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 .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 5 December 2025 is acknowledged.
Applicant has overcome the following by virtue of amendment of the claims: (1) the objections to the claims have been withdrawn; (2) the 112(b) rejections of claims 6-7, 10-11, and 14-15 have been withdrawn; (3) the 102 rejections of claims 5-7 and 13-16 have been withdrawn, but these claims are now rejected under 35 U.S.C § 103.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-21
Withdrawn claims: 17-21
Previously canceled claims: None
Newly canceled claims: None
Amended claims: 2-11 and 13-15
New claims: None
Claims currently under consideration: 1-16
Currently rejected claims: 1-16
Allowed claims: None
Claim Objections
Claims 8, 12, and 16 are objected to because of the following informalities:
In claim 8, line 1, “The diet of claim 5” should read, “The diet composition of claim 5” for consistency with dependent claims 6-7.
In claim 12, line 1, “The diet of claim 9” should read, “The diet composition of claim 9” for consistency with dependent claims 10-11.
In claim 16, line 1, “The diet of claim 13” should read, “The diet composition of claim 13” for consistency with dependent claims 14-15.
Appropriate correction is required.
Claim Interpretation
It is noted that the recitation “A mealworm diet” in independent claims 1, 5, 9, and 13 is a statement of intended use. A statement with regard to intended use is not further limiting insofar as the structure of the product is concerned. In order to patentably distinguish the claimed invention from the prior art, a claimed intended use must result in a structural difference between the claimed invention and the prior art. See MPEP § 2111.02(II). In the present case, there is no structural difference recited in the claims that makes the claimed diet specific to mealworms.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Morales-Ramos et al. (Morales-Ramos, J.A., Rojas, M.G., Kelstrup, H.C., & Emery, V. (2020). Self-Selection of Agricultural By-Products and Food Ingredients by Tenebrio molitor (Coleoptera: Tenebrionidae) and Impact on Food Utilization and Nutrient Intake. Insects, 11(12), 827, 15 pages. http://doi.org/10.3390/insects11120827).
Regarding claim 1, Morales-Ramos teaches a mealworm diet composition comprising potato flour, corn dried distiller's grains, rice bran whole, rice bran defatted, canola meal, and oat hulls – Morales-Ramos teaches 20 food products and agricultural by-products used in different combinations as food choices for self-selection of mealworm diets (p. 1, Simple Summary). The ingredients were “dry white cabbage, potato flour, alfalfa pellets, wheat bran, rice bran (whole and solvent defatted), spelt screenings; meals from canola, soybean, olive, sunflower, cotton, and kelp; hulls from rice, oat, and peanut, and coffee chaff; and dry distilled grains from corn, wheat, and barley from ethanol production and brewery” (p. 3, ¶ 1). Morales-Ramos discloses nine treatments of eight-ingredient combinations of these food choices (p. 4, Table 1), and that the mealworms consume some amount of each of the ingredient presented (p. 6, Table 2), rendering each ingredient suitable for inclusion in a diet composition.
MPEP § 2144.07 states, “The selection of a known material based on its suitability for its intended use support[s] a prima facie obviousness determination”.
Therefore, it would have been prima facie obvious, before the effective filing date of the claimed invention, to have prepared a mealworm diet composition comprising any or all of the disclosed 20 ingredients, including a combination of potato flour, corn dried distiller's grains, rice bran whole, rice bran defatted, canola meal, and oat hulls as claimed because Morales-Ramos teaches that each of the claimed ingredients is a suitable ingredient for formulating a mealworm diet composition.
Therefore, claim 1 is rendered obvious.
Regarding claim 2, Morales-Ramos teaches the diet composition of claim 1.
Morales-Ramos also teaches that the diet composition has a weight percent of at least 20% potato flour, 10% corn dried distiller's grains, 20% rice bran whole, 36% rice bran defatted, 7% canola meal, or 7% oat hulls.
Morales-Ramos teaches that the relative consumption of each ingredient can be used to approach the optimal proportion of the ingredient in formulating a tailored diet formulation (p. 1, Simple Summary). Across the study, mealworms consumed ingredients in proportions shown in the table below. The data presented are derived from Figure 2 (p. 7).
