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 .
This office action is in response to the application filed on March 23, 2023. The earliest effective filing date of the application is December 21, 2021.
Status of Application
The Response to Restriction Requirement filed on August 19, 2025 has been entered. The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1, 4, 6 – 15
Withdrawn claims: 8 and 9
Amended claims: 1, 4, 6, 7, and 9
Cancelled claims: 2, 3, and 5
Claims currently under examination: 1, 4, 6, 7, and 10 – 15
By not repeating the previously presented objection/rejection(s), it is sufficiently clear that said objection/rejection(s) are withdrawn.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 1, 4, 6, 7, and 10 – 15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “transglutaminase (TGase) in an amount of 0.2% to 4.0%”, which renders the claim indefinite. Claim 1 fails to disclose the basis (i.e., weight, volume, molar, etc) of the range of the transglutaminase (TGase) concentration in the claimed method. The basis of the range of the transglutaminase (TGase) concentration in the claimed method is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination, the range of the transglutaminase (TGase) concentration in the claimed method are interpreted to be by weight.
Claim 1 recites ”EGCG is added in an amount of 0.02% to 0.20%”, which renders the claim indefinite. Claim 1 fails to disclose the basis (i.e., weight, volume, molar, etc) of the range of the EGCG concentration in the claimed method. The basis of the range of the EGCG concentration in the claimed method is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination, the range of the EGCG concentration in the claimed method are interpreted to be by weight.
Claim 1 recites “the restructured meat produced by the method as a protein content of greater than 20%”, which renders the claim indefinite. Claim 1 fails to disclose the basis (i.e., weight, volume, molar, etc) of the protein concentration in the restructured meat produced by the claimed method. The basis of the protein concentration in the claimed composition is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination, the protein concentration in the restructured meat produced by the claimed method is interpreted to be by weight.
Claim 11 recites “the protein content is 24%”, which renders the claim indefinite. Claim 11 fails to disclose the basis (i.e., weight, volume, molar, etc) of the protein concentration in the restructured meat produced by the claimed method. The basis of the protein concentration in the claimed composition is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination, the protein concentration in the restructured meat produced by the claimed method is interpreted to be by weight.
Claims 4, 6, 7, 10, and 12 – 15 are rejected as dependent on a rejected base claim.
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, 7, 11, 12, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Ozeki et al. (JP 3471901 B2 – J-Plat Pat and Google Machine Translation) in view of Miyauchi et al. (Surimi – A Semi-Processed Wet Fish Protein. Marine Fisheries Review. Vol 35. Iss 12. (1973)), Tri-County Independent (The Many Uses of Baking Soda! Tri-County Independent. (2012). Retrieved from: https://www.tricountyindependent.com/story/news/columns/2012/06/29/the-many-uses-baking-soda/64926323007/), Luo et al. (Effect of soy protein isolate on gel properties of Alaska pollock and common carp surimi at different setting conditions. J Sci Food Agric. 84. Pp. 663 – 671. (2004)), Azeus (Vacuum Meat Tumbler. Azeus Food Machinery. (2019). Retrieved from Wayback Machine Archive - https://web.archive.org/web/20191118082120/https://www.food-machines.org/meat-processing-machinery/vacuum-meat-tumbler.html), McMindes et al. (US 20070269567 A1), Park (Chapter 8: Surimi Seafood, Products, Market, and Manufacturing. In: Surimi and Surimi Seafood. CRC Press. (2000)), An et al. (Roles of endogenous enzymes in surimi gelation. Trends in Food Science & Technology. Vol 7. Iss 10. Pp. 321 – 327. (1996)), Sakamoto et al. (Gel Strength Enhancement by Addition of Microbial Transglutaminase during Onshore Surimi Manufacture. Journal of Food Science. Vol 60. Iss 2. Pp. 300 – 304. (1995)), Li et al. (Double-crosslinked effect of TGase and EGCG on myofibrillar proteins gel based on physicochemical properties and molecular docking. Food Chemistry. (2021)), Tadpitchayangkoon et al. (Gelation characteristics of tropical surimi under water bath and ohmic heating. LWT- Food Science and Technology. Vol 46. Pp. 97 – 103. (2012)), and Weinberg-Sehayek et al. (WO 2015011634 A1), as evidenced by Alaska Seafood (Surimi Seafood. Alaska Seafood. (2021). Retrieved from: https://www.alaskaseafood.org/species/surimi-seafood/).
Regarding claims 1, 6, and 7, Ozeki teaches a method of producing ground fish meat (i.e., surimi) products comprising:
(a) Preparing an aquatic protein
Ozeki teaches thawing (i.e., defrosting) frozen premium surimi and second grade pollack of Alaska (i.e., an aquatic animal meat slice), roughly grinding using a silent cutter (i.e., conducting cutting and chopping – [0028]; p. 8, Table 1, Test 1; p. 22, Table 1, Test 1).
Ozeki does not teach washing and dewatering the ground pollack (i.e., aquatic protein pulp).
