DETAILED ACTION
Notice of Pre-AlA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. The Amendment filed on September 10, 2025 has been entered.
Claim Disposition
3. Claims 2, 4, 6-7, 10-11, 13-18, 22, 25-27, 32-33 and 36 have been cancelled. Claims 37-39 have been added. Claims 1, 3, 5, 8-9, 12, 19-21, 23-24, 28-31, 34-35 and 37-39 are pending and are under examination.
Claim Objection
4. Claims 19, 23-24, 28-29 and 38 are objected to because of the following informalities:
For clarity and precision of claim language it is suggested that claim 19 is amended to read, “…..wherein contacting……..and wherein the reactor…..”.
For clarity and precision of claim language it is suggested that claim 23 is amended to read, “…..wherein about……..and wherein the acid…..”. The dependent claims hereto are also included.
For clarity and consistency it is suggested that claim 23 is amended to recite “organic acid”. The dependent claims hereto are also included.
For clarity and consistency it is suggested that claim 24 is amended as follows, “[[about100-135]] about 100-135”.
Appropriate correction is required.
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.
5. Claims 1, 3, 5, 8-9, 12, 19-21, 23-24, 28-31, 34-35 and 37-39 are 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. 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.
The claimed invention as amended is directed to a process of producing a higher soluble dietary fiber composition from a starch comprising adding an inorganic acid to a soluble starch to achieve a pH of 1-3, mixing and heating the starch and inorganic acid at a temperature in the range of about 100-135 to get a starch substrate having polysaccharide glucosidic bonds (see also claims 23 and 30). The specification discloses hydrochloric acid, however, the claimed invention is devoid of a specific acid that is heated after mixing with the starch to form polysaccharide glucosidic bonds. The art recognizes that there are acids such as nitric acid, sulfuric acid, hydrochloric acid, phosphoric acid, hydrobromic acid, hydrofluoric acid, boric acid, carbonic acid, perchloric acid, sulfurous acid and iodic acid, to name a few. The instant claim language reads on strong acids or concentrated weak acids. It is well established in the art that the strong acids are perchloric acid, hydroiodic acid, hydrobromic acid, hydrochloric acid, nitric acid, chloric acid and sulfuric acid. The claimed invention requires a certain composition to get specific results and therefore, need to inform the ordinary skilled worker what is utilized to obtain said results such as the specific acid, enzyme and organism. The ordinary skilled worker should not be guessing or invited to do trial and error to figure out what is used, and the limitations of the specification cannot be read into the claims, which are not limited necessarily to a strong acid. Furthermore, not all strong acids behave the same (they all fully disassociate in aqueous solutions, however can have different disassociation constant (Ka) and the resulting pH can vary). Thus the ordinary skilled worker needs to be informed what specific acid is mixed and heated with the starch to produce polysaccharide glucosidic bonds (the process must be adequately described). There is no demonstrated of the large variable genus of strong acids or weak acids highly concentrated. Note also that independent claims 23 and 30 have the same issue of forming products from the mixture of starch and acid with high heat and a lack of adequate description of what starch, what acid, what environment to produce the desired results.
The claimed invention encompasses a large variable genus of products and the claim limitations are not commensurate in scope with the disclosure in the specification. The scope of the claims far exceed the scope of the specification. The claims are read in light of the specification, however, the limitations of the specification cannot be read into the claims, and the claims as presented are not adequately described.
The specification fails to provide any additional representative species of the claimed genus to show that applicant was in possession of the claimed genus. A representative number of species means that the species which are adequately described are representative of the entire genus. The written description requirement for a claimed genus maybe satisfied through sufficient description of a representative number of species by actual reduction to practice, disclosure of drawings, or by disclosure of relevant identifying characteristics, for example, structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus.
Accordingly, in the absence of sufficient recitation of distinguishing identifying characteristics, the specification does not provide adequate written description of the claimed genus. Therefore, for all these reasons the specification lacks adequate written description, and one of skill in the art cannot reasonably conclude that the applicant had possession of the claimed invention at the time the instant application was filed.
Response to Arguments
6. Applicant’s comments have been considered in full. Withdrawn objections/rejections will not be discussed herein as applicant’s comments are moot. Note that based on claim amendments the rejections of record have been altered to reflect those amendments. Regarding the 112, first paragraph rejection, applicant opine that the claims were amended to recite inorganic acid, but note that not all claims recite that (see claim 23 and 38), however this is not persuasive as set forth above and herein. The claimed invention is directed to large genus of products that are not adequately described (acids, enzymes and organism). The claimed invention reads on a strong acid and there are several or a concentrated weak acid and there are several. Thus the rejection remains under 112 first paragraph because the arguments were not persuasive and note the instituted objections for the reasons set forth above.
Conclusion
7. No claims are presently allowable.
8. Applicant’s amendment necessitated the new/modified 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 HOPE A ROBINSON whose telephone number is (571) 272-0957. The examiner can normally be reached 9-5 on Monday to Friday.
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, Robert Mondesi can be reached on (408) 918-7584. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HOPE A ROBINSON/Primary Examiner, Art Unit 1652
Prosecution Insights