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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
On page 1 lines 10-13, the instant specification contains the following references to claims 1, 8 and 15:
The present invention relates to a vegan food product according to claim 1, to a method of producing a vegan food product according to claim 8, and to the use of a vegan fibre for producing a vegan food product according to claim 15.
Claims 1-15 have been cancelled and new claims 16-39 have been presented. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-39 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the vegan hard-boiled egg, does not reasonably provide enablement for any vegan food product as claimed. Vegan processed foods include plant-based meats (burgers, sausages, nuggets), dairy alternatives (milks, yogurts, cheeses from soy, almond, oat), meat substitutes like tofu/tempeh, and snacks/sweets (cookies, chips, protein bars, ice cream), etc. The instant specification only refers to a vegan hard-boiled egg. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Case law holds that applicant's specification must be "commensurately enabling [regarding the scope of the claims]" Ex parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1989) otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. Although the statute itself does not use the phrase "undue experimentation", it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation as stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and in In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Specifically, in In re Wands the Court set forth a non-exhaustive list of factors to be considered in determining whether undue experimentation would be involved in making and/or using the claimed invention. These factors include, but are not limited to: (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. Applying these factors to claim 9:
(A) The breadth of the claims
The claim is broad in the scope in the sense that it encompasses any vegan food product
(B) The nature of the invention
The invention relates to a process for the production of the vegan hard-boiled egg that imitates the conventional egg of animal origin.
(C) - (E) State of the prior art/The level of ordinary skill/The level of predictability
Production of vegan egg substitutes is a new art and is not without uncertainty. Production of vegan egg substitutes lies somewhere between a predictable art and an unpredictable art. However, when the skilled artisan attempts to calculate all the vegan food compositions, predictability is lost due to the complexity of art.
F. The amount of direction provided by the inventor
The entirety of the direction offered by the specification relates to vegan hard-boiled egg. There is no direction provided for vegan food products other than vegan hard-boiled egg.
G. The existence of working examples
The specification provides no working examples. The specification provides description of preferred embodiments for vegan hard-boiled egg compositions.
H. The quantity of experimentation
A large amount of experimentation, on the order of a number of man-years would be necessary to practice the invention within the full scope of the claims.
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.
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.
Claim(s) 16-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over familycuisine.net (How to Make a Vegan Hard Boiled Egg) (see NPL reference filed with IDS of 03/06/2024).
In regard to the independent claims 16, 23 and 30, familycuisine.net discloses a vegan hard boiled egg with an egg yolk comprising agar powder and egg white comprising agar powder (page 3). Familycuisine.net discloses forming a mixture for the inner core (i.e. egg “yolk”) and forming an inner core resembling an egg yolk (pages 3-4). Familycuisine.net discloses forming a mixture for the outer layer (“egg whites”) and pouring the mixture into the molds (page 4). The inner core egg yolk is placed into the outer layer egg white and then further covered with the egg white mixture forming an outer layer around the inner core egg yolk (pages 4). In regard to the “vegan fibre”, familycuisine.net discloses agar. It is noted that agar is known to be a soluble fiber. Since agar is soluble, according to the instant specification, its water binding capacity is 0 g/g (see page 4 lines 13-16 of the instant specification). The water binding capacity of 0 g/g is within the claimed range.
Therefore in regard to claim 16, familycuisine.net discloses:
A vegan food product comprising:
- at least one outer layer, and
- at least one inner core,
wherein the inner core is surrounded by the outer layer,
wherein the inner core comprises at least one vegan fibre and in that the outer layer comprises at least one vegan fibre (agar),
wherein the vegan fibre of the inner core has a water-binding capacity of 0 g/g which is within the claimed range of 40 g/g or less or of 30 g/g or less or of 20 g/g or less or of 15 g/g or less, and
wherein the vegan fibre of the outer layer has a water-binding capacity of 0 g/g which is within the claimed range of 40 g/g or less or of 30 g/g or less or of 25 g/g or less.
Therefore in regard to claim 23, familycuisine.net discloses a method of producing vegan food product by
- providing at least one outer layer, and
- providing at least one inner core,
wherein the inner core is surrounded by the outer layer,
wherein the inner core comprises at least one vegan fibre and in that the outer layer comprises at least one vegan fibre (agar),
wherein the vegan fibre of the inner core has a water-binding capacity of 0 g/g which is within the claimed range of 40 g/g or less or of 30 g/g or less or of 20 g/g or less or of 15 g/g or less, and
wherein the vegan fibre of the outer layer has a water-binding capacity of 0 g/g which is within the claimed range of 40 g/g or less or of 30 g/g or less or of 25 g/g or less.
