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
.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 19, 2025 has been entered.
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 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 of this title, 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.
Claims 32-41 are rejected under 35 U.S.C. 103 as being unpatentable over Drew et al. US 2014/0287131 in view of Krumhar et al. US 5,731,026, Han et al. US 9,068,022, Welsch et al. US 2011/0300394, and Zwiercan et al. US 4,608,265.
Regarding Claim 32, Drew et al. discloses a starch blend (‘131, Paragraph [0097]) comprising an unmodified (native) amylose containing starch (flour) (‘131, Paragraphs [0031]-[0034]). The unmodified (native) amylose containing starch is also not thermally inhibited (‘131, Paragraph [0013]). The starch blend also contains a non-chemically inhibited starch or non-chemically modified starch (thermally inhibited flour) (‘131, Paragraphs [0006] and [0024]). Examiner notes that the term “starch” includes both starch and/or flour (Specification, Paragraph [0021]). Therefore, the flour disclosed in Drew et al. reads on the claimed starch. Drew et al. further discloses the starch blend comprising the non-chemically modified starch (thermally inhibited flour) comprising from about 10 wt% to about 100 wt% of the starch and/or flour in a food product (‘131, Paragraph [0011]) wherein the non-chemically inhibited starch (thermally inhibited flour) is used to partially or fully replace typical starches and flours at different ratios to achieve comparable viscosity in a retorted product (‘131, Paragraph [0064]), which encompasses the claimed non-chemically inhibited starch being present in an amount of about 15-60% w/w. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the starch blend of Drew et al. and incorporate the claimed amount of non-chemically inhibited starch since where the claimed ranges of non-chemically inhibited starch overlaps ranges of non-chemically modified starch amounts disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). Drew et al. teaches that thermally inhibited flour is used to partially or fully replace typical starches and flours at different ratios to achieve comparable viscosity in a retorted product (‘131, Paragraph [0064]). Differences in concentration of the non-chemically inhibited starch within the starch blend will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration of non-chemically inhibited starch is critical. Where 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). Drew et al. establishes that one of ordinary skill in the art would adjust the amount of non-chemically inhibited starch in the starch blend based upon the desired viscosity of the final retorted product (‘131, Paragraph [0064]).
Drew et al. is silent regarding the unmodified amylose containing starch being about 40% (w/w).
Krumhar et al. discloses a starch blend comprising a mixture of modified and unmodified starch containing from about 5 to 40% by weight of unmodified starch based on the weight of the mixture of the starches wherein the starch blend is an ingredient of a cheese sauce (‘026, Column 2, lines 45-54). The disclosure of the starch blend comprising about 5 to 40% by weight of unmodified starch based on the weight of the mixture of the starches encompasses the claimed concentration of about 40% w/w of an unmodified starch of the starch blend.
Drew et al. discloses the unmodified (native) starch being an amylose containing wheat flour (‘131, Paragraph [0033]) or an amylose containing corn flour (‘131, Paragraph [0034]). Krumhar et al. discloses the unmodified starch being obtained from corn or wheat (‘026, Column 2, lines 28-30). Both Drew et al. and Krumhar et al. are directed towards the same field of endeavor of starch blends comprising an unmodified/native starch and a modified starch. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the starch blend of Drew et al. and incorporate unmodified amylose containing starch in the claimed concentration amounts as taught by Krumhar et al. since where the claimed ranges of unmodified amylose containing starch within a starch blend containing unmodified/native starch and modified starch overlaps ranges of unmodified amylose containing starch within a starch blend containing unmodified/native starch and modified starch amounts disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). Furthermore, Han et al. discloses a modified starch product that is mechanically blended with any native starches and/or modified starches in various ratios to produce modified starch products with functionality suitable to a variety of food and other applications (‘022, Column 4, lines 24-28) wherein various low sodium modified starches and native and conventionally modified starches are selected and combined to customize the modified starch characteristics such as texture, viscosity, taste, and sodium content as needed for a particular application (‘022, Column 4, lines 29-45). Differences in concentration of the unmodified amylose containing starch within the starch blend containing unmodified/native starch and modified starch will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration of unmodified amylose containing starch within the starch blend containing unmodified/native starch and modified starch is critical. Where 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the concentration of the unmodified starch within the starch blend containing unmodified starch and a non-chemically inhibited starch of the starch blend of Drew et al. based upon the texture, viscosity, taste, and sodium content as needed for a particular application as taught by Han et al. It is noted that the claim does not specify the particular use or application of the starch blend.