Proportion (%)
Ingredient
Low
High
Potato Flour
17.3
41
Wheat Bran
19.3
37.1
Rice Bran Whole
28.2
40.5
Rice Bran Defatted
11.2
15.6
Corn Dry Distiller's Grain
9.3
34.6
Barley Brewery Spent Grain
10.9
29.7
Canola Meal
2.4
14.8
Oat Hulls
1.7
6.5
Peanut Hulls
1.4
4.1
As can be seen from the table above, the claimed range of at least 20% potato flour overlaps the disclosed range of 17.3-41%. The claimed amounts of 10% corn dried distiller’s grains or 7% canola meal lie inside the disclosed ranges of 9.3-34% and 2.4-14.8%, respectively. In a case where the claimed ranges/amounts overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Claim 2 is therefore rendered obvious.
Regarding claim 3, Morales-Ramos teaches the diet composition of claim 1.
The phrase, “where the efficiency of conversion of ingested food measured by the ratio of dry body weight of mealworms to dry weight of food consumed times 100 is at least about 9.7” is directed toward a downstream intended result of using the composition in a feeding process.
A statement with regard to intended use is not further limiting insofar as the structure of the product is concerned. In order to patentably distinguish the claimed invention from the prior art, a claimed intended use must result in a structural difference between the claimed invention and the prior art. See MPEP § 2111.02(II).
In the present case, there is no patentable distinction between the diet composition in the prior art and the claimed diet composition. The patentable subject matter of claim 3 is the diet composition as recited in claim 1.
Therefore, where claim 1 is obvious, claim 3 is likewise obvious.
Regarding claim 4, Morales-Ramos teaches the diet composition of claim 1.
The phrase, “where the development time of mealworms is as few as about 122 days” is directed toward a downstream intended result of using the composition in a feeding process.
A statement with regard to intended use is not further limiting insofar as the structure of the product is concerned. In order to patentably distinguish the claimed invention from the prior art, a claimed intended use must result in a structural difference between the claimed invention and the prior art. See MPEP § 2111.02(II).
In the present case, there is no patentable distinction between the diet composition in the prior art and the claimed diet composition. The patentable subject matter of claim 4 is the diet composition as recited in claim 1.
Therefore, where claim 1 is obvious, claim 4 is likewise obvious.
Regarding claim 5, Morales-Ramos teaches a mealworm diet comprising wheat bran, corn dried distiller's grains, rice bran whole, brewery distiller's grains (barley brewery spent grain), and oat hulls (p. 4, Table 1, Treatment 6). Table 1 lists “potato” as an ingredient. Morales-Ramos specifies that the food choice is potato flour (p.3, ¶ 1), as claimed. The combinations of food choices according to Table 1 were selected such that each combination contained at least one food choice with high content of each of the macronutrients (protein, lipid, and carbohydrate) and dietary fiber to allow the mealworm larvae to select a complete diet (p. 3, ¶ 1). The food choices were presented individually in separate containers within one “arena” such that mealworms were able to migrate between containers to consume desired amounts of each food choice (p. 2, ¶ 4, Figure 1C). Morales-Ramos teaches that this method of self-selection was used to approach the optimal proportion of these ingredients in mealworm diets by measuring their relative consumption, and “this information will be used to formulate and evaluate diet formulations for the yellow mealworm” (p. 1, Simple Summary). Thus, Morales-Ramos teaches that the combination of ingredients presented in Treatment 6, combined with the consumption data presented in Figure 2 (p.7), provides the ingredients and proportions for a mealworm diet composition comprising wheat bran, corn dried distiller's grains, rice bran whole, brewery distiller's grains (barley brewery spent grain), and oat hulls. Morales-Ramos also teaches one of ordinary skill in the art to use this information to formulate mealworm diet formulations (i.e., compositions).
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to prepare a mealworm diet composition comprising wheat bran, corn dried distiller's grains, rice bran whole, brewery distiller's grains (barley brewery spent grain), and oat hulls. One of ordinary skill in the art would have been motivated to do so with a reasonable expectation of success because Morales-Ramos teaches a self-selection treatment comprising the claimed ingredients and using the self-selection data to formulate mealworm diet formulations (i.e., compositions).
