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 .
Claim Objections
Claim 5 is objected to because of the following informalities:
Claim 5 recites “wherein a preparation method of the fish oil Pickering emulsion comprises following steps:”. Claim 5 appears to be directed to a product-by-process claim, however, as written it is unclear as to whether a product or process is being claimed. This could be clarified by amending the wherein clause in lines 1-2 to “wherein the fish oil Pickering emulsion is prepared by the method comprising the following steps”.
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 1-10 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.
The term “soft” in claims 1-10 is a relative term which renders the claim indefinite. The term “soft” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The claims are indefinite because it is unclear what degree of solidity or hardness the gel product requires to be considered a “soft” gel product.
Claim 3 recites the limitation "potato starch" in line 3. There is insufficient antecedent basis for this limitation in the claim. While claim 3 recites starch in line 2, there is no further recitation of the starch being a potato starch (i.e., …and a starch, wherein the starch is a potato starch….).
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.
Claim(s) 1, 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ebina et al. [JP2007228898A], hereinafter Ebina, in view of Johnson et al. [US20130295236A1], hereinafter Johnson, and Uchida et al. [US4759933A], hereinafter Uchida, evidenced by Cho et al. [KR100440491B1], hereinafter Cho, and Shabir et al. [Applications of organic Pickering emulsions, 2023], hereinafter Shabir.
Regarding claim 1, Ebina teaches a soft gel product of surimi (fish paste) [Ebina, abstract, 0034], comprising surimi [Ebina, 0041], protease (protein splitting/proteolytic enzyme) [Ebina, abstract, 0015], oil (various types of edible oil) [Ebina, 0052] as emulsifying base material [Ebina, 0016] for promoting emulsification [Ebina, 0024, 0049-0051], and auxiliary materials (salt, starch, as recited in [0011] of the instant specification) [Ebina, 0038].
Ebina teaches that in the soft gel product of surimi, various types of edible oil may be used [Ebina, 0052], but does not explicitly recites the oil is specifically fish oil.
Johnson teaches a surimi product [Johnson, 0030] where fish oil is suitable for the preparation of said surimi product [Johnson, 0040, 0065].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use fish oil as taught by Johnson, in the soft gel product of surimi of Ebina, because Ebina already teaches that various types of edible oil may be used [Ebina, 0052], and Johnson teaches that any fat that is compatible with the functional proteins and capable of forming the fish product of the invention can be used and includes fish oil as a compatible oil to form the emulsion [Johnson, 0040, 0065].
Ebina teaches the soft gel product of surimi comprising protease (protein splitting/proteolytic enzyme) [Ebina, abstract, 0015], but does not explicitly teaches the protease is specifically an alkaline protease.
Uchida teaches a surimi product [Uchida, col.1, l.67-68; col.2, l.1-19]. The surimi product of the invention comprise proteases (protein digestive enzymes) such as chymotrypsin, trypsin and others [Uchida, col.2, l.63-68], which are alkaline proteases as evidenced by Cho [Cho, 96].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an alkaline protease as taught by Uchida, in the surimi of Ebina, because Uchida teaches that this would allow a skilled artisan the flexibility of selecting various similar proteases or protein digestive enzymes and their variants according to the surimi application/product being produced [Uchida, col.3, l.7-9], and because Uchida teaches that treating the fish raw material for the fish paste or surimi with these enzymes, would allow for the modification of properties of the protein contained in the fish [Uchida, abstract].
Regarding the recitation of fish oil “Pickering” emulsion:
While Ebina does not explicitly recites the term “Pickering emulsion”, Ebina does teach that in the emulsification process water and oil become stable when one of them disperses as fine particles relative to the other [Ebina, 0051]. Ebina further teaches that starch is added to prepare the surimi or fish paste [Ebina, 0038, 0042], and the evidence of Shabir teaches that Pickering emulsions are suspensions of droplets of one liquid (i.e., water) in another immiscible liquid (i.e., oil) which are stabilized by solid particles (i.e., starch particles) adsorbed at the droplet-liquid interface, and that Pickering emulsions are stabilized by components such as starch [Shabir, p.1, abstract].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the soft gel product of surimi of Ebina comprises a fish oil Pickering emulsion, because Ebina explicitly teaches stabilization of the emulsion, and further teaches the surimi product comprises the same raw materials as claimed (i.e., surimi, protease, oil, and auxiliary materials) where one of the materials is starch, there is reasonable basis to conclude that the soft gel product of surimi of Ebina comprises a Pickering emulsion because the water and oil droplets are stabilized by the solid particles of starch adsorbed at the droplet-liquid interface in Ebina’s product.
