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 . Claims 1-15 and 18-23 are examined herein.
Priority
The patent application herein, is reported as a CIP of SN 17/409183, wherein SN 17/409183 is a CON of SN 16/265000, and SN 16/265000 is a CIP of SN 14/816343; based on the claim language herein, the priority of this case extends to its filing date of April 21, 2023.
As for SN 14/816343: Regarding independent claim 1 herein: the only disclosure of broad foods groups by way of percentages is in Table 3, wherein plant-based protein and/or animal-based protein, plant-based complex or starch carbohydrate, vegetables; natural herbs and preservative mixtures are not disclosed, as in claim 1; and regarding independent claims 14, 18 and 21, herein: the single mention of the use of quinoa, is toward an example of sweet food products, not claimed herein; further the claimed amount of quinoa is not disclosed. Further, the use of Sofrito is not disclosed, as required of independent claims 1, 14, 18 and 21, herein.
As for SN 16/265000: Regarding independent claims 1 and 14 herein: no plant-based protein and/or animal-based protein are disclosed, and the only disclosure of broad foods groups by way of percentages is in Table 3, wherein plant-based protein and/or animal-based protein, plant-based complex or starch carbohydrate, vegetables; are not disclosed; and regarding independent claims 14, 18 and 21 herein: quinoa is disclosed as being a carbohydrate (0156 and 0301), however, as a single ingredient the claimed amounts of quinoa herein are not disclosed. Further, the use of Sofrito is not disclosed, as required of independent claims 1, 14, 18 and 21, herein.
As for SN 17/409183: Regarding independent claims 1 and 14 herein: no plant-based protein and/or animal-based protein are disclosed, and the only disclosure of broad foods groups by way of percentages is in Table 3, wherein plant-based protein and/or animal-based protein, plant-based complex or starch carbohydrate, vegetables; are not disclosed; and regarding independent claims 14, 18 and 21 herein: quinoa is disclosed as being a carbohydrate (0156 and 0301), however, as a single ingredient the claimed amounts of quinoa herein are not disclosed. Further, the use of Sofrito is not disclosed, as required of independent claims 1, 14, 18 and 21, herein.
Therefore based on the claim language of independent claims 1, 14, 18 and 21 herein, the priority of this case extends to its filing date of April 21, 2023.
Specification
Note: Paragraph 0026 if the pending specification, states: This specification is to be read in conjunction with the disclosure in the applicant's international application No. PCT/IB2014/000137 (“the earlier specification”) the content of which is hereby wholly incorporated into this specification. According 37 C.F.R. 1.57 Incorporation by reference [section (d)], Essential subject matter is only by way of to a U.S. patent or U.S. patent application publication, therefore said subject matter is Non-Essential [section (e)].
Further notes: The pending Specification mention the USDA in conjunction with references to RDA guidelines, however, since this reference is not incorporated by reference, and even if it was, is not toward a U.S. patent or U.S. patent application publication, at best it is subject matter that is also Non-Essential.
Specification Objection
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The subject matter of all the claims herein, are not presented in the original specification, therefore please amend the Specification to include each and every claimed limitation, as originally presented.
Claim Objections
Applicant is advised that should claims 19 and 20 be found allowable, claims 22 and 23 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 14, 18, 21 and all claims dependent on them, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The independent claims all require: “the composition containing about 9% to about 70% of the recommended daily allowance of each of histidine, isoleucine, leucine, lysine, methionine, phenylalanine, threonine, tryptophan, and valine per single serving”.
When looking toward the original disclosure, the only mention of an RDA of amino acids in single servings, is toward amounts thereof of the single specific composition of Table 38, which is not what is claimed herein, and the amounts of the amino acids therein are not as currently claimed. Therefore, one in the art, at the time of filing, would not understand that the specification reasonably conveys that the inventor/s had possession of the composition containing about 9% to about 70% of the recommended daily allowance of each of histidine, isoleucine, leucine, lysine, methionine, phenylalanine, threonine, tryptophan, and valine per single serving, as currently claimed.
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.
Claim 1, 14, 18 and 21 and any claims dependent on it, 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.
The independent claims (1, 14, 18 and 21), all require an amount of amino acids based on “the recommended daily allowance”, however, the claims do not set forth what recommended daily allowances for these ingredients are, therefore this limitation lacks antecedence basis.
Claim 1 requires a food composition containing plant-based foods, comprising:
from about 10 wt% to about 65 wt% of plant-based protein,
from about 10 wt% to about 65 wt% of a plant-based carbohydrate;
and from about 20 wt% to about 50 wt% of vegetables (i.e. plant-based),
wherein dependent claims 2-3 and 5 all identify similar ingredients that are encompassed by these food groups, including:
beans (i.e. legumes), including lentils (i.e. legumes), as plant-based carbohydrates, in claim 2;
bean (i.e. legumes), lentils (i.e. legumes) and legumes, as plant-based protein, in claim 3; and
alfalfa sprouts (i.e. legumes), bean sprouts (i.e. legumes), snow peas (i.e. legumes), and peas (i.e. legumes), as vegetables, in claim 5.
Therefore the claim presents wherein beans, lentils and legumes are encompassed by more than one claimed type of plant-type food ingredient, wherein multiple ranges are presented for each, which make the claim unclear because the multiple ranges for said beans, lentils and legumes encompass both broad and narrow amounts (e.g. multiple ranges for the same component). See MPEP § 2173.05(c) which discussed that 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).
Claim 1 also requires separate ranges for “fats”, “sofrito mix”, and a “preservative”, wherein:
fats are disclosed as comprising herbs and oil (per pending para.0453);
sofrito mix is disclosed as comprising herbs and oil (per pending para.0454); and
preservatives are disclosed as comprising herbs and oil (per pending para.0457).
Therefore the claim presents wherein herbs and oil, together or separately are encompassed by more than one claimed type of food ingredient, wherein multiple ranges are presented for each, which make the claim unclear because the multiple ranges for said ingredients are presented in both broad and narrow amounts. See MPEP § 2173.05(c) which discussed that 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).
Claims 9, 12-13, 18 and 21 all recite the broad limitation mung beans and the claims also recites azuki beans (i.e. red mung bean), which is the narrower statement of the range/limitation. 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. Herein, the broad limitation together with the narrow limitation that falls within the broad limitation, in the same claim, is considered indefinite because the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
Claim Interpretation
With regard to the prior art, claim 1, encompasses: A human food composition containing plant-based foods, comprising:
about 10 wt% to about 65 wt% of a protein selected from a plant-based protein and/or animal-based protein;
about 10 wt% to about 65 wt% of a plant-based carbohydrate;
about 20 wt% to about 50 wt% of vegetables;
about 1 to about 5 wt% fats;
up to about 20 wt% of a sofrito mix;
up to about 5 wt% of a preservative mixture, and
nutritional properties, including: about 9% to about 70% of the recommended daily allowance of each of histidine, isoleucine, leucine, lysine, methionine, phenylalanine, threonine, tryptophan, and valine per single serving.
