DETAILED ACTION
Background
The amendment dated December 10, 2025 (amendment) amending claims 1, 5 and 8-10has been entered. Claims 1-12 and 14-16 as filed with the amendment have been examined. Claim 3 has been canceled. In view of the amendment, with the one exception listed all outstanding claim objections have been withdrawn.
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 1, 9 and 11 are objected to because of the following informalities:
In claim 1, at line 2 before “of a composition” delete the parentheses [(,)] around the term “by weight”;
In claim 9, at line 10 after “the skin:” insert --or,--;
at line 24 before “of one or more” delete the parentheses [(,)] around the term “by weight”;
at line 27 before “of the cooked potato” delete the parentheses [(,)] around the term “by weight”;
at line 29 before “of the cooked potato” delete the parentheses [(,)] around the term “by weight”;
at line 33 before “of the cooked potato” delete the parentheses [(,)] around the term “by weight”; and,
In claim 11, at line 2, after “screw conveyors” insert a comma --,--.
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 1-12 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over US 6,709,686 B1 to Matthew (Matthew) in view of US 6,485,775 B1 to Camin et al. (Camin) and US7,026,006 B1 to McArthur et al. (McArthur), as evidenced by Robertson, T et al. “Starchy Carbohydrates in a Healthy Diet: The Role of the Humble Potato”, Nutrients 2018, 10, 1764; doi:10.3390/nu10111764 (2018) (Robertson).
The Office considers the recited viscosity claim as including the viscosity of any part of a potato-based cheese analogue material or product, such as the core or its least viscous part or the rind or outer portion of its product. The claims do not recite a uniform potato-based cheese analogue product.
Regarding instant claims 1-2 and 4, Matthew at Abstract on page 1 discloses a mashed potato based food product (“potato-based cheese analogue”) that is shaped and that comprises mashed potatoes made from raw potatoes (“whole potatoes”, optionally peeled potatoes” - claim 4) which, as set forth in Robertson at 2.1.1., “Carbohydrate”, contain about 20% dry matter and 80 wt% as water, wherein the starch comprises 70–80% amylopectin and (at 2.1.2.1. on page 4) amylose as in claim 2. Further, at col. 2, lines 22-34, Matthew discloses heating the potato from (at col. 2, lines 36-37) a raw potato stock or (at col. 2, line 65 to col. 3, line 2) or taking a cooked potato stock and then mashing the stock to form a dough and shaping the composition into shaped pieces and then heating the shaped pieces at 300 to 500 °F to form the product. The Office considers the claimed 20.7 to 30 wt% potato-based dry matter material and the recited between 70 and 79.3 wt% of water, based on the weight of the recited composition (A) to include the amount of solids in each of the heated and mashed potato of Matthew and in the further heated shaped pieces of Matthew because of evaporation in heating. Further, while the Office considers optional claim limitations as the further ingredient as composition (B) present in the amount of 0-10 parts of the weight of the potato-based cheese analogue and which consists of one or more non-potato-based, further ingredients, with the proviso that the one or more non-potato-based further ingredients do not comprise hydrolysed starch, carrot, egg yolk, flour, casein or combinations thereof, the claim itself does not require them.
Further, the dry matter in the whole potatoes of Matthew at col. 2, lines 22-34 appear to be substantially the same thing as the claimed dry matter. Accordingly, absent a clear showing as to how the nutrient content of the dry matter of Matthew differs from that as claimed, the Office considers the dry matter of the product potato-based cheese analogue of Matthew to comprise the claimed between 3 and 9.6 wt.% of potato tuber cell wall material and potato tuber intercellular substances, based on the weight of the dry matter, and to comprise more than 72 wt.% of potato tuber starch, based on the weight of the dry matter.
Still further, and regarding instant claims 8, 9 and 12, Matthew does not provide a hardness for its product as recited in claims 1 and 8 or a viscosity for its product as in claim 1. Further, Matthew does not disclose b) subjecting the cooked potato tuber material of step (a) to a high-shear refining treatment resulting in a refined potato-tuber-based material comprising between 70 and 79.3 wt.% of water, based on the weight of the refined potato-tuber-based material, wherein high-shear refining treatment refers to subjecting the potato-tuber-based material to shear forces in a rotor-stator mixer, wherein the distance between the stator and the tips of the rotor is d (m), wherein the rotational speed of the tips of the rotor is v (m-s-1) and wherein v/d is higher than 6.4۰104s-1 as in claim 9; and, further, Matthew does not disclose c) cooling the refined potato-tuber-based material obtained in step (b) to a temperature of 15 °C or less under mixing conditions, to provide a potato-tuber-based dough as in claim 9. Further, Matthew does not disclose (d) storing the potato-tuber-based dough obtained in step (c) at a temperature of less than 12 °C, without substantially agitating the potato-tuber-based dough as in claim 12.