Therefore, claim 5 is rendered obvious.
Regarding claim 6, Morales-Ramos teaches the diet composition of claim 5.
The phrase, “where the efficiency of conversion of ingested food measured by the ratio of dry body weight of mealworms to dry weight of food consumed times 100 is about 7.1” is directed toward a downstream intended result of using the diet in a feeding process.
A statement with regard to intended use is not further limiting insofar as the structure of the product is concerned. In order to patentably distinguish the claimed invention from the prior art, a claimed intended use must result in a structural difference between the claimed invention and the prior art. See MPEP § 2111.02(II).
In the present case, there is no patentable distinction between the diet in the prior art and the claimed diet. The patentable subject matter of claim 6 is the diet as recited in claim 5.
Therefore, where claim 5 is obvious, claim 6 is likewise obvious.
Regarding claim 7, Morales-Ramos teaches the diet composition of claim 5.
The phrase, “where the development time of mealworms is as few as about 166 days” is directed toward a downstream intended result of using the diet in a feeding process.
A statement with regard to intended use is not further limiting insofar as the structure of the product is concerned. In order to patentably distinguish the claimed invention from the prior art, a claimed intended use must result in a structural difference between the claimed invention and the prior art. See MPEP § 2111.02(II).
In the present case, there is no patentable distinction between the diet in the prior art and the claimed diet. The patentable subject matter of claim 7 is the diet as recited in claim 5.
Therefore, where claim 5 is obvious, claim 7 is likewise obvious.
Regarding claim 8, Morales-Ramos teaches the diet composition of claim 5.
Morales-Ramos also teaches that the diet composition has a weight percent of at least 30% wheat bran, 20% corn dried distiller's grains, 35% rice bran whole, 10% brewery distiller's grains, or 5% oat hulls.
Morales-Ramos teaches that the relative consumption of each ingredient can be used to approach the optimal proportion of the ingredient in formulating a tailored diet formulation (p. 1, Simple Summary). Across the study, mealworms consumed ingredients in proportions shown in the table below. The data presented are derived from Figure 2 (p. 7).
Proportion (%)
Ingredient
Low
High
Potato Flour
17.3
41
Wheat Bran
19.3
37.1
Rice Bran Whole
28.2
40.5
Rice Bran Defatted
11.2
15.6
Corn Dry Distiller's Grain
9.3
34.6
Barley Brewery Spent Grain
10.9
29.7
Canola Meal
2.4
14.8
Oat Hulls
1.7
6.5
Peanut Hulls
1.4
4.1
As can be seen from the table above, the claimed range of at least 30% wheat bran overlaps the disclosed range of 19.3-37.1%. The claimed amounts of 20% corn dried distiller’s grains 35% rice bran whole, or 5% oat hulls lie inside the disclosed ranges of 9.3-34%, 28.2-40.5%, and 1.7-6.5%, respectively. In a case where the claimed ranges/amounts overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Claim 8 is therefore rendered obvious.
Regarding claim 9, Morales-Ramos teaches a mealworm diet composition comprising wheat bran, potato flour, corn dried distiller's grains, rice bran whole, rice bran defatted, canola meal, brewery distiller's grains, and oat hulls – Morales-Ramos teaches 20 food products and agricultural by-products used in different combinations as food choices for self-selection of mealworm diets (p. 1, Simple Summary). The ingredients were “dry white cabbage, potato flour, alfalfa pellets, wheat bran, rice bran (whole and solvent defatted), spelt screenings; meals from canola, soybean, olive, sunflower, cotton, and kelp; hulls from rice, oat, and peanut, and coffee chaff; and dry distilled grains from corn, wheat, and barley from ethanol production and brewery” (p. 3, ¶ 1). Morales-Ramos discloses nine treatments of eight-ingredient combinations of these food choices (p. 4, Table 1), and that the mealworms consume some amount of each of the ingredient presented (p. 6, Table 2), rendering each ingredient suitable for inclusion in a diet.
MPEP § 2144.07 states, “The selection of a known material based on its suitability for its intended use support[s] a prima facie obviousness determination”.
