DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 24 July 2025 has been entered.
Claim 1 has been amended. Claims 14-24 remain withdrawn. Claims 1-13 are currently pending and under examination.
This application is a continuation of U.S. Patent Application No. 18/534119, which is a continuation of U.S. Patent Application No. 18/364676, filed 3 August 2023, which is a continuation of U.S. Patent Application No. 17/946772, filed 16 September 2022, now U.S. Patent 11,723,392, which is continuation of U.S. Patent Application No. 17/694604, filed 14 March 2022, now U.S. Patent 11,478,007, which is a continuation of U.S. Patent Application No. 17/323918, filed 18 May 2021, now U.S. Patent 11,272,726, which is a divisional of U.S. Patent Application No. 16/842738, filed 7 April 2020, now U.S. Patent 11,039,635, which is a continuation of U.S. Patent Application No. 16/803667, filed 27 February 2020, now U.S. Patent 11,432,575, which claims benefit of priority to U.S. Provisional Patent Application No. 62/811421, filed 27 February 2019.
Withdrawal of Rejections:
The rejection of claims 1-13 under 35 U.S.C. 103 as being unpatentable over Huggins et al., is withdrawn.
The rejection of claims 1-4, 6, 7, 10, 12, and 13 under 35 U.S.C. 102(a)(1) as being anticipated by Here’s the Dish, is withdrawn.
The rejection of claims 1-3, 6, 7, 10, 12, and 13 under 35 U.S.C. 102(a)(1) as being anticipated by Romm, is withdrawn.
The rejection of claims 1, 5, 8, and 9 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Here’s the Dish, is withdrawn.
The rejection of claims 1, 4, 5, 8, and 9 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Romm, is withdrawn.
The rejection of claims 1-3 and 10-13 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 7, 8, 10, 15, 17, 19, 20, 22, 24, and 26 of U.S. Patent No. 11,464,251, is withdrawn.
New Rejections:
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 1-3, 6, 7, 10, 12, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Finnigan et al. (US 2010/0213293; Published 2010).
With regard to claims 1, 2, and 10, Finnigan et al. teach a composition comprising an aqueous formulation of edible fungal particles comprising filamentous fungal mycelia (Abs.; Para. 12), which is mycelial particles dispersed in an aqueous medium. As the composition includes embodiments that do not require any animal-derived products, such as providing the fungal mycelia in water (Para. 120; Table. 3a), the liquid dispersion is vegan. The edible fungus comprises Fusarium venenatum (Para. 12). Fusarium venenatum is taught by Applicant as a filamentous fungus usable in the composition (see claim 10). As the Fusarium venenatum cannot be separated from its properties, the fungal particles of Fusarium venenatum necessarily comprise greater than 40 wt% protein. The composition includes about 5 wt% solids (Para. 136), which is fully encompassed within about 4 wt% and about 30 wt%. The mycoprotein paste, which includes the fungal mycelia of the composition, is heat treated to render RNA non-viable (Para. 93), wherein heat treatment to render RNA non-viable is a treatment that eliminates cell viability.
Finnigan et al. teach a composition comprising a liquid dispersion of particles of mycelia as claimed, including all components as claimed. As the composition cannot be separated from its inherent properties, the composition as taught by Finnigan et al. is necessarily stable for at least about 1 day and at least about 30 days.
With regard to claim 3, Finnigan et al. teach a composition comprising a liquid dispersion of particles of fungal mycelia as claimed, including all components as claimed. As the composition cannot be separated from its inherent properties, the composition as taught by Finnigan et al. necessarily has a viscosity between about 0.1 Pa.s and about 5 Pa.s.
With regard to claim 6, Finnigan et al. teach that the composition may be a non-dairy milk product (Para. 66), which is a milk analog.
With regard to claim 7, Finnigan et al. teach that the composition is an ice-cream type dessert that is prepared by whipping the components together (Para. 65), wherein the whipped composition is deemed to be a “foam.”
With regard to claims 12 and 13, Finnigan et al. teach that foodstuffs, including yoghurt, ice-cream, drinks, soup, and milk, comprise the composition (Para. 64-66).
Claim Rejections - 35 USC § 102/103
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.
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, 4, 5, 8, 9, and 11 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Finnigan et al.
The teachings of Finnigan et al. as applied to claim 1 have been set forth above.
Claims 4, 5, 8, and 9 are directed to the liquid dispersion of particles of a filamentous fungus, which is produced by the claimed process. "[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).
Here, Finnigan et al. likewise provides a liquid dispersion of particles of filamentous fungi (Abs.). The liquid dispersion of particles of filamentous fungi is used for the same purpose as claimed: as a component in a composition, including specifically an edible food product (Abs.). Functionally, the liquid dispersion of particles of filamentous fungi of Finnigan et al. is the same as the claimed liquid dispersion of particles of filamentous fungi. Therefore, the liquid dispersion of particles of filamentous fungi of Finnigan et al. is the same as, or would have rendered obvious, the liquid dispersion of particles of filamentous fungi produced by the claimed process, including subjecting the liquid dispersion to shear to provide a viscosity after being subjected to shear that is lower than before, removing a portion of liquid from the liquid dispersion, which is concentrating the liquid dispersion; and deriving the particles from a filamentous fungal biomat, wherein the biomat is produced by surface or membrane fermentation.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, 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).