Miyauchi teaches typical processing methods of wet fish protein products such as surimi (p. 7, Abstract). Miyauchi teaches the initial steps of preparing surimi comprise heading, gutting, and washing the flesh; separating the fish muscle from skin and bones; washing and dewatering the minced muscle; and straining (p. 7, paragraph 1). Miyauchi teaches the washing and dewatering step of preparing surimi comprises stirring chilled water into fish flesh to leach out blood, flesh pigments, and other water soluble constituents as well as to float out most of the oil (p. 8, paragraph 2). Miyauchi teaches the washed minced flesh is then dewatered to a desired water content of 84 – 86 percent (p. 8, paragraph 2).
Ozeki and Miyauchi are combinable because they are concerned with the same field of endeavor, namely, surimi. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to wash and dewater the ground pollack and surimi, as taught by Miyauchi in the method of Ozeki because washing and dewatering leaches out blood, flesh pigments, and other undesirable water soluble constituents as well as to floats out most of the oil while achieving the desired water content within the ground meat.
Ozeki does not teach adding sodium bicarbonate (i.e., baking soda) during the washing step.
Tri-County Independent teaches soaking the raw fish in 1 quart (1 liter) of water with 2 tablespoons of baking soda to get rid of the smell of fish (p. 1, Let’s begin with “In the Kitchen”).
Ozeki and Tri-County Independent are combinable because they are concerned with the same field of endeavor, namely, processing fish. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to add sodium bicarbonate during the washing step, as taught by Tri-County Independent in the method of Ozeki because washing fish with sodium bicarbonate removes undesirable smells from the fish.
(b) Mixing and stirring the aquatic protein pulp and a plant protein powder
Ozeki teaches adding powdered soy protein (i.e., plant protein powder from soybean) to the ground fish meat (i.e., aquatic protein pulp) before shearing ([0028]). Ozeki teaches shearing (i.e., mixing) the ground fish meat (i.e., aquatic protein pulp) for 10 minutes (i.e., until a homogenous state is reached, thus forming a protein homogenate – [0028]).
Ozeki does not teach the ratio of the ground fish meat (i.e., aquatic protein pulp) to the powdered soy protein (i.e., plant protein powder) is 10:1.
Luo investigates the effects of soy protein isolate (SPI – plant protein powder) on the breaking force and distance of the gel formed from low grade (second grade) Alaska pollock surimi at different soy protein isolate (i.e., plant protein powder) concentrations (0 – 40 – p. 665, paragraph 5). Luo teaches when low grade (second grade) Alaska pollock surimi is cooked directly or cooked after setting at 30 °C for 60 min, the breaking force was decreased (p < 0.05) with the SPI (i.e., plant protein powder) concentration increasing from 0 to 40% of the total protein (p. 665, paragraph 7). Because the breaking force of the low grade (second grade) Alaska pollock surimi increases with decreasing soy protein (i.e., plant protein powder) content in the surimi, the concentration of soy protein (i.e., plant protein powder) in low grade (class 2) Alaska pollock surimi is a result-effective variable.
Ozeki and Luo are combinable because they are concerned with the same field of endeavor, namely, the use of soy protein in surimi. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of soy protein weighed out and added to the surimi of Ozeki, including a ratio of the aquatic protein pulp to the plant protein of 10:1, to arrive at a surimi with the desired breaking force. One of ordinary skill in the art would have had a reasonable expectation of success because the adjustment of soy protein content in surimi is routinely practiced in the art.
(c) Adding a salt to the protein homogenate
Ozeki teaches adding NaCl, disodium hydrogenphosphate (anhydrous) to the ground fish meat (i.e., aquatic protein pulp) before shearing ([0028]).
While Ozeki does not teach adding NaCl and disodium hydrogenphosphate (anhydrous) (i.e., a salt) to the ground fish meat (i.e., aquatic protein pulp) after shearing (i.e., uniform mixing and stirring), MPEP § 2144.04.IV.C states selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. MPEP § 2144.04.IV.C also states the selection of any order of mixing ingredients is prima facie obvious. Therefore, It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have added the NaCl and disodium hydrogenphosphate (anhydrous) (i.e., a salt) to the ground fish meat (i.e., aquatic protein pulp) after shearing (i.e., uniform mixing and stirring).
(d) Rolling the protein homogenate
Ozeki does not teach rolling the ground fish meat (i.e., aquatic protein pulp).
Azeus teaches a vacuum meat tumbler machine that is suitable for seafood which mixes marinades, such as salt, into the meat by rolling (p. 1, paragraph 1; p. 2, paragraphs 1 – 2). Azeus teaches the vacuum meat tumbler machine has a nice effect on product cutting, output, taste, color, and luster (p. 1, paragraph 1).
Ozeki and Azeus are combinable because they are concerned with the same field of endeavor, namely, processing fish. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used a vacuum meat tumbler machine, as taught by Azeus, to mix the salt into the ground fish meat (i.e., aquatic protein pulp), thereby rolling it, in the method of Ozeki because the vacuum meat tumbler machine has a nice effect on product cutting, output, taste, color, and luster.
(e) Adding a food-grade acid-base regulator to the protein homogenate to form a protein paste
Ozeki teaches adding calcium lactate pentahydrate (i.e., an acid base regulator) to the ground fish meat (i.e., aquatic protein pulp) before shearing ([0028]).
