DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 20, 2026 has been entered.
Status of Claims
Claims 1-4, 6-14, 16-18, and 21-24 are pending and under examination in this application. Any objections or rejections not repeated below have been withdrawn.
Claim Objections
Claim 17 is objected to because of the following informalities:
Claim 17 line 1 recites, “The method according to claim 10.” However, claim 10 is not a method claim but is a product claim to “a dairy analogue” product. The limitation should be edited from “claim 10” to recite “claim 11.” The limitation would then read as follows, “The method according to claim 11.” Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 6-14, 16-18, 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Kirtley et al. US 20200383362 in view of Bergsma US 11109606.
Regarding claims 1, 4, 8-9, 11, 14 and 21-22, Kirtley teaches a method for producing a dairy analogue, as required by claims 1 and 11 (a method for making a liquid potato product, [0004]; used to produce imitation dairy products, [0094]).
Kirtley discloses (a) providing an initial potato feed comprising a plurality of potatoes, as required by claims 1 and 11 [0004-0005]. Kirtley teaches (b) at least partially gelatinizing at least a portion of said initial potato feed to thereby form a gelatinized potato feed, as required by claims 1 and 11 [0005].
Kirtley teaches (c) shearing at least a portion of said gelatinized potato feed at a temperature of less than 67°C, thereby forming a liquid potato product (sheared potato product; [0005], [0059]). This overlaps the claimed range of shearing at a temperature of at least 50°C, as required by claim 1. This is also overlaps the claimed range of shearing at a temperature of at least 25°C, as required by claim 11. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding the recitation “wherein said shearing provides at least 20 kJ/kg of mechanical work as measured over a time period of 15 minutes or less” as stated in claim 1 and the recitation “wherein said shearing provides at least 100 kJ/kg of mechanical work as measured over a time period of 30 minutes or less” as stated in claim 11; the instant specification paragraph [0064] states the shearing can be conducted by an off-line or in-line Urschel Comitrol. Kirtley also teaches the shearing device can also be an Urschel Comitrol. Since the instant specification recommends the Urschel Comitrol, it is seen as being able to provide the at least 20 kJ/kg of mechanical work as measured over a time period of 15 minutes or less, as required by claim 1, and the at least 100 kJ/kg of mechanical work as measured over a time period of 30 minutes or less, as required by claim 11. Therefore, since Kirtley also uses the same shearing device, the Urschel Comitrol device, it is seen as being able to provide the at least 20 kJ/kg of mechanical work as measured over a time period of 15 minutes or less, as required by claim 1, and the at least 100 kJ/kg of mechanical work as measured over a time period of 30 minutes or less, as required by claim 11; and is considered to meet these claim limitations.
Kirtley discloses the shearing occurs in the presence of at least one oil, as required by claims 1 and 11 [0047]; wherein said oil is coconut oil, as required by claims 4 and 14 [0048]. Kirtley does not teach the melting point for the oil. However, given that Kirtley teaches oils as claimed, the oils in the prior art are considered to have a melting point as claimed.
Kirtley discloses the shearing occurs in the presence of (ii) at least one native starch (potato feed, which comprises starch in the potatoes [0044], [0047]), as required by claims 1 and 11. While Kirtley does teach using raw potatoes in their method, which do contain native starch (Abstract; [0026]), Kirtley does not teach the addition of a subsequent native starch and/or modified starch. Kirtley also does not teach the addition of a modified starch, as required by claim 21.
Bergsma teaches a method for producing a dairy analogue (method of making a cheese analogue; Abstract) from a root or tuber starch, including potato starch, and potato protein and a fat component (Abstract; C1 L47-49). Bergsma teaches adding native starch, as required by claims 1 and 11, or modified starch (C2 L4-18), as required by claims 1, 11 and 21. Bergsma discloses adding 10-24 wt. % native starch and/or modified starch (C2 L4-18, C2 L32-35). This is within the claimed range of the liquid potato product comprising at least 2 weight percent of said native starch and/or said modified starch, as required by claims 1 and 11, and at least 5 weight percent native and/or modified starch, as required by claim 22. Bergsma teaches that shearing occurs in the presence of the said starch (waxy potato starch is added to the Thermomix (mixer) and stirring occurred at a speed “3”; Example 1: C6 L60-67 and C7 L11-20). Bergsma discusses how the presence of the starch helps with shredability, stretch and body of the cheese analogue (C2 L35-43).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Kirtley to incorporate the teachings of Bergsma by adding the claimed amounts of native starch and/or modified starch during the shearing process as claimed, since the presence of the starch helps with shredability, stretch and body of the cheese analogue, as recognized by Bergsma (C2 L35-43).
