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 .
The amendment filed July 23, 2025 is acknowledged. Claims 1, 2, 5, 6, 8-13, and 15-23 are pending in the application. Claims 3, 4, 7, and 14 have been cancelled.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 2, 5, 6, 8-13, and 15-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 1 has been amended to recite “each of the fibers having … a diameter of 100 µm to 300 µm” at lines 7-8 (emphasis added). While the instant specification provides support for diameter or width of at most 300 nm (emphasis added, paragraphs [0014] and [0018]), the specification fails to provide support for the range of 100 µm to 300 µm as claimed.
Claims 2, 5, 6, 8-13, and 15-23 are not specifically discussed but are rejected due to their dependence on claim 1.
Accordingly, there is no indication that applicant had possession of the presently claimed invention at the time of the filing the instant application.
The failure to meet the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, commonly arises when the claims are changed after filing to either broaden or narrow the breadth of the claim limitations, or to alter a numerical range limitation or to use claim language which is not synonymous with the terminology used in the original disclosure. To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, or 365(c), each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure. SEE MPEP 2163.05.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 20 recites “wherein an individual fiber of the fibers has a width less than 300 nm”. Claim 20 depends upon claim 1, and claim 1 has been amended to recite “each of the fibers having … a diameter of 100 µm to 300 µm” at lines 7-8. It is uncertain what is intended by claim 20. More specifically, it is unclear how the width, or diameter, of the individual fiber is less than 300 nm as recited in claim 20 when the diameter of the fiber is between 100 µm and 300 µm as required in independent claim 1 (emphasis added). Therefore, the scope of claim 20 is indefinite. For the purpose of the examination, the recitation of “wherein an individual fiber of the fibers has a width less than 300 nm” (emphasis added) in claim 20 is interpreted as “wherein an individual fiber of the fibers has a width of 100 µm to 300 µm” (emphasis added). Applicant is reminded a claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. See MPEP 608.01(n).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 5, 6, 8-13, 15, 16, and 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Tsujiwaki et al. JP 02-100665 (hereinafter “Tsujiwaki”) (refer to the corresponding machine translation) in view of Murphy et al. EP 2038400 (hereinafter “Murphy”), Cantiani et al. WO 0016889 (hereinafter “Cantiani”) (refer to the corresponding machine translation), and Ochoa-Villarreal et al. “Plant Cell Wall Polymers: Function, Structure, and Biological Activity of Their Derivatives” (hereinafter “Ochoa-Villarreal”).
With respect to claim 1, Tsujiwaki teaches an emulsion (Abstract; and P2, bottom).
Regarding the limitation of the emulsion comprising: water; 10 vol% to 40 vol% of alcohol; fat that is in a range of from 2 wt% to 8 wt% of the emulsion as recited in claim 1, Tsujiwaki teaches the emulsion comprises 4-65% alcohol, water, and 1-40% edible fats and oils (Abstract; and P2, bottom).
The ranges of alcohol and edible fats and oils in Tsujiwaki encompass the presently claimed ranges. As set forth in MPEP 2144.05, in the case where the claimed range “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 the limitation of the fat provided from a cream comprising a fat content in a range of from 20 wt% to 60 wt% of the cream as recited in claim 1, Tsujiwaki does not expressly disclose this limitation.
Murphy teaches a hydroalcoholic fat emulsion (paragraphs [0001], [0002], and [0012]). The emulsion comprises alcohol, water, and at least 1% fat by weight (paragraphs [0001], [0002], and [0012]). The fat component comprises cream at 48% fat (P8-P9, Tables 13-15; and paragraph [0051]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Murphy, to select cream with a fat content within the range of 20 wt% to 60 wt% in the emulsion of Tsujiwaki based in its suitability for its intended purpose with the expectation of successfully preparing a functional emulsion product. One of ordinary skill in the art would have been motivated to do so because Tsujiwaki and Murphy teach emulsions comprising similar ingredients, Tsujiwaki teaches the edible oil and fat in the creamy emulsion may be butterfat (P2, middle), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected result. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Regarding the limitation of the emulsion comprising 0.001 wt% and 10 wt% of a plant-derived texturizer that is in the form of citrus fibers comprising microfibrils, each of the fibers having a crystallinity in the range of from 10% to 60% and a diameter of 100 µm to 300 µm, and comprising components of citrus fruit primary cell walls comprising cellulose, pectin, hemicellulose, and proteins, wherein the plant-derived texturizer comprises an ethanol insoluble fraction and an ethanol soluble fraction and a ratio between the ethanol insoluble fraction and the ethanol soluble fraction is a range of 99.0:1.0 to 70.0:30.0 as recited in claim 1, Tsujiwaki teaches the emulsion comprises 0.05-5% of a stabilizer (Abstract; P1, bottom; and P2, middle) which falls within the claimed range.