Camin at Abstract discloses a potato-based fat substitute comprising homogenizing a slurry of mashed potatoes, wherein at col. 4, lines 1-14 the homogenizing reduces the particle size of solids in the slurry (at col. 4, lines 41-55) at in excess of 5,000 psig. The Office considers the claimed high-shear refining to include the homogenizing disclosed in Camin. Further, Camin at col. 1, lines 64-57 discloses using the slurry as a fat substitute to make products, wherein (at col. 7, lines 33-36 and lines 58-63), Camin discloses cheese and baked products like breads as end products. And, in Example 3, Camin discloses cheese foods comprising its potato product which is cooled, wrapped and refrigerated.
McArthur at Abstract discloses processing mashed cooked potatoes by homogenizing them. Further, at col. 3, lines 50-62 discloses cooking, cooling to 15 °C and ricing its cooled potato product to prevent retrogradation of starch and harden the product and maintain the cell structure of the potato. The Office considers the recited c) cooling the refined potato-tuber-based material obtained in step (b) to a temperature of 15 °C or less under mixing conditions in a jacketed mixer, to provide a potato-tuber-based dough to include the cooling-ricing step of McArthur. Further, McArthur at col. 9, line 50 to col. 10, line 4 discloses uniform potato doughs which provide readily mixed potato based products.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Camin for Matthew to subject its hydrated cooked potato tuber material to a high-shear refining treatment resulting in a refined potato-tuber-based material comprising between 70 and 79.3 wt.% of water, based on the weight of the refined potato-tuber-based material, wherein high-shear refining treatment refers to subjecting the potato-tuber-based material to shear forces in a rotor-stator mixer, wherein the distance between the stator and the tips of the rotor is d (m), wherein the rotational speed of the tips of the rotor is v (m-s-1) and wherein v/d is higher than 6.4۰104s-1. Further, the ordinary skilled artisan in Matthew would have found it obvious in view of Camin to (d) store its potato-tuber-based dough obtained in step (c) at a temperature of less than 12 °C, without substantially agitating the potato-tuber-based dough. Both references disclose making and processing mashed potatoes to provide improved potato-based food products. The ordinary skilled artisan in Matthew would have desired to mix its mashed potatoes to homogenize the mixture and disperse potato material throughout the mixture to insure thorough consistency as in Camin and to store the product at less than 12 °C without agitating to provide uniform dough as a shaped potato-based cheese analogue which is hardened and that retains its shape.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of McArthur for Matthew to cool its potato dough to 15 °C or less under mixing conditions to provide a potato-tuber-based dough. Both references disclose forming and processing a potato-tuber-based dough. The ordinary skilled artisan in Matthew would have desired to mixing while cooling its dough prior to shaping to prevent retrogradation and improve texture in its product as in McArthur.
The potato-based cheese analogue of Matthew as disclosed at Abstract and col. 2, lines 22-37 as modified by Camin at col. 4, lines 41-55 and McArthur at col. 3, lines 50-62 appears to be substantially the same thing as the claimed potato-based cheese analogue. Accordingly, absent a clear showing as to how the hardness and viscosity of the potato-based cheese analogue of Matthew differs from that as claimed, the Office considers the potato-based cheese analogue of Matthew to have a hardness at 20 °C, as determined with a texture analyzer on a sample with a size of 3.5 x 3.5 x 4 cm (l x w x h) by performing a 20 mm compression at a speed of 1 mm/s with a 30 kg load cell and a 30 g trigger force, characterized by a peak positive force of at least 6 kg and a positive area of at least 75 kg۰s, as in claim 1, to have such a hardness as a peak positive force of at least 7 kg and a positive area of at least 75 kg۰s as in claim 8, to have a viscosity at 80 °C and at a shear rate of 1 s-1, as measured with a rheometer with a starch cell geometry of less than 400 Pa-s as in claim 1, and to have such a viscosity of less than 360 Pa-s as in claim 8. See MPEP 2112.01.I.
