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 Feb. 19, 2026 has been entered. Claims 1-3 and 10-15 are pending. Claims 14-15 are new.
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 1-3 and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kageshima et al. (JP 2012-165724 A; made of record by applicant).
Regarding claim 1, Kageshima discloses a coating material comprising an oil-and-fat processed acetylated starch ([0008]-[0009]).
Kageshima further teaches that the oil-and-fat processed acetylated starch, when in an aqueous suspension at a concentration of 6% by mass, has a viscosity when reaching 95 C different than the viscosity of the suspension immediately after being maintained at 95 C for a period of time, such as 30 minutes ([0009]).
Kageshima fails to specifically teach the viscosity of the suspension immediately after being maintained at 95 C for 5 minutes as claimed, however, as Kageshima teaches a coating material comprising an oil-and-fat processed acetylated starch in an aqueous suspension at a concentration of 6% by weight, it would have been obvious to one of ordinary skill in the art that the viscosity of the suspension of Kageshima would be expected to be the same as claimed after 5 minutes at 95 C as the ingredients and concentration are the exact same as claimed absent a showing otherwise.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Further, it would have been obvious to one of ordinary skill in the art to vary the processing conditions for producing the oil-and-fat processed acetylated starch of Kageshima in order to result in an oil-and-fat processed acetylated starch having desired swelling characteristics, which would affect the viscosity. This is merely routine experimentation that is well within the ordinary skill in the art.
Regarding claim 2, Kageshima teaches that the coating material comprises the oil-and-fat processed acetylated starch in an amount of 5 to 60% by mass ([0034]), thus overlapping the claimed range of 10-90% by mass. 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)
Regarding claim 3, Kageshima teaches that the coating material further comprises wheat flour ([0034]-[0036]).
Regarding claim 10, Kageshima further teaches a method for producing a coated fried food comprising preparing food ingredients to which a coating material comprising an oil-and-fat processed acetylated starch is adhered and deep-frying the food ingredients ([0034]-[0043], See Examples).
Kageshima further teaches that the oil-and-fat processed acetylated starch, when in an aqueous suspension at a concentration of 6% by mass, has a viscosity when reaching 95 C different than the viscosity of the suspension immediately after being maintained at 95 C for a period of time, such as 30 minutes ([0009]).
Kageshima fails to specifically teach the viscosity of the suspension immediately after being maintained at 95 C for 5 minutes as claimed, however, as Kageshima teaches a coating material comprising an oil-and-fat processed acetylated starch in an aqueous suspension at a concentration of 6% by weight, it would have been obvious to one of ordinary skill in the art that the viscosity of the suspension of Kageshima would be expected to be the same as claimed after 5 minutes at 95 C as the ingredients and concentration are the exact same as claimed absent a showing otherwise.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Further, it would have been obvious to one of ordinary skill in the art to vary the processing conditions for producing the oil-and-fat processed acetylated starch of Kageshima in order to result in an oil-and-fat processed acetylated starch having desired swelling characteristics, which would affect the viscosity. This is merely routine experimentation that is well within the ordinary skill in the art.
Regarding claim 11, Kageshima teaches that the coating material comprises the oil-and-fat processed acetylated starch in an amount of 5 to 60% by mass ([0034]), thus overlapping the claimed range of 10-90% by mass. 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)
Regarding claim 12, Kageshima teaches that the coating material further comprises wheat flour ([0034]-[0036]).
Regarding claim 13, Kageshima further teaches an additional coating (e.g. breadcrumbs [0041]) attached to the food material already comprising the coating with the oil-and-fat processed acetylated starch.
Regarding claims 14-15, Kageshima discloses that the oil-and-fat processed acetylated starch is produced by a method comprising combining a raw starch with vinyl acetate at a ratio of 0.5-3% by weight vinyl acetate and allowing the acetylation reaction to proceed for 10-120 minutes ([0019]), which is right below the claimed amount of 4-5% vinyl acetate and overlaps the claimed time of 2-4 hours as 120 minutes is 2 hours. 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)
With respect to the amount of vinyl acetate being 1% less than what is claimed, it would have been obvious to one of ordinary skill in the art to increase the amount of vinyl acetate in Kageshima depending on the effect of the treatment, such as swelling of the starch granules as Kageshima teaches that such effect is more efficient as the amount of vinyl acetate added increases ([0023]). Therefore, it would have been obvious to one of ordinary skill in the art to vary the amount of vinyl acetate added in Kageshima depending on the desired degree of swelling.