Regarding claim 4, modified Ebina teaches the soft gel product of surimi of claim 1, but is silent regarding the surimi being one or more of silver carp surimi, golden threadfin bream surimi, snapper surimi, belt fish surimi and baby croaker surimi.
Johnson teaches a surimi product [Johnson, 0030] where suitable surimi fish include golden threadfin bream surimi [Johnson, 0031].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include golden threadfin bream surimi as taught by Johnson, into the soft gel product of surimi of Ebina, because Johnson teaches that this type of fish not only is suitable for making surimi but also is common and known in the art [Johnson, 0031].
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ebina [JP2007228898A], in view of Johnson [US20130295236A1], and Uchida [US4759933A], evidenced by Cho [KR100440491B1], and Shabir [Applications of organic Pickering emulsions, 2023], as applied to claim 1 above, and further in view of Katsumata et al. [JP2005110677A], hereinafter Katsumata, evidenced by Shimizu [JPH0451875A].
Regarding claim 2, Ebina teaches the soft gel product of surimi comprising surimi, protease, oil (as emulsifying base material for promoting emulsification), and auxiliary materials, modified Ebina in view of Johnson teaches the specific oil of fish oil is suitable for surimi products, and modified Ebina in view of Uchida, evidenced by Cho teaches the specific proteases (protein digestive enzymes) such as chymotrypsin, and trypsin, which are alkaline proteases as discussed above in claim 1. Further, modified Ebina in view of Uchida teaches various surimi products where the amount of surimi is 100g and the amount of the alkaline protease (proteolytic enzyme) may be 0.05g [Uchida, col.6, l.3-7, Example 1], or 0.08g [Uchida, col.6, l.52-60, Example 3], or 0.06g [Uchida, col.7, l.44-51, Example 5], and 0.1g [Uchida, col.12, l.30-38, Example 15], providing a surimi product having surimi:alkaline protease ratios of 100:(0.05-0.1), which is a ratio of surimi:alkaline protease that falls within the claimed ratio of 100:(0.05-0.15).
Modified Ebina is silent regarding the proportion, or ratio of the fish oil Pickering emulsion being from 1.5-6 in a soft gel product of surimi comprising a surimi:alkaline protease ratio of 100:(0.05-0.15).
Katsumata teaches a minced or finely shredded paste meat material (surimi equivalent) [Katsumata, 0012], where the minced or finely shredded paste meat material is mixed with at least oil and fat [Katsumata, 0015], where an emulsified oil product (emulsion equivalent) is used as the oil and fat, and said emulsion may be added to the minced or finely shredded paste meat material in a meat (surimi):(fish oil Pickering emulsion) emulsion ratio of 100:3 (100 parts mass meat mixture or surimi and 3 parts mass emulsion) [Katsumata, 0016], which is a ratio that falls within the claimed meat (surimi):(fish oil Pickering emulsion) emulsion ratio of 100:(1.5-6).