Therefore, it would have been prima facie obvious, before the effective filing date of the claimed invention, to have prepared a mealworm diet comprising any or all of the disclosed 20 ingredients, including a combination of wheat bran, potato flour, corn dried distiller's grains, rice bran whole, rice bran defatted, canola meal, brewery distiller's grains, and oat hulls as claimed because Morales-Ramos teaches that each of the claimed ingredients is a suitable ingredient for formulating a mealworm diet.
Therefore, claim 9 is rendered obvious.
Regarding claim 10, Morales-Ramos teaches the diet composition of claim 9.
The phrase, “where the efficiency of conversion of ingested food measured by the ratio of dry body weight of mealworms to dry weight of food consumed times 100 is about 8.1” is directed toward a downstream intended result of using the diet in a feeding process.
A statement with regard to intended use is not further limiting insofar as the structure of the product is concerned. In order to patentably distinguish the claimed invention from the prior art, a claimed intended use must result in a structural difference between the claimed invention and the prior art. See MPEP § 2111.02(II).
In the present case, there is no patentable distinction between the diet in the prior art and the claimed diet. The patentable subject matter of claim 10 is the diet as recited in claim 9.
Therefore, where claim 9 is obvious, claim 10 is likewise obvious.
Regarding claim 11, Morales-Ramos teaches the diet composition of claim 9.
The phrase, “where the development time of mealworms is as few as about 144 days” is directed toward a downstream intended result of using the composition in a feeding process.
A statement with regard to intended use is not further limiting insofar as the structure of the product is concerned. In order to patentably distinguish the claimed invention from the prior art, a claimed intended use must result in a structural difference between the claimed invention and the prior art. See MPEP § 2111.02(II).
In the present case, there is no patentable distinction between the diet in the prior art and the claimed diet. The patentable subject matter of claim 11 is the diet as recited in claim 9.
Therefore, where claim 9 is obvious, claim 11 is likewise obvious.
Regarding claim 12, Morales-Ramos teaches the diet composition of claim 9.
Morales-Ramos also teaches that the diet has weight percent of at least 10% wheat bran, 18% potato flour, 10% corn dried distiller's grains, 29% rice bran whole, 11% rice bran defatted, 10% canola meal, 7% brewery distiller's grains, or 5% oat hulls.
Morales-Ramos teaches that the relative consumption of each ingredient can be used to approach the optimal proportion of the ingredient in formulating a tailored diet formulation (p. 1, Simple Summary). Across the study, mealworms consumed ingredients in proportions shown in the table below. The data presented are derived from Figure 2 (p. 7).
Proportion (%)
Ingredient
Low
High
Potato Flour
17.3
41
Wheat Bran
19.3
37.1
Rice Bran Whole
28.2
40.5
Rice Bran Defatted
11.2
15.6
Corn Dry Distiller's Grain
9.3
34.6
Barley Brewery Spent Grain
10.9
29.7
Canola Meal
2.4
14.8
Oat Hulls
1.7
6.5
Peanut Hulls
1.4
4.1
As can be seen from the table above, the disclosed range of 19.3-37.1% wheat bran lies inside the claimed range of at least 10% wheat bran.
Additionally, the claimed amounts of 18% potato flour, 10% corn dried distiller's grains, 29% rice bran whole, 10% canola meal, or 5% oat hulls lie inside the disclosed ranges of 17.3-41%, 9.3-34%, 28.2-40.5%, 2.4-14.8%, and 1.7-6.5% respectively. In a case where the claimed ranges/amounts overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Claim 12 is therefore rendered obvious.
