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 .
DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/11/2026 has been entered.
Status of Claims
The amendments and arguments filed on 05/11/2026 are acknowledged and have been fully considered. Claims 1-27 are now pending. Claims 2 and 6-27 are withdrawn; no claims are amended.
Claims 1 and 3-5 will be examined on the merits herein.
Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied, and constitute the complete set 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.
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.
Claims 1 and 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Clementz (2019) in view of “Waman” (2019).
In regards to claim 1, Clements teaches a method of extracting dietary fibers from carrots (see Clementz, abstact; 2.4.1-2.4.3). The method of extraction comprises taking a dry mass of carrots and washing with water, separating the aqueous phase from the solid parts (bagasse) by filtration, then washing the bagasse with ethyl alcohol four times, followed by filtration and drying (see Clementz, 2.4.1 Process 1). This method is identical to the method of obtaining the activated carrot fiber of the instant application (see page 9 of the instant specification as filed). While Clementz does not discuss the viscosity of the dietary fibers directly, one with ordinary skill in the art would understand that an identical composition made from an identical method would have the identical properties. MPEP §2112.01(I) states that “[w]here 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 regards to the viscosity and shear rate of claim 1 as well as the properties listed in claim 4, the prior art renders obvious the instant composition. A person of ordinary skill in the art would expect the same composition to have the same properties as instantly claimed.
In regards to claim 3, Clementz teaches that the carrot fibers are used as dietary fiber and specifically teaches the use of the fibers as an ingredient in food products for modifying the viscosity and texture of some formulated foods (see Clementz, 3.3. Dietary Fiber).
In regards to claim 5, it is taught that the fibers are used as dietary supplements or additives for the preparation of functional foods (see Clementz, page 375, column 1, paragraph 2).
Clementz teaches that the water holding capacity (AKA, the water binding capacity) of the carrot fiber is 18 g/g (see Clementz, page 378, column 2, paragraph 3) and as such does not teach that the water binding capacity is between 25 and 50 g/g.
Waman teaches that the water binding capacity is affected by the particle size, as the smaller the particle size, the more surface area and therefore smaller particles are able to bind more water compared to larger particles (see Waman, page 20, 2.8.3.3).
In regards to claims 1 and 3-5, it is noted as the water binding capacity is a variable that can be modified, among others, by adjusting particle size, water binding capacity increasing as the particle size is decreased, the water binding capacity would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed water binding capacity cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, water binding capacity in Clementz to obtain the desired balance between the particle size as taught by Waman (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). “[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Further, it is noted that Clementz prefers a smaller size for the carrots in order to make the extraction easier (see Clementz, page 375, 2.4.1.)
Response to Arguments
Applicant's arguments filed 05/11/2026 have been fully considered but they are not persuasive.
In regard to applicant’s argument that the teaches of Waman are drawn towards protein-containing, spray-dried powder with no plant fibers present and only reflects protein hydration behavior, not plant fiber swelling or water retention, it is pointed out that the teachings of Waman broadly states that “Water or oil holding capacity is defined as potential of powder to retain water or oil when exposed to external centrifugal force or compression” (see Waman, page 20, 2.8.3.3). This definition aligns with how the water binding capacity is measured in the instant specification (see instant specification as filed, pages 59-60, 1.3 test method for determining water binding capacity). In this section of the instant specification, it is detailed that the sample is left in water to swell it over 24 hours and then centrifuged and then the mass is measured. This measurement is then used to calculate the water binding capacity. There is no difference in the definition of the water holding capacity of Waman when compared to the teachings of the instant application, regardless of what powder contains (i.e., protein or plant fiber). Waman continues in the same paragraph, teaching that the “water binding capacity is also affected by the particle size of powder, the reason is that smaller particles have more surface area therefore small particles are able to bind more water or oil as compared to large particles” (see Waman, page 20, 2.8.3.3). Again there is no discussion of the type of powder or its composition, rather just a description of what the water holding capacity is and that particle size affects it. Waman has additional teachings, but it highlights the definition of what the water binding capacity is and how particle size can affect it and shows that one with ordinary skill in the art would be aware of both of these ideas. As such, using the combined teachings of the references, one with ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, water binding capacity in Clementz to obtain the desired balance between the particle size as taught by Waman (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). “[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Further, it is noted that Clementz prefers a smaller size for the carrots in order to make the extraction easier (see Clementz, page 375, 2.4.1.)
In regards to applicant’s arguments that the instant specification does not teach that particle size plays a role in the WBC, it is pointed out that while it is not a direct teaching in the specification, it is a property that is listed in the claims and a property that is measured/tested in the specification (see instant specification as filed, pages 68-70). To clarify this point, the example is the specification teaches that the carrot fibers are dried, followed by a milling and sieving step (see instant specification page 57, Preparation of an activated carrot fiber). As the fibers are milled and sieved to a specific size (see instant specification as filed, pages 68-70), the particle size is being shown as a factor in the properties of the composition (e.g., the water binding capacity), otherwise this step would not be needed.
Applicant further argues that water binding capacity is a function of internal surface area and structural organization of the fiber, not of its outer particle size, but it is noted that the art teaches that the particle size affects the water holding capacity as discussed above. Applicant is providing attorney arguments to try and argue against what is directly taught in the art. Attorney argument is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965).
