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 .
Status of the Application
Receipt is acknowledged of the amendment and response filed 10/29/2025. Claims 6-10 are pending in the application. Claims 6 and 9 were amended.
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.
Claim(s) 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over
Anonymous : “Amidon de pois N-735” cited in an IDS.
Claims 6-8 are directed to a legume starch exemplified as native pea starch
in working example 1 in the disclosure. According to Table 3 in the disclosure, there was inter-batch variability in very slowly digestible starch content. However, some tested batches presented with applicant’s targeted levels of very slowly digestible starch as determined by a method as claimed.
Although applicant argued earlier that “[M]oreover, as shown in Table 3 of Example 2 in which extended digestion kinetics were performed on 14 additional batches of native pea starch, only 6 batches have a SDS content between 30 and 34% by weight and a vSDS content between 34 and 40% by weight,” it cannot be concluded that other untested native pea samples would not contain the claimed amount of vSDS or lack homogeneity. A native pea starch batch with the claimed properties including homogeneity is therefore obvious.
Claim 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over
Englyst et al. Food Chemistry 245:1183-1189 (2017)), in view of "A method for
determining starch", China Health Care Association, pages 1-4, (2005) and further
in view of Ratnayake et al. (Starch 54 (2002): 217-234) all cited in an IDS .
Englyst provides a method to determine rapidly digestible starch and slowly
digestible starch, and . The starch that has been hydrolyzed at 20 min is called rapidly
digestible starch, the starch that is hydrolyzed from 20 min to 120 min is called slowly
digestible starch, and the starch that is not hydrolyzed after 120 min is called resistant
starch. However, according to the document copy in the record (China Health Care
Association) some experts consider intestinal digestion of starch may exceed 6 h in an
in-vivo experiment, and the hydrolysis time of 120 min is too short, and suggest that the
hydrolysis time should be extended to 16 hours. Ratnayake discloses that native pea
starch is more slowly digested than starch from other legume sources ( page 229
10.7.3).
It would have been obvious to one of ordinary skill in the art to have
experimentally optimized a longer time of hydrolysis to further determine SDS in pea
starch and classify this fraction as very slowly digestible starch, with a reasonable
expectation of success. Further, one would hydrolyze the starch to an optimized level
for a targeted digestibility. The method disclosed mentions a plateau at 420 minutes, in
vitro, suggesting completion of hydrolysis to a targeted level of homogeneity of a starch
sample. It would have been obvious to one of ordinary skill in the art to select the
plateauing time as the end point, for consistent commercial production, with a
reasonable expectation of success.
Response to Arguments
Applicant’s arguments have been considered, but are not fully persuasive.
Applicant argued that the prior art native starch is non-homogeneous. By applicant’s own admission, some samples did show the claimed vSDS values. It cannot therefore be concluded that untested batches of native pea starch would not have the claimed amounts of vSDS or homogeneity. A starch as claimed is therefore obvious from the test results as only limited samples can be tested.
Regarding the method claims, knowing from prior art that the conventionally suggested reaction time is inadequate, it would have been obvious to one of ordinary skill in the art to have experimentally optimized a longer time of hydrolysis to further determine SDS in pea starch. One hydrolyze the starch to an optimized level for a targeted digestibility and homogeneity. The method disclosed mentions a plateau at 420 minutes, in vitro, suggesting completion of hydrolysis to a targeted level of homogeneity of a starch sample. It would have been obvious to one of ordinary skill in the art to select the plateauing time as the end point, for consistent commercial production, with a reasonable expectation of success.
It has been previously held that "[T]he use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968))” “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).;“ “[D]isclosed 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).”
Furthermore, the Supreme Court has made clear that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). That is because “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. It is also well established that a reference is good for all it fairly teaches a person having ordinary skill in the art, even when the teaching is a cursory mention. E.g., In re Mills, 470 F.2d 649, 651 (CCPA 1972).
For these reasons, applicant’s arguments are not fully persuasive.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Subbalakshmi Prakash whose telephone number is (571)270-3685. The examiner can normally be reached Monday-Friday.
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/SUBBALAKSHMI PRAKASH/Primary Examiner, Art Unit 1793