DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 26 May 2026 is acknowledged.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1, 5, and 12-23
Withdrawn claims: None
Previously canceled claims: 3, 7, and 9-10
Newly canceled claims: 2, 4, 6, 8, and 11
Amended claims: 1 and 5
New claims: 12-23
Claims currently under consideration: 1, 5, and 12-23
Currently rejected claims: 1, 5, and 12-23
Allowed claims: None
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 5, 12-14, 17-20, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (US 2018/0160707 A1, cited on the IDS filed on 17 April 2023) in view of Ito (WO 2019/068663 A1).
Regarding claim 1, Han discloses egg-white protein-free wheat flour noodles containing low acetylated pea starch – Han discloses instant noodles ([0063]) prepared from a dough consisting of 9.5 kg of wheat flour and 0.5 kg of acetic acid-modified (i.e., acetylated) potato starch and water; the noodles do not comprise egg-white protein ([0059]). Han discloses that the starch that is used to make the noodles “may be one or more of sweet potato starch, corn starch, tapioca starch, potato starch, wheat starch, pea starch, and modified starches thereof ([0029]; claim 6). Regarding “low” acetylated pea starch, since Han teaches that the starch may be pea starch ([0029]) and the starch may be acetic acid-modified ([0035], [0059]), at least a modification amount directly above zero would be within the scope of what is disclosed by Han, which is considered to fall within the scope of low acetylated pea starch as claimed.
wherein the low acetylated pea starch is incorporated into the noodles at levels of from 5% to 20% of flour weight – Han teaches that the raw material powder may comprise 60 to 95 wt% of flour and 5 to 40 wt% of starch ([0034]). Where Han teaches that the starch may be a low acetylated pea starch as described above, Han teaches that the low acetylated pea starch is incorporated in an amount of 5 to 40 wt%. In terms of flour weight, this amounts to 5/95 to 40/60, or 5.26% to 66.7% of flour weight. The claimed range of 5% to 20% of flour weight overlaps the disclosed range of 5.26% to 66.7% of flour weight. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
wherein the noodles are instant noodles – “Next, the dried noodles were cooled at room temperature and packaged, thereby producing cup-type dry instant noodles.” ([0063]).
Han does not discuss that the acetyl value of the low acetylated pea starch is from 0.25 to 0.55%.
However, Ito teaches glass noodles comprising low acetylated pea starch (p. 6, lines 12-19) wherein the acetyl value of the low acetylated pea starch is between 0.25% and 0.5% (p. 5, lines 16-18, “Acetylated pea starch ‘B’”). The noodles consist of starch and water (p. 9, Example 3, Recipe Table), and as such are egg-white protein-free. Ito further teaches that acetylated starches with a maximum acetyl value of 2.5% (p. 4, line 19) benefit from easy cooking and are particularly useful in applications where the moisture level is restricted by competition from co-ingredients, e.g., flour-based noodles (p. 4, lines 26-29). The disclosed acetyl value range of between 0.25% and 0.5% lies inside the claimed range of 0.25% and 0.55%.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the noodles of Han to comprise a low acetylated pea starch having an acetyl value between 0.25 and 0.5% as taught by Ito. Since Han is silent regarding the acetyl value of the acetylated pea starch, one of ordinary skill in the art would have been motivated to consult Ito to determine an appropriate amount of acetylation for the modified pea starch. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Ito teaches acetylated pea starch at an acetyl value between 0.25 and 1% as an ingredient to prepare noodles with good texture (p. 10, line 16 – p. 11, line 26, referring to pea starch “A” and pea starch “B” of p. 5, lines 12-21) and that such starches are useful in flour-based noodles (p. 4, lines 26-29).
It is noted that while Ito discloses that pea starch “B” is less performant than pea starch “A”, pea starch “B” (acetyl value 0.25-0.5%) is still acceptable overall, and pea starch “C” (acetyl value 1.7-1.8%) is unacceptable and results in sticky noodles (p. 10, line 16 – p. 11, line 26). MPEP § 2123(I) states, “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also…Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. ‘The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.’).” As such, taking into consideration the teachings of Han and Ito, pea starch with an acetyl value of 0.25-0.5% would have been an obvious choice for one of ordinary skill in the art.
Claim 1 is therefore rendered obvious.
