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 .
The amendment filed 10/9/2025 has been entered. Claims 1-5 and 7-17, and 19-23 are pending. Claims 1-5, 7-15, and 20-23 are withdrawn. Prior objections and rejections not included below are withdrawn in view of Applicant’s arguments and amendments.
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 16, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Inglett (US 5082673) in view of Leemhuis (Isomalto/Malto-Polysaccharide, A Novel Soluble Dietary Fiber Made Via Enzymatic Conversion of Starch, DOI: 10.1021/jf503970a, November 2014).
Regarding Claims 16 and 19, Inglett teaches the incorporation of a soluble dietary fiber (Abstract) into dairy products (Column 4, Line 5) such as yoghurt (Column 8, Example 13) at 5% (Column 9, Table V), which lies within the claimed range of Claim 16. Regarding the limitation that the yogurt be “spoonable”, Inglett teaches that the viscosity of the yoghurt is 22,400 centipoise (Column 8, Line 28), which is 22,400 mPa∙s, which lies within the claimed range.
Inglett teaches a soluble fiber added to yoghurt but does not discuss the use of an isomalto/malto polysaccharide (IMMP) having an alpha (1,6) linkage content of at least 70% as the soluble fiber.
Leemhuis teaches a soluble dietary fiber (Page 12035, “Starches, Maltodextrins, and Other Carbohydrates”). The fiber is linear and contains up to 92% of alpha (1,6) linkages (Page 12042, Conclusion – 12043, Paragraph 1), which overlaps the claimed range. Leemhuis teaches that fibers are commonly incorporated into foods and improve the well-being of consumers (Page 12034, Column 1, Paragraph 2). Leemhuis additionally teaches that the soluble dietary fiber is appropriate for use as a dietary fiber and may have prebiotic effects (Page 12043, Paragraph 3).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify Inglett to incorporate the soluble dietary fiber of Leemhuis. One would have been motivated to make such a modification to utilize a soluble dietary fiber that may have a prebiotic effect.
Regarding Claim 17, Leemhuis teaches that the fiber is linear (Page 12042, Conclusion – 12043, Paragraph 1). Leemhuis additionally teaches that the fiber has linear moieties comprising at least four consecutive alpha (1,6) residues linked via an alpha (1,6) residue to at least two consecutively linked alpha (1,4) residues, as claimed (Page 12040, Figure 4).
Response to Arguments
Applicant’s arguments filed 10/9/2025 have been fully considered but they are not persuasive.
Regarding rejections under 35 U.S.C. 103, Applicant argues (Page 2 of Remarks) that Leemhuis contains no teaching or suggestion of the effect of IMMPS on viscosity in spoonable acidified dairy products.
This argument is not convincing. Where Leemhuis teaches IMMPs with the linkage pattern as claimed, the IMMPS of Leemhuis are therefore interpreted to have the viscosity effect as detailed in the instant Specification. Note that mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. See MPEP 2145 II.
Applicant additionally argues (Page 2-3 of Remarks) that the disclosure of Inglett is ambiguous in regards to viscosity, and does not teach the preparation of a spoonable yogurt.
This argument is not convincing. First, note that Inglett teaches that the yogurt has a viscosity of 22,400 centipoise (Column 8, Line 28), which is 22,400 mPa∙s, which lies within the viscosity range for a “spoonable” yogurt (as in instant Claim 16). Inglett therefore teaches a spoonable yogurt according to the Claim. Second, given that Inglett teaches a yogurt comprising oligosaccharides, and given that Leemhuis provides sufficient motivation to combine the IMMPS, it would be obvious to utilize the IMMPs of Leemhuis in the yogurt of Inglett. The product of modified Inglett is therefore similar to the claimed product, with a similar intended use, composition, and processing, and there is an expectation that the product of the prior art have the property of spoonability, as claimed. Note that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP 2112.01 I.
Applicant additionally argues (Page 3 of Remarks) that Inglett teaches that different dietary fibers have different health effects, and one of ordinary skill would therefore have no incentive or reason to move away from the oat-derived polysaccharides of Inglett and utilize the IMMPs of Leemhuis. Applicant cites art allegedly teaching that IMMPs do not lower total cholesterol or triglycerides in mice.
This argument is not convincing. Inglett teaches that different dietary fibers have different health effects. Leemhuis teaches that IMMPs are a dietary fiber which provide specific health benefits (namely, a probiotic effect). Therefore, one having ordinary skill would have sufficient incentive to substitute the IMMPs of Leemhuis for some or all of the dietary fiber of Inglett. Regarding the argument that IMMPs have not been shown to lower total cholesterol or triglycerides in mice, note that while Inglett teaches the use of soluble dietary fiber to lower serum cholesterol, the soluble dietary fiber of Leemhuis has a different use and effect. The cholesterol-lowering effect (or lack thereof) of an IMMP is therefore irrelevant to the motivation to combine Inglett and Leemhuis. Additionally, note that one of ordinary skill would understand that the effect of dietary interventions in mice do not necessarily result in similar effects in humans.
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 DEBORAH LIU whose telephone number is (571)270-5685. The examiner can normally be reached 12-8 Eastern Time.
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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.
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/D.L./ Examiner, Art Unit 1791
/Nikki H. Dees/ Supervisory Patent Examiner, Art Unit 1791