With regard to the prior art, the limitations toward amounts of: “plant-based protein”, “plant-based carbohydrate”, and “vegetables”, when toward the same ingredient, encompass a single amount thereof.
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 1-8 and 10-11, are rejected under 35 U.S.C. 103 as being unpatentable over Gordon (US 2016/0366913) in view of the combination of Michell, Holland & Barrett and Mesquita.
Michell: Homemade Puerto Rican Sofrito; published online at least by Sept. 25, 2020 at: https://web.archive.org/web/20200925003407/https://plantbasedandbroke.com/homemade-puerto-rican-sofrito/
Holland & Barrett: 9 health benefits of avocado oil; published at least by May 11, 2021 at: https://web.archive.org/web/20210511044037/https://www.hollandandbarrett.com/the-health-hub/food-drink/food/benefits-avocado-oil/
Mesquita: Brazilian Sofrito (Tempero Pronto); published online at least by Dec. 15, 2019 at: https://web.archive.org/web/20210307181223/https://www.oliviascuisine.com/brazilian-sofrito/
Independent claim 1
An edible composition
Gordon teaches methods of making human food compositions (ab.), comprising: protein, carbohydrates, fiber, lipids and micronutrients (0006), from food ingredients, including, therefore provides an edible composition as required of the claims.
Plant-based protein
Gordon provides the food compositions comprise protein sources, including: animal-based and plant-based types (0007 and Table A), which imparts a protein selected from a plant-based protein and/or animal-based protein;, as claimed.
On the amount of a protein source: Gordon teaches the use of 19 to 23 wt% protein (0006), which encompasses about 10 to 65 wt%, as claimed.
Plant-based carbohydrate
Gordon provides the food compositions comprise carbohydrates sources, including at least: root vegetables, winter squashes, legumes, grains, sees, nuts, starches, and fruits (0007 and Table A), which imparts plant-based carbohydrates, as claimed.
On the amount of the carbohydrate source: Gordon provides the use of 45 to 53 wt% carbohydrates (0006), which encompasses about 10 wt% to about 65 wt%, as claimed.
Vegetables
With regard to the prior art, the term/phrase “vegetable” encompasses: the edible portion of a plant, by way of its plain and simple meaning.
Gordon provides the food compositions comprise: fiber sources, which includes at least: fruits, vegetables, nuts and grains (0007 and Table A) and herbs (0035), which imparts the edible portion of a plant (i.e. vegetables), as claimed.
On the amount of the vegetables: Gordon provides the use of 10 to 20 wt% grains (0006), which encompassed about 20 wt% to about 50 wt%, as claimed
Fats
Gordon provides the food compositions comprise: lipid sources, including at least: fats and oils (0007 and Table A), which imparts the use of fats, as claimed.
On the amount of the fats: Gordon provides 0.5 to 5 wt% of fats (having a food code with a first digit of 8 (0006), which encompasses about 1 to about 5 wt% fats, as claimed.
Sofrito mix
In light of the pending specification, the sofrito mixture is added to the food for flavoring, wherein there is nothing is shown to be critical about the amounts and types of ingredients, therein, or the amount of the mixture used in the food made (see pending para 0455+).
Gordon teaches the use of: vegetable mixtures (see Table A items: 751X and 752X), however does not discuss the specifically claimed type, a sofrito mixture.
Michell also teaches about making nutritional foods comprising: protein, carbohydrates, vegetable mixtures, beans, and lipids (see Recipes Using Puerto Rican Sofrito, and the Ingredients of the sofrito).
Michell further provides the use of sofrito (ti.), including: red bell pepper, garlic yellow onion, and oil, all of the claimed types of ingredients (see the short article, including ingredients).
As for why one of skill would select the specifically claimed oil, avocado oil for use in the sofrito, Holland & Barrett also teach about making foods with vegetable oils, and further provides there are many health benefits for using avocado oil, including: it aids nutrient absorption, is rich in antioxidants, reduces the risk of chronic diseases, supports eye health, promotes healthier skin and is effective in managing psoriasis (see the short article).
As for how the sofrito is made, the types and amounts of ingredients therein: Mesquita also teaches about making nutritional food compositions with vegetable mixtures, and further provides the use of sofrito.
Mesquita also teaches methods of making nutritional foods comprising: protein, carbohydrates, vegetable mixtures, beans and lipids (see What Can I Make With Sofrito and the ingredients in the sofrito)
Mesquita further discusses that this flavoring mixture goes by different names in different countries – mirepoix in France, soffritto in Italy, refogado in Portugal and Brazil, and sofrito in most Latin American countries; and serves the same purpose in all of them: to provide a foundation of amazing flavor that will take your recipe to the next level (see What is Sofrito?). Mesquita provides that the sofrito ingredients will vary depending on the cuisine.
Therefore, the combination of Michell, Holland & Barrett, and Miquita, shows:
1) it is known to use sofrito mixtures when making nutritional foods comprising: protein, carbohydrates, vegetables, beans, and lipids (Michell and Miquita);
2) it is known to use a sofrito mixture comprising the claimed types of ingredients (Michell);
3) wherein as combined with Holland & Barrett provide benefits to using avocado oil; and
4) the amounts and types of ingredients used will vary depending on the desired cuisine (Mesquita); and
5) wherein sofrito mixtures provide the benefit of a foundation of amazing flavor that will elevate the food it is used in/with (Mesquita).
Therefore, it would have been obvious to one of skill in the art, at the time of filing/the invention to modify the method of making nutritional foods comprising: protein, carbohydrates, beans, lipids and vegetable mixtures, as the modified teaching above, to include the use of the specifically claimed type of vegetable mixture, a sofrito mix, comprising; garlic, red peppers, yellow onion, and avocado oil, as claimed, because the combination of Michell, Holland & Barrett and Mesquita, impart:
1) Michell and Miquita provides it is known to use sofrito mixtures when making nutritional foods comprising: protein, carbohydrates, vegetables, beans, and lipids;
2) Michell provides it is known to use a sofrito mixture comprising the claimed types of ingredients;
3) Holland & Barrett provide benefits to using avocado oil;
4) Mesquita provides the amounts and types of ingredients used when making a sofrito will vary depending on the desired cuisine; and
5) Mesquita provides that sofrito mixtures provide the benefit of a foundation of amazing flavor that will elevate the food it is used in/with;
which shows that such a thing was successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed type of sofrito mix when making nutritional foods, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use (see MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious); and 2) there are advantages to doing such a thing, including that sofrito provides amazing flavor that will elevate the food it is used in/with, which shows a recognition in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that beneficial result would have been produced by their combination (see MPEP 2144.II that states: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination).