Regarding claim 5, Han teaches a method of formulating a wheat flour noodle composition having no egg white protein – Han teaches a method for producing cup-type non-fried dry instant noodles ([0020] – [0025]), comprising the steps of: mixing and kneading a raw material to make a noodle sheet ([0021]). The raw material may comprise one or more of flour and starch ([0027]). Han teaches exemplary embodiments wherein medium wheat flour ([0059]) and high gluten wheat flour ([0064] – [0066]) are used. Han discloses instant noodles ([0063]) prepared from a dough consisting of 9.5 kg of wheat flour and 0.5 kg of acetic acid-modified (i.e., acetylated) potato starch and water; the noodles do not comprise egg-white protein ([0059]).
comprising the step of incorporating low acetylated pea starch into the formulation of the composition – Han discloses that the starch that is used to make the noodles “may be one or more of sweet potato starch, corn starch, tapioca starch, potato starch, wheat starch, pea starch, and modified starches thereof ([0029]). Regarding “low” acetylated pea starch, since Han teaches that the starch may be pea starch ([0029]) and the starch may be acetic acid-modified ([0059]; see also [0064] – [0066]), at least a modification amount directly above zero would be within the scope of what is disclosed by Han, which is considered to fall within the scope of low acetylated pea starch as claimed.
wherein the low acetylated pea starch is incorporated to totally replace the egg white proteins required as viscous modifiers for maintaining the texture of the noodles after cooking in the formulation – The noodles do not comprise egg-white protein ([0059]; see also [0064] – [0066]). The pea starch is deemed as replacing any material that is not present in the noodle formulation. It is also noted that this wherein clause is non-limiting because replacing egg white proteins is a mental step, and not an active method step.
wherein the low acetylated pea starch is incorporated into the noodles at levels of from 5% to 20% of flour weight – Han teaches that the raw material powder may comprise 60 to 95 wt% of flour and 5 to 40 wt% of starch ([0034]). Where Han teaches that the starch may be a low acetylated pea starch as described above, Han teaches that the low acetylated pea starch is incorporated in an amount of 5 to 40 wt%. In terms of flour weight, this amounts to 5/95 to 40/60, or 5.26% to 66.7% of flour weight. The claimed range of 5% to 20% of flour weight overlaps the disclosed range of 5.26% to 66.7% of flour weight. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
wherein the noodles are instant noodles – “Next, the dried noodles were cooled at room temperature and packaged, thereby producing cup-type dry instant noodles.” ([0063]).
Han does not discuss that the acetyl value of the low acetylated pea starch is from 0.25 to 0.55%.
However, Ito teaches glass noodles comprising low acetylated pea starch (p. 6, lines 12-19) wherein the acetyl value of the low acetylated pea starch is between 0.25% and 0.5% (p. 5, lines 16-18, “Acetylated pea starch ‘B’”). The noodles consist of starch and water (p. 9, Example 3, Recipe Table), and as such are egg-white protein-free. Ito further teaches that acetylated starches with a maximum acetyl value of 2.5% (p. 4, line 19) benefit from easy cooking and are particularly useful in applications where the moisture level is restricted by competition from co-ingredients, e.g., flour-based noodles (p. 4, lines 26-29). The disclosed acetyl value range of between 0.25% and 0.5% lies inside the claimed range of 0.25% and 0.55%.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the noodles of Han to comprise a low acetylated pea starch having an acetyl value between 0.25 and 0.5% as taught by Ito. Since Han is silent regarding the acetyl value of the acetylated pea starch, one of ordinary skill in the art would have been motivated to consult Ito to determine an appropriate amount of acetylation for the modified pea starch. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Ito teaches acetylated pea starch at an acetyl value between 0.25 and 1% as an ingredient to prepare noodles with good texture (p. 10, line 16 – p. 11, line 26, referring to pea starch “A” and pea starch “B” of p. 5, lines 12-21) and that such starches are useful in flour-based noodles (p. 4, lines 26-29).
It is noted that while Ito discloses that pea starch “B” is less performant than pea starch “A”, pea starch “B” (acetyl value 0.25-0.5%) is still acceptable overall, and pea starch “C” (acetyl value 1.7-1.8%) is unacceptable and results in sticky noodles (p. 10, line 16 – p. 11, line 26). MPEP § 2123(I) states, “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also…Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. ‘The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.’).” As such, taking into consideration the teachings of Han and Ito, pea starch with an acetyl value of 0.25-0.5% would have been an obvious choice for one of ordinary skill in the art.
Claim 5 is therefore rendered obvious.
Regarding claim 12, Han and Ito teach the noodles according to claim 1.
Han does not discuss that the acetyl value of the low acetylated pea starch is between 0.32%.
However, as discussed regarding claim 1, Han and Ito render obvious noodles wherein the acetyl value of the low acetylated pea starch is from 0.25% to 0.5%. The claimed amount of 0.32% lies inside the disclosed range of 0.25% to 0.5%. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Claim 12 is therefore rendered obvious.
Regarding claim 13, Han and Ito teach the noodles according to claim 1.
Han also teaches that the noodles are instant noodles – “Next, the dried noodles were cooled at room temperature and packaged, thereby producing cup-type dry instant noodles.” ([0063]).