However, Tsujiwaki does not expressly disclose the stabilizer comprises citrus fibers.
Cantiani teaches an emulsifying and/or stabilizing agent comprising citrus fruit microfibrils. The agent comprises components from citrus fruit primary cell walls including cellulose, hemicellulose, and pectin (ethanol insoluble fraction) as well as between 5 and 50% of organic compound(s), such as sugars (ethanol soluble fraction) (ratio of ethanol insoluble fraction to ethanol soluble fraction of 95 : 5 to 50 : 50). The fibers have a crystallinity level of less than or equal to 50% and a small diameter. The agent is used as emulsifying and/or stabilizing agent for food emulsions (P1:1st and 4th paragraphs; P2: 5th, 8th, 13th, 14th, 18th, 19th, and 21st paragraphs; P3, 2nd paragraph; P4, 6th-8th paragraphs; P4, 17th paragraph - P5, 5th paragraph; and P5, 17th-18th paragraphs).
Ochoa-Villarreal relates to plant cell wall materials. The main components of plant cell walls are polysaccharides, which include cellulose, hemicellulose, and pectin, and proteins (P63-64, Introduction and Plant cell wall polymers).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Cantiani and Ochoa-Villarreal, to select the emulsifying and/or stabilizing agent comprising citrus fruit primary cell wall components in Tsujiwaki based in its suitability for its intended purpose with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Tsujiwaki and Cantiani similarly teach food emulsions comprising a stabilizer, Cantiani teaches the agent has remarkable emulsifying and/or stabilizing properties and slow down or inhibit the destabilization of the emulsion (P1:10th-11th paragraphs; P2: 5th; and P5, 17th – 18th paragraphs), Tsujiwaki discloses the stabilizer is not limited and can be used as long as it is edible (P2, middle), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected result. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the diameter of the fibers of the stabilizer in modified Tsujiwaki through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because the diameter of the fibers is a variable that can be modified by adjusting the processing parameters, such as homogenization, of the fibers, the diameter of the fibers would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the claimed invention, Cantiani teaches homogenizing the fibers through a small diameter orifice (P4, 6th-8th paragraphs), and such a modification would have involved a mere change in the size (or dimension) of a component. There would have been a reasonable expectation of success with said modification. “[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) (MPEP 2144.05 II). A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
With respect to claim 2, modified Tsujiwaki is relied upon for the teaching of the emulsion of claim 1 as addressed above.
Regarding the limitation of wherein the plant-derived texturizer is in an amount of between 0.005 wt% and 5.0 wt% of the hydroalcoholic emulsion as recited in claim 2, modified Tsujiwaki teaches this limitation since Tsujiwaki teaches the emulsion comprises 0.05-5% stabilizer (Abstract; & P1, bottom), which falls within the presently claimed range, and Cantiani and Ocho-Villarreal are relied upon for the teaching of the plant-derived texturizer as addressed above in claim 1.
With respect to claim 5, modified Tsujiwaki is relied upon for the teaching of the emulsion of claim 1 as addressed above.
Regarding the limitation of wherein the citrus fibers are in an amount of between 0.001 wt% and 5 wt% of the hydroalcoholic emulsion as recited in claim 5, modified Tsujiwaki teaches this limitation since Tsujiwaki teaches the emulsion comprises 0.05-5% stabilizer (Abstract; & P1, bottom), and Cantiani and Ocho-Villarreal are relied upon for the teaching of the plant-derived texturizer comprising citrus fibers as addressed above in claim 1.
