3Notice 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 Group I in the reply filed on 06/05/2026 is acknowledged.
Claims 11-18, 21 and 24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/05/2026.
Status of claims
Claims 19-20, 22-23 and 25-26are cancelled. Claims 1-18, 21 and 24 are pending. Claims 11-18, 21 and 24 are withdrawn. Claims 1-10 are under examination.
Claim Objections
Claim 8 is objected to because of the following informalities: the recitation "0,5" should be "0.5". 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.
Claims 3-5 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.
Claim 3 recites the limitation "the amount of furan"" in line 1. There is insufficient antecedent basis for this limitation in the claim. To provide proper antecedent basis for the cited limitation, the claim should first introduce the ingredients. The introduction of the ingredient(s) provides the required antecedent basis for the intrinsic property(ies) of the ingredients. In the instant case, weight is the intrinsic property of the ingredient(s).
Claim 4 recites the limitation "the amount of acrylamide"" in line 1. There is insufficient antecedent basis for this limitation in the claim. To provide proper antecedent basis for the cited limitation, the claim should first introduce the ingredients. The introduction of the ingredient(s) provides the required antecedent basis for the intrinsic property(ies) of the ingredients. In the instant case, weight is the intrinsic property of the ingredient(s).
Claim 5 recites the limitation "the total amount of Strecker aldehydes…"" in line 1. There is insufficient antecedent basis for this limitation in the claim. To provide proper antecedent basis for the cited limitation, the claim should first introduce the ingredients. The introduction of the ingredient(s) provides the required antecedent basis for the intrinsic property(ies) of the ingredients. In the instant case, weight is the intrinsic property of the ingredient(s).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 5 and 9-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Low, as evidenced by Ethical weigh Co-op and Tuta:
Low. Effect of citric acid and glycine addition on acrylamide and flavor in a potato model system. J Agric Food Chem. 2006 Aug 9;54(16):5976-83. doi: 10.1021/jf060328x. PMID: 16881704.
Ethical Weigh Co-op: McCain Potato Flakes. Printed 09/09/2026.
Tuta. Effect of baking and frying methods on quality characteristics of potato chips. GIDA, Jan 2017, 42(1): 43-49. doi: 10.15237/gida.GD16050.
It should be noted that pages 8-9 of the specification provide the following guidance on the term "plant-based ingredient":
The term "plant-based ingredient" refers to ingredients derived from plants that include vegetables, fruits, whole grains, nuts, seeds and/or legumes.
It should be noted that page 9 of the specification provides the following guidance on the term “roasting”:
The term "roasting" refers to a heating method that uses dry heat wherein cereal grains or leguminous seeds or beans are exposed for several minutes to hot air or hot surface with temperatures ranging from 120"C to 220"C, for example140"C to 220"C for time between 1 min to 600 min to transform native ingredients into roasted ingredients, which have improved organoleptic properties such as colour and flavour. Physical and chemical changes occur during the roasting transforming native ingredients into roasted ingredients. Organoleptic properties developed during the roasting depend on roasting conditions, in particular on roasting temperature and time.
The roasting can be performed in different types of roasters There are many types of roasters that can operate in batch or continuous mode and use different heating methods. Non- exhaustive examples of roasters are drum roaster, fluidized bed roaster, spiral vibrating fluid bed roaster, roaster with superheated steam, infrared roaster, and microwave roaster. Batch size in batch mode and flow in continuous mode can also have an impact on the roasting process. Temperature and time applied during the roasting are also adapted within the claimed range to the type of roaster used as well as to batch size and flow of the roasting process.
The temperature applied during the roasting ranges from 120"C to 220"C, for example 140"C to 220"C, while time of roastings ranges from 1 min to 600 min. In one embodiment the roasting of the plant-based ingredient is performed at temperatures of 160 to 220"C for 5 to 20 minutes. In one embodiment the roasting of the plant-based ingredient is performed at temperatures of 200"C for 5 to 10 minutes.
Low teaches baked potato cakes, which is a composition comprising a plant based roasted ingredient. [Preparation and Cooking of Potato Products subsection, Materials and Methods, page 5977.] The potato cakes of Low comprise the following pyrazines:
2-ethyl-6-methylpyrazine;
2-ethyl-5-methylpyrazine;
2-ethyl-3-methylpyrazine;
2-ethyl-3,6-dimethylpyrazine;
2-ethyl-3,5-dimethylpyrazine; and
2,3,4-trimethylpyrazine. [Table 4]
At table 4, Low teaches that the potato cakes comprise 6.40 umol/kg of 2-ethyl-3,5-dimethylpyrazone. This equates to 871.64 ppb (6.4 umol/kg x 136.19 g/mol). Given this, the sum of pyrazines in the potato cakes of Low is greater than 20 parts per billion. [Table 4]
As discussed above, the potato cakes of Low are compositions comprising a plant-based ingredient. The potato cakes of Low were prepared from potato flakes provided by McCain Foods. [Preparation and Cooking of Potato Products subsection, Materials and Methods, page 5977.] Ethical Weigh Co-op evidences that McCain potato flakes have 0.5g of sugar per 100 g of potato flakes. In the instant case, the amount of sugar in the potato cakes of Low has less than claimed, less than 5g of sugar per 100g of the composition.
