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 .
Claim Objections
Claims 7-8 are objected to because of the following informalities:
Regarding claim 7, in line 2 after “compound in” delete “step”.
Regarding claim 8, in line 4 before “mixing” delete “a” and insert “the” since “a mixer” is now recited in claim 1.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-7, 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Ariswalla et al. (US 2015/0374005 A1) in view of Laurent et al. (US 2019/0335788 A1) and Sherlock et al. (US 2018/0230179 A1).
Regarding claim 1, Ariswalla et al. teaches comminuting insects to form a pulp or puree, splitting the pulp or puree into a fat fraction, a solids-containing fraction, and “larvae water” i.e., aqueous fraction (example 1 paragraphs 43 and 45), combining the aqueous fraction and the solids-containing fraction, reducing the size of the mixture, and spray drying the size reduced mixture to obtain a dried protein meal (example 2 paragraph 47; claims 1-2 and 6). While example 1 is cited to teach the details of recited steps “a)” and “b),” the rejection itself is based on the embodiment of example 2 which recites “example 1 is repeated except that the larvae water and solids-containing fraction were combined.”
It is noted that Applicant’s specification discloses “comminution” can be performed by a cutter or in a press, where the “cutter” is “a machine for comminution which is operated continuously and is equipped with a cutting device” (paragraphs 21-22). The micro-cutter mill of Ariswalla et al. reads on the disclosed machine (paragraphs 19 and 24-25). Further, the “further reduced in size” of example 2 includes dosing the aqueous and solids fractions into the micro-cutter mill and mixing (paragraph 24). Thus, the mixing is construed to be done with “a mixer” and the size-reduced mixture of example 2 is construed to form a “homogenous compound” within the cutter mill prior to said spray drying.
Ariswalla et al. does not teach reducing the water content of the aqueous fraction.
Laurent et al. teaches a method for treating insects by separation and obtaining a powder for food (abstract), comprising separating the insect into fat, aqueous, and solids fractions (paragraph 104), then concentrating the aqueous fraction via evaporator in order to increase dry matter within the fraction (paragraphs 105-111), the concentration providing the advantages of saving steam and avoiding microbiological contamination (paragraph 118).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Ariswalla et al. to reduce the water content of the aqueous fraction after splitting in order to similarly increase dry matter concentration in the fraction, since there is no evidence of criticality or unexpected results associated with the claimed feature, and to provide the steam saving and contamination protection advantages taught by Laurent et al.
Ariswalla et al. does not teach portions of the dried protein meal are fed back to the mixer of step d).
Sherlock et al. teaches a method of purifying proteins (abstract) comprising drying a soluble protein product to form a dry protein concentrate (paragraph 120), where back-mixing is a known process in which the soluble protein product is mixed with a volume of dry protein concentrate prior to drying, where back-mixing allows for total moisture content to be controlled to within the specifications of a dryer mechanism, thereby reducing operational costs e.g., wear and tear (paragraph 123).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Ariswalla et al. to back-mix a portion of the dried protein meal back into the mixer of step c) since the prior art acknowledges the process for controlling water content of a protein solution before drying, and in order to similarly minimize wear and tear, thereby reducing operational costs.
Regarding claim 3, the claim recites alternatives. For the sake of examination, the alternative “evaporator” is chosen.
The combination applied to 1 teaches removal of water by evaporation. The same combination is applied to claim 3 and would have been obvious for the same reasons.
Regarding claim 4, Ariswalla et al. does not teach the dried protein meal is ground after step d).
Laurent et al. further teaches mixing the concentrated aqueous fraction and solid fraction (paragraphs 121-122), homogenizing (paragraph 123), drying (paragraphs 126-127), and grinding the dried mixture to form a powder having a desired particle size e.g., 0.1-1.5 mm to form an “insect meal” (paragraphs 135-141).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Ariswalla et al. to further grind the dried protein material since the reference already suggests further processing the obtained streams (paragraph 41), since the prior art recognizes such a process for dried insect protein material, and in order to obtain a desired particle size for specific applications and/or desired characteristics such as texture, consistency, and flowability.