While Ozeki does not teach adding calcium lactate pentahydrate (i.e., an acid base regulator) to the ground fish meat (i.e., aquatic protein pulp) after rolling, MPEP § 2144.04.IV.C states selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. MPEP § 2144.04.IV.C also states the selection of any order of mixing ingredients is prima facie obvious. Therefore, It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have added the calcium lactate pentahydrate (i.e., an acid base regulator) to the ground fish meat (i.e., aquatic protein pulp) after rolling.
(f) Adding to the protein paste
Ozeki teaches, after shearing, setting the ground fish meat (i.e., aquatic protein pulp) with a two-stage boiling (i.e., heating in a water bath) process wherein the first stage was performed at 30 ° C (i.e., incubation) for 90 minutes ([0028] – [0029]).
Ozeki does not teach adding epigallocatechin gallate (EGCG) prior to heating.
McMindes teaches a restructured meat product comprising comminutes pollack, surimi, and soy protein ([0081], [0085], and [0029]). McMindes teaches epigallocatechin gallate (EGCG) is a suitable antioxidant for use in restructured meat compositions ([0105]).
Ozeki and McMindes are combinable because they are concerned with the same field of endeavor, namely, restructured meat compositions. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have added EGCG to the sheared pollock and surimi prior to heating, as taught by McMindes in the method of Ozeki because EGCG is known to be a suitable antioxidant for use in restructured meat compositions comprising pollack, surimi, and soy protein, and the selection of any order of mixing ingredients is prima facie obvious. See MPEP § 2144.04.IV.C.
Ozeki does not teach the EGCG is added in an amount of 0.02% to 0.20%.
McMindes teaches the concentration of an antioxidant (i.e., EGCG) in the restructured meat composition may range from about 0.01% to about 1% by weight ([0106]).
The range of antioxidant (i.e., EGCG) weight percent in the surimi, about 0.01% to about 1%, as disclosed by McMindes, overlaps with the claimed range of 0.02-0.20 wt%. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Ozeki does not teach adding a color improver at the same time as the EGCG.
McMindes teaches the structured protein product is generally colored with a coloring composition (i.e., color improver) so as to resemble raw meat and/or cooked meat ([0092]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have added a coloring composition (i.e., color improver) to the surimi at the same time as the EGCG, as taught by McMindes in the method of Ozeki because coloring compositions (i.e., color improver) are known to enhance the appearance of restructured meat compositions comprising pollack, surimi, and soy protein, and the selection of any order of mixing ingredients is prima facie obvious. See MPEP § 2144.04.IV.C.
Ozeki does not teach adding transglutaminase (TGase) prior to heating.
An teaches the increase in gel strength of surimi at low-temperature settings (4 – 40 °C) is associated with transglutaminase (i.e., glutamine transaminase, which is a protease) activity (p. 324, paragraph 3). An teaches transglutaminase (i.e., glutamine transaminase) activity has been found in the muscle of walleye pollock (i.e., Alaska pollock), as well as in surimi of this species (p. 324, paragraph 3). An teaches crosslinking of myosin by endogenous transglutaminase (i.e., glutamine transaminase) was related to gel strength in surimi made from Alaska pollock (p. 324, paragraph 3). An teaches recent evidence indicates that transglutaminase (i.e., glutamine transaminase) can be used to increase the gel strength of surimi (p. 325, paragraph 3). An teaches a microbial transglutaminase (i.e., glutamine transaminase) was used in the onshore manufacture of Alaska pollock surimi (p. 325, paragraph 3).
Ozeki and An are combinable because they are concerned with the same field of endeavor, namely, surimi. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have added transglutaminase (i.e., glutamine transaminase, which is a protease) to the sheared pollock and surimi prior to heating, as taught by An in the method of Ozeki because the increase in gel strength of surimi at low-temperature settings (4 – 40 °C) is associated with transglutaminase (i.e., glutamine transaminase) activity and the supplementation of additional transglutaminase (i.e., glutamine transaminase) to surimi is known to be practiced in the art.
Ozeki does not teach the TGase is added in an amount of 0.2% to 4.0%.
Sakamoto teaches In manufacturing fish gel products from surimi, several kinds of bonds, such as hydrophobic interactions, disulfide bonds, hydrogen bonds and others are formed (p. 300, paragraph 3). Sakamoto teaches endogenous transglutaminases (TGases) in fish flesh may form Ca2+ dependent ε-(y-gluta-myl)lysine (GL) crosslinks in fish proteins and participate in textural changes of fish sol during processing (p. 300, paragraphs 3 – 4). Sakamoto teaches recently discovered microbial TGases form ε-(y-gluta-myl)lysine (GL) crosslinks, however they are Ca2+ independent, meaning they are not limited by calcium activity (p. 300, paragraph 7). Sakamoto teaches increased formation of GL crosslinks reinforces the strength of land-grade surimi gel (p. 304, Conclusion). Sakamoto teaches GL crosslinking and therefore surimi gel strength increases with an increase in microbial TGase concentration (p. 304, Conclusion). Therefore, the microbial TGase content in surimi is a result-effective variable.