Further regarding Claim 32, Drew et al. discloses one embodiment of the starch based flour to be wheat flour having an amylose content of at least 40% by weight starch and another embodiment of using a waxy wheat flour (‘131, Paragraph [0033]) wherein a waxy flour is a flour whose starch contains less than 10% amylose by weight (‘131, Paragraph [0076]). The claimed limitation that starch contains at least 10% amylose by weight of the starch corresponds to a high amylose starch and the claimed limitations that another starch contains less than 10% amylose by weight of the starch corresponds to a low amylose/waxy starch, i.e. the claims require a blend of high amylose starch mixed with low amylose/waxy starch. However, Drew et al. does not teach an embodiment of the starch blend containing both the low amylose starch combined with the high amylose starch.
Welsch et al. discloses a starch blend (‘394, Paragraph [0074]) wherein the starches are unmodified, native, and high amylose starches as well as low amylose starches (waxy starches) (‘394, Paragraph [0024]). Zwiercan et al. discloses a starch blend of a high amylose starch containing 50-70% amylose with a pregelatinized low amylose starch containing 0 to 40% amylose (‘265, Column 4, lines 9-31).
Drew et al. discloses the polysaccharide containing starch being blended with other polysaccharides or with food ingredients before use in an end use product (‘304, Paragraph [0049]). Drew et al., Welsch et al., and Zwiercan et al. are all directed towards the same field of endeavor of starch blends containing high amylose starch and/or low amylose waxy starch. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the starch blend of modified Drew et al. and incorporate a mixture of high amylose starch and low amylose waxy starch into the same starch blend as taught by Welsch et al. and Zwiercan et al. in order to achieve a high solid content/low viscosity dispersion without chemical modification of the starch particles as taught by Welsch et al. (‘394, Paragraph [0043]) and since Zwiercan et al. teaches that it was known and conventional in the food art to create a starch blend containing a mixture of high amylose starch and low amylose waxy starch.
Regarding Claim 33, Drew et al. discloses the starch blend comprising the non-chemically modified starch (thermally inhibited flour) comprising from about 10 wt% to about 100 wt% of the starch and/or flour in a food product (‘131, Paragraph [0011]) wherein the non-chemically inhibited starch (thermally inhibited flour) is used to partially or fully replace typical starches and flours at different ratios to achieve comparable viscosity in a retorted product (‘131, Paragraph [0064]), which encompasses the claimed non-chemically inhibited starch being present in an amount of about 30-50% w/w. Where the claimed ranges of non-chemically inhibited starch overlaps ranges of non-chemically inhibited starch amounts disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). Furthermore, differences in concentration of the non-chemically inhibited starch within the starch blend will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration of non-chemically inhibited starch in the starch blend is critical. Where 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.).
Regarding Claim 34, the limitations “a test solution 1 comprising said starch blend at 4% by weight has a viscosity of at least 2Pa-s, 4Pa-S, or 6Pa-s at 65°C with a 1 rad/sec shear rate when said test solution 1 is subjected to one or more, two or more, three or more, four or more, or five or more freeze thaw cycles wherein said freeze thaw cycles comprise freezing at -18°C for 16 hours and thawing at 25°C for 8 hours” are intended use limitations regarding the process of using the claimed starch blend in a separate test solution. In this regard, applicant’s attention is invited to MPEP § 2114.I. and MPEP § 2114.II. which states features of an apparatus may be recited either structurally or functionally in view of In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima facie case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possess the functionally defined limitations of the claimed apparatus in view of In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40,100 USPQ2d 1433, 1440 (Fed. Cir. 2011). The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on in view of In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432; In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA 1971). Additionally, apparatus claims cover what a device is, not what a device does in view of Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claimed in view of Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Furthermore, if the prior art structure is capable of performing the intended use, then it meets the claim. Drew et al. teaches that thermally inhibited flour is used to partially or fully replace typical starches and flours at different ratios to achieve comparable viscosity in a retorted product (‘131, Paragraph [0064]) wherein the time and temperature combination of dehydration and heat treatment steps is affected by the type of flour being treated and that by varying the process conditions the level of inhibition is varied to provide different viscosity characteristics in the final thermally inhibited flour (‘131, Paragraph [0053]).