Han also teaches that the low acetylated pea starch is incorporated into the noodles at levels of 5% to 17.8% of flour weight – As discussed regarding claim 1, Han teaches that the low acetylated pea starch is incorporated in an amount of 5.26% to 66.7% of flour weight. The claimed range of 5% to 17.8% of flour weight overlaps the disclosed range of 5.26% to 66.7% of flour weight. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Claim 13 is therefore rendered obvious.
Regarding claims 14 and 17, Han and Ito teach the noodles according to claim 1.
Han also teaches that the noodles are instant noodles – “Next, the dried noodles were cooled at room temperature and packaged, thereby producing cup-type dry instant noodles.” ([0063]).
Han also teaches that the low acetylated pea starch is incorporated into the noodles at levels of 5% to 17.8% of flour weight – As discussed regarding claim 1, Han teaches that the low acetylated pea starch is incorporated in an amount of 5.26% to 66.7% of flour weight. The claimed range of 5% to 17.8% of flour weight overlaps the disclosed range of 5.26% to 66.7% of flour weight. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Han does not discuss that the acetyl value of the low acetylated pea starch is between 0.32%.
However, as discussed regarding claim 1, Han and Ito render obvious noodles wherein the acetyl value of the low acetylated pea starch is from 0.25% to 0.5%. The claimed amount of 0.32% lies inside the disclosed range of 0.25% to 0.5%. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Claims 14 and 17 are therefore rendered obvious.
Regarding claim 18, Han and Ito teach the method according to claim 5.
Han does not discuss that the acetyl value of the low acetylated pea starch is between 0.32%.
However, as discussed regarding claim 5, Han and Ito render obvious that the acetyl value of the low acetylated pea starch is from 0.25% to 0.5%. The claimed amount of 0.32% lies inside the disclosed range of 0.25% to 0.5%. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Claim 18 is therefore rendered obvious.
Regarding claim 19, Han and Ito teach the method according to claim 5.
Han also teaches that the noodles are instant noodles – “Next, the dried noodles were cooled at room temperature and packaged, thereby producing cup-type dry instant noodles.” ([0063]).
Han also teaches that the low acetylated pea starch is incorporated into the noodles at levels of 5% to 17.8% of flour weight – As discussed regarding claim 5, Han teaches that the low acetylated pea starch is incorporated in an amount of 5.26% to 66.7% of flour weight. The claimed range of 5% to 17.8% of flour weight overlaps the disclosed range of 5.26% to 66.7% of flour weight. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Claim 19 is therefore rendered obvious.
Regarding claims 20 and 23, Han and Ito teach the method according to claim 5.
Han also teaches that the noodles are instant noodles – “Next, the dried noodles were cooled at room temperature and packaged, thereby producing cup-type dry instant noodles.” ([0063]).
Han also teaches that the low acetylated pea starch is incorporated into the noodles at levels of 5% to 17.8% of flour weight – As discussed regarding claim 5, Han teaches that the low acetylated pea starch is incorporated in an amount of 5.26% to 66.7% of flour weight. The claimed range of 5% to 17.8% of flour weight overlaps the disclosed range of 5.26% to 66.7% of flour weight. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Han does not discuss that the acetyl value of the low acetylated pea starch is between 0.32%.
However, as discussed regarding claim 1, Han and Ito render obvious that the acetyl value of the low acetylated pea starch is from 0.25% to 0.5%. The claimed amount of 0.32% lies inside the disclosed range of 0.25% to 0.5%. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Claims 20 and 23 are therefore rendered obvious.
Claims 1, 5, 15-17, and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Umene et al. (JP 2020-005533 A, see translation provided) in view of Ito (WO 2019/068663 A1).
Regarding claim 1, Umene discloses egg-white protein-free wheat flour noodles containing processed pea starch – Umene discloses chilled noodles comprising wheat flour, glucose oxidase, gluten, pea starch, and water ([0014]). The chilled noodles include a flour, an additive containing glucose oxidase, gluten and pea starch as essential components ([0015]; claim 4). Egg-white protein is not required to make the noodles of Umene, thus Umene discloses egg-white protein-free noodles. Umene discloses that the pea starch that is used to make the noodles “may be unprocessed (raw starch) or processed starch processed by a known method ([0022]).
wherein the pea starch is incorporated into the noodles at levels of from 5% to 20% of flour weight – Umene teaches that the amount of added pea starch may be 0.05% to 20% based on the total amount of flour ([0023]). The claimed range of 5% to 20% of flour weight lies inside the disclosed range of 0.05% to 20% of flour weight. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
wherein the noodles are chilled noodles – ([0014]).
Umene does not discuss that the pea starch is low acetylated pea starch, wherein the acetyl value of the low acetylated pea starch is from 0.25 to 0.55%.