Regarding claim 5, the comminuting is performed by a cutter mill as stated above.
Regarding claim 6, the pulp is separated into the fat fraction and combined protein fraction using a decanter (paragraph 43), and the combined protein fraction is further separated into the aqueous fraction and solids-containing fraction by the decanter (paragraph 45), where decanters are art-recognized physical separators that include 3-phase separation (paragraphs 21-22).
Regarding claim 7, the size reduction performed in example 2 is performed by a cutter mill as explained for claim 1, where the cutter mill uses a “relatively small sieve mesh, for example 1mm”. The milling process would have necessarily included “comminuting clumps of the homogenous compound in step d) or in step e)” in order to obtain size-reduced particles that pass through said sieve mesh for subsequent drying.
Regarding claim 11, the homogenous compound of example 2 is spray dried, necessarily requiring a “drying apparatus”, and including a device (micro-cutter mill with sieve mesh) that comminutes clumps of the homogenous compound as explained for claims 1 and 7. Since the drying apparatus receives the compound that has been size reduced by the cutter mill, the drying apparatus is construed to include the cutter mill.
Regarding claim 13, Ariswalla et al. teaches spray drying as stated for claim 1. The reference further teaches that drying can be performed by other methods such as drum drying or disc drying (paragraph 24), which are known to be types of “rotary” driers.
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Ariswalla et al. to use a rotary dryer as a matter of choice from known drying methods, since there is no evidence of criticality or unexpected results associated with the claimed feature, and as a substitution of art recognized equivalents suitable for the purpose of drying protein material.
Claims 8, 10, 14 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Ariswalla et al. in view of Laurent et al. and Sherlock et al. as applied to claims 1, 3-7, 11 and 13 above, and further in view of Dossey (US 2015/0132433 A1).
Regarding claim 8, the limitation “by means of at least one conveying device” is given its broadest reasonable interpretation to encompass any suitable art-recognized conveying device.
Ariswalla et al. does not teach the homogenous compound is fed to the drying apparatus during and/or after step d) by means of at least one conveying device which is a standalone device or part of the mixer.
Dossey teaches a method of producing a dried insect product (abstract), where heated insect slurry is recirculated through a colloid mill and then conveyed to a spray dryer by a known conveying device such as a pump (paragraph 76). The conveying and drying would have necessarily occurred after forming the homogenous compound in step c). The pump would have necessarily been fluidly connected to the mill, and therefore is construed to be “part of the mixer”.
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Ariswalla et al. to convey the homogenous compound to the drying apparatus by a pump that is part of the mill since such a means is well-known in the art for conveying liquid food products, since there is no evidence of criticality or unexpected results associated with the claimed feature, and therefore to combine prior art elements according to known methods to yield predictable results of transporting the homogenous compound of Ariswalla et al. to a desired part of the process.
Regarding claims 10, 14 and 19, Ariswalla et al. teaches air drying (paragraph 24), but does not teach the temperature of the drying air being less than or equal to 200oC (claim 14) and between 110-160oC (claim 19), and the dried protein meal is cooled after drying step d) (claim 10).
Dossey further teaches the dryer having a mixing nozzle, where the slurry is heated by mixing with inlet air having a temperature of about 170oC, and the outlet air temperature ranging from 76.1-86.6oC, to obtain a final moisture level of 7.23% (paragraphs 76-77). Since the air temperature decreases toward the outlet, one of ordinary skill in the art would have reasonably expected the air temperature to, at the very least, pass through the claimed range.
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Ariswalla et al. to use drying air at the claimed temperature ranges since the prior art recognizes such temperatures for drying insect products, since there is no evidence of criticality or unexpected results associated with the claimed feature, and since the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as degree/rate of drying, final moisture level, and minimization of protein denaturization by limiting air temperature.
Since the spray drying of modified Ariswalla et al. heats the homogenous compound to above ambient temperature, one of ordinary skill in the art would have reasonably expected some degree of cooling to occur after drying e.g., while the dried material is stored and/or conveyed to further processing and packaging.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Ariswalla et al. in view of Laurent et al. and Sherlock et al. as applied to claims 1 and 11 above, and further in view of Paul (US 2022/0369670 A1).