Further regarding Claim 34, the limitations “when said solution is subjected to one or more, two or more, three or more, four or more, or five or more freeze thaw cycles wherein said freeze thaw cycles comprise freezing at -18°C for 16 hours and thawing at 25°C for 8 hours” are also product by process limitations. Even though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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 in view of In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP § 2113.I.). Furthermore, where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established in view of In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP § 2112.01.I.). One of ordinary skill in the art would expect the starch blend of modified Drew et al. to behave in the same manner and have the same properties as claimed since modified Drew et al. teaches a starch blend having the composition and proportion of ingredients as claimed.
Regarding Claim 35, the limitations “wherein a test solution 2 comprising said starch blend at 4% by weight has a viscosity of at least 0.6 Pa-s, 0.8Pa-s, or 1.0Pa-s at 90° and 10 rad/sec shear rate when said test solution 2 is subjected to one or more, two or more, three or more, four or more, or five or more freeze thaw cycles wherein said freeze thaw cycles comprise freezing at -18°C for 16 hours and thawing at 25°C for 8 hours” are intended use limitations regarding the process of using the claimed starch blend in a separate test solution. As such, these limitations are rejected for the same reasons regarding intended use enumerated in the rejections of Claim 34 provided above.
Further regarding Claim 35, the limitations “wherein a test solution 2 comprising said starch blend has a viscosity of at least 0.6 Pa-s, 0.8Pa-s, or 1.0Pa-s at 90° and 10 rad/sec shear rate when said solution is subjected to one or more, two or more, three or more, four or more, or five or more freeze thaw cycles wherein said freeze thaw cycles comprise freezing at -18°C for 16 hours and thawing at 25°C for 8 hours” are also product by process limitations. Even though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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 in view of In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP § 2113.I.). Furthermore, where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established in view of In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP § 2112.01.I.). One of ordinary skill in the art would expect the starch blend of modified Drew et al. to behave in the same manner and have the same properties as claimed since modified Drew et al. teaches a starch blend having the composition and proportion of ingredients as claimed.
Regarding Claim 36, the limitations “wherein the test solution 1 at 4% by weight has a viscosity of at least 0.75 Pas or 1.0 Pas 65°C with a 10 rad/sec shear rate after four or five freeze thaw cycles” are intended use limitations regarding the process of using the claimed starch blend in a separate test solution. As such, these limitations are rejected for the same reasons regarding intended use enumerated in the rejections of Claim 34 provided above.
Regarding Claim 37, Drew et al. discloses the unmodified (native) amylose containing starch being a native starch wherein the unmodified (native) amylose containing starch contains at least 27% by weight of the starch (‘131, Paragraph [0033]), which overlaps the claimed unmodified amylose containing starch containing at least about 20% to less than 50% amylose, all by weight of the unmodified amylose containing starch. It would have been obvious to one of ordinary skill in the art to modify Drew et al. to use the amount of unmodified amylose containing starch in the claimed amounts of amylose since where the claimed ranges of amylose content of the unmodified starch overlaps ranges of amylose content of the unmodified starch amounts disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.).
Regarding Claim 38, Drew et al. discloses the unmodified (native) amylose containing starch being potato, rice, tapioca, and corn (‘131, Paragraphs [0031]-[0032]).
Regarding Claim 39, Drew et al. discloses the non-chemically inhibited modified starch containing less than 10% amylose (waxy flour) (‘131, Paragraph [0076]).
