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 .
Status of the Claims
Claims 1-20 are currently under examination and the subject matter of the present Office Action.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/27/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement was considered by the Examiner.
Claim Objections
Claim 18 is objected to because of the following informalities:
The Examiner recommends indicating that the dough is boiled in water, i.e. “boiling said dough in water”. Appropriate correction is required.
Claim Interpretation and Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
According to MPEP 2181, § 112(f) is applied to a claim limitation if it meets the following 3-prong test:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as "configured to" or "so that"; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function
Part I: Identifying Functional Language
According to MPEP 2181, a claim limitation is presumed to invoke 35 U.S.C. 112(f) when it explicitly uses the term "means" or "step" and includes functional language. The presumption that 35 U.S.C. 112(f) applies is overcome when the limitation further includes the structure, material or acts necessary to perform the recited function.
In the instant claims, Prong A is met by Claim 15, which recites “means for mixing”, means for combining”, “means for forming”, “means for cooking”, “means for drying”, and “means for packaging”. The words of the claim do not rebut that presumption (“means” is not modified by other words that denote structure), i.e. because § 112(f) is invoked, the BRI of “means for mixing”, means for combining”, “means for forming”, “means for cooking”, “means for drying”, and “means for packaging” is limited to what is disclosed in the specification.
Similarly, Prong A is met by Claims 18 and 19 with their recitation of “means for boiling” and “means for steaming” the dough.
Part II: Construing Functional Language
The corresponding structure, material, or act in the Specification that performs the recited function is given the broadest reasonable interpretation. However, neither the Specification nor Claim 15 disclose structures that perform the recited functions of “means for mixing”, means for combining”, “means for forming”, “means for cooking”, “means for drying”, and “means for packaging”, therefore the presumption is not rebutted. The same applies for Claims 18 and 19 which do not recite structures for the “means for boiling” and “means for steaming” the dough.
As such, the functional languages do not limit the scope of the claims, i.e. a prior art reference does not need to disclose any particular structure in order to anticipate these claims.
Part III: Definiteness of Functional Language
When § 112(f) is invoked, the specification must adequately disclose a corresponding structure, material or act that performs the function. For “means”-type claims, an adequate disclosure requires that the corresponding structure or material is: (a) disclosed in a way that one of ordinary skill in the art will understand what specific structure or material the inventor has identified to perform the recited function; (b) sufficient to perform the entire function recited in the claim limitation; and (c) clearly linked to the function in the written description.
In the instant claim set, one of ordinary skill in the art will not be able draw the boundary between what structures are covered by Claims 15, and 18-19, and what are not covered because no specific structure, material, or equipment for mixing, combining, forming, cooking, drying, packaging, boiling, and steaming the dough is identified.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 15 and 18-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
See MPEP §2163(I)(A) which states: "The claimed invention as a whole may not be adequately described where an invention is described solely in terms of a method of its making coupled with its function and there is no described or art recognized correlation or relationship between the structure of the invention and its function. A biomolecule sequence described only by a functional characteristic, without any known or disclosed correlation between that function and the structure of the sequence, normally is not a sufficient identifying characteristic for written description purposes, even when accompanied by a method of obtaining the claimed sequence.”
Instant Claim 15 calls for the method steps of mixing, combining, forming, cooking, drying, and packaging using undefined means. Claims 18 and 19 calls for method steps of boiling and steaming the dough using undefined means. To provide adequate written description and evidence of possession, these functions have implicit structure. The factors to be considered include disclosure of complete or partial structure, functional characteristics, structure/function correlation etc. There is not even identification of any particular portion of a structure that must for said activity except there are means to perform the functions. Accordingly, in the absence of sufficient recitation of distinguishing identifying characteristics, the specification does not provide adequate written description.
Vas-Cath Inc. v. Mahurkar, 19USPQ2d 1111, clearly states that “applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the 'written description' inquiry, whatever is now claimed.” (See page 1117.) The specification does not “clearly allow persons of ordinary skill in the art to recognize that they invented what is claimed.” (See Vas-Cath at page 1116).
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 15-20 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.
Claim 15-20 is drawn to a system, but neither the claim set nor the Specification give guidance on what the system comprises. Rather, Claim 15 only defines the system by referencing means to particular functions. The Specification only refers to the invention being directed to a system and method, but is silent on the components of the system. It is also unclear if the “system” encompasses an apparatus or a process. As such, an artisan will not know what system is being referred to in the claimed invention. Claims 16-20 depend from Claim 15 and are also rejected.
Claims 15 and 18-19are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. See 112(f) rejection supra. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.
Claims 15 and 18-19 elements “means for mixing”, means for combining”, “means for forming”, “means for cooking”, “means for drying”, “means for packaging”, “means for boiling” and “means for steaming” are limitations that invoke 35 U.S.C. 112, sixth paragraph. The Specification is silent regarding any corresponding structure or material. Fig. 1 shows paper cups and lids are used, and nothing else. Further, it is unclear whether these cups and lids are simply exemplary embodiments of the invention or the entirety of the claimed means. Because the claims are directed to a system with no clearly-defined structure, the claims do not distinctly claim the subject matter of the invention. Claims 16 and 20 depend from Claim 15 and are also rejected.
Pursuant to 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181, applicant should: (a) Amend the claims so that the claim limitations will no longer be interpreted as limitations under 35 U.S.C. 112, sixth paragraph; or (b) Amend the written description of the specification such that it expressly recites the corresponding structure, material, or acts that perform the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or (c) State on the record what corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function.
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.