Ozeki and Sakamoto are combinable because they are concerned with the same field of endeavor, namely, making surimi. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of transglutaminase (i.e., protease) added to the surimi of Ozeki, including 0.2-4.0 wt% of the weight of the ground fish meat (i.e., paste protein), to arrive at a surimi with the desired GL crosslinking (i.e., gel strength). One of ordinary skill in the art would have had a reasonable expectation of success because the adjustment of transglutaminase content in surimi is routinely practiced in the art.
Ozeki does not teach the TGase has an activity of 1.5 units/mg to 30 units/mg.
Li investigates the synergy of EGCG and TGase when forming gels in surimi. Li teaches the TGase selected for use in the surimi was supplied with an activity of 3000 U/g (3 U/mg – p. 2, paragraph 2).
Ozeki and Li are combinable because they are concerned with the same field of endeavor, namely, methods of making surimi. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have selected TGase with an activity of 3000 U/g (3 U/mg) as taught by Li in the method of Ozeki because Li provides that it was known for TGase with an activity of 3000 U/g (3 U/mg) to have been used in combination with EGCG to form surimi gels and published at the time of filing, which means it was within the general skill of a worker in the art to select TGase with an activity of 3000 U/g (3 U/mg) in order to form the surimi gel, 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.
(g) Mixing and stirring
While Ozeki does not teach uniformly mixing the protease, EGCG, and coloring composition (i.e., coloring agent) after they are added to the ground fish meat (i.e., aquatic protein pulp), one of ordinary skill in the art would have uniformly mixed the ingredients to achieve a homogenous mixture before setting by heat treatment.
(h) First incubating in a water bath
Ozeki teaches, after shearing, setting the ground fish meat (i.e., aquatic protein pulp) with a two-stage boiling (i.e., heating in a water bath) process wherein the first stage is a reaction in which the meat paste kneaded with salt is allowed to stand at an appropriate temperature of 20 to 40 ° C. for about 10 minutes to 20 hours, thereby crosslinking and polymerizing the dissolved fish meat protein molecules to form a strong gel ([0003; [0028] – [0029]).
The range of first stage boiling (i.e., heating in a water bath) temperature, 20 to 40 ° C, as disclosed by Ozeki, overlaps with the claimed range of 35 to 60 ° C. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
The range of first stage boiling (i.e., heating in a water bath) time, 10 minutes to 20 hours, as disclosed by Ozeki, overlaps with the claimed range of 30 to 300 minutes. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
(i) Second incubating in a water bath
Ozeki teaches the second stage of the two-step boiling process (i.e., heating in a water bath) is performed at 90 ° C (i.e., high-temperature) for 40 minutes ([0029]). Ozeki teaches the conventional method of making surimi comprises cooling after the heating step ([0012]).
Ozeki does not teach the second stage of the two-step boiling process (i.e., heating in a water bath) is performed for 5 to 15 minutes.
Park teaches surimi gels are known to be heated in a water bath at 90 °C for 15 minutes (p. 222, paragraph 2).
Ozeki and Park are combinable because they are concerned with the same field of endeavor, namely, methods of making surimi. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have performed the second heating at 90 °C for 15 minutes, as taught by Park in the method of Ozeki because Park provides that it was known for heating at 90 °C for 15 minutes to have been used for setting surimi gels and published at the time of filing, which means it was within the general skill of a worker in the art to select heating at 90 °C for 15 minutes in order to set the surimi gel, 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.
(j) Cooling rapidly to room temperature in an ice bath
Ozeki is silent with respect to the surimi cooling to room temperature in an ice bath.
Tadpitchayangkoon investigates the gelation characteristics of tropical surimi (Abstract). Tadpitchayangkoon teaches the surimi gels were prepared by thawing frozen surimi blocks, chopping, adding protein and salt, additional chopping, and heating (p. 98, paragraph 3). Tadpitchayangkoon teaches upon heating, gels were wrapped in a plastic film, cooled in iced water for 20 min (p. 98, paragraph 5).
Ozeki and Tadpitchayangkoon are combinable because they are concerned with the same field of endeavor, namely, methods of making surimi. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have cooled the heated surimi to room temperature in an ice bath, as taught by Tadpitchayangkoon in the method of Ozeki because Tadpitchayangkoon provides that it was known for ice baths to have been used for cooling heated surimi and published at the time of filing, which means it was within the general skill of a worker in the art to select an ice bath as a means to cool the heated surimi, 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.
(k) Press forming a sample obtained in step (j)
Ozeki does not teach conducting press forming on a sample obtained after cooling, or directly kneading the sample in the shape of a desired product to obtain the aquatic-plant protein combined restructured meat.