Kirtley discloses the shearing occurs in the presence of (iii) added water (water can be added prior to high shear milling; [0047]), as required by claims 1 and 11.
Kirtley teaches the liquid potato product (sheared potato mixture) has a particle fineness (average particle size) of less than 100 μm [0053]. This is within the range of less than 125 microns, as required by claims 9 and 11.
Regarding the recitation in claims 9 and 11 “as measured with a BYK-Gardner 2512 Metal Grind Gauge (PD-250) in accordance with ISO 1524 (2020)”, it is noted that Kirtley uses a Microtrac Bluewave Particle Size Analyser to measure particle size [0053]. Nevertheless, the BYK-Gardner Metal Grind Gauge recited in the claim and the Microtrac Bluewave Particle Size Analyser used by Kirtley are both viewed as accurately and precisely measuring particle size and the particle size of Kirtley is within the claimed particle size range. Therefore, Kirtley is considered to meet this claim limitation even though they use a different particle size analyzer because regardless of the equipment used to measure the particle size, obtaining a particle size within the claimed range is the physical attribute the method is trying to achieve on the liquid potato product. Moreover, applicant has not asserted that the measurement from a BYK-Gardner Metal Grind Gauge is different from the measurement provided by any other measurement device, and in the absence of such an allegation, the disclosure of Kirtley is considered to meet the claimed limitation.
Kirtley teaches (e) wherein said dairy analogue consists of the liquid potato product (food product, including an imitation dairy product, comprising liquid potato product (Liquid P); [0094], claim 20), as required by claims 1 and 11. The Office notes the language “consists of” in amended claims 1 and 11 fails to further limit the claimed subject matter because the liquid potato product recited in these claims does not exclude ingredients beyond those recited in parts (a)-(c).
Kirtley does not give details of the process to form the dairy analogue, including (d) introducing at least a portion of the liquid potato product in a shaped mold; and (e) solidifying liquid potato product in said shaped mold to thereby form said dairy analogue, as required by claims 1 and 11.
Bergsma teaches (d) introducing at least a portion of said liquid potato product (viscous mixture) in a shaped mold (C6 L9-12); and (e) solidifying said liquid potato product in said shaped mold to thereby form said dairy analogue, as required by claims 1 and 11 (solidification of the mixture into a solid block; C5 L63-64). Bergsma discloses that allowing the liquid potato product (viscous mixture) to be poured into a mold and then solidified is advantageous since the dairy analogue (cheese analogue) can be formed into any particular shape, such as a square or rectangular block or cylindrical object (C6 L9-16).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Kirtley in view of Bergsma to further incorporate the teachings of Bergsma by introducing the liquid potato product into a shaped mold and solidifying in the shaped mold to form the dairy analogue because solidifying in a shaped mold is advantageous for forming any particular shape that is wanted, such as a square or rectangular block or cylindrical object, as recognized by Bergsma (C6 L9-16).
Regarding the recitation of claims 8 and 11, “wherein said dairy analogue exhibits a maximum load of at least 100 grams as measured at 15 days after said solidifying as measured with a Brookfield CTX Texture Analyzer fitted with probe TA2/1000”; it is noted the maximum load exhibited by the dairy analogue after 15 days of solidifying is a property of the composition made by the method disclosed above. Since the method of Kirtley in view of Bergsma is substantially identical to the claimed method, and produces a substantially identical dairy analogue composition, it is considered to possess the property of exhibiting a maximum load of at least 100 grams when measured at 15 days after solidifying with a Brookfield CTX Texture Analyzer, absent convincing arguments or evidence to the contrary, as required by claims 8 and 11. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (MPEP §2112.01 (I)).
Regarding claims 2 and 12, modified Kirtley discloses the method according to claims 1 and 11, respectively. Kirtley teaches partially gelatinizing comprises blanching, as required by claims 2 and 12 [0021]. Kirtley discloses shearing occurs over a time period of less than 500 seconds, or 8.3 minutes [0060], which overlaps the time period in claims 2 and 12. Kirtley also discloses shearing at a temperature of less than 67°C [0059], which overlaps the claimed temperature of at least 55°C, required by claims 2 and 12. See MPEP 2144.05(I).
Regarding claims 3 and 13, modified Kirtley discloses the method according to claims 1 and 11, respectively. Kirtley teaches shearing comprises a plurality of shearing stages, wherein each of said shearing stages comprises different shearing times and conditions, as required by claims 3 and 13; specifically, Kirtley teaches various embodiments that outline temperatures of at least 10°C and additionally or alternatively the shearing step can occur at a temperature of less than 67°C [0059]. Kirtley also states the shearing can occur over a time period of at least 0.1 second and/or less than 500 seconds [0060] and the shearing step can occur at a pressure of at least 0 psig and/or less than 4,000 psig [0061]. Therefore, it would have been obvious to have carried out a plurality of shearing stages comprising different times and conditions, as required by claims 3 and 13, given Kirtley teaches that the times, temperatures and pressures may vary. Thus, Kirtley is considered to meet the claim limitation.
