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 Claims
This is a 2nd Non-Final Rejection. Receipt of Remarks filed on 02/25/2026 is acknowledged. Applicant’s arguments with regards to the anticipatory rejection over Barnes have been fully considered and are found persuasive. Upon consideration, the Examiner agrees with Applicant that Barnes does not anticipate the claims. However, Barnes still renders the claims obvious as indicated in the rejection infra.
Claims 1-20 are presented for examination on the merits for patentability. Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
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.
Claims 1-10, and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Barnes et al. (US 4,689,235, Of record),hereinafter Barnes.
Barnes discloses the invention of an extrudable encapsulation matrix composition having improved loading capacity for flavors etc., wherein the matrix comprises a maltodextrin and hydrogen octenylbutanedioate amylodextrin or equivalent (Abstract)
Regarding Claim 1, Barnes teaches a particulate composition in the form of a solid extrudate comprising a matrix composition and up to about 40% loading, based on the weight of the particulate composition, of an active ingredient, wherein said matrix composition comprises (a) from about 5 parts to about 95 parts by weight of maltodextrin; and (b) about 95 parts to about 5 parts by weight of hydrogen octenyl butanedioate amylodextrin, also known as octenyl succinic starch or Capsul, wherein the combined weight of (a) and (b) being 100 parts (Claim 1; Col. 3, lines 47-55). The matrix composition reads on the carrier material instantly claimed. Barnes teaches the matrix comprises maltodextrin, and emulsifiers and viscosity agents (Col. 3, lines 25-41); the preferred proportions of maltodextrin to modified starch is about 80-60 parts maltodextrin and about 20-40 parts modified starch (Col. 3, lines 31-41). Barnes teaches an example wherein glycol is used for viscosity control up to 10% by weight, the composition may contain about 20% maltodextrin, about 30% Capsul, and about 40% flavor (Col. 4, lines 41-55). Therefore, by Examiner’s calculation, the modified starch is present in the matrix at about 50% of the matrix material, which is close to the upper limit of 49% in the claimed range. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05.
The particulate composition of Barnes is prepared by extrusion from a hot cook solution (Claim 2; Examples V-VIII). Barnes teaches an embodiment wherein the composition may contain about 30% Capsul, which anticipates the modified starch and the claimed amount; and about 40% flavor, which renders obvious the flavor and the claimed amount in Claim 8 (Col. 4, lines 44-48).
Regarding Claim 2, Barnes does not require nor teach yeast.
Regarding Claim 3, Barnes expressly claims and teaches maltodextrin (Abstract; Claim 1; Examples III-VIII).
Regarding Claims 4-5, 7 and 10, Barnes teaches that useful maltodextrins have a low DE (dextrose equivalent), i.e., in the range of 3 to 40, which encompasses the claimed ranges (Col. 2, lines 5-7). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding Claim 9, Barnes teaches that up to 25% of the components of the matrix composition can be replaced, and that either component can be replaced in part with sucrose or its equivalent polyhydric alcohol such as sorbitol and mannitol (Col. 3, lines 47-66).
Regarding Claim 6 and 10, Barnes teaches preferred proportions of the matrix are about 80-60 parts maltodextrin and about 20-40 parts modified starch (Col. 3, lines 31-41). However, Barnes also teaches that up to 25% of the components of the matrix composition can be replaced, and that either component can be replaced in part with natural gums, corn syrup solids having a DE below about 40, or sucrose. (Col. 3, lines 47-60). Therefore, the concentration of maltodextrin and modified starch and their ratio are amenable to variations depending on the amounts of other components added.
Furthermore, while the exact amount ranges of maltodextrin and modified starch is not disclosed by Barnes, it is generally noted that differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration ranges are 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). Given that applicant did not point out the criticality of amount ranges of maltodextrin and modified starch of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine where in a disclosed set of ranges is the optimum concentration of maltodextrin and modified starch. NOTE: MPEP 2144.05.
Regarding Claims 15 and 19, Barnes teaches the suitability of its composition for consumer food products, and expressly teaches fruit essence or essential oil in flavor compositions (Col. 4, lines 5-8; Examples III, and V; Claims 5-6).
Regarding Claim 16, Barnes has taught that useful maltodextrins have a low DE in the range of 3 to 40. However, as with the concentration ranges claimed, there appears to be no criticality to the DE range claimed. As such, Barnes range above would serve as starting point to figure out optimal DE.
