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 Claims
Amendment filed on 11/24/2025 is acknowledged.
Claims 1, 3, 5-12 are amended. Claim 4 is cancelled.
Claims 13-19 are withdrawn without traverse for being drawn to nonelected group.
Claims 1-3 and 5-12 are being examined herein on merits.
Priority
The instant application 18016693, filed on 01/18/2023, is a 371 of PCT/US2021/043602, filed on 07/29/2021, which claims domestic benefit of 63/060809, filed on 08/04/2020.
Withdrawn Objections/Rejections
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 09/03/2025) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of applicant’s amendment and remark filed on 11/24/2025.
Claim Objections
Claims 3 and 8 are objected to because of the following informalities:
Claims 3 and 8 recites “d.b.” abbreviation in parentheses, which is recommended to attach directly to %, e.g., about 19% d.b. (dry basis) in claim 3.
Appropriate correction is required.
Claim Interpretation
Claims 1, 3 and 8 are interpreted as following.
Claim 1 is interpreted as:
A method comprising:
(i) forming a slurry comprising a solid phase and a liquid phase, wherein the solid phase comprises a comminuted, depectinated plant material, and the liquid phase comprises water and an organic solvent;
(ii) applying shear to the slurry to form a sheared plant fiber; and
(iii) dewatering the plant fiber from the slurry to recover the sheared plant fiber;
wherein the organic solvent is in an amount from about 5% to about 25% by volume of the liquid phase.
The phrase “for increasing the dewatering efficiency of a sheared plant fiber” is interpreted as property or function of the method, because it does not contribute structural limitation of the method.
Claim 3 is interpreted as the method of claim 1 wherein the depectinated plant material has a pectin content remaining of less than about 19% on dry basis of the depectinated plant material.
Claim 8 is interpreted as the method of claim 1 wherein the solid phase comprises about 0.25 to about 15% d.b. of the total weight of slurry mixture prior to dewatering.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3 and 8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 recites “the depectinated plant material has a pectin content of less than about 19% by weight of the plant material”. There is insufficient antecedent basis for this limitation in the claim. In claim 1, which claim 3 depends upon, does not recite “plant material”, only “depectinated plant material”, “plant fiber”, or “sheared plant fiber” are seen in claim 1.
It is also unclear whether this pectin content refers to the remaining pectin content in the depectinated plant material, or it refers to the original total pectin content in a plant material prior to be depectinated.
Further, the term “dry basis “d.b.” in parentheses does not provide direct definition of the weight calculation basis, and it is unclear why it is included with parentheses. If the term is meant to define the percentage calculation, language should be rephrased, e.g., “pectin content is less than about 19% by weight of the depectinated plant material on dry basis”. The claim scope is indefinite.
Claim 8 recites “of claim 1 wherein the solid phase comprises about 0.25 to about 15% (d.b.)”. It is unclear about what basis or material of the percentage calculation is based upon. It is unclear whether it is meant to be dry weight percentage of solid phase out of the total slurry mixture weight prior to dewatering the plant fiber, or solid phase comprises this percentage of moisture based on dry basis of solid material after dewatering.
Claim Rejections - 35 USC § 102
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 5-12 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Staunstrup et al. (US20180230242, 08/16/2018).
Staunstrup teaches the methods throughout the reference for producing an activated pectin-containing biomass composition, such as methods for providing dietary fiber in which citrus peel is the starting pectin-containing biomass material (e.g., [0011]).
Regarding instant claims 1-2 and 12:
Claim 1 A method comprising:
forming a slurry comprising a solid phase and a liquid phase, wherein the solid phase comprises a comminuted, depectinated plant material, and the liquid phase comprises water and an organic solvent;
Staunstrup teaches the methods for producing an activated pectin-containing biomass composition, e.g., methods for providing dietary fiber in which citrus peel, include steps (e.g., Abstract; [0012]; Claim 1):
mixing a starting pectin-containing biomass material comprising an insoluble fiber component (corresponding to the solid phase) and an insoluble protopectin component with an aqueous solution of an alcohol (corresponding to the liquid phase comprising organic solvent and water in instant claim 1 and alcohol in instant claim 2) to form a mixture;
activating the starting pectin-containing biomass material to form an activated pectin-containing biomass material comprising the insoluble fiber component and a soluble pectin component (resulting in the solid phase comprising a comminuted depectinated plant material corresponding to instant claim 1), by subjecting the starting pectin-containing biomass material to (i) an activating solution formed by adding acid to the mixture to adjust the pH of the mixture within the range from at or about 0.5 to at or about 2.5 (corresponding to an organic acid is performed prior to applying the shear in instant claim 12) and (ii) heat to a temperature greater than at or about 40 degrees Celsius.