Regarding claims 6 and 16, modified Kirtley discloses the method according to claims 1 and 11, respectively. Kirtley does not teach maintaining the liquid potato product in the shaped mold at 1-20°C, as required by claims 6 and 16, for at least five days, as required by claim 6, and for at least one day, as required by claim 16.
Bergsma teaches maintaining the liquid potato product in the shaped mold (ripening the solid block by leaving the cooled block at low temperatures; C5 L65-67) at a temperature below 25°C, preferably below 15°C (C5 L65-67). This overlaps the claimed temperature range of 1-20°C, as required by claims 6 and 16. See MPEP 2144.05(I). Bergsma discloses the solidifying (ripening) also comprises maintaining the liquid potato product for at least 1 day and preferably at least 3 days (C5 L65-67 and C6 L1-5). This is overlaps the claimed range of at least five days for claim 6, and is within the claimed range of at least one day for claim 16. See MPEP 2144.05(I). Bergsma recognizes that the solidifying (ripening) is important, because it allows the liquid potato product (solid block) to further solidify and equilibrate the separate components, resulting in sufficient hardness to allow the finished dairy analogue (cheese analogue) to be shredded, so that the shreds can be more readily obtained by, for example, grating (C6 L3-8).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Kirtley to incorporate the teachings of Bergsma by having the solidifying process comprise maintaining the liquid potato product in the shaped mold at a specific temperature and time because it allows the liquid potato product (solid block) to further solidify and equilibrate the separate components, resulting in sufficient hardness to allow the finished dairy analogue (cheese analogue) to be shredded, so that the shreds can be more readily obtained by, for example, grating, as recognized by Bergsma (C6 L3-8).
Regarding claims 7 and 17, modified Kirtley discloses the method according to claims 1 and 11, respectively. Kirtley teaches prior to shearing, preheating (pretreated by blanching; [0021], [0046]) the initial potato feed to a temperature of at least 65°C [0040]. This is the same temperature of at least 65°C required by claims 7 and 17.
Regarding claims 10 and 18, Kirtley in view of Bergsma discloses the method of claims 1 and 11, producing a dairy analogue according to the respective methods. See the rejection for claims 1 and 11 above for specific citations from Kirtley and Bergsma on producing a dairy analogue by the method steps of claims 1 and 11.
Regarding claim 23, modified Kirtley discloses the method according to claim 1. Kirtley teaches prior to solidifying, subjecting said liquid potato product to a sterilization and/or pasteurization process (sheared potato feed may be introduced into a cooking device where it can be subjected to temperatures to at least 75 °C and/or less than 300 °C [0064-0065]). It is noted that subjecting a product to heat at temperatures ranging from at least 72 °C or above is being considered a pasteurization process and ranging from 132-134 °C or above is being considered a sterilization process.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Kirtley et al. US 20200383362 in view of Bergsma US 11109606 as applied to claim 1 above, and further in view of Min et al. US 20180289028.
Regarding claim 24, Kirtley in view of Bergsma teaches the method of claim 1, as discussed above. Kirtley is silent as to subjecting the liquid potato product to a treatment to remove entrapped air.
Min teaches a method of producing a dairy analogue (non-dairy cheese; [0003]). Min teaches prior to solidifying, subjecting said liquid potato product to a treatment to remove entrapped air (before the non-dairy cheese product is in its final solid block form, air is removed from the oil/non-dairy milk mixture by using a de-aerator, [0031-0032], [0042-0043]). Min discloses that by removing air from the mixture, a more dense and/or uniform product may be produced, as well as a product that is more stable during transportation and storage [0042].
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Kirtley in view of Bergsma to incorporate the teachings of Min by subjecting the liquid potato product to a treatment to remove entrapped air because removing air from the mixture produces a more dense and/or uniform product, as well as a product that is more stable during transportation and storage, as recognized by Min [0042].
Response to Arguments
Applicant's arguments filed 01/20/2026 have been fully considered but they are not persuasive.
Applicant argues, on pgs. 6-7 of their remarks, that the prior art of record fails to teach or suggest the method now recited in independent claims 1 and 11. However, the Office disagrees for the following reasons. As shown by the rejection above, the method recited in claims 1 and 11 is rendered obvious by Kirtley in view of Bergsma.
Conclusion
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/S.R.G./Examiner, Art Unit 1791
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759
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