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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 20 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement due to the phrase “wherein the dried pulse powder comprises an edible part of the dried pulse, the edible part comprising dimethyl sulfoxide, dimethyl sulfide, or combinations thereof, and an inedible part of the dried pulse, the inedible part comprising dimethyl sulfoxide, dimethyl sulfide, or combinations thereof”. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Though the specification teaches an “inedible part”, the specification is silent to teaching the “the inedible part comprising dimethyl sulfoxide, dimethyl sulfide, or combinations thereof”. The specification is silent to teaching the inedible part comprising dimethyl sulfoxide, the specification is silent to the inedible part comprising dimethyl sulfide, the specification is silent to teaching the inedible part comprising a combination of dimethyl sulfoxide and dimethyl sulfide. In addition, though par. 0074 of applicants pre-grant published application teaches both and edible and inedible part, par. 0074 teaches the dimethyl sulfoxide and/or dimethyl sulfide being added “in pure form or a composition containing them may be added to” as opposed to the claimed the inedible part comprising dimethyl sulfoxide, dimethyl sulfide, or combinations thereof”
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.
Claim 20 is 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 20 is rejected due to the phrases “edible part” and “inedible part”. Though the specification teaches “edible part” and “inedible part” the specification is silent to defining what “part” is edible and more specifically which part is “inedible”. It is unclear if the phrases are relative to a definitive, i.e. not capable of being eating, if the phrases are relative humans as opposed to animals, or with respect to something different altogether. The term “inedible part” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree relative an “edible part”, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear as to what is encompassed by the phrase “inedible part”; it is unclear as to what degree of difference is encompassed by this phrase, if not an “inedible part” but “edible part” since applicants specification at pg. 9 lines 3-6 teaches a same part in one or more embodiments of the present invention may be the "edible part” or the "inedible part".
The phrase “inedible” in claim 20 is rejected, as it is a relative term, which renders the claim indefinite. The term “inedible” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear as to what is encompassed by the phrase “inedible”; it is unclear as to what degree of difference is encompassed by this phrase, if not “inedible”. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “inedible” in claim 20 is used by the claim to mean “a part” of the flour intended for a beverage or food consumption while the accepted meaning is “not fit or suitable for eating”. The term is indefinite because the specification does not clearly redefine the term. It is unclear if the “inedible part” is edible or “not fit or suitable for eating” as is its common definition.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 13 and 15-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP6412297 (Mizkan; ids 3/22/21; English translation).
With respect to Independent claims 1 and 17, Mizkan teaches a dried plant powder satisfying requirements
a d50 of a particle size after ultrasonication is 1,000 um or less and with respect to claim 17, 600um or less (pg. 8 par. 2);
a water content in the dried plant powder is 20 mass% or less (pg. 10 par. 2).
With respect to a dietary fiber content is 5 mass% or more in terms of dry weight, though silent to the fiber content, Mizkan teaches a same type of a pulse (pg. 4 par. 7; peas, broad beans) and thus the same pulse would be expected to comprise a same fiber content.
Mizkan teaches the pulse of claim 1 consists of peas, broad beans per claim 15 (pg. 4 par. 7) and with respect to Independent claim 17 and claim 18 the powder consists of a kind pea (pg. 4 par. 7)
Thus since Mizkan teaches a same pulse type as claimed, the same material must necessarily have same components and concentration of the components and thus the peas and broad beans of Mizkan are identical or substantially identical in composition and thus is taken to encompass a dimethyl sulfoxide content is 1 ppb or more and 40,000 ppb or less, a dimethyl sulfide content is 2 ppb or more and 2,000 ppb or less and a ratio of the dimethyl sulfoxide content to the dimethyl sulfide content (DMSO concentration/DMS concentration) is 1.0 or more and 180 or less.
Applicant has described the product with parameters which cannot be measured by the office for prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability purposes. As the claimed and prior art products are identical in composition, a prima facie case of anticipation been established.
Burden shift to applicant to provide evidence the same pulse type does not encompass applicants broadly claimed ranges of 1 ppb or more and 40,000 ppb or less, a dimethyl sulfide content is 2 ppb or more and 2,000 ppb or less and a ratio of the dimethyl sulfoxide content to the dimethyl sulfide content (DMSO concentration/DMS concentration) is 1.0 or more and 180 or less.
A same pulse, i.e. broad bean and pea and its properties are inseparable. Therefore, if the prior art teaches the identical pulse type, the properties applicant discloses and/or claims are necessarily present.