On the amount of sofrito used: As discussed above, the modified teaching imparts that the amounts and types of ingredients used to make sofrito are adjustable based on the desired taste; and further provides, in Michell, to drop in a heaping spoonful when making nutritional foods; and in Mesquita, to add the sofrito as needed for added flavoring (see the short articles).
Therefore, one in the art of making foods would be expected have the skill to select an amount of sofrito based on an obvious matter of design of the flavor profile desired when preparing food.
Absent a showing of criticality, it would have been obvious to one of skill in the art, at the time of filing to modify the method of using sofrito, as the modified teaching above, to include ------------------------------up to about 10 wt% of sofrito, as claimed, because the modified teaching imparts an expectation that the amount of sofrito used when preparing food is an obvious matter of the design of the flavor profile desired.
Further, since the claims are toward a composition, wherein patentability is toward the ingredients as combined therein, the matter of the sofrito being in a mixed form makes no patentable distinction over the composition above, because it is merely toward the ingredient prior to its use, absent a showing of criticality.
Preservative blend
In light of the pending specification, the preservative mixture may include natural ingredients which preserve food and provide flavour such as sea salt, lemon, rosemary oil, garlic and other natural flavourings, wherein there is nothing is shown to be critical about the amounts and types of ingredients therein (see pending para. 0162).
Gordon teaches the use of 0.5 to 5 wt% oils (0006) and 0-10 wt% of herbs (0035), which encompasses the use of up to 5 wt% of a preservative mixture, as claimed.
Further, since the claims are toward a composition, wherein patentability is toward the ingredients as combined therein, the matter of a preservatives being in a mixture makes no patentable distinction over the composition above, because it is merely toward the ingredient prior to its use, absent a showing of criticality.
Nutritional properties (i.e. amino Acid content) of the composition
When looking toward the pending Specification for support, it is noted that the amino acid content of the composition is dependent on the ingredients therein, not independent additives by any other source, therefore, with regard to the prior art, the phrase: “about 9% to about 70% of the recommended daily allowance of each of histidine, isoleucine, leucine, lysine, methionine, phenylalanine, threonine, tryptophan, and valine per single serving”, encompasses: micronutrients provided by the claimed composition.
Gordon provides micronutrient sources, including at least: those inherent to the food ingredients used (0020 and Table A), which encompasses amino acids found in protein sources.
Therefore, since the modified teaching provides a similar composition comprising similar amounts of similar ingredients, which similarly functions as a source of food, which reflects the breadth of the claimed composition, it would be reasonable to expect that it would function to supply about 9% to about 70% of the recommended daily allowance of each of histidine, isoleucine, leucine, lysine, methionine, phenylalanine, threonine, tryptophan, and valine per single serving, as claimed, because the teaching of a similar composition imparts a suggestion in or expectation that the composition taught will have the same or a similar utility.
Therefore, absent a showing of criticality, it would have been obvious to one of skill in the art, at the time of filing/the invention to modify the food compositions of the modified teaching above, to include that it provides about 9% to about 70% of the recommended daily allowance of each of histidine, isoleucine, leucine, lysine, methionine, phenylalanine, threonine, tryptophan, and valine per single serving, as claimed, because the composition established through the teachings above provide a sufficiently close relationship between the ingredients to create an expectation that such a similar compositions would have similar capabilities, properties or functionality because the claims are not physically or structurally distinguishable over the prior art compositions. See MPEP 2144. III, which states that when case law imparts legal precedence, wherein the facts in this prior legal decision are sufficiently similar to those in an application, wherein the court applied the law of obviousness to similar facts. This includes a wide spectrum of illustrations and accompanying reasoning (i.e. obviousness) that exist in case law. In re Eli Lilly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990). Herein, although not cited in the MPEP, more recent caselaw on the topic, “In re Dillon, 919 F.2d 688 (1990)” ( (https://cite.case.law/f2d/919/688/)) provides that when a claimed compositions has been made obvious from combined teachings, it is clear that the discovery that the claimed composition possesses a property not disclosed for the prior art subject matter, and this itself does not defeat a prima facie case.
Intended use of the composition
Gordon provides that the food made is a human diet equivalent, meaning it is made from human grade foods (0006), regulated by the USDA (0017), therefore imparts it is a human food composition, as claimed.
Further, the MPEP is clear that regarding composition claims: During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference between the claimed invention and the prior art (see: MPEP2111.02.II, MPEP 2114, and MPEP 2144.07). Herein no evidence has been provided to show that there is a structural difference between the claimed invention and the prior art.
Therefore, as for the food composition above, being for humans, as claimed, since the modified teaching above provides a similar composition comprising similar ingredients, in similar amounts, within the breadth of the claims, it would be reasonable to expect that the similar composition would function similarly and have similar uses, including a human food, as claimed, absent a showing of criticality, because the teaching of a similar composition imparts a suggestion in or expectation that the composition taught will have the same or a similar utility.
It would have been obvious to one of skill in the art, at the time of filing/the invention to modify the foods compositions, as the modified teaching above, to include the food compositions are human foods, as claimed, because based on the close structural and chemical similarity, and the fact that both the prior art and the claims use similar types of ingredients, it would have been obvious from the combined teachings that the composition taught would have similar uses because the claims are not physically or structurally distinguishable over the combined prior art composition (see MPEP.
Dependent claims
As for claim 2, Gordon provides the use of plant-based carbohydrates, including: soy, barley, millet, quinoa, rice, spelt, wheat (0035), potatoes, bread, beans, lentils, whole wheat bread, pasta, sweet potatoes, wheat tortillas, corn tortilla (Table A), and combinations thereof (0006), as claimed.
As for claim 3, Gordon provides the use of plant-based protein, including: beans and lentils (i.e. legumes) (Table A), quinoa (0035), nuts, grains, and combinations thereof (0006), as claimed.
As for claim 4, since a plant-based protein was selected for the sake of examination, in the rejection of claim 1 above, the animal-based protein makes no distinction over the rejection above. However, Gordon does teach about using animal based proteins, including: chicken (i.e. hen), beef, pork, fish, lamb, quail, turkey, veal, game meat (i.e. venison, quail, bison), beef broth, seafood (crab, lobster, mussels, oysters) and fin-fish (i.e. bass, catfish, clams, cod, flounder, grouper, halibut, haddock, rockfish, salmon, scallops, shrimp, snapper, swordfish, trout, tuna) (Table A), and combinations thereof (0006).
