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 .
This office action was written in response to the Applicants Remarks filed 12/18/25. Claims 16, 18-27, 31-39 are pending in this action. Claims 1-15, 17, and 28-30 were previously cancelled. Claims 16, 18-27, 31-35 are rejected. Claims 36-39 were withdrawn.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 16, 21-27, 31-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16, 21-27, 31-33, 35 of copending Application No. 17/075,395 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications recite a fiber composition comprising dry cellulose fibers that are homogenized and an additive distributed between the fibers wherein the additive is selected from the group consisting of glucose, sucrose, glycerol, sorbitol, or starch (claims 16 for both). The claims differ in their disclosure of a resulting feature of the fiber composition.
Claim 21 of the instant 17/075,374 and Claim 21 of 17/075,395 recite that the fibers in dry form are citrus fruit fibers in dry form and the fiber composition having a ratio of the additive to the cellulose fibers in dry form between 0.01:1.0 and 10.0:1.0, wherein the cellulose fibers and the additive make up at least 88 wt % of the fiber composition wherein the additive is one or more carbohydrates or polyols.
Claim 22 of the instant 17/075, 374 and Claim 22 of 17/075,395 recite moisture content of at most 12%.
Claim 23 of the instant 17/075, 374 and Claim 23 of 17/075,395 recite wherein the cellulose fibers are derived from at least one of oranges, sweet oranges, clementines, kumquats, tangerines, tangelos, satsumas, mandarins, grapefruits, citrons, pomelos, lemons, rough lemons, limes, and leech limes.
Claim 24 of the instant 17/075, 374 and Claim 24 of 17/075,395 recite wherein said cellulose fibers in dry form are derived from at least one of early-season, mid-season, and late-season citrus fruit.
Claim 25 of the instant 17/075, 374 and Claim 25 of 17/075,395 recite wherein said cellulose fibers in dry form are derived from at least one of citrus peel, citrus pulp, and citrus rag.
Claim 26 of the instant 17/075, 374 and Claim 26 of 17/075,395 recite wherein said cellulose fibers in dry form are not subjected to at least one of esterification, derivatization and enzymatic modification.
Claim 27 of the instant 17/075, 374 and Claim 27 of 17/075,395 recite wherein the fiber composition comprises at least 5 wt. % additive relative to the weight of the cellulose fibers in dry form.
Claim 28 of the instant 17/075, 374 and Claim 28 of 17/075,395 recite wherein the additive to cellulose fibers in dry form ratio is between 0.01:1.0 and 10.0:1.0 by weight.
Claim 29 of the instant 17/075, 374 and Claim 29 of 17/075,395 recite wherein the additive is one or more carbohydrates or polyols.
Claim 31 of the instant 17/075, 374 and Claim 31 of 17/075,395 recite wherein said food composition is chosen from the group consisting of: drinks containing coffee, tea, cocoa, soup, or juice; milk component-containing drinks; nutrition-enriched drinks; dairy products; iced products; processed fat food products; soups; stews; seasonings; paste condiments; fillings; gels; paste-like food products; food products containing cereals as the main component; cakes; kneaded marine products; live-stock products; cream croquette; paste for Chinese foods; gratin; dumpling; salted fish guts; pickled vegetables; liquid foods; supplements; and pet foods.
Claim 32 of the instant 17/075, 374 and Claim 32 of 17/075,395 recite wherein the one or more proteins comprise at least 50 wt. % milk protein.
Claim 33 of the instant 17/075, 374 and Claim 33 of 17/075,395 recite wherein the emulsified product comprises one or more proteins in a range of about 0.1 wt. % to about 10.0 wt. % of the emulsified product.
Claim 35 of the instant 17/075, 374 and Claim 35 of 17/075,395 recite wherein the additive is a starch, wherein the starch is derived from a native source.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 16, 21-29, 31-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-18, 20-28, 32-34, 36 of copending Application No. 17/075,352 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications recite a fiber composition comprising dry cellulose fibers that are homogenized and an additive distributed between the fibers wherein the additive is selected from the group consisting of glucose, sucrose, glycerol, sorbitol, or starch (claims 16 for both). The claims differ in their disclosure of a resulting feature of the fiber composition.
Claim 21 of the instant 17/075,374 and Claim 17 of 17/075,352 recite that the fibers in dry form are citrus fruit fibers in dry form and the fiber composition having a ratio of the additive to the cellulose fibers in dry form between 0.01:1.0 and 10.0:1.0, wherein the cellulose fibers and the additive make up at least 88 wt % of the fiber composition wherein the additive is one or more carbohydrates or polyols.
Claim 22 of the instant 17/075,374 and Claims 18 and 20 of 17/075, 352 recite moisture content of at most 12% (claim 18), at most 8% (claim 20) and at most 12% (claim 22).