Regarding claim 13, Morales-Ramos teaches a mealworm diet comprising potato flour, corn dried distiller's grains, rice bran whole, rice bran defatted, canola meal, brewery distiller's grains (barley brewery spent grains), and peanut hulls (p. 4, Table 1, Treatment 5). Table 1 lists “potato” as an ingredient. Morales-Ramos specifies that the food choice is potato flour (p.3, ¶ 1), as claimed. The combinations of food choices according to Table 1 were selected such that each combination contained at least one food choice with high content of each of the macronutrients (protein, lipid, and carbohydrate) and dietary fiber to allow the mealworm larvae to select a complete diet (p. 3, ¶ 1). The food choices were presented individually in separate containers within one “arena” such that mealworms were able to migrate between containers to consume desired amounts of each food choice (p. 2, ¶ 4, Figure 1C). Morales-Ramos teaches that this method of self-selection was used to approach the optimal proportion of these ingredients in mealworm diets by measuring their relative consumption, and “this information will be used to formulate and evaluate diet formulations for the yellow mealworm” (p. 1, Simple Summary). Thus, Morales-Ramos teaches that the combination of ingredients presented in Treatment 5, combined with the consumption data presented in Figure 2 (p.7), provides the ingredients and proportions for a mealworm diet composition comprising potato flour, corn dried distiller's grains, rice bran whole, rice bran defatted, canola meal, brewery distiller's grains (barley brewery spent grains), and peanut hulls. Morales-Ramos also teaches one of ordinary skill in the art to use this information to formulate mealworm diet formulations (i.e., compositions).
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to prepare a mealworm diet composition comprising potato flour, corn dried distiller's grains, rice bran whole, rice bran defatted, canola meal, brewery distiller's grains (barley brewery spent grains), and peanut hulls. One of ordinary skill in the art would have been motivated to do so with a reasonable expectation of success because Morales-Ramos teaches a self-selection treatment comprising the claimed ingredients and using the self-selection data to formulate mealworm diet formulations (i.e., compositions).
Therefore, claim 13 is rendered obvious.
Regarding claim 14, Morales-Ramos teaches the diet composition of claim 13.
The phrase, “where the efficiency of conversion of ingested food measured by the ratio of dry body weight of mealworms to dry weight of food consumed times 100 is about 9.6” is directed toward a downstream intended result of using the diet in a feeding process.
A statement with regard to intended use is not further limiting insofar as the structure of the product is concerned. In order to patentably distinguish the claimed invention from the prior art, a claimed intended use must result in a structural difference between the claimed invention and the prior art. See MPEP § 2111.02(II).
In the present case, there is no patentable distinction between the diet in the prior art and the claimed diet. The patentable subject matter of claim 14 is the diet as recited in claim 13.
Therefore, where claim 13 is obvious, claim 14 is likewise obvious.
Regarding claim 15, Morales-Ramos teaches the diet composition of claim 13.
The phrase, “where the development time of mealworms is as few as about 144 days” is directed toward a downstream intended result of using the diet in a feeding process.
A statement with regard to intended use is not further limiting insofar as the structure of the product is concerned. In order to patentably distinguish the claimed invention from the prior art, a claimed intended use must result in a structural difference between the claimed invention and the prior art. See MPEP § 2111.02(II).
In the present case, there is no patentable distinction between the diet in the prior art and the claimed diet. The patentable subject matter of claim 15 is the diet as recited in claim 13.
Therefore, where claim 13 is obvious, claim 15 is likewise obvious.
Regarding claim 16, Morales-Ramos teaches the diet composition of claim 13.
Morales-Ramos also teaches that the diet has a weight percent of at least 21% potato flour, 10% corn dried distiller's grains, 30% rice bran whole, 12% rice bran defatted, 11% canola meal, 11% brewery distiller's grains, or 5% peanut hulls – Morales-Ramos teaches that the relative consumption of each ingredient can be used to approach the optimal proportion of the ingredient in formulating a tailored diet formulation (p. 1, Simple Summary). Proportional consumption of each ingredient claimed in claim 13 is presented in Figure 2, Treatment 5 of Morales (p.7). These data have been summarized in the table below:
Data from Morales-Ramos Figure 2, Treatment 5
Proportion (%)
Ingredient
Claimed
Disclosed
Potato Flour
≥21
21.6
Corn Dry Distiller's Grain
10
9.5
Rice Bran Whole
30
30.4
Rice Bran Defatted
12
11.2
Canola Meal
11
9.6
Barley Brewery Spent Grain
11
10.97
Peanut Hulls
5
4.1
As can be seen from the table above, Morales-Ramos teaches the diet of claim 13 comprising 21.1% potato flour (i.e., at least 21%). This is sufficient to satisfy the limitations in the alternative as claimed.
Additionally, the disclosed amounts of corn dry distiller’s grain, rice bran whole, and barley brewery spent grain are within rounding error of the claimed amounts, and are also deemed sufficient to satisfy the limitations in the alternative as claimed.
