DETAILED CORRESPONDENCE
Application 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. Applicant’s supplemental amendment to the claims filed on 02/12/2026 in response to the Non-Final Rejection mailed on 08/14/2025 is acknowledged. This listing of claims replaces all prior listings of claims in the application.
3. New claims 16-20 are added.
4. Claims 1-20 are pending.
5. Claims 12 and 15 stand withdrawn pursuant to 37 CFR 1.142(b).
6. Applicant’s remarks and declaration filed on 02/12/2026 in response to the Non-Final Rejection mailed on 08/14/2025 have been fully considered and are deemed persuasive to overcome at least one of the rejections and/or objections as previously applied.
The text of those sections of Title 35 U.S. Code not included in the instant action can be found in the prior Office Action.
Claim Rejections - 35 USC § 112(b)
7. The rejection of claims 5-7, 9 and 11 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for the phrases “preferably” and “e.g.” is withdrawn in view of applicants’ amendment to the claims to remove said terms.
Claim Rejections - 35 USC § 101
8. The rejection of claims 1-11 and 13-14 under 35 U.S.C. 101 because the claimed invention is directed to nature based product without significantly more is withdrawn in view of applicants’ amendment to the claims to recite “wherein as compared to the vegetable matter, bitter components produced in the vegetable matter are inactivated or removed or the production of the bitter components is inhibited in the vegetable product”, which is significant to change the product into something that is markedly different from its natural counterpart.
Claim Rejections - 35 USC § 102/103
9. The rejection of claims 1-11 and 13-14 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kaper et al. (WO 2014/172486 A1; cited on IDS filed on 05/24/2023) is maintained for the reasons of record and the reasons set forth below. The rejection has been modified in order to address applicants’ amendment to the claims and to incorporate new claims 16-20, which is necessitated by applicants’ amendment to the claims to add new claims 16-20.
Claims 1-11, 13-14, and 16-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kaper et al. (WO 2014/172486 A1; cited on IDS filed on 05/24/2023).
10. With respect to claims 1, 4-8, and 16-19, Kaper et al. (WO 2014/172486 A1; cited on IDS filed on 05/24/2023) teach a vegetable product from root, tubers and leaves having inulin, pectin, hemicellulose and cellulose, wherein as compared to the vegetable matter, bitter components are inhibited, inactivated or removed [see paragraphs 0018-0023, 0035 0051]. Regarding the limitations, the product is obtained by a process comprising the steps of a) wounding the vegetable matter, b) treating the vegetable matter with an aqueous solution comprise an antioxidant and/or textual support agent and heating the vegetable matter to a temperature of 40 to 90oC and c) mechanically reducing the size of the vegetable matter and drying the vegetable matter to obtain the product, these are product by process limitations. MPEP 2113.I states “[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).” Nevertheless, Kaper et al. teach the product is obtained by wounding the vegetable matter, b) treating the vegetable matter with an aqueous solution comprise an antioxidant and/or textual support agent and heating the vegetable matter to a temperature of 40 to 90oC and c) mechanically reducing the size of the vegetable matter and drying the vegetable matter to obtain the product, wherein the processing includes mechanically reducing the size by cutting, peeling, dicing, shredding, slicing, grinding and milling [see paragraphs 0018-0023; and 0043].
To this end, although Kaper et al. is silent regarding the particle sizes specifically recited in the claims, it is the examiner’s position that given that Kaper et al. teach an identical process to those of the claims, that the vegetable product of Kaper et al. would inherently have the claimed sizes of claims 1 and 4-8. Since the Office does not have the facilities for examining and comparing applicants’ product with the product of the prior art, the burden is on the applicant to show a novel or unobvious difference between the claimed product and the product of the prior art (i.e., that the vegetable product of the prior art does not possess the same material structural and functional characteristics of the claimed vegetable product). See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald et al., 205 USPQ 594.
With respect to claims 2-3, Kaper et al. teach the product wherein the plant is chicory or Jerusalem artichoke [see paragraph 0012].
With respect to claim 9, Kaper et al. teach the product wherein the amount of inulin is at least 50% wt [see paragraph 0022].
