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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 4-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the tradename Palatinit(generic name isomalt) and Palatinose( generic name isomaltose). If the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. 112, second paragraph. Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. In fact, the value of a trademark would be lost to the extent that it became descriptive of a product, rather than used as an identification of a source or origin of a product. Thus, the use of a trademark or trade name in a claim to identify or describe a material or product would not only render a claim indefinite, but would also constitute an improper use of the trademark or trade name.
Claim 1 recites the limitation " the oligosaccharides and the sugar alcohols produced by reduction of oligosaccharides" in line 12-14. There is insufficient antecedent basis for this limitation in the claim.
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) 1,4-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Popplewell(US 2013/0022728).
Regarding claims 1,4,5,8, Popplewell teaches a spray dried composition consisting of(abstract)
16% of orange flavor(a citrus flavor)(example 1)
An excipient such as modified starch(example 1)
A salt(paragraph 22)
Disaccharides such as isomalt(palatinit)(paragraph 22)
Example 1 discloses only a flavor, an excipient and a disaccharide, which can be in the form of isomalt(palatinit) instead of sucrose(para 22). The salt is disclosed as an optional component. Therefore, the composition can consist of only the 4 ingredients A-D as claimed.
Popplewell teaches that the spray-dried composition can comprise salts(paragraph 22) but does not specifically disclose a sodium salt such as sodium chloride. However, it would have been obvious to use sodium chloride as the salt composition since it is a very common flavor component that is added to food products for additional seasoning. It would have been obvious to adjust the amount of amount of sodium in the composition depending on the salty taste desired.
Popplewell does not specifically teach that the amount of the excipient is 2 to 20 parts by weight based on 1 part by weight of flavor. However, Popplewell further teaches([0025])
“The amount of flavor and/or carrier can be adjusted by using more or less water depending on the solubility of the carrier material and various factors related to efficient operation of the spray dryer. For example, the type and amount of carrier, amount of water, and/or amount of flavor can be adjusted so that the resulting emulsion has a viscosity suitable for feeding into a spray dryer to provide liquid droplets having a mean particle size (mean volume diameter) of between 10 µm and 200 µm.”
Therefore, it would have been obvious to adjust the amount of carrier and flavor depending on the solubility of the carrier and necessary viscosity of the emulsion in the spray dryer.
Regarding claims 6 and 7, Popplewell teaches homogenously dissolving components A-D in water and spray drying(paragraphs 23 and 24). The composition can further be included in a food product(paragraph 33).
Response to Arguments
Applicant's arguments filed 11/24/2025 have been fully considered but they are not persuasive.
The applicant argues that the instant spec shows unexpected results when the when the spray-dried composition comprises palatinose or palatinit compared to a spray dried composition that does not contain an oligosaccharide or sugar alcohol.
However, the applicant’s claims are not commensurate in scope with the data cited in the instant spec. Specifically, the instant claims recite generic flavors, excipients and emulsifiers and a sodium salt while the examples recite only specific flavors, excipients/emulsifiers and sodium salts.
Furthermore, the applicant has not compared the claimed invention with the closest prior art. In fact, the comparative examples do not contain a disaccharide while the prior art contains disaccharides such as sucrose(example 1).
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 KATHERINE D LEBLANC whose telephone number is (571)270-1136. The examiner can normally be reached 8AM-4PM EST M-F.
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/KATHERINE D LEBLANC/Primary Examiner, Art Unit 1791
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