Regarding forming the slurry, Staunstrup teaches that the mechanical energy can be applied in step A) or B), or mixture of A) and B) (e.g., [0012], [0044]) in the mixture (i.e., the slurry containing the starting pectin-containing biomass material [0049], therefore, the mixture of the plant material having a solid phase and a liquid phase is forming a slurry comprising plant material in a status as comminuted and depectinated, e.g., treated plant material leads to protopectin losing water binding capability, corresponding to forming a slurry and the solid phase comprises comminuted, depectinated plant material in instant claim 1 step (i).
(ii) applying shear to the slurry to form a sheared plant fiber; and (iii) dewatering the plant fiber from the slurry to recover the sheared plant fiber;
Staunstrup teaches the method step (e.g., Abstract; [0012]) (C) applying mechanical energy either (i) to the mixture of step A), (ii) during the activating of step B), or (iii) to the mixture of step A) and during the activating of step B); and (D) separating the activated pectin-containing biomass material from the mixture.
Staunstrup teaches various devices can be used for applying mechanical energy including grinding, milling and others throughout the reference [e.g., 0045-0049], for instance, a lobe pump having a 2kW motor at 50 Hertz but operating at 10 Hertz giving an effect of 0.4 kW, 720 kJ/kg DM is used for 430 kg in 14.3 passes [0053] (corresponding to applying shear). Staunstrup teaches that 5-10% residual moisture remains in the orange peel processed by washing in alcohol methods then pressed by hand twice, and dried biomass material [0153] (corresponding to dewatering to recover sheared plant fiber from the slurry).
wherein the organic solvent is in an amount from about 5% to about 25% by volume of the liquid phase.
Staunstrup teaches wherein during the method the alcohol present in the mixture is at or greater than about 40 weight percent based on the total weight of the mixture (e.g., Abstract; [0012]). Staunstrup also teaches when starting pectin-containing biomass material prior to the activating in step B), the activating solution comprising an alcohol and an acid may be formed by adding acid to the mixture of step A), non-limiting examples of suitable acids, e.g., nitric acid, citric acid, oxalic acid, hydrochloric acid, sulfuric acid, phosphoric acid, and combinations thereof, to the mixture including organic and inorganic acids, such as a preferred 10% solution of nitric acid [e.g., 0039-0040] (corresponding to acid amount, which can be organic acid other than nitric acid), amount falling within the amount from about 5% to about 25% by volume of the liquid phase in instant claim 1. MPEP 2144.01 points out "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). Even though an organic acid is not specified in the exemplified acid amount, an artisan in the field would have reasonably expected to draw therefrom likewise amount for an organic acid, e.g., citric acid, oxalic acid, that is taught by Staunstrup. MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023). Therefore, the organic solvent amount is anticipated.
Regarding “for increasing the dewatering efficiency of a sheared plant fiber”, in light of claim interpretation of claim 1, it is property or function of the method, since prior art teaches the method, the property or function of the method would necessarily present. Moreover, Staunstrup teaches that a dietary fiber from pectin-containing plants that can be processed with ease and retain both soluble and insoluble fiber components with high quality properties [0010], indicating that the protopectin present in the starting pectin-containing biomass material may bind water, thereby making removal of water difficult, while treating (i.e. washing) starting pectin-containing biomass material with alcohol has been found to cause the protopectin in situ to lose its water binding ability, which results in water leaching out of the starting pectin-containing biomass material without the protopectin, and therefore ultimately increasing pectin yield [0033], as discussed above, the plant fiber can be sheared, therefor, Staunstrup teaches the method for increasing the dewatering efficiency of a plant fiber in instant claim 1.
Regarding instant claim 3, Staunstrup teaches depectinated material does not mean pectin is totally removed, as evidenced by instant spec. that a depectinated fiber retains at least some of the pectin present in an unprocessed plant fiber (instant specification, [0006]). Staunstrup indicates that the methods do not remove the natural pectic substances present in the starting pectin-containing biomass material, rather by use of alcohol during the activation step to prevent pectin from leeching out the biomass material and allowing for improving pectin yield, and thus to obtain an activated pectin-containing biomass highly functional and closer to nature, minimally processed product [0025], and the pectin component present in the activated pectin-containing biomass is in an amount from at or about 20% to at or about 45% by weight [0026], wherein “about” in aspects can be used to mean, for example, within 10%, 5%, or 2% of the recited value as indicated in Staunstrup [0066]. Therefore, the pectin content in the depectinated plant fiber in Staunstrup can be within range 10% to 55%, with multiple exemplified values fall within the range of less than 19% as recited in instant claim 3 as interpreted. MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).
