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 .
Specification
The disclosure is objected to because of the following informalities: the specification lacks section headings, such as “Background of the Invention” and “Brief Description of the Drawings”.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 1-16 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 1 recites a “first fluid”, a “second fluid”, and a “third fluid’ which are “different”. It is not clear if these can be the same fluid used in different situations, different temperatures, different amounts, or whether they must be different types or quantities of fluids. It is not clear if a separation step (ie separating the insects and fluid) would be required between each step, or not. Dependent claim 11 also recites the insects are transported “together with the fluid” between the various steps. It is not clear if some/all of the fluids can be used in plural steps, or not. It is not clear if the fluid of the first heating step can simply be transferred to a “different” location or step, and still satisfy claim 1 or not.
Claim 4, 16 recites “the cooling step is performed at a temperature of” 10C to 30C (or 20-25C). It is not clear if this refers to the fluid temperature, or the maximum temperature achieved by the insects, or some other metric. If applicant intends to claim the fluid temperature, it should be stated clearly as in parent claim 1.
Claim Rejections - 35 USC § 102
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.
Claims 1-3, 7-8, 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guilfoyle et al [US 2012/0148712A1].
Guilfoyle et al teach a system for processing arthropods by providing dead frozen insects or larva in a bag (Figure 2, #20; Figure 8), a first heating step of the insects in a tank of boiling water (Figure 3), wherein it is understood that water boils at 100C, a subsequent cooling step with tank of separate cold water (Figure 4), then a second heating step with a tank of heated moving air at 150-165F or 65-74C (Figure 5) or optionally a tank with static air at 200-250F or 93-121C (Figure 6), spreading the insects during the second heating step (paragraph 0044), and separating the insects from the boiling water and cooling water by lifting the cheesecloth bag from the tanks (Figure 3-4).
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 4, 6, 11, 13, 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Guilfoyle et al as applied above, and further in view of Osada et al [US 2015/0030497A1].
Guilfoyle et al teach the above mentioned concepts and components, as well as a first heating means in the form of a stovetop burner (Figure 3), a cooling means in the form of ice cold water (paragraph 0041), a second heating means in the form of a dehydrator or oven (Figure 5-6).
Guilfoyle et al do not explicitly recite cooling at 10-30C (claim 4), automatic process (claim 6), pumps (claim 11, 15), heating at 90-110C before the first heat step (claim 13), cooling at 20-25C (claim 16).
Osada et al teach a sterilization method (title) comprising an automated system (Figure 2), plural pumps (Figure 2, #2, 7-8), a pre-heating step of 50-95C (Figure 2, #3; paragraph 0035), a first steam heating tank with heating means (Figure 2, #4), a cooling tank with cooling means (Figure 2, #5), a second heating step (Figure 2, #9-10), the cooling step reaching a temperature of 1-40C (paragraph 0041), and the consecutive steps of heating, cooling, and heating act to damage bacterial spores and subsequently inactivate the spores while using milder temperatures to achieve higher freshness and richer flavors (paragraph 0024).
It further would have been obvious to one of ordinary skill in the art to incorporate the claimed pumps, cooling temperature, and automatic aspect into the invention of Guilfoyle et al, in view of Osada et al, since both are directed to methods of preserving food products, since Guilfoyle et al already included cooling with water but simply did not mention a temperature, since food preservation systems commonly included an automated system (Figure 2), plural pumps (Figure 2, #2, 7-8), and the cooling step reaching a temperature of 1-40C (paragraph 0041) as shown by Osada et al, since water at different temperatures would have enabled faster or slower cooling of the insects of Guilfoyle et al, since the claimed temperatures would have been used during the course of normal experimentation and optimization procedures due to factors such as the size, quantity, type of insect, the targeted bacterial pathogen and/or spore, the desired cooling time, and/or the desired degree of insect cooling to be achieved in the system of Guilfoyle et al, in view of Osada et al; and since an automated system with pumps would have provided an effective and efficient means for transferring the insects of Guilfoyle et al between the tanks without the need for manual lifting, in view of Osada et al.
Regarding the automation of manual activity, MPEP 2144.04 states:
III. AUTOMATING A MANUAL ACTIVITY
In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958) (Appellant argued that claims to a permanent mold casting apparatus for molding trunk pistons were allowable over the prior art because the claimed invention combined "old permanent-mold structures together with a timer and solenoid which automatically actuates the known pressure valve system to release the inner core after a predetermined time has elapsed." The court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.).
It further would have been obvious to one of ordinary skill in the art to incorporate the claimed additional heating step into the invention of Guilfoyle et al, in view of Osada et al, since both are directed to methods of preserving foods, since Guilfoyle et al already included a first heating step in boiling water, since food preservation systems commonly included a pre-heating step of 50-95C (Figure 2, #3; paragraph 0035) as shown by Osada et al, and since a pre-heating step of the insects would have enabled the boiling water of Guilfoyle et al to better maintain its high temperature while also permitting a shorter hold time in the tank of boiling water in the combined method of Gulfoyle et al, in view of Osada et al.
