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 .
The Amendment filed June 1, 2026 has been entered. Claims 1-9 are pending. Claim 1 has been amended. Claims 5-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim.
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.
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.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Xiong et al (CN 111227132 A; June 5, 2020; See English Translation).
Regarding claims 1 and 3, Xiong discloses a palatability enhancer for pet food ([0002], [0004]) comprising cysteine, arginine, black soldier fly larvae, one or more amino acids, and one or more processing aids ([0016], [0022], [0042], See Examples 7-16: [0056]-[0074], [0102]).
Xiong teaches that the cysteine can be present in an amount of 2-2.5 parts by weight ([0042]).
Xiong teaches that arginine can be present in an amount of 1 part by weight ([0042]).
Xiong teaches that the black solider fly larvae can be present in an amount of 45-55 parts by weight ([0042]).
Xiong further teaches that the one or more processing aids (e.g. reducing sugar that can be xylose and sulfide that can be thiamine, or vitamin B1) can be present. Xiong teaches that the reducing sugar, e.g. xylose, can be present in an amount of 2.5 part by weight, and the sulfide, or thiamine, e.g. vitamin B1, can be present in an amount 1.5 parts by weight ([0042], Example 13, [0068]).
Therefore, Xiong teaches that the composition comprises at most a total of 63 parts by weight ([0042]: the combination of 55 parts black soldier fly larvae + 2.5 parts cysteine + 1 part arginine + 1.5 parts sulfide + 0.5 parts yeast extract + 2.5 parts reducing sugar). This results in a composition comprising:
4.0% by weight cysteine, thus falling within claimed range of 0.1-10%,
1.6% by weight arginine, thus falling within the claimed range of 0.1-10%,
87% by weight black soldier fly larvae, and
2.4 and 4% by weight processing aids: 4% by weight reducing sugar, or xylose, and 2.4% by weight sulfide, or vitamin B1, thus falling within the claimed range of each at 0.1-10%. ([0042])
Xiong teaches the composition comprising black soldier fly larvae in an amount of 87% by weight, which is higher than the claimed amount of 10-80% by weight. Xiong teaches that black soldier fly larvae are primarily used as protein additives as they are rich in protein and fat ([0005], [0008]). It would have been obvious to one of ordinary skill in the art to vary the amount of black soldier fly larvae present in the composition depending on the amount of fat and protein desired for the composition. Decreasing the amount present would lower the protein and fat content. It would have been obvious to decrease the amount of black soldier fly larvae depending on the targeted nutrition for the pet. This is merely routine experimentation that is well within the ordinary skill in the art.
Further, as stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Therefore, absent a showing that the claimed amount is critical, it would have been obvious to lower of black soldier fly larvae the amount in the composition of Xiong.
With respect to the composition further comprising one or more amino acids other than cysteine or arginine, Xiong teaches that the black solider fly larvae inherently comprise additional amino acids ([0045]-[0046]).
Xiong further teaches that the addition of amino acids significantly improves the flavor of the black soldier fly larvae without departing from the invention ([0103]). Xiong teaches that glycine, alanine, and aspartic acid produce a caramel aroma. Xiong teaches that histidine produces a toasted bread aroma. Xiong teaches that phenylalanine produces a unique violet aroma and isoleucine produces a roasted cheese aroma ([0102]).
It would have been obvious to one of ordinary skill in the art to further add one or more amino acids other than cysteine or arginine depending on the desired aroma of the of composition. As stated above, Xiong teaches that each amino acids contribute different aroma and therefore it would have been obvious to further add one or more additional amino acids to produce a desired aroma.
As stated in MPEP 2144.06 ““It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
Therefore, adding one or more amino acids would merely aid in further improving the flavor of the composition to result in a desired flavor/aroma. It would have been obvious to add the one or more amino acids other than cysteine or arginine in similar amounts as the cysteine and arginine as such amounts are suitable for improving the taste of the black soldier fly larvae. Further, one of ordinary skill in the art can vary the amount depending on the desired aroma of the composition.
With respect to the composition being thermally processed at 210-300 F for 20-100 minutes to complete Maillard reactions of the composition, the examiner notes that applicant has presented process limitations in a product claim. As stated in MPEP 2113: Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
In the instant case, the product as claimed is obvious over the product of Xiong and therefore, absent a showing that the process limitations produce a different product, the process limitations are not given patentable weight.
Furthermore, Xiong teaches that the composition is thermally processed at 110-115 C for 50-60 minutes ([0022], [0027]), which is 230-239 F for 50-60 minutes, thus falling within the claimed temperature and time of 210-300 F for 20-100 minutes. Xiong teaches that this steps carries out the Maillard reaction ([0022]).
Regarding claim 2, as stated above with respect to claim 1, Xiong renders obvious the addition of one or more amino acids, where the one or more amino acids can be alanine, aspartic acid, glycine, histidine, phenylalanine, or isoleucine depending on the desired aroma ([0102]).
