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 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 Any objections or rejections not repeated below have been withdrawn.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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3 and 13 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 3 and 13 recite, “wherein said shearing comprises a plurality of shearing stages.” However, claims 1 and 11 recite, “wherein said shearing comprises a first shearing stage and a second shearing stage.” It is unclear if the “plurality of shearing stages” in claims 3 and 13 are considered the first and second shearing stages in claims 1 and 11, or if these are additional shearing stages. For the purpose of examination, as long as more than one shearing stage is completed, regardless if it is considered the first or second shearing stage of claims 1 and 11, claims 3 and 13 will be considered met.
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)).
Kirtley teaches wherein said shearing comprises a first shearing stage (a potato mixture comprising potato and water may be processed in a high shear milling device, once the potato mixture has been milled it can then be mixed with other ingredients, [0023], [0026]) and a second shearing stage (the potato mixture comprising potato, water and optional oil/other ingredients may then be processed in a high shear milling device, [0023], [0047]), as required by claims 1 and 11. Kirtley teaches in Example 1 that the first shearing stage (pre-milling of the diced pre-blanched potatoes) and the second shearing stage (potato, water and oil) both occur in an Urschel Comitrol 1700, which is viewed as a shearing device [0047-0049], [0098-0099]. It is also noted that Kirtley uses the phrases milling and shearing interchangeably [0025]. Thus, Kirtley teaches the first shearing stage and the second shearing stage are conducted in a shearing device.
Kirtley teaches the first shearing stage occurs before introduction of other ingredients (thawed diced potato cubes that are pre-blanched are pre-milled with an Urschel Comitrol 1700, producing a granulated potato mash), wherein said other ingredients are introduced as separately added ingredients after said first shearing stage and at a transition between said first shearing stage and said second shearing stage, and wherein said second shearing stage occurs in the presence of said separately added other ingredients (water and oil were added to the granulated potato mash and mixed (this is viewed as a transition period between the first shearing stage and second shearing stage); the potato, water and oil slurry is then milled at high shear through the Urschel Comitrol 1700, [0098-0099]; oil and other ingredients may be added at the same stage [0047-0049]). It is noted that other ingredients may be added at the same stage in the process as the oil is added [0047-0049], and this is done by separately introducing these other ingredients after said first shearing stage or the first pre-milling of the diced potato, in a transition period where the granulated potato mash is mixed with water, oil and the other ingredients to form a slurry [0026], [0049], [0098-0099] before the potato slurry with the other ingredients is subjected to the second shearing stage [0099].
As shown by the above rejection, Kirtley is modified by Bergsma to teach the addition of native starch and/or modified starch is added during the shearing process. Thus, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Kirtley in view of Bergsma to incorporate the teachings of Kirtley by having any other ingredients, which would include the ingredient of native starch and/or modified starch, to be added at a transition period as claimed in claims 1 and 11 because Kirtley recognizes that other ingredients and additives should be added after the potato mixture has been milled (first shearing stage) and before the second milling (second shearing stage) has occurred in a transition mixing period, so that all ingredients pass through the final milling stage [0026], [0049], [0098-0099].
Example 1 of Kirtley does discusses the first shearing stage (pre-milling) and the second shearing stage (slurry milled at high shear) are both done using the Urschel Comitrol 1700, but doesn’t specifically state where the transition mixing of other ingredients (like oil, water or starch), would occur [0027], [0098-0099], specifically Kirtley is silent as to the native starch and/or said modified starch being introduced as a separately added starch directly into said shearing device, as required by claims 1 and 11. However, Kirtley does state that the present invention may find application in a wide variety of systems where it is desirable to efficiently and effectively produce liquid potato products.
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 Kirtley by having the native starch and/or said modified starch be introduced as a separately added starch directly into said shearing device as claimed in claims 1 and 11 because Kirtley recognizes that other systems may be used and that there is a desire to efficiently and effectively produce the liquid potato product, so performing the transition mixing of other ingredients, which includes the added starch, directly in the same shearing device that is used for the first shearing and second shearing, such as the Urschel Comitrol 1700, would increase the desired efficiency of Kirtley [0027], [0098-0099].
Additionally, with the newly amended claim language for claims 1 and 11 that discuss first and second shearing stages and a transition period where starch is added, it is acknowledged that the selection of any order of mixing/shearing of ingredients is prima facie obvious in the absence of new or unexpected results. MPEP 2144.04(IV). Thus, 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 add the ingredients as claimed in the order of mixing/shearing as claimed by claims 1 and 11, because it is acknowledged that the selection of any order of mixing/shearing of ingredients is prima facie obvious in the absence of new or unexpected results. MPEP 2144.04(IV).
