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 .
Priority
This application is a 371 of PCT/JP2019/018952 filed 05/13/2019. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Status of the Claims
Claims 8-13 and 15 are pending. Claims 9 and 10 are amended. Claim 8 is withdrawn. Claim 15 is new.
Claims 9-13 and 15 (claim set filed 03/19/2029)are examined on the merits herein.
Withdrawal of Rejections
The response and amendment filed on 03/19/2026 are acknowledged. All of the amendment and arguments have been thoroughly reviewed and considered.
For the purposes of clarity of the record, the reasons for the Examiner's withdrawal and/or maintaining if applicable, of the substantive or essential claim rejections are detailed directly below and/or in the Examiner's response to arguments section.
Claim Rejections - 35 USC § 102
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 9-13 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Nakanishi (JP 2010226988 A on record in IDS) as evidenced by Gidley (Gidley and Bulpin Carbohydrate Research, 1987, 161, 291‐300 on record in IDS).
Regarding claim 9, 10, 12 and 13, Nakanishi teaches a starch decomposition product and method of making a starch decomposition product in which the content of components with DP of 8-19 is 32% or more and components with DP of 20 or more is 30% or less (Abstract). Nakanishi discloses the preferable content of components with DP of 8-19 which is 40% or more and more preferably 50% or more (paragraph 0028) and of components with DP of 20 or more which is 30% or less and preferably 20% or less that reads on claims 9 and 10 limitations. Nakanishi describes decomposition of starch with debranching enzymes such as isoamylase, pullulanase and amino-1.6-glucosidase and branching enzymes (paragraph 0019). Nakanishi mentions that the starch saccharification includes acid treatment and the debranching and a branching enzymes are allowed to work on a starch or starch intermediate (paragraphs 0037, 0038). Nakanishi provides Example 2 in which the corn starch slurry is liquefied first by treatment at pH 2 adjusted with hydrochloric acid, then pH is adjusted to 4.2 and starch is treated with debranching enzyme (isoamylase) for 24 hours at 45°C and then pH is adjusted to 5.8 and branching enzyme is allowed to act on the starch for 20 hours at 35°C (paragraph 0048).
Nakanishi discloses that the invented starch decomposition product can be used as food or drink or as food additive (paragraph 0018) and mentions that: “in the food industry, it can be used as an additive or blended composition for processed meat and fish products, liquid and powdered sauces, seasonings, beverages, other powdered foods, dried foods, flour processed products, confectioneries, liquid foods, nutritional supplements, health foods (functional foods), various processed foods, and their frozen and refrigerated foods” (paragraph 0124).
Nakanishi describes using the starch decomposition product of Example 2 in preparation of cocoa beverage in which 50% of the sugar is replaced with the starch hydrolysate (paragraph 0088) and in the powdered soy source in which the starch hydrolysate is mixed with the soy sauce and water (paragraph 0099). Therefore, Nakanishi teaches mixing or blending the starch decomposition product with the raw material of the target food or beverage product to modify or produce the target product. Nakanishi mentions that the starch decomposition product is used for powderization of soy sauce (paragraph 0098) indicating increase in solidifying property of food product and for preparation of cream products (paragraph 0033) indicating increase in creaming and thickening properties of food products.
Even though Nakanishi does not explicitly teach crystallization of a starch decomposition product, crystallization and partial crystallization of starch is its inherent property as evidenced by Gidley. Gidley teaches malto‐oligosaccharides, obtained by debranching of glycogen with isoamylase, and with average DP ~11 to crystallize producing 40‐70% of crystalline materials (Abstract). Gidley discloses that the debranched glycogen contained oligosaccharides with DP of 5‐18 and DP>20 (p. 295, 2nd paragraph) and the produced crystals contained oligosaccharides with DP of 5‐20 (p. 298, 2nd paragraph).
Thus, Nakanishi teaching as evidenced by Gidley anticipates claims 9, 10, 12 and 13.
Regarding claim 11, Nakanishi applies the iodine coloration reaction for measurement of enzyme activities of debranching and branching enzymes (paragraphs 0064 and 0065). Although Nakanishi does not describe the iodine coloration value for the starch decomposition product, Nakanishi teaches the starch decomposition product of the same structure as claimed starch decomposition product, i.e. containing 32% or more or 40% or more of components with DP of 8-19 and 30% or less of components with DP of 20 or more (paragraphs 0028-0029). MPEP 2112.01 states: “Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” Therefore, the starch decomposition product of Nakanishi teaching will inherently have the same property of the iodine coloration value of 0.15 or more. Thus, Nakanishi teaching anticipates claim 11 as evidenced by Gidley.
