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 .
DETAILED ACTION
Status of Claims
Note: The amendment of March 18th 2026 has been considered.
Claim 8 has been amended.
Claims 2, 6, 9, 13-15, 19, 22 and 23 are cancelled.
Claims 26 and 27 were added.
Claims 1, 3-5, 7, 8, 10-12, 16-18, 20, 21 and 24-27 are pending in the current application.
Claims 1, 3-5, 7, 11, 12, 16-18, 19 are withdrawn from consideration.
Claims 8, 10, 21 and 24-27 are examined in the current application.
Any rejections not recited below have been withdrawn.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35 of the U.S. Code not included in this action can be found in a prior Office action.
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 8, 10, 24, 26 and 27 are rejected under 35 U.S.C. 103(a) as being unpatentable over NPL “Tayebat” (from https://web.archive.org/web/20131022235059/http://prebiotik-probiotik.serianggerik.com/tayebat.html) in view of NPL Crus Figueroa-Espinoza et al., “Grape seed and apple tannins – Emulsifying and antioxidant properties” (Food Chemistry 178 (2015) 38-44) and NPL Mhinzi “Intra-Species Variation of The Properties of Gum Exudates From Acacia Senegal Var. Senegal and Acacia Seyal Var. Fistula From Tanzania” (from Bull. Chem. Soc. Ethiop. 2003, 17(1), 67-74).
Regarding claims 8, 10, 24, 26 and 27: Tayebat discloses a mixture of the gum arabic extracts from acacia seyal and acacia senegal to be blended with water in order to promote the health of the consumer (see Tayebat page 1), which reads on claim 8: “[a] composition comprising gum arabic, and an added phenol source selected from the group consisting bark, polyphenols, gallic acid, and a second gum arabic”, claim 10: “[t]he composition of claim 8 wherein the gum arabic from acacia seyal is selected from gum arabic of acacia seyal var. seyal, acacia seyal var. fistula and mixtures thereof”.
As to the improved emulsification performance recited in claim 8: While Tayebat fails to disclose the emulsification performance, or its improved performance, or compares the emulsification performance of the individual gum arabics and their combination, given the fact that Tayebat in view of Mhinzi discloses the same mixture recited in the claims, it is examiner position the claimed emulsification performance improvements are inherently present in Tayebat. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
As to the relative content of tannins recited in claims 8, 26 and 27 and the and the variety of the acacia seyal and acacia senegal recited in clam 10: Tayebat discloses that tannins are detected in the mixture (see Tayebat page 2), but fails to disclose the relative content of the tannins, or the variety of the acacia seyal and acacia senegal; However, Mhinzi acknowledges the commercial value of tannins and discloses acacia senegal var. senegal exudate comprises 0.3wt%-0.6wt% tannins and acacia seyal var. fistula comprises 0.6wt%-1.2wt% tannins (see Mhinzi abstract; page 70 second paragraph; table 2), which is higher than 700ppm and 2000ppm. While Mhinzi also acknowledges the tannin content may vary within the same acacia species variety, depending on factors, such as, the age of the acacia trees (see Mhinzi page 70, second paragraph), Espinoza discloses tannins are antioxidants that stabilize emulsions comprising oil and water and can be added to food or beverages (see Espinoza abstract; page 39, left column and bottom of right column). Therefore, it would have been obvious to a skilled artisan at the time the application was filed to select gum arabic extracts from acacia seyal and acacia senegal varieties with sufficient levels of tannins and/or added tannins in order to attain a composition that is stabilized, and thus arrive at the claimed limitations. As set forth in MPEP §2144.05 discovering an optimum value of a result effective variable, involves only routine skill in the art.
Claims 8, 10, 21 and 24-27 are rejected under 35 U.S.C. 103(a) as being unpatentable over NPL Mhinzi “Intra-Species Variation of The Properties of Gum Exudates From Acacia Senegal Var. Senegal and Acacia Seyal Var. Fistula From Tanzania” (from Bull. Chem. Soc. Ethiop. 2003, 17(1), 67-74) in view of NPL Crus Figueroa-Espinoza et al., “Grape seed and apple tannins – Emulsifying and antioxidant properties” (Food Chemistry 178 (2015) 38-44).
