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 .
Election/Restrictions
Claims 6-8 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 21, 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.
Claim 1-3 and 5 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.
Claims 1-3 and 5 recite a “gel-like food”. It is unclear as to how similar a food must be for it to be considered like a gel and thus, it is unclear as to what would and would not be considered “gel-like”.
Claim 1 recites “a total protein content in the gel-like food is 5.5-25% by mass”. Claim 3 recites the gel like food according to claim 1, “further comprising a collagen peptide”. Collagen peptides are proteins. As the term “further” is defined as “in addition to”, it is unclear as to if the collagen peptide is part of the total protein content already recited, or would allow for a greater amount of protein to be included. It is noted that if the later applies, the claim would be rejected under 112d for not including all of the limitations of the claim from which it depends.
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.
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.
Claims 1 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Kaneko et al (JP 2019176749 machine translation of text) in view of Sakurada et al (US 2017/0196229 A1).
Regarding claim 1, Kaneko et al (Kaneko) teaches a gel-like food product comprising 1.5-6.5% total protein, preferably heat, i.e. thermal, coagulated protein (title, claim 1, and paragraphs 11 and 12).
Further regarding the food as using thermal coagulation of a protein as recited in claim 1, it is noted that the recited limitation is a product by process step, and thus is considered as much as it affects the product claimed. “[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) In the instant case thermal coagulation of a protein would result in a food comprising coagulated and/or denatured protein. Regardless, as discussed above, Kaneko explicitly teaches the gel like food formed using heat coagulation of a protein component (see Solution and claim 1).
Regarding the food as comprising a combination of proteins including 1-6% egg white protein and 4-15% casein as recited in claim 1, Kaneko teaches that egg derived proteins are preferred (paragraph 11 and claim 6), but that the protein may be selected from a group including albumen protein (egg white protein), casein, caseinates, and the like, wherein “they should just be 1.5% by weight or more and 6.5% by weight or less” (paragraph 12). Thus, the teachings of Kaneko at least suggest and make obvious the use of the preferred egg protein, including egg white protein, in a range of 1.5-6.5%, and an additional protein, such as casein or caseinate, in a range of 1.5-6.5%.
Furthermore, Kaneko teaches the food is formed by making a pre-emulsion (paragraph 8, step 6-1). Sakurada et al (Sakurada) teaches a nutritional composition comprising 0-40% proteins which is preferably a gel-like composition (paragraphs 33-35). Sakurada teaches that the protein in the gel-like composition has no particular limitation but is preferable casein which has strong emulsifying capacity (paragraph 39). When including a second protein in the pre-emulsified composition of Kaneko it would have been specifically obvious to include casein as it was a preferred protein in gel-like foods and/or provided a strong emulsifying capacity as taught by Sakurada.
The prior art discloses overlapping ranges. It would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
Regarding the gel-like food as for elderly people or people with difficulties swallowing as recited in claim 5, the claimed limitation is intended use and only require the ability of the product to perform. As Kaneko teaches a gel-like food, it would be considered to function in the same manner as the instantly claimed product. The position of the office is further supported as
Sakurada teaches a gel-like form allows elderly people to easily swallow food (paragraphs 34).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kaneko et al (JP 2019176749 machine translation of text) in view of Sakurada et al (US 2017/0196229 A1), further in view of Igoe et al (Dictionary of Food Ingredients 4th Edition Aspen Publishers 2001, page 32).
As discussed above, Kaneko teaches a gel-like food product comprising 1.5-6.5% total protein, wherein it would have been obvious for the protein to be a combination of egg white protein and casein for its strong emulsifying capabilities. Kaneko is silent to the casein as in the form of sodium caseinate and calcium caseinate as recited in claim 2.
Igoe et al (Igoe) which is a dictionary of food ingredients teaches that the principal form in which casein is used is casein salts, of which sodium and calcium caseinate are most common (page 32 Casein). Igoe teaches that caseinates provide a source of protein and function as emulsifiers and water binders and egg substitutes (page 32 Caseinates).
It would have been obvious for the casein of Kaneko in view of Sakurada to be in the form of sodium and calcium caseinate as Igoe teaches that it was the principle form for use of casein in foods, and that it was the most common. It would have been even further obvious as Igoe teaches that caseinates provide a source of protein and function as emulsifiers and water binders and egg substitutes. To use a common and principle form of a disclosed ingredient would have been obvious and well within the purview of one of ordinary skill in the art.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kaneko et al (JP 2019176749 machine translation of text) in view of Sakurada et al (US 2017/0196229 A1), further in view of Nihon et al (JP 2008194010 machine translation).
As discussed above, Kaneko teaches a gel-like food product comprising 1.5-6.5% total protein, preferably heat coagulated protein which would be appropriate for elderly people as shown by Sakurada. Kaneko is silent to the food as further comprising a collagen peptide as recited in claim 3.
Nihon et al (Nihon) teaches of foods including jellies, puddings, jelly beverages, and nutritional drinks comprising 0.1-50% collagen peptide (claim 6 and paragraph 16). Nihon teaches that collagen decreases with aging and therefore it has been recognized that it is important to take collagen for the shortage of collagen and to achieve health maintenance and prevention of aging (paragraph 2).
It would have been obvious to one of ordinary skill in the art for the gel like food of Kaneko to further comprise a collagen peptide to provide a food that provides health maintenance and/or prevention of aging in view of Nihon.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US2019/0008197 teaches a gel-like food with 1-12% protein where sodium and calcium forms of casein can be used (abstract and paragraph 25).
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KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792
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