Regarding Claim 17, Barnes teaches an embodiment wherein the composition comprises about 40% flavor, reading on the greater the 15% weight claimed (Col. 4, lines 44-48).
Regarding Claim 18, Barnes teaches that up to 25% of the components of the matrix composition can be replaced, and that either component can be replaced in part with sucrose or its equivalent polyhydric alcohol such as sorbitol and mannitol (Col. 3, lines 47-66).
Claim 11, 13-14 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Barnes, as applied to Claim 1 above, and in view of Martin et al. (US 2012/0280419 A1; Of record), hereinafter Martin.
The teachings of Barnes has been set forth supra.
Regarding Claim 11, Barnes teaches an improved matrix composition adapted for extrusion and further having an improved capacity to contain in a stable manner a normally liquid dispersed phase, such as an organoleptic material, e.g., lemon oil, orange oil, or the like (Col. 1, lines 20-25). The extrudable encapsulating matrix composition of Barnes has an improved loading capacity, and contains up to about 40% comprising (a) from about 5 to about 95 parts by weight of maltodextrin and (b) from about 95 to about 5 parts by weight of hydrogen octenylbutane dioate amylodextrin (Col. 3, lines 13-20). The invention also contemplates a particulate composition comprising the matrix composition and from about 5% to about 40 weight percent of a normally liquid or volatile active ingredient, such as an organoleptic material, and other ingredients including water, emulsifiers, viscosity control agents in effective quantities generally below 10% by weight (Col. 3, lines 21-30).
Regarding step a), Barnes expressly teaches stirring together maltodextrin, Capsul (modified starch), an emulsifying agent, and water to form a uniform liquid blend (Example 1). Herein, the water reads on the plasticizer.
Regarding step b), Barnes expressly teaches heating the mixture and cooking until the temperature reached 110°C, while water is continually removed and orange oil added and mixed (Example 1).
Regarding steps c) - e), Barnes teaches fitting an extrusion cap or spinneret on the apparatus, and opening the valve to allow the contents to move through the spinneret and into a basket carried in a shallow tray of cold isopropyl alcohol (Col. 5, line 65 to Col. 6, line 3). Barnes relate that the extruder has a head provided with a large number of about 1/64 inch diameter orifices through which the combined mix is forced under pressure; the cold solvent removes excess active ingredient from the surface of the extrudate, effect solidification of the extruded melt (Col. 6, lines 3-11). Thus, Barnes teaches the feature of pumping and pushing the molten mass. Barnes teaches the extruded rods are broken into desired lengths. Further regarding step e), Barnes expressly teaches adding the orange oil in step b) (Example 1).
Barnes teaches a mixer, and that the particulate are discharged into a mixer, but does not expressly teach the static mixer (Col. 6, lines 20-23). Barnes teaches forcing or pushing the molten mass, but does not expressly teach that the melt is extruded through a die.
Martin discloses a method such that a material is melt processed and subsequently pelletized, transported, optionally chemically and/or physically modified [0003]. Martin recognizes that formulations containing flavors dispersed or dissolved in a matrix material are extruded through a die and optionally pelletized, or microencapsulated [0009]. The die in FIG. 7 is a single-body style including a nose cone attached to the die body; the die contains multiple die holes that vary in number and orientation pattern and design, e.g. round, oval, square, rectangular etc. [0165]. Additionally, Martin teaches that encapsulated active ingredients, flavors and fragrances, expanding agents, and the like can be pelletized its methods [0309].
Regarding the static mixer, Martin illustrate multiple systems that comprise a feeder, gear pump, and static mixer assembly (Fig. 2c-f, [0068]-[0073]). Martin teaches a more preferred embodiment which includes an extrusional mixing section with an inlet attached to static mixer[0152]. Martin suggests that different styles of mixing are performed where applicable, and relays that static mixing has the least shear and relies more on thermal energy [0154]. Static mixer can be used to heat a mixture and generate a uniform molten mass or can be used effectively to reduce temperature of the molten mass; a static mixer can provide improved dispersive and distributive mixing, where applicable [0158].
Barnes already teaches a mixer and has taught forcing the molten mass and producing extruded rods that are broken into desired lengths. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Martin and use a static mixer and a die in preparing/extruding the compositions containing flavor particles of Barnes. One would have been motivated to do so because Martin has taught that a static mixer can provide improved dispersive and distributive mixing, and generate a uniform molten mass, and that different designs can be obtained for the extrudate depending on the desired form by using a die with multiple holes that vary in number and orientation pattern and design. As such, it can be expected that using this technique would lead to uniform distribution of the particles in the desired design. Applying a known technique to a known method ready for improvement to yield predictable results is the rationale supporting obviousness. See MPEP § 2143 and KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007).