Low is silent on the a* color space parameter of the baked potato flakes. However, Tuta evidences that potato flakes baked at 180 degrees C, the same temperature used by Low, has an a* value of 20.0+-5.7.
It is noted that the claim recites “for infants and young children”. Said recitation is directed toward the intended use of the claimed composition with infants and young children. It should be noted that MPEP 2111.04 states, claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. However, examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002). In the instant case, the noted wherein clause is directed toward an intended use for the claimed composition. And, intended use does not further limit the claimed composition.
Regarding claim 5: The composition of Low contains 2-methylbutanal, 3-methylbutanal and phenylacetaldehyde. [Table 3] The amount of 2-methylbutanal, 3-methylbutanal and phenylacetaldehyde present in the composition is greater than 150 ppb, as claimed.
Regarding claim 9, which recites a wherein clause that requires the claimed composition be standard or complete cereal-based product for infants and young children, it should be noted that MPEP 2111.04 states, claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. However, examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002). In the instant case, the noted wherein clause is directed toward an intended use for the claimed composition. And, intended use do not further limit the claimed composition.
Regarding claim 10: As stated above, as discussed above, the potato cakes of Low were prepared from potato flakes provided by McCain Foods. [Preparation and Cooking of Potato Products subsection, Materials and Methods, page 5977.] Ethical Weigh Co-op evidences that McCain potato flakes have 0.5g of sugar per 100 g of potato flakes. In the instant case, the amount of sugar in the potato cakes of Low has less than claimed, less than 2.5g of sugar per 100g of the composition.
Claim(s) 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Low, as evidenced by Ethical weigh Co-op and Tuta, as applied to claim 1; and further evidenced by Rady:
Low. Effect of citric acid and glycine addition on acrylamide and flavor in a potato model system. J Agric Food Chem. 2006 Aug 9;54(16):5976-83. doi: 10.1021/jf060328x. PMID: 16881704.
Ethical Weigh Co-op: McCain Potato Flakes. Printed 09/09/2026.
Tuta. Effect of baking and frying methods on quality characteristics of potato chips. GIDA, Jan 2017, 42(1): 43-49. doi: 10.15237/gida.GD16050.
Rady. Evaluation of sugar content in potatoes using NIR reflectance and wavelength selection techniques. Postharvest Biology and Technology. May 2015, Vol 103, pages 17-26.
Regarding claim 2: As discussed above, the potato cakes of Low are compositions comprising a plant-based ingredient. The potato cakes of Low were prepared from potato flakes provided by McCain Foods. [Preparation and Cooking of Potato Products subsection, Materials and Methods, page 5977.] Ethical Weigh Co-op notes that McCain potato flakes have 0.5g of sugar per 100 g of potato flakes. And Rady evidences that potatoes contain sucrose and fructose as the major monosaccharide sugars; and sucrose--a disaccharide. Given that the amount of sugar present in the potato flakes of Low is 5g of sugar per 100 g of potato flakes, the amount of monosaccharides present in the potato flakes of Low is well within the claimed less than 5g of monosaccharide per 100g of potato flakes.
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Low, as evidenced by Ethical weigh Co-op and Tuta, as applied to claim 1; in view of Mariotti and Nyman.
Low. Effect of citric acid and glycine addition on acrylamide and flavor in a potato model system. J Agric Food Chem. 2006 Aug 9;54(16):5976-83. doi: 10.1021/jf060328x. PMID: 16881704.
Ethical Weigh Co-op: McCain Potato Flakes. Printed 09/09/2026.
Tuta. Effect of baking and frying methods on quality characteristics of potato chips. GIDA, Jan 2017, 42(1): 43-49. doi: 10.15237/gida.GD16050.
Mariotti. Heat toxicant contaminant mitigation in potato chips. LWT-Food Science and technology, Vol. 60, 2015, 860-866.
Nyman. Single-Laboratory Validation of a Method for the Determination of Furan in Foods by Using Headspace Gas Chromatography/Mass Spectrometry, Part 2—Low-Moisture Snack Foods. Journal of AOAC International, Vol. 9, No. 2, 2008, 414-421.