Regarding claim 12, Ariswalla et al. does not teach the drying apparatus comprises a fluidized bed dryer. However, the reference does not particularly limit the drying method/device used, and indicates “other methods are also possible” (paragraph 24).
Paul teaches a method for converting insects into nutrient streams (abstract), where the protein fraction and solid-containing fraction are dried by “relatively mild heating conditions” such that the “aqueous protein fraction will have retained their functionality”, where such drying means include fluidized bed drying (paragraph 81). Further, drying the protein fraction and solid containing fraction together is preferably by fluidized bed drying (paragraph 71).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Ariswalla et al. to use a fluidized bed drying apparatus since the reference does not particularly limit the drying method/device, since the prior art recognizes that separated insect streams can be dried using a fluidized bed, where such a drying method is recognized to use mild heating conditions to retain protein functionality, and therefore to combine prior art elements according to known methods to yield predictable results and/or as a substitution of art recognized equivalents suitable for the purpose of drying foods prepared from insect material, see MPEP 2143 I.(A) and 2144.06 II.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Ariswalla et al. in view of Laurent et al. and Sherlock et al. as applied to claims 1 and 11 above, and in view of Paul and Scott (US 4,419,834 A).
Regarding claim 15, the limitation “treatment zone” is interpreted in view of Applicant’s specification to encompass an area within a single drying apparatus 11 (figure 3; paragraph 61), where multiple “treatment zones” correspond to different areas (e.g., zones 21, 23 and 25) and/or processing parameters (e.g., air streams 22, 24 and 26).
Ariswalla et al. does not teach the drying apparatus includes at least two treatment zones.
The combination of Ariswalla et al. with Paul applied to claim 12 renders obvious a fluidized bed dryer. The same combination is applied to claim 15 and would have been obvious for the same reasons.
Scott teaches a fluidized bed apparatus for treating particulate matter (abstract), including food (column 1 lines 11-13), where the apparatus comprises longitudinal conveyor 32 having upper run 34 and lower run 36 (figure 1; column 3 lines 14-17), where the conveyor extends through drying compartments 26, 28 and 30 (column 3 lines 21-22), where the temperature and velocity of the drying air in each compartment can be separately regulated e.g., the adapting the temperature and velocity of the air in the initial fluidizing compartment to counteract higher moisture content of the material dried in said zone (column 3 lines 4-13).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Ariswalla et al. to include multiple treatment zones in the fluidized bed dryer since the prior art recognizes such features for drying food particulates, in order to facilitate drying by controlling air temperature and velocity of individual compartments based on the moisture content and/or drying phase, and to combine prior art elements according to know methods to yield predictable results drying food particulates.
Claims 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Ariswalla et al. in view of Laurent et al., Sherlock et al., and Paul as applied to claim 12 above, and further in view of Ter Haar et al. (US 2014/0030382 A1), hereon referred to as “Ter”.
Regarding claims 16-18, the combination applied to claim 12 does not teach the fluidized bed dryer comprises a shaking fluidized bed dryer having a frequency of movement as recited by the respective claims.
Ter teaches a method of forming a food product by coating (abstract), where coating is performed on a vibrating conveyor, the vibration causing fluidization of the food (paragraph 35). The frequency of vibration can be e.g., about 1 to about 5 Hz (paragraph 46), where vibration frequency can be varied based on desired process properties (paragraph 34).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Ariswalla et al. to shake the fluidized bed dryer at the claimed frequency ranges since the prior art recognizes the values are sufficient for fluidization of a food material to be treated, to facilitate surface area exposure of the meal during drying, since there is no evidence of criticality or unexpected results associated with the claimed ranges, and since the values would have been used during the course of routine experimentation and optimization procedures due to factors such as fluidization and flow characteristics of the protein material during drying.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-8 and 10-19 (particularly claim 1) are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 (particularly claims 1 and 6) of U.S. Patent No. 10,537,118 B2 in view of Laurent et al. and Sherlock et al.
