Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Continued Examination under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/16/2026 has been entered.
Status of the application
3. Claims 1-20 are pending in this application.
Claims 1-20 have been rejected.
Obviousness Double Patenting (ODP)
4. The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent
and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998): In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); Inre Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AlA.
Effective January 1,1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73 (b). A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non- statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, sub-section |. B.1. Fora reply toa non-final Office action, see 37 CFR1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www. Uspto.gov /patents/apply/applying -online /e-terminal-disclaimer
5. Claims 1-20 of current application 18/516942 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over Claims 2-9, 12-19 of co-pending Application Number 17/339,897.
It is to be noted that at least independent claim 1 of current application18/516942 claims “and (iv) a plant-based oil or oil-based spray” wherein at least independent claim 1, 12 of co-pending application 17/339,897 claims “ and (iv) a vegetable oil, fruit oil, a plant-based oil or oil-based spray”. Also claim 1 of current application 18/516942 claims “ oil -based spray is less than or equal to about 2.0% of the weight of the meat” and claim 12 of co-pending application 17/339,897 claims “oil- based spray is less than or equal to about 1.1% of the weight of the meat”.
Also, the claimed range of less than 2% by weight” overlaps with the claimed range of “less than 1.1% by weight”.
Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
While comparing the application numbers 18/516942 (present application) with the co-pending application number17/339,897 the common feature is that these two applications share the same invention.
As set forth in MPEP 2144.05, in the case where the claimed range “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)].
Claim Rejections - 35 USC § 112
6. 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.
7. Claims 1-20 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.
8. Independent claim 1 is a product claim. Independent claim 1 is amended to incorporate further additional method steps claim languages into product claim.
Applicants may amend independent claim 1 to specify the product is a baked product and it is from an intermediate dough ball and dough ball is from flour substitute product without binding agent. This will make the product claim 1 clear with respect to the claimed invention of having baked product from “dough ball without binding agent”, without any direct method steps in the product claim 1. Applicants are advised to consider following type of amendments (or related) as presented below:
Claim 1 (Currently Amended) A flour substitute product comprising (i) meat, (ii) salt, (iii) a flavor-masking spice, and (iv) a plant-based oil or oil-based spray, wherein the flour substitute product is essentially carbohydrate-free ,
wherein the weight of the plant-based oil or oil-based spray is less than or equal to about 2.0% of the weight of the meat;
wherein the flour substitute product is baked product from a dough ball which participates two-step baking at a temperature of at least 300 °F and a duration of no more than about 3 minutes , wherein the dough ball is from the flour substitute product comprising (i) meat, (ii) salt, (iii) a flavor-masking spice, and (iv) a vegetable oil, fruit oil, plant-based oil, or oil-based spray in
wherein the flour substitute product does not include a binding agent.
Applicants may consider related amendments with the desired claim language containing claim limitations as preferred choice.
Allowable Subject Matter
9. Applicant’s arguments and amendment of claim 1 as filed 6/16/2026 overcome the 103 obviousness rejections of record.
No new prior art discloses that dough ball without ‘binding agent” and twice baked dough ball is a final baked product. Therefore, applicants are advised to amend claim 1 further to overcome 112 second paragraph rejection in order to consider further allowance.
Examiner has proposed further amendment of claim 1 to amend in a way so that amended claim 1 will have amended claim limitations with the claim limitations of ‘dough ball’ and “baked product” , however, do not contain any direct method steps. As because dough ball is without binding agent which is not disclosed by any prior arts of record, therefore, the flour substitute product as dough ball shape without binding agent is unique and is allowable.
This above amended proposed claim 1 cannot have identical baked product with the disclosed prior arts because no prior art teaches alone, or in combination, the final baked product is twice baked product from dough ball. Therefore, amended claim 1 is to be considered as different product and cannot be considered as “product by process claim” having identical end product which is different from other disclosed prior art products. Therefore, the amended product claim 1 is allowable. However, applicants have flexibility to consider related claim languages which will maintain the entity of product claim having similar claim interpretation of the final amended version. Therefore, examiner may need to do further review after receiving the final amendments and arguments for further consideration.
Response to arguments
10. Applicant’s current continuation application 18/616942 has ODP issue with the prior application 17/339897. Therefore, applicants are advised to submit TD to overcome ODP rejection.
11. Applicant’s arguments and amendment of claim 1 has raised 112 second paragraph rejection. As discussed above, applicants need to amend further to overcome 112 second paragraph rejection.
12. Applicant’s arguments and amendment of claim 1 as filed 6/16/2026 overcome the rejections of record. Therefore, applicants are advised to further amend claim 1 as discussed above. It is agreed that as because dough ball is without binding agent which is not disclosed by any prior arts of record, therefore, the flour substitute product as dough ball shape without binding agent is unique and is allowable.
Applicants are also advised that this current application 18/516942 is the continuation of the prior similar ongoing application 17/339897 which contain similar independent product claim 1. Therefore, applicants are advised to submit TD to overcome ODP rejection for this application.
The rejection is made as non-final.
Conclusion
13. Any inquiry concerning the communication or earlier communications from the examiner should be directed to Bhaskar Mukhopadhyay whose telephone number is (571)-270-1139.
If attempts to reach the examiner by telephone are unsuccessful, examiner's supervisor Erik Kashnikow, can be reached on 571-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-1000.
/BHASKAR MUKHOPADHYAY/Examiner, Art Unit 1792
Prosecution Insights