Weinberg-Sehayek teaches a method of manufacturing a surimi edible product (Abstract). Weinberg-Sehayek defines surimi as a paste made by fish or other meat, as well as multiple Asian foods that use surimi as its primary ingredient, which includes, for example, imitation crab meat (p. 1, paragraph 2). Weinberg-Sehayek teaches the surimi of the present method comprises Alaska pollock (p. 3, paragraph 11). Weinberg-Sehayek teaches the surimi of the present method additionally comprises salt, gelling agents, soy protein, seasonings, transglutaminases, food enhancers, food colorants, and food flavorings, among other additives (p. 3, paragraph 10). Weinberg-Sehayek teaches the method of manufacturing a surimi edible product comprising the steps of:
providing surimi and
forming said surimi to desired shape or dimension by any process selected from the group consisting of extruding, coextruding, molding, Composite molding, Fiberizing wherein standardized, mouth-acceptance and taste are correlated with predetermined shape and/or dimension of said product, for a given Surimi recipe (Claim 18).
Ozeki and Weinberg-Sehayek are combinable because they are concerned with the same field of endeavor, namely, making surimi. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have formed the kamaboko of Ozeki to a desired shape or dimension by molding (i.e., press forming), as taught by Weinberg-Sehayek in the method of Ozeki because Weinberg-Sehayek provides that it was known for molding (i.e., press forming) surimi comprising Alaska pollack, salt, gelling agents, soy protein, seasonings, transglutaminases, food enhancers, food colorants, and food flavorings, among other additives to be successfully used and published at the time of filing, therefore it would have been 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.
With respect to whether the restructured meat produced by the method as a protein content of greater than 20%, the ground fish meat (i.e., surimi) produced by the method of Ozeki comprises 88 wt% pollock surimi, and 3% soy protein (Table 1). Ozeki also teaches the addition amount of the powdery soybean protein is 1 to 20% ([0020]).
As evidenced by Alaska Seafood, Alaska surimi comprises 13g protein per 85g surimi (p. 2, nutrition). In other words, Alaska surimi is about 15.4 wt% protein. Therefore, it is well within the ability of one of ordinary skill in the art to produce a ground fish meat (i.e., surimi) via the modified method of Ozeki which has a protein content of greater than 20% because Ozeki teaches embodiments wherein the ground fish meat (i.e., surimi) comprises 20% powder soybean protein and Alaskan surimi, which is about 15.4 wt% protein.
Regarding claim 4, Ozeki teaches the surimi comprises 2.2 wt% salt (i.e., NaCl and disodium hydrogenphosphate anhydrous – p. 8, Table 1, Test 1; p. 22, Table 1, Test 1).
While Ozeki does not teach the proportions of the NaCl to the disodium hydrogenphosphate (anhydrous) in the ground fish meat (i.e., aquatic protein pulp), absent evidenced to the contrary, any proportion of NaCl to the disodium hydrogenphosphate anhydrous is implied by the disclosure of Ozeki. Therefore, an embodiment wherein the NaCl comprises 1.5wt% of the ground fish meat (i.e., aquatic protein pulp) and the disodium hydrogenphosphate anhydrous (i.e., phosphate) comprises 0.7 wt% of the ground fish meat (i.e., aquatic protein pulp) is rendered obvious by the method of Ozeki.
Regarding claim 11, with respect to whether the restructured meat produced by the method as a protein content of greater than 24%, the ground fish meat (i.e., surimi) produced by the method of Ozeki comprises 88 wt% pollock surimi, and 3% soy protein (Table 1). Ozeki also teaches the addition amount of the powdery soybean protein is 1 to 20% ([0020]).
As evidenced by Alaska Seafood, Alaska surimi comprises 13g protein per 85g surimi (p. 2, nutrition). In other words, Alaska surimi is about 15.4 wt% protein. Therefore, it is well within the ability of one of ordinary skill in the art to produce a ground fish meat (i.e., surimi) via the modified method of Ozeki which has a protein content of greater than 20% because Ozeki teaches embodiments wherein the ground fish meat (i.e., surimi) comprises 24% powder soybean protein and Alaskan surimi, which is about 15.4 wt% protein.
Regarding claim 12, Ozeki teaches shearing (i.e., mixing) the ground fish meat (i.e., aquatic protein pulp) for 10 minutes (i.e., until a homogenous state is reached, thus forming a protein homogenate – [0028]). Ozeki teaches the shearing (i.e., mixing) may be conducted at 4°C ([0038]).
Regarding claim 14, McMindes teaches the structured protein product is generally colored with a coloring composition (i.e., color improver) so as to resemble raw meat and/or cooked meat ([0092]). McMindes teaches suitable examples of natural colorants approved for use in food include beet juice (i.e., beet red), carmine/carminic acid (bright red), cochineal extract (red), lycopene (orange-red), and monascus (red-purple, from fermented red rice – ([0094]).