With respect to claim 10, Kaper et al. teach the product wherein the total amount of fiber including inulin, pectin, and hemicellulose is 30 – 90% which overlaps the claimed range [see paragraph 0022].
With respect to claims 11 and 20, Kaper et al. teach the product wherein the total amount of inulin is 30% to 75%, pectin is 5 to 10%, and hemicellulose and cellulose is 5 to 10% [see paragraph 0051].
With respect to claims 13 and 14, the recitation of “use as a medicament” and “use in one or more of the following”, the recitation of “use” in the preamble of the claims merely recites the purpose of the product and does not limit the body of the claims, while the limitations of inulin, pectin, hemicellulose and cellulose fully and intrinsically“set forth all of the limitations of the claimed invention. See MPEP 2111.02.II. Nevertheless, Kaper et al. teach the high fiber product for normal bowel function, body weight, diabetes risk, and certain types of cancers [see paragraph 0008].
Even if Kaper et al. does not disclose the particle sizes set forth in claim 1 and 4-8, Kaper et al. does teach that the mechanical processing may include sizing using different processes for sizing the particles identical to the processes disclosed in the present application such as by cutting, peeling, dicing, shredding, slicing, grinding and milling [see paragraph 0043]. To this end, MPEP 2144.05.II.A states “[g]enerally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”. In the instant case, one of ordinary skill in the art would desire to optimize the sizing of the particles using the methods taught by Kaper et al. in order to produce a desired particle size for the particular application of the vegetable product.
Response to Remarks Regarding Prior Art Rejections
11. Beginning on p. 10 of applicants’ remarks applicants in summary contend that Kaper does not disclose wherein at least 50 wt% of the product particles have a particle size in the range as claimed. Applicants contend that the step of mechanically reducing the size by dicing/grinding and sieving or screening achieves the desired particle sizes. Additionally, applicants contend that the vegetable product obtained advantageously provides higher levels of butyrate and such is an unexpected result.
These arguments are found to be not persuasive in view of the modified rejection above. As stated above, Kaper et al. teach an identical process with identical methods of producing and reducing the size of said product as required structurally by the claim. MPEP 2145.II states “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) (Claims were directed to grooved carbon disc brakes wherein the grooves were provided to vent steam or vapor during a braking action. A prior art reference taught noncarbon disc brakes which were grooved for the purpose of cooling the faces of the braking members and eliminating dust. The court held the prior art references when combined would overcome the problems of dust and overheating solved by the prior art and would inherently overcome the steam or vapor cause of the problem relied upon for patentability by applicants. Granting a patent on the discovery of an unknown but inherent function (here venting steam or vapor) "would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art." 596 F.2d at 1022, 201 USPQ at 661.); In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Appellant argued that the presence of DEHP as the plasticizer in a blood collection bag unexpectedly suppressed hemolysis and therefore rebutted any prima facie showing of obviousness. However, the closest prior art utilizing a DEHP plasticized blood collection bag inherently achieved same result, although this fact was unknown in the prior art.).”
Even assuming arguendo, that the particle size results in higher butyrate in the product is an unexpected result, this argument is found to be not persuasive because the argument of unexpected results must be commensurate in scope with the claimed invention. MPEP 716.02(d) states “whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)”. In the instant case, the alleged unexpected result occurred with crude dried chicory root; however, the claims are unlimited with respect to the starting vegetable product and includes any vegetable product. Vegetable product is a wide genus of products, and there is no evidence of record that the alleged unexpected result would occur over the entire range of products as encompassed by the claims.
Conclusion
12. Status of the claims:
Claims 1-20 are pending.
Claims 12 and 15 stand withdrawn pursuant to 37 CFR 1.142(b).
Claims 1-11, 13-14, and 16-20 are rejected.
No claims are in condition for an allowance.
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 PAUL J HOLLAND whose telephone number is (571)270-3537. The examiner can normally be reached Monday to Friday from 8AM to 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Manjunath Rao can be reached at 571-272-0939. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL J HOLLAND/Primary Examiner, Art Unit 1656