Further, regarding ratios, proportions and concentrations of ingredients, MPEP 2144.05 II. A. states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
That is, one of ordinary skill in the art would have used the claimed ratios of surimi:alkaline protease as taught by Uchida, and surimi:emulsion (fish oil Pickering emulsion of modified Ebina in view of Johnson) as taught by Katsumata, into the soft gel product of surimi of Ebina, because Ebina does not teach a lower or upper limit for the oil or oil containing ingredient, and already teaches the amount of oil ingredient (emulsion) may be adjusted based on the total mixture of surimi [Ebina, 0053]. Further, the evidence of Shimizu disclose an emulsified oil and fat composition for fish paste product (surimi), formed by emulsification of oil, water and starch (i.e., Pickering emulsion) [Shimizu, Abstract], where by adding a wide proportion range 1-70% by weight (1-70g / 100g) of the emulsion (emulsified liquid) to the fish paste, a stable and homogeneous emulsification is obtained as well as a soft and smooth fish paste product [Shimizu, p.2, last paragraph].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the ratio of 100:0.05-0.1 of surimi:protease as taught by Uchida, and the ratio of 100:3 of surimi:emulsion as taught by Katsumata, into the soft gel product of surimi of modified Ebina to obtain a soft gel product of surimi wherein a mass ratio of the surimi, alkaline protease and fish oil Pickering emulsion is 100:(0.05-0.15):(1.5-6), because Uchida teaches that addition of the protease to the surimi at the disclosed ratios would provide a surimi having a smooth and acceptable texture [Uchida, col.7, l.6-9], and because Katsumata teaches that addition of emulsion to the minced or finely shredded paste meat material at the disclosed ratios would provide a soft meat processed food having a property that can be ingested by elderly people and patients who have difficulty chewing and have difficulty swallowing [Katsumata, 0001].
Claim(s) 3, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ebina [JP2007228898A], in view of Johnson [US20130295236A1], and Uchida [US4759933A], evidenced by Cho [KR100440491B1], and Shabir [Applications of organic Pickering emulsions, 2023], as applied to claim 1 above, and further in view of Roussell et al. [US6770318B1], hereinafter Roussell, evidenced by Wang et al. [Soy protein isolate as emulsifier, 2021], hereinafter Wang, Amarachi [Investigations on the emulsifying properties of egg white protein, 2018], and Botella-Martinez et al. [Healthier Oils, 30 April 2023], hereinafter Botella.
Regarding claim 3, Ebina teaches the soft gel product of surimi according to claim 1, wherein the oil may be canola oil or various types of edible oils [Ebina, 0052], and starch [Ebina, 0038], but does not teach the auxiliary materials comprise specifically vegetable oil, and that the starch is specifically potato starch.
Roussell teaches a fish based food product comprising a fish paste material [Roussell, Abstract] or minced fish meat [Roussell, col.2, l.48-50], made into a mixture from raw materials including surimi [Roussell, col.6, l.30-31], and wherein the mixture may comprise vegetable fats [Roussell, col.3, l.25-27] and starch [Roussell, col.3, l.25-28], wherein the vegetable fat is vegetable oil [Roussell, Example 13, col.16, l.22], and the starch is potato starch [Roussell, Example 13, col.16, l.23].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include vegetable oil and potato starch as taught by Roussell, into the soft gel product of surimi of Ebina, because Roussell teaches that vegetable oil and potato starch used as raw materials for fish based food products from fish paste would provide a fish food product having a heterogeneous texture and a consistency similar to that of fish or crustacean muscle [Roussell, Abstract].
Ebina teaches the soft gel product of surimi according to claim 1, wherein the auxiliary materials comprise salt at 2% by weight of surimi (2g salt per 100g surimi) [Ebina, 0015, 0043], edible oil at an amount of from about 20-30% by weight of surimi (20g oil per 100g surimi) and can be adjusted to lower amounts [Ebina, 0015, 0053], and starch [Ebina, 0015]. Further modified Ebina in view of Roussell teaches the auxiliary materials comprise vegetable oil, and potato starch as discussed above, however Ebina is silent regarding the auxiliary materials comprise: soy protein isolate, egg white powder, and the mass ratio of the salt, soy protein isolate, egg white powder, oil (vegetable oil), starch (potato starch) and surimi being specifically 1.5:0.5:1:2:10:100.
Johnson teaches a surimi product [Johnson, 0030] where auxiliary materials suitable for the preparation of said surimi product comprise starch(es) [Johnson, 0079] and functional protein(s) (a protein that affects the structure and/or appearance of a product when included as an ingredient in the product) [Johnson, 0017] such as soy protein isolate (soy protein isolate is an emulsifier commonly used in food preparation, see Wang, p.1, Introduction) [Johnson, 0032], and egg white protein (egg white protein is a gelling agent, emulsifier, and binding agent commonly used in food preparation, see Amarachi, p.26, Chapter 2, section 2.0) [Johnson, 0032], wherein the egg white protein is dried egg white at about 1% in surimi product Example 3 (equivalent to egg white powder) [Johnson, Example 3, Table 3], and further teaches that the selection of ingredients as auxiliary materials (additional ingredients) including starch(es), salts, emulsifiers, gelling agents, binding agents, and palatability enhancers (oils/fats are palatability enhancers, see Botella-Martinez, p.2, Introduction, par.2), as well as their amounts is known to skilled artisans [Johnson, 0079].
