DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “does not comprise a moisture retention agent”. It is unclear from the claim and applicant’s specification what compounds are excluded from the claimed product because a clear definition of “moisture retention agent” is not provided. Applicant’s specification provides no examples of moisture retention agents. Compounds within food products can provide many functions. It is unclear if compounds which retain moisture but also provide other functions are excluded from the claims. It is not clear what compounds are excluded from the claims. Since it is unclear what materials are excluded by the recitation of “does not comprise a moisture retention agent”, products which read on the positively recited compound limitations will be interpreted to read on the claims. Claims 2-6 depend from claim 1 and necessarily incorporate the indefinite limitations therein. Appropriate correction is required.
Claim 6 recites “forming the flake-shaped food product having a shape with an apparent thickness dimension increased compared to the sheet-shaped food product by drying shrinkage after adding water to the plurality of cut flakes.” There is insufficient antecedent basis for the term “the flake-shaped food product having a shape with an apparent thickness dimension increased compared to the sheet-shaped food product by drying shrinkage after adding water to the plurality of cut flakes”. Additionally, even if this limitation were interpreted as “forming the flake-shaped food product to have a shape with an apparent thickness dimension increased compared to the sheet-shaped food product by drying shrinkage after adding water to the plurality of cut flakes.” it is unclear what the scope of the claim is. It is not clear if the claim requires comparison of the flake-shaped food product produced by cutting after it has had water added and then subsequently dried to the sheet-shaped food product. It is not clear what quantity of water must be added or how dry the flake shaped product must be prior to comparison. It is also unclear what constitutes “an apparent thickness dimension” and how this limitation differs from mere thickness. As stated in MPEP 2173.06 II “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.” Since in the instant case considerable speculation and assumptions must be made as to the scope of claim 6, a prior art rejection is not proper at this time. Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka USPGPub 20190200666.
Regarding claim 1, Tanaka teaches a sheet-shaped food product comprising a flake shaped raw food material and a binding agent. [0017,0023] The food product comprises two sheets of food material that are laminated together and therefore would necessarily comprise irregularities on overlapping surfaces and voids having irregular shapes. [0060] The raw food material is disclosed to be seaweed. [0021]
Tanaka is silent regarding the moisture content of the sheet shaped food product. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have varied the moisture content of the sheet shaped food product of Tanaka depending on the flexibility desired.
Tanaka teaches a mass ratio of the dry mass (WA) of the raw food material to the dry mass (WB) of the binding agent of 4.9 to 7.3 which overlaps with the range recited in claim 1. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
Tanaka is silent regarding the mass ratio of the dry mass of the raw material to the dry mass of the sheet-shaped food product. While the values presently claimed are not explicitly taught by Tanaka, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the 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. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
In the present claims which recite unspecified ingredients, no coaction or cooperative relationship between the claimed components has been shown to product a new, unexpected and useful relationship. As such, claim 1 is not patentably distinguishable from Tanaka.
Regarding claim 2, Tanaka discloses that when the mass ratio WA/WB “is more than 7.3, the raw food material 2 is insufficient so that it becomes difficult to feel the taste of the material”. This statement in Tanaka would not be regarded as logical by one of ordinary skill in the art. Clearly, increasing the proportion of raw food material would increase the taste of the raw food material in the sheet shaped product by virtue of the increased raw food material content. As such, it would have been obvious to one of ordinary skill in the art at the time the application was filed to have increased the proportion of raw food material in the sheet shaped food of Tanaka is greater flavor intensity from the raw food material was desired. For this reason and the legal standard set forth in In re Levin, claim 2 does not provide a patentable distinction from the prior art.
Regarding claim 3, Tanaka teaches flakes which can pass through a sieve with a mesh size of 1.5 to 3 mm. [0023] Therefore, a maximum length dimension of the flakes would be between 1.5 and 3 mm.
Regarding claim 4, Tanaka teaches that the sheet shaped food product may have a thickness of 140-400 µm [0009] and therefore the thickness of the flakes comprising it must have a thickness less than 140-400 µm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
Regarding claim 5, this claim recites product-by-process limitations regarding the sheet-shaped food product being cut into “flakes”. As such, the scope of claim 5 is the same as the scope of claim 1 except for the dimensions of the product claimed. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. (MPEP 2144.04 IV A) Since the product of Tanaka would not perform differently than the claimed “flakes”, the recitation of different relative dimensions in claim 5 does not provide a patentable distinction from the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michele L Jacobson whose telephone number is (571)272-8905. The examiner can normally be reached Monday through Friday from 10-6.
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/Michele L Jacobson/Primary Examiner, Art Unit 1793