As for claim 5, Gordon provides vegetables selected from: pumpkin, squash (i.e. butternut), beans (i.e. sprouts), carrots, tomatoes, tomato sauce, dark-green leafy vegetables (collard greens, okra, kale, fennel, lettuce, spinach, Swiss chard), dark-green nonleafy vegetables (green beans, snow peas, zucchini, avocado), and other vegetables (cauliflower, celery, cucumber, eggplant, mushrooms, onion, parsnips, peppers, radish, sauerkraut, turnips), olives, corn, peas (Table A), and combinations thereof (0006).
As for claim 6, The modified teaching, in Michell provides it is known to use a sofrito mixture comprising: yellow onions, red peppers and garlic (see the Ingredients). The modified reaching, in Holland & Barrett provide benefits to using avocado oil.
As for claim 7
On olive oil and salt: The modified teaching, in Michell provides the use of olive oil and salt when cooking the sofrito (no. 5 in Notes). As for the type of salt being sea salt, this would have been obvious based on the reasoning of the small variety known for use in the generic, as discussed in detail above.
On rosemary: The modified teaching, in Mesquita, provides the use of herbs (What is sofrito), which one in the art would encompass the use of rosemary (i.e. extracted rosemary, i.e. an extract), as it is a very commonly used type and therefore it is not seen that patentability can be predicated on the specific type of herb one would have chosen to use, especially the specifically claimed type, rosemary, because it would have been an obvious matter of recipe design.
On pomegranate juice/extract: Gordon teaches the use of fruits in an amount of 0 to 1 wt% (0006), including there juices, nectars or vinegars, wherein the type include all types (Table A, Items 6XXX+), which broadly includes the use of pomegranate extracts, as it is a very commonly used type and therefore it is not seen that patentability can be predicated on the specific type of fruit one would have chosen to use, especially the specifically claimed type, pomegranate, because it would have been an obvious matter of recipe design.
Therefore, it would have been obvious to one of skill in the art, at the time of filing to modify the method of using: an herb extract, salt, oil and a fruit extract, when making nutritional compositions, as the modified teaching above, to include the specifically claimed types of ingredients: rosemary extract, sea salt, olive oil, and pomegranate extract, as claimed, because they are very commonly known and used types of food flavoring ingredients and therefore the use of them can be predicated based on the specific types known to be routinely chosen for use when making nutritional foods because they would have been an obvious matter of the design of the recipe used.
As for claim 8, Gordon provides the plant-based carbohydrate, includes: quinoa (0035), potatoes, sweet potatoes (Table A), and combinations thereof (0006).
As for claim 10, since a plant-based protein was selected for the sake of examination, in the rejection of claim 1 above, the animal-based protein makes no distinction over the rejection above. However, Gordon does teach about using animal based proteins, as discussed in the rejection of claim 4 above.
As for claim 11, On butternut squash: Gordon teaches the nutritional compositions comprise winter squash (item 733X in Table A).
Herein, the teaching of the use of the generic, winter squash, encompasses the species, butternut squash, because in this specific case butternut squash is considered to be one of the most popular types of winter squash, therefore the various permutations of types of winter squash envisioned by one of skill in the art, in the generic, include butternut squash because the teaching is as comprehensive and fully as if it had written the name of this variety. See, MPEP 2144.08.II.4 that discusses that when a genus is so small that, when considered in light of the totality of the circumstances it would anticipate the claimed species or subgenus because one skilled in the art would envisage each member of the genus, especially when the total circumstances involved include a limited number of variations for the genus, including in this case, when there are only two alternatives. Further, see MPEP 2144. 08 that discusses the obviousness of species when art teaches genus, wherein secondary considerations include those based on (the size of the genus, the expressed teachings, structural similarity, similar properties, predictability in the art, other teachings), which shows that based on the fact-finding as a whole (the size of the genus, the expressed teachings, structural similarity, similar properties, predictability in the art, other teachings), as discussed above, indicates why said species would have been an obvious selection based on the teaching of the genes.
Also, it is not seen that patentability can be predicated on the specific type of winter squash one would have chosen to use, especially the specific type of winter squash (i.e. butternut squash) would have been an obvious matter of design.
Therefore, it would have been obvious to one of skill in the art, at the time of filing/the invention to modify the method of making nutritional foods comprising vegetables, including winter squash, as the modified teaching above, to include butternut squash, as claimed, because: 1) this is one of the most popular types of winter squash, therefore one in the art of using winter squashes would envisage its use; 2) also it is not seen that patentability can be predicated on the specific type of winter squash one would have chosen to use, especially the specifically claimed type of winter squash (i.e. butternut squash) would have been an obvious matter of design.
On spinach: Gordon teaches the use of dark green leafy vegetables (item 721X in Table A)
Herein, the teaching of the use of the generic, dark green leafy vegetable, encompasses the species, spinach, because in this specific case spinach is an enormously popular dark green leafy vegetable, therefore the various permutations of types of dark green leafy vegetable would be envisioned by one of skill in the art, in the generic, because the teaching is as comprehensive and fully as if it had written the name of this variety. See, MPEP 2144.08.II.4 that discusses that when a genus is so small that, when considered in light of the totality of the circumstances it would anticipate the claimed species or subgenus because one skilled in the art would envisage each member of the genus, especially when the total circumstances involved include a limited number of variations for the genus, including in this case, when there are only two alternatives. Further, see MPEP 2144. 08 that discusses the obviousness of species when art teaches genus, wherein secondary considerations include those based on (the size of the genus, the expressed teachings, structural similarity, similar properties, predictability in the art, other teachings), which shows that based on the fact-finding as a whole (the size of the genus, the expressed teachings, structural similarity, similar properties, predictability in the art, other teachings), as discussed above, indicates why said species would have been an obvious selection based on the teaching of the genes.
Also, it is not seen that patentability can be predicated on the specific type of dark green leafy vegetable one would have chosen to use, especially the specifically claimed type, spinach, would have been an obvious matter of design.
Therefore, it would have been obvious to one of skill in the art, at the time of filing/the invention to modify the method of making nutritional foods comprising vegetables, including dark green leafy vegetables, as the modified teaching above, to include spinach, as claimed, because: 1) this is an enormously popular types of dark green leafy vegetable, therefore one in the art of using them would envisage its use; 2) further it is not seen that patentability can be predicated on the specific type of dark green leafy vegetable, one would have chosen to use, especially the specifically claimed type, spinach, would have been an obvious matter of design.
Gordon also provides combinations of food ingredients (0006), as claimed.