Similarly with respect to claim 2, a peak area ratio of confirmation ions of dimethyl sulfoxide, represented by a peak at 78, to confirmation ions of dimethyl sulfide, represented by a peak at 62, is 0.1 or more and less than 10, as measured by two-dimensional gas chromatography analysis using full evaporation-dynamic headspace-gas chromatography-mass spectrometry, wherein the confirmation ions of dimethyl sulfoxide and the confirmation ions of dimethyl sulfide are extracted in 5 mass% aqueous solution and thoroughly volatilized.
A same pulse, i.e. broad bean and pea and its properties are inseparable. Therefore, if the prior art teaches the identical pulse type, the properties applicant discloses and/or claims are necessarily present.
With respect to claim 13, wherein the d50 of the particle size is 600 um or less (pg. 8 par. 2).
With respect to claim 15, Mizkan teaches a pulse (pg. 4 par. 7), including peas and broad beans (pg. 4 par. 7).
With respect to claim 16, the dimethyl sulfoxide content is 3 ppb or more and 20,000 ppb or less; (4') the dimethyl sulfide content is 1 ppb or more and 1,500 ppb or less; (5') the ratio of the dimethyl sulfoxide content to the dimethyl sulfide content (DMSO concentration/DMS concentration) is 0.25 or more and 100 or less.
A same pulse, i.e. broad bean and pea and its properties are inseparable. Therefore, if the prior art teaches the identical pulse type, the properties applicant discloses and/or claims are necessarily present.
Claim 18, the dried pulse powder consists of a kind of pea (pg. 4 par. 7).
With respect to claim 19, a same pulse, i.e. broad bean and pea and its properties are inseparable. Therefore, if the prior art teaches the identical pulse type, the properties applicant discloses and/or claims are necessarily present. Such as in the instant case, a dimethyl sulfoxide content is 1 ppb or more and 30 ppb or less.
Claim 20, Mizkan teaches the pulse of claim 1 consists of peas, broad beans per claim 15 (pg. 4 par. 7) which is dried powder. Thus since the “edible part” and the “inedible part” are parts of the whole, i.e. a same pulse type as claimed, the same material must necessarily have same components and thus the peas and broad beans of Mizkan are identical or substantially identical in composition and are taken to comprise the claimed “edible part” and the “inedible part”.
Since Mizkan teaches a same pulse type as claimed, the same material must necessarily have same components and concentration of the components and thus the peas and broad beans of Mizkan are identical or substantially identical in composition and taken to comprise an edible part comprising dimethyl sulfoxide, dimethyl sulfide, or combinations thereof, and an inedible part comprising dimethyl sulfoxide, dimethyl sulfide, or combinations thereof.
A same pulse, i.e. broad bean and pea and its properties are inseparable. Therefore, if the prior art teaches the identical pulse type, the properties applicant discloses and/or claims are necessarily present.
Response to Arguments
Applicant’s arguments with respect to Pearson and Matsuura have been considered but are moot because the ground of rejection does not rely on Pearson or Matsuura for any teaching or matter specifically challenged in the argument.
It is noted Mizkan teaches applicants same claimed pulse, specifically at pg. 4 par. 7, peas and broad beans.
With respect to applicants urging directed to green pea powder, claim 15 is not limited to peas, where Mizkan further teaches peas.
With respect to applicants urging Mizkan does not necessarily encompass applicants claimed ranges and properties. Importantly Mizkan teaches applicants same claimed pulse type, i.e. broad beans and peas. Thus since Mizkan teaches a same pulse type as claimed, the same material must necessarily have same components and concentration of the components and thus the peas and broad beans of Mizkan are identical or substantially identical in composition and thus is taken to encompass applicants claimed ranges.
Applicant has described the product with parameters which cannot be measured by the office for prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability purposes. As the claimed and prior art products are identical in composition, a prima facie case of anticipation been established.
Burden shift to applicant to provide evidence the same pulse type does not encompass applicants broadly claimed ranges.
A same pulse, i.e. broad bean and pea and its properties are inseparable. Therefore, if the prior art teaches the identical pulse type, the properties applicant discloses and/or claims are necessarily present.
It is further noted with respect to applicants urging Mizkan does not necessarily encompass applicants claimed ranges and properties, “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding a same pulse type not comprising applicants same claimed ranges and properties, must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
With respect to applicants urging on page 8 that the pulse powder “can be made, for example, by a adding a predetermined amount of DMSO and/or DMS”, applicants claims are silent to such and merely “satisfy requirements” which are the identical pulse type and taught by Mizkan and thus the properties applicant discloses and/or claims are necessarily present.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN N LEFF whose telephone number is (571)272-6527. The examiner can normally be reached on M-F 8:30-5:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at (571)270-34753475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN N LEFF/Primary Examiner, Art Unit 1792