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 . Claims 1, 3-5 and 26-27 are examined herein.
Status of Claims
Claims 1-27 are pending.
Claims 2 and 6-25 are withdrawn for being directed to a nonelected species/invention.
Claims 1, 3-5 and 26-27 are under examination.
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, 3-5 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over in view of MG.
MG: Miceli-Garcia: PECTIN FROM APPLE POMACE: EXTRACTION, CHARACTERIZATION, AND
UTILIZATION IN ENCAPSULATING ALPHA-TOCOPHEROL ACETATE; Food Science and Technology Department Thesis, University of Nebraska; published May 2014.
With regard to the prior art, the phrase: activatable pectin-containing apple fiber, encompasses: pectin-containing apple fiber (per pending para. 0021), wherein pectin by is plain meaning encompasses a soluble fiber, therefore, also encompasses: pectin derived from apples, or parts thereof.
Independent claim 1
High methoxyl (HM) pectins from apples
Claim 1 requires an apple pectin containing composition/product, wherein the product is made by a process comprising multiple steps, however, determination of patentability is based solely on the claimed product itself.
MG teaches about high methoxyl apple pectin (see section 2.3.4.2 and title).
Product by process
When looking for light in the pending Specification, it is noted that the claimed activatable pectin-containing apple fiber is achieved due to a step of acidic extraction (i.e. disintegration ) which substantially reduces the pectin content of an apple fiber
by disintegrating the apple fiber structure resulting in a high methoxyl water soluble pectin (per pending paras. 0019-0023).
Further light on the step of acidic disintegration is disclosed as comprising: a temperature of between 60° C. and 95° C.; for a time of over 60 min to 8 hours; at a pH of between 0.5 to 4.0 (pending paras. 0060 and 0063-64), using organic or mineral acids (pending paras. 0058-0059).
MG also teaches about high methoxyl apple pectins (bottom of pg. 23), and further provides process parameters of the acid extracting of the pectin, including optimizing the three factors, including: time, temperature and pH (see pg. I and Specific objections on pg. 5).
MG provides the three pectin extraction conditions, include: a pH of 1.5-3.5, a temperature of 50-90°C, and a hot acid extraction time of 30-180 minutes, which encompasses the disclosed step of acidic disintegration, comprising: a temperature of between 60° C. and 95° C.; for a time of over 60 min to 8 hours; at a pH of between 0.5 to 4.0 (pending paras. 0060 and 0063-64).
MG also provides that organic and mineral acids are use, and further provides that organic acids produce more pectin, whereas mineral acids produce less pectin (bottom of pg. 63 though top of pg. 64). This encompasses the disclosed use of organic or mineral acids for the step of acidic disintegration (pending paras. 0058-0059).
Since, the patentability of a product does not depend on its method of production and in this case, 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
As for composition having less than 10 wt% of pectin:
MG provides that it is known to low concentrations of less that 0.5% w/w (1st full para. on pg. 13), discusses optimizing process conditions to achieve a 8.6% w/w yield (ab.), and shows ranges from 1.41 to 8.61% w/w, which all encompasses the claim of less than 10 wt% pectin.
Intended use
As for the intended use, being for food, as claimed, MG provides that pectin is widely utilized by the food industry as a versatile and functional food ingredient (pg. i).
In summary, applicant claims a formula for making a nutritional composition that use or eliminate common ingredients, and does not amount to invention in the constantly developing art of preparing food because there is no specific showing that establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. It is long and commonly known that the object of for people of skill for cooking (e.g. cooks, chefs, and bakers) is to use or eliminate common ingredients, like pectin, to formulate food that is palatable. Such an act, the formulation or creation a food recipe, is not patentable because it does not make a scientific advancement in the field unless a new/novel reaction, coaction or cooperative relationship is made evident by such a creation. In other words, the act of making food or food recipes that taste good, even if the combination of the ingredients is not known or has not been done before, is not patentable subject just because it was done.
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of this specific instant case.
At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Dependent claims
As for claim 3, MG provides that the pectin is known for to function as a food thickener (2nd para. on pg. 1), as claimed.
As for claim 4, MG provides that the pectin is known to have a grading strength (i.e. firmness) (1st para. on pg. 12).
MG does not explicit discuss the value for said functions, however, since MG provides a similar composition comprising similar amounts of similar ingredients, comprising firmness, which reflects the breadth of the claim composition, it would be reasonable to expect that the activatable pectin-containing apple fiber has a firmness in a 4 wt% aqueous suspension of between 60 g and 240 g, preferably between 120 g and 200 g and more preferably between 140 and 180 g, absent a showing of criticality, because the teaching of a similar composition imparts a suggestion in or expectation that the composition taught will have the same or a similar utility.