Therefore, claim 16 is rendered obvious.
Response to Arguments
Claim Objections:
Applicant has overcome the objections to the claims by amendment. Accordingly, the objections have been withdrawn.
Claim Rejections – 35 U.S.C. § 112:
Applicant has overcome the 35 U.S.C. § 112(b) rejections of claims 6-7, 10-11 based on amendment to the claims. Accordingly, the 35 U.S.C. § 112(b) rejections have been withdrawn.
Claim Interpretation:
Applicant traversed the interpretation that the recitation “A mealworm diet” in independent claims 1, 5, 9, and 13 is a statement of intended use. Applicant made no substantive argument against this interpretation (p. 4, “Claim Interpretation”).
It is noted that the cited prior art is in the context of mealworm diets, rendering this interpretation unnecessary for the current rejections and those of the previous Office Action. However, Applicant should be aware that any prior art disclosing compositions comprising the ingredients as claimed would still read on the claimed invention because using the claimed composition as a mealworm diet is an intended use of the composition. A statement with regard to intended use is not further limiting insofar as the structure of the product is concerned. In order to patentably distinguish the claimed invention from the prior art, a claimed intended use must result in a structural difference between the claimed invention and the prior art. See MPEP § 2111.02(II). In the present case, there is no structural difference recited in the claims that makes the claimed diet specific to mealworms.
Claim Rejections – 35 U.S.C. § 102:
Applicant’s arguments filed on 5 December 2025 with respect to claims 5-7 and 13-16 (p. 5, ¶ 11 – p. 8, ¶ 2) have been considered but are moot because Applicant’s amendments have necessitated the new grounds of rejection under 35 U.S.C. § 103 as being obvious in view of Morales-Ramos, and Applicant’s arguments are with respect to anticipation under 35 U.S.C. § 102.
It is noted that Applicant’s argument that Morales-Ramos teaches additional ingredients (p. 5, ¶¶ 2-3, p. 7, ¶¶ 5-9) would not be persuasive because Applicant uses the open claim language “comprising”, which allows for additional ingredients beyond what is claimed, and Morales-Ramos teaches the claimed ingredients in one embodiment.
Applicant’s amendment to claims 5 and 13 to recite “diet composition” is sufficient to overcome the rejection under 35 U.S.C. § 102 because Morales-Ramos does not specifically teach that all ingredients are together in one composition. The embodiments provided by Morales-Ramos are individual ingredients arranged in different containers together in one arena such that mealworms can access them to form a complete diet. Accordingly, those rejections have been withdrawn. However, Applicant’s amendment has necessitated the new ground of rejection of claims 5-7 and 13-16 under 35 U.S.C. § 103 as presented hereinabove.
Claim Rejections – 35 U.S.C. § 103: Applicant’s arguments filed on 5 December 2025 have been fully considered, but they are not persuasive.
Applicant first argued that Morales-Ramos does not teach a diet composition of claims 1-4 & 8 with the use of potato starch (p. 8, ¶¶ 4-7).
Applicant’s argument has been considered, but it is not persuasive. Claims 1-4 & 8 do not require “potato starch”. Claims 1-4 require “potato flour”, and Morales-Ramos teaches potato flour. “Food choices consisted of 20 food products and agricultural by-products, which included dry white cabbage, potato flour…” (p. 3, ¶ 1).
Applicant further argued that there is no reasonable expectation of success of arriving at the instant claims based on Morales-Ramos because the number of combinations of diet compositions containing 8 ingredients, for example, by choosing ingredients from a list of 20 different ingredients is greater than 125,000 combinations, and adding the number of possible combinations that can be made from fewer or larger numbers of ingredients, the number of possible combinations would be an exceedingly large number (p. 8, last ¶ - p. 9, ¶ 3). Applicant argued that the rejection does not present a proper rationale as to why the composition of the instant claims would have been obvious by combining the particular ingredients of the instant claims to form diet compositions when such a large number of combinations is possible and does not present a reasonable expectation of success (p. 9, ¶ 4 – p. 10, ¶ 1).