Regarding claim 3, as stated above with respect to claim 1, Xiong teaches that the one or more processing aids can be xylose and vitamin B1 ([0042]).
Regarding claim 4, Xiong teaches that the black soldier fly larvae is hydrolyzed ([0021], [0026], [0042]).
With respect to the black soldier fly larvae being hydrolyzed and broken down to 10,000 Dalton or under, Xiong fails to specifically teach that the hydrolyzed black soldier fly larvae have a molecular weight of 10,000 Dalton or less.
However, it would have been obvious to one of ordinary skill in the art to vary the processing parameters for the hydrolysis process, such as the time for hydrolysis, to result in a desired breakdown of the molecules, thus resulting in a desired molecular weight. Xiong already teaches that the black soldier fly larvae is hydrolyzed to enhance palatability and therefore the molecules would be broken down to some degree. It would have been obvious to vary the time for hydrolysis to result in the black soldier fly larvae having a molecular weight of 10,000 Dalton or less in order to provide enhanced palatability. This is merely routine experimentation that is well within the ordinary skill in the art.
Response to Arguments
Applicant’s arguments with respect to the 103 rejection have been fully considered but were not found persuasive.
Applicant argues on pages 4-5 that Xiong fails to teach that the composition is thermally processed.
This is not found persuasive as Xiong teaches that the composition is thermally processed at 110-115 C for 50-60 minutes ([0022], [0027]), which is 230-239 F for 50-60 minutes, thus falling within the claimed temperature and time of 210-300 F for 20-100 minutes. Xiong teaches that this steps carries out the Maillard reaction ([0022]).
Furthermore, the examiner notes that applicant has presented process limitations in a product claim. As stated in MPEP 2113: Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
In the instant case, the product as claimed is obvious over the product of Xiong and therefore, absent a showing that the process limitations produce a different product, the process limitations are not given patentable weight.
Applicant further argues on page 5 that the Xiong composition is excluded from the claims as filed as the composition claims specifically excludes the inclusion of cysteine or arginine, which are required by Xiong.
This is not found persuasive as the claims do not exclude cysteine or arginine. The claims merely recite that other amino acids are present besides cysteine or arginine, which does not exclude cysteine or arginine, but instead implies that different amino acids are present. The claims do not recite that the composition excludes or does not comprise cysteine or arginine and therefore this argument is not found persuasive.
Applicant further argues on page 5 with respect to claim 4 that the claimed molecular size is specific and drives a highly controlled, targets Maillard reaction in a dual-reducing sugar systems, which is not taught or suggested by the prior art.
This is not found persuasive. Xiong clearly teaches that the composition undergoes a Maillard reaction to enhance the flavor of the composition (Summary).
Xiong further teaches that the prepared black soldier fly attractant does not add flavors, and only uses the Maillard reaction to produce a strong aroma ([0033]).
Therefore, it would have been obvious one of ordinary skill in the art to vary the processing parameters for the hydrolysis process, such as the time for hydrolysis, to result in a desired breakdown of the molecules, thus resulting in a desired molecular weight. Xiong already teaches that the black soldier fly larvae is hydrolyzed to enhance palatability and therefore the molecules would be broken down to some degree. It would have been obvious to vary the time for hydrolysis to result in the black soldier fly larvae having a molecular weight of 10,000 Dalton or less in order to provide enhanced palatability, which is the same purpose as the instant invention. This is merely routine experimentation that is well within the ordinary skill in the art.
Applicant further argue that Xiong fails to teach the low-molecular weight substrate in combination with the claimed processing aid, vitamin B1, which creates a specific chemical fingerprint. This is not found persuasive as Xiong teaches the presence of a processing aid. Xiong teaches that the one or more processing aids can be xylose and vitamin B1 ([0042]). Therefore, Xiong teaches a composition having the same components as claimed and processed in a similar manner as claimed, as stated above. Therefore, this argument is not found persuasive.
Applicant argues on page 6 that applicant created a stable, chemically fingerprinted substrate optimized for precise flavor development by establishing 16 strict quantitative amino acid thresholds.
This is not found persuasive as applicant’s arguments are not commensurate in scope with the claims. The claims do not require establishing 16 strict quantitative amino acid thresholds. In fact, the one amino acid in an amount of 0.1-10% by weight.
Applicant further argues that Xiong provides no teaching of rheology and foaming stability issues that arise during the heating of the insect protein mass, wherein the problem was eliminated by the addition of one or more processing aids. This is not found persuasive as Xiong teaches the presence of a processing aid. Xiong teaches that the one or more processing aids can be xylose and vitamin B1 ([0042]).
Therefore, as Xiong teaches a composition comprises the same components as claimed in similar amounts, wherein the composition is thermally processed to undergo a Maillard reaction, applicant’s arguments are not found persuasive and the 103 rejection is maintained.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791
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