art, at the time of filing to modify the method of making pasta by using a step of kneading (i.e. mixing the pasta dough), as the modified teaching above, to include the process time associated with such a step, including from 0.1 to 60 minutes, -----------------------------as claimed, because Sicignano shows that: 1) it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed processing time for kneading (i.e. mixing) pasta dough when making pasta, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use (see MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious); and 2) Sicignano further provides that water temperature used to make the pasta dough is a variable factor of the kneading time, therefore one in the art would be able to discover an optimum value thereof, including the claimed range of wherein kneading in a range from 0.1 to 60 minutes, by conducting their own experiments, because the teaching provides a convincing line of reasoning based on established scientific principles (see MPEP 2144.II that states: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles).
Claims 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Saltmarsh in view of the combination of Kittleson, Alavi and Wenger, as applied to claims 9, 14-15, 18, 21, and 25-26 above, further in view of Gbededo.
Gbededo: Evaluation of Value Stream Mapping Application in Pasta Manufacturing: A Case Study of Golden Pasta Company, Lagos; American Journal of Engineering and Technology Management 2018; 3(1): 1-22.
As for claims 28-29, the modified teaching does not discuss the raw pasta being crushed and agglomerated, as claimed.
Gbededo also teaches about making pasta and further provides steps of crushing and discharging raw pasta scraps back into the mixing unit (agglomerating) the pasta, for the benefit of eliminating waste (see the Wet Scrap section in Table 6, on pg. 13), when making pasta (see 2nd para. on pg. 10), to lower production cost.
Therefore, it would have been obvious to one of skill in the art, at the time of filing to modify the method of making pasta, as the modified teaching above, to include ------------------------------steps of crushing and agglomerating, as claimed, because Gbededo shows, that:
1) it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed steps when making pasta, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use (see MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious); and
2) there are advantages to doing such a thing, including that the steps of crushing and discharging raw pasta scraps back into the mixing unit (agglomerating) eliminating waste when making pasta, which lowers production cost, and therefore shows a recognition in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that beneficial result would have been produced by their combination (see MPEP 2144.II that states: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination).
As for claim 30, as discussed above, the modified teaching in Gbededo provides the agglomerating step is carried out in the mixer.
The modified teaching, in Kittleson, provides that the mixing of the pasta dough is by way of extruding (0008) at temperature of greater than 80 °C (0058), therefore the modified teaching encompasses a step of agglomerating at a temperature in a range from 100 °C to 200 °C, as claimed.
Response to Arguments
Status of Claims
It is asserted, that Claims 9-12, 14-15 and 17-30 were pending. Claim 24 is cancelled without prejudice. Claim 31 is added. Thus, claims 9-12, 14-15, 17-23, and 25-31 are currently under consideration. Claims 9, 21 and 31 are independent and the remaining claims depend, directly or indirectly, from claim 9 or 21.
In response, Applicant’s timely response is appreciated.
Acknowledgement of Foreign Priority
It is asserted, that the Examiner has not acknowledged Applicant's claim for foreign priority to Japanese Patent Application No. 2019-025874, filed on February 15, 2019. See Office Action Summary, Section 12. The Office's Patent Center system indicates that a certified copy of the foreign priority document was received on February 10, 2023. Accordingly, Applicant respectfully requests acknowledgement of the claim to foreign priority and the receipt of the certified copy of the foreign priority document.
In response, acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f), wherein certified copies of the priority documents have been received.
Rejections under 35 U.S.C. § 112 (a)
It is asserted, that Claims 9, 21 and all dependent claims are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. To the extent that these rejections may still apply to the amended claims, the rejections are respectfully traversed as follows. Initially, the Examiner asserts that a person of ordinary skill in the art would not understand that Applicant had possession of the claimed method because the method is open to any amount of pulse but the specification shows that only the composition with the pulse content of 15% by mass or higher delivers the insoluble dietary fiber content in the claimed range of 3% by mass or higher. Office Action, p. 3. Amended claims 9 and 21 include a pulse content of 15% by mass or higher, which provides the insoluble dietary fiber content of the composition in the claimed range, as asserted by the Examiner. Thus, the subject matter of amended claims 9 and 21 are described in the specification to reasonably convey that the inventors had possession of the claimed invention.
In addition, the Examiner asserts that the claimed insoluble dietary fiber, starch and protein content ranges of the dough composition are associated with those of the solid composition according to the specification. Id., p. 4. Thus, it is alleged that a skilled artisan would not understand if the dough composition would have the claimed nutrition because the method is open to adding any other ingredients, and the claimed nutrition ranges are disclosed as the nutrition of the final product. Id. Without acquiescing to the Examiner's positions, claims 9 and 21 as amended recite, inter alia, "the composition has: an insoluble dietary fiber content on a dry mass basis of 3 % by mass or higher, a starch content on a dry mass basis of 10 % by mass or higher, and a protein content on a dry mass basis of 4 % by mass or higher" and do not recite the nutrition contents of the paste dough composition. Thus, the issues raised by the Examiner regarding the nutrition contents of the dough compositions do not apply to amended claims 9 and 21.
In addition, the Examiner asserts that the claimed kneading and cooling are disclosed as occurring in the same extruder and therefore, they are sub-steps of extruding. Office Action, pp. 4-5. The Examiner states that a person of ordinary skill in the art would not understand that Applicant has possession of the claimed method other than extruding to knead and cool the dough. Id. Without acquiescing to the Examiner's positions, claims 9 and 21 are amended such that kneading is conducted using an extruder, and the cooling is conducted in the extruder. Thus, claims 9 and 21 as amended limit the kneading and cooling to be conducted specifically in an extruder. Thus, the kneading and cooling steps of amended claims 9 and 21 are described in the specification to reasonably convey that the inventors had possession of the claimed invention.
The Examiner states that the claim amendments as discussed above would resolve the issues raised by the Examiner regarding the rejections under 35 U.S.C. § 112 (a). See the Interview Summary, pp. 3-4. In view of the above, Applicant believes that the issues raised by the Examiner regarding the failure to comply with the written description requirement are addressed. Accordingly, withdrawal of the rejections is respectfully requested.
In response, Applicant’s timely response is appreciated, and said Rejection is not re-issued herein.
35 U.S.C. § 112 (b)
It is asserted, that Claims 9, 21 and all dependent claims are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter. To the extent that these rejections may still apply to the amended claims, the rejections are respectfully traversed as follows. Regarding pending claims 9 and 21, the Examiner asserts it is unclear which of the pulverized pulse, the paste dough, or the solid past composition has the nutrients in the ranges as claimed. Office Action, p. 5. As discussed above, claims 9 and 21 are amended to delete the nutrition contents of the paste dough composition, and further amended to recite, "the composition has: an insoluble dietary fiber content on a dry mass basis of 3 % by mass or higher, a starch content on a dry mass basis of 10 12 % by mass or higher, and a protein co