However, Ito teaches glass noodles comprising low acetylated pea starch (p. 6, lines 12-19) wherein the acetyl value of the low acetylated pea starch is between 0.25% and 0.5% (p. 5, lines 16-18, “Acetylated pea starch ‘B’”). The noodles consist of starch and water (p. 9, Example 3, Recipe Table), and as such are egg-white protein-free. Ito further teaches that acetylated starches with a maximum acetyl value of 2.5% (p. 4, line 19) benefit from easy cooking and are particularly useful in applications where the moisture level is restricted by competition from co-ingredients, e.g., flour-based noodles (p. 4, lines 26-29). The disclosed acetyl value range of between 0.25% and 0.5% lies inside the claimed range of 0.25% and 0.55%.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the pea starch of Umene with the low acetylated pea starch having an acetyl value between 0.25 and 0.5% as taught by Ito by simple substitution of one known element for another to obtain predictable results. See MPEP § 2143(I)(B). Umene teaches that in chilled noodles, when the gelatinized noodles are stored in a state containing moisture, there is a tendency that the texture such as elasticity and crispiness is reduced, and chilled noodles having improved texture such as hardness, elasticity, and crispiness is desired ([0007]). Umene teaches that such chilled noodles with improved texture can be provided by their invention ([0011]). Umene teaches that flour, glucose oxidase, gluten, and pea starch are essential to the invention ([0015]). Umene teaches that the pea starch that is used to make the noodles “may be unprocessed (raw starch) or processed starch processed by a known method ([0022]). Low acetylated pea starch is a processed pea starch. Umene further teaches that chilled noodles bind together during storage in the chilled state, and improvement to reduce this binding (i.e., stickiness) is desirable and is achieved by their invention. Ito teaches low acetylated pea starch (p. 6, lines 12-19) wherein the acetyl value of the low acetylated pea starch is between 0.25% and 0.5% (p. 5, lines 16-18, “Acetylated pea starch ‘B’”), and that acetylated starches with a maximum acetyl value of 2.5% (p. 4, line 19) benefit from easy cooking and are particularly useful in applications where the moisture level is restricted by competition from co-ingredients, e.g., flour-based noodles (p. 4, lines 26-29). Ito teaches that native pea starch and Acetylated pea starch “B” (with acetyl value between 0.25% and 0.5%) show a harder texture than Acetylated pea starch “A” (with acetyl value between 0.55% and 1% (p. 5, lines 13-15)) and that Acetylated pea starch “C” (with acetyl value between 1.7% and 1.8% (p. 5, lines 19-21) results in a too sticky texture (p. 10, lines 20-25). Therefore, Ito teaches that Acetylated pea starch “B” provides a similar hardness to native pea starch, and a less sticky texture than Acetylated pea starch “C”. As such, substitution of the pea starch of Umene with the low acetylated pea starch having an acetyl value between 0.25 and 0.5% as taught by Ito would predictably confer these desirable traits.
It is noted that while Ito discloses that pea starch “B” is less performant than pea starch “A”, pea starch “B” (acetyl value 0.25-0.5%) is still acceptable overall, and pea starch “C” (acetyl value 1.7-1.8%) is unacceptable and results in sticky noodles (p. 10, line 16 – p. 11, line 26). MPEP § 2123(I) states, “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also…Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. ‘The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.’).” As such, taking into consideration the teachings of Umene and Ito, pea starch with an acetyl value of 0.25-0.5% would have been an obvious choice for one of ordinary skill in the art.
Claim 1 is therefore rendered obvious.
Regarding claim 5, Umene discloses a method for formulating a wheat flour noodle composition having no egg white proteins – Umene discloses chilled noodles comprising wheat flour, glucose oxidase, gluten, pea starch, and water ([0014]). The chilled noodles include a flour, an additive containing glucose oxidase, gluten and pea starch as essential components ([0015]). Egg-white protein is not required to make the noodles of Umene, thus Umene discloses egg-white protein-free noodles. Umene teaches that the noodles are made by combining water and the additive with flour and kneading to prepare a noodle dough, rolling, cutting, pregelatinization and cooling/chilling ([0035] with reference to [0033]).
comprising the step of incorporating a processed pea starch into the formulation of the composition – Umene discloses that the pea starch that is used to make the noodles “may be unprocessed (raw starch) or processed starch processed by a known method ([0022]).
wherein the low acetylated pea starch is incorporated to totally replace the egg white proteins required as viscous modifiers for maintaining the texture of the noodles after cooking in the formulation – The noodles do not comprise egg-white protein ([0059]; see also [0064] – [0066]). The pea starch is deemed as replacing any material that is not present in the noodle formulation. It is also noted that this wherein clause is non-limiting because replacing egg white proteins is a mental step, and not an active method step.
wherein the pea starch is incorporated into the noodles at levels of from 5% to 20% of flour weight – Umene teaches that the amount of added pea starch may be 0.05% to 20% based on the total amount of flour ([0023]). The claimed range of 5% to 20% of flour weight lies inside the disclosed range of 0.05% to 20% of flour weight. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
wherein the noodles are chilled noodles – ([0014]; [0035]).
