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
Applicant’s election without traverse of claims 1-19 in the reply filed on 22 April 2026 is acknowledged. Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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
Claims 8 and 14 is objected to because of the following informalities:
Claim 8, line 2: insert quotation marks around L*
Claim 14, line 3: replace “that comprise one or more” with “the starch components are selected from the group consisting of”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 10 recites “wherein the “b*” color value of the CPI ranges from about 1.0 to about 20. Claim 1, from which claim 10 depends, recites a ”b*” color value ranging from about 5 to about 25”. The part of the range recited in dependent claim 10 falls outside the range recited in independent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-12 and 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over Mattice (WO 2021/113985 A1, 17 June 2021) in view of Chen (US 2018/0118780 A1).
Regarding claim 1, Mattice discloses a plant based cheese product comprising a plant prolamin [0040]. Mattice discloses the plant based prolamin can be prolamin protein from corn, including zein (a corn protein isolate) [0046]. Mattice discloses an example plant based cheese with 10% zein protein ([0098] and Table 3), which falls within the claimed range of 0.1-20 wt% of the cheese analogue product.
Mattice does not disclose the protein content and the color values for the zein protein.
Chen, in the field of method of manufacturing corn protein isolates, discloses a corn protein isolate comprising at least about 85 wt% corn protein on a dry basis and an “a*” color value between -0.5 and 1.5 and a “b*” color value between about 10 and 25 [0004]. The protein content and “a*” and “b*” color value ranges disclosed by Chen fall inside the instantly claimed protein content and “a*” and “b*” color value ranges.
Chen discloses that corn protein isolate (CPI) of the invention is cost efficient and has mycotoxin contaminants removed [0014] and [0018]. Chen discloses the CPI of the invention is food grade [0041].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the CPI of Chen for the zein corn protein of Mattice because it is obvious to substitute equivalents known for the same purpose. In the instant case the zein of Mattice and the CPI of Chen are both known food grade corn protein isolates.
"The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious))” (MPEP 2144.07).
Regarding claims 2 and 3, Mattice discloses an aspect of the invention is to provide a substitute for cheese which is a vegan product [0061], which meets the claim 2 limitation of wherein less than 1 wt% of the cheese analogue product is one or more materials derived from animal sources and the claim 3 limitation of wherein the cheese analogue product is a vegan cheese.
Regarding claim 4, Mattice discloses an example plant based cheese with 10% zein protein ([0098] and Table 3), which when substituted with the CPI of Chen, falls within the claimed range of 1-10 wt% of the cheese analogue product.
Regarding claim 5, Mattice discloses the prolamin (zein) from 10-40 wt% of the cheese product and fats from 10-30 wt% of the cheese product [0051] and [0053]. This results in a fat to CPI ratio range of 0.25:1 up to 3:1, which overlaps with the claimed range of 1:1 to 1:4. 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).
Regarding claim 6, Mattice does not disclose the oil content of the corn protein isolate.
Chen discloses the corn protein isolate is less than 1.5% oil on a dry basis [0004].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the CPI of Chen with the recited oil content for the zein corn protein of Mattice because it is obvious to substitute equivalents known for the same purpose. In the instant case the zein of Mattice and the CPI of Chen are both known food grade corn protein isolates, as discussed above.
As discussed above, "The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.” (MPEP 2144.07).
Regarding claim 7, Mattice does not disclose the protein content of the corn protein isolate.
Chen discloses the corn protein isolate product may be in the range of about 87-98 wt% protein on dry basis [0017].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the CPI of Chen with the recited protein content for the zein corn protein of Mattice because it is obvious to substitute equivalents known for the same purpose. In the instant case the zein of Mattice and the CPI of Chen are both known food grade corn protein isolates, as discussed above.
As discussed above, "The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.” (MPEP 2144.07).
Regarding claims 8-10, Mattice does not disclose the “L*”, “a*” and “b*” color values for the CPI. However it is noted the claims are drawn to the final cheese analogue product, not to the intermediate ingredients. Given the claims are drawn to a cheese analogue product comprising 0.1-20 wt% of the CPI and other undisclosed ingredients of undisclosed colors, it is not possible to determine what effect the color of the CPI will have on the final cheese product.
However, Chen discloses CPI with “L*” color value ranging from 88-95, which falls within the claim 8 range of 88-95 [0022].
Chen discloses an “a*” color value ranging from -0.05-1.5, which overlaps with the claim 9 range of -2 to 1.5 [0022]. 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)
Chen discloses a “b*” color value range from 10 to 20, which falls inside the claim 10 range of 1.0-20 [0022].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the CPI of Chen with the recited color values for the zein corn protein of Mattice because it is obvious to substitute equivalents known for the same purpose. In the instant case the zein of Mattice and the CPI of Chen are both known food grade corn protein isolates, as discussed above.
As discussed above, "The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.” (MPEP 2144.07).
Regarding claim 11, the claim language “wherein the CPI is made using a method comprising: de-starching a corn gluten material that comprises at least about 65 wt% protein; and washing the de-starched corn gluten material with a solvent comprising about 75 wt% to about 100 wt% ethanol or isopropanol to remove non-protein components, to obtain the CPI” is product by process claim language. Even 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. MPEP 2113 I.
