Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 13-22,24-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown(US 2003/0045504) in view of van der Hijden(US 2009/0092706) and Noort(US 2012/0207881).
Regarding claim 13-16,18-21, Brown teaches a powder composition comprising resistant starch in an amount of at least 80% of the total starch content(paragraphs 50 and 60). Brown teaches that the resistant starch can be in the form of RS1(paragraph 35). Brown is silent on the content of intact cells. However, the instant spec states that the amount of resistant starch(RS1) is directly proportional to the amount of intact cells(p.42, lines 26-28). Therefore, since Brown teaches at least 80% resistant starch content as a proportion of total starch(an amount well over the claimed amount of at least 20%), one of ordinary skill in the art would expect the product to also have the claimed amount of at least 30% or more intact plant cells in claim 1 and at least 64% intact plant cells of claim 12. According to the instant spec, RS1 resistant starch is contained within the intact plant cells(table p. 41).
Brown is silent on the moisture content of the powder composition. However, powder compositions are known to be shelf stable and have a low moisture content. For example, Noort teaches that flour compositions typically have a moisture content of 12-14wt%, or below 15wt% in order to provide microbial stability([0063]). It would have been obvious to adjust the moisture content of the flour to below 15% for microbial stability as taught in Noort.
Brown is silent on the particle size of the powder product. However, Van der Hijden teaches a food product comprises at least 25% by weight intact plant cells and has a particle size of less than 0.5mm(500µm)(claims 1 and 5). The food product can be in powder form which inherently have a low moisture content of less than 15% water as claimed(paragraph 40). The product can be used to make a variety of foodstuffs including beverages, sports drinks, desserts, and sauces(paragraph 41). The plant material can comprise chickpeas which inherently contain RS1 starch(paragraph 22).
It would have been obvious to have the powder composition of Brown have a particle size of less than 500µm as taught in Van der Hijden since Van der HIjden teaches a similar starch product that can be provided in food products as a powder.
Regarding claim 17, Brown teaches that the composition comprises 450g of starch per 1000g or 45g of starch per 100g(table 3).
Regarding claim 22, Brown teaches that the starch product can contain RS1 resistant starch and can be obtained from legumes(paragraphs 35-37). It would have been obvious to use chickpea starch as the resistant RS1 starch in Brown since chickpeas are legumes.
Regarding claim 24, Brown teaches heat treating the starch product(paragraph 39) but does not specifically teach the process as claimed.
However, it is noted that “[E]ven 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 re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Brown meets the requirements of the claimed food product, Brown clearly meets the requirements of the present claims.
Regarding claims 25 and 26, Brown teaches that the composition can be included in a variety of food products such as cake, bread, muffin, nutritional bar, and cookie(paragraph 57).
Regarding claim 27, Brown teaches that the product comprises at least 80% resistant starch per total starch(paragraphs 50 and 60) but is silent on the glycaemic index of the product. However, one of ordinary skill in the art would expect the product of Brown to have the claimed glycaemic index of 69 or less since Brown teaches similar processing conditions(heat treating paragraph 39) and level of resistant starch as claimed.
Response to Arguments
Applicant's arguments filed 9/24/2025 have been fully considered but they are not persuasive.
The applicant argues that Brown does not teach that all the resistant starch in the composition is RS1 and that the composition contains at least 20% resistant starch as claimed.
However, Brown specifically states in paragraph 35
“As used in this specification, the term "resistant starch" includes those forms defined as RS1, RS2. RS3 and RS4 as defined in Brown.”
As such, Brown only teaches four types of resistant starch, with RS1 being one of those choices. Therefore, it would have been well within one of ordinary skill in the art to pick 100% RS1 as the resistant starch in the composition from a limited number of possible choices.
Brown further teaches in paragraph 50(emphases added).
“Since one of the aims of the present invention is to replace dietary starch of the non-resistant type, such as amylopectin starch, with resistant starch, it is preferred that the resistant starch is present as a significant proportion of the total starch content of the composition. For example, the resistant starch may be present in a proportion of at least 10% by weight of the total starch content, preferably at least 15, 20, 25, 30. 35, 40, 50, 60, 70 or 80% by weight of the total starch content.”
Therefore, Brown clearly states a motivation to increase the resistant starch content to an amount of at least 80%, which is well over the at least 20% in claim 13
The applicant argues that Brown does not provide motivation to have a water content of 15% or less. However, powder compositions are known to be shelf stable and have a low moisture content. For example, Noort teaches that flour compositions typically have a moisture content of 12-14wt%, or below 15wt% in order to provide microbial stability([0063]). It would have been obvious to adjust the moisture content of the flour to below 15% for microbial stability as taught in Noort.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/KATHERINE D LEBLANC/Primary Examiner, Art Unit 1791