Regarding Claim 40, Drew et al. discloses the non-chemically modified starch being waxy corn (‘131, Paragraph [0103]).
Regarding Claim 41, Drew et al. discloses the non-chemically inhibited starch is a thermally inhibited starch (‘131, Paragraphs [0013]-[0015]).
Response to Arguments
Examiner notes that the previous Claim Objections have been withdrawn in view of the amendments.
Examiner notes that the previous indefiniteness rejections under 35 USC 112(b) have been withdrawn in view of the amendments.
Applicant’s arguments with respect to the obviousness rejections of Claims 32-41 under 35 USC 103(a) have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The current obviousness rejection relies upon the combination of Drew et al. modified with Krumhar et al., Welsch et al., and Zwiercan et al. The secondary reference of Krumhar et al. is currently being relied upon to teach the limitations regarding the newly amended concentration of about 40% w/w of an unmodified amylose containing starch. The new combination of references was necessitated by amendment. Claim 32 has been amended to recite a different unmodified amylose containing starch concentration.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kozich et al. US 2015/0050437 discloses a starch based adhesive composition comprising a mixture of one or more unmodified starches with one or more modified starches (‘437, Paragraph [0011]).
Macedo Galvaing US 2014/0005308 discloses a starch mixture of native starches, hydrolysis modified starches, oxidation modified starches, and physicochemically modified starches (‘308, Paragraph [0022]).
Biltresse et al. US 2013/0096239 discloses a starch based composition to replace latex in coating and adhesive compositions (‘239, Paragraph [0001]) wherein the starch is a mixture of any native and modified starches of any origin including potato, corn, wheat, tapioca pea, rice, and/or sorghum starch wherein the starches or waxy or non-waxy and the modified starches have been physically by heat and/or enzymatically modified (‘239, Paragraph [0028]).
Bauer US 2010/0092614 discloses a mixture of native and modified starches (‘614, Paragraph [0027]) wherein the native starches comprises 10-30% amylose (‘614, Paragraph [0026]).
Van Soest et al. US 6,755,915 discloses a method of preparing starch particles comprising the steps of mixing various types of starch such as native starch mixed with partially soluble, pregelatinized, or modified starch wherein the modified starch is physically, chemically, or enzymatically modified.
Brancq et al. US 5,164,014 discloses a starch blend comprising 80-99% native starch mixed with 1-20% starch paste (‘014, Column 1, lines 60-68) wherein the starch paste is obtained by heating native starch at 85°C (‘014, Column 2, lines 1-17).
Billmers et al. US 5,797,984 discloses a starch blend comprising 0 to 50% by weight of unmodified starches mixed with two or more hydrophobic starch derivatives.
Zallie et al. US 4,937,091 discloses a starch blend comprising 40-60% of a waxy maize, root, or tuber like starch which is unmodified and at least 20% enzymatically debranched starched prepared for use in cheeses wherein the blend employed is not critical provided that it yields the desirable melt, oil emulsification, string, shred, and gel character (‘091, Column 7, lines 62-68) (‘091, Column 8, lines 1-6).
Lane et al. US 2018/0192683 discloses a starch blend comprising thermally inhibited starch agglomerates blended with other unmodified starches or with other food ingredients for use in a food product (‘683, Paragraph [0070]) wherein food products that are improved by use of thermally inhibited starch agglomerates are low acid gravies, sauces, and soups (‘683, Paragraph [0072]) wherein the starch is a high amylose starch (‘683, Paragraph [0033]).
Zirkia US 2013/0158133 discloses a starch blend comprising a mixture of native and non-native starches wherein the starch starting material contains 40% or more by weight amylopectin (‘133, Paragraph [0023]) wherein the starch is employed as in ingredient in sauces and gravies (‘133, Paragraph [0027]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICSON M LACHICA whose telephone number is (571)270-0278. The examiner can normally be reached M-F, 8:30am-5pm, EST.
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/ERICSON M LACHICA/Examiner, Art Unit 1792