In regard to claim 30, familycuisine.net discloses a method of producing vegan food product by using a vegan fiber wherein the vegan fiber has a water-binding capacity of 0 g/g which is within the claimed range of 40 g/g or less or of 30 g/g or less or of 25 g/g or less.
Further, regarding the water-binding capacity ranges as examined above, it is noted that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
In regard to claim 17, familycuisine.net discloses the vegan hard-boiled egg wherein the vegan fibre of the inner core has a water-binding capacity of 0 g/g which is within the claimed range of 0g/g to 15 g/g. Hence, familycuisine.net meets the limitations of claim 17.
In regard to claim 18, familycuisine.net discloses agar (i.e. soluble fiber).
In regard to claim 19, familycuisine.net discloses 1.5 teaspoon of agar powder combined with 0.5 cup water, 0.5 teaspoon sweet paprika, 0.5 teaspoon ground turmeric and 0.25 spoon kala namak (Himalayan black salt) (page 3). Hence, generally the concentration of agar (3-7 grams) per 120g of water is around 2.5%-5.8% which is within the claimed range of between 1% by weight to 20% by weight per total weight of the inner core.
In regard to claim 20, familycuisine.net does not disclose the length of the fiber. The length of the fiber would depend on the nature of the fiber.
In regard to claim 21, familycuisine.net discloses 1.5 teaspoon of agar powder combined with 0.5 cup water, 0.5 teaspoon sweet paprika, 0.5 teaspoon ground turmeric and 0.25 spoon kala namak (Himalayan black salt) (page 3).
In regard to claim 22, familycuisine.net discloses that the outer layer is formed from tofu, water, non-dairy milk, agar and kala namak (Himalayan black salt) (page 3).
In regard to claim 24, familycuisine.net discloses that the mixtures are deposited such as the inner core is surrounded by the outer layer.
In regard to the recitations of kinematic viscosity in claim 25, familycuisine.net is silent as to the kinematic viscosity of the first mixture, kinematic viscosity of the second mixture, and the difference between the kinematic viscosity of the first mixture and the kinematic viscosity of the second mixture. Further in this regard, it is noted that although the reference does not specifically disclose every possible quantification or characteristic of its product, these characteristics would have been expected to be as claimed absent any clear and convincing evidence and/or arguments to the contrary. The reference discloses the same starting materials and methods as instantly (both broadly and more specifically) claimed, and thus one of ordinary skill in the art would recognize that the kinematic viscosity of the first mixture, kinematic viscosity of the second mixture, and the difference between the kinematic viscosity of the first mixture and the kinematic viscosity of the second mixture among many other characteristics of the product obtained by referenced method, would have been an inherent result of the process disclosed therein. The Patent Office does not possess the facilities to make and test the referenced method and product obtain by such method, and as reasonable reading of the teachings of the reference has been applied to establish the case of obviousness, the burden thus shifts to applicant to demonstrate otherwise.
In regard to claim 26, familycuisine.net discloses that the mixtures are prepared at room temperatures and then heated after the preparation (pages 3-4).
In regard to claims 27-28, 37 and 39, it is noted that using nozzles simultaneously when filling the molds is a conventional practice in the art.
In regard to claim 29, familycuisine.net discloses that the egg white mixture is heated to a soft boil for depositing (page 4).
In regard to claims 31 and 36, familycuisine.net discloses a vegan hard-boiled egg with an egg yolk comprising agar powder and egg white comprising agar powder (page 3).
In regard to claim 32, familycuisine.net discloses 1.5 teaspoon of agar powder combined with 0.5 cup water, 0.5 teaspoon sweet paprika, 0.5 teaspoon ground turmeric and 0.25 spoon kala namak (Himalayan black salt) (page 3).
In regard to claims 33 and 35, familycuisine.net discloses agar. It is further noted that claim 33 does not require the presence of the recited compounds. Claim 33 merely limits the list of compounds as recited in claim 32. It is further noted that claim 35 does not require the presence of the recited compounds. Claim 35 merely limits the list of compounds as recited in claim 34.
In regard to claim 34, familycuisine.net discloses kala namak (Himalayan black salt) (page 3). It is further noted that claim 34 does not require the presence of the recited compounds. Claim 34 merely limits the list of compounds as recited in claim 22.
In regard to claim 38, familycuisine.net discloses that the egg white mixture is heated to a soft boil for depositing (page 4). In regard to claim 38, familycuisine.net also discloses that the egg yolk mixture is heated until bubbly over medium heat (page 3).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kasper (US 20230023496 A1) and Reddy (US 20230106086 A1) disclose a plant-based hard-boiled egg product.
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/VERA STULII/ Primary Examiner, Art Unit 1791