Regarding claim 3: Low is silent on the concentration of furan in his composition. However, Mariotti teaches that concentration of Furan is dependent on concentration of sugar and ascorbic acid, both of which can be reduced with blanching. [Abstract] Mariotti also notes that toxic compounds like furan may constitute an increased cancer risk for the consumer. [Abstract]
It would have been obvious for one of ordinary skills in the art before the effective filing to have blanched the potato cakes of Low. One of ordinary skills in art would have been motivated to do so to mitigate the concentration of furan to reduce the cancer risk for the consumer. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Mariotti establishes that furan concentration is dependent on sugar and ascorbic concentrations and at least one method of mitigating the presence of furan.
Regarding the requirement that the amount of furan be below 50 ppb, it is noted that Nyman teaches that less than 50 ppb is attainable for potato chips and a variety of snacks. [Table 3] Nyman teaches potato chips with 8.2, 6.5 and 9.1 ng/g, which are 8.2, 6.5 and 9.1 ppb.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have adjusted the furan level of the potato cakes of Low to that of similar snacks like potato chips. One of ordinary skill in art would have been motivated to do so to reduce the cancer risk for the consumer. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Nyman establishes that the attainment of <50 ppb of furan in potato products is readily available.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Low, as evidenced by Ethical weigh Co-op and Tuta, as applied to claim 1, as evidenced by Kocadagli.
Low. Effect of citric acid and glycine addition on acrylamide and flavor in a potato model system. J Agric Food Chem. 2006 Aug 9;54(16):5976-83. doi: 10.1021/jf060328x. PMID: 16881704.
Ethical Weigh Co-op: McCain Potato Flakes. Printed 09/09/2026.
Tuta. Effect of baking and frying methods on quality characteristics of potato chips. GIDA, Jan 2017, 42(1): 43-49. doi: 10.15237/gida.GD16050.
Kocadagli. Targeted precursor addition to increase baked flavor in a low acrylamide potato-based matrix. Food Chemistry. 2021 Mar 1:339:128024. doi:10.1016/j.foodchem.2020.128024. Epub 2020 Sep 8.
The potato cakes of Low have >60 ppb of acrylamide. [Table 2] However, Low teaches that the concentration of acrylamide can be affected by use of citric acid and glycine. Low further establishes the factors that effects acrylamide levels, which includes reducing sugar, amin acid composition of the food, cooking time, cooking temperature, moisture level, pH and the presence of additives. Low establishes that concentration of acrylamide is a result effective variable. Additionally, Low readily recognizes that acrylamide is a known neurotoxin and probable carcinogen and that its presence at levels more than 1000 ppb is a matter for some concern.
It would have been obvious for one of ordinary skill in the art before the effective filing to reduce the amount of acrylamide in the potato cakes of Low, preferably to zero. One of ordinary skill in art would have been motivated to do so to provide a potato cake that is without acrylamide, which is a neurotoxin and probable carcinogen. One ordinary skill in the art would have had a reasonable expectation of success for doing so because Low establishes that concentration of acrylamide is a result effective variable and Kocadagli establishes that the attainment of <60 ppb of acrylamide in potato products is readily available.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Low, as evidenced by Ethical weigh Co-op and Tuta, as applied to claim 1, in view of Lalas.
Low. Effect of citric acid and glycine addition on acrylamide and flavor in a potato model system. J Agric Food Chem. 2006 Aug 9;54(16):5976-83. doi: 10.1021/jf060328x. PMID: 16881704.
Ethical Weigh Co-op: McCain Potato Flakes. Printed 09/09/2026.
Tuta. Effect of baking and frying methods on quality characteristics of potato chips. GIDA, Jan 2017, 42(1): 43-49. doi: 10.15237/gida.GD16050.
Lalas. Use of 2,5-dimethyl-4-hydroxy-3(2H)-furanone in preventing oxidation during fat frying of potato chips and baking of croissants. Journal of Food Measurement and Characterization, June 2018, Vol. 12: 1211-1218. DOI:10.1007/s11694-018-9735-2.
Low does not teach the presence of 4-hydroxy-2,5-dimethyl-3(2H)-furanone (HDMF) in the potato cakes.
Lalas teaches that antioxidant rich diet acts as a health protecting factor. [Abstract] Lalas notes that antioxidant compounds in food play an important role as a health protecting factor reducing the risk for chronic diseases, including cancer and heart disease. And one of the antioxidants that Lalas teaches is HDMF. [Abstract] Lalas teaches the use of 100mg of HDMF per kg of oil, which equals 100000 ppb; 1880 mg of HDMF per kg of dough, which equates to 1880000 ppb; 3760 mg of HDMF per kg of dough, which equates to 3760000 ppb; and 4286 mg of HDMF per kg of dough, which equates to 4286000 ppb. [Materials and Methods]
It would have been obvious for one of ordinary skill in the art before the effective filling to include HDMF in the potato cakes of Low. One ordinary skill in the art would have been motivated to do so to provide a product with antioxidants, which provides health protecting factor reducing the risk for chronic diseases, including cancer and heart disease. One ordinary skill in the art would have had a reasonable expectation of success for doing so because Lalas recognizes the antioxidant properties of HDMF and successfully added it to food products.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Low, as evidenced by Ethical weigh Co-op and Tuta, as applied to claim 1, in view of Byrne.