Claims 9 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Gordon (US 2016/0366913) in view of the combination of Michell, Holland & Barrett and Mesquita, as applied to claims 1-8, 10-11 above, further in view of Ishii (US 2008/0124449) and Zhang.
Zhang: published as CN 101143010 A on 2008-03-19.
All references, as applied for the reasons discussed in the rejection of claims 1-8 and 10-11 above, are incorporated herein.
As for claim 9
On the plant-based carbohydrate: Gordon provides the plant-based carbohydrate, includes: quinoa (0035).
On mung bean protein sources: Gordon does explicit discuss the use of mung beans.
Ishii also teaches about making nutritional compositions comprising: plant protein sources, carbohydrates, lipids (0012), and flavorings (0050).
Ishii further provides that the plant protein sources, include the use of 0.1 to 100 wt% of a mung bean protein source (ref. clm. 24 and paras: 0023 and 0051), which encompasses the claim of about 12 wt% of mung beans.
Ishii discusses that by eating foods comprising this source of protein, several diseases are prevented, including: circulatory system diseases such as hypertension, arteriosclerosis, ischemic heart disease, and cerebral stoke; diabetes; malignant neoplasms; and that it will prevent and treat obesity (0044).
Therefore, it would have been obvious to one of skill in the art, at the time of filing to modify the method of making nutritional foods, including: plant protein sources, carbohydrates, lipids and flavorings, as the modified teaching above, to include a plant protein source, including: about 12 wt% mung beans, as claimed, because Ishii shows, that: 1) it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed amount of mung bean protein sources when making nutritional foods, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use (see MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious); and 2) there are advantages to doing such a thing, including that encompassing amounts of plant protein sources, including those from mung beans, prevent several diseases, including: circulatory system diseases such as hypertension, arteriosclerosis, ischemic heart disease, and cerebral stoke; diabetes; malignant neoplasms; and that it will prevent and treat obesity, which shows a recognition in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that beneficial result would have been produced by their combination (see MPEP 2144.II that states: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination).
On adzuki beans: Gordon does not explicitly discuss the use of azuki beans.
Zhang also teaches methods of making nutritional foods, including: animal and plant type proteins, carbohydrates, seeds (i.e. lipid comprising) (ti.) and flavorings (Equivalent Abstract).
Zhang further provides the use of 6 to 12 wt% of red beans (i.e. adzuki beans) (ab.), which encompasses the claimed amount of about 7 wt% azuki beans.
Zhang also provides the advantage of consuming foods with red beans are capable of adjusting blood sugar of a diabetic individual into a bidirectional way; helping diabetic person maintain relative stability of blood sugar; and decreases hunger, thus helpful in losing weight and decreasing blood fat.
Therefore, it would have been obvious to one of skill in the art, at the time of filing to modify the method of making nutritional compositions, comprising: animal and plant type proteins, carbohydrates, seeds, flavorings and bean, as the modified teaching above, to include -------------------------------the use of adzuki beans (i.e. red beans), as claimed, because Zhang shows, that: 1) it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed type of bean when making nutritional compositions, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use (see MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious); and 2) there are advantages to doing such a thing, including that the consumption of nutritional foods with red beans are capable of adjusting blood sugar of a diabetic individual into a bidirectional way; helping diabetic person maintain relative stability of blood sugar; and decreases hunger, thus helpful in losing weight and decreasing blood fat, which shows a recognition in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that beneficial result would have been produced by their combination (see MPEP 2144.II that states: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination).
As for claim 12, the modified teaching provides the use of all of the claimed ingredients, including: quinoa and potatoes, as discussed in the rejection of claim 8 above; mung beans and adzuki beans, as discussed in the rejection of claim 9, above; butternut squash and spinach, as discussed in the rejection of claim 11 above; and red peppers, yellow onion, avocado oil, olive oil, sea salt, omegranate extract, and rosemary extract, as provided by the combination of Michell, Holland & Barrett and Mesquita, above.
As for claim 13, Gordon provides the composition further comprises chicken (Table A; 24xx) or other meats/game meat (i.e. bison) (Table A).
Independent claim 14
Independent claim 14 differs from independent claim 1 in that it further requires:
the plant-based protein to be selected from mung beans and adzuki beans (as discussed in the rejection of claim 9 above);
the plant-based carbohydrate to be selected from quinoa, potatoes, and sweet potatoes (as discussed in the rejection of claim 8 above); and
the vegetables selected from butternut squash and spinach (as discussed in the rejection of claim 11 above).
Claim 14 also differs from claim 1, in that it requires
up to about 20 wt% of the sofrito mix; and
up to about 5 wt% of the preservative mix.
The modified teaching, does not discuss the explicitly claimed amount of sofrito in the food composition, as claimed.
On the amount of sofrito used: As discussed above, the modified teaching imparts that the amounts and types of ingredients used to make sofrito are adjustable based on the desired taste; and further provides, in Michell, to drop in a heaping spoonful when making nutritional foods; and in Mesquita, to add the sofrito as needed for added flavoring (see the short articles).
Therefore, one in the art of making foods would be expected have the skill to select an amount of sofrito based on an obvious matter of design of the flavor profile desired when preparing food.
Absent a showing of criticality, it would have been obvious to one of skill in the art, at the time of filing to modify the method of using sofrito, as the modified teaching above, to include ------------------------------up to about 20 wt% of sofrito, as claimed, because the modified teaching imparts an expectation that the amount of sofrito used when preparing food is an obvious matter of the design of the flavor profile desired.
Further, since the claims are toward a composition, wherein patentability is toward the ingredients as combined therein, the matter of the sofrito being in a mixed form makes no patentable distinction over the composition above, because it is merely toward the ingredient prior to its use, absent a showing of criticality.
Dependent claims
As for claim 15, please see the rejection of claim 4, which imparts through Gordon, that the composition comprises animal protein is selected from chicken or bison.
Claims 18-20 and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Gordon (US 2016/0366913) in view of the combination of Michell, Holland & Barrett, Mesquita, Ishii (US 2008/0124449) and Zhang, as applied to claims 9, 12 and 13-15 above, further in view of Song.
Song: published as CN 108936205 A on 2018-12-07.
All references, as applied for the reasons discussed in the rejection of claims 1-15 above, are incorporated herein.
Independent claim 18
On a quinoa protein source: Gordon does not discuss the use of 13 wt% of quinoa in the nutritional compositions, as claimed.
Song also teaches methods of making nutritional foods, including: protein, vegetables, lipids, flavorings (ti.) and quinoa.
Song further provides the use of 10 to 40 wt% of quinoa (ref. clm. 1), which encompasses the claimed amount of 13 wt% of quinoa.