With respect to claim 6, modified Tsujiwaki is relied upon for the teaching of the emulsion of claim 1 as addressed above.
Regarding the limitation of wherein the alcohol is in an amount of between 15 vol% and 40 vol% of the hydroalcoholic emulsion as recited in claim 6, modified Tsujiwaki teaches this limitation since Tsujiwaki teaches the emulsion has an alcohol concentration of 4-65% (Abstract) and encompasses the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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).
With respect to claim 8, modified Tsujiwaki is relied upon for the teaching of the emulsion of claim 1 as addressed above.
Regarding the limitation of the emulsion has a viscosity of between 5 mPa.s and 65 mPa.s as recited in claim 8, Tsujiwaki does not expressly disclose this limitation.
Murphy teaches a hydroalcoholic fat emulsion (paragraphs [0001], [0002], and [0012]). The emulsion comprises alcohol, water, and at least 1% fat by weight (paragraphs [0001], [0002], and [0012]). The emulsion has a viscosity in the range of between 5 and 70 centipoises (mPa.s) (paragraph [0016]) which encompasses the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select any portions of the disclosed range, including the instantly claimed range of viscosity, from the range disclosed in the prior art with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Tsujiwaki and Murphy teach emulsions comprising similar ingredients, and it is well understood that the viscosity of the emulsion is a function of the combination of ingredients present in the emulsion and the quantities thereof which have been shown to be obvious in view of the prior art. There would have been a reasonable expectation of success with said modification. "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages " In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
With respect to claim 9, modified Tsujiwaki is relied upon for the teaching of the emulsion of claim 1 as addressed above.
Regarding the limitation of the emulsion has a pH of 3-10 as recited in claim 9, Tsujiwaki does not expressly disclose this limitation.
Murphy teaches a hydroalcoholic fat emulsion (paragraphs [0001], [0002], and [0012]). The emulsion comprises alcohol, water, and at least 1% fat by weight (paragraphs [0001], [0002], and [0012]). The emulsion has a pH of less than 7 (paragraphs [0017], [0023], and [0029]). As set forth in MPEP 2144.05, in the case where the claimed range “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).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select any portions of the disclosed range, including the instantly claimed pH range, from the range disclosed in the prior art with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Tsujiwaki and Murphy teach emulsions comprising similar ingredients, Murphy teaches the pH depends on the amount of alcohol in the emulsion (paragraph [0041]), and it is well understood that the pH of the emulsion is a function of the combination of ingredients present in the emulsion and the quantities thereof which have been shown to be obvious in the prior art. There would have been a reasonable expectation of success with said modification. "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages " In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
With respect to claim 10 and regarding the limitation of an alcoholic beverage comprising the emulsion of claim 1, Tsujiwaki teaches alcoholic beverages comprising the emulsion (P1, bottom), and modified Tsujiwaki is relied upon for the teaching of the emulsion of claim 1 as addressed above.
With respect to claim 11, modified Tsujiwaki is relied upon for the teaching of the emulsion of claim 10 as addressed above.
Regarding the limitation of wherein said beverage is wine-based or spirit-based as recited in claim 11, modified Tsujiwaki teaches this limitation since Tsujiwaki teaches the alcoholic beverages may include wine, liqueurs, whiskey, brandy, rum, shochu, and sake (P1, bottom).
With respect to claim 12, modified Tsujiwaki is relied upon for the teaching of the emulsion of claim 10 as addressed above.
Regarding the limitation of wherein said beverage is chosen from the group consisting of milk punch, Alexander, Pink Squirrel, Golden Cadillac, Irish Alexander, Amaretto Cream, Irish Whiskey, Grasshopper and Cream Whiskey as recited in claim 12, modified Tsujiwaki teaches this limitation since Tsujiwaki teaches the creamy, alcoholic composition may include wine, liqueurs, whiskey, brandy, rum, shochu (P1, bottom; and P2, bottom – P3, top).
With respect to claim 13, Tsujiwaki teaches the production of the emulsion (P1; P2, bottom – P3, top), and modified Tsujiwaki is relied upon for the teaching of the emulsion of claim 1 as addressed above.