Regarding claims 8, 10, 21 and 24-27: Mhinzi discloses acacia seyal var. fistula comprises 0.6wt%-1.2wt% tannins (see Mhinzi abstract; page 70 second paragraph; table 2), which reads on the tannins contents in claims 8, 26 (i.e., >700ppm) and 27 (i.e., >2000ppm), and on claim 10: “[t]he composition of claim 9 wherein the gum arabic from acacia seyal is selected from gum arabic of acacia seyal var. seyal, acacia seyal var. fistula and mixtures thereof”. Mhinzi acknowledge the commercial value of tannins and that the tannin content may vary within the same acacia species variety, depending on factors, such as, the age of the acacia trees (see Mhinzi abstract; page 70 second paragraph), but fails to disclose additional source of phenols; However, Espinoza discloses phenols (e.g., tannins) are antioxidants that stabilize emulsions comprising oil and water and can be added to food or beverages (see Espinoza abstract; page 39, left column and bottom of right column). Therefore, it would have been obvious to a skilled artisan at the time the application was filed to select gum arabic extracts from acacia seyal varieties with sufficient levels of phenols and/or add additional phenols in order to attain a composition that is stabilized to the desired level, and thus arrive at the claimed limitations. As set forth in MPEP §2144.05 discovering an optimum value of a result effective variable, involves only routine skill in the art.
As to the improved emulsification performance recited in claim 8: While Mhinzi fails to disclose the emulsification performance, or its improved performance, or compares the emulsification performance of the individual gum arabics and their combination, given the fact that Mhinzi in view of Crus Figueroa-Espinoza discloses the same mixture recited in the claims, it is examiner position the claimed emulsification performance improvements are inherently present in Mhinzi. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Response to Arguments
Applicant's arguments filed on March 18th 2026 have been fully considered but they are not persuasive.
Applicant argues the prior art references fail to render the claimed invention obvious, because the prior art references fail to disclose the claimed emulsification improved performance. The examiner respectfully disagrees.
As discussed above, while Tayebat and/or Mhinzi fail to disclose the emulsification performance, or its improved performance, or compares the emulsification performance of the individual gum arabics and their combination, given the fact that either Tayebat in view of Mhinzi, or Mihinzi in view of Crus Figueroa-Espinoza, disclose the same mixture recited in the claims, it is examiner position the claimed emulsification performance improvements are inherently present in Tayebat. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Applicant argues on page 7 of the “Remarks” that the prior art references fail to render the claims invention obvious, because a skilled artisan would not be motivated to modify Tayebat, as Tayebat teaches a powder that is stable and is not in need of any improvement in emulsification. The examiner respectfully disagrees.
As discussed above, while Tayebat fails to disclose the emulsification performance, or its improved performance, or compares the emulsification performance of the individual gum arabics and their combination, Mhinzi also acknowledges the tannin content may vary within the same acacia species variety, depending on factors, such as, the age of the acacia trees and discloses the same mixture recited in the claims (see Mhinzi page 70, second paragraph). Given the fact that Tayebat in view of Mhinzi discloses the same mixture recited in the claims, it is examiner position the claimed emulsification performance improvements are inherently present in Tayebat. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Applicant argues on pages 7-8 of the “Remarks” that the prior art references fail to render the claimed invention obvious, because Espinoza does not teach adding an additional phenol to the tannins from gum Arabic of acacia seyal and attain the unexpected stability observed by Applicant, because Espinoza only teaches that emulsifying performance is driven by the structure of the tannins and not their sources, as Espinoza acknowledges that oxidized tannins and not unoxidized tannins, drive emulsion performance. The examiner respectfully disagrees.
To clarify, Mhinzi discloses acacia seyal var. fistula comprises 0.6wt%-1.2wt% tannins (see Mhinzi abstract; page 70 second paragraph; table 2), which reads on the claimed tannins contents (i.e., >700ppm) and 27 (i.e., >2000ppm). While Mhinzi acknowledge the commercial value of tannins and that the tannin content may vary within the same acacia species variety, depending on factors, such as, the age of the acacia trees (see Mhinzi abstract; page 70 second paragraph), Whinzi fails to disclose additional source of phenols; However, Espinoza discloses phenols (e.g., tannins) are antioxidants that stabilize emulsions comprising oil and water and can be added to food or beverages (see Espinoza abstract; page 39, left column and bottom of right column). Therefore, it would have been obvious to a skilled artisan at the time the application was filed to select gum arabic extracts from acacia seyal varieties with sufficient levels of phenols and/or add additional phenols in order to attain a composition that is stabilized to the desired level, and thus arrive at the claimed limitations.
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 ASSAF ZILBERING whose telephone number is (571)270-3029. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at (571) 270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASSAF ZILBERING/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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