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 .
Election/Restrictions
Applicant’s election without traverse of Group I, ice cream type product, claims 51-56, 58, 59, 61-64, and 108, in the reply filed on October 14, 2025 is acknowledged. Claims 121-125 and 128 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 58 and 64 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 58 and 64 depend from claim 57 which has been canceled. It is unclear as to if the claims were intended to depend off independent claim 51, or another pending claim, if the claims were intended to be canceled, or if the claims were meant to be withdrawn. It is noted that it appears at least claim 58 was intended to be canceled or withdrawn as it recites a cream composition and not an ice cream type product.
Claim 64 is further unclear as it recites both broad and narrow limitations. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Furthermore, it is unclear if a certain range, such as 10% is meant to go with a corresponding particle size range, and if so, to which one.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 59 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
As noted in the restriction requirement mailed August 13, 2025, claim 59 which recites “the colloidal composition is a frozen food product” fails to further limit claim 51, from which it depends. Claim 51 recites “the colloid composition is an ice cream analog food product”, and thus already requires a frozen food product as ice cream is a frozen food. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. It is noted that page 17 lines 7-10 defines “ice cream food analog product” as one comparable to conventional ice cream.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Note:
“Colloidal” refers to mixtures in which particles of one substance are dispersed throughout a volume of a different substance; and examples of colloidal foods includes ice cream (instant specification page 1 lines 13-17).
“Analog” or “analog food product” refers to a food product comprising edible fungi that bears an aesthetic, culinary, nutritional, and/or sensory equivalence or resemblance to an identified non-fungal food product (instant specification page 17 lines 4-9).
Claims 51-56 and 59 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Finnigan et al (WO 02/089604) as evidenced by Igoe et al (Dictionary of Food Ingredients 4th Edition Aspen Publishing 2001, page 92).
Regarding claims 51, 52, 55, and 59, Finnigan et al (Finnigan) teaches an ice cream, which is a frozen colloidal food composition that is both a dairy and ice cream analog food product, comprising gas from aeration/whipping in a first phase dispersed through a continuous second ice cream phase. Finnigan teaches that the ice cream contains fungal particles preferably derived from filamentous fungi, with a first, largest dimension, i.e. a length, of preferably less than 50microns and greater than 1micron. Refer to abstract, page 3 lines 4-5, page 5 lines 19-30, page 6 lines 4-6, page 9 line 26, page 10 line 25, page 11 lines 13-19, and Example 5.
Regarding the composition as comprising at least one flavoring ingredient as recited in claim 51, Finnigan teaches that the ice cream product comprises skim milk powder (page 11 lines 13-19 and example 5). As evidenced by Igoe et al (Igoe) milk solids non-fat provided excellent flavor. Thus, the ice cream product of Finnigan comprises at least one flavoring ingredient as claimed.
Regarding the filamentous particles as substantially uniformly dispersed throughout the second phase as recited in claim 51, as Finnigan teaches that the ice cream product is mixed (page 11 lines 13-19 and example 5) and mix is defined as combining elements into one mass, generally with a thorough blending of constituents, the product of Finnigan would encompass a “substantially unform” dispersion of filamentous particles throughout the second phase as claimed.
Regarding claim 53, as Finnigan teaches that the ice cream product is whipped or aerated (page 11 lines 13-19 and example 5), the product would comprise air which contains oxygen in the first gas phase.
Regarding claim 54, as Finnigan teaches that the ice cream product comprises glucose syrup and oil, and glucose or corn syrup contained monosaccharides, disaccharides, and polysaccharides(page 11 lines 13-19 and example 5), the continuous second phase, i.e. the phase which carries the gas, would comprise at least one of an oil, monosaccharide, disaccharide, polysaccharide, and ice crystals (page 11 lines 13-19 and example 5).
Regarding claim 56, Finnigan teaches that the edible fungal particles have a second dimension, perpendicular to the first dimension, i.e. a width, of preferably 5 microns or less which encompasses the claimed range (page 6 lines 14-18).
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.
Claims 61 and 63 are rejected under 35 U.S.C. 103 as being unpatentable over Finnigan et al (WO 02/089604) as evidenced by Igoe, further in view of Marshall et al (“Ice Cream, 6th Edition” Springer Science + Business Media 2003, pages 91-94 and 96-99).
As discussed above, Finnigan teaches of an ice cream product. Finnigan is silent to the ice cream as vanilla ice cream flavored with vanilla beans or vanilla paste as recited in claim 61, or chocolate ice cream flavored with cocoa powder as recited in claim 63.
