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 II, claims 13-21 in the reply filed on July 6, 2026 is acknowledged. The traversal is on the ground(s) that the shared technical feature is a special technical feature because the Yakuba discloses a texturized protein and not a puffed snack food with the claimed density. This is not found persuasive because Yakubu teaches that low density snack food products of the present invention can have a density of 0.02 g/cm3 to 0.7 g/cm3 ([0104]) which is equivalent to 32.8 to 1,147.1 g/100 cubic inches, encompasses the claimed range of “about 75 to about 160 g/100 cubic inches”. MPEP §2144.05(I) states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”. Thus, Yakuba discloses the shared technical feature. Additionally, the 35 USC 103 rejection of claim 13 below demonstrates that the shared technical feature is not a special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected product, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on July 6, 2026.
Claim Status
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
1-21
Withdrawn claims:
1-12
Claims currently under consideration:
13-21
Currently rejected claims:
13-21
Allowed claims:
None
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 13-21 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 13 recites the limitation “combining ingredients under extrusion conditions” … “the extrusion conditions comprising low shear, and a barrel temperature of 160[Symbol font/0xB0]F to 260[Symbol font/0xB0]F”. This limitations renders the claim indefinite because one of ordinary skill would not be appraised to the scope of the claim. It is unclear if the ingredients are combined in an extruder that is a low shear extruder with a barrel temperature of 160[Symbol font/0xB0]F to 260[Symbol font/0xB0]F or if the ingredients are combined under low shear mixing at a temperature of 160[Symbol font/0xB0]F to 260[Symbol font/0xB0]F. For the purposes of examination, it is presumed that the combining takes place in a low shear mixture at a barrel temperature of 160[Symbol font/0xB0]F to 260[Symbol font/0xB0]F.
Claims 14-21 are rejected due to dependency on claim 13.
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 13-7 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Yakubu (US 2006/0188642 A1).
Regarding claim 13, Yakubu recites a method for manufacturing a protein extrudate (i.e., ready-to-eat food piece; Abstract), the method comprising:
Pre-conditioning a feed mixture by contacting the feed with water, then introducing the feed into an extruder barrel ([0032]), where mixing and shearing is performed in the second section of the screw extruder ([0206]), the ingredients including:
at least 70% by dry weight vegetable protein, dairy protein, or a combination thereof (which matches the claimed range of “at least 70% by dry weight”; [0012]);
ratios of soy protein isolate (i.e., a legume protein isolate) to sodium caseinate of 2:1 and 1:1 ([0204]), equivalent to 66.7% soy protein and 33.3% sodium caseinate or 50% soy protein and 50% sodium caseinate, which both lie within the claimed ranges of “about 10% to about 60%” sodium caseinate and “about 20% to about 80%” legume protein isolate. In the embodiments of [0204], there are no other proteins present. Thus, the protein blend of soy protein isolate and sodium caseinate comprises 100% by dry weight of the protein ingredients, which falls within the claimed range of “at least 60%”.
Where the conditioned premix may contain from about 5% to about 25% by weight water ([0071], which encompasses the claimed range of “about 8% to about 20%”.
Wherein the mixing zone (zone 2) has a temperature of 170[Symbol font/0xB0]F to 210[Symbol font/0xB0]F ([0228]), which falls within the claimed range of “160[Symbol font/0xB0]F to 260[Symbol font/0xB0]F”.
Extruding the mixture through a die such that superheated water flashes off, causing expansion (i.e., puffing) of the material ([0095]); and
Drying the extrudate in a dryer ([0093]) for a final moisture content of about 1% to 7% (which matches the claimed range of “about 1% to about 7%”; [0021]).
Yakubu also teaches that low density snack food products of the present invention can have a density of 0.02 g/cm3 to 0.7 g/cm3 ([0104]) which is equivalent to 32.8 to 1,147.1 g/100 cubic inches, encompasses the claimed range of “about 75 to about 160 g/100 cubic inches”.
