DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating
obviousness or nonobviousness.
Claims 1-2, 4-7, and 11-18 are rejected under 35 U.S.C. 103 as being unpatentable over Meinlschmidt US 12,364,270 in view of Kelleher US 2011/0244093.
Regarding claim 1, Meinlschmidt discloses an injection treatment solution for injecting meat comprising water and emulsified meat by product substrate of the meat being treated, wherein an amount of the emulsified meat is between about 10% and about 30% by mass of the injection treatment solution (col. 6, lines 24-32).
Claim 1 differs from Meinlschmidt in the recitation that the meat is specifically crustacean. However, Meinlschmidt discloses that the meat can be obtained from any animal and since crustaceans are animals, it would have been obvious to one of ordinary skill in the art to modify the meat byproduct to be emulsified crustacean substance in order to provide an injection treatment solution for enhancing a crustacean.
Additionally, Kelleher teaches that it was desirable to provide an injection solution for shellfish that comprises shellfish substrate, such shellfish including shrimp ([0012], [0013], claim 14), providing additional motivation to carry out the invention of Meinlschmidt utilizing crustacean substrate.
Regarding claim 1, Modified Meinlschmidt discloses an amount of salt is 1%, merely close to the claimed about 2.4% (MPEP 2144.05). It is noted that about 2.4% allows for amounts slightly less than 2.4%. Additionally, it is noted that Meinlschmidt discloses that salt affects the flavor of the product injected with the brine and discloses that salt can be added in any other quantity desired by the consumer (col.5, lines 1-10), therefore Meinlschmidt suggests that one of ordinary skill in the art can routinely optimize the quantity of salt in the injection solution for reasons including to provide a desired taste. [W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (MPEP 2144.05.II).
Regarding claim 2, claim 2 is rejected for the same reasons given above as for claim 1.
Regarding claim 4, claim 4 is rejected for the same reasons given for claim 1.
Regarding claims 5-7, claims 5-7 are recitations of intended use of the composition and as such do no further limit the structure of the injection treatment solution.
Regarding claim 11, claim 11 is rejected for the same reasons given above as for claim 1.
Regarding claims 12, 14, and 16, claims 12, 14 and 16 are rejected for the same reasons given above for claim 1. Modified Meinlschmidt discloses that the amount of emulsified shrimp meat is between about 14-21% by mass of the injection treatment solution (col. 6, lines 25-30).
Regarding claims 13, 15, 17, claims 13, 15, and 17 are recitations of intended use of the composition and as such do no further limit the structure of the injection treatment solution.
Regarding claim 18, Modified Meinlschmidt discloses an amount of salt is 1%, merely close to the claimed about 2.6% (MPEP 2144.05). Modified Meinlschmidt discloses that the amount of emulsified shrimp meat is between about 15% by mass of the injection treatment solution (col. 6, lines 25-30).
Response to Arguments
Applicant's arguments filed 01/23/2026 have been fully considered but they are not persuasive.
On pg. 9 of the remarks Applicant argues that amended claim 1 is nonobvious for at least two reasons, first that the cited references do not render obvious the recited salt concentration range and second that there is no reasonable expectation of success in applying the claimed method to crustaceans.
Applicant’s arguments have not been found convincing. First it is noted that unexpected results for the claimed salt range have not been established (See MPEP 716) therefore the routine optimization rejection has not been overcome. Additionally, regarding the amount taught in the prior art being merely close to the claimed range, while Applicant’s remarks are appreciated, MPEP 2144.05.I also recites “See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Becket, 88 F.2d 684 (CCPA 1937) ("Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys."); In re Dreyfus, 73 F.2d 931, 934, 24 USPQ 52, 55 (CCPA 1934)(the prior art, which taught about 0.7:1 of alkali to water, renders unpatentable a claim that increased the proportion to at least 1:1 because there was no showing that the claimed proportions were critical); In re Lilienfeld, 67 F.2d 920, 924, 20 USPQ 53, 57 (CCPA 1933)(the prior art teaching an alkali cellulose containing minimal amounts of water, found by the Examiner to be in the 5-8% range, the claims sought to be patented were to an alkali cellulose with varying higher ranges of water (e.g., "not substantially less than 13%," "not substantially below 17%," and "between about 13[%] and 20%"); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. App'x 906 (Fed. Cir. 2014)(reversing the Board's decision, in an appeal of an inter partes reexamination proceeding, that certain claims were not prima facie obvious due to non-overlapping ranges); In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.
Thus, it is clear from section MPEP 2144.05.I that “merely close” can apply to a difference between 1% and about 2.4% to about 2.7%, especially where criticality of the claimed range has not been established.
In response to Applicants argument above that there is no reasonable expectation of success in applying the claimed method to crustaceans, it is noted that “Obviousness does not require absolute predictability, but at least some degree of predictability” is required (MPEP 2143.02). Because Meinlschmidt discloses that the meat can be obtained from any animal and since crustaceans are animals, it would have been obvious to one of ordinary skill in the art to modify the meat byproduct to be emulsified crustacean substance in order to provide an injection treatment solution for enhancing a crustacean. Additionally, Kelleher teaches that it was desirable to provide an injection solution for shellfish that comprises shellfish substrate, such shellfish including shrimp ([0012], [0013], claim 14), providing additional motivation to carry out the invention of Meinlschmidt utilizing crustacean substrate. The teachings of the references provide at least some degree of predictability that there would be a reasonable expectation of success in applying the claimed method to crustaceans.
On Pg. 9-10 of the remarks Applicant argues that Applicant disagrees that the disclosure of a salt range of 0 to 1% renders obvious a salt concentration of about 2.4% to about 2.7% for at least four reasons. Applicant argues that first while Meinlschmidt recognizes salt may be present a person of ordinary skill in the art would understand Meinlschmidt as preferring very low salt concentrations or no salt at all. Applicant argues that second, in the context of a salt water solution 0-1% and about 2.4%-2.7% are dramatically different. Applicant argues the salt concentration of solutions for various uses and that a person of ordinary skill in the art would not view Meinlschmidt’s discussion as close to the recited range. Applicant argues that third, the present application makes clear that salt concentration also effects retention not just flavor. Applicant argues that improving retention is beyond routine optimization and thus the claimed range is not merely the result of routine optimization. Applicant argues that fourth, the examples of close ranges considered prima facie obvious under MPEP 2144.05(I) are distinguishable from the present case.
These arguments have not been found persuasive for the reasons presented below.
Regarding the first reason, “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments” (MPEP 2123.I,II). Therefore, Meinlschmidt’s teaching of 0-1wt% sodium chloride and 0% salt in an example do not constitute a teaching away from Meinlschmidt’s additional teaching that salt affects the flavor of the product injected with the brine and discloses that salt can be added in any other quantity desired by the consumer (col.5, lines 1-10).
Regarding the second reason, it is noted that criticality of the claimed about 2.4%-2.7% has not been established as it relates to the invention. As discussed above, it is clear from section MPEP 2144.05.I that “merely close” can apply to a difference between 1% and about 2.4% to about 2.7%, especially where criticality of the claimed range has not been established.
Regarding the third reason, MPEP 2144.IV recites “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.” In this case, the fact the applicant uses the salt for an additional purpose does not alter the conclusion that its use in a prior art composition would be prima facie obvious from the purpose disclosed in the Meinlschmidt.
Regarding the fourth reason, as discussed above it is clear from section MPEP 2144.05.I that “merely close” can apply to a difference between 1% and about 2.4% to about 2.7%, especially where criticality of the claimed range has not been established.
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.
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/A.A/
Ashley AxtellExaminer, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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