Umene does not discuss that the pea starch is low acetylated pea starch, wherein the acetyl value of the low acetylated pea starch is from 0.25 to 0.55%.
However, Ito teaches glass noodles comprising low acetylated pea starch (p. 6, lines 12-19) wherein the acetyl value of the low acetylated pea starch is between 0.25% and 0.5% (p. 5, lines 16-18, “Acetylated pea starch ‘B’”). The noodles consist of starch and water (p. 9, Example 3, Recipe Table), and as such are egg-white protein-free. Ito further teaches that acetylated starches with a maximum acetyl value of 2.5% (p. 4, line 19) benefit from easy cooking and are particularly useful in applications where the moisture level is restricted by competition from co-ingredients, e.g., flour-based noodles (p. 4, lines 26-29). The disclosed acetyl value range of between 0.25% and 0.5% lies inside the claimed range of 0.25% and 0.55%.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the pea starch of Umene with the low acetylated pea starch having an acetyl value between 0.25 and 0.5% as taught by Ito by simple substitution of one known element for another to obtain predictable results. See MPEP § 2143(I)(B). Umene teaches that in chilled noodles, when the gelatinized noodles are stored in a state containing moisture, there is a tendency that the texture such as elasticity and crispiness is reduced, and chilled noodles having improved texture such as hardness, elasticity, and crispiness is desired ([0007]). Umene teaches that such chilled noodles with improved texture can be provided by their invention ([0011]). Umene teaches that flour, glucose oxidase, gluten, and pea starch are essential to the invention ([0015]). Umene teaches that the pea starch that is used to make the noodles “may be unprocessed (raw starch) or processed starch processed by a known method ([0022]). Low acetylated pea starch is a processed pea starch. Umene further teaches that chilled noodles bind together during storage in the chilled state, and improvement to reduce this binding (i.e., stickiness) is desirable and is achieved by their invention. Ito teaches low acetylated pea starch (p. 6, lines 12-19) wherein the acetyl value of the low acetylated pea starch is between 0.25% and 0.5% (p. 5, lines 16-18, “Acetylated pea starch ‘B’”), and that acetylated starches with a maximum acetyl value of 2.5% (p. 4, line 19) benefit from easy cooking and are particularly useful in applications where the moisture level is restricted by competition from co-ingredients, e.g., flour-based noodles (p. 4, lines 26-29). Ito teaches that native pea starch and Acetylated pea starch “B” (with acetyl value between 0.25% and 0.5%) show a harder texture than Acetylated pea starch “A” (with acetyl value between 0.55% and 1% (p. 5, lines 13-15)) and that Acetylated pea starch “C” (with acetyl value between 1.7% and 1.8% (p. 5, lines 19-21) results in a too sticky texture (p. 10, lines 20-25). Therefore, Ito teaches that Acetylated pea starch “B” provides a similar hardness to native pea starch, and a less sticky texture than Acetylated pea starch “C”. As such, substitution of the pea starch of Umene with the low acetylated pea starch having an acetyl value between 0.25 and 0.5% as taught by Ito would predictably confer these desirable traits.
It is noted that while Ito discloses that pea starch “B” is less performant than pea starch “A”, pea starch “B” (acetyl value 0.25-0.5%) is still acceptable overall, and pea starch “C” (acetyl value 1.7-1.8%) is unacceptable and results in sticky noodles (p. 10, line 16 – p. 11, line 26). MPEP § 2123(I) states, “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also…Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. ‘The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.’).” As such, taking into consideration the teachings of Umene and Ito, pea starch with an acetyl value of 0.25-0.5% would have been an obvious choice for one of ordinary skill in the art.
Claim 5 is therefore rendered obvious.
Regarding claim 15, Umene and Ito teach the noodles according to claim 1.
Umene also teaches that the noodles are chilled noodles – ([0014]).
Umene as modified by Ito also teaches that the low acetylated pea starch is incorporated into the noodles at levels of 5% to 11.1% of flour weight – As discussed regarding claim 1, Umene teaches that the pea starch is incorporated in an amount of 0.05% to 20% of flour weight. The claimed range of 5% to 11.1% of flour weight lies inside the disclosed range of 0.05% to 20% of flour weight. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Claim 15 is therefore rendered obvious.
Regarding claims 16 and 17, Umene and Ito teach the noodles according to claim 1.
Umene also teaches that the noodles are chilled noodles – ([0014]).
