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 status
The examiner acknowledges the amendment made to the claims on 02/05/2026.
Claims 1-20 are pending in the application. Claims 10-15 are currently amended. Claims 1-9 and 16-18 are withdrawn with traverse in responding to the restriction requirement. Claims 19-20 are newly presented. Claims 10-15 and 19-20 are hereby examined on the merits.
Examiner Note
Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.
Claim Objections
Claims 19-20 are objected to because of the following informalities: “a plant derived oil” should read “the plant-derived oil”. Appropriate correction is required.
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 10, 12, 13, 15 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bergsma US Patent Application Publication No. 2019/0037872 A1 (hereinafter referred to as Bergsma) in view of Ichihara US Patent Application Publication No. 2013/0022711 A1 (hereinafter referred to as Ichihara), and evidenced by Sigma-Aldrich, Product Specification [Online], [retrieved on 2026-03-17]. Retrieved from the Internet: <URL: hhttps://www.sigmaaldrich.com/specification-sheets/319/821/G5003-BULK________SIGMA____.pdf> (hereinafter referred to as Sigma-Aldrich).
Regarding claims 10, 12, 13, 15 and 20, Bergsma teaches a method of making a cheese analogues comprising mixing root or tuber starch (e.g., potato starch, sweet potato starch, or cassava starch) with water, a plant-derived oil, and a vegetable protein (0001; 0007; 0009; 0013; 0021; 0034-0038).
Bergsma teaches that an enzymatically modified starch can be used, as long as the modification does not fully preclude gelatinization of the starch (0009). Bergsma is silent regarding what enzyme is used to treat the starch.
Ichihara teaches that treating a starch such as potato starch, sweet potato starch or cassava starch (0155) with α-glucosidase will result in a starch with excellent thickening function and gel forming function, and the ability to gelatinize for the resulting starch is not compromised (0029; 0147; 0038). Ichihara further teaches that the enzyme treated starch can be used in a food (0001).
Both Bergsma and Ichihara are directed to food comprising modified starch, and wherein Bergsma teaches that enzymatically modified potato, sweet potato or cassava starch with gelatinization property can be used in making a cheese analogue, Ichihara teaches that α-glucosidase treated potato, sweet potato or cassava starch has excellent thickening and gel forming function without losing the gelatinization property, and can be used in a food. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Bergsma by including α-glucosidase treated potato, sweet potato or cassava starch as disclosed by Ichihara in the cheese analogue of Bergsma with reasonable expectation of success, for the reason that prior art has established that α-glucosidase treated potato, sweet potato or cassava starch has excellent thickening and gel forming function without losing the gelatinization property, and can be used in a food.
On the amount of α-glucosidase by weight of enzyme unit per gram of starch, Ichihara teaches that the amount of enzyme is preferably about 0.01% or more by weight of the solid content of the starch (0261). Ichihara further teaches that an commercial enzyme such as α-glucosidase from Saccharomyces cerevisiae by Sigma-Aldrich Corporation can be used (0207). As evidenced by Sigma-Aldrich product specification for α-glucosidase from Saccharomyces cerevisiae, the enzyme activity is 10 or more Units/mg protein. As such, prior art teaches an enzyme amount that overlaps with the range as recited in claims 10 and 13. Calculation: assuming that a concentration of α-glucosidase from Saccharomyces cerevisiae is 0.01% by weight of the solid starch, then 100 gram starch will need 10 mg enzyme the units of which would be ≥ 100 Units (e.g., 10 u/mg x 10 mg), thus the dosage units by per gram of starch is 1 U/g. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Further, Ichihara teaches that another commercial α-glucosidase enzyme such as Transglucosidase L "Amano" (origin: Aspergillus niger; Amano Enzyme Inc.) can be used too (0207). According to Table 2 of the instant specification, Transglucosidase L "Amano “ has an enzyme activity of 60,8000 g U/g. therefore, the α-glucosidase per 1 gram of starch used by prior art overlaps with the range as recited in claims 10 and 13. Calculation: assuming that a concentration of α-glucosidase from Amano is 0.01% by weight of the solid starch, then 100 gram starch will need 6,080 Units of α-glucosidase from Amano, thus the dosage units by per gram of starch is 60.8 U/g. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
The preamble language about improved or improving the meltability and/or stretchability of the cheese analogue as recited in claim 10 or claim 13 recites the purpose of the claim, and the recited purpose does not result in a manipulative difference between the claim and prior art because the actual steps recited in Bergsma in view of Ichihara and the instant claim are the same and will necessarily provide the aforementioned purpose in the preamble of claim 10 or 13.