Regarding the limitation of providing a first mixture by mixing in water the plant-derived texturizer as recited in claim 13, Tsujiwaki teaches preparing the emulsion by adding the stabilizer to water and mixing to prepare an aqueous phase (P2, middle – P3, middle).
Regarding the limitation of the plant-derived texturizer comprising a plurality of fibers comprising an ethanol insoluble fraction and an ethanol soluble fraction and a ratio between the ethanol insoluble fraction and the ethanol soluble fraction is a range of 99.0:1.0 to 70.0:30.0 and wherein the plant-derived texturizer comprises citrus fiber as recited in claim 13, Tsujiwaki teaches the emulsion comprises a stabilizer (P2, middle).
However, Tsujiwaki does not expressly disclose a plant-derived texturizer comprising a plurality of fibers comprising an ethanol insoluble fraction and an ethanol soluble fraction and a ratio between the ethanol insoluble fraction and the ethanol soluble fraction is in a range of 99.0:1.0 to 70.0:30.0 and the plant-derived texturizer comprises citrus fibers.
Cantiani teaches an emulsifying and/or stabilizing agent comprising fibers from citrus fruits. The agent comprises cellulose, hemicellulose, and pectin (ethanol insoluble fraction) as well as between 5 and 50% of organic compound(s), such as sugars (ethanol soluble fraction) (ratio of ethanol insoluble fraction to ethanol soluble fraction of 95 : 5 to 50 : 50). The fibers have a crystallinity level of less than or equal to 50%. The agent is used as emulsifying and/or stabilizing agent for food emulsions (P1:1st and 4th paragraphs; P2: 5th, 8th, 14th, 18th, 19th, and 21st paragraphs; P4, 17th paragraph - P5, 5th paragraph; and P5, 17th-18th paragraphs).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Cantiani, to select the emulsifying and/or stabilizing agent in Tsujiwaki based in its suitability for its intended purpose with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Tsujiwaki and Cantiani similarly teach food emulsions comprising a stabilizer, Cantiani teaches the agent has remarkable emulsifying and/or stabilizing properties and slow down or inhibit the destabilization of the emulsion (P1:10th-11th paragraphs; P2: 5th; and P5, 17th – 18th paragraphs), Tsujiwaki discloses the stabilizer is not limited and can be used as long as it is edible (P2, middle), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected result. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Regarding the limitation of dispersing the first mixture with a shearing device to obtain a first sheared mixture as recited in claim 13, Tsujiwaki teaches stirring the aqueous phase with a homomixer (P3, middle).
Regarding the limitation of adding the fat and an emulsifier to the first sheared mixture, and adding a sugar component to the first sheared mixture, to obtain a second mixture and dispersing the second mixture with a shearing device to obtain a second sheared mixture as recited in claim 13, Tsujiwaki teaches adding sugar and the oil phase comprising the edible oil and fat and emulsifier to the aqueous phase and homogenizing (P3).
Regarding the limitation of adding the alcohol to the second sheared mixture to obtain the hydroalcoholic emulsion as recited in claim 13, Tsujiwaki teaches adding the alcohol (P2, bottom – P3, top).
With respect to claim 15, modified Tsujiwaki is relied upon for the teaching of the emulsion of claim 1 as addressed above.
Regarding the limitation of wherein the ratio between the ethanol insoluble fraction and the ethanol soluble fraction is in a range of 97.5:3.5 to 80.0:20.0 as recited in claim 15, Tsujiwaki as modified by Cantiani teaches this limitation since Cantiani is relied upon for the teaching of the ratio between the ethanol insoluble fraction and the ethanol soluble fraction as addressed above in claim 1, and Cantiani teaches the agent comprises cellulose, hemicellulose, and pectin (ethanol insoluble fraction) as well as between 5 and 50% of organic compound(s), such as sugars (ethanol soluble fraction) (ratio of ethanol insoluble fraction to ethanol soluble fraction of 95 : 5 to 50 : 50) (P4, 17th paragraph - P5, 5th paragraph). As set forth in MPEP 2144.05, in the case where the claimed range “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).
With respect to claim 16, modified Tsujiwaki is relied upon for the teaching of the emulsion of claim 1 as addressed above.