Umene as modified by Ito also teaches that the low acetylated pea starch is incorporated into the noodles at levels of 5% to 11.1% of flour weight – As discussed regarding claim 1, Umene teaches that the pea starch is incorporated in an amount of 0.05% to 20% of flour weight. The claimed range of 5% to 11.1% of flour weight lies inside the disclosed range of 0.05% to 20% of flour weight. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Umene does not discuss that the acetyl value of the low acetylated pea starch is between 0.32%.
However, as discussed regarding claim 1, Umene and Ito render obvious noodles wherein the acetyl value of the low acetylated pea starch is from 0.25% to 0.5%. The claimed amount of 0.32% lies inside the disclosed range of 0.25% to 0.5%. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Claims 16 and 17 are therefore rendered obvious.
Regarding claim 21, Umene and Ito teach the method according to claim 1.
Umene also teaches that the noodles are chilled noodles – ([0014]).
Umene as modified by Ito also teaches that the low acetylated pea starch is incorporated into the noodles at levels of 5% to 11.1% of flour weight – As discussed regarding claim 1, Umene teaches that the pea starch is incorporated in an amount of 0.05% to 20% of flour weight. The claimed range of 5% to 11.1% of flour weight lies inside the disclosed range of 0.05% to 20% of flour weight. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Claim 21 is therefore rendered obvious.
Regarding claims 22 and 23, Umene and Ito teach the method according to claim 1.
Umene also teaches that the noodles are chilled noodles – ([0014]).
Umene as modified by Ito also teaches that the low acetylated pea starch is incorporated into the noodles at levels of 5% to 11.1% of flour weight – As discussed regarding claim 1, Umene teaches that the pea starch is incorporated in an amount of 0.05% to 20% of flour weight. The claimed range of 5% to 11.1% of flour weight lies inside the disclosed range of 0.05% to 20% of flour weight. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Umene does not discuss that the acetyl value of the low acetylated pea starch is between 0.32%.
However, as discussed regarding claim 1, Umene and Ito render obvious that the acetyl value of the low acetylated pea starch is from 0.25% to 0.5%. The claimed amount of 0.32% lies inside the disclosed range of 0.25% to 0.5%. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Claims 22 and 23 are therefore rendered obvious.
Response to Arguments
Claim Rejections – 35 U.S.C. § 103: Applicant’s arguments filed on 26 May 2026 have been fully considered, but they are not persuasive.
Applicant argued that the botanical source of the starch is essential to obtain noodles that maintain the texture when the egg-white proteins are removed (p. 12, ¶ 1 – p. 13, ¶ 1). Applicant asserted that the amended claims render moot the Office’s previous assertion that because Applicant’s data are not commensurate with the scope of the claims, there is no criticality of ranges or botanical source that can be demonstrated (p. 12, ¶ 1). Applicant argued that the amended claims are commensurate in scope with their evidence of unexpected results (p. 7, last ¶ – p. 9, ¶ 1). Applicant asserted that the formulations of Applicant’s data comprise 17.8% and 11.1% starch based on flour weight, in Example 1 and Example 2, respectively, and that these amounts lie inside the claimed range of 5% to 20% of flour weight and provide representative data points within the claimed scope (p. 8, ¶ 3). Applicant asserted that the amended acetyl value limitation is fully commensurate with the working examples, having an acetyl value of 0.32%, which is centrally located within the presently claimed range of 0.25% to 0.55% (p. 8, ¶ 4). Applicant further asserted that the amended claims correspond to instant noodles as in Example 1 and chilled noodles as in Example 2, and that Applicant successfully prepared egg-white protein-free wheat flour noodles containing low acetylated pea starch and demonstrated that such noodles exhibit satisfactory texture after cooking that is comparable to the texture of noodles comprising egg-white proteins, while also retaining their texture during a long time after cooking (p. 8, ¶ 5). Applicant submitted that the subject matter of the amended claims constitutes a fair representation of the exemplified embodiments and is commensurate in scope with the data of the Application as filed, and that a skilled artisan would reasonably expect to observe the advantageous technical effect over the entire claimed range of 5% to 20% low acetylated pea starch (p. 9, ¶ 1).
Applicant’s arguments have been considered, but they are not persuasive. The data presented continue to be not representative of the full scope of the claims. “Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the ‘objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.’ In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)”. See MPEP § 716.02(d). MPEP § 2145 provides, “a showing of unexpected results for a single member of a claimed subgenus, or a narrow portion of a claimed range would be sufficient to rebut a prima facie case of obviousness if a skilled artisan ‘could ascertain a trend in the exemplified data that would allow him to reasonably extend the probative value thereof.’ In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Evidence of the nonobviousness of a broad range can be proven by a narrower range when one skilled in the art could ascertain a trend that would allow him to reasonably extend the probative value thereof.)”