Claims 5, 14 are rejected under 35 U.S.C. 103 as being unpatentable over Guilfoyle et al as applied above, and further in view of Dossey [US 2015/0132433A1].
Guilfoyle et al teach the above mentioned concepts. Guilfoyle et al do not explicitly recite a first heat duration of 5-15 minutes (claim 5), at least 50% of the time spent in water (claim 14).
Dossey teaches a method and apparatus for manufacturing insect products (title) by using multiple preservations steps of the insects during different stages of the process (Figure 1, #135, 140, 150, 145), the preservation methods including sterilization, Vat pasteurization with heating at lower temperatures for longer time intervals, HTST pasteurization using High Temperature-Short Time, and Ultra High pasteurization (paragraph 0052), one preservation embodiment using a temperature of 130-200F or 54-93C for various time intervals (paragraph 0053), another embodiment including boiling in a liquid (paragraph 0053), a further step of drying the preserved insect material (Figure 1-2 & 4, #110, 230, 460), an example which subjected a slurry of crickets and water to a first preservation step at 190F or 87C for 30 minutes, cooling to 140F or 60C, and a second preservation step at 190F or 87C for 30 minutes (Example 1, paragraph 0061), an example using a water bath preservation step at 175F or 79C for 10 minutes (Example 17, paragraph 0085), the use of frozen dead crickets (paragraph 0061), a preliminary step of heating the insects to kill them (paragraph 0055), an example wherein the insects are kept in water for at least 50% of the time (Example 1, paragraph 0061), and stirring or spreading the insects during heating in the water bath (paragraph 0085).
It would have been obvious to one of ordinary skill in the art to incorporate the claimed heating time and water time into the invention of Guilfoyle et al, in view of Dossey, since both are directed to methods of processing insects, since Guilfoyle et al already included heating in water but simply did not mention a time period, since insect preservation methods commonly used a water bath preservation step at 175F or 79C for 10 minutes (Example 17, paragraph 0085), and an example wherein the insects are kept in water for at least 50% of the time (Example 1, paragraph 0061) as shown by Dossey, and since the claimed times would have been used during the course of normal experimentation and optimization procedures due to factors such as the type, size, and quantity of the insects, the targeted bacterial pathogen and/or spore, the desired cooking time, and/or the desired degree of insect cooking to be achieved in the system of Guilfoyle et al, in view of Dossey.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Guilfoyle et al, as applied above, and further in view of Ku et al [US 2012/0244266A1].
Guilfoyle et al teach the above mentioned concepts. Guilfoyle et al do not explicitly recite storing in a buffer tank (claim 9). Ku et al tech a method for preserving food material including a buffer tank for storing the food (Figure 4, #50). It would have been obvious to one of ordinary skill in the art to incorporate the claimed buffer tank into the invention of Guilfoyle et al, in view of Ku et al, since both are directed to methods of food preservation, since Guilfoyle et al simply did not mention what was done with the final product, since preservation systems commonly included a buffer tank for storage (Figure 4, #50) as shown by Ku et al, and since a buffer tank would have enabled improved preservation of the product of Guilfoyle et al, by shielding it from moisture, light, and/or other detrimental conditions.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Guilfoyle et al, as applied above, and further in view of Mott et al [US 10,638,788B2].
Guilfoyle et al teach the above mentioned concepts. Guilfoyle et al does not explicitly recite adding additional insects (claim 10). Mott et al teach a method for spray drying insects (title) including adding additional insects before the heating step (Figure 4, #422, 412, 400) if the insect temperature is below a threshold. It would have been obvious to one of ordinary skill in the art to incorporate the claimed additional insects into the invention of Guilfoyle et al, in view of Mott et al, since both are directed to methods of preserving insects, since Guilfoyle et al already included a second heating step in the form of long air drying, since insect preservation systems commonly included adding additional insects before the heating step (Figure 4, #422, 412, 400) if the insect temperature is below a threshold as shown by Mott et al, and since this would have ensured adequate heating for drying/pasteurization in the method of Guilfoyle et al, in view of Mott et al.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-16 have been considered but are moot because the new ground of rejection does not rely on the same references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that amendments were made to the Specification. However, these appear to be missing from the response of 7/30/26.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the fluids being distinct, non-identical media; as well as intact physical insect bodies) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DREW E BECKER whose telephone number is (571)272-1396. The examiner can normally be reached 8am-5pm Monday-Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at 571-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DREW E BECKER/Primary Examiner, Art Unit 1792
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