Therefore, it would have been obvious to one of skill in the art, at the time of filing/the invention to modify the method of making high methoxyl apple pectin, comprising firmness, as MG, to include that said composition will have a a firmness when in a 4 wt% aqueous suspension of between 60 g and 240 g, preferably between 120 g and 200 g and more preferably between 140 and 180 g, as claimed, because the composition established through the teachings by MG provides a sufficiently close relationship between the ingredients to create an expectation that such a similar compositions would have similar capabilities, properties or functionality because the claims are not physically or structurally distinguishable over the prior art compositions.
Furthermore, see MPEP 2144. III, which states that when case law imparts legal precedence, wherein the facts in this prior legal decision are sufficiently similar to those in an application, wherein the court applied the law of obviousness to similar facts. This includes a wide spectrum of illustrations and accompanying reasoning (i.e. obviousness) that exist in case law. In re Eli Lilly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990). Also, although not cited in the MPEP, more recent caselaw on the topic, “In re Dillon, 919 F.2d 688 (1990)” ( (https://cite.case.law/f2d/919/688/)) provides that when a claimed compositions has been made obvious from combined teachings of references, it is clear that the discovery that the claimed composition possesses a property not disclosed for the prior art subject matter, and this itself does not defeat a prima facie case. Finally, MPEP 2112.0 is clear that when a composition is anticipated, its properties are anticipated.
As for claim 5, MG provides that commercial foods include preservatives (section 1.6.2.), therefore one of skill in the art would have a reasonable expectation that the products with pectin are preserved products, as claimed. Further, it would also be reasonable to expect that similar compositions have similar intended uses, including that the pectin for foods, is also for preserved products, as claimed.
As for claim 26, as discussed above, MG provides that the pectin is for use in foods, as claimed.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over in view of MG, as applied to claims 1, 3-5 and 26 above, further in view of YAP
YAP: Yantai Andre Pectin Co. ,Ltd.; Type APA104 HM Slow Set Pectin E440; Issue 2 June 2009.
As for claim 27, MG does not discuss the amount of the pectin used in foods.
YAP also teaches about using high methoxyl (HM) apple pectin, and further provides it as a food ingredient, comprising about 25 to 35 % sucrose as a base, which means it is a food comprising about 65 to 75 % high methoxyl (HM) apple pectin (see short article), which encompasses wherein the portion of the activatable pectin-containing apple fiber is between 0.05 wt% and 90 wt%.
YAP also teaches the use of the high methoxyl (HM) apple pectin in foods, from 0.4 to 2.2 %, which encompasses between 0.05 wt% and 90 wt%, between 0.1 and 50 wt%, from 0.1 to 25 wt% and between 0.5 and 10 wt%, as claimed.
It would have been obvious to one of skill in the art, at the time of filing to modify the method of using edible high methoxyl (HM) apple pectin, as MG, to include ----------------------------its use in amounts of: between 0.05 wt% and 90 wt%, between 0.1 and 50 wt%, from 0.1 to 25 wt% and between 0.5 and 10 wt%, as claimed, because YAP shows that it was known to use encompassing amounts, therefore such a thing was successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select this as a food ingredient, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious.
Response to Arguments
Applicant argues that claim 1 not only requires both apple fibers and pectin but also recites that the pectin is a component of the apple fibers. And, in contrast, MG is directed toward isolated pectin alone and is entirely silent on providing pectin-containing fibers of any type, let alone pectin-containing apple fibers. More specifically, Applicant argues that the process of MG is imply directed toward isolating pectin instead of producing an apple fiber including pectin.
Applicant’s argument has been considered; however, it is not found persuasive. It is noted that the claim is a product by process claim. 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)” In the instant case, as noted in the prior office action, the patentability is based on the product itself. With this acknowledgement made, it should be further noted that MG teaches obtaining pectin from apple pomace. And, pectin is a fiber. In other words, MG teaches pectin containing fiber from apples.
Applicant also notes that the specification is defined as “a component consisting of mainly of fibers, which is isolated from a non-lignified cellular wall of an apple and consists mainly of cellulose…Other components of the apple fiber are, among others, hemicellulose and pectin”. Given this definition, Applicant notes that the claimed product produced by the method includes pectin and other components, and that the term “apple fiber” does not represent pectin.
Applicant’s argument has been considered; however, it is not found persuasive. MG teaches obtaining pectin from apple pomace. And, pectin is a fiber. In other words, MG teaches pectin containing fiber from apples.
Applicant also notes that Yap does not refer to an apple fiber, let alone the apple fiber obtained by the method of claim 1.
Applicant’s arguments has been considered; however, not found persuasive. Applicant is reminded that YAP is introduced because MG does not discuss the amount of the pectin as claimed in claim 27.
Conclusion
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.
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/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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