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 Request for Continued Examination (RCE under 37 CFR 1.114) and the Response and Amendment filed 24 November 2025 is acknowledged.
Applicant has overcome the following by virtue of amendment of the claims: (1) the objection to claim 5 has been withdrawn; (2) the 112(b) rejections of claims 4-6 and 8 have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-2, 4-6, 8, and 11
Withdrawn claims: None
Previously canceled claims: 3, 7, and 9-10
Newly canceled claims: None
Amended claims: 1, 4-5, and 8
New claims: 11
Claims currently under consideration: 1-2, 4-6, 8, and 11
Currently rejected claims: 1-2, 4-6, 8, and 11
Allowed claims: None
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 24 November 2025 has been entered.
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 1-2, 4-6, 8, and 11 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 claims 1 and 4, 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 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%. The claimed range of 5% to 20% of flour weight overlaps or lies inside the disclosed range of 5 to 40 wt%. 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 0.25 and 1% (re: claim 1) or between 0.55 and 1% (re: claim 4).
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 0.55 and 1% (p. 5, lines 13-15, “Acetylated pea starch ‘A’”). The noodles consist of starch and water (p. 6, Example 1, 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).
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 0.55 and 1% 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% and preferably between 0.55 and 1% as an ingredient to prepare noodles with good texture (p. 11, lines 23-26, referring to p. 5, lines 12-21) and that such starches are useful in flour-based noodles (p. 4, lines 26-29).
Claims 1 and 4 are therefore rendered obvious.
Regarding claim 2, Han and Ito teach the noodles of 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]).
Claim 2 is therefore rendered obvious.
Regarding claims 5 and 8, Han teaches a method of formulating a wheat flour noodle composition – 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.
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 in to replace egg white proteins used 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 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%. The claimed range of 5% to 20% of flour weight overlaps or lies inside the disclosed range of 5 to 40 wt%. 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 0.25 and 1% (re: claim 5) or between 0.55 and 1% (re: claim 8).
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 0.55 and 1% (p. 5, lines 13-15, “Acetylated pea starch ‘A’”). The noodles consist of starch and water (p. 6, Example 1, 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).
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 0.55 and 1% 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% and preferably between 0.55 and 1% as an ingredient to prepare noodles with good texture (p. 11, lines 23-26, referring to p. 5, lines 12-21) and that such starches are useful in flour-based noodles (p. 4, lines 26-29).
Claims 5 and 8 are therefore rendered obvious.
Regarding claim 6, Han and Ito teach the method of claim 5.
Han also teaches that the noodles are instant noodles – Han teaches that the method is “for producing cup-type non-fried dry instant noodles” ([0020]).
Claim 6 is therefore rendered obvious.
Regarding claim 11, Han and Ito teach the method of claim 1.
Han does not discuss that the acetyl value of the low acetylated pea starch is between 0.25 and 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).
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 11 is therefore rendered obvious.
Response to Arguments
Claim Objections:
Applicant has overcome the objection to claim 5 by amendment. Accordingly, the objection has been withdrawn.
Claim Rejections – 35 U.S.C. § 112:
Applicant has overcome the 35 U.S.C. § 112(b) rejections of claims 4-6 and 8 based on amendment to the claims. Accordingly, the 35 U.S.C. § 112(b) rejections have been withdrawn.
Claim Rejections – 35 U.S.C. § 103:
Applicant’s arguments filed on 24 November 2025 have been fully considered, but they are not persuasive.
Applicant first argued that one of ordinary skill in the art would not have had a reasonable expectation of success in modifying the noodles of Han with the teachings of Ito. Applicant argued that the influence of adding modified starches as additives in instant noodle preparation is highly empirical and cannot reasonably be predicted a priori, and therefore require a higher degree of specificity and experimental validation in prior art to meet the necessary threshold of reasonable expectation. Applicant argued that the cited prior art references do not meet this threshold (pp. 8-9, § 1.2).
Applicant’s arguments have been considered, but they are not persuasive. Applicant is reminded of the criteria for the requirement of a reasonable expectation of success. MPEP § 2143.02(I) states, “Where there is a reason to modify or combine the prior art to achieve the claimed invention, the claims may be rejected as prima facie obvious provided there is also a reasonable expectation of success. The reasonable expectation of success requirement refers to "the likelihood of success" in combining or modifying prior art disclosures to meet the limitations of the claimed invention. See Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1375, 2023 USPQ2d 1100 (Fed. Cir. 2023) and Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367, 119 USPQ2d 1171, 1176 (Fed. Cir. 2016).”.