Marshall et al (Marshall), an ice cream text, teaches that cocoa and natural flavorings from vanilla beans are available for ice cream flavorings (page 91, Flavors for Frozen Desserts paragraphs 1 and 3). Marshall teaches that the most popular of all ice cream flavors is vanilla which is produced from the beans in the form of vanilla powder (ground vanilla beans) and vanilla paste (page 92, Vanilla paragraphs 1 and 2, page 93 paragraph 3, and page 94 paragraphs 2 and 3). Marshall teaches chocolate and cocoa are popular flavorings of frozen desserts (page 96, Chocolate and cocoa paragraph 1). Marshall teaches cocoa powder contains nearly all of the flavor from a cocoa bean and is used in flavoring chocolate ice cream (page 97 Processing cocoa beans paragraph 3, and page 99 chocolate ice cream paragraph 2).
Regarding the ice cream as vanilla ice cream flavored with vanilla beans or vanilla paste as recited in claim 61, it would have been obvious for the ice cream of Finnigan to be vanilla ice cream flavored with vanilla beans or vanilla paste as Marshall teaches vanilla ice cream is the most popular of all ice creams, wherein vanilla flavoring is provided from vanilla beans or vanilla paste. To use a known ice cream flavoring wherein ice cream was disclosed to provide the desired flavor would have been obvious to one of ordinary skill in the art.
Regarding the ice cream as chocolate ice cream flavored with cocoa powder as recited in claim 63, it would have been obvious for the ice cream of Finnigan to be chocolate ice cream flavored with cocoa powder as Marshall teaches chocolate ice cream and cocoa were popular flavorings, wherein cocoa powder provided nearly all of the flavoring. To use a known ice cream flavoring wherein ice cream was disclosed to provide the desired flavor would have been obvious to one of ordinary skill in the art.
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows: This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients, which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Claim 62 is rejected under 35 U.S.C. 103 as being unpatentable over Finnigan et al (WO 02/089604) as evidenced by Igoe, further in view of Marshall et al (“Ice Cream, 6th Edition” Springer Science + Business Media 2003, pages 101) and Michelle (“Homemade Strawberry Ice Cream”, pages 1-8 November 21, 2019 https://www.alattefood.com/homemade-strawberry-ice-cream/).
As discussed above, Finnigan teaches of an ice cream product. Finnigan is silent to the ice cream as strawberry ice cream flavored with strawberry puree and lemon juice as recited in claim 62.
Marshall et al (Marshall), an ice cream text, teaches the ice cream industry has a major market for fruits with fruit ice creams ranking second among flavors (page 101 Fruits in Frozen desserts).
Michelle teaches strawberry ice cream reminds of summer days and is so pretty in pink (page 2). Michelle teaches that lemon juice is added when making strawberry ice cream to release the strawberry juices making the strawberries softer (page 5 step 2). Michelle teaches when a smoother strawberry ice cream is preferred the strawberries are purred (page 6 paragraph 1).
It would have been obvious for the ice cream of Finnigan to be strawberry ice cream flavored with strawberries as Marshall teaches fruit ice cream had a major market and/or Michelle taught strawberry ice cream reminds of summer days and has a pretty color. It would have been further obvious to puree the strawberries to provide a smoother taste, and to use lemon juice to release the strawberry juice and make them softer in view of Michelle.
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows: This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients, which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Claim 108 is rejected under 35 U.S.C. 103 as being unpatentable over Finnigan et al (WO 02/089604) as evidenced by Igoe, further in view of De Jong et al (US 2017/0029476).
As discussed above, Finnigan teaches of ice cream comprise filamentous final particles. Finnigan is silent to the particles as including ice-structuring protein as recited in claim 108.
De Jong et al (De Jong) teaches ice structuring proteins released from filamentous fungal host cells are highly active, low in cost, readily available in food grade form, and are simple to use (abstract and paragraph 12). De Jong teaches that they allow for slower hardening in the preparation of an ice cream which allows for larger packaging sizes and/or the use of less power in blast freezing, allows for faster production with less energy cost, increased shelf life, and improved texture (paragraphs 49-53).
It would have been obvious for the filamentous fungi particles of Finnigan to comprise ice structuring proteins for their known benefits including slower hardening in the preparation of an ice cream which allows for larger packaging sizes and/or the use of less power in blast freezing, faster production with less energy cost, increased shelf life, and improved texture in view of De Jong.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Dictionary.com teaches that mix is defined as combining elements into one mass, generally with a thorough blending of constituents.
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KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792