Applicant’s argument has been considered, but it is not persuasive. First, the claims use the open language “comprising”. Applicant’s argument relies on one of ordinary skill in the art arriving at a combination of only the claimed ingredients from the 20 possible ingredients disclosed by Morales-Ramos. The claim requires only that the claimed ingredients be present, and may be in combination with other ingredients. The rejection states that “it would have been prima facie obvious, before the effective filing date of the claimed invention, to have prepared a mealworm diet composition comprising any or all of the disclosed 20 ingredients [emphasis added], including a combination … as claimed because Morales-Ramos teaches that each of the claimed ingredients is a suitable ingredient for formulating a mealworm diet composition.” One of ordinary skill in the art with the knowledge that the 20 ingredients disclosed by Morales-Ramos are suitable for preparing a mealworm diet would have arrived at the claimed invention by simply combining all 20 ingredients. In doing so, one of ordinary skill in the art would have been met with a reasonable expectation of success in producing a mealworm diet as claimed since the ingredients are taught to be suitable for such a purpose.
In addition to the foregoing, Morales-Ramos teaches an embodiment that differs from the composition of claim 1 by only one claimed ingredient – Treatment 5 comprises peanut hulls, but not the claimed oat hulls (p. 4, Table 1). Morales-Ramos teaches that the combinations of the ingredients in the trials was based on the relative content of each of the macro-nutrients (protein, lipid, carbohydrate) and dietary fiber, and that combinations should contain at least one food choice with high content of each of the macro-nutrients and dietary fiber in order to provide a complete diet (p. 3, ¶ 1). Categorizing the disclosed ingredients by macro-nutrient and fiber provides multiple ingredient options for each category. For instance, oat hulls, peanut hulls, rice hulls and coffee chaff are all ingredients that provide dietary fiber. As such, one of ordinary skill in the art would have recognized that any of these ingredients or combinations thereof would provide the requisite fiber. Therefore, it would have been obvious to substitute the peanut hulls in Treatment 5 with oat hulls or to add oat hulls to the composition of Treatment 5 to obtain the predictable result of a mealworm diet comprising a dietary fiber source. See MPEP § 2143(I)(B). One of ordinary skill in the art would have had a reasonable expectation of success in doing so because Morales-Ramos teaches other mealworm diet compositions comprising oat hulls alone or in combination with peanut hulls (p. 4, Table 1).
More broadly, it would have been obvious for one of ordinary skill in the art to substitute or combine any of the disclosed ingredients of the same category. As such, there are finite choices, and it would have been obvious to try any of the other same-category ingredients, using the treatments disclosed by Morales-Ramos as a starting point (e.g., Treatment 5), to assess preference within the category and/or to find cost-effective alternatives that still provide adequate nutrition. The number of combinations in such an approach would be manageable by routine experimentation, building from the teachings of Morales-Ramos, rather than starting with over 125,000 combinations.
With regard to claim 9, Morales-Ramos also teaches that wheat bran is among the most suitable ingredients for mealworm production (p. 1, Simple Summary). Wheat bran was among the most highly consumed ingredients, which were found to be those having a high carbohydrate content (p. 5, ¶ 4). Therefore, where it would have been obvious to modify Treatment 5 to substitute the peanut hulls in Treatment 5 with oat hulls or to add oat hulls to the composition of Treatment 5 to adjust the dietary fiber, it also would have been obvious to further modify this composition to add wheat bran as an additional carbohydrate source. One of ordinary skill in the art would have had a reasonable expectation of success in doing so because Morales-Ramos teaches other mealworm diet compositions comprising wheat bran in combination with other carbohydrate sources (e.g., potato flour, rice bran) (p. 4, Table 1).
Therefore, for at least these reasons, Applicant’s arguments are not persuasive, and the teachings of Morales-Ramos render obvious the claimed mealworm diet compositions. The rejections of claims 1-4, and 8-12 under 35 U.S.C. § 103 are therefore maintained. Claims 5-7 and 13-16 are also rejected under 35 U.S.C. § 103 as necessitated by Applicant’s amendments to the claims.
Conclusion
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 James Shellhammer whose telephone number is (703) 756-5525. The examiner can normally be reached Monday - Thursday 7:30 am - 5:00 pm ET.
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.
/JAMES P. SHELLHAMMER/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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