Therefore, while Johnson does not explicitly recites the specific mass ratio of the salt, soy protein isolate, egg white powder, vegetable oil, potato starch and surimi being 1.5:0.5:1:2:10:100, Johnson does recognize that the selection of the amount ratios of each and every ingredient or auxiliary materials including those being claimed such as salt, soy protein isolate (as emulsifier), egg white component (as gelling agent, emulsifier, and binding agent), oil (as palatability enhancers), starch component and surimi, is within the technical knowledge of one of ordinary skill in the art, because Johnson implicitly teaches these auxiliary materials broadly by their functions (i.e., emulsifiers, gelling and binding agents, and palatability enhancers) [Johnson, 0079].
Further, regarding ratios, proportions and concentrations of ingredients or auxiliary materials, MPEP 2144.05 II. A. states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the soy protein isolate, egg white ingredient, and select the appropriate auxiliary materials mass ratios of the salt, soy protein isolate, egg white powder, vegetable oil, potato starch and surimi as taught by Johnson, into the soft gel product of surimi of Ebina, because Ebina already teaches the auxiliary materials comprise salt at 2% by weight of surimi (2g salt per 100g surimi), edible oil at an amount of from about 20-30% by weight of surimi (20g oil per 100g surimi), (which can be adjusted to lower amounts), and starch. Furthermore, it would have been obvious to one of ordinary skill in the art because Johnson teaches that the selection of the specific amount ratios of auxiliary materials including salt, soy protein isolate (as emulsifier), egg white component (as gelling agent, emulsifier, and binding agent), oil (as palatability enhancers), and starch component, will depend on a variety of factors such as the ingredient included in the composition; the species of animal (consumer); the animal's age, body weight, general health, sex, and diet; the animal's consumption rate; the purpose for which the food composition is being administered to the animal; and the like, which is within the technical knowledge of one of ordinary skill in the art [Johnson, 0079].
Regarding claim 8, Ebina teaches the soft gel product of surimi according to claim 1, wherein the emulsification process may provide for a softer fish paste surimi product which depends on the balance amount of water and oil (water:oil ratio) added in said emulsification process [Ebina, 0005], but does not teach a water content of the soft gel product of surimi is 75-85%.
Roussell teaches the fish based food product discussed above, wherein the fish base composition is suitable for gelling has a moisture content (water content) of below 80% (which include moisture content values in the claimed moisture content of 75-85%) [Roussell, col.3, l.43-47].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a water content of the soft gel product of surimi of 75-79% or below 80% as taught by Roussell, into the soft gel product of surimi of Ebina, because Roussell teaches that this water content would provide a fish base composition that is suitable for gelling [Roussell, col.3, l.43-45], and that the firmness of the sample depends mainly on its water content [Roussell, col.12, l.5-6], which would prompt a skilled artisan to modify/adjust said water content to obtain the desired firmness on the fish based food product.
Claim(s) 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ebina [JP2007228898A], in view of Johnson [US20130295236A1], and Uchida [US4759933A], evidenced by Cho [KR100440491B1], and Shabir [Applications of organic Pickering emulsions, 2023], as applied to claim 1 above, and further in view of Katsumata et al. [JP2005110677A], hereinafter Katsumata, Yin et al. [CN111743104A], hereinafter Yin, Wan et al. [CN110101084B], hereinafter Wan, Fan et al. [US20210213405A1], hereinafter Fan.
Claim 5 is considered a product-by-process claim. The cited prior art teaches all of the positively recited structure of the claimed product. The determination of patentability is based upon the product structure itself. The patentability of a product does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). See discussion regarding the fish oil “Pickering” emulsion above in claim 1 rejection.