It would have been obvious to one of skill in the art, at the time of filing to modify the method of making nutritional foods including protein, carbohydrates, lipids, flavorings and quinoa, as Gordon, to include the use the claims amount of quinoa-------------, because Song shows that it was known for encompassing amounts to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed amount of quinoa because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious.
On a mung bean protein source: The modified teaching, in Ishii, provides the use of 0.1 to 100 wt% of a mung bean protein source (ref. clm. 24 and paras: 0023 and 0051), which encompasses the claim of about 16 wt% of mung beans, as claimed.
On azuki bean protein source: The modified teaching, in Zhang, provides the use of 6 to 12 wt% of red beans (i.e. adzuki beans) (ab.), which encompasses the claimed amount of about 11 wt% azuki beans, as claimed.
Starch carbohydrate: Gordon teaches the nutritional compositions comprise carbohydrates, including potatoes as vegetables (see item 7XXX and 71XX in Table A), used in amounts of 10 to 25 wt% (0007), which encompasses the claim of about 16 wt% potatoes.
Vegetable: As discussed above, Gordon teaches the nutritional compositions comprise vegetables, used in amounts of 10 to 25 wt% (0007), wherein the vegetables used include: squash, including: winter types (see item 732X and 733X in Table A); and dark green leafy vegetables (see item 72XX in Table A); which encompasses the claimed amounts of about 16 wt% of a winter squash and about 11 wt% of the dark green leafy vegetable. As for the specifically claimed types: butternut squash and spinach, please see the reasoning provided in the discussion of claim 11 above.
Sofrito mix: Please see the discussion on this ingredient in rejection of claim 1 above, which makes the use of the claimed type and amount of sofrito, as a matter of design choice.
Preservative mix: Please see the discussion on this ingredient in the rejection of claim 1 above, which makes the use of the claimed type and amount of preservative mixture, e.g. the claimed ingredients thereof, obvious.
On the nutritional properties (i.e. amino Acid content) of the composition: When looking toward the pending Specification for support, it is noted that the amino acid content of the composition is dependent on the ingredients therein, not independent additives by any other source, therefore, with regard to the prior art, the phrase: “about 9% to about 70% of the recommended daily allowance of each of histidine, isoleucine, leucine, lysine, methionine, phenylalanine, threonine, tryptophan, and valine per single serving”, encompasses: micronutrients provided by the claimed composition.
Gordon provides micronutrient sources, including at least: those inherent to the food ingredients used (0020 and Table A), which encompasses amino acids found in protein sources.
Therefore, since the modified teaching provides a similar composition comprising similar amounts of similar ingredients, which similarly functions as a source of food, which reflects the breadth of the claimed composition, it would be reasonable to expect that it would function to supply about 10% to about 39% of the recommended daily allowance of each of histidine, isoleucine, leucine, lysine, methionine, phenylalanine, threonine, tryptophan, and valine per single serving, as claimed, because the teaching of a similar composition imparts a suggestion in or expectation that the composition taught will have the same or a similar utility.
Therefore, absent a showing of criticality, it would have been obvious to one of skill in the art, at the time of filing/the invention to modify the food compositions of the modified teaching above, to include that it provides about 10% to about 39% of the recommended daily allowance of each of histidine, isoleucine, leucine, lysine, methionine, phenylalanine, threonine, tryptophan, and valine per single serving, as claimed, because the composition established through the teachings above provide a sufficiently close relationship between the ingredients to create an expectation that such a similar compositions would have similar capabilities, properties or functionality because the claims are not physically or structurally distinguishable over the prior art compositions. See MPEP 2144. III, which states that when case law imparts legal precedence, wherein the facts in this prior legal decision are sufficiently similar to those in an application, wherein the court applied the law of obviousness to similar facts. This includes a wide spectrum of illustrations and accompanying reasoning (i.e. obviousness) that exist in case law. In re Eli Lilly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990). Herein, although not cited in the MPEP, more recent caselaw on the topic, “In re Dillon, 919 F.2d 688 (1990)” ( (https://cite.case.law/f2d/919/688/)) provides that when a claimed compositions has been made obvious from combined teachings, it is clear that the discovery that the claimed composition possesses a property not disclosed for the prior art subject matter, and this itself does not defeat a prima facie case.
Dependent claims
As for claims 19 and 22, as discussed above, the combination of Michell, Holland & Barrett and Mesquita provide:
1) Michell and Miquita provides it is known to use sofrito mixtures when making nutritional foods comprising: protein, carbohydrates, vegetables, beans, and lipids;
2) Michell provides it is known to use a sofrito mixture comprising the claimed types of ingredients;
3) Holland & Barrett provide benefits to using avocado oil;
4) Mesquita provides the amounts and types of ingredients used when making a sofrito will vary depending on the desired cuisine; and
5) Mesquita provides that sofrito mixtures provide the benefit of a foundation of amazing flavor that will elevate the food it is used in/with;
which show that it was known to use the claimed types of ingredients for making a sofrito mix (Michell), wherein there are benefits to using avocado oil (Holland & Barrett), wherein the types and amounts of sofrito ingredients will vary depending on the desired cuisine, and provides the benefit of a foundation of amazing flavor that will elevate the food it is used in/with (Mesquita).
Therefore, absent a showing of criticality, it would have been obvious to one of skill in the art, at the time of filing/the invention to modify the method of making nutritional foods comprising vegetable mixtures, including the use of a sofrito mix for flavoring, which comprises: garlic, red peppers, yellow onion, and avocado oil, as the modified teaching above, to include: about 8 wt% avocado oil, about 23 wt% yellow onion, about 4 wt% garlic, and about 65 wt% red pepper, in the sofrito mixture, claimed, because the modified teaching imparts an expectation that the ingredients used to make a sofrito mix are customizable based on the type of cusine which means this is an obvious matter of the design of the flavor profile desired.
As for claim 20 and 23, for similar reasons as discussed above, it would have been obvious to one of skill in the art, at the time of filing to modify the method of using: an herb extract, salt, oil and a fruit extract, when making nutritional compositions, as the modified teaching above, to include the specifically amounts of: rosemary extract, sea salt, olive oil, and pomegranate extract, including: about 78 wt% olive oil, about 7 wt% sea salt, about 14 wt% pomegranate extract, and about 1 wt% rosemary extract, as claimed, because the modified teaching above imparts that types and amounts of flavoring ingredients vary depending on the desired cuisine, wherein the benefit of such mixtures provide amazing flavor that will elevate the food it is used in/with (Mesquita), therefore such a thing would have been an obvious matter of the design of the food being prepared.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Gordon (US 2016/0366913) in view of the combination of Michell, Holland & Barrett, Mesquita, Ishii (US 2008/0124449), Zhang, and Song, as applied to claims 18-20 and 22-23 above, further in view of ‘268.