Low. Effect of citric acid and glycine addition on acrylamide and flavor in a potato model system. J Agric Food Chem. 2006 Aug 9;54(16):5976-83. doi: 10.1021/jf060328x. PMID: 16881704.
Ethical Weigh Co-op: McCain Potato Flakes. Printed 09/09/2026.
Tuta. Effect of baking and frying methods on quality characteristics of potato chips. GIDA, Jan 2017, 42(1): 43-49. doi: 10.15237/gida.GD16050.
Byrne. Roasted potato flour said to boost functionality and flavour. Https://www.bakeryandsnacks.com/Article/2010/06/02/Roasted-potato-flour-said-to-boost-functionality-and-flavour/. Published June 02, 2010.
The potato cakes of Low are not in powder form. However, as noted above, the potato cakes of Low are roasted potato cakes.
Byrne teaches roasted potato powder. Byrn teaches the use of roasted potato flour to enhance the flavor and color of baked goods and extruded snacks as well as gluten free foods.
It would have been obvious to one of ordinary skill in the art before the effective filing date to provide the roasted potato cakes of Low in powder form. One of ordinary skill in the art would have been motivated to do so to make roasted potato flour to enhance the flavor and color of baked goods and extruded snacks as well as gluten free foods. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Byrne evidences roasted potato flour is attainable and is used to enhance the flavor and color of baked goods and extruded snacks as well as gluten free foods.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Low, as evidenced by Ethical weigh Co-op and Tuta, as applied to claim 1, in view of Suzon Spice & Everything Nice and further view of Byrne
Low. Effect of citric acid and glycine addition on acrylamide and flavor in a potato model system. J Agric Food Chem. 2006 Aug 9;54(16):5976-83. doi: 10.1021/jf060328x. PMID: 16881704.
Ethical Weigh Co-op: McCain Potato Flakes. Printed 09/09/2026.
Tuta. Effect of baking and frying methods on quality characteristics of potato chips. GIDA, Jan 2017, 42(1): 43-49. doi: 10.15237/gida.GD16050.
Suzon Spice & Everything Nice. "Labouyi Farin" Haitian Flour Porridge. http://www.suzonspice.com/labouyi-farin.html. January 01, 2018.
Byrne. Roasted potato flour said to boost functionality and flavor. Https://www.bakeryandsnacks.com/Article/2010/06/02/Roasted-potato-flour-said-to-boost-functionality-and-flavour/. Published June 02, 2010.
The potato cakes of Low are not a pap. It should be noted that “pap”, in food, is given the broadest reasonable interpretation (BRI). Pap is a soft, boiled grain dish. It should be further noted that the specification does not contain a definition for “pap”.
Suzon Spice & Everything Nice teaches making Labouyi Farin, Haitian Flour Porridge. The recipe includes toasted/roasted flour. Suzon Spice & Everything Nice does not teach the use of toasted/roasted potato flour.
However, Byrne teaches toasted potato flour. Byrne also teaches the roasted potato can be used to make gluten free product, and in using it, the recipe may need to be reformulated to allow for the lower moisture and hydration capacity of the roasted flour compared to standard flour. In the instant case, Byrne establishes that roasted potato flour may be used as a functional equivalent to standard flour.
It would have been obvious for one of ordinary skill in the art before the effective filing to use roasted potato flour of Byrne as a functional equivalent to the toasted flour Suzon Spice & Everything Nice. One of ordinary skill in art would have been motivated to do so to make Labouyi Farin. One of ordinary skill in art would have had a reasonable expectation of success for doing so because substitution of functional equivalent is routinely practiced in the art.
It is further noted that the potato cakes of Low are not in powder form—roasted potato flour. However, as noted above, the potato cakes of Low are roasted potato cakes.
Byrne teaches roasted potato powder. Byrn teaches the use of roasted potato flour to enhance the flavor and color of baked goods and extruded snacks as well as gluten free foods.
It would have been obvious to one of ordinary skill in the art before the effective filing date to provide the roasted potato cakes of Low in powder form. One of ordinary skill in the art would have been motivated to do so to make roasted potato flour to enhance the flavor and color of baked goods and extruded snacks as well as gluten free foods. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Byrne evidences roasted potato flour is attainable and is used to enhance the flavor and color of baked goods and extruded snacks as well as gluten free foods.
Conclusion
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/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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