Regarding claim 15, while Ozeki not explicitly state the ground fish meat (i.e., surimi) product has a chewability of greater than 1,500 g-mm, the instant specification states the method of the present invention produces a restructured meat with a chewability of greater than 1,500 g-mm ([0041]). Therefore, because the modified method of Ozeki is encompassed by instant claim 1, the resulting ground fish meat (i.e., surimi) product of the modified method of Ozeki inherently has a chewability of greater than 1,500 g-mm. MPEP § 2112.01.I states where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In this case, the ground fish meat (i.e., surimi) product of the modified method of Ozeki and the restructured meat of claim 15 are produced by substantially identical processes, therefore they inherently have the same properties, including chewability. Furthermore, MPEP § 2112.I states “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer”. In this case, the fact that Ozeki is silent with respect to the chewability of the ground fish meat (i.e., surimi) product does not render novel the previously unappreciated precisely claimed chewability.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Ozeki et al. (JP 3471901 B2 – J-Plat Pat and Google Machine Translation) in view of Miyauchi et al. (Surimi – A Semi-Processed Wet Fish Protein. Marine Fisheries Review. Vol 35. Iss 12. (1973)), Tri-County Independent (The Many Uses of Baking Soda! Tri-County Independent. (2012). Retrieved from: https://www.tricountyindependent.com/story/news/columns/2012/06/29/the-many-uses-baking-soda/64926323007/), Luo et al. (Effect of soy protein isolate on gel properties of Alaska pollock and common carp surimi at different setting conditions. J Sci Food Agric. 84. Pp. 663 – 671. (2004)), Azeus (Vacuum Meat Tumbler. Azeus Food Machinery. (2019). Retrieved from Wayback Machine Archive - https://web.archive.org/web/20191118082120/https://www.food-machines.org/meat-processing-machinery/vacuum-meat-tumbler.html), McMindes et al. (US 20070269567 A1), Park (Chapter 8: Surimi Seafood, Products, Market, and Manufacturing. In: Surimi and Surimi Seafood. CRC Press. (2000)), An et al. (Roles of endogenous enzymes in surimi gelation. Trends in Food Science & Technology. Vol 7. Iss 10. Pp. 321 – 327. (1996)), Sakamoto et al. (Gel Strength Enhancement by Addition of Microbial Transglutaminase during Onshore Surimi Manufacture. Journal of Food Science. Vol 60. Iss 2. Pp. 300 – 304. (1995)), Li et al. (Double-crosslinked effect of TGase and EGCG on myofibrillar proteins gel based on physicochemical properties and molecular docking. Food Chemistry. (2021)), Tadpitchayangkoon et al. (Gelation characteristics of tropical surimi under water bath and ohmic heating. LWT- Food Science and Technology. Vol 46. Pp. 97 – 103. (2012)), and Weinberg-Sehayek et al. (WO 2015011634 A1), as evidenced by Alaska Seafood (Surimi Seafood. Alaska Seafood. (2021). Retrieved from: https://www.alaskaseafood.org/species/surimi-seafood/), as applied to claim 1 above, and further evidenced by NOAA (Alaska Pollock. NOAA Fisheries. (n.d.) Retrieved from: https://www.fisheries.noaa.gov/species/alaska-pollock).
As evidenced by NOAA, Alaskan pollock is cod (p. 3, Appearance, bullet 1).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Ozeki et al. (JP 3471901 B2 – J-Plat Pat and Google Machine Translation) in view of Miyauchi et al. (Surimi – A Semi-Processed Wet Fish Protein. Marine Fisheries Review. Vol 35. Iss 12. (1973)), Tri-County Independent (The Many Uses of Baking Soda! Tri-County Independent. (2012). Retrieved from: https://www.tricountyindependent.com/story/news/columns/2012/06/29/the-many-uses-baking-soda/64926323007/), Luo et al. (Effect of soy protein isolate on gel properties of Alaska pollock and common carp surimi at different setting conditions. J Sci Food Agric. 84. Pp. 663 – 671. (2004)), Azeus (Vacuum Meat Tumbler. Azeus Food Machinery. (2019). Retrieved from Wayback Machine Archive - https://web.archive.org/web/20191118082120/https://www.food-machines.org/meat-processing-machinery/vacuum-meat-tumbler.html), McMindes et al. (US 20070269567 A1), Park (Chapter 8: Surimi Seafood, Products, Market, and Manufacturing. In: Surimi and Surimi Seafood. CRC Press. (2000)), An et al. (Roles of endogenous enzymes in surimi gelation. Trends in Food Science & Technology. Vol 7. Iss 10. Pp. 321 – 327. (1996)), Sakamoto et al. (Gel Strength Enhancement by Addition of Microbial Transglutaminase during Onshore Surimi Manufacture. Journal of Food Science. Vol 60. Iss 2. Pp. 300 – 304. (1995)), Li et al. (Double-crosslinked effect of TGase and EGCG on myofibrillar proteins gel based on physicochemical properties and molecular docking. Food Chemistry. (2021)), Tadpitchayangkoon et al. (Gelation characteristics of tropical surimi under water bath and ohmic heating. LWT- Food Science and Technology. Vol 46. Pp. 97 – 103. (2012)), and Weinberg-Sehayek et al. (WO 2015011634 A1), as evidenced by Alaska Seafood (Surimi Seafood. Alaska Seafood. (2021). Retrieved from: https://www.alaskaseafood.org/species/surimi-seafood/), as applied to claim 1 above, and further in view of Weng et al. (CN 102640944 A – Clarivate Machine Translation).
Ozeki does not teach adding an additional acid base regulator with the calcium lactate pentahydrate (i.e., an acid base regulator).