Regarding instant claims 5-10, Staunstrup teaches various devices can be used for applying mechanical energy including grinding, milling and others throughout the reference [e.g., 0045-0049], for instance, a lobe pump having a 2kW motor at 50 Hertz but operating at 10 Hertz giving an effect of 0.4 kW, 720 kJ/kg DM is used for 430 kg in 14.3 passes [0053] (reading into numbers of shear passes in instant claim 7); for example sample 4 [0107], a homogenizer (corresponding to instant claim 6) used to process 30 grams (dry matter) of alcohol washed starting pectin-containing biomass material suspended in 3 L of de-ionized water twice at 300 bar mechanical energy (300 bar falling within about 100 to about 5000 bar in instant claim 5; the resulting in solid phase is at 1% d.b. calculated from 30 g d.b./3,000 g on water density as 1g/ml basis, falling within the range of about 0.25 to about 15% in instant claim 8 as interpreted) and the homogenized sample was drained in nylon cloth and then dried in a heat cabinet [0107] (definitely removed at least 10% of the liquid, if not drained all, from the dispersed fiber as recited in instant claim 9; also corresponding to drying the recovered fiber in instant claim 10). Even though the homogenizer rotation speed is expressly taught, MPEP 2144.01 points out "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), it is routine practice for scientists in field to use various shearing devices.
Regarding instant claim 11, As exemplified in Staunstrup, 5-10% residual moisture remains in the orange peel processed by washing in alcohol methods then pressed by hand twice, and dried biomass material [0153]. Staunstrup mentions different alcohol content for a first alcohol wash, a second alcohol wash, a third alcohol wash, and indicating that using an alcohol content of 70% or more for a final washing step can efficiently dewater the activated pectin-containing biomass (e.g., [0059]). When the starting pectin-containing biomass material is alcohol washed, after each wash, the starting pectin containing biomass material may be mechanically separated from at least a portion of the alcohol-containing wetting composition to form an alcohol washed starting pectin containing biomass material. The mechanical separation may be done by pressing the wetted starting pectin-containing biomass material, which may be carried out by any suitable pressing device, such as a single screw press-type, or by hand [0035] (corresponding to the washing step in instant claim 11 prior to applying shear energy).
Regarding instant claim 12, Staunstrup teaches non-limiting examples of suitable acids to the mixture including organic and inorganic acids, such as a preferred 10% solution of nitric acid [e.g., 0040] (falling within the organic acid solution from about 5% to about 30% in instant claim 12). MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023). Therefore, the organic acid amount is anticipated.
Response to Arguments
Applicant Arguments/Remarks filed on 11/24/2025 have been fully considered.
Applicant asserts that Staunstrup method present alcohol in an amount of at least 40% by weight of the mixture, while organic solvent in amended instant claims is in an amount from about 5% to about 25% by volume of the liquid phase, and therefore art rejections of claims are not anticipated.
As presented in office action above, in addition to alcohol amount as an organic solvent in the mixture, Staunstrup teaches further using organic acid as a solvent and teaches amount at 10%. The most relevant paragraph presented above is copied below for reference:
Staunstrup teaches wherein during the method the alcohol present in the mixture is at or greater than about 40 weight percent based on the total weight of the mixture (e.g., Abstract; [0012]). Staunstrup also teaches when starting pectin-containing biomass material prior to the activating in step B), the activating solution comprising an alcohol and an acid may be formed by adding acid to the mixture of step A), non-limiting examples of suitable acids, e.g., nitric acid, citric acid, oxalic acid, hydrochloric acid, sulfuric acid, phosphoric acid, and combinations thereof, to the mixture including organic and inorganic acids, such as a preferred 10% solution of nitric acid [e.g., 0039-0040] (corresponding to acid amount, which can be organic acid other than nitric acid), amount falling within the amount from about 5% to about 25% by volume of the liquid phase in instant claim 1. MPEP 2144.01 points out "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). Even though an organic acid is not specified in the exemplified acid amount, an artisan in the field would have reasonably expected to draw therefrom likewise amount for an organic acid, e.g., citric acid, oxalic acid, that is taught by Staunstrup. MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023). Therefore, the organic solvent amount is anticipated.
In summary, prior art anticipates the instant claims. Please refer to the entire office action presented above as a complete response to the remarks/arguments.
Conclusion
No claim is allowed.
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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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616