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. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Response to Declaration
The Declaration under 37 CFR 1.132 filed Feb. 19, 2026 is insufficient to overcome the 103 rejection as set forth in the last Office action.
Applicant states that Kageshima teaches that the reaction is carried out for 10-120 minutes, while in the present application, the reaction is carried out for 2-4 hours. Applicant further states that Kageshima uses an amount of vinyl acetate ranging from 0.5-3%, while the present application uses an amount from 3-5%. Applicant goes on to state that such processing differences would results in the product of Kageshima having a different viscosity than what is claimed.
This is not found persuasive as the ranges taught in Kageshima overlap the ranges used in the present application, e.g. 120 minutes and 2 hours are the same and 3% vinyl acetate is the same in both applications. Therefore, Kageshima suggests the use of the same amount of vinyl acetate and a similar reaction time, therefore, rendering obvious the product having a similar viscosity. 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, the independent claims do not require any processing conditions that would result in the product of Kageshima having a different viscosity than what is claimed.
Applicant further compares Examples in Kageshima to that of the instant invention to show that the coating material of Kageshima would not have the claimed viscosity.
This is not found persuasive for the same reasons as stated above. Kageshima suggests the same processing conditions as the present application in producing the coating material. Applicant cannot compare only preferred embodiments over the broader disclosure in Kageshima.
As stated in MPEP 2123: “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”).
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)
Therefore, as Kageshima suggests the use of the similar amount of vinyl acetate and a similar reaction time, the Declaration is not found persuasive as applicant cannot only relied on preferred embodiments and disclosed examples.
Response to Arguments
Applicant’s arguments with respect to the 103 rejection have been fully considered but were not found persuasive.
Applicant argues that the coating material of Kageshima is produced by a different process and therefore would not have the viscosity as claimed. Applicant states that Kageshima teaches that the reaction is carried out for 10-120 minutes, while in the present application, the reaction is carried out for 2-4 hours. Applicant further states that Kageshima uses an amount of vinyl acetate ranging from 0.5-3%, while the present application uses an amount from 3-5%. Applicant goes on to state that such processing differences would results in the product of Kageshima having a different viscosity than what is claimed.
This is not found persuasive as the ranges taught in Kageshima overlap the ranges used in the present application, e.g. 120 minutes and 2 hours are the same and 3% vinyl acetate is the same in both applications. Therefore, Kageshima suggests the use of the same amount of vinyl acetate and a similar reaction time, therefore, rendering obvious the product having a similar viscosity. 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, the independent claims do not require any processing conditions that would result in the product of Kageshima having a different viscosity than what is claimed.
Applicant further compares Examples in Kageshima to that of the instant invention to show that the coating material of Kageshima would not have the claimed viscosity.
This is not found persuasive for the same reasons as stated above. Kageshima suggests the same processing conditions as the present application in producing the coating material. Applicant cannot compare only preferred embodiments over the broader disclosure in Kageshima.
As stated in MPEP 2123: “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”).
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)
With respect to applicant’s arguments over claims new 14-15, Kageshima discloses that the oil-and-fat processed acetylated starch is produced by a method comprising combining a raw starch with vinyl acetate at a ratio of 0.5-3% by weight vinyl acetate and allowing the acetylation reaction to proceed for 10-120 minutes ([0019]), which is right below the claimed amount of 4-5% vinyl acetate and overlaps the claimed time of 2-4 hours as 120 minutes is 2 hours. 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)
With respect to the amount of vinyl acetate being 1% less than what is claimed, it would have been obvious to one of ordinary skill in the art to increase the amount of vinyl acetate in Kageshima depending on the effect of the treatment, such as swelling of the starch granules as Kageshima teaches that such effect is more efficient as the amount of vinyl acetate added increases ([0023]). Therefore, it would have been obvious to one of ordinary skill in the art to vary the amount of vinyl acetate added in Kageshima depending on the desired degree of swelling.
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. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Therefore, as Kageshima suggests the use of the similar amount of vinyl acetate and a similar reaction time as the present application, applicant’s arguments are not found persuasive.
For the reasons stated above, a 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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