Weng teaches a preparation method of minced fillet product (i.e., surimi), comprising using freshwater minced fillet as the raw material, crushing kneading by adding salt, by adding protease inhibitor, seasoning and acidity regulator, mixing them uniformly, kneading by a forming and gelatinizing, finally impregnating in acidity regulator with a certain concentration to obtain the minced fillet product (Abstract). Weng teaches the acidity regulator is acetic acid, citric acid, malic acid, tartaric acid, lactic acid ([0008]).
Ozeki and Weng are combinable because they are concerned with the same field of endeavor, namely, methods of making surimi. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have added malic acid, acetic acid, lactic acid, or citric acid, as taught by Weng, along with the calcium lactate pentahydrate (i.e., an acid base regulator) in the method of Ozeki because MPEP § 2144.06.I states "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted). In this case, the addition of malic acid, acetic acid, lactic acid, or citric acid with calcium lactate for the same purpose of acid base regulation is prima facie obvious.
In summary, the claims are merely recipes for making food, which do not amount to a novel invention because all the claimed ingredient were known in the prior art and one skilled in the art could have combined the ingredient as claimed by known methods 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 known methods of making nutritional foods, 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).
Further, the claims are toward a formula/recipe for making a nutritional food composition that uses common ingredients, and does not amount to invention in the constantly developing art of preparing food because there is no specific showing that establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. It is long and commonly known that the object of for people of skill for cooking (e.g. cooks, chefs, and bakers) is to use or eliminate common ingredients to formulate food that is palatable. Such an act, the formulation or creation a food recipe, is not patentable because it does not make a scientific advancement in the field unless a new/novel reaction, coaction or cooperative relationship is made evident by such a creation. In other words, the act of making food or food recipes that taste good, even if the combination of the ingredients is not known or has not been done before, is not patentable subject just because it was done.
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of this specific instant case.
At page 234, the Court stated as follows: This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function.
All 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 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 known (insert type of method i.e. etching) 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).
Affidavit
The affidavit under 37 CFR 1.132 filed February 5, 2026 (hereinafter “Liu Declaration”) is insufficient to overcome the rejection of claims 1, 4, 6, and 7 based upon Ozeki as set forth in the last Office action.
MPEP § 716.01(c)(III) states “In assessing the probative value of an expert opinion, the examiner must consider
1) the nature of the matter sought to be established,
2) the strength of any opposing evidence,
3) the interest of the expert in the outcome of the case, and
4) the presence or absence of factual support for the expert’s opinion.
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 227 USPQ 657 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986).”
The Liu Declaration seeks to establish nonobviousness of the method of preparing an aquatic-plant protein combined restructured meat recited in claim 1.
The strength of the evidence submitted in the Liu Declaration is evaluated below:
It is asserted that when EGCG and transglutaminase are used in combination, various properties of the recombinant meat are greatly improved, fully, and unexpectedly, proving that there is a significant synergistic effect between EGCG and TG enzyme (p. 1, paragraph 3; p. 2, paragraph 3)
In response, the results presented in the instant specification are not commensurate with the claims:
The examples fail to evaluate the claimed method across various types of fish. The examples only show a scenario wherein the fish is basa fish.
The examples fail to evaluate the range of incubation temperatures and times (i.e., 35 °C to 60 °C for 30 to 300 minutes). The examples only show a scenario wherein the restructured meat is incubated at 50 °C for 120 minutes.
The examples fail to evaluate the range of heating temperatures and times (i.e., 80 °C to 90 °C for 5 to 15 minutes). The examples only show a scenario wherein the restructured meat is heated at 90 °C for 10 minutes.
The examples only produce restructured meat with a protein content of 12 – 53%, not the entire range of greater than 20%.
Because the examples in the specification are not commensurate with the claims, the evidence relied upon has not established that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. See MPEP 716.02(b).
It is asserted that for the first time, it has been discovered that the combined use of EGCG and TG enzyme provides and effective solution to the problem of balancing protein content and taste via a synergistic relationship between EGCG and TG enzyme (p. 2, paragraph 2).
In response, the synergistic behavior of EGCG and TGase for use in surimi has been documented prior to the filing date of the present invention. Li et al. (Double-crosslinked effect of TGase and EGCG on myofibrillar proteins gel based on physicochemical properties and molecular docking. Food Chemistry. (2021)) describes the same molecular docking mechanism as the Liu Declaration in surimi treated with EGCG and TGase (p. 8, Figure 4). Li teaches the combined treatment of surimi with EGCG and TGase results in an increase in breaking force and deformation, then a decrease with an increase in TGase or EGCG (p. 3, paragraph 9). Li shows this synergistic effect was known prior to the effective filing date of the invention. Furthermore, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
It is asserted that the synergy between EGCG and TG enzyme is, in part, due to EGCG’s ability to promote the ordered aggregation of myofibrillar and soy protein through non-covalent interactions, while expanding the substrate-binding pocket of TG enzyme, promoting crosslinking by TG enzyme (p. 3, paragraph 2; p. 4, paragraph 1; p. 8, paragraph 2).