The claimed invention is an egg-white protein-free wheat flour noodle composition containing low acetylated pea starch with an acetyl value of between 0.25 and 1%, wherein the low acetylated pea starch is incorporated into the noodles at levels of 5% to 20% of flour weight, and a method of making those noodles comprising incorporating the low acetylated pea starch at the recited proportion. The limitations of the claimed invention would be met by modifying the noodle composition of Han with the teachings of Ito. As described in the rejections of claims 1 and 5 hereinabove, Han teaches noodles made of wheat flour and 5-40% starch which may be modified starch from pea. An exemplary modification is disclosed as acetylation. Han does not discuss the acetyl value of the starch. However, Ito teaches that acetylated pea starch with an acetyl value of up to 2.5% is useful in preparing flour-based noodles. The claimed range of 0.25 to 1% lies inside the disclosed range of up to 2.5%. Ito further teaches that in glass noodles, replacing mung bean starch with acetylated pea starch with acetyl values of 0.25-0.5% (acetylated pea starch B) or 0.55-1% (acetylated pea starch A) produces noodles with acceptable characteristics compared to noodles produced with mung bean starch. Ito teaches that pea starch with an acetyl value of between 1.7 and 1.8% (acetylated pea starch C) produced unacceptable, sticky noodles. The proposed modification of the noodles of Han to use the low acetylated pea starch (acetylated pea starch A or acetylated pea starch B) of Ito meets the limitations of the claims, therefore meeting the requirement for a reasonable expectation of success.
Applicant next argued that Han teaches away from the invention as presently claimed because data from Han’s examples would direct the skilled artisan toward the upper end of Han’s disclosed starch range content (i.e., closer to 40 wt%) to achieve faster rehydration, rather than toward lower starch levels (i.e., the 5-20 wt% of the claimed invention) (p. 9, ¶ 2 – p. 10, ¶ 2).
Applicant’s argument has been considered, but it is not persuasive. Han discloses starch in the range of 5-40 wt% ([0034]). The claimed range of 5-20 wt% lies inside the disclosed range. 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 the data presented in the table on pp. 9-10 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 the botanical origin of the starch highly impacts noodle texture as exhibited by the breaking distance of the noodles, and that the application shows that low acetylated pea starch exhibits a distinct post-cooking texture evolution compared to potato- or tapioca-based starches (p. 10, ¶ 3, referring to Applicant’s data presented on pp. 6-8). Applicant argued that Han exemplifies acetylated potato starch with no disclosed acetylation value, and as such, fails to provide a reasonable expectation of success at least with respect to the influence of varying botanical origin of the starch, at a given acetylation value, on the texture of resulting noodles, and the influence of varying the acetylation value of the starch for a given botanical origin, on the texture of the resulting noodles. Applicant argued that Han neither discloses nor suggests, and certainly does not provide a reasonable expectation of success, regarding the claimed combination of pea starch and the claimed acetylation range (0.25-1%), let alone the specific level of incorporation of such starch within a wheat flour noodle formulation (p. 10, ¶ 4 – p. 11, ¶ 3). Applicant has argued against 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 present rejections rely on the combination of Han and Ito. Therefore, Applicant’s arguments regarding the deficiencies of Han cannot be found to be persuasive.
Applicant next argued that Han and Ito, even if combined, fail to render the claimed invention obvious. Applicant argued that Ito relates to glass noodles, which consist solely of starch and water (raw material powder 100% starch), and Han and the present invention concern flour-based noodles systems. Han teaches raw material powder comprising 60 to 95 wt% flour and 5 to 40 wt% starch, and the invention teaches wheat flour based noodles comprising low acetylated pea starch at 5% to 20% of flour weight. 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, ¶¶ 4-5).
Appliant’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 selected 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 skilled artisan would still lack any reasonable expectation at successfully arriving at the subject matter as instantly claimed. Applicant argued that Ito merely notes in its introductory section that acetylation weakens intra-granular starch interactions, allowing gelatinization at lower cooking temperature that may potentially be useful in low moisture environments, e.g., flour based noodles. Applicant insisted that the teachings of Ito are exclusively related to glass noodles and provide no disclosure, suggestion, or reasonable expectation of success regarding the selection of pea starch as the botanical source starting from Han’s wheat flour-based noodles, the acetylation level of such starch (0.25-1%), nor the specific incorporation range of 5-20 wt% of acetylated pea starch in a wheat-flour noodle matrix to achieve the desired texture. Applicant argued that Ito’s disclosure is entirely generic in this respect (p. 11, ¶ 6 – p. 12, ¶ 2).
Applicant’s arguments have been considered, but they are not persuasive. To be clear, p. 4, lines 26-29 of Ito state, “Such starches benefit from easy cooking and are particularly useful in low moisture environments and in applications where the moisture level is restricted by competition from co- ingredients, e.g. in extruded and coated snacks, frozen fish and cooked meat products, flour based noodles, bakery products and in various frozen or cold stored ready-to-eat menus.”. As explained above, the teachings of Ito are applicable to the noodles of Han, despite the noodles of Han also comprising flour. Ito teaches the claimed acetylation values, and Han teaches the claimed amount of acetylated pea starch in the noodle composition. As also explained above, the expectation of success requirement has been met by Han and Ito.