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). The product by process steps recited in claim 11 do not impart any distinctive characteristics to the product since the recited process steps are intended to remove starch and non-protein components from a corn gluten material to result in the CPI of instant claim 1 with the required protein content and color values. In the instant case, Mattice discloses a plant based cheese product comprising zein in the claimed amount [0040], [0046] ([0098] and Table 3). Chen discloses a corn protein isolate comprising at least about 85 wt% corn protein on a dry basis and the claimed a* and b* values as discussed in the claim 1 rejection above [0004].
Additionally, 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. MPEP 2112.01 I. In the instant case the plant based cheese of Mattice substituted with the CPI of Chen meets all of the claim limitations with regards to the properties of the CPI.
Additionally, Chen discloses making the CPI by starting with a corn gluten protein material comprising at least about 65 wt% protein, de-starching the corn gluten material and washing the de-starched corn gluten material with ethanol or isopropanol or mixtures therefore in concentrations of 75-95% [0010], [0011] and [0013].
Regarding claim 12, Mattice discloses the cheese analogue comprises fat from 10-30 wt%, which falls within the claimed range of 1-35 wt% [0053].
Regarding claim 14, Mattice discloses the cheese product also comprises a structural component which may be starches [0055] and [0056]. Mattice discloses the structural component in the cheese product ranges from 1-30 wt%, which falls within the claimed range of 1-40 wt% [0058]. Mattice discloses the starch may be arrowroot, corn starch, potato starch (natural starches) or modified starches [0056].
Regarding claim 15. Mattice disclose fats from 15-20 wt % and starch from 1-30 wt% in the cheese product, which corresponds to a weight ratio of fats to starch of 0.5:1 up to 20:1 and overlaps with the claimed range of 0.5:1 to 2:1 [0053] and [0058]. 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).
Regarding claim 16, Mattice discloses starch from 1-30 wt% in the cheese product [0053]. Mattice discloses zein from 15-30 wt% [0051]. The starch and zein quantities disclosed by Mattice corresponds to a weight ratio of starch to corn protein isolate of 0.03:1 to 2:1, which overlaps with the claimed range of 1:1 to 4:1. 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).
Regarding claim 17, Mattice discloses the cheese product may comprise guar gum and/or carrageenan [0056].
Regarding claim 18, Mattice discloses the cheese product may comprise additional ingredients including salt, colorants, water, yeast protein, flavor, spice, preservative, nutrients [0062-0069].
Regarding claim 19, Mattice discloses a substitute for cheese which is a vegan product [0061]. Mattice discloses a plant based cheese product comprising a plant prolamin [0040]. Mattice discloses the plant based prolamin can be prolamin protein from corn, including zein (a corn protein isolate) [0046]. Mattice discloses an example plant based cheese with 10% zein protein ([0098] and Table 3), which falls within the claimed range of 0.1-20 wt% of the vegan cheese product.
Mattice discloses the cheese analogue comprises fat from 10-30 wt%, which overlaps with the claimed range of 5-25 wt% [0053]. 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).
Mattice discloses the cheese product also comprises a structural component which may be starches [0055] and [0056]. Mattice discloses the structural component in the cheese product ranges from 1-30 wt%, which encompasses the claimed range of 5-25 wt% [0058]. 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).
Mattice discloses the cheese product may be in the range of 40-60 wt% water [0069].
Mattice does not disclose the protein content and the color values for the zein protein.
Chen, in the field of method of manufacturing corn protein isolates, discloses a corn protein isolate comprising at least about 85 wt% corn protein on a dry basis and an “a*” color value between -0.5 and 1.5 and a “b*” color value between about 10 and 25 [0004]. The protein content and “a*” and “b*” color value ranges disclosed by Chen fall inside the instantly claimed protein content and “a*” and “b*” color value ranges.
Chen discloses that corn protein isolate (CPI) of the invention is cost efficient and has mycotoxin contaminants removed [0014] and [0018]. Chen discloses the CPI of the invention is food grade [0041].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the CPI of Chen for the zein corn protein of Mattice because it is obvious to substitute equivalents known for the same purpose. In the instant case the zein of Mattice and the CPI of Chen are both known food grade corn protein isolates.
"The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious))” (MPEP 2144.07).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Mattice (WO 2021/113985 A1, 17 June 2021) in view of Chen (US 2018/0118780 A1) as applied to claim 1 above, and further in view of Geistlinger (CA 3034678).
Regarding claim 13, Mattice discloses a plant based cheese product that may comprise zein protein from corn and coconut oil as added fat [0046], [0050] and [0052].
Mattice does not disclose the coconut oil is hydrogenated coconut fat.
Geistlinger, in the field of food products comprising milk proteins and non-animal proteins, discloses a food product with non-animal proteins where the food product may be cheese (p2, lines 6-8; p10, lines 5-8). Geistlinger discloses the food product may be vegan (p10, line 12). Geistlinger discloses the non-animal protein source includes corn (20, lines 10-14 and p21, line 2). Geistlinger discloses the food product may comprise lipids, including hydrogenated coconut oil (p30, lines 12-15 and lines 22-33).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the plant based cheese of Mattice comprising lipids with the hydrogenated coconut oil of Geistlinger because both are drawn to methods of making plant protein based cheeses comprising lipids from coconut and Geistlinger discloses hydrogenated coconut oil as an appropriate lipid for plant based cheese.
Conclusion
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/C.L.G./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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