Regarding claim 19, it is found that Bergsma as modified by Ichihara differs from claim 19 in that where prior art teaches treating the starch with the enzyme followed by mixing the treated enzyme with the oil, claim 19 recites treating the mixture of starch and oil with enzyme. However, the selection of any order of mixing ingredients is prima facie obvious in the absence of convincing arguments or evidence that the claimed order provides an unexpected result. Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (See MPEP 2144.04 IV). In the instant case, it is submitted that treating the starch with enzyme followed by adding oil would not produce patentable differences from treating the mixture of starch and oil with the enzyme, for the reason that α-glucosidase is specific to residue that contains glucose, thus will not work on oil the ingredient of which is a triglyceride.
Claims 11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Bergsma as modified by Ichihara as applied to claim 10 or claim 13 above, and further in view of Carpenter US Patent No. 5,807,601 (hereinafter referred to as Carpenter).
Regarding claims 11 and 14, Bergsma as modified by Ichihara as recited above teaches a method of making a cheese analogue comprising mixing α-glucosidase treated potato, water, plant-derived fat and vegetable protein. Bergsma as modified by Ichihara is silent regarding including a polysaccharide thickener in the mixture that comprises starch, fat, protein and water.
Carpenter in the same field of endeavor teaches a method of making a cheese analogue (e.g., imitation cheese, which refers to a cheese analog, column 2, line 66-67) comprising, protein, fat, water and starch (column 2, line 39-45); and a hydrocolloid stabilizer (e.g., agar gum, guar gum, xanthan gum, etc.) working in conjunction with starch to enhance the texture of the cheese analogue (column 5, line 15-30).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Bergsma by including a hydrocolloid stabilizer (e.g., agar gum, guar gum, xanthan gum, etc.) in the mixture that comprises starch, oil, water and protein as disclosed by Bergsma so as to enhance the texture of the cheese analogue. The agar gum, guar gum or xanthan gum as disclosed by Carpenter reads on the limitation about a polysaccharide thickener.
Response to Arguments
Applicant's arguments filed 02/05/2026 have been fully considered and the examiner’s response is shown below:
The ODP type of rejection of claims 10, 12, 13 and 15 is withdrawn in view of the amendment made to claims 10 and 13.
The 35 USC 112 rejection of claims 10-15 are withdrawn in view of the amendment made to claims 10 and 13.
Regarding the 35 USC 103 rejection of claims 10, 12, 13 and 15 over Bergsma in view of Ichihara, applicant argues on page 11 of the Remarks that the examples of Ichihara teaches an enzyme dosage unit of 6080 per gram of starch which falls outside of the range of the claims.
The argument is considered but found unpersuasive because applicant is relying on prior art reference’s exemplary embodiments to narrow prior art’s effective disclosure. In an obviousness inquiry, all disclosures of the prior art, including unpreferred embodiments, must be considered. Merck & Co.v. Biocraft Labs., Inc.,874 F.2d 804, 807 (Fed. Cir. 1989) (citing In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278,280 (CCPA 1976)). In the instant case, besides 1% enzyme as in the examples of Ichihara, the reference also teaches a broad range of 0.01% or more enzyme (0261), thus if 0.01% enzyme is used instead of 1% the enzyme dosage unit would be 60.8 per gram of starch, which falls within the range as recited in claims 10 and 13.
Applicant argues on pages 11-12 of the Remarks that the office action does not address either the required motivation or the required reasonable expectation of success that a person of ordinary skill in the art must have had in order to have considered the asserted combination of the references.
The examiner disagrees. The motivation and the reasonable expectation of success analysis is laid out in para. 17 of the office action issued 11/05/2025. Applicant is invited to shed light on which part of the analysis has error.
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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/CHANGQING LI/Primary Examiner, Art Unit 1791
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