In the present case, the data neither cover the entire claimed ranges, nor are they sufficient to ascertain a trend in the data that would allow reasonable extension of the probative value of the data to the entire scope of the claims. For example, regarding the claimed range of 5% to 20% of flour weight of low acetyl pea starch incorporation, there is no indication as to whether the effects are observed at the lower half of the range, (i.e., between 5% and 11.1%). Additionally, the data point of 11.1% is only demonstrated to be effective in chilled noodles, but not necessarily in instant noodles. Likewise, 17.8% is shown to be effective in instant noodles, but not necessarily in chilled noodles. A single data point within a range is insufficient to establish a trend. Likewise, the acetyl value of 0.32% of the low acetylated pea starch used in the examples is not sufficient to establish a trend in the claimed range of 0.25% to 0.55%. The fact that data point lies within the claimed range does not mean that the data are commensurate in scope with the claims. At least two data points reasonably spanning the breadth of each range in each type of noodle are required to demonstrate a trend. Applicant is invited to supply such data or to further narrow the scope of the claims. Accordingly, Applicant’s further arguments on p. 12, ¶ 2 – p. 13, ¶ 1) are moot.
Applicant next argued that no combination of the prior art leads to Applicant’s invention (p. 9, ¶ 2 – p. 11). Applicant argued that the cited prior art in any combination does not provide any teaching, suggestion or reasoned basis that would have led a skilled person to the presently claimed solution (p. 9, ¶ 2). Applicant argued that Han does not disclose or suggest the substitution of egg-white protein with low acetylated pea starch, the acetyl value of the pea starch, nor does it address the texture’s stability after cooking as evaluated by the breaking distance (p. 9, ¶ 3).
Applicant’s argument has been considered, but it is not persuasive. Applicant has argued over features not claimed. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the substitution of egg-white protein with low acetylated pea starch and the textural stability after cooking as evaluated by breaking distance) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). It is noted that the mention of replacing egg white proteins with low acetylated pea starch in claim 5 is a mental step, and not a positively recited method step.
Additionally, Applicant has argued over Han individually. 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). The acetyl value absent from Han is supplied by Ito.
Applicant further argued that the examples of Han examples would direct the skilled artisan toward the upper end of Han’s disclosed starch content range to achieve faster rehydration, rather than toward lower starch levels (i.e., the 5-20 wt% of the claimed invention) (p. 9, ¶ 4 – p. 10, ¶ 2).
Applicant’s argument has been considered, but it is not persuasive. Han teaches that the raw material powder may comprise 60 to 95 wt% of flour and 5 to 40 wt% of starch ([0034]). In terms of flour weight, this amounts to 5/95 to 40/60, or 5.26% to 66.7% of flour weight. The claimed range of 5% to 20% of flour weight overlaps the disclosed range of 5.26% to 66.7% of flour weight. Therefore, a prima facie case of obviousness exists per MPEP § 2144.05(I). Any amount within the disclosed range is obvious. Furthermore, Applicant’s analysis of Han’s data is not persuasive. Thickness and width cannot be separated from starch content as factors affecting rehydration time. A direct comparison wherein starch content is the only variable is required. Examples 1 & 2 have a difference of 0.25 mm thickness as well as the different amount of starch and have a 2 min difference in rehydration time. Examples 3 & 4 have same starch content and width with a 0.15 mm difference in thickness and have a 1 min difference in rehydration time. A further increase in thickness would be expected to result in a longer rehydration time such that a 0.25 mm difference in thickness might increase the rehydration time difference to about 2 minutes, similar to that seen between Examples 1 & 2. This is supported by Han in paragraph [0073], which states, “…the rehydration time of the noodles after addition of hot water decreases as the thickness and width of the noodles decrease. This suggests that the width and thickness of the noodles may be adjusted depending on the texture and concept of the desired type of noodles”. Absent a direct comparison with starch as the only variable, Applicant’s arguments cannot be persuasive.
Applicant next argued that Ito proposes to replace mung bean starch in glass noodles with a low acetylated pea starch having an acetylation value ranging from 0.25% to 1%, preferably from 0.55% to 1%, which was considered the best candidate when comparing cooking resistance properties such as hardness (p. 10, ¶ 4). Applicant argued that the passage on p. 4, lines 10-29 of Ito merely discusses, in general terms, the known effect of acetyl groups on starch behavior, and the isolated reference to potential use in “flour-based noodles” is purely generic and does not specifically disclose or suggest the use of low acetylated pea starch in wheat flour-based noodles (p. 10, last ¶).
Applicant’s argument has been considered, but it is not persuasive. MPEP § 2123(I) states, “‘The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.’ In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).” Ito discloses pea starch with an acetyl value of 0.25% to 0.5% is suitable providing good texture to the noodles. Ito also states, even if generally, that acetylated pea starch is particularly useful in four-based noodles. This is enough of a suggestion that the acetyl values disclosed by Ito would be applicable to flour-based noodles such as those of Han.