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.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Nakanishi (JP 2010226988 A on record in IDS) as evidenced by Gidley (Gidley and Bulpin Carbohydrate Research, 1987, 161, 291‐300 on record in IDS) in view of Kimura (JP 2016103992 A).
The teaching of Nakanishi has been set forth above.
Nakanishi does not teach solidification of the mixture in a container or mold or whipping of the mixture.
Kimura teaches a quality improver capable of improving quality of processed food including excellent shape retention that is reached by substituting or combining enzymatically decomposed starch for thickening oligosaccharide and/or gelatin (Abstract). Kimura describes improvement of shape retention: “the quality improver of the present invention can impart excellent shape retention, thereby preventing gel foods from losing their shape and preventing paste foods from dripping, thereby enabling the food to retain its shape (paragraph 0015). Kimura uses various starches as raw material for preparation of quality improver (paragraph 0020). The enzymatic treatment includes treatment with hydrolyzing enzymes including isoamylase, pullulanase and α- glucosidase (paragraph 0030) and decomposition rate reaches 3-70% (paragraph 0046). Kimura discloses that the hydrolyzed starch is used as a food additive to impart shape retention (paragraph 0055) and is added with other raw materials of food, e.g. sugar, milk, flour (paragraph 0068). Kimura mentions that addition of the quality improver to gel food, e.g. pudding, mouse, yogurt, noodles, provides excellent shape retention, firm and elastic texture and tends to harden the gel indicating solidifying property (paragraph 0058). In Example 1 Kimura describes preparation of milk pudding in which the ingredients are mixed together, heated, poured in a container and cooled (paragraph 0084). The milk pudding prepared with the enzyme-treated starch had good elasticity and smooth texture (paragraph 0086). Thus, Kimura teaches the recited step, i.e. solidification of the mixture of the decomposed starch with raw food materials in the container.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to follow teaching of Kimura and use starch decomposition product of Nakanishi teaching for solidification of food product, such as gel or pudding, in a container as described by Kimura. One would have been motivated to do that because Kimura describes treatment of starch with the same hydrolyzing enzymes as in Nakanishi teaching (isoamylase, pullulanase and α- glucosidase) and Kimura teaches that the starch decomposition product can improve food properties for gel food, i.e. shape retention, solidification, elasticity and smooth texture. A skilled artisan would have reasonably expected success in this combination since Kimura and Nakanishi teach starch decomposition products and application of these products for production of target food products. Thus, combination of teachings of Nakanishi and Kimura as evidenced by Gidley renders claim 15 obvious.
Response to Arguments
Applicant's arguments filed 03/19/2026 have been fully considered but they are not persuasive.
Applicant argues (addressing p. 5-7 of the Remarks) that Nakanishi does not teach the limitations of the amended claims 9 and 10 for the starch decomposition product to have content with DP of 8 to 19 of 40% or more and DP of 20 or more of more than 16% and less than 30%. Applicant supported these limitations by examples from the Specification. Applicant further argues that Nakanishi does not teach "solidification of the mixture in a container or a mold, or whipping of the mixture" recited in new claim 15. These arguments are not persuasive because:
Although Nakanishi does not provide working example with the recited limitations, Nakanishi does teach the starch decomposition product used for preparation of various food products to have more than 40% content with DP 8-19 (paragraph 0028) and 30% or less and 20% or less content with DP of 20 or more (paragraph 0029) in the preferred embodiments. Therefore, Nakanishi anticipates claims 9 and 10. Since Nakanishi does not explicitly teach "solidification of the mixture in a container or a mold, or whipping of the mixture", the 35 U.S.C. 103 rejection was applied to claim 15 as described above.
Conclusion
No claims are allowed.
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 LIOUBOV G KOROTCHKINA whose telephone number is (571)270-0911. The examiner can normally be reached Monday-Friday: 8:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila G Landau can be reached at (571)272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/L.G.K./Examiner, Art Unit 1653
/SHARMILA G LANDAU/Supervisory Patent Examiner, Art Unit 1653
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