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
Receipt of Arguments/Remarks filed on 4/1/2026 is acknowledged. No claims were amended. Claims 1-20 are pending. Claims 1-16 and 20 are withdrawn from consideration as being drawn to a non-elected invention.
Maintained rejections
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Response to Arguments
The remarks filed on 4/1/2026 state that Applicant will not be filing a substitute response to the outstanding Action, but will instead file a divisional application. Thus, as there are no claim amendments or arguments presented, all rejections are maintained as set forth above.
Conclusion
Claims 17-19 are rejected. No claims are 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.
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.
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/EMILY F EIX/Examiner, Art Unit 1653
/SHARMILA G LANDAU/Supervisory Patent Examiner, Art Unit 1653
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