Applicant next argued that Han is directed to gluten containing wheat flour noodles, whereas Ito is directed to essentially gluten-free, starch only glass noodles. Applicant argued that given these fundamental differences in formulation and texture-forming mechanisms, a skilled artisan starting from Han would have had no reason to consult Ito as the two differences address fundamentally distinct and incompatible systems (p. 11, ¶¶ 1-2).
Applicant’s argument has been considered, but it is not persuasive. Regarding the applicability of the teachings of Ito to the noodles of Han, while it is recognized that wheat flour noodles comprise wheat flour and a lower percentage of starch as compared to glass noodles, which consist of water and starch, it is considered to be reasonable to expect that the effect of the acetylated pea starches having the different ranges of acetylation values would also be exerted in a composition that also comprises flour. The glass noodles of Ito represent an isolated system of starch and water where one can study the effects of different properties (i.e., acetyl values) of the starches. It is common scientific practice to first study components in an isolated system, and then introduce the components into a system with more variables, with the expectation that the components would perform similarly. In the present case, one would a priori expect that using the acetylated pea starches of Ito in the wheat flour noodles of Han would have similar effects on properties of the noodles, including stickiness. As stickiness is undesirable in Ito, one of ordinary skill in the art would have found it obvious select an acetylated pea starch with an acetyl value of 0.25-0.5% or 0.55-1%.
Applicant next argued that even assuming Han and Ito were considered together, the teachings of Han and Ito would not lead to the present invention (p. 11, ¶ 3). Applicant argued that neither Han nor Ito teaches or suggests the claimed combination of (i) incorporating low acetylated pea starch having an acetyl value of 0.25-0.55%, (ii) in an amount of 5-20% of flour weight, (iii) in wheat flour noodle (Id.). Applicant argued that Han's teaching points toward substantially higher starch levels to achieve reduced drying and rehydration times, while Ito concerns glass noodles in which starch constitutes essentially the entire noodle-forming material, and thus, both references direct the skilled person toward starch contents far above the claimed 5% to 20% based on flour weight, and neither provides a reason to select the claimed moderate amount of low acetylated pea starch for replacing egg white proteins in wheat flour noodles while maintaining satisfactory texture (Id.). No teaching or motivation exists in the cited references that would lead the skilled person to the claimed solution with a reasonable expectation of success (Id.).
Applicant’s arguments have been considered, but they are not persuasive in light of the above discussions wherein it is explained that Han teaches wheat flour instant noodles comprising starch and that the starch may be acetylated pea starch and Ito teaches that an acetylation value of 0.25% to 0.5% produces acceptable noodle texture in glass noodles, which represent an isolated system for testing the effects of starches. Ito teaches acetylated pea starches are particularly useful in flour-containing noodles, and thus provides sufficient motivation to use such an acetyl value in the flour-based noodles of Han. Han teaches that the starch is present in a range of 5.26% to 66.7% of flour weight, which overlaps with the claimed range, and thus renders the claimed range obvious. Thus, the cited prior art provides the teachings and suggestion for modification, as well as the reasonable expectation of success in arriving at the claimed invention as required. It is again noted that the features of replacing egg white proteins in wheat flour noodles while maintaining satisfactory texture are not claimed. The claims require that the noodles are egg-white protein free, and this requirement is met by the prior art.
Applicant further argued that when combining Han and Ito, the skilled person in the art would not have been able to arrive at claim 5 (p. 13, ¶¶ 2-3). Applicant argued that claim 5 specifies that the low acetylated pea starch is incorporated to replace egg white proteins used in the formulation as viscous modifiers for maintaining the texture of the noodles after cooking, and this element is neither taught nor suggested by either Han or Ito (p. 13, ¶ 2). Applicant argued that the claimed method is not a mere omission of egg white proteins from a known noodle formulation, but a targeted replacement of the functional role of egg white proteins by a specific low acetylated pea starch, incorporated within the claimed range, in order to maintain cooked noodle texture (p. 13, ¶ 3).
Applicant’s arguments have been considered, but they are not persuasive. The clause, “wherein the low acetylated pea starch is incorporated to totally replace the egg white proteins required as viscous modifiers for maintaining the texture of noodles after cooking in the formulation” in claim 5 is a mental step or a reason for carrying out the positively recited method step of incorporating low acetylated pea starch into the formulation of the composition, and not a positively recited method step. Only positively recited method steps are given patentable weight. Where neither Han nor Ito teach egg white protein and teach acetylated pea starch, the requirement of a wheat flour noodle composition having no egg white protein, comprising the step of incorporating low acetylated pea starch into the formulation of the composition is met by the proposed modification of Han with Ito.
Claims 1, 5, and 12-23 are rejected as presented hereinabove.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/JAMES P. SHELLHAMMER/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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