Moreover Ebina teaches that the amount of oil and water balance for the emulsion may be selected depending on the desired texture of the fish paste [Ebina, 0005] and does not teach a lower/upper limit for the oil and water in the emulsion, and Katsumata teaches a minced or finely shredded paste meat material (surimi equivalent) [Katsumata, 0012], where the amount of oil for the emulsion does not have a lower/upper limit and may be adjusted depending on the type of oil/fat selected [Katsumata, 0016], and the amount of water may be between 5-20 parts by weight [Katsumata, 0016]. Therefore, a composition comprising for example 3 parts oil as disclosed by Katsumata in one embodiment [Katsumata, 0016] and 6 parts water would provide for an oil-water ratio of 0.5 w/w.
Regarding claim 6, Ebina teaches the soft gel product of surimi according to claim 1 and 5 comprising starch [Ebina, 0038], but does not teach the starch is a modified starch comprising one of sodium octenyl succinate corn starch, sodium octenyl succinate cassava starch, cross-linked cassava starch, acetate cassava starch, hydroxypropyl cassava starch and hydroxypropyl phosphate corn starch.
Yin teaches a surimi or fish paste product [Yin, Abstract, 0002, 0004] comprising hydroxypropyl cassava starch [Yin, 0012] (same as hydroxypropyl tapioca starch, see Yin et al. [CN111743104A] PE2E Translation, p.4, par.3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include hydroxypropyl cassava starch as taught by Yin, into the soft gel product of surimi of Ebina, because Yin and Ebina are both directed to surimi products and Yin already teaches using essentially the same instantly claimed raw materials of silver carp fish, soy protein isolate, egg white powder, oil/fat, and starch [Yin, 0012]. Doing so would provide a fish/surimi product characterized by having excellent texture (elasticity), color, and palatability [Yin, Abstract].
Regarding claim 7; Concentration of the modified starch dispersion being 4%.
Modified Ebina in view of Yin teaches the soft gel product of surimi according to claim 1, and 5, comprising the modified starch hydroxypropyl cassava starch [Yin, 0012] as discussed above in claim 6, and Yin further teaches the modified starch (hydroxypropyl cassava starch) may be in the emulsion (fish oil Pickering emulsion of modified Ebina discussed above in claim 1) in amounts of from 8-12 parts in a fish emulsion comprised of 100 parts of silver carp fish paste, 3-6 parts soybean isolated protein, 2-4 parts egg white powder, 4-8 parts fat/oil, 2-4 parts ginger, 40-60 parts water, and 2-4 parts salt [Yin, 0012], allowing a composition where: 100 parts of silver carp fish paste, 6 parts soybean isolated protein, 4 parts egg white powder, 8 parts fat/oil, 4 parts ginger, 60 parts water, 4 parts salt, and 8 parts of the modified starch, which would provide for a composition having 51.55% silver carp fish paste, 3.09% soybean isolated protein, 2.06% egg white powder, 4.12 fat/oil, 2.06% ginger, 30.93% water, 2.06% salt, and 4.12% modified starch, which reads on the claimed 4% of modified starch.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a modified starch dispersion having a concentration of 4% as taught by Yin, into the soft gel product of surimi of Ebina, because Yin and Ebina are both directed to surimi products and Yin already teaches using essentially the same instantly claimed raw materials of silver carp fish, soy protein isolate, egg white powder, oil/fat, and starch [Yin, 0012], further because the claimed concentration of modified starch would have been used during the course of normal experimentation and optimization procedures in the method of making the soft gel product of surimi of modified Ebina, due to factors such as the type and amount of other raw materials in the emulsion, the desired taste, and texture of the finished product, and the particular application in which the fish oil Pickering emulsion comprising the modified starch dispersion is being used.
Regarding claim 7; Concentration of the sodium chloride solution being 0.4 mole/L.