Regarding Claim 13, Barnes teaches an embodiment wherein the composition comprises about 40% flavor, reading on the greater the 13% weight claimed (Col. 4, lines 44-48).
Regarding Claim 14, Barnes expressly teaches an Example VII wherein lemon oil is incorporated in an amount of 14%, which touches the claimed range. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05.
Regarding Claim 20, as mentioned above, Barnes expressly teaches stirring together maltodextrin, Capsul (modified starch), an emulsifying agent, and water to form a uniform liquid blend (Example 1). Water reads on the claimed plasticizer. Barnes teaches other examples wherein water is incorporated in the composition (Examples V-VIII).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Barnes in view of Martin, as applied to Claims 1 and 11 above, and in view of BSC Teknik (What is the difference between an extrusion pump and a gear pump for extrusion?, January 2015, Of record), hereinafter BSC Teknik.
Barnes does not teach a gear pump.
BSC Teknik piston extrusion pump and gear pump (p. 1). The reference teaches that gear pumps optimize the extrusion process by generating a constant pressure and ensuring a constant flow of material, and therefore relieve the extruder of pressure build-up (p. 3).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to substitute the piston pump in Barnes with a gear pump because BSC Teknik has taught that gear pumps optimize the extrusion process. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. See MPEP 2143. The ordinary artisan would have been motivated to simply substitute one known element for another to obtain predictable results. The known work in the extrusion field would have prompted variations in technologies used based on cost and production incentives or other market forces where the variations are predictable to one of ordinary skill in the art.
Response to Arguments:
Applicant traversed the 102 rejection over Barnes, submitting that Barnes does not clearly and unequivocally teach or suggest all the elements of the present claims with sufficient specificity because Barnes discloses a very broad range of maltodextrin and hydrogen octenylbutanedioacetate amylodextrin (e.g., Capsul); that the endpoints of Barnes are outside the claimed ranges, and that none of the examples disclosed in Barnes et al. utilize modified starch within the claimed amounts.
Applicant’s arguments with regards to the anticipatory rejection over Barnes have been fully considered and are found persuasive. Upon consideration, the Examiner agrees with Applicant that Barnes does not anticipate the claims. However, Barnes still renders the claims obvious as indicated in the rejection supra. Briefly, Barnes still renders obvious the 30-49% modified starch based on the total weight of the carrier material because Barnes teaches a matrix, which the Examiner interprets to be the same as the claimed carrier material; wherein the matrix comprises maltodextrin, and emulsifiers such as Capsul and viscosity agents (Col. 3); Barnes teaches an example wherein glycol is used for viscosity control up to 10% by weight, the composition may contain about 20% maltodextrin, about 30% Capsul, and about 40% flavor (Col. 4, lines 41-55). Therefore, the modified starch is present in the matrix at about 50%, which is close to the 49% claimed range.
Regarding the 103 rejection, Applicant traverses the rejection because Barnes et al. teaches a broad range of its components, with the range significantly larger than the claimed range.
While Barnes Claim 1 indicate a broad amount ranges for maltodextrin and the modified starch, Barnes is also replete with examples showing specific amounts for maltodextrin and Capsul modified starch that would guide one skilled in the art to use as starting point, and from which one would modify (Examples I-IX). It appears that Applicant is applying a standard of absolute predictability in order to find obviousness, which is not required. Rather, to find obviousness, only a reasonable expectation of success is required, which is provided supra and in the rationale in each of the previous Office Actions (to which Applicant's attention is directed). Please MPEP 2143.02. Applicant is reminded that a skilled artisan would consider all embodiments disclosed within the four corners of the reference, including non-preferred embodiments.
Applicant alleges that the present application provides improved extruded flavor particles.
The Examiner considered the argument but was not persuaded. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. An unexpected property or result must actually be unexpected and of statistical and practical significance. The burden is on the applicant to establish the results are in fact unexpected, unobvious and of statistical and practical significance. See MPEP 716.02. In the instant case, Applicant has yet to show the difference between the closest prior art composition and method of Barnes compared to the currently claimed invention to show that the instant invention has improved extruded flavor particles compared to Barnes.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Snyder et al. (US 2019/0289891 A1).
No claims are allowed.
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/J.Y.S./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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