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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-5,9,16-19, and 22 in the reply filed on 5/12/2026 is acknowledged.
Claims 7,10-14,20,21,23 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/12/2026.
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 1-5,9,16-19,22 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.
Regarding claims 1-5,9,16-19,22, it is unclear what properties are required for a composition to be considered “meat-like”.
Regarding claim 5, the terms “aka-kasu” and “shiro-kasu” are not conventional or art recognized terms and therefore render the scope as indefinite.
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.
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.
Claim(s) 1-5,9,16-19, 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 5198687B2(English translation provided by the applicant).
Regarding claims 1-3,9, JP ‘687 teaches a protein composition that is used as a meat substitute(para 5), i.e. would be considered meat-like according to the 112(b) rejection. The protein composition comprises vegetable proteins such as wheat gluten and other wheat proteins such as albumin and globulin and dietary fiber(para 13,21). It would have been obvious to use dietary fiber from wheat grain in order to have a consistent taste with the other wheat-based components.
While JP’687 is silent on the exact amounts of each protein and dietary fiber, it would have been obvious to adjust the amounts of gluten, wheat protein, and fiber depending on the dietary requirements and texture desired in the meat substitute.
Regarding claims 4 and 5, JP ‘687 does not specifically teach that the dietary fiber and protein are derived from an “aka-kasu” residue, a “shiro-kasu” residue, or a wheat flour starch. However, the origin of the dietary fiber and protein pertain to the method of making and does not materially affect the properties of the product.
It is noted that “[E]ven 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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that JP ‘687 meets the requirements of the claimed protein composition, JP ‘687 clearly meets the requirements of the present claims.
Regarding claim 16, JP ‘687 teaches that the protein composition has a water absorption capacity of at least 1.5(150%)(para 27), which would overlap the claimed range of 300 to 400% of the dry mass.
Regarding claims 17,19, JP ‘687 teaches that the protein composition is dried and has a moisture content of 15% by weight or less, i.e. is in a dry form(para 12,26). Since the protein composition has a low moisture content, one of ordinary skill in the art would expect the composition to be in a granular/powdery state.
Regarding claim 18, JP ‘687 does not teach the presence of a hydrolyte of wheat flour starch. However, since the composition is mainly wheat based it would have been obvious to include other wheat components such as a hydrolyte of wheat flour starch for uniform consistency.
Regarding claim 22, JP ‘687 teaches a protein composition that is used as a meat substitute(para 5), i.e. would be considered meat-like according to the 112(b) rejection. The protein composition comprises vegetable proteins such as wheat gluten and other wheat proteins such as albumin and globulin and dietary fiber(para 13,21). It would have been obvious to use dietary fiber from wheat grain in order to have a consistent taste with the other wheat-based components.
While JP’687 is silent on the exact amounts of each protein and dietary fiber, it would have been obvious to adjust the amounts of gluten, wheat protein, and fiber depending on the dietary requirements and texture desired in the meat substitute.
JP ‘687 does not specifically teach that the dietary fiber and protein are derived from an “aka-kasu” residue, a “shiro-kasu” residue, or a wheat flour starch. However, the origin of the dietary fiber and protein pertain to the method of making and does not materially affect the properties of the product.
It is noted that “[E]ven 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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that JP ‘687 meets the requirements of the claimed protein composition, JP ‘687 clearly meets the requirements of the present claims.
JP ‘687 teaches that the protein composition has a water absorption capacity of at least 1.5(150%)(para 27), which would overlap the claimed range of 300 to 400% of the dry mass.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE D LEBLANC whose telephone number is (571)270-1136. The examiner can normally be reached 8AM-4PM EST M-F.
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/KATHERINE D LEBLANC/Primary Examiner, Art Unit 1791
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