Claim 23 of the instant 17/075,374 and Claim 21 of 17/075, 352 recite wherein the cellulose fibers are derived from at least one of oranges, sweet oranges, clementines, kumquats, tangerines, tangelos, satsumas, mandarins, grapefruits, citrons, pomelos, lemons, rough lemons, limes, and leech limes.
Claim 24 of the instant 17/075,374 and Claim 22 of 17/075, 352 recite wherein said cellulose fibers in dry form are derived from at least one of early-season, mid-season, and late-season citrus fruit.
Claim 25 of the instant 17/075,374 and Claim 23 of 17/075, 352 recite wherein said cellulose fibers in dry form are derived from at least one of citrus peel, citrus pulp, and citrus rag.
Claim 26 of the instant 17/075,374 and Claim 24 of 17/075, 352 recite wherein said cellulose fibers in dry form are not subjected to at least one of esterification, derivatization and enzymatic modification.
Claim 27 of the instant 17/075,374 and Claims 25-28 of 17/075, 352 recite wherein the fiber composition comprises at least 5 wt. % additive relative to the weight of the cellulose fibers in dry form (claim 27 of 17/075,374); wherein the fiber composition comprises at least 5 wt. % additive relative to the weight of the cellulose fibers in dry form (claim 25); wherein the fiber composition comprises at least 10 wt. % additive relative to the weight of the cellulose fibers in dry form (claim 26); wherein the fiber composition comprises at least 20 wt. % additive relative to the weight of the cellulose fibers in dry form (claim 27); wherein the fiber composition comprises at least 30 wt. % additive relative to the weight of the cellulose fibers in dry form (claim 28).
Claim 31 of the instant 17/075,374 and Claim 32 of 17/075, 352 recite wherein said food composition is chosen from the group consisting of: drinks containing coffee, tea, cocoa, soup, or juice; milk component-containing drinks; nutrition-enriched drinks; dairy products; iced products; processed fat food products; soups; stews; seasonings; paste condiments; fillings; gels; paste-like food products; food products containing cereals as the main component; cakes; kneaded marine products; live-stock products; cream croquette; paste for Chinese foods; gratin; dumpling; salted fish guts; pickled vegetables; liquid foods; supplements; and pet foods.
Claim 32 of the instant 17/075,374 and Claim 33 of 17/075, 352 recite wherein the one or more proteins comprise at least 50 wt. % milk protein.
Claim 33 of the instant 17/075,374 and Claim 34 of 17/075, 352 recite wherein the emulsified product comprises one or more proteins in a range of about 0.1 wt. % to about 10.0 wt. % of the emulsified product.
Claim 35 of the instant 17/075,374 and Claim 36 of 17/075, 352 recite wherein the additive is a starch, wherein the starch is derived from a native source.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 16, 21, 22, 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 8, 9, 11, 13 of U.S. Patent No. 10,834,953. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite citrus fibers in dry form having an additive distributed between the fibers (16 and 21 of the instant 17/075,374 and claim 1 and 8 of 10,834,953).
Claim 16 of the instant 17/075,374 and Claim 7 and 11 of U.S. 10,834,953 recite wherein the additive is selected from the group consisting of glucose, sucrose, glycerol, sorbitol, and starch, (claim 16) ; wherein the additive is selected from the group consisting of glucose, sucrose, glycerol, and sorbitol (claims 7 and 11 of U.S. 10,834,953).
Claim 22 of the instant 17/075,374 and Claim 9 of U.S. 10,834,953 recite wherein the fiber composition has a moisture content of at most 12 wt. %.
Claim 31 of the instant 17/075,374 and Claim 13 of U.S. 10,834,953 recite
wherein said food composition is chosen from the group consisting of: drinks containing coffee,
tea, cocoa, soup, or juice; milk component-containing drinks; nutrition-enriched drinks; dairy
products; iced products; processed fat food products; soups; stews; seasonings; paste condiments; fillings; gels; paste-like food products; food products containing cereals as the main component; cakes; kneaded marine products; live-stock products; cream croquette; paste for Chinese foods; gratin; dumpling; salted fish guts; pickled vegetables; liquid foods; supplements; and pet foods.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 16, 18-21, 23-26, 31-35 are rejected under 35 U.S.C. 103 as being unpatentable over Debon et al. (US 2010/0099648) in view of Bok et al. (US 2001/0002264).
Regarding Claims 16, 18-21: Debon discloses a citrus pulp fiber composition wherein the composition is a homogenized combination of citrus pulp fiber with at least one starch [abstract; 0012]. Debon discloses that the system can contain a sweetener in the form of monosaccharides or disaccharides glucose, sucrose; polyols [0024; 0025; 0026]. Debon discloses the composition in dry form [abstract; claim 1]. Debon discloses the ratio of additive to cellulose fiber at between 10:1 to 2:1, 5:1 to 1:1 [0009; 0022; claim 2]. Debon discloses cellulose fiber and starch as the main components of the blend and that other ingredients are optional [0011; 0012; Fig.1, claims 1-8], therefore it would have been obvious to one of ordinary skill that the Debon reference would have contained a composition where 100% of the blend was attributed to the starch and the citrus fiber alone.
