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 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 8-9 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.
Claim 8-9 recite the limitation "the 3D printed material". There is insufficient antecedent basis for this limitation in the claim. It is not clear if this refers to both the starch gel and fish meat composition, or not.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goto et al [US 2014/0287124A1].
Goto et al teach a method for extruding food material by combining starch and water 70-110C to dissolve and gelatinize the starch into a gel (paragraph 0045-0046), feeding the starch gel into an outer nozzle to form a shell (Figure 1, #5), feeding a fish meat composition to an inner nozzle to form a core yarn (Figure 1, #5; paragraph 0051-0052), and coextruding the two materials into a three-dimensional shape (Figure 1, P).
Regarding “A method for producing a meat substitute for crustacean soft tissue” in claim 1: when reading the preamble in the context of the entire claim, the recitation is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Tamayol et al [US 2024/0165879A1] in view of Le-Bail et al [US 12,471,616], Zhang et al [US 2018/0199614A1], and Goto et al.
Tamayol et al teach a method for multi-material bioprinting (title) comprising coextrusion with an inner nozzle and outer nozzle (Figure 1A & 1G, #20, 40), creating an extrudate with an outer shell and inner yarn core (Figure 1D), 3D printing of the combined extrudate (Figure 1A, #11), the materials including edible substances such as protein, polymers, polysaccharides, and gel (paragraph 0063), use as a food or meat material (paragraph 0145), nozzle diameters of 0.5-2 mm (Figure 2), and a grid pattern (Figure 15i).
Regarding “A method for producing a meat substitute for crustacean soft tissue” in claim 1: when reading the preamble in the context of the entire claim, the recitation is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Tamayol et al do not explicitly recite dissolving starch in water to form a gel, feeding a fish meat composition (claim 1), 10-14% starch (claim 2), potato starch (claim 3), pollock surimi (claim 4), the outer nozzle being 1.4-1.6 mm diameter and the inner nozzle being 0.8-1.2 mm in diameter (claim 5), a speed of 0.005-0.015 mL/min (claim 6), stirring the starch and water at 60-80C (claim 7), a core of fish meat and a shell of starch gel (claim 8).
Le-Bail et al teach a method for additive manufacturing (title) by dissolving 10-15% starch in water at 70-80C with stirring to produce a gel (Figure 1; column 14, lines 32-39), potato starch (column 7, line 53), a nozzle diameter of 0.8-2.5 mm (column 14, line 67).
Zhang et al teach a method for 3D precise printing of thawed surimi (abstract).
Goto et al teach a method for extruding food material by combining starch and water 70-110C to dissolve and gelatinize the starch into a gel (paragraph 0045-0046), feeding the starch gel into an outer nozzle to form a shell (Figure 1, #5), feeding a fish meat composition to an inner nozzle to form a core yarn (Figure 1, #5; paragraph 0051-0052), and coextruding the two materials into a three-dimensional shape (Figure 1, P).
It would have been obvious to one of ordinary skill in the art to incorporate the claimed starch gel and fish structure into the invention of Tamayol et al, in view of Le-Bail et al, Zhang et al, and Goto et al; since all are directed to methods of coextruding and/or 3D printing of edible materials, since Tamayol et al already included coextrusion of different materials in a 3D printing process but simply did not mention starch and fish in particular, since fish surimi was commonly used in 3D printing processes as shown by Zhang et al, since gelled starch was also commonly used in 3D printing processes as shown by Le-Bail et al, since starch gel and fish were commonly coextruded together as shown by Goto et al, since the substitution of two known 3D printing materials in the process of Tamayol et al would have yielded predictable results to one of ordinary skill in the art, since many consumers desired the texture and flavors of fish and/or starch gels in their foods, and since surrounding the surimi material with starch gel would have effectively mimicked the structure of muscle fibers in conventional meat/seafood products and thus provided greater consumer demand for the 3D printed product of Tamayol et al, in view of Le-Bail et al, Zhang et al, and Goto et al.
It further would have been obvious to one of ordinary skill in the art to incorporate the claimed starch dissolving, starch content, potato starch, stirring, and water temperature into the invention of ordinary skill in the art to incorporate the claimed starch gel and fish structure into the invention of Tamayol et al, in view of Le-Bail et al, Zhang et al, and Goto et al; since all are directed to methods of coextruding and/or 3D printing of edible materials, since Tamayol et al already included 3D printing of edible material such as polysaccharides, since edible 3D printing systems commonly included dissolving 10-15% starch in water at 70-80C with stirring to produce a gel (Figure 1; column 14, lines 32-39), potato starch (column 7, line 53) as shown by Le-Bail et al, and since these features would have been used during the course of normal experimentation and optimization procedures due to factors such as the desired texture and flavor properties of the final product of Tamayol et al.
It further would have been obvious to one of ordinary skill in the art to incorporate the claimed pollock, extrusion speed, and nozzle sizes into the invention of ordinary skill in the art to incorporate the claimed starch gel and fish structure into the invention of Tamayol et al, in view of Le-Bail et al, Zhang et al, and Goto et al; since all are directed to methods of coextruding and/or 3D printing of edible materials, since Tamayol et al already included a nozzle size of 0.5-2 mm (Figure 2), since Zhang et al already included surimi but simply did not mention pollock, since many consumers desired the flavor and texture of pollock surimi, and since the claimed nozzle diameters, extrusion speed, and pollock would have been used during the course of normal experimentation and optimization procedures due to factors such as the type and size of the product created and/or the desired flavor and texture attributes of the final product of Tamayol et al, in view of Le-Bail et al, Zhang et al, and Goto et al.
Double Patenting
The nonstatutory 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 nonstatutory 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); In re 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 nonstatutory 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 AIA . 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 nonstatutory 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, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(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 eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 (particularly claim 1) are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 (particularly claim 1) of copending Application No. 18/573,936 in view of Le-Bail et al, Zhang et al, and Goto et al. The ‘936 application does not claim dissolving starch in water to form a gel, feeding the starch gell to the outer nozzle, and fish meat to the inner nozzle (claim 1). Le-Bail et al, Zhang et al, and Goto et al teach the above mentioned concepts.
It would have been obvious to one of ordinary skill in the art to incorporate the claimed starch gel and fish structure into the invention of ‘936, in view of Le-Bail et al, Zhang et al, and Goto et al; since all are directed to methods of coextruding and/or 3D printing of edible materials, since ‘936 already included coextrusion of different materials in a 3D printing process but simply did not mention starch and fish in particular, since fish surimi was commonly used in 3D printing processes as shown by Zhang et al, since gelled starch was also commonly used in 3D printing processes as shown by Le-Bail et al, since starch gel and fish were commonly coextruded together as shown by Goto et al, since the substitution of two known 3D printing materials in the process of ‘936 would have yielded predictable results to one of ordinary skill in the art, since many consumers desired the texture and flavors of fish and/or starch gels in their foods, and since surrounding the surimi material with starch gel would have effectively mimicked the structure of muscle fibers in conventional meat/seafood products and thus provided greater consumer demand for the 3D printed product of ‘936, in view of Le-Bail et al, Zhang et al, and Goto et al.
This is a provisional nonstatutory double patenting rejection.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DREW E BECKER whose telephone number is (571)272-1396. The examiner can normally be reached 8am-5pm Monday-Friday.
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/DREW E BECKER/Primary Examiner, Art Unit 1792