‘268: published as DE 2547268 A on 1976-05-06.
All references, as applied for the reasons discussed in the rejection of claims 1-15, 18-20 and 22-23 above, are incorporated herein.
Independent claim 21
Independent claim 21 differs from independent claim 1 in that it requires:
about 22 wt% chicken or bison;
about 13 wt% quinoa;
about 12 wt% mung beans;
about 11 wt% potatoes;
about 7 wt% adzuki beans;
about 11 wt% butternut squash;
about 11 wt% spinach;
about 10 wt% of a sofrito mix comprising garlic, red peppers, yellow onion, and avocado oil; and
about 3 wt% of a preservative mix of olive oil, sea salt, pomegranate extract, and a rosemary extract.
As for claim 21, Gordon teaches methods of making human food compositions (ab.), comprising: protein, carbohydrates, fiber, lipids and micronutrients (0006), from food ingredients, including:
protein sources, including at least: animal-based and plant-based types (0007 and Table A);
carbohydrates sources, including at least: root vegetables, winter squashes, legumes, grains, sees, nuts, starches, and fruits (0007 and Table A);
fiber sources, including at least: fruits, vegetables, seeds, nuts and grains (0007 and Table A);
lipid sources, including at least: fats and oils (0007 and Table A);
micronutrient sources, including at least: supplements (0035) and those inherent to the food ingredients used (0020 and Table A); and
herbs (0035).
Therefore, Gordon provides food compositions comprising all of the claimed food groups, including: protein selected from a plant-based protein and/or animal-based protein; plant-based complex or starch carbohydrates; vegetables; fats; and herbs.
Protein sources
A. On an animal-based protein sources: Gordon teach the human food compositions comprise 10 to 25 wt% of protein, including: meat (0030), including: chicken (Table A), which encompasses the use of about 22 wt% chicken, an animal-based protein, as claimed.
B. On plant-based protein sources
On a quinoa protein source: Gordon also teaches the use of about 0-10 wt% of dietary supplement high in non-digestible carbohydrates, including: quinoa, in an amount of about 0-10 wt% (0035), which is close to about 13 wt% quinoa, as claimed.
Gordon does not discuss the use of 13 wt% of quinoa in the nutritional compositions, as claimed.
Song also teaches methods of making nutritional foods, including: protein, vegetables, lipids, flavorings (ti.) and quinoa.
Song further provides the use of 10 to 40 wt% of quinoa (ref. clm. 1), which encompasses the claimed amount of 13 wt% of quinoa.
It would have been obvious to one of skill in the art, at the time of filing to modify the method of making nutritional foods including protein, carbohydrates, lipids, flavorings and quinoa, as Gordon, to include the use the claims amount of quinoa-------------, because Song shows that it was known for encompassing amounts to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed amount of quinoa because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious.
On mixtures of beans as plant protein sources: Gordon provide a mixture of any type of beans for protein sources (see item 4XXX and 412X in Table A).
On mung bean protein sources: Gordon does explicit discuss the use of mung beans.
Ishii also teaches about making nutritional compositions comprising: plant protein sources, carbohydrates, lipids (0012), and flavorings (0050).
Ishii further provides that the plant protein sources, include the use of 0.1 to 100 wt% of a mung bean protein source (ref. clm. 24 and paras: 0023 and 0051), which encompasses the claim of about 12 wt% of mung beans.
Ishii discusses that by eating foods comprising this source of protein, several diseases are prevented, including: circulatory system diseases such as hypertension, arteriosclerosis, ischemic heart disease, and cerebral stoke; diabetes; malignant neoplasms; and that it will prevent and treat obesity (0044).
Therefore, it would have been obvious to one of skill in the art, at the time of filing to modify the method of making nutritional foods, including: plant protein sources, carbohydrates, lipids and flavorings, as the modified teaching above, to include a plant protein source, including: about 12 wt% mung beans, as claimed, because Ishii shows, that: 1) it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed amount of mung bean protein sources when making nutritional foods, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use (see MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious); and 2) there are advantages to doing such a thing, including that encompassing amounts of plant protein sources, including those from mung beans, prevent several diseases, including: circulatory system diseases such as hypertension, arteriosclerosis, ischemic heart disease, and cerebral stoke; diabetes; malignant neoplasms; and that it will prevent and treat obesity, which shows a recognition in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that beneficial result would have been produced by their combination (see MPEP 2144.II that states: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination).
On adzuki beans: Gordon does not explicitly discuss the use of azuki beans.
Zhang also teaches methods of making nutritional foods, including: animal and plant type proteins, carbohydrates, seeds (i.e. lipid comprising) (ti.) and flavorings (Equivalent Abstract).
Zhang further provides the use of 6 to 12 wt% of red beans (i.e. adzuki beans) (ab.), which encompasses the claimed amount of about 7 wt% azuki beans.
Zhang also provides the advantage of consuming foods with red beans are capable of adjusting blood sugar of a diabetic individual into a bidirectional way; helping diabetic person maintain relative stability of blood sugar; and decreases hunger, thus helpful in losing weight and decreasing blood fat.
Therefore, it would have been obvious to one of skill in the art, at the time of filing to modify the method of making nutritional compositions, comprising: animal and plant type proteins, carbohydrates, seeds, flavorings and bean, as the modified teaching above, to include -------------------------------the use of adzuki beans (i.e. red beans), as claimed, because Zhang shows, that: 1) it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed type of bean when making nutritional compositions, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use (see MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious); and 2) there are advantages to doing such a thing, including that the consumption of nutritional foods with red beans are capable of adjusting blood sugar of a diabetic individual into a bidirectional way; helping diabetic person maintain relative stability of blood sugar; and decreases hunger, thus helpful in losing weight and decreasing blood fat, which shows a recognition in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that beneficial result would have been produced by their combination (see MPEP 2144.II that states: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination).
Carbohydrate sources
On potatoes: Gordon teaches the nutritional compositions comprise vegetables, including potatoes as vegetables (see item 7XXX and 71XX in Table A), used in amounts of 10 to 25 wt% (0007).
Gordon does not discuss amounts of root vegetables, the specifically claimed types, potatoes.
‘268 also provided methods of making nutritional compositions, comprising: protein, carbohydrates, lipids, vegetables (ti.) and flavoring (ab.).
‘268 further provide the vegetables, include root types, including potatoes (ab.), wherein they are used in amounts of 2 to 50 wt% (ab), which encompasses the claim of about 11 wt% of potatoes.