Applicant again argued that Han teaches away from the claimed invention (p. 12, ¶ 3). Applicant’s argument has been addressed above, and is not persuasive.
Applicant next argued that the experimental data in the present application further confirm that the botanical origin has a decisive influence on the texture of flour-based noodles, as quantified by breaking distance, and Han provides no teaching or indication whatsoever to substitute potato starch with pea starch, much less to select a low acetylated form of pea starch, at a specific, limited content, to achieve the observed technical effect of egg-white replacement. (p. 12, ¶ 4). Applicant asserted that these results were unexpected (p. 13, ¶ 2).
Applicant’s assertion of unexpected technical results is acknowledged. Applicant’s argument has been considered, but it is not found to be persuasive. MPEP § 2145 states, “If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc)”, and “[r]ebuttal evidence may include evidence of ‘secondary considerations,’ such as ‘commercial success, long felt but unsolved needs, [and] failure of others.’ Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 4459, 467. See also, e.g., In re Piasecki, 745 F.2d 1468, 1473, 223 USPQ 785, 788 (Fed. Cir. 1984) (commercial success). Rebuttal evidence may also include evidence that the claimed invention yields unexpectedly improved properties or properties not present in the prior art. Rebuttal evidence may consist of a showing that the claimed compound possesses unexpected properties. Dillon, 919 F.2d at 692-93, 16 USPQ2d at 1901. A showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997)”. However, as provided by MPEP § 2145(II), “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979)”, and “‘[t]he fact that appellant 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.’ Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)”. Furthermore, “[e]vidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978).” See MPEP § 716.02(c)(I). “‘Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof.; In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967)”. See MPEP § 716.02(c)(II).
“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).
In the present case, Applicant’s evidence is not commensurate in scope with the claimed invention. The examples are not commensurate in scope with the claimed invention because it cannot be ascertained whether the alleged unexpected result occurs over the entire claimed ranges and combinations of the claimed ingredients from the examples provided, and none of the claims are directed toward the specific embodiment provided by any of the examples.
Applicant’s data are obtained from various formulations that comprise 15% starch. It cannot be ascertained from the data whether the alleged unexpected result would be observed over the entire claimed range of 5% to 20% low acetylated pea starch. Additionally, Applicant’s data regarding low acetylated pea starch is derived from an example wherein the low acetylated pea starch has an acetyl value of 0.32%. It cannot be ascertained whether the alleged unexpected result occurs over the entire claimed range of 0.25-1% or even 0.25-0.55% as in claim 11, let alone 0.55-1% as in claims 4 and 8, which is not even represented by the evidentiary amount of 0.32%. Applicant’s data show that acetylated pea starch with an acetyl value of 1.9% does not confer the desired properties to the noodles, but it is unclear where the transition from desirable/acceptable to unacceptable occurs based on the provided data. It is suggested that Applicant amends the scope of the claims to be commensurate with the data provided, provides additional data that is commensurate with the claims, or both.
Applicant argued that there exists no motivation to combine Han and Ito, nor any reasonable expectation of success that such a combination would yield the presently claimed invention. The prior art provides no teaching or suggestion that egg-white protein-free wheat flour noodles could be prepared replacing totally the egg-white proteins by low acetylated pea starch at the acetylation level and incorporation levels as recited in amended claim 1, while still maintaining the desired noodle texture.
Applicant’s argument has been considered, but it is not persuasive. Applicant’s data are not commensurate with the claims. Therefore, no criticality of ranges or botanical source can be demonstrated. Han renders obvious the choice of acetylated pea starch for use in the wheat-flour noodles, as well as the range of 5-40 wt% inclusion. Han is silent regarding the acetylation value of the pea starch. Hence one of ordinary skill in the art would have been motivated to consult related art, such as Ito, to identify a suitable acetylated pea starch. Ito teaches that acetylated pea starches of the claimed acetylation values, while used in glass noodles, are also particularly useful in flour-based noodles. None of the noodles of Han nor Ito contain egg-white proteins. As such, the requirements for motivation and expectation of success are met.
Applicant further argued that, absent hindsight, there is no reason for a skilled artisan to arrive at the instantly claimed invention from a reading of the cited documents (p. 13, ¶ 3).
In response to applicant's argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
As described throughout the responses to Applicant’s arguments above, one of ordinary skill in the art would have arrived at the claimed invention given only the teachings of Han and Ito. Applicant’s argument is therefore not persuasive.
Claims 1-2, 4-6, 8, and 11 are rejected as presented hereinabove.
Conclusion
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/JAMES P. SHELLHAMMER/Examiner, Art Unit 1793
/Jennifer McNeil/Primary Examiner, Art Unit 1793