Applicant also argues that Clementz teaches a comparison between the water binding capacity (WBC) of carrots, sugar beet, apple, and wheat fibers and says that particle size is not mentioned or taught because WBC is not a function of physical dimension, however again it is pointed out that the art teaches particle size does affect WBC. It is not taught that particle size is the only thing that affects WBC or dictates what the WBC or a powder will be, but that it is a factor in what the WBC will be simply because smaller particles have more surface area therefore small particles are able to bind more water or oil as compared to large particles (see Waman, page 20, 2.8.3.3). It would be within the purview of one with ordinary skill in the art to undergo routine optimization using this teaching.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the instant case, it is pointed out that the art teaches that the “water binding capacity is also affected by the particle size of powder, the reason is that smaller particles have more surface area therefore small particles are able to bind more water or oil as compared to large particles” (see Waman, page 20, 2.8.3.3). As such, using the combined teachings of the references, one with ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, water binding capacity in Clementz to obtain the desired balance between the particle size as taught by Waman (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). “[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Further, it is noted that Clementz prefers a smaller size for the carrots in order to make the extraction easier (see Clementz, page 375, 2.4.1.)
Applicant argues that Waman is non-analogous and technically irrelevant prior art, however it is pointed out that even if Waman is not in the same field of endeavor, it is reasonably pertinent to the problem to be solved with regards to discussing what WBC is and the factors that affect it in dietary supplements, which aligns with the teachings of Clementz as well. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. When more than one prior art reference is used as the basis of an obviousness rejection, it is not required that the references be analogous art to each other. See Sanofi-Aventis Deutschland GMbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1380, 2023 USPQ2d 552 (Fed. Cir. 2023) and Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1007, 2023 USPQ2d 1202 (Fed. Cir. 2023).
As such, claims 1 and 3-5 remain rejected.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 3-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-5 of copending Application No. 18009133 in view of Anderson (2019).
18009133 teaches a method of using fiber from an apple that is identical to the instant claim 1, except the instant claim teaches activated carrot fibers. The limitation of claims 3-5 are also similar to the instant claims.
18009133 is silent on the use of carrot fibers.
Anderson teaches that pectin, a fiber (see Anderson, why is pectin important), is found in carrots, apples, and citruses (see Anderson, where can I find pectin?, paragraph 2).
In regards to claims 1 and 3-5, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of 18009133 and Anderson to formulate the instantly claimed method. One with ordinary skill in the art would be motivated to simply substitute the apple of 18009133 with the carrot of Anderson to obtain predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to simply substitute one known element for another to obtain predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of copending Application No. 18009270 in view of Anderson (2019).
18009270 teaches a method of using fiber from a fruit that is similar to the instant claim 1, except the instant claim teaches activated carrot fibers. Claim 1 does not mention the viscosity or the shear rate, however those limitations are present in claims 5 and 6.
18009270 is silent on the use of carrot fibers.
Anderson teaches that pectin, a fiber (see Anderson, why is pectin important), is found in carrots, apples, and citruses (see Anderson, where can I find pectin?, paragraph 2).
In regards to claims 1 and 4, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of 18040421 and Anderson to formulate the instantly claimed method. One with ordinary skill in the art would be motivated to simply substitute the apple of 18009270 with the carrot of Anderson to obtain predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to simply substitute one known element for another to obtain predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of copending Application No. 18009296 in view of Anderson (2019).
18009296 teaches a method of using fiber from a fruit that is similar to the instant claim 1, except the instant claim teaches activated carrot fibers. Claim 1 does not mention the viscosity or the shear rate, however those limitations are present in claims 5 and 6.
18009296 is silent on the use of carrot fibers.
Anderson teaches that pectin, a fiber (see Anderson, why is pectin important), is found in carrots, apples, and citruses (see Anderson, where can I find pectin?, paragraph 2).
In regards to claims 1 and 4, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of 18040421 and Anderson to formulate the instantly claimed method. One with ordinary skill in the art would be motivated to simply substitute the apple of 18009296 with the carrot of Anderson to obtain predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to simply substitute one known element for another to obtain predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-6 of copending Application No. 18040421 in view of Anderson (2019).
18040421 teaches a method of using fiber from a fruit that is similar to the instant claim 1, except the instant claim teaches activated carrot fibers. Claim 1 does not mention the viscosity or the shear rate, however those limitations are present in claims 5 and 6.
18040421 is silent on the use of carrot fibers.
Anderson teaches that pectin, a fiber (see Anderson, why is pectin important), is found in carrots, apples, and citruses (see Anderson, where can I find pectin?, paragraph 2).
In regards to claims 1 and 4, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of 18040421 and Anderson to formulate the instantly claimed method. One with ordinary skill in the art would be motivated to simply substitute the apple of 18040421 with the carrot of Anderson to obtain predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to simply substitute one known element for another to obtain predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-6 of copending Application No. 18040429 in view of Anderson (2019).
18040429 teaches a method of using fiber from a fruit that is similar to the instant claim 1, except the instant claim teaches activated carrot fibers. Claim 1 does not mention the viscosity or the shear rate, however those limitations are present in claims 5 and 6.
18040429 is silent on the use of carrot fibers.
Anderson teaches that pectin, a fiber (see Anderson, why is pectin important), is found in carrots, apples, and citruses (see Anderson, where can I find pectin?, paragraph 2).
In regards to claims 1 and 4, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of 18040429 and Anderson to formulate the instantly claimed method. One with ordinary skill in the art would be motivated to simply substitute the apple of 18040429 with the carrot of Anderson to obtain predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to simply substitute one known element for another to obtain predictable results.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 05/11/2026 have been fully considered but they are not persuasive.
In response, the examiner notes that a request to address the issue further upon resolution of the remaining issues is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 CFR 1.111(b) and 714.02). As set forth above, the double patenting rejections of claims 1 and 3-5 above are maintained.
Conclusion
No claims allowed.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 AYAAN A ALAM whose telephone number is (571)270-1213. The examiner can normally be reached M-F 8-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached at 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.A.A./Examiner, Art Unit 1611
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