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 1-2, 5-9, 11-13, 15, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kanya et al. (US 2005/0100652 A1, cited in the IDS), hereinafter Kanya in view of Xi et al. (CN 113693195 B, machine translated in IP.com), hereinafter Xi.
Regarding Claim 1, Kanya relates an invention comprising a soy based ready-to-eat low-fat high protein snack food and a process thereof, obtained by blending full fat soy flour, bengal gram flour, rice flour, chilli powder, salt etc. to obtain a dry mix, which, in turn, is mixed with water to form a dough which is extruded into desired shape and thickness, and baked for 15-60 minutes at a temperature range of 165-190 °C, and then sorted and packed as high protein snack (Abstract; Claims 1 and 6). Kanya expressly teaches examples of mixing the dry ingredients comprising rice flour, reading on the grain flour, and protein-containing soy flour, and Bengal gram powder, and salt etc., and adding water to make the dough, and extruded to noodle shape then baked (Example 1).
Kanya does not expressly teach a drying step after cooking the dough product.
Xi also discloses the preparation of noodle dough (Abstract). Xi describes an innovative process, which improves upon the traditional method of making non-fried instant noodles, comprising the steps of dough mixing, curing, rolling, cooking, pre-drying, dampening, cutting into threads for shaping, cutting, hot air drying, air cooling, then packaging (background 1st and 2nd paragraphs). The process improves the shape and taste of noodles. Xi teaches utilizing compressed air in drying the dough threads in the drying box to obtain dry dough blocks with the water content of 7-12% prior to cooling and packaging (p. 4, steps 5-8). Xi relates the sectional pre-drying treatment of the cooked dough prevented foaming, folding and uneven drying of the whole cooked dough and ensured removing excessive water, and improved appearance and consistency of the finished product (p. 12, 1st paragraph).
A person with ordinary skill in the art before the effective filing date of the claimed invention would have used employed the drying step prior to packaging, incorporating the teachings of Xi in the method of Kanya, with reasonable expectation that it would ensure removing excessive water, and improved appearance and consistency of the finished noodle product. Obviousness is established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so. See MPEP § 2143.01 and KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007). As such, Claims 8 and 15 are also rendered obvious.
Regarding Claims 2 and 13, Kanya teaches extruding the dough in a noodle shape (Example 1).
Regarding Claims 5 and 12, Xi teaches packaging the dry dough blocks (Claim 1). The prepared non-fried noodles have many advantages inclusive of quick and uniform rehydration, meeting the market demand, and very low bacteria concentration (p. 12, 2nd paragraph; Claim 1).
Regarding Claim 6, Xi teaches using high-quality wheat flour with the protein content of more than or equal to 10.0 percent, which reads on enriched wheat flour, as a further improvement on the invention (Examples 1-9, step 1; p. 7, 9th paragraph).
Regarding Claims 7, 9, and 17 Kanya teaches using bengal gram flour and rice flour, which are both gluten-free (Examples 1-5; Claim 1).
Regarding Claim 11, Kanya comprehends that, generally, the manufacture of a snack food involves extrusion of cereal/pulse dough followed by frying in oil [0002].
Regarding Claims 18-19, Xi teaches using a steam box and steam cooking at 70-100 ˚C to obtain cooked dough pieces, which would also boil the water (Abstract; Claim 1).
Claims 3-4, 10, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kanya in view of Xi, as applied to Claims 1, 8, and 15 above, and further in view of Karwowski et al. (CA 2704524 A1), hereinafter Karwowski.
Kanya does not expressly teach whole grain flour and the legume protein to be pea protein.
Karwowski also teaches high protein dough comprising whole grain flour (Abstract).
Regarding Claims 3, 14, and 16, Karwowski teaches embodiments wherein at least one flour comprises graham flour, wheat flour, whole grain flour, and mixtures thereof, and a preferred embodiment wherein at least one flour comprises whole grain flour in an amount of at least about 4g per 30g serving [0031]. Karwowski expressly teaches a high protein high fiber cracker dough and cracker having a crisp using a stabilized whole grain flour (Example 4). As such, it is within the skills of an artisan to substitute the Bengal gram flour in Kanya with the whole grain flour of Karwowski, if a gluten-containing flour is desired. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. See MPEP 2143.
Regarding Claims 4 and 10, Karwowski teaches recognizes soy protein as an exemplary plant or vegetable proteins along with bean flour, oat protein, lentil protein, pea protein etc. [0037]. Karwowski expressly teaches the preparation of a high protein high fiber cracker dough and cracker having a crisp texture using pea protein and wheat protein isolate (Example 2). As such, it is within the skills of an artisan to simply substitute the soy providing the legume protein in Kanya with the pea protein of Karwowski as both are found to be useful in preparing high protein dough for snacks. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. See MPEP 2143.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Kanya in view of Xi, as applied to Claims 1 and 15, and further in view of Petronio, M. (EP 1297754 A1).
Regarding Claim 20, Kanya teaches preparation of the high protein snack with spices such as chili powder and Ajwain powder ([0031], [0037] Table). However, Kanya does not teach the dehydrated vegetable.
Petronio is in the same field of pasta-based snack, and teaches the preparation of a pasta dough incorporating optional ingredients in the starting dough including dehydrated powdered vegetables (Claims 3 and 9).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Petronio with that of Kanya and add vegetables in the dough of Kanya using the dehydrated vegetables of Petronio. This is a situation where elements of references are combined in a predictable manner so that the elements retain their function. The dehydrated vegetables does not interact with other dough components in a manner that modifies the function of those components and vice versa. As such, the artisan would enjoy a reasonable expectation of success. Therefore, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Conclusion
No claims are allowed.
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/J.Y.S./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792