Regarding the limitation of wherein the ratio between the ethanol insoluble fraction and the ethanol soluble fraction is in a range of 96.0:4.0 to 90.0:10.0 as recited in claim 16, Tsujiwaki as modified by Cantiani teaches this limitation since Cantiani is relied upon for the teaching of the ratio between the ethanol insoluble fraction and the ethanol soluble fraction as addressed above in claim 1, and Cantiani teaches the agent comprises cellulose, hemicellulose, and pectin (ethanol insoluble fraction) as well as between 5 and 50% of organic compound(s), such as sugars (ethanol soluble fraction) (ratio of ethanol insoluble fraction to ethanol soluble fraction of 95 : 5 to 50 : 50) (P4, 17th paragraph - P5, 5th paragraph). As set forth in MPEP 2144.05, in the case where the claimed range “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).
With respect to claim 20, modified Tsujiwaki is relied upon for the teaching of the emulsion of claim 1 and has been addressed above.
Regarding the limitation of wherein an individual fiber of the fibers has a width of 100 µm to 300 µm as recited in claim 20, modified Tsujiwaki teaches the claimed invention and Cantiani and Ochoa-Villarreal are relied upon for the teaching of the fibers of claim 1 as addressed above. Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the diameter of the fibers of the stabilizer in modified Tsujiwaki through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because the diameter of the fibers is a variable that can be modified by adjusting the processing parameters, such as homogenization, of the fibers, the diameter of the fibers would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the claimed invention, Cantiani teaches homogenizing the fibers through a small diameter orifice (P4, 6th-8th paragraphs), and such a modification would have involved a mere change in the size (or dimension) of a component. There would have been a reasonable expectation of success with said modification. “[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) (MPEP 2144.05 II). A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
With respect to claim 21, modified Tsujiwaki is relied upon for the teaching of the emulsion of claim 1 as addressed above.
Regarding the limitation of the emulsion further comprising an emulsifier in a range of from 0.001 wt% and 0.5 wt% of the emulsion, wherein the emulsifier comprises a monoglyceride; a diglyceride; a distilled monoglyceride; monoglyceride of a saturated or unsaturated fatty ester; a diglyceride of a saturated or unsaturated fatty ester; a diacetyl tartaric acid ester of a monodiglyceride; a diacetyl tartaric acid ester of a diglyceride; a sodium stearyl lactylate; a propylene glycol monostearate; a succinylated monoglyceride, a succinylated diglyceride; an acetylated monoglyceride; an acetylated diglyceride; a propylene glycol monoester of a fatty acid; a propylene glycol diester of a fatty acid; a polyglycerol ester of a fatty acid; a lactylic ester of a fatty acid; a glyceryl monosterate; a propylene glycol monopalmitate; a glycerol lactopalmitate; a glycerol lactostearate; or a mixture thereof as recited in claim 21, modified Tsujiwaki teaches this limitation since Tsujiwaki teaches the emulsion may include 0.05-10% of an emulsifier such as glycerin fatty acid ester (monoglyceride), phospholipid, sucrose fatty acid ester, or other edible emulsifiers individually or in combination (Abstract; P1, bottom; P2, middle; and P3 top). The range of emulsifier in Tsujiwaki encompasses the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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).
With respect to claim 22, modified Tsujiwaki is relied upon for the teaching of the emulsion of claim 1 as addressed above.
Regarding the limitation of wherein the ratio between the ethanol insoluble fraction and the ethanol soluble fraction is in a range of 96.0:4.0 to 70.0:30.0 as recited in claim 22, Tsujiwaki as modified by Cantiani teaches this limitation since Cantiani is relied upon for the teaching of the ratio between the ethanol insoluble fraction and the ethanol soluble fraction as addressed above in claim 1, and Cantiani teaches the agent comprises cellulose, hemicellulose, and pectin (ethanol insoluble fraction) as well as between 5 and 50% of organic compound(s), such as sugars (ethanol soluble fraction) (ratio of ethanol insoluble fraction to ethanol soluble fraction of 95 : 5 to 50 : 50) (P4, 17th paragraph - P5, 5th paragraph). As set forth in MPEP 2144.05, in the case where the claimed range “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).
With respect to claim 23, modified Tsujiwaki is relied upon for the teaching of the emulsion of claim 1 as addressed above.