Ebina teaches using common salt (NaCl or sodium chloride) [Ebina, Abstract] in one example where the salt concentration is set at 2% [Ebina, 0043], meaning there is 2g of NaCl per 100mL of solution or 20g/L, the molar mass of NaCl being 58.44g/mol, thus having a molarity= [20g/L / (58.44g/mol)]= 0.3422 mol/L. Further, modified Ebina in view of Johnson teaches that the amounts selection of ingredients such as salts is common knowledge to skilled artisan and the amounts may be selected depending on a variety of factors such as the ingredient included in the composition; the species of animal; the animal's age, body weight, general health, sex, and diet; the animal's consumption rate; the purpose for which the food composition is being administered to the animal; and the like.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a sodium chloride solution with a concentration of 0.4 mole/L, because Ebina in view of Johnson teaches that the NaCl component and ingredient amounts may vary widely due to the various aforementioned factors, thus there is reasonable basis to conclude that the claimed 0.4 mole/L of NaCl solution would have been used during the course of normal experimentation and optimization procedures in the method of making the soft gel product of surimi of modified Ebina due to factors such as the desired final taste (saltiness) of the fish food product, and the amount of other ingredients (water) in the composition, particularly because Ebina already teaches a NaCl solution having a concentration of 0.3422 mol/L which is a NaCl concentration reasonably close to the claimed 0.4 mol/L.
Regarding claim 7; Homogenizing treatment comprises: treating using a high-speed homogenizer at 15000 revolutions per minute for 4 minutes, and then homogenizing by a high-pressure homogenizer for 8 times.
Ebina teaches the formation of the Pickering emulsion discussed above in claims 1 and 5 as a stable emulsion [Ebina, 0051] by thoroughly mixing the oil with the fish ingredient [Ebina, 0045], but is silent regarding an homogenizing treatment comprising: firstly, treating using a high-speed homogenizer at 15000 revolutions per minute for 4 minutes, and then homogenizing by a high-pressure homogenizer for 8 times.
Wan teaches oil Pickering emulsions [Wan, Abstract] suitable for food applications [Wan, 0008] including a first homogenizing pretreatment in the oil Pickering emulsion preparation step [Wan, claim 4, 0016] comprising: firstly, treating using a high-speed homogenizer at 15000 revolutions per minute (5000-20000 rpm) for 4 minutes [Wan, claim 4, 0022], and then homogenizing by a high-pressure homogenizer [Wan, 0026] (also referred as high-pressure microjet [Wan, 0023]) for 2-5 times [Wan, 0023]. While Wan is silent with regards to the 8 times as claimed, Wan does not teach an upper limit and one of ordinary skill in the art would have recognized that with more high-pressure homogenization steps would result in a more homogenized emulsion, therefore, absent any evidence of criticality, it would have been obvious to one of ordinary skill in the art to adjust the amount of high-pressure homogenization steps including to 8 times based on the amount of emulsion material being treated, the type of oil being used, the degree or the desired final level of homogenization, and the desired particle size reduction in the oil Pickering emulsion [Wan, 0023, 0026].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include an homogenizing treatment comprising: firstly, treating using a high-speed homogenizer at 15000 revolutions per minute for 4 minutes, and then homogenizing by a high-pressure homogenizer for 8 times (or as many times desired) as taught by Wan, into the fish oil Pickering emulsion of the soft gel product of surimi of Ebina, because Yin and Ebina are both directed to oil Pickering emulsions for food products, and because Wan teaches that by homogenizing using a high-speed homogenizer at speeds of between 5000-20000 rpm would allow for the emulsification and production of an oil Pickering emulsion having good storage stability (a stable emulsion that does not separate which Ebina already expressed interest in [Ebina, 0051]) and naturally safe by controlling simple process conditions [Wan, 0008], and also provide oil Pickering emulsions with small particle size [Wan, 0023, 0026], which will significantly expand the application scope of Pickering emulsions in the food field [Wan, 0010].
Regarding claim 7; Homogenizing treatment comprises: homogenizing by a high-pressure homogenizer specifically at 50 Megapascals.
Modified Ebina in view of Wan teaches the two stage homogenization treatment comprising: treating using a high-speed homogenizer at 15000 revolutions per minute for 4 minutes, and then homogenizing by a high-pressure homogenizer for 8 times as discussed above, but are silent regarding the specific pressure in the high-pressure homogenization step being specifically 50 Megapascals.