With regard to claim 11, Finnigan et al. teach that the filamentous fugus includes Fusarium species, especially Fusarium venenatum A3/5 (Para. 12). Finnigan et al. do not teach that the Fusarium is specifically Fusarium strain MK7. However, as Finnigan et al. teach a Fusarium filamentous fugus strain which is likewise usable as a food product, the Fusarium filamentous fugus strain as taught by Finnigan et al. is Fusarium strain MK7. Alternatively, it would have been obvious to one of ordinary skill in the art from the teachings of Finnigan et al. to provide and utilize an alternative Fusarium filamentous fugus strain, including Fusarium strain MK7. The use of an alternative species of Fusarium filamentous fugus strain amounts to the simple substitution of one known Fusarium filamentous fugus strain for another, and would have been expected to predictably and successfully provide such a species for use in a food product composition.
Response to Arguments
In view of Applicant’s amendments, all previous art rejections have been withdrawn. Therefore, Applicant’s arguments are moot. However, new rejections have been set forth above.
Maintenance/Modification of Rejections:
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 1-3, 8, 9, 12, and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 6, 7, 11, 13-16, 20-23, and 28-30 of U.S. Patent No. 11,666,080. Although the claims at issue are not identical, they are not patentably distinct from each other because both encompass a composition, including a food product such as candy, comprising a liquid dispersion of particles of a filamentous fungus in the form of mycelia, hyphae, or combinations thereof, the particles comprise greater than about 40 wt.% protein, a solids content of the liquid dispersion is between about 4 wt.% and about 30 wt.%, the particles have been treated to eliminate cell viability, the liquid dispersion is vegan, and the liquid dispersion is inherently stable for at least about 1 day or 30 days, and has a viscosity between about 0.1 Pa.s and about 5 Pa.s (Instant claims: 1-3, 12, 13; Cited patent claims: 1, 3, 4, 6, 7, 11, 13, 14, 16, 20-23, 28-30). The particles derived from a filamentous fungal biomass, including by surface fermentation (Instant claims: 8, 9; Cited patent claims: 15).
Claims 1-3 and 8-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 13-16, 18-21, 26, and 27 of U.S. Patent No. 11,723,392. Although the claims at issue are not identical, they are not patentably distinct from each other because both encompass a composition, including a food product, comprising a liquid dispersion of particles of a filamentous fungus, including Fusarium strain MK7, in the form of mycelia, hyphae, or combinations thereof, and from a biomat, the particles comprise greater than about 40 wt.% protein, a solids content of the liquid dispersion is between about 4 wt.% and about 30 wt.%, the particles have been treated to eliminate cell viability, the liquid dispersion is vegan, and the liquid dispersion is inherently stable for at least about 1 day or 30 days, and has a viscosity between about 0.1 Pa.s and about 5 Pa.s (Instant claims: 1-3, 8-13; Cited patent claims: 1-5, 13-16, 18-21, 26, 27).
Claims 1-3, 8, 9, 12, and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 10-12, 17, 19, 20, and 26-30 of U.S. Patent No. 12,035,736. Although the claims at issue are not identical, they are not patentably distinct from each other because both encompass a composition, including a food product, comprising a liquid dispersion of particles of a filamentous fungus in the form of mycelia, hyphae, or combinations thereof, the particles comprise greater than about 40 wt.% protein, a solids content of the liquid dispersion is between about 4 wt.% and about 30 wt.%, the particles have been treated to eliminate cell viability, the liquid dispersion is vegan, and the liquid dispersion is inherently stable for at least about 1 day or 30 days, and has a viscosity between about 0.1 Pa.s and about 5 Pa.s (Instant claims: 1-3, 12, 13; Cited patent claims: 1-4, 10-12, 17, 19, 20, 26-30). The particles derived from a filamentous fungal biomass, including by surface fermentation (Instant claims: 8, 9; Cited patent claims: 5).