Regarding the limitation of wherein the ratio between the ethanol insoluble fraction and the ethanol soluble fraction is in a range of 80.0:20.0 to 70.0:30.0 as recited in claim 23, Tsujiwaki as modified by Cantiani teaches this limitation since Cantiani is relied upon for the teaching of the ratio between the ethanol insoluble fraction and the ethanol soluble fraction as addressed above in claim 1, and Cantiani teaches the agent comprises cellulose, hemicellulose, and pectin (ethanol insoluble fraction) as well as between 5 and 50% of organic compound(s), such as sugars (ethanol soluble fraction) (ratio of ethanol insoluble fraction to ethanol soluble fraction of 95 : 5 to 50 : 50) (P4, 17th paragraph - P5, 5th paragraph). As set forth in MPEP 2144.05, in the case where the claimed range “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 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Tsujiwaki et al. JP 02-100665 (hereinafter “Tsujiwaki”) (refer to the corresponding machine translation) in view of Murphy et al. EP 2038400 (hereinafter “Murphy”) and Cantiani et al. WO 0016889 (hereinafter “Cantiani”) (refer to the corresponding machine translation) and Ochoa-Villarreal et al. “Plant Cell Wall Polymers: Function, Structure, and Biological Activity of Their Derivatives” (hereinafter “Ochoa-Villarreal”) as applied to claim 1 above, and in further view of Dinand et al. US 5964983 (hereinafter “Dinand”).
With respect to claim 17, modified Tsujiwaki is relied upon for the teaching of the emulsion of claim 1 as addressed above.
Regarding the limitation of wherein an individual fiber of the fibers has a length to width ratio at least 1.5 as recited in claim 17, modified Tsujiwaki does not expressly disclose this limitation.
Dinand teaches fibers from citrus fruits. The fibers have a width of about 2 nm to about 4 nm and are more than 7 microns long (length to width ratio of at least 1750). The fibers are 15% to 50% crystalline and can stabilize emulsions in beverages (C2, L37-39; C7, L4-7; C8, L61-62; C9, L4-9; C13, L55-57; and C17, L55-57).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Dinand, to adjust the length to width ratio of the fibers of modified Tsujiwaki with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Dinand and Tsujiwaki as modified by Cantiani similarly teach food emulsions with stabilizers comprising crystalline fibers from citrus fruit, Dinand teaches processing, such as homogenization, impacts the characteristics of the fibers (C13, L40-50; and C14, L20-22), Cantiani teaches homogenizing the fibers (P4, 6th and 8th paragraphs), and such a modification would have involved a mere change in the size (or dimension) of a component. There would have been a reasonable expectation of success with said modification. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
With respect to claim 18, modified Tsujiwaki is relied upon for the teaching of the emulsion of claim 1 as addressed above.
Regarding the limitation of wherein an individual fiber of the fibers has a length to width ratio at least 3 as recited in claim 18, Tsujiwaki does not expressly disclose this limitation.
Dinand teaches fibers from citrus fruits. The fibers have a width of about 2 nm to about 4 nm and are more than 7 microns long (length to width ratio of at least 1750). The fibers are 15% to 50% crystalline and can stabilize emulsions in beverages (C2, L37-39; C7, L4-7; C8, L61-62; C9, L4-9; C13, L55-57; and C17, L55-57).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Dinand, to adjust the length to width ratio of the fibers of modified Tsujiwaki with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Dinand and Tsujiwaki as modified by Cantiani similarly teach food emulsions with stabilizers comprising crystalline fibers from citrus fruit, Dinand teaches processing, such as homogenization, impacts the characteristics of the fibers (C13, L40-50; and C14, L20-22), Cantiani teaches homogenizing the fibers (P4, 6th and 8th paragraphs), and such a modification would have involved a mere change in the size (or dimension) of a component. There would have been a reasonable expectation of success with said modification. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
With respect to claim 19, modified Tsujiwaki is relied upon for the teaching of the emulsion of claim 1 as addressed above.
Regarding the limitation of wherein an individual fiber of the fibers has a length of at least 0.5 µm as recited in claim 19, Tsujiwaki does not expressly disclose this limitation.