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 09/15/2026 have been fully considered but they are not persuasive.
Applicant argues, on pg. 8 of their remarks, that the prior art of record fails to teach or suggest the sequence now recited in independent claims 1 and 11, since they now require multiple shearing stages, a particular step order and location of addition for the separately added starch. Applicant states that Kirtley describes adding ingredients to a holding tank and does not discuss adding starch directly into a shearing device after a first shearing stage and at the transition to a second shearing stage. Applicant notes that while Kirtley does not prohibit the use of added starch, they provide no direction to introduce a separately added starch in a particular location and sequence. However, the Office disagrees for the following reasons.
Regarding Kirtley requiring a holding tank, as stated in paragraph [0047] the potato feed “may then be transferred to a mixing/holding tank.” However, the paragraph then goes on to state the mixing/holding tank may be optional. The mixing/holding tank is not viewed as a required part of the process. Additionally, the paragraphs [0057] and [0062] discussing the mixing/holding tank also state that the potato feed “may be stored” in the tank, or that the milled potato stream has the possibility to be recycled back to the tank. These again are not required steps but are steps that can occur if desired.
As shown by the rejection above, the Office agrees that Kirtley does not teach adding starch directly into a shearing device and does not give explicit direction to introduce a separately added modified starch in a particular location and sequence, but the teachings of modified Kirtley would have suggested to a person of ordinary skill in the art these added amendments to claims 1 and 11.
Kirtley teaches that other ingredients may be added at the same stage in the process as the oil is added [0047-0049], and this is done by separately introducing these other ingredients after said first shearing stage or the first pre-milling of the diced potato, in a transition period where the granulated potato mash is mixed with water, oil and the other ingredients to form a slurry [0026], [0049], [0098-0099] before the potato slurry with the other ingredients is subjected to the second shearing stage [0099]. The rejection above for claims 1 and 11 shows that Kirtley modified by Bergsma teaches adding native starch and/or modified starch during the shearing process. Thus, it would have been obvious for one of ordinary skill in the art, to have further modified Kirtley in view of Bergsma to incorporate the teachings of Kirtley by having any other ingredients, which would include the ingredient of native starch and/or modified starch, to be added during a transition period as claimed in claims 1 and 11 because Kirtley recognizes that other ingredients and additives should be added after the potato mixture has been milled (first shearing stage) and before the second milling (second shearing stage) has occurred in a transition mixing period, so that all ingredients pass through the final milling stage [0026], [0049], [0098-0099].
Example 1 of Kirtley does discusses the first shearing stage (pre-milling) and the second shearing stage (slurry milled at high shear) are both done using the Urschel Comitrol 1700, but doesn’t specifically state where the transition mixing of other ingredients (like oil, water or starch), would occur [0027], [0098-0099], specifically Kirtley is silent as to the native starch and/or said modified starch being introduced as a separately added starch directly into said shearing device, as required by claims 1 and 11. However, Kirtley does state that the present invention may find application in a wide variety of systems where it is desirable to efficiently and effectively produce liquid potato products. Thus, it would have been obvious for one of ordinary skill in the art, to have modified Kirtley in view of Bergsma to further incorporate the teachings of Kirtley by having the native starch and/or said modified starch be introduced as a separately added starch directly into said shearing device as claimed in claims 1 and 11 because Kirtley recognizes that other systems may be used and that there is a desire to efficiently and effectively produce the liquid potato product, so performing the transition mixing of other ingredients, which includes the added starch, directly in the same shearing device that is used for the first shearing and second shearing, such as the Urschel Comitrol 1700, would increase the desired efficiency of Kirtley [0027], [0098-0099].
Additionally, with the newly amended claim language for claims 1 and 11 that discuss first and second shearing stages and a transition period where starch is added, it is acknowledged that the selection of any order of mixing/shearing of ingredients is prima facie obvious in the absence of new or unexpected results. MPEP 2144.04(IV). Thus, 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 add the ingredients as claimed in the order of mixing/shearing as claimed by claims 1 and 11, because it is acknowledged that the selection of any order of mixing/shearing of ingredients is prima facie obvious in the absence of new or unexpected results. MPEP 2144.04(IV).
Applicant argues, on pgs. 8-9, that Bergsma does not teach the claim amendments of claims 1 and 11. Applicant then goes on to discuss specific teachings of Bergsma to show that these claim amendments are not taught. However, the Office disagrees for the following reasons.
