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 is in regard to the application filed on June 3, 2021 and in response to Applicant’s Amendments and Arguments/Remarks filed on July 25, 2025.
Status of Application
The amendment filed July 25, 2025 has been entered. Claims 1, 3-7, 9, 10, 12-14, and 16 are currently pending in the application. Claims 2, 8, 11, and 15 are canceled; claims 12-14 are withdrawn; claim 1 has been amended. Claims 1, 3-7, 9, 10, and 16 are hereby examined on the merits.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
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 1, 3-7, 9, 10, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Skorge et al. (US PG Pub 2015/0025158; listed on PTO-892 dated Jan. 17, 2024) as evidenced by Lee et al. (“Particle Agglomeration and Properties of Pregelatinized Potato Starch Powder.” Gels, 2023, 9, 93), herein after referred to as Skorge and Lee respectively.
Regarding claims 1 and 16, Skorge discloses a composition comprising 10-40% by weight of a mixture of pregelatinized waxy potato starch (i.e., particulate, expanded, gelatinized potato starch) and pregelatinized waxy cassava starch (i.e., an edible solid particulate component that is a physically modified starch) ([0034]; [0040]; [0051]; claim 1),
wherein the composition is in an agglomerated, particulate, dry form (Fig. 1; [0032]);
and wherein the composition also comprises gum that can be xanthan gum and a dispersant that can be glycerol (claim 1; [0033]; [0036]). Skorge does not require the presence of monosaccharides, disaccharides, and additives including maltodextrin, lactose, and flowability improvers, as just set forth, and therefore, the composition of Skorge meets the claimed limitation of “the composition is free from other monosaccharides and disaccharides…and flowability improvers.”
Since Skorge teaches that the combination of pregelatinized waxy potato starch (i.e., particulate, expanded, gelatinized potato starch) and pregelatinized waxy cassava starch (i.e., an edible solid particulate component) comprise 10-40% by weight of the composition, when the pregelatinized waxy cassava starch is 25% by weight of the composition, the pregelatinized waxy potato starch is 15% by weight of the composition. Thus, the teachings of Skorge read on the claimed ranges of 5-75% by weight of a particulate, expanded, gelatinized potato starch and 25-95% by weight of an edible solid particulate component and rendering the claim limitation obvious.
Skorge is silent as to that the particulate, expanded, gelatinized potato starch has a bulk density ranging from 50 to 160 gram per liter.
However, as evidenced by Lee, agglomerated pregelatinized potato starch powder (PPSP) without maltodextrin has a bulk density of ~0.22 ± 0.01 g/cm3 (~220 ± 10 g/L) (Table 2: control and ρbulk). This value lies slightly outside of the claimed range; however, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). The difference between the claimed ranges and the values evidenced by Lee are virtually negligible absent any showing of unexpected results or criticality. See MPEP 2144.05.I..,
Regarding claim 3, the claim is a product-by-process claim, as it recites that the potato starch “is obtained from an extrusion process.” Per MPEP 2113.I., the patentability of a product does not depend on its method of production. If the product in the claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Thus, the potato starch obtained from an extrusion process does not hold any patentable weight and Skorge teaches the composition according to claim 1 as set forth in the rejection above.
Regarding claim 4, Skorge teaches that 97.1% of a batch of the agglomerated composition passed through a sieve with a mesh size of 149 microns (0.149 millimeters) (Table 2). Since a mesh size of 149 microns is smaller than the mesh size of 1-5 millimeter recited in the claim limitation, more than 90% of the agglomerated composition would also pass through a sieve with a larger mesh size.
Regarding claim 5, Skorge teaches that the composition has a moisture content of 5-7% by weight [0051], which lies within the claim limitation of 2-10% by weight.
Regarding claim 6, Skorge teaches that 97.1% of a batch of the agglomerated composition passed through a sieve with a mesh size of 149 microns (0.149 millimeters) (Table 2). Since a mesh size of 149 microns is smaller than the mesh size of 500 microns recited in the claim limitation, more than 90% of the agglomerated composition would also pass through a sieve with a larger mesh size.
Regarding claim 7, Skorge teaches a composition comprising about 10% to about 40% by weight of a combination of a particulate, expanded, pregelatinized potato starch and a pregelatinized waxy cassava starch (i.e., an edible solid particulate component) (claim 1; [0034]; [0040]; [0051]).
The potato starch range as taught lies within the claimed range of 10-50% by weight; the edible solid particulate component as taught would thus be slightly outside of the claimed range of 50-90% by weight. However, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). The difference between the claimed ranges and the ranges taught by Skorge are virtually negligible absent any showing of unexpected results or criticality. See MPEP 2144.05.I. Therefore, the claim is rendered obvious.
Regarding claim 9, by meeting the starch of claim 1 with a physically modified starch, claim 9 is also considered to be met.
Regarding claim 10, Skorge teaches a pregelatinized waxy cassava starch (i.e., physically modified starch) [0008]. Skorge also teaches that corn starch is a suitable alternative pregelatinized waxy starch for use in the invention [0040]. Thus, it would have been obvious to one of ordinary skill in the art to select and use pregelatinized waxy corn starch in place of the pregelatinized waxy cassava starch in the composition of Skorge, as both of pregelatinized waxy cassava and corn starch are taught to be interchangeable.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Skorge et al. (US PG Pub 2015/0025158; listed on PTO-892 dated Jan. 17, 2024) as evidenced by Lee et al. (“Particle Agglomeration and Properties of Pregelatinized Potato Starch Powder.” Gels, 2023, 9, 93), as applied to claim 1 above, and further in view of Zhao et al. (WO 2004/108767; listed in IDS dated June 21, 2021), herein after referred to as Zhao.
Skorge as evidenced by Lee teaches the composition as set forth above with regard to claim 1.
Skorge does not teach that a starch material is fed to an extruder to obtain the expanded, gelatinized potato starch.
Zhao, in the same field of invention, teaches that the starch used in the composition is an extruded starch (claim 5). Zhao offers the motivation that extruded starch is suitable for inclusion into an agglomerated composition comprising pregelatinized starch used as a food thickener. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the composition of Skorge with the extruded starch of Zhao, thereby arriving at the claimed invention, with the reasonable expectation that extruded starch is an acceptable inclusion into the composition.
Response to Arguments
Applicant's arguments filed July 25, 2025 have been fully considered but they are not persuasive.
The prior art rejection has been amended in light of applicant’s amendments to the claims, however, the essential prior art rejection has been maintained by the examiner for the following reasons.
Applicant argues that Skorge merely teaches that the composition “does not require” maltodextrin which is fundamentally different from a composition that is “free from” maltodextrin. Applicant supports this by stating that the main embodiments of Skorge contain maltodextrin (remarks, p. 5-6).
This argument is not persuasive. “Does not require” and “free from” are not fundamentally different, as a composition that does not contain maltodextrin based on the fact that the composition “does not require” maltodextrin is in fact a composition that is “free from” maltodextrin. Additionally, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). See MPEP 2123.II.
In the absence of any further arguments with regard to the rejections of the additional dependent claims, the rejections of these dependent claims are maintained.
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 MAURA E SWEENEY whose telephone number is (571)272-0244. The examiner can normally be reached M-F 8:00-5:00 EST.
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, Nikki Dees can be reached at (571)-270-3435. 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.
/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791