Fan teaches an oil Pickering emulsion suitable for food applications [Fan, Abstract], including a homogenizing treatment comprising: homogenizing by a high-pressure homogenizer [Fan, 0006], wherein said high-pressure homogenizing treatment in step (2) comprise employing pressures of from 10-100 MPa [Fan, 0015], including specifically the pressure of 50 MPa [Fan, 0034].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include an homogenizing treatment comprising: homogenizing by a high-pressure homogenizer at 50 Megapascals as taught by Fan, into the fish oil Pickering emulsion of the soft gel product of surimi of Ebina, because Fan teaches that the selection of pressures between 10-100 MPa [Fan, 0015], including specifically the pressure of 50 MPa [Fan, 0034], and by adjusting the parameters of homogeneous emulsification according to actual production needs, a skilled artisan would be able to prepare Pickering emulsions with the desired aspect ratio of the stabilizing particles [Fan, 0015], including low aspect ratio, which would produce Pickering emulsions with low viscosity and high fluidity that can be applied and suitable in the field of food [Fan, Abstract].
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ebina et al. [JP2007228898A], hereinafter Ebina, in view of Sohn et al. [KR20200047434A], hereinafter Sohn, and Anto et al. [CN103857300B], hereinafter Anto, evidenced by Shabir et al. [Applications of organic Pickering emulsions, 2023], hereinafter Shabir.
Regarding claim 9, Ebina teaches a preparation method of the soft gel product of surimi (fish paste) [Ebina, abstract, 0034] according to claim 1, comprising the following steps:
Thawing the surimi (fish raw material) [Ebina, 0002], then adding protease for pounding (crushing) [Ebina, 0034], then adding salt [Ebina, 0015], and then adding emulsion and remaining auxiliary materials [Ebina, 0015-0016, Abstract], heating [Ebina, Abstract, 0057], and cooling [Ebina, 0057] to obtain the soft gel product of surimi.
Ebina does not explicitly teach the pounding for 2 to 4 minutes (for the protease adding step (initial crushing/pounding) and for the salt adding step (the second crushing/pounding)); and the pounding for 3 to 5 minutes for the emulsion and remaining auxiliary materials adding step (the third crushing/pounding); and finally, molding the surimi.
NOTE: Regarding the recitation of “for pounding” in claim 9, lines 3-4, for examination purposes and compact prosecution, the claimed has been treated the “for pounding” as a required step. However, as written “for pounding” does not appear to be positively claimed and the claim could be rejected without the pounding. If Applicant intends to claim the pounding step, the examiner recommends to amend the claim to positively require said pounding step.
Sohn teaches a preparation method of surimi [Sohn, Abstract, p.5, par.5] that includes a first (crushing, shredding, grinding) pounding for 2 to 5 minutes (encompass the claimed 2 to 4 minutes of the first crushing/pounding) [Sohn, p.5, par.5], then adding salt for pounding for another 2 to 15 minutes (encompass the claimed 2 to 4 minutes of the second crushing/pounding) [Sohn, p.5, par.7], and then adding emulsion and remaining auxiliary materials to continue pounding for 2 to 10 minutes (encompass the claimed 2 to 4 minutes of the third crushing/pounding, since Ebina already teaches adding the emulsion but simply did not mention the pounding/mixing/crushing time) [Sohn, p.5, last paragraph; p.6, first paragraph], and finally, molding the surimi (molding the fish meat product to prepare a molded fish product) [Sohn, Abstract].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include pounding/crushing/mixing steps for 2-4 minutes when adding the protease and when adding the salt, to include pounding/crushing/mixing step for 3-5 minutes when adding the emulsion and remaining auxiliary materials, and to include a molding step as taught by Sohn, into the method of making a soft gel product of surimi of Ebina, because Sohn teaches that it is known in the art to prepare surimi by including steps of pounding/crushing/mixing/shredding for those amounts of times when adding the additives, ingredients or seasonings (auxiliary materials) in order to obtain a uniform ground meat mixture that is finely shredded (pulverized) having increased binding power [Sohn, p.5, par.6], and provide a molded fish meat product [Sohn, Abstract].
Regarding the recitation of fish oil “Pickering” emulsion:
See claim 1 discussion above over Ebina and the evidence of Shabir.
