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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 27, 2026 has been entered.
Claims 1-9 and 21-29 are pending examination. Claims 10 and 11 were previously withdrawn.
Claim Rejections - 35 USC § 112
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 and 21 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.
Regarding claims 1 and 21, the recitation “where in the swollen composition is a fermented swollen composition” renders the claim indefinite. The present disclosure states the swollen composition may be a fermented puffed composition or a fermented puffed dough composition, which is produced by a production method that includes a fermentation process ([0016]). Here is it not clear if the swollen composition is a puffed composition or a puffed dough composition. Does the puffed composition and the puffed dough composition exhibit the same properties as required by (5) and (6) of claims 1 and 21, claims 2-8 and claims 22-28?
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.
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 1-9 and 21-29 are rejected under 35 U.S.C. 103 as being unpatentable over Niwano et al. (US 5,591,471).
Regarding claims 1-6, 8, 9, 21-26, 28 and 29, Niwano et al. disclose a puffed food (i.e., swollen food) comprising soybean protein, starch, dietary fiber and water (Abstract, C2/L18-26). Niwano et al. disclose the puffed food is made by kneading the raw materials, i.e., protein, starch, dietary fiber and water to produce a dough (C4/L52-67). Niwano et al. disclose that the dough is heat-treated into a puffed (i.e., swollen) food with excellent flavor and touch (C5/L45-51).
Niwano et al. disclose the ratio of soy protein, starch and dietary fiber in the dough for the puffed food (i.e., swollen food) is 1:0.2-0.8: 0.01-0.4 (C2/L63-67). Niwano et al. also disclose the dough comprises 150 to 300 parts by weight of water with respect to 100 parts by weight of the total amount of protein, starch and dietary fiber (C3/L55-64). Niwano et al. disclose that the solid content of the dough used to make the swollen food has a solid content of about 25 to 50% by weight (C5/L1-9).
Note, while Niwano et al. disclose a composition comprising 150 parts of water with respect to 100 parts by weight of the total amount of protein, starch and dietary fiber (i.e., moisture content of 150 wt% on a dry mass basis), a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP §2144.05 I). In the alternative, Niwano et al. disclose embodiments where additional ingredients are added to the puffed food composition, including for example,
Therefore, in a composition comprising 100 parts of a combination of protein, starch and dietary fiber and 150 parts by weight of water wherein the ratio of protein, starch and dietary fiber in the dough is 1:0.2-0.8:0.01-0.4, the composition could comprise (a) about 18 wt% protein on a wet mass basis, 14 wt% starch on a wet mass basis, and 8 wt% dietary fiber on a wet basis (150 parts water, 45 parts protein, 35 parts starch and 20 parts dietary fiber; wherein the ratio of protein, starch and dietary fiber is: 1: 0.6: 0.4) or . While the composition of Niwano et al. would result in about 18 wt% protein, 14 wt% starch and 8 wt% dietary fiber on a wet basis, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP §2144.05 I). The proportions of protein, starch and dietary fiber are so close to those presently claimed that prima facie one skilled in the art would have expected them to have the same properties.
Regarding requirements (5) and (6), given Niwano et al. disclose a puffed food (i.e., swollen food) having a composition identical to the claimed swollen food composition inherently the puffed food would meet the conditions of requirements (5) and (6); and claims 2- 6, 8, 9, 22-26, 28 and 29.
While Niwano et al. does not disclose the puffed food is made by process including fermentation, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself” (MPEP §2113 I). 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 (MPEP §2113 I).
Regarding claims 7 and 27, Niwano et al. disclose all of the claim limitations as set forth above. Given Niwano et al. disclose a puffed food comprising corn starch in the claimed quantities and that the puffed food is made by heating a composition comprising the corn starch, it necessarily follows that the puffed food would comprise methionol in the claimed amount of 0.01 ppb to 500000 ppb.
Response to Arguments
Applicant's arguments filed February 27, 2026 have been fully considered but they are not persuasive.
Applicant submits “Niwano is directed to a dough used to produce a puffed food that does not contain yeast and therefore does not undergo fermentation.”
In this case, claims 1 and 21 require the claim swollen composition be “fermented.” However, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself” (MPEP §2113 I). 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 (MPEP §2113 I). There is no evidence on the record, the puffed food product of Niwano et al., while produced by a process without fermentation, would not exhibit the claimed properties. Moreover, Applicants have not established the differences between the claimed swollen product which is produced by a process including fermentation versus a process that does include fermentation.
Moreover, note while the present specification states the swollen composition can be produced by a production method that includes a fermentation process wherein the fermentation process is with yeast, the reference does not exclude other types of fermentation. In other words, the presence of yeast is not determinative of whether a fermentation process has occurred or not.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A GWARTNEY whose telephone number is (571)270-3874. The examiner can normally be reached M-F: 9 a.m. - 5 p.m. EST.
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ELIZABETH A. GWARTNEY
Primary Examiner
Art Unit 1759
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759