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 with traverse of Group I, claims 1-14 in the reply filed on May 11, 2026 is acknowledged. The traversal is on the grounds that requirement is improper as there is no undue burden in examining al the claims. This is not found persuasive because where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
In the instant case, the clamed technical features do not define a contribution over the prior art. Groups I-IV lack unity of invention because even though the inventions of these groups require the technical feature of a stabilizer composition comprising a heat- settable material, starch, plant protein, and fiber, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Pickford (US Patent No. 6,261,625; see written opinion; made of record by applicant). Pickford teaches a stabilizer composition comprising xanthan gum, pectin, starch, egg albumen, and cellulose gum.
Therefore, the requirement is still deemed proper and is therefore made FINAL.
Claims 15-16, 18 and 20-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
Claim Objections
Claim 14 is objected to because of the following informalities: Claim 14 recites “heat-settable compound” and all previous claims recite “heat-settable material”. It is suggested to amend claim 14 consistent with the terminology used in the previous claims. 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 9 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 9 recites that the plant protein is present in an amount in the range of 0.1-40 wt%, however, 0.1 is outside the range of 0.2 as required by claim 1. Therefore, it is not clear what range is actually required by claim 9.
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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Pickford (US Patent No. 6,261,625 B1; July 17, 2001) in view of Fu (US 2010/0178388 A1; July 15, 2010).
Regarding claim 1, Pickford discloses a stabilizer composition comprising:
a heat-settable material (i.e. cellulose gum) present in an amount of 4-50 wt%, thus overlapping the claimed range of 5-30 wt%
starch present in an amount of 5-40 wt%, thus overlapping the claimed range of 25-70 wt%,
a protein that can be a plant protein (i.e. soya protein) present in an amount of up to 25 wt%, thus overlapping the claimed range of 0.2-50 wt%, and
fiber (i.e. hydrocolloids such as pectin, dextrin, etc.), the fiber being present in an amount of 1-25 wt%, thus overlapping the claimed range of 3-30 wt%. (col 2 lines 12-31, See Examples).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
While Pickford discloses a fiber component, Pickford teaches that the fiber component comprises soluble fiber and not insoluble fiber.
Fu discloses a stabilizer composition that includes a fiber component, wherein the fiber can be soluble or insoluble fiber, such as citrus fiber ([0014], [0021]-[0030]).
While Fu teaches that insoluble fiber OR soluble fiber are both known to be useful in a stabilizer composition for providing stability to a food product, it would have been obvious to one of ordinary skill for the stabilizer composition of Pickford to further comprise insoluble fiber as taught by Fu. This is a simple substitution of one known fiber component for another to yield the predictable result of providing stability to a food product and would have been obvious to one of ordinary skill in the art as both are known to provide the same benefit in a stabilizer composition.
It would have been obvious to further include insoluble fiber in a similar amount as taught by Pickford as Pickford teaches that such amount is suitable for providing a stabilizing effect.
Regarding claim 2, Pickford teaches that the composition can be in the form of a dry solid (col 4 line 25).
Regarding claim 3, With respect to the heat-settable material having an inherent moisture content in the range of 1-20 wt% as measured at equilibrium at 50% relative humidity and 20 C, the examiner notes that Pickford teaches that the heat-settable material can be the same as used in the instant invention (i.e. carboxymethyl cellulose, col 2 lines 15-20) and therefore would necessarily have the inherent properties as claimed.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Regarding claim 4, Pickford teaches that the heat-settable material can be carboxymethyl cellulose (col 2 lines 15-20), which is the same as the claimed carboxycellulose.
Regarding claim 5, Pickford teaches that the heat-settable material can be hydroxypropyl methyl cellulose (col 2 lines 15-20).
Regarding claim 6, Pickford teaches that the heat-settable material (i.e. cellulose gum) is present in an amount of 4-50 wt%, thus overlapping the claimed range of 5-25 wt% (col 2 lines 12-31, See Examples). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claim 7, Pickford teaches that the starch is present in an amount of 5-40 wt%, thus overlapping the claimed range of 25-65 wt% (col 2 lines 12-31, See Examples). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claims 8-9, Pickford teaches that the plant protein can be a legume protein (i.e. soya protein) present in an amount of up to 25 wt%, thus overlapping the claimed range of 0.1-40 wt% (col 2 lines 12-31, See Examples). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claim 10, Pickford teaches that the plant protein is provided in the form of a flour, i.e. soya flour, comprising the plant protein (See Examples).
Regarding claim 11, as stated above, Fu discloses a stabilizer composition that includes a fiber component, wherein the fiber can be citrus fiber ([0014], [0021]-[0030]). Therefore, it would have been obvious to use citrus fiber in the composition of Pickford depending on the desired source and provided benefits associated with the fiber. Again, as stated above with respect to claim 1, this is a simply substitution of one known fiber for another to yield the same predictable result.
Regarding claim 12, Pickford teaches that the fiber is present in an amount of 1-25 wt%, thus overlapping the claimed range of 3-25 wt%. (col 2 lines 12-31, See Examples). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claim 13, Pickford discloses that the total amount of heat-settable material, starch, plant protein and fiber can be at least 60 wt% of the composition as Pickford teaches that the heat-settable material (i.e. cellulose gum) is present in an amount of 4-50 wt%, the starch present in an amount of 5-40 wt%, the plant protein is present in an amount of up to 25 wt%, and the fiber (i.e. hydrocolloids such as pectin, dextrin, etc.) is present in an amount of 1-25 wt% (col 2 lines 12-31, See Examples). Therefore, the total amount of heat-settable material, starch, plant protein and fiber overlaps the claimed range of at least 60 wt%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Pickford (US Patent No. 6,261,625 B1; July 17, 2001) in view of Fu (US 2010/0178388 A1; July 15, 2010) as applied to claim 1 above, and further in view of Fukasawa et al. (US 2010/0297301 A1; Nov. 25, 2010) and Zhang et al. (US 2020/0037646 A1l Feb. 6, 2020).
Regarding claim 14, Pickford and Fu render obvious a stabilizer composition as described above with respect to claim 1, wherein the heat-settable compound is a cellulose gum, the plant protein is a legume protein, and the fiber can be a citrus fiber.
Pickford and Fu, however, fail to specifically teach that the heat-settable material is hydroxyalkycellulose and the plant protein is chickpea protein.
Fukasawa discloses a stabilizer composition for a food product comprising a heat-settable material that is a cellulose gum, wherein the cellulose gum can be hydroxyalkyl cellulose ([0022]).
As Fukasawa teaches that hydroxyalkyl cellulose is known to be useful in a stabilizer composition for providing stability to a food product, it would have been obvious to one of ordinary skill for the stabilizer composition of Pickford to further comprise hydroxyalkyl cellulose as taught by Fukasawa. This is a simple substitution of one known cellulose gum for another to yield the predictable result of providing stability to a food product and would have been obvious to one of ordinary skill in the art as it is known to provide the same benefit as the cellulose gums in Pickford to a stabilizer composition.
Zhang further teaches a composition that is a flavor composition and stabilizer, wherein the composition includes chickpea protein as a legume protein source ([0019], [0023]).
As Zhang teaches that chickpea protein is a known legume protein known to be useful in a stabilizer composition for providing protein to a food product, it would have been obvious to one of ordinary skill for the legume protein in the stabilizer composition of Pickford to further comprise chickpea protein as taught by Zhang. This is a simple substitution of one known legume protein for another to yield the predictable result of providing plant protein to a food product and would have been obvious to one of ordinary skill in the art as it is known to provide the same benefit as the legume protein in Pickford.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791
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