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 with traverse of Group II, claims 6-10, in the reply filed on August 22, 2025 is acknowledged. The traversal is on the ground(s) that there is no serious burden to search every group. This is not found persuasive because there is no serious search burden requirement in national stage applications filed under section 371. Furthermore, the groups of inventions, as now amended, do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The common technical feature in each group is the production device of claim 6. This cannot be a special technical feature under PCT Rule 13.2 because this feature was known in the prior art. As discussed in detail below, Hoashi (US 4,859,165) discloses a production device for a protein processed food that continuously heats and molds a fluid mixture by an internal heating system while moving the mixture in a tubular body (figs. 1-2; abstract; col. 3, lines 9-21). The device includes the tubular body (22), having an inlet to which the mixture is supplied and an outlet is provided at one end and from which the food is discharged (figs. 1-2; col. 3, lines 9-21); a core material (25) arranged inside the tubular body, extending to at least the outlet along an axial direction of the tubular body, and rotating around the axial direction (figs. 1-2; col. 3, lines 7-21); an internal heating device (23) provided at a position at a side further upstream than the outlet of the tubular body (figs. 1-2; col. 3, lines 3-21; hot water – fluid B – flows through the inside of the fluid-feed pipe 23, heating the inner wall of the tubular food product as it passes through the annular space); wherein, during a process in which the mixture is supplied, from the inlet, between the tubular body and core material and is extruded toward the outlet, the mixture is heated by the internal heating device to obtain the protein processed food, which is hollow (col. 3, lines 3-21; figs. 1-2).
Applicant is reminded that apparatus claims are not limited by the function they perform, as per MPEP §2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. As the apparatus of the prior art and the claimed apparatus are patentably indistinguishable in terms of structure, the apparatus of the prior art is reasonably expected to be able to perform the claimed functionalities. Furthermore, Applicant is reminded that apparatus claims are not limited by the material worked upon (MPEP §2115). A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). Therefore, a holding that these three groups do not have a single inventive concept is proper.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 6-7 and 10 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Hoashi (US 4,859,165).
Claim 6: Hoashi discloses a production device for a protein processed food that continuously heats and molds a fluid mixture by an internal heating system while moving the mixture in a tubular body (figs. 1-2; abstract; col. 3, lines 9-21). The device includes the tubular body (22), having an inlet to which the mixture is supplied and an outlet is provided at one end and from which the food is discharged (figs. 1-2; col. 3, lines 9-21); a core material (25) arranged inside the tubular body, extending to at least the outlet along an axial direction of the tubular body, and rotating around the axial direction (figs. 1-2; col. 3, lines 7-21); an internal heating device (23) provided at a position at a side further upstream than the outlet of the tubular body (figs. 1-2; col. 3, lines 3-21; hot water – fluid B – flows through the inside of the fluid-feed pipe 23, heating the inner wall of the tubular food product as it passes through the annular space); wherein, during a process in which the mixture is supplied, from the inlet, between the tubular body and core material and is extruded toward the outlet, the mixture is heated by the internal heating device to obtain the protein processed food, which is hollow (col. 3, lines 3-21; figs. 1-2).
Applicant is reminded that apparatus claims are not limited by the function they perform, as per MPEP §2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. As the apparatus of the prior art and the claimed apparatus are patentably indistinguishable in terms of structure, the apparatus of the prior art is reasonably expected to be able to perform the claimed functionalities. Furthermore, Applicant is reminded that apparatus claims are not limited by the material worked upon (MPEP §2115). A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Claim 7: Hoashi discloses the tubular body (22) and the core material (25) are disposed such that respective axial directions of the body and material are in a vertical direction (figs. 1-2).
Claim 10: Hoashi discloses the tubular body having a colorant supply port (30) through which a colorant for coloring an outer surface of the mixture is capable of being supplied (col. 3, lines 23-31).
Claim Rejections - 35 USC § 103
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.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hoashi (US 4,859,165), as applied to claim 6 above, in view of Yoshitomi (US 2016/0183566).
Claim 8: Hoashi discloses a portion of the core material being rotatably supported at a side further upstream than the outlet (fig. 1) and a portion not being supported at the outlet (fig. 1), but is silent as to the claimed orientation and specific gravity. However, Yoshitomi discloses a production device for a protein processed food that continuously heats and molds a fluid mixture by an internal heating system while moving the mixture in a tubular body (abstract; fig. 11), including a tubular body having an inlet to which the mixture is supplied and an outlet is provided at one end and from which the food is discharged (fig. 11), wherein the tubular body is disposed such that an axial direction of the tubular body is in a horizontal direction (fig. 11). It would have been obvious to one of ordinary skill in the art to have disposed the tubular body and core material in a horizontal direction to provide for continuous heating/molding as taught by Yoshitomi, and have selected a specific gravity of the core to be equivalent to the mixture to minimize gravitational sag when the core rotates in a horizontal orientation.
Claim 9: Yoshitomi discloses a vertical cutting portion supporting the material and configured to vertically cut the protein processed food near the outlet of the tubular body (¶¶ 37-38).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARRY THROWER whose telephone number is (571)270-5517. The examiner can normally be reached 9am-5pm MT M-F.
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/LARRY W THROWER/Primary Examiner, Art Unit 1754