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 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 13-15 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.
Claim 13 recites “blending the composition according to claim 1”. However, it is not clear what is blended because the method of claim 13 is a method for imparting at least one of a binding property, an elasticity, and a deflating reduction function to a food, but the body of the claim does not disclose a food. It is not clear how the composition can impart the claimed functions to a food if it is not even added to a food. Is the composition of claim 1 blended with a food, or is the polysaccharide thickener and starch blended together and then added to a food? As claim 1 is already directed to a composition comprising a polysaccharide thickener and a starch, which would be assumed to be blended as they are provided in a composition, it is not clear what is “blended” in claim 13.
Claims 14-15 are included as they depend from claim 13.
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.
Claim 1-3, 8-10, 12-13 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamada et al. (US 2006/0292269 A1; Dec. 28, 2006).
Regarding claim 1, Yamada discloses a quality improving agent comprising a polysaccharide thickener that can be curdlan and a starch ([0009], [0027]), that can be pea starch and/or a phosphate cross-linked starch (e.g. a diphosphate starch as claimed) ([0009], [0014], [0027]).
Regarding claims 2-3, with respect to the composition being a composition for imparting a binding property, an elasticity, and a deflating reduction function to a food, Yamada fails to specifically teach that the composition imparts such claimed functions to a food.
However, as the composition of Yamada is the same as claimed, it would be expected that the composition of Yamada is capable of performing the intended uses, of imparting a binding property, an elasticity, and a deflating reduction function to a food product. The claims only require the presence of a polysaccharide thickener and a starch in order to impart the claimed functions. As Yamada teaches the exact same components, and the claimed invention does not provide any additional differences between the claimed invention and the prior art, the prior art composition is capable of performing the intended use and therefore anticipates the claimed language.
Regarding claim 8, Yamada teaches a food comprising the composition of claim 1 ([0007]).
Regarding claim 9, Yamada teaches that the food is meat or seafood ([0007], [0028]).
Regarding claim 10, Yamada teaches a method for producing a food comprising obtaining an aqueous solution or dispersion by dissolving or dispersing a meat quality improving agent in water, which include a polysaccharide thickener and a starch, to thereby obtain a food by preparing a material containing the dispersion ([0009], [0014], [0027], [0030]).
Yamada discloses a quality improving agent comprising a polysaccharide thickener that can be curdlan and a starch ([0009], [0027]), that can be pea starch and/or a phosphate cross-linked starch (e.g. a diphosphate starch as claimed) ([0009], [0014], [0027]).
Regarding claim 12, Yamada teaches that the food is meat or seafood ([0007], [0028]).
Regarding claim 13, Yamada teaches a method comprisin blending the composition according to claim 1 ([0009], [0014], [0027], [0030]).
With respect to the method being a method for imparting a binding property, an elasticity, and a deflating reduction function to a food, Yamada fails to specifically teach that the method imparts such claimed functions to a food.
However, as the method comprising blending the composition of Yamada is the same as claimed, it would be expected that the method of Yamada is capable of performing the intended uses, of imparting a binding property, an elasticity, and a deflating reduction function to a food product. The claim only requires the blending a polysaccharide thickener and a starch in order to impart the claimed functions. As Yamada teaches blending the exact same components, and the claimed method does not provide any additional differences between the claimed method and the prior art, the prior art composition is capable of performing the intended use and therefore anticipates the claimed language.
Additionally, when reading the preamble in the context of the entire claim, the recitation “for imparting a binding property, an elasticity, and a deflating reduction function to a food” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Regarding claim 15, Yamada teaches that the food is meat or seafood ([0007], [0028]).
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 4-7, 11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Yamada et al. (US 2006/0292269 A1; Dec. 28, 2006) as applied to claims 1 and 10 above.
Regarding claims 4 and 11, Yamada teaches that the starch can include two or more combinations of starches selected from pea starch and a phosphate cross-linked starch (e.g. a diphosphate starch as claimed) ([0014]) and therefore it would have been obvious for the starch of Yamada to include both the distarch phosphate and the pea starch.
The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07)
Regarding claims 5-7, Yamada teaches that the starch, which can include one of the pea starch and the distarch phosphate or both, can be present in an amount from 16 to 99.9% by mass and the curdlan can be present in an amount from 0.1 to 84% by mass ([0027]).
Therefore the mass ratio of starch to polysaccharide thickener can be 1.1 to 160, thus overlapping the claimed mass ratio of 10 to 200 in claim 5 and 2 to 150 in claim 6. In the 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)
Regarding claim 14, as stated above with respect to claim 13, Yamada teaches that the composition of claim 1 is blended. Yamada, however, fails to teach that the composition is blended after being dissolved or dispersed in water as Yamada teaches that the quality improving agent, which is the combination of the curdlan and starch, is dispersed in water ([0030]), which would imply that the composition is blended before being dispersed in water.
However, the examiner notes that the quality improving agent when dispersed in water would still have blending in the water as it is all combined together. It would have been obvious to one of ordinary skill in the art to blend the composition of claim 1 after being dissolved or dispersed in water as the selection of any order of performing process steps is obvious in the absence of new or unexpected results (MPEP 2144.04). In the instant case, blending the composition before or after being dispersed in water is obvious as it still results in the same final product, the composition of claim 1 dispersed in water.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791