Further regarding instant claim 9, Matthew at col. 2, lines 22-34 and in Example 1 discloses forming pieces from the mashed potato dough as in claim 9 d). Further, the Office has considered the optional limitations in claim 9 including “wherein 0 - 10 parts (by weight) of one or more of the non-potato-based, further ingredients are added: to the cooked potato tuber material provided in step (a), before step (b), per 100 parts (by weight) of the cooked potato tuber material provided in step (a); or to the refined potato-tuber-based material provided in step (b), before and/or during step (c), per 100 parts by weight of the cooked potato tuber material provided in step (a); or partly to the cooked potato tuber material provided in step (a), before step (b), and partly to the refined potato-tuber-based material provided in step (b), before and/or during step (c), per 100 parts by weight of the cooked potato tuber material provided in step (a)” However, the claim itself does not require them.
Further, regarding instant claims 3 and 16, the Office considers the claimed potato tuber cell wall material and potato tuber intercellular substances of Matthew to be substantially the same thing. Accordingly, absent a clear showing as to how the composition of the potato dry matter of Matthew differs from that as claimed, the Office considers the potato tuber cell wall material and potato tuber intercellular substances disclosed in Matthew at col. 2, lines 22-34, as evidenced by Robertson at 2.1.1. and 2.1.2.1. to comprise non-starch polysaccharides chosen from the group consisting of cellulose, hemicellulose, pentosans and pectic substances as in claim 3; and considers the potato tuber starch of Matthew to comprise amylose and amylopectin, in a weight ratio of amylose: amylopectin of 10:90 or higher as in claim 16. See MPEP 2112.01.I.
Regarding instant claim 4, the Office considers the claimed potato-based material in composition (A) as a material obtained from whole potatoes, optionally peeled whole potatoes, that have only been processed by applying heat, shear and/or pressure to include the heated and shaped dough from whole potatoes disclosed in Matthew at col. 2, lines 22-37.
Regarding instant claim 5, Matthew at col. 5, lines 3-15 discloses various seasonings.
Regarding instant claims 6 and 7, the potato-based cheese analogue from mashed potatoes of Matthew does not comprise as the one or more non-potato-based, further ingredients hydrolysed starch, milk, milk-derived ingredients, casein, carrot, egg yolk, corn starch, flour, yeast or combinations thereof as in claim 5, and does not comprise as the one or more non-potato-based, further ingredients the fats, oils, fatty acids, phospholipids and cholesterol of claim 7.
Regarding instant claim 10, Matthew at Example 1, col. 6, lines 45-47 discloses methods comprising cooking and mashing peeled potatoes (“providing intact washed raw potato tubers”-claim 10 as “peeled, cooked and mashed potato tuber material comprising all of the ingredients of the potato tuber excluding the skin”), (“intact sliced raw potato tubers” as in (iv) of claim 10 to “(iii) obtain cooked potato tuber material comprising all ingredients of potato tuber excluding the skin”, wherein the cooked mashed potatoes comprise an amount of water of from between 70 and 79.3 wt.%, based on the total weight of the cooked potato tuber material.
Regarding instant claim 11, Matthew as modified by McArthur at col. 3, line 62 to col. 4, line 12 discloses ricing a cooled potato dough in a twin-screw auger with a mashing plate at a discharge end as its jacketed mixer.
Regarding instant claims 14-15, Matthew at col. 5, lines 15-22 discloses its shaped product in a meal (claim 14) as part of a sandwich (claim 15).
Response to Arguments
In view of the positions taken in the remarks accompanying the amendment dated December 10, 2025 (Reply), the following rejections have been withdrawn in favor of compact prosecution:
The rejections of claims 1-6, 8 and 16 under 35 U.S.C. 103 as being unpatentable over JPS60184351 A to Shinozaki et al. as evidenced by Marcos et al., "Water Activity and Chemical Composition of Cheese", J Dairy Sci 64:622-626 (1981);
The rejections of claims 9-12 under 35 U.S.C. 103 as being unpatentable over JPS60184351 A to Shinozaki et al. in view of EP3213638 A1 to Bergsma; and,
The rejections of claims 6 and 14-15 under 35 U.S.C. 103 as being unpatentable over JPS60184351 A to Shinozaki et al. in view of EP3213638 A1 to Bergsma, as evidenced by Marcos et al., "Water Activity and Chemical Composition of Cheese", J Dairy Sci 64:622-626 (1981).
Applicant’s arguments with respect to Shinozaki and Bergsma have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW E MERRIAM whose telephone number is (571)272-0082. The examiner can normally be reached M-H 8:00A-5:30P and alternate Fridays 8:30A-5P.
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/ANDREW E MERRIAM/Examiner, Art Unit 1791