Debon does not disclose the additive being distributed between cellulose fibers. However, this can be a feature of Debon because the homogenized cellulose fiber and additive is in combination and therefore the additive can be distributed with the cellulose. Further, “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Debon does not disclose the composition the fiber composition having a Fiber Availability Parameter (“FAP”) of at least 0.70 Hz (claim 16); having a Fiber Availability Parameter (“FAP”) of at most 5.0 Hz (claim 18); having a Fiber Availability Parameter (“FAP”) of at most 3.0 Hz (claim 19); having a Fiber Availability Parameter (“FAP”) of at most 2.0 Hz (claim 20);
However, “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Debon does not explicitly disclose the citrus fibers as precipitated from a slurry by addition of organic solvent.
Bok discloses citrus peel extract and that the citrus peel extract is a product of a mixture of citrus peel with a solvent [0016]. Bok discloses solvent extraction with alcohols including ethanol and the extract is the recovered precipitate of the solvent extraction [0016]. Bok discloses citrus peel as containing hemicellulose, cellulose, and pectin [0007].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the composition of Debon to include solvent extracted citrus peel as in Bok since Debon allows for chemically modified citrus and in order to provide the peel in a form that is suitable for ingestion and also has cardiovascular benefits as described in Bok.
Regarding Claim 23: Debon discloses as discussed above in claim 16. Debon discloses that the fiber sources include but are not limited to oranges, tangerines, limes, lemons, and grapefruits [0017].
Regarding Claim 24: Debon discloses as discussed above in claim 16. Debon does not disclose wherein said cellulose fibers in dry form are derived from at least one of early-season, mid-season, and late-season citrus fruit. However, it would have been obvious that the oranges would have been picked at some point in the season and therefore the mere presence of harvested citrus fruit would have rendered the claim obvious.
Regarding Claim 25: Debon discloses as discussed above in claim 16. Debon discloses the citrus pulp or peel [0018].
Regarding Claim 26: Debon discloses as discussed above in claim 16. Debon does not disclose subjecting the fiber to esterification, derivation, or enzymatic modification and therefore renders the claim obvious.
Regarding Claim 31: Debon discloses as discussed above in claim 16. Debon discloses employing the fiber blend composition into “ feed applications, food applications including beverages, dairy products, ice creams, sorbets and, desserts. Said beverages include concentrates, gels, energy drinks, and carbonated beverages, non-carbonated beverages, syrups. The beverage can be any medical syrup or any drinkable solution including iced tea, and fruit juices, vegetable based juices, lemonades, cordials, nut based drinks, cocoa based drinks, dairy products such as milk, whey, yogurts, buttermilk and drinks based on them. Beverage concentrate refers to a concentrate that is in liquid form. The liquid concentrate can be in the form of a relatively thick, syrupy liquid. Preferred application are soups, dressing, bakery products, low fat spreads and sauces. More preferred applications are bechamel sauces and tomato sauces” [0047].
Regarding Claim 35: Debon discloses as discussed above in claim 16. Debon discloses that the starch can be native starch [abstract].
Claims 22, 24, 27 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Debon et al. (US 2010/0099648) and Bok et al. (US 2001/0002264) as applied to claim 16 above and in further view of Homsma et al. (US 2011/0020525).
Regarding Claim 22: Debon discloses as discussed above in claim 16. Debon does not disclose that the moisture content of the composition is at most 12%.
Homsma discloses a dry blend system containing citrus fiber pulp and at least one other component [abstract]. Homsma discloses that the system contains 0 to about 10% moisture [0030].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the fiber composition of Debon to include a moisture content of 0 to about 10% as in Homsma based on the application of the fiber blend and since the blend would still be considered dry within this range.
Regarding Claim 24: Debon discloses as discussed above in claim 16. Debon does not disclose wherein said cellulose fibers in dry form are derived from at least one of early-season, mid-season, and late-season citrus fruit.
Homsma discloses using citrus fruit from early, mid or late season [0033].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the citrus fruit of Debon to derive it from early, mid, or late season as in Homsma depending on its maturity.
However, it would have been obvious that the oranges would have been picked at some point in the season and therefore the mere presence of harvested citrus fruit would have rendered the claim obvious.
Further, it would have been obvious that the oranges would have been picked at some point in the season and therefore the mere presence of harvested citrus fruit would have rendered the claim obvious.