In response, Li teaches the interaction of EGCG with myofibrillar proteins, including non-covalent interactions, promoted with crosslink of myofibrillar proteins and increased the gel strength (p. 3, paragraph 9). Li teaches EGCG and TGase exhibit a double-crosslinked effect to promote gel strength in myofibrilla protein gels (p. 3, paragraph 9 – p. 4, paragraph 1). The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
It is asserted that the synergy between EGCG and TG enzyme is, in part, due to the antioxidant effect of EGCG protecting the structural integrity of proteins and fats, providing high-quality substrates for cross-linking reactions, inhibiting the generation of undesirable flavors from the source, and stabilizing product color (p. 8, paragraph 2).
In response, both Li and McMindes teach that EGCG is an antioxidant (Li: p. 3, paragraph 9; McMindes: [0106]). The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
It is asserted that the synergy between EGCG and TG enzyme is, in part, due to the antibacterial properties of EGCG effectively extends the shelf life of recombinant meat (p. 8, paragraph 2); p.9, paragraph 1).
In response, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
The Liu Declaration is submitted by one of the inventors, who is considered an interested party in the outcome of the case. An affidavit of an applicant as to the advantages of their claimed invention, while less persuasive than that of a disinterested person, cannot be disregarded for this reason alone. Ex parte Keyes, 214 USPQ 579 (Bd. App. 1982); In re McKenna, 203 F.2d 717, 97 USPQ 348 (CCPA 1953). As such, the Liu Declaration is being considered as an expert opinion of an interested party.
In reviewing the Liu Declaration, it has been found that the statements of surprising/unexpected results are conclusory and unsupported by factual evidence. The Liu Declaration points to Table 7 of the instant specification as well as a detailed discussion of the synergistic mechanism between EGCG and TGase to provide evidence of nonobviousness of the claimed combination of EGCG and TGase. However, the data provided in Table 7 and the discussion of the synergy between EGCG and TGase do not sufficiently establish a case for unexpected results because the examples are not commensurate with the scope of the claims, and the disclosure of Li show the synergistic behavior of EGCG and TGase for forming myofibrillar gels in surimi was known prior to the earliest filing date of the invention.
Therefore, the affidavit is not persuasive.
Response to Arguments
Applicant's arguments filed February 5, 2026 have been fully considered but they are not persuasive.
Applicant argues Tables 4 – 7 establish a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function (p. 9, paragraph 3; p. 11, paragraph 1).
Applicants argument has been carefully considered, however it is not persuasive. The results presented in the instant specification are not commensurate with the claims:
The examples fail to evaluate the claimed method across various types of fish. The examples only show a scenario wherein the fish is basa fish.
The examples fail to evaluate the range of incubation temperatures and times (i.e., 35 °C to 60 °C for 30 to 300 minutes). The examples only show a scenario wherein the restructured meat is incubated at 50 °C for 120 minutes.
The examples fail to evaluate the range of heating temperatures and times (i.e., 80 °C to 90 °C for 5 to 15 minutes). The examples only show a scenario wherein the restructured meat is heated at 90 °C for 10 minutes.
The examples only produce restructured meat with a protein content of 12 – 53%, not the entire range of greater than 20%.
Because the examples in the specification are not commensurate with the claims, the evidence relied upon has not established that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. See MPEP 716.02(b). Furthermore, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues the synergistic effects of EGCG and TGase are among the following:
(1) EGCG regulates the microenvironment of enzyme active sites to promote efficient cross-linking by TGase, thus constructing a uniform and tough composite gel;
(2) the antioxidant effect of EGCG protects the structural integrity of proteins and fats, provides high-quality substrates for cross-linking reactions, and inhibits the generation of off-flavors from the source while stabilizing the color; and
(3) the antibacterial properties of EGCG extends the shelf life of the recombined
meat, and combined with the optimized texture and fresh flavor, significantly improves the product consumption experience (p. 12, paragraph 2).
As addressed in the response to the Liu Declaration above, Li teaches the interaction of EGCG with myofibrillar proteins, including non-covalent interactions, promoted with crosslink of myofibrillar proteins and increased the gel strength (p. 3, paragraph 9). Li teaches EGCG and TGase exhibit a double-crosslinked effect to promote gel strength in myofibrilla protein gels (p. 3, paragraph 9 – p. 4, paragraph 1). The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues the synergy between EGCG and TGase amounts to a greater than expected result (p. 13, paragraph 4).
As addressed in the response to the Liu Declaration above, the synergistic behavior of EGCG and TGase for use in surimi has been documented prior to the filing date of the present invention. Li et al. (Double-crosslinked effect of TGase and EGCG on myofibrillar proteins gel based on physicochemical properties and molecular docking. Food Chemistry. (2021)) describes the same molecular docking mechanism as the Liu Declaration in surimi treated with EGCG and TGase (p. 8, Figure 4). Li teaches the combined treatment of surimi with EGCG and TGase results in an increase in breaking force and deformation, then a decrease with an increase in TGase or EGCG (p. 3, paragraph 9). Li shows this synergistic effect was known prior to the effective filing date of the invention. Furthermore, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
No claims are allowed.
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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/L.J.M./
Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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