The ‘118 patent teaches the features of steps a)-b) and d)-e), but does not teach reducing the water content of the aqueous fraction and a portion of the dried protein meal is fed to the mixer.
Laurent et al. teaches a method for treating insects by separation and obtaining a powder for food (abstract), comprising separating the insect into fat, aqueous, and solids fractions (paragraph 104), then concentrating the aqueous fraction via evaporator in order to increase dry matter within the fraction (paragraphs 105-111), the concentration providing the advantages of saving steam and avoiding microbiological contamination (paragraph 118).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of the ‘118 patent to reduce the water content of the aqueous fraction after splitting in order to similarly increase dry matter concentration in the fraction, since there is no evidence of criticality or unexpected results associated with the claimed feature, and to provide the steam saving and contamination protection advantages taught by Laurent et al.
Sherlock et al. teaches a method of purifying proteins (abstract) comprising drying a soluble protein product to form a dry protein concentrate (paragraph 120), where back-mixing is a known process in which the soluble protein product is mixed with a volume of dry protein concentrate prior to drying, where back-mixing allows for total moisture content to be controlled to within the specifications of a dryer mechanism, thereby reducing operational costs e.g., wear and tear (paragraph 123).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of ‘118 patent to back-mix a portion of the dried protein meal back into the mixer of step c) since the prior art acknowledges the process for controlling water content of a protein solution before drying, and in order to similarly minimize wear and tear, thereby reducing operational costs.
Response to Arguments
Applicant's arguments filed 2/16/2026 have been fully considered but they are not persuasive.
The rejection of claims 1, 5-7, and 11 under 35 USC 102(a)(1) as being anticipated by Ariswalla is withdrawn in view of the amendments to claim 1. The amendments necessitated new grounds of rejection, and the claims are now rejected under 35 USC 103 as unpatentable over Ariswalla in view of Laurent and Sherlock as stated above.
Applicant argues Laurent does not teach or suggest one or more of reducing the water content of the aqueous fraction or feeding a portion of the dried protein meal into the mixer.
This is not persuasive since the reference teaches separating the insect into fat, aqueous, and solids fractions (paragraph 104), then concentrating the aqueous fraction via evaporator in order to increase dry matter within the fraction (paragraphs 105-111) as stated for claim 1. The reference is not relied on to teach the feeding limitation, which relies on Sherlock instead.
Applicant argues Sherlock is not directed to insect larvae, pupae, and worms, and requires high energy inputs and/or a number of chemical processes. By contrast, the claimed methods are directed to requiring low energy inputs and the avoidance of chemical extractive processes. One of ordinary skill would not have modified to select the specific “back-mixing” to the detriment of the other potential steps taught by Sherlock.
This is not persuasive since the reference is directed to processing and purifying proteins suitable for consumption from an alternative protein source (paragraphs 3 and 6) and therefore within Applicant’s field of endeavor. Likewise, the reference is reasonably pertinent to the problem with which inventor was concerned since the method produces a consumable protein product in a manner requiring decreased water and/or energy costs (paragraph 4). Further, the features upon which Applicant relies (i.e., low energy inputs and avoidance of chemical extractive processes) are not recited in the rejected claims. 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). Regardless, Sherlock still teaches back-mixing as claimed is known for controlling moisture content and reduces operational costs for the same type of protein concentration/isolation process, and therefore motivates one of ordinary skill to include back-mixing into the process of Ariswalla.
In response to Applicant's argument on pages 8-9 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). Sherlock provides both the teaching and the motivation as stated above.
Applicant’s arguments against the dependent claims and respective prior art combinations have been fully considered, but the amendment to claim 1 necessitated new grounds of rejection as stated above. The instant combination of Ariswalla, Laurent and Sherlock teach and/or render obvious all the features recited by claim 1.
Applicant’s argument against the non-statutory double patenting rejection has been fully considered but the rejection has been updated to address the amendments. Therefore, the rejection is maintained.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYAN KIM whose telephone number is (571)270-0338. The examiner can normally be reached 9:30-6.
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/BRYAN KIM/Examiner, Art Unit 1792
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