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 .
Election/Restrictions
Applicant's election with traverse of claims 17-19 in the reply filed on 8/5/2025 is acknowledged. The traversal is on the grounds that the unpatentability of the claims is irrelevant to a restriction requirement, and that the claims do not cover independent and distinct inventions. Further, Applicant argues that as the ISA addresses all the claims, it is not clear how it would be a search burden to address all of the claims.
This is not found persuasive because the instant application is a national stage application submitted under 35 U.S.C. 371, and therefore requires unity of invention analysis rather than the independent and distinct analysis required for applications filed under 35 U.S.C. 111(a). Applicant is directed to MPEP § 823. The unity of invention analysis does not require establishment of undue burden, but is based on whether the groups of inventions share a special technical feature in view of the prior art. Thus, as the shared technical feature of the groups of inventions does not make a contribution over the prior art in view of Joo et al. as discussed in the restriction requirement, this is not a special technical feature and the inventions lack unity. Additionally, 37 C.F.R. 1.484 states that the international preliminary examination is a non-binding opinion. 37 C.F.R. 1.499 states that, if the Examiner finds that a national stage application lacks unity of invention under 37 C.F.R. 1.475, the Examiner may in an Office action require the applicant in the response to that action to elect the invention to which the claims shall be restricted.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-16 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/5/2025.
Priority
This application is a 371 of PCT/EP2021/075543 (9/16/2021) which claims priority to EP20196590.2 (9/17/2020) as reflected in the filing receipt issued on 3/14/2025.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 11/7/2023 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim 18 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 18 recites the broad recitation “wherein the organic
acids comprise at least one”, and the claim also recites “and preferably at least two” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 18 additionally recites “wherein the organic acids comprise at least one, and preferably at least two, of pyrrolidone carboxylic acid (PCA), acetate, and formiate”. This is unclear, as acetate is the conjugate base of the organic acid acetic acid, and is not itself an organic acid. It is additionally unclear what is meant by “formiate”, i.e. if this should instead be formate, referring to the conjugate base of formic acid. The claim should be amended to clarify these issues.
Claim Rejections - 35 USC § 102/103
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.
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.
Claim 17 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Joo et al., US 2019/0254323 A1.
Regarding claim 17, Joo teaches a saccharide syrup composition comprising an oligosaccharide and an organic acid or its salt (Joo pg. 1 para. 1). Organic acids include lactic acid, citric acid and ascorbic acid, and the organic acid salt may be sodium, potassium, calcium or magnesium (Joo pg. 2 para. 23). Joo teaches that the composition may comprise an oligosaccharide content of 80% or more, based on 100% of the initial content of the oligosaccharides (Joo pg. 1 para. 16). Joo teaches that the oligosaccharide is a fructooligosaccharide (FOS) (Joo pg. 2 para. 25). According to the instant specification pg. 6, °Bx represents the solids content of a sugar solution and can be read as weight percentage of dry matter, i.e. 100 mg/kg = 0.01 wt%. Joo teaches that the organic acid is preferably present at a concentration of 0.01 wt% to 0.1 wt% (Joo pg. 2 para. 24). Therefore, the Joo anticipates a composition comprising at least 75 wt% FOS and at least 0.01 wt%, or 100 mg/kg °Bx, organic acids and ions.
The limitation in claim 17 “produced in accordance with the method of claim 1” is a product-by-process limitation. Joo does not teach the process limitation. However, as claim 17 is directed to a product, an FOS composition, patentability is assessed based on the structure implied by the steps, not the manipulations of the recited steps. “[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)” (see MPEP § 2113 subsection I).
It appears that Joo teaches a composition identical to the claimed product, as discussed above. However, the Office is not equipped to make comparisons, and should there be a slight difference in the composition due to the process, the composition is rendered obvious in view of the teachings of Joo, which teach a composition comprising at least 75 wt% FOS and at least 100 mg/kg °Bx organic acids and ions.
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 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Joo et al. as applied to claim 17 above, and further in view of Jeong et al., US 2011/0189342 A1.
Joo teaches the FOS composition of claim 17 as set forth above. Joo teaches that the composition comprises the cation potassium (Joo pg. 2 para. 23). Joo does not teach that the organic acids are pyrrolidone carboxylic acid (PCA), acetate, or formiate as recited in claim 18, or that the ions comprise the anions chloride, nitrate, and sulfate as recited in claim 19.
Regarding claim 18, Jeong teaches galactooligosaccharide compositions (GOS), in combination with other oligosaccharides such as fructooligosaccharides (Jeong pg. 7 para. 77). Jeong teaches that the oligosaccharide composition may comprise conservants, salts, and organic/inorganic acids (Jeong pg. 7 para. 82-84). Jeong teaches that the composition may include acetic acid as well as calcium acetate (Jeong pg. 7 para. 82).
Regarding claim 19, Jeong teaches that the composition may comprise potassium chloride salts, meaning that the composition would have potassium cations and chloride anions (Jeong pg. 7 para. 83).
It would have been obvious to a skilled artisan, before the effective filing date, to combine the teachings of Joo and Jeong and create a fructooligosaccharide composition with acetate, potassium, and chloride. Joo teaches a fructooligosaccharide composition that has organic acids and ions, including potassium. It would be obvious that other organic acids (acetate/acetic acid) or anions such as chloride could be included in the composition as well, given the presence of these components in a composition which includes fructooligosaccharides as taught by Jeong.
A person of ordinary skill in the art would have been motivated to modify the composition of Joo and include acetate, potassium, and chloride, as Jeong teaches that acetic acid/calcium acetate can act as conservants in an oligosaccharide composition, and also teaches that organic acids and inorganic salts (such as potassium chloride) can enhance the flavor of oligosaccharide preparations used as food (Jeong pg. 7 para. 78, 82-83).
A skilled artisan would have a reasonable expectation of success in making this substitution because the composition of Joo includes organic acids and ions, and Jeong teaches benefits of including specifically acetate, potassium, and chloride in an oligosaccharide composition, so a person having ordinary skill in the art could expect that these specific components could be included in the fructooligosaccharide product of Joo.
Conclusion
Claims 17-19 are rejected.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY F EIX whose telephone number is (571)270-0808. The examiner can normally be reached M-F 8am-5pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila Landau can be reached at (571)272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EMILY F EIX/Examiner, Art Unit 1653 /SHARMILA G LANDAU/Supervisory Patent Examiner, Art Unit 1653