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 .
Restriction/Election
Applicant’s election without traverse of Group I in the reply filed on 6/22/2026 is
acknowledged. Claims 57-63 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claim 48 is objected to because of the following informalities: Claim 48 should additionally recite “based on the total weight of the plant-based cheese product”. Appropriate correction is required.
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 46 is 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 46 recites the limitation "the oleogelator” in Line 2. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, Claim 46 is interpreted as depending from Claim 45, which recites an oleogelator.
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.
Claim 43, 44, 49, 52, 53, 54, 55, and 56 are rejected under 35 U.S.C. 103 as being unpatentable over Sanchez (US 2010/0196575 A1) in view of Chiu (EP 0486936 B1), taken with evidentiary reference of Bayer Crop Sciences (https://www.cropscience.bayer.us/articles/channel/what-is-waxy-corn-and-why-do-some-corn-producers-grow-it)
Regarding Claim 43, 44, 49, and 53, Sanchez teaches a substitute cheese product (Abstract) which comprises 5-30 wt% protein (Claim 7), a waxy starch [0085] and 10-30% of a vegetable oil [0064] The waxy starch comprises no more than about 10 wt% amylose [0085], entailing 90% or greater amylopectin. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I.
Sanchez teaches the use of coconut, sunflower, or palm oil [0056] as the vegetable oil.
Regarding the limitation that “a portion of the protein is solubilized in the plant-based cheese is solubilized…and another portion of the protein is dispersed”, note that Sanchez teaches that the protein is dispersed in water [0089]. Given that Sanchez teaches the ingredients as claimed, and additionally teaches that some portion of the protein is dispersed in water, the product of Sanchez is interpreted to teach the protein which is solubilized and dispersed as claimed.
Regarding the limitation that the fat is “in the form of droplets coated with dispersed protein”, given that Sanchez teaches the ingredients as claimed, and additionally teaches that some portion of the protein is dispersed in water, the product of Sanchez is interpreted to have coated with dispersed protein as claimed.
Sanchez does not address whether the starch is gelatinized.
Chiu teaches that a starch derived from, e.g. waxy maize starch (Page 3, Line 33) that is gelatinized (Page 3, Line 53) can be used as a replacement for up to 100% of fat (Page 3, Line 34) in products such as cheese (Page 3, Line 44). Chiu teaches that this replacement creates a low fat food with preserved organoleptic properties (Page 14, Line 31). Note that waxy maize starch is nearly 100% amylopectin (see evidentiary references of Bayer Crop Sciences, Paragraph 1). Additionally, note that where Chiu teaches that the gelatinized starch is a “precooked, cold-water-swelling starch” and is converted by methods “well known in the art” (Page 3, Lines 52-54), the starch of Chiu is interpreted to be at least 25% gelatinized.
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to replace some amount of the oil of Sanchez with the gelatinized, waxy starch of Chiu. One would have been motivated to make such a modification to create a low fat food.
Regarding Claim 52, Sanchez teaches 10-30% of an oil [0064]. Chiu teaches that a starch derived from, e.g. waxy maize starch (Page 3, Line 33) that is gelatinized (Page 3, Line 53) can be used as a replacement for up to 100% of fat (Page 3, Line 34) in products such as cheese (Page 3, Line 44).
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to replace any amount of the oil of Sanchez (i.e. 10-30% of the overall composition, which overlaps the claimed range) with the starch of Chiu.
Regarding Claim 54, Sanchez teaches the use of soy, pea, rape (or canola), and corn (or zein) protein [0034].
Regarding Claims 55 and 56, Sanchez does not specifically address the rheological properties of the cheese. However, given that the prior art is similar to the claimed product, with a similar intended use, composition, and processing, there is an expectation that the product of the prior art have the rheological properties as claimed. Note that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP 2112.01 I.
Claims 45-48 are rejected under 35 U.S.C. 103 as being unpatentable over Sanchez in view Chiu taken with evidentiary reference of Bayer Crop Sciences as applied to Claim 43, above, in view of Huang (“Comparison of different oleogels in processed cheese products formulation”, https://doi.org/10.1111/ijfs.13846)
Regarding Claims 45, 46, and 47, Sanchez teaches a substitute cheese as described above in regard to Claim 43. Sanchez teaches the use of vegetable oil but does not teach the addition of wax. Sanchez teaches that the vegetable oil is intended to replace animal fat (such as milk fat) [0050].
Huang teaches a cheese product comprising an oleogel, made with soybean oil and rice bran wax (Summary). The oleogel replaces the milk fat in conventional cheese (Summary). Huang additionally teaches that an oleogel-containing processed cheese products have good rheological and thermomechanical properties compared to commercial processed cheese products (Summary).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the product of Sanchez to include wax as taught by Huang. One would have been motivated to make such a modification to create a cheese product with good texture.
Regarding Claim 48, Sanchez teaches 10-30% of a vegetable oil [0064]. Huang teaches that the rice bran wax comprises 0.5 or 1% of the amount of oil (Page 2526, “Oleogel preparation”). One having ordinary skill would therefore utilize an amount of .05-0.3 wt% (.5% * 10 to 1% * 30) of wax in the preparation of modified Sanchez, which overlaps the claimed range of oleogelator.
Note that absent evidence to the contrary, the percentages of Huang are interpreted to be weight percents.
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.
Claim 43, 44, 47, 52, and 54 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 9, 13, and 21 of copending Application No 17/733,732.
Although the claims at issue are not identical, they are not patentably distinct from each other because of the following features:
Claim #
Feature
Copending feature
17/733,732 Claim #
43
10-25% protein, waxy starch comprising at least 65% amylopectin and partially gelatinized, fat
10-25% protein, waxy starch comprising at least 70% amylopectin and 20% gelatinized, fat
1
44
Coconut oil, shea oil, shea stearin, shea olein, shea butter, palm oil, palm oil fraction, sunflower oil, cocoa butter, cottonseed glycerolysis
Coconut oil, shea oil, shea stearin, shea olein, shea butter, palm oil, palm oil fraction, sunflower oil, cocoa butter, cottonseed glycerolysis
13
47
Wax is orange wax, rice bran wax, sunflower wax, beeswax, propolis wax, candelilla wax
Wax is orange wax, rice bran wax, sunflower wax, beeswax candelilla wax
4
52
5-20% waxy starch
10-16% waxy starch
21
54
Faba, chickpea, mungbean, soy, zein, lupin, canola, pea, lentil, or flax protein
Faba, chickpea, mungbean, soy, zein, lupin, canola, pea, lentil, or flax protein
9
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH LIU whose telephone number is (571)270-5685. The examiner can normally be reached 12-8 Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.L./ Examiner, Art Unit 1791
/Nikki H. Dees/ Supervisory Patent Examiner, Art Unit 1791
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