It would have been obvious to one of skill in the art, at the time of filing to modify the method of making nutritional compositions comprising: protein, carbohydrates, lipids, root vegetables including potatoes, and flavorings, as the modified teaching above, to include that the root vegetable is a potato used--------------------- in an amount of 11 wt%, as claimed, because ‘268 shows that it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the claimed amount when making nutritional food products, comprising: protein, carbohydrates, lipids, root vegetables, including potatoes and flavoring, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious.
Vegetable sources
On winter squash and dark green leafy vegetables: Gordon teaches the nutritional compositions comprise vegetables, used in amounts of 10 to 25 wt% (0007), wherein the vegetables used include: squash, including: winter types (see item 732X and 733X in Table A); and dark green leafy vegetables (see item 72XX in Table A); which encompasses the claim of about 11 wt% of a winter squash and about 11 wt% of dark green leafy vegetable. As for the specifically claimed types: butternut squash and spinach, please see the reasoning provided in the discussion of claim 11 above.
Vegetable mixtures
Sofrito mix: Please see the discussion on this ingredient in rejection of claim 1 above, which makes the use of the claimed type and amount of sofrito, as a matter of design choice.
Preservative mix: Please see the discussion on this ingredient in the rejection of claim 1 above, which makes the use of the claimed type and amount of preservative mixture, e.g. the claimed ingredients thereof, obvious.
In summary, the claims are merely recipes for making food, which do not amount to a novel invention because all the claimed ingredient were known in the prior art and one skilled in the art could have combined the ingredient as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
The prior art included each element claimed although not necessarily in a single reference, and one of ordinary skill in the art could have combined the elements as claimed by known methods of making nutritional foods, and in combination, each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Further, a predictable use of prior art elements according to their established functions to achieve a predictable result is prima facie obvious. See KSR Int'l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
Further, the claims are toward a formula/recipe for making a nutritional food composition that uses common ingredients, and does not amount to invention in the constantly developing art of preparing food because there is no specific showing that establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. It is long and commonly known that the object of for people of skill for cooking (e.g. cooks, chefs, and bakers) is to use or eliminate common ingredients to formulate food that is palatable. Such an act, the formulation or creation a food recipe, is not patentable because it does not make a scientific advancement in the field unless a new/novel reaction, coaction or cooperative relationship is made evident by such a creation. In other words, the act of making food or food recipes that taste good, even if the combination of the ingredients is not known or has not been done before, is not patentable subject just because it was done.
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 this specific 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.
Response to Arguments
Specification Objection
It is asserted, that the Office objects to the specification as failing to provide "antecedent basis" for the claimed subject matter for the reasons noted on page 5 of the Office Action. Applicant respectfully disagrees with this objection. M.P.E.P. § 608.01(o) only requires that the specification provide "clear support or antecedent basis" for the claims. The present claims find clear support in paragraphs [000447] through [000477] of the original application. Accordingly, Applicant respectfully requests withdrawal of this objection to the specification.
In response, it is the examiner’s opinion that the cited section, noted above, does not represent the originally treated claim set as specifically written. Therefore it is in Applicant’s best interest to amend the Specification to include the specific language of the claims filed on 4/21/2023.
Claim Objection
It is asserted, that the Office objects to claims 1 and 14 for the reasons noted on page 5 of the Office Action. Applicant respectfully disagrees with this objection. Nevertheless in light of the current amendments to the claims, Applicant respectfully requests withdrawal of this objection to the claims.
In response, the office appreciates Applicant’s amendments and said Rejection is not re-issued herein.
Rejection under 35 U.S.C. § 112(a)
It is asserted, that the Office rejected the claims under 35 U.S.C. § 112(a) as failing to comply with the written description requirement for the reasons noted on page 6 of the Office Action. In view of the proposed amendments to these claims, Applicant respectfully requests withdrawal of this rejection.
In response, Applicant’s timely response is appreciated, and said Rejection is not re-issued herein.
Rejection under 35 U.S.C. # 112(b)
It is asserted, that the Office rejected the claims under 35 U.S.C. §112(b) as being indefinite for the reasons noted on pages 7-10 of the Office Action. In view of the proposed amendments to these claims, though, Applicant respectfully requests withdrawal of this rejection.
In response, please see the new 112(b) rejection above, based on the claim amendments.
It is asserted, that with respect to claim 5, the Office argues that the specific ingredients listed could be a plant-based carbohydrate, a plant-based protein, or a vegetable and therefore this claim is confusing. But claim 5 specifically recites that these ingredients are used as the vegetable in the food composition. Accordingly, the skilled artisan would readily understand claim 5.
In response, the examiner agrees, therefore this rejection of claim 5 is withdrawn.
Rejections under 35 U.S.C. 103
It is asserted, that Applicant has amended the claims to recite that the food composition contains about 9% to about 70% of the recommended daily allowance of each of the following 9 amino acids per single serving: histidine, isoleucine, leucine, lysine, methionine, phenylalanine, threonine, tryptophan, and valine. But the Office has not shown that the proposed combination of references teaches or suggests such a limitation.
In response, please see the modified rejection above, necessitated by said amendments.
It is asserted, that the animal feed compositions described in paragraphs [0006- 0007] are specifically designed by Gordon with the described amounts so that they are "equivalent" to a human diet, therefore Gordan is unsatisfactory for its intended purpose and would not have been obvious to use for the now claims human food composition.
In response, the MPEP is clear that regarding composition claims: During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference between the claimed invention and the prior art (see MPEP 2114 and MPEP 2144.07). Herein no evidence has been provided to show that there is a structural difference between the claimed invention and the prior art. Therefore, it is the Office’s position that the claimed intended use of “a human food composition”, as recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art, applied above, because the prior art structure, is either identical and/or obvious in view of the applied references, wherein the present claims are capable of performing the recited purpose or intended use. Therefore this argument is not persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Garcia (i.e. Loisa): as applied in the Office Action of rejection March 27, 2025.
BBC Butternut-squash: published online at least by 9/14/2020 at: https://web.archive.org/web/20200914211221/https://www.bbcgoodfood.com/glossary/butternut-squash-glossary
BBC Spinach: published online at least by 9/24/2020 at: https://web.archive.org/web/20200924025041/https://www.bbcgoodfood.com/glossary/spinachglossary
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 PATRICIA ANN GEORGE whose telephone number is (571)272-5955. The examiner can normally be reached T-TH 9:00 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571)272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Patricia George
Primary Examiner
Art Unit 1793
/PATRICIA A GEORGE/Primary Examiner, Art Unit 1793
Prosecution Insights