Applicant’s arguments with respect to Bergsma and the amendments to claims 1 and 11 have been considered but are moot because the rejection does not rely on any teaching or matter specifically challenged in the argument.
Applicant argues, on pgs. 9-10, Bergsma’s reliance on native potato protein. Applicant states that Bergsma teaches that stretch, shredability, and body are optimal at about 2 weight percent potato protein and that lower concentrations produce a more watery or runny product after melting. Applicant acknowledges that Bergsma does attribute improvements in stretch and body to starch. However, applicant contends that these teachings of Bergsma, attributing improvements in stretch and body to starch, concern the formulation as a whole, which includes a functional native potato protein ingredient, and they do not establish that selecting the starch and ripening features alone would predictably reproduce the results in a different potato-based formulation. The mere presence of protein naturally occurring in potatoes does not establish the presence of Bergsma’s isolated native protein ingredient in the amount and functional state described by Bergsma. Applicant concludes that the rejection does not establish that protein remaining after gelatinization of the potato feed would provide the same functionality as the protein ingredient of Bergsma. However, the Office disagrees for the following reasons.
In response to applicant's argument that Bergsma’s formulation improvements in stretch and body do not only rely on starch but are concerned with Bergsma’s formulation as a whole, which includes Bergsma’s added potato protein teaching, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Therefore, since Bergsma does recognize improvement in their formulation by using starch, this would have motivated a person of ordinary skill in the art to have added starch to the formulation of Kirtley, as shown by the above rejection for claims 1 and 11.
Applicant argues, on pg. 10, that the rejection for claim 23 establishes cooking temperatures but not holding times to achieve pasteurization or sterilization. Applicant contends that identifying a temperature that could be used in pasteurization or sterilization does not itself establish that the disclosed treatment has achieved the required microbial effect. The temperature and duration of exposure must be sufficient for the product to be considered pasteurized or sterilized. While the Office establishes cooking temperatures they do not explain why Kirtley’s disclosed cooking process satisfies the claim limitation. However, the Office disagrees for the following reasons.
As evidenced by Zwirner Equipment, Types of Pasteurization, pg. 6 Table “Pasteurization Temperature vs. Time,” a product only needs to be at a temperature of 100°C for 0.01 seconds to achieve pasteurization. Kirtley teaches prior to solidifying, that the sheared potato feed may be introduced into a cooking device where it can be subjected to temperatures of at least 75 °C and/or less than 300 °C [0064-0065]). As noted in the rejection above, “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.” This statement was made because when heating a sheared potato product to temperatures less than 300°C, such as 200°C, the sheared potato product needs to heat up and pass through temperatures of 100°C, 101°C, 102°C, 103°C, 104°C, etc. A person of ordinary skill in the art would understand that this rise in temperature takes time and is not done instantly. The sheared potato product would have to be at a temperature of 100°C or above for at least 0.01 seconds, thus achieving pasteurization, for the sheared potato product to be raised to a temperature of 200°C or a temperature of less than 300°C. Thus, the fact that Kirtley teaches that the sheared potato feed may be introduced into a cooking device and subjected to temperatures of at least 75 °C and/or less than 300 °C, necessarily teaches pasteurization and/or sterilization is achieved and a person of ordinary skill in the art would implicitly understand that by just achieving these high cooking temperatures in the sheared potato product would also achieve pasteurization and/or sterilization. See MPEP 2144.01. Therefore, as noted in the rejection above “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.”
Applicant argues, on pgs. 10-11, that while Min does describe removing entrapped air, it does not cure the deficiency in the underlying combination of Kirtley and Bergsma. The secondary reference of Min introduces starch and gums into fermented non-dairy milk before heating and then introduces oil at an inline high shear mixer to reduce the oil-droplet size. Applicant states that the secondary reference of Min does not teach the claimed limitations of direct addition of separately added starch into the shearing device after a first shearing stage of the gelatinized potato feed and at the transition to a second shearing stage. Applicant concludes that Min’s deaeration step to the proposed combination does not provide the missing sequence. However, the Office disagrees for the following reasons.
Applicant’s arguments with respect to Min and the amendments to claims 1 and 11 have been considered but are moot because the rejection does not rely on any teaching or matter specifically challenged in the argument. The method recited in claims 1 and 11 is rendered obvious by Kirtley in view of Bergsma. Thus, the Min reference is not relied upon in the rejection.
Additionally, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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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/S.R.G./Examiner, Art Unit 1791
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759
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