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 Application
Claims 180-183 and 198-199 are pending and under consideration.
This Official Action is Final.
Claim Rejections - 35 USC § 103
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 180-183, 198-199 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 2016/0366909 (GEREMIA).
GEREMIA discloses administering a base composition [0013] and a synthetic oligosaccharide preparation comprising one or more oligosaccharides. This includes compositions with more than 3 different oligosaccharides See [0097]-[0098], [0101], [0103]. A feeding sugar such as glucose can be used [0396].
[0058] teaches that the oligosaccharide are added to animal feed and can be produced so to provide different properties. The oligosaccharide compositions may be characterized based on the type of oligosaccharides present, degree of polymerization, glass transition temperature, hygroscopicity, and glycosidic bond type distribution.
The oligosaccharides can be determined as the number average of species containing one, two, three, four, five, six, seven, eight, nine, ten to fifteen, and greater than fifteen, anhydrosugar monomer units [0097]. In [0097], it is taught that spectrophotometric methods are used to determine oligosaccharide content. It is taught that lower levels of degradation products results in higher selectively. The amount of sugar degradation products after combining the one or more sugars with the catalyst is less than about 10% (or less than about 9%, 8%, 7%, 6%, 5%, 4%, 3%, 2%, 1%, 0.75%, 0.5%, 0.25%, or 0.1%), such as less than about 10% of any one or combination of 1,6-anhydroglucose (levoglucosan, an anhydrous sugar) [0101].
Claim 180 recites that the synthetic oligosaccharide preparation is catalytically synthesized using a catalyst selected from the group consisting of 2-pyridinesulfonic acid, (+)- camphor-10-sulfonic acid and resin with sulfonic acid functionality. However, this recitation is interpreted in a manner similar to that of a product by process recitation in that no active steps of synthesizing are recited.
Thus, the number of different fractions and amount of anhydro-subunits can be varied based on the desired properties. In this regard, these are result effective variables and it would have been obvious to provide fractions that independently comprise 0.5 to 15% anhydro-subunits based on the desired properties of the final composition.
The administration of the composition would naturally result in the increase and decrease of the metabolites as claimed, as the same type of oligosaccharides are administered. Given the prior art teaches the administration of compounds comprising base nutritional compositions and a synthetic oligosaccharide composition, any effects on the level of a plurality of metabolites are considered to be present in the animals administered the prior art composition in the absence of convincing arguments or evidence to the contrary.
Response to Arguments
Applicant's arguments filed 5/28/2026 have been fully considered but they are not persuasive.
As the outset, it is noted that Applicant’s amendments overcome the objection to the specification and 35 USC 112 rejection.
Applicant argues that the prior art does not teach the claimed catalyst with the starting sugars and resulting structural DP features
However, GEREMIA does teach oligosaccharide compositions suitable for use in animal feed compositions, and methods for producing oligosaccharide compositions suitable for use in animal feed compositions. The method includes feeding sugars such as glucose [0396].
Moreover, the only active step recited is the administering of the composition with the synthetic oligosaccharide. In this regard, the manner in which the oligosaccharide is produced is similar to a product by process limitation. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process 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) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.).
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 PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached M-F, 9:30-6:00p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached on 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILIP A DUBOIS/Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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