Ebina teaches a preparation method of the soft gel product of surimi (fish paste) [Ebina, abstract, 0034] according to claim 1, comprising a heating step [Ebina, Abstract, 0057], but does not explicitly teach gelatinizing the surimi by two-stage heating.
Anto teaches methods for making fish paste products (surimi) [Anto, Abstract], that includes gelatinizing (elastic increase according to demand, i.e., desired elasticity) the surimi by a two-stage heating [Anto, p.6, par.4].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a two-stage heating method for gelatinizing the surimi product as taught by Anto, into the method of making a soft gel product of surimi of Ebina, because Anto teaches that by using this method a surimi product with the desired gel elasticity may be obtained according to the desired elastic strength and the type of fish food product [Anto, p.6, par.4], which is a feature that Ebina is already interested in since Ebina teaches heat gelation occurs during heating [Ebina, 0034], therefore one of ordinary skill in the art would recognize that by using the two-stage heating method of Anto, and modulating heating temperatures and heat time exposure, in the method of making the soft gel product of surimi of Ebina, a surimi product with the desired elasticity (i.e., high/low elasticity or harder/softer gel) may be obtained.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ebina et al. [JP2007228898A], hereinafter Ebina, in view of Sohn et al. [KR20200047434A], hereinafter Sohn, and Anto et al. [CN103857300B], hereinafter Anto, evidenced by Shabir et al. [Applications of organic Pickering emulsions, 2023], hereinafter Shabir as applied to claim 9 above, and further in view of Borderias et al. [EP0396487B1], hereinafter Borderias.
Regarding claim 10, modified Ebina teaches the preparation method of the soft gel product of surimi as discussed above in claim 9, but is silent regarding explicitly teaching a temperature of the pounding is 0-10 degrees Celsius; and the two-stage heating is: heating at 40 degrees Celsius for 20 minutes, then heating to 90 degrees Celsius and heating for 30 minutes.
Borderias teaches a preparation method for a soft gel product of surimi [Borderias, p.2, l.47-51], wherein a temperature of the pounding (comminuting) is 0-10 degrees Celsius (between -5 to 15°C) [Borderias, p.3, l.5-7; l.17-19]; and the two-stage heating is: heating at 40 degrees Celsius (between 40 to 60°C) [Borderias, p.3, l.28-29], then heating to 90 degrees Celsius and heating for [Borderias, p.3, l.29-30; l.35-36]. While Borderias does not explicitly teach the exact time of 20 minutes for the first heating stage, or the exact time of 30 minutes for the second heating stage as claimed, Borderias teach that the heating time in both heating stages is not limited and may be an appropriate time until a gel is formed in the first heating stage [Borderias, p.3, l.28-29], and an appropriate required time for the formation of the final gel in the second heating stage [Borderias, p.3, l.29-30]. Furthermore, modified Ebina in view of Sohn already teaches that suitable heating times in the surimi making art include from 5 to 30 minutes, which encompass the claimed 20 and 30 minutes of the first and second heating stages respectively.
Therefore, absent any evidence of criticality, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the temperature of the pounding is 0-10 degrees Celsius; and the two-stage heating is: heating at 40 degrees Celsius for 20 minutes, then heating to 90 degrees Celsius and heating for 30 minutes as taught by Borderias, into the method of making the soft gel product of surimi of modified Ebina, because modified Ebina in view of Sohn already teaches suitable heating times in the surimi making art include from 5 to 30 minutes, which encompass the claimed 20 and 30 minutes of the first and second heating stages, and because Borderias teaches that there is no limit for heating times and that heating time duration may be performed until the desired gel is formed, which would provide one of ordinary skill in the art with the advantage of using heating times until the gel with the desired characteristics or the desired degree of gel stabilization is obtained [Borderias, p.3, l.25-36].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUIS EUGENIO DIOU BERDECIA whose telephone number is (571)270-0963. The examiner can normally be reached Monday-Friday 7:30-4:30.
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/LUIS EUGENIO DIOU BERDECIA/Examiner, Art Unit 1792
/ERIK KASHNIKOW/ Supervisory Patent Examiner, Art Unit 1792
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