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 26 February 2026 has been received, entered and considered. The following information has been made of record in the instant amendment:
1. Claim 24 has been canceled.
2. No new Claims have been added.
3. Claims 1-23 and 25 have been amended.
4. Remarks drawn to priority and rejections under 35 USC 101, 112, 103 and double patenting.
The following objection(s)/rejection(s) has/have been overcome:
5. The rejection of Claims 1-23 and 25 under 35 U.S.C. § 101 as being drawn to use claims has been withdrawn. The claims have been amended to delete the recitation “Use of”. The rejection of claim 24 has been rendered moot by cancelation.
6. The rejection of Claims 1-23 and 25 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph has been withdrawn in view of the amendments and applicant’s remarks. The rejection of claim 24 has been rendered moot by cancelation.
7. The rejection of Claim(s) 1, 3, 5-6 and 20 under 35 U.S.C. 103 as being unpatentable over Gerhard et al (DE 19943188 A1; machine English translation, pages 1-8; original cited in IDS filed 12/08/2022; of record), and the rejection of Claims 1-23 and 25 under 35 U.S.C. 103 as being unpatentable over Hansen et al. (US 2020/0046008 A1) in view of Schmidt et al (DE 19815547 C1, Machine English translation, pages 1-5) and further in view of Engelen et al (US 2015/0203737 A1) have been withdrawn in view of the amendment and applicant’s remarks. The rejection of claim 24 has been rendered moot by cancelation.
8. The rejection of Claims 1-23 and 25 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-25 of copending Application No. 18/006165 (‘165), and as being unpatentable over claims 1-27 of copending Application No. 18/040429 (‘429), and as being unpatentable over claims 1-27 of copending Application No. 18/040,421 (‘421), and as being unpatentable over claims 1-25 of copending Application No. 18/009,270 (‘270), and as being unpatentable over claims 2-23 of copending application No. 18/009,301 (‘301) in view of Schmidt et al (DE 19815547 C1, Machine English translation, pages 1-5) and further in view of Anderson (Pectin, 2019, Michigan State University, pages 1-6) has been withdrawn in view of the amendments and is replaced by the rejection set forth below. The rejection of claim 24 has been rendered moot by cancelation.
Claims 1-23, and 25-27 are pending in the case. Claims 26-27 have been withdrawn from consideration as being drawn to non-elected invention. Claims 1-23 and 25 are under prosecution.
Priority
This application is a 371 of PCT/EP2021/065592 filed 06/10/2021. This application claims foreign priority to GERMANY DE 102020115526.3 filed 06/10/2020 and to GERMANY DE 102020122518.0 filed 08/28/2020, and to GERMANY DE 102020125043.6 filed on 09/25/2020, under 35 U.S.C. 119(a)-(d). Applicant has filed an English translation and statement of translation accuracy of the foreign priority documents. The effective filing date accorded the instant application 06/10/2020.
The following rejections are made of record necessitated by amendment.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-23 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Clark et al (WO 2019/048715 A2; cited in the IDS filed 12/08/2022; necessitated by amendment).
Clark’s invention is drawn to pectin-containing biomass compositions and products containing the compositions (page 1, lines 5-8). The starting material for the pectin-containing biomass composition is citrus peel (page 11, lines 2-19; citrus as in claims 1-2). According to Clark the activated pectin-containing biomass can include from about 20wt% to about 50wt% of pectin (page 20, lines 26-27), Clark teaches several product formulations that contain the activated pectin-containing biomass in an amount 0.01wt% to about 5wt% (page 22, lines 30-32). Since the activated pectin-containing biomass can include from about 20wt% to about 50wt% of pectin and the product formulations can contain the activated pectin-containing biomass in an amount 0.01wt% to about 5wt%, Clark’s teaching includes product formulations that have less than 10wt% of the activated water-soluble pectin (as in claims 1-2). This also includes the property as in part o of claim 4. The pectin of Clark is water-soluble (page 9, lines 7-9 as in claims 1-2). When extracted, the pectin component of the activated pectin-containing biomass composition has properties of a high methoxyl pectin having degree of methoxylation of about 50% or higher (page 21, lines 17-19; as in claims 1-2).