Claims 1-3, 10, 12, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 6, 18-21, 27, 28, 33, and 36 of copending Application No. 18/123744 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both encompass a composition, including a food product, comprising a liquid dispersion of particles of a filamentous fungus in the form of mycelia, hyphae, or combinations thereof, the particles comprise greater than about 40 wt.% protein, a solids content of the liquid dispersion is between about 4 wt.% and about 30 wt.%, the particles have been treated to eliminate cell viability, the liquid dispersion is vegan, and the liquid dispersion is inherently stable for at least about 1 day or 30 days, and has a viscosity between about 0.1 Pa.s and about 5 Pa.s (Instant claims: 1-3, 12, 13; Cited application claims: 1, 2, 6, 18-21, 27, 28, 33). The fungal strain including Fusarium venenatum (Instant claim: 10; Cited application claim: 36)
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 10-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 9, 12, 31-34, 39, and 42-46 of copending Application No. 18/534119 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both encompass a composition, including a food product, including soups, drinks, smoothies, and yogurt, comprising a liquid dispersion of particles of a filamentous fungus, including Fusarium strain MK7, in the form of mycelia, hyphae, or combinations thereof, the particles comprise greater than about 40 wt.% protein, a solids content of the liquid dispersion is between about 4 wt.% and about 30 wt.%, the particles have been treated to eliminate cell viability, the liquid dispersion is vegan, and the liquid dispersion is inherently stable for at least about 1 day or 30 days, and has a viscosity between about 0.1 Pa.s and about 5 Pa.s (Instant claims: 1-3, 10-13; Cited application claims: 1, 7, 9, 12, 31-34, 39, 42-46).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 12, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 11-13, 14, 22-24, 27, and 28. of copending Application No. 18/446936 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both encompass a composition, including a food product, comprising a liquid dispersion of particles of a filamentous fungus in the form of mycelia, hyphae, or combinations thereof, the particles comprise greater than about 40 wt.% protein, a solids content of the liquid dispersion is between about 4 wt.% and about 30 wt.%, the particles have been treated to eliminate cell viability, the liquid dispersion is vegan, and the liquid dispersion is inherently stable for at least about 1 day or 30 days, and has a viscosity between about 0.1 Pa.s and about 5 Pa.s (Instant claims: 1-3, 12 ; Cited application claims: 1, 2, 11-13, 14, 22-24, 27, 28).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 8-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, 10, 14, and 15 of copending Application No. 18/349687 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both encompass a composition, including a food product, including yogurt, comprising a liquid dispersion of particles of a filamentous fungus, including Fusarium strain MK7, in the form of mycelia, hyphae, or combinations thereof, the particles comprise greater than about 40 wt.% protein, a solids content of the liquid dispersion is between about 4 wt.% and about 30 wt.%, the particles have been treated to eliminate cell viability, the liquid dispersion is vegan, and the liquid dispersion is inherently stable for at least about 1 day or 30 days, and has a viscosity between about 0.1 Pa.s and about 5 Pa.s (Instant claims: 1-3, 10-13; Cited application claims: 1, 9, 10). The particles derived from a filamentous fungal biomass, including by surface fermentation (Instant claims: 8, 9; Cited patent claims: 14, 15).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments with regard to the ‘251 patent have been found persuasive, and this rejection has been withdrawn.
Applicant again urges that Examiner has not performed the required analysis including construing the claims of the reference patent/application, conducting an anticipation analysis, and/or conducting an obviousness analysis, and considering whether a nonstatutory double patenting rejection is applicable based on equitable principles to prevent unjustified timewise extension of patent rights.
With regard to the ‘736 patent, Applicant urges that the ‘736 patent recites that the food product is a vegetarian version of a meat product, and this limitation is not recited in the claims of the instant application. Additionally, the present application recites a liquid dispersion of particles of a filamentous fungus, wherein the particles are dispersed in an aqueous medium and has a solids content as claimed, whereas the ‘736 patent does not recite any liquid dispersion of particles of a filamentous fungus or the recited solids content.
Applicant further urges that the same or similar arguments apply mutatis mutandis to the claims of the other reference patents and applications.
These arguments have been fully considered, but have not been found persuasive.
With regard to Applicant’s argument again that Examiner has not performed the required analysis; it is noted that Applicant has provided no new arguments. Thus, for the reasons set forth in the previous office action, this argument is not found persuasive.
With regard to Applicant’s arguments about the ‘736 patent; Applicant appears to be suggesting that a two-way test for distinctness must be performed. The conditions for requirement of this test have not been met here (see MPEP 804, B., 5.), thus a two-way test is not required. Additionally, with regard to applicant’s argument that the ‘736 patent does not recite any liquid dispersion of particles of a filamentous fungus or the recited solids content, it is noted that the current double patenting rejection is not a statutory double patenting rejection, but is instead a non-statutory double patenting rejection. Thus, the same invention is not required to be present in the claim sets. If a claimed invention in the application would have been obvious over a claimed invention in the patent, there would be an unjustified timewise extension of the patent and a nonstatutory double patenting rejection is proper. There is no limitation in the cited claims of the ‘736 patent that precludes the claimed food product, which is a vegetarian meat product, from having the solids content claimed, or the filamentous fungus from being in an aqueous medium. In fact, the ‘736 patent indicates that the food product can include soup (see Col. 34, line 64 to Col. 35, line 8), which further renders obvious the noted limitations.
With regard to Applicant’s argument that the same or similar arguments apply mutatis mutandis to the claims of the other reference patents and applications; Applicant’s previous arguments have been addressed, and no additional arguments for each of the cited reference patents and applications have been set forth.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER M.H. TICHY whose telephone number is (571)272-3274. The examiner can normally be reached Monday-Thursday, 9:00am-7:00pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila G. Landau can be reached at (571)272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER M.H. TICHY/Primary Examiner, Art Unit 1653