MPEP §2144.05(I) states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Although Yakubu does not explicitly teach that the extrusion conditions are low shear, Yakubu teaches that dairy protein mixes were sensitive to high shear ([0207]). Thus, one of ordinary skill in the art would have modified the process of Yakubu to utilize low shear in the mixing phase because sodium caseinate is a dairy protein and Yakubu teaches that dairy protein mixes were sensitive to high shear ([0207]).
Regarding claim 14, Yakubu also teaches wherein the mixing zone (zone 2) has a temperature of 170[Symbol font/0xB0]F to 210[Symbol font/0xB0]F ([0228]), which falls within the claimed range of “about 170[Symbol font/0xB0]F to about 250[Symbol font/0xB0]F”.
Regarding claim 15, Yakubu also teaches that the screws of the twin screw extruder can rotate in opposite directions (i.e., reverse; [0076]).
Regarding claims 16 and 17, Yakubu also teaches that the pressure in the last two zones is from about 1000 psi to about 3000 psi ([0089]), which overlaps with the claimed range of “about 550 psi to about 1800 psi” (claim 16) and “about 800 psi to about 1500 psi” (claim 17).
MPEP §2144.05(I) states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Regarding claims 20 and 21, Yakubu also teaches that the molten mass enters the extrusion die at a temperature from about 212[Symbol font/0xB0]F to about 302[Symbol font/0xB0]F ([0085]), which overlaps with the claimed range of “about 200[Symbol font/0xB0]F to about 280[Symbol font/0xB0]F” (claim 20) and “about 220[Symbol font/0xB0]F to about 280[Symbol font/0xB0]F” (claim 21).
MPEP §2144.05(I) states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Yakubu (US 2006/0188642 A1) in view of Walther (US 2016/0205985 A1).
Regarding claims 18 and 19, Yakubu does not teach the specific mechanical energy of the extrusion.
However, in the same field of endeavor, Walther discloses a method of making an extruded protein product (Abstract) comprising extrusion conditions that include a specific mechanical energy from about 8 Wh/kg to about 100 Wh/kg ([0017]), which overlaps with the claimed range of “about 80 Wh/kg to about 140 Wh/kg” (claim 18) and “about 85 Wh/kg to about 125 Wh/kg” (claim 19).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Yakubu with the specific mechanical energy as taught by Walther. One of ordinary skill would have been motivated to make this modification because Walther teaches that having sufficient specific mechanical energy produces pieces having a desired protein matrix ([0049]).
MPEP §2144.05(I) states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 13-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-15 of copending Application No. 19/142,769 (reference application, hereinafter ‘769). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Regarding claim 13, claim 11 of ‘769 recites a method of making a food piece with the same density and an overlapping amount of protein as the product of instant claim 13. The method of making the food product in claim 11 of ‘769 is the same as that of instant claim 13. Instant claim 13 differs from ‘769 in that the instant claim does not recite a required amount of fiber. However, it would have been obvious to include fiber in the instantly claimed protein product. Thus, the claims are patentably indistinct.
Regarding claim 14, claim 12 of ‘769 also recites a barrel temperature of about 170[Symbol font/0xB0]F to about 250[Symbol font/0xB0]F.
Regarding claim 15, claim 12 of ‘769 also recites wherein the extrusion conditions comprise a twin screw extruder with 2 reverse or high shear elements.
Regarding claim 16, claim 12 of ‘769 also recites a die pressure from about 550 psi to about 1800 psi.
Regarding claim 17, claim 13 of ‘769 also recites a die pressure from about 800 psi to about 1500 psi.
Regarding claims 18 and 19, claims 12 and 14 of ‘769 recite a specific mechanical energy that encompasses the claimed ranges.
Regarding claim 20, claim 15 of ‘769 recites a die temperature from about 220[Symbol font/0xB0]F to about 280[Symbol font/0xB0]F, which falls within the claimed range.
Regarding claim 21, claim 15 of ‘769 also recites a die temperature from about 220[Symbol font/0xB0]F to about 280[Symbol font/0xB0]F.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Amanda S Hawkins whose telephone number is (703)756-1530. The examiner can normally be reached M-Th 8:00a-4:00p, F 8:00a-1:00p ET.
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/A.S.H./Examiner, Art Unit 1793
/Michele L Jacobson/Primary Examiner, Art Unit 1793
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