Clark teaches several products made using the above pectin (page 22, line 16 through line 23; page 33, line 24 through page 48, line 13; product recited in claims 1-3, 5-6, 9-10, 13, 15-17, and 25). In view of this teaching of Clark one of ordinary skill in the art will find it obvious to use the pectin for making all of the other products recited in claims 1-3, 5-23 and 25.
MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.'" KSR, 550 U.S. at, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention."
According to the rationale discussed in KSR above, the rationale in (G) above is seen to be applicable here since based on the prior art teachings, activated pectin-containing citrus fiber is suggested for use in a method of making the products as instantly claimed.
Thus, the claimed invention as a whole would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention over the combined teachings of the prior art. One of ordinary skill in the art would be motivated to use activated pectin-containing citrus fiber in the claimed methods since Clark teaches that there is an increasing demand for more natural fibers for use as rheology and texture modifiers in food, pharmaceutical and industrial applications (page 1, lines 19-20). Since activated pectin-containing citrus fiber as taught by Clark has properties for such applications the artisan would be motivated to use the activated pectin-containing citrus fiber in the claimed methods.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO Internet website contains Terminal Disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-23 and 25 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-25 of copending Application No. 18/006165 (‘165), and as being unpatentable over claims 1-27 of copending Application No. 18/040429 (‘429), and as being unpatentable over claims 1-27 of copending Application No. 18/040,421 (‘421), and as being unpatentable over claims 1-25 of copending Application No. 18/009,270 (‘270), and as being unpatentable over claims 2-23 of copending application No. 18/009,301 (‘301) in view of Clark et al (WO 2019/048715 A2; cited in the IDS filed 12/08/2022; necessitated by amendment) and further in view of in view of Schmidt et al (DE 19815547 C1, Machine English translation, pages 1-5; of record) and Anderson (Pectin, 2019, Michigan State University, pages 1-6; of record). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant Claims 1 and 3-23 and 25 are drawn to the use of an activated pectin-containing citrus fiber for preparing various products, its various functions and properties. Claim 2 is drawn to the use of the said fiber in construction area, in extraction by drilling boreholes and in agriculture.
The copending claims of ‘165, ‘429, ‘421, ‘270 and ‘301 are also drawn to the use of activated pectin-containing fibers for preparing the same products, its various functions and properties.
The teachings of Clark are set forth above.
Schmidt et al teaches the use of de-esterified pectins for making adhesive (page 4, from sub-heading through page 5 till sub-heading: Evaluation).
According to Anderson pectin is found in several fruits like apples, carrots, oranges, grapefruit and lemon (page 2, third para).
The copending claims of ‘165 are drawn to the use of carrot fiber; ‘428 teaches the use of activatable de-esterified pectin converted fruit fiber; ‘421 teaches use of de-esterified fruit fiber; ‘270 teaches the use of activated pectin-containing apple fiber, and ‘301 teaches the use of an activated pectin containing citrus fiber made via particular process for making the claimed products.
One of ordinary skill in the art would have reasonably expected that the activated pectin-containing fibers taught by the cited prior art can also be used for making the products of the instant invention in view of the secondary references.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to combine the teachings of the cited applications and the secondary references to arrive at the claimed invention. The artisan would be motivated to substitute the pectins of the cited prior art in view of the secondary references to obtain predictable results with a reasonable expectation of success.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
1. Claims 1-27 are pending.
2. Elected claim 1-23 and 25 (Group I) are rejected.
3. Claim 24 has been canceled.
4. Group II Claims 26-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim.
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 GANAPATHY KRISHNAN whose telephone number is (571)272-0654. The examiner can normally be reached M-F 8.30am-5pm.
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/GANAPATHY KRISHNAN/ Primary Examiner, Art Unit 1693
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