Regarding Claim 27: Debon discloses as discussed above in claim 16. Debon discloses ratios of fiber to additive as discussed above. Debon does not disclose wherein the fiber composition comprises at least 5 wt. % additive relative to the weight of the cellulose fibers in dry form.
Homsma discloses a dry blend containing 20% citrus pulp and 75% soy flour as the additive [0149].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to provide the additive of Debon at the amount in Homsma in order to provide a mixture that is readily able to replace solids such as lipids, carbohydrates, and proteins in a food system and to mimic the abilities of the solids.
Regarding Claim 32: Debon discloses as discussed above in claim 16. Debon discloses emulsified products comprising the cellulose fibers of claim 16 and one or more protein [0023; 0047]. Debon does not disclose wherein the protein is at least 50% milk protein.
Homsma discloses that the protein can be dairy milk or milk proteins [0040; 0052; 0053] and therefore satisfies the limitation of the one or more proteins containing at least 50% milk protein.
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the composition of Debon to use the milk protein of Homsma as the protein included in its composition since Debon discloses including protein and discloses emulsions like milk.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Debon et al. (US 2010/0099648) and Bok et al. (US 2001/0002264) as applied to claim 16 above and in further view of Heyman (US 2,328,554).
Regarding Claim 27: Debon discloses as discussed above in claim 16. Debon discloses ratios of fiber to additive as discussed above. Debon does not disclose wherein the fiber composition comprises at least 5 wt. % additive relative to the weight of the cellulose fibers in dry form.
Heyman discloses using pulp and skin of citrus fruit [pg. 1, col. 1, lines 39-44; pg. 1, col. 2, lines 24-27]. Heyman discloses the ground citrus peel and corn syrup/starch conversion product (mostly glucose) mixture in dried form [pg. 1, col. 1, lines 39-44]. Heyman discloses the powder containing the lemon solids at 21% and the syrup at 79% [pg. 2, col. 2, lines 10-15].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to provide the amount of additive in Debon for the amount in Heyman in order to provide a readily soluble powder mixture.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Debon et al. (US 2010/0099648), Bok et al. (US 2001/0002264) and Homsma et al. (US 2011/0020525) as applied to claim 32 above and in further view of Beckmann et al. (CN 102858183 Machine Translation 2013).
Regarding Claim 33: Debon discloses as discussed above in claim 32. Debon
discloses an emulsified product containing dairy milk or soy milk [0047]. Debon does not disclose that the emulsified product contains one or more proteins in a range of about 0.01% to about 10% of the emulsified product.
Beckmann discloses a beverage emulsion containing soy protein and citrus fiber [0013; 0014;0029]. Beckmann discloses the protein content 0-8.0%, 1-8 wt. % of the composition [0014; 0036].
At the effective filing date of the invention it would have been obvious to one of ordinary
skill in the art to modify the composition of Debon to include it in an emulsion as in Beckmann
in order to provide thickening or achieving desired viscosity.
Although Beckmann does not explicitly disclose 0.1 wt.% to 10 wt. % one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Beckmann overlaps the instantly claimed range and
therefore is considered to establish a prima facie case of obviousness.
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Debon et al. (US 2010/0099648) and Bok et al. (US 2001/0002264) in view of Alexandre et al. (US 2011/0293814).
Regarding Claim 34: Debon discloses as discussed above in claim 16. Debon does not disclose the inclusion of one or more surfactants.
Alexandre discloses the inclusion of sodium stearoyl lactylate and mono- and di-glycerides which are known surfactants [0045; 0050-0052].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the composition of Debon to include a surfactant as in Alexandre in order to increase the effectiveness of the blend and to emulsify beverages in Debon that would otherwise benefit from the inclusion.
Response to Arguments
The Applicants assert that Bok does not disclose a precipitate from alcohol extraction but only discloses a precipitate from alkali extraction. The Applicants assert that in the alcohol method the precipitate would be removed in the filtration step.
The Examiner disagrees. In both the alkali and alcohol extraction methods, a filtration step is performed. It is from this filtrate that a precipitate is recovered [0016].
The Examiner also notes that the instant claims are composition claims, not method claims as asserted by the Applicant. The Examiner points out that “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 art was made by a different process.” In re Thorpe, 777 F.2d 695, 698.
Pertinent Prior Art
42. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Leo et al. (US 1838949) discloses homogenizing citrus pulp and precipitating fibrous material; using alcohol [Claim 4].
Solomon et al. (US 2012/0156185) discloses citrus material that is subjected to alcohol extraction to produce a precipitate [0084; 0095].
Conclusion
43. 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.
44. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FELICIA C TURNER whose telephone number is (571)270-3733. The examiner can normally be reached Mon-Thu 8:00-4:00 pm.
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/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at 571-272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Felicia C Turner/Primary Examiner, Art Unit 1793