Dinand teaches fibers from citrus fruits. The fibers are more than 7 microns long. The fibers are 15% to 50% crystalline and can stabilize emulsions in beverages (C2, L37-39; C7, L4-7; C8, L61-62; C9, L4-9; C13, L55-57; and C17, L55-57).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Dinand, to adjust the length of the fibers of modified Tsujiwaki with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Dinand and Tsujiwaki as modified by Cantiani similarly teach food emulsions with stabilizers comprising crystalline fibers from citrus fruit, Dinand teaches processing, such as homogenization, impacts the characteristics of the fibers (C13, L40-50; and C14, L20-22), Cantiani teaches homogenizing the fibers (P4, 6th and 8th paragraphs), and such a modification would have involved a mere change in the size (or dimension) of a component. There would have been a reasonable expectation of success with said modification. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Response to Arguments
Applicant’s remarks filed July 23, 2025 are acknowledged.
Applicant’s arguments have been fully considered but they are unpersuasive.
Applicant argues Cantiani does not teach or suggest the claimed plant-derived texturizer that is in the form of citrus fibers comprising microfibrils. Further, a person of ordinary skill in the art would not find any guidance in Cantiani for selecting specific citrus fibers that are suitable for hydroalcoholic emulsions comprising 10 vol% to 40 vol% of alcohol. The process of Cantiani would result in cellulosic material that is substantially free of non-cellulosic materials, e.g., pectin or protein. The fibers of Cantiani would have different properties than the claimed citrus fibers, and that a person of ordinary skill in the art would not have had a reasonable expectation of success in modifying the fibers of Cantiani to be suitable for alcoholic emulsions. Further, a person of ordinary skill in the art would not have been motivated to do so because Cantiani teaches that the method of making the fibers confers the fibers "very specific properties" that would be lost if the same process was not used.
Examiner disagrees. Modified Tsujiwaki teaches the claimed invention. As addressed above, Cantiani teaches an emulsifying and/or stabilizing agent comprising citrus fruit microfibrils. The agent comprises at least approximately 85% of components from citrus fruit primary cell walls including cellulose, hemicellulose, and pectin as well as organic compound(s). Cantiani also teaches the components, such as polysaccharides (pectin), are not completely separated from the fibers during processing giving the fibers specific properties (P1:1st and 4th paragraphs; P2, 13th, 14th, 18th, 19th, and 21st paragraphs; P3, 2nd paragraph; P4, 6th-8th paragraphs; and P4, 17th paragraph - P5, 5th paragraph). Additionally, Ochoa-Villarreal teaches the main components of plant cell walls are polysaccharides, which include cellulose, hemicellulose, and pectin, and proteins (P63-64, Introduction and Plant cell wall polymers).
The Examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation to combine the references is found within the references themselves as well as in the knowledge generally available to one of ordinary skill in the art.
One of ordinary skill in the art would have been motivated to select the emulsifying and/or stabilizing agent comprising citrus fruit primary cell wall components of Cantiani and Ochoa-Villarreal in the emulsion of Tsujiwaki based in its suitability for its intended purpose because Tsujiwaki and Cantiani similarly teach food emulsions comprising a stabilizer, Cantiani teaches the agent has remarkable emulsifying and/or stabilizing properties and slow down or inhibit the destabilization of the emulsion (P1:10th-11th paragraphs; P2: 5th; and P5, 17th – 18th paragraphs), Tsujiwaki discloses the stabilizer is not limited and can be used as long as it is edible (P2, middle), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected result. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Additionally, one of ordinary skill in the art would have been motivated to optimize the diameter of the fibers of the stabilizer in modified Tsujiwaki through routine experimentation because the diameter of the fibers is a variable that can be modified by adjusting the processing parameters, such as homogenization, of the fibers, the diameter of the fibers would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the claimed invention, Cantiani teaches homogenizing the fibers through a small diameter orifice (P4, 6th-8th paragraphs), and such a modification would have involved a mere change in the size (or dimension) of a component. “[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) (MPEP 2144.05 II). A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
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 TYNESHA L. MCCLAIN whose telephone number is (571)270-1153. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM ET.
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/interviewpracti