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
Status of Claims
The amendments and arguments filed on 10/28/2025 are acknowledged and have been fully considered. Claims 1-27 are now pending. Claims 1, 4-5, and 8 are amended; claims 2 and 6-27 are withdrawn.
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Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn.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 reasonably 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 10/28/2025 have been fully considered but they are not persuasive in view of the modified grounds of rejection as necessitated by amendment.
In regards to applicant’s argument that Clementz does not teach the claimed water binding capacity, the rejection has been modified as necessitated by amendment to be over Clementz in view of Waman. The teachings of Waman have been described above. 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.)
Applicant further argues that the method of Clementz is not identical to that of the instant application, pointing out 2 critical ways. The first being that the carrots used are discarded carrots instead of “carrot containing plant mass” and the second is the use of an enzymatic treatment in the method.
To address the first point, the claims are drawn to a method of using an activated carrot fiber, not a method of making and as such, the procedure of how the activated carrot fiber is made is not relevant to the patentability of the claim itself. The reason it is brought up in the rejection is to show that a carrot fiber composition that is made using an identical method would necessarily have the same properties. 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.” Second, the instant specification teaches that carrot pulp is defined as “the shredded solid residues produced during carrot processing” (see instant specification as filed, page 10, final paragraph). Using the broadest reasonable interpretation of this statement, the teachings of Clementz fall into this category (“carrots…fed to a blade grinder…to obtain thin slices (0.01 mm) which were called ‘flakes’” (see Clementz, page 375, 2.4.1)).
In regards to the second point, it is noted that the steps discussed on page 9 of the instant specification do teach the use of an enzymatic treatment, however it is also noted that this is taught as an optional step. The method of Clementz does not teach the use of an enzymatic treatment, however because it is not a required step in the preparation of the activated carrot fiber, one with ordinary skill in the art would understand the methods to be substantially identical. Further, it is worth noting that the use of enzymatic treatment of carrot material with pectinase enzymes is known to increase the water binding capacity of said carrot material significantly in the prior art (see US PGPUB 2003/0044509 A1; Roney, 2003; paragraphs 0044-0050).
Applicant argues that because the water binding capacity of Clementz is different than what is claimed, the methods of the prior art and the instant application cannot be the same. However, with the teachings of Waman, it can be seen that particle size is an important variable in controlling the water binding capacity. It is also noted that instant claim 4 teaches a particle size limitation. Looking at the examples in the specification as filed as well as the claims, it can be seen that the particle size indeed plays a role in the water binding capacity, as confirmed in the prior art. For this reason, the rejection has been modified to be over Clementz in view of Waman. 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.)
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 10/28/2025 have been fully considered but they are not persuasive.
Applicant argues that instant application teaches carrot fibers and that the apple-derived fibers of the copending applications are not equivalent. Applicant argues that the extraction method of the fibers would be different due to differing levels of pectin, the presence of seeds, as well as compositional and structural characteristic such as moisture content. However, it is pointed out that the claims in each application are drawn to a method of use, not a method making. As Anderson teaches that pectin is found in apples, carrots, and citruses, it would be within the purview of one with ordinary skill in the art to simply substitute apples with carrots using the teachings of Anderson as discussed in the rejections above. Further, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the instant case, one with ordinary skill in the art would have the knowledge and skill to be able to modify the extraction method of pectin to accommodate for the differences between the fruit/vegetable.
Conclusion
No claims allowed.
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 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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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.A.A./Examiner, Art Unit 1611