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 .
This office action is written in response to the Applicants Remarks filed 7/1/26. Claims 19-24, 36-38 are pending. Claims 19-24, 26, 27, 35, and 38 have been examined on the merits. Claims 28-34, 36, and 37 were withdrawn. Claim 25 was previously cancelled.
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 19, 21, 22, 23, 35, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Simmons (US 11,006,658) in view of Abbas et al. (US 2006/0251764).
Regarding Claims 19, 22, 23: Simmons discloses a sweetener composition containing oligosaccharides with a DP 2 to 12 [abstract]. Simmons discloses the composition as part of a food or feed or nutritional supplement [col. 14, lines 28-43]. Simmons discloses the composition containing less than 20% monosaccharides or less than 5% monosaccharide [claim 10; col. 9, lines 53-56]. Simmons discloses at most 20% of the oligosaccharides are xylo-oligosaccharides which are oligosaccharides with xylose monomers units and with a DP of 4-11 [pg. 4, lines 13-36]. Simmons discloses the composition comprising polysaccharides and oligosaccharides where the oligosaccharides are enzymatically produced [abstract; col. 33, lines 45-58]. Simmons discloses soluble and insoluble matter [col. 33, lines 45-49]. Simmons discloses degrading fiber by using one or more carbohydrases selected from mannanase, xylanase, glucanase, and cellulase [col. 33, lines 50-58]. Simmons does not mention raffinose, stachyose, or verbascose.
Simmons does not disclose that the source of the oligosaccharides is soy hulls.
Simmons does not disclose including yeast in the feed.
Abbas discloses an animal feed and method of making an animal feed [abstract]; discloses using soy hulls as a feedstock and that they are readily available [0022]. Abbas discloses upgrading DDG by adding hulls including soybean hulls [0015]. Abbas discloses pretreating hulls to hydrolyze the cellulose and hemicellulose portions to produce oligosaccharide fractions [0017]. Abbas discloses using cellulase and hemicellulase [0017] (which includes xylanase). Abbas discloses the enzymatic treatment of soy hulls to produce/release oligosaccharides [0042]. Abbas discloses mixing yeast with an animal feed product [0043].
At the effective filing date of the invention, it would have been obvious to one of the ordinary skill in the art to modify the composition of Simmons to include yeast as in Abbas in order to provide an additional source of protein to the composition. Further it would have been obvious to utilize soy hulls as a substrate in order to make use of soy hull since they are a source of hydrolysable indigestible oligosaccharides; are readily available; can be hydrolyzed by carbohydrases to produce oligosaccharides; and are suitable for animal feed.
Further regarding the process steps of the claim, since there is no evidence that the recited process produces a product that is materially different from what is disclosed in the prior art, claim 19 has been considered regarding its disclosure of degraded soy fiber hulls with oligosaccharides having 3-30 monomer sugar units.
“Even 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 art was made by a different process.” In re Thorpe, 777 F.2d 695, 698.
Regarding Claim 21: Simmons discloses as discussed above in claim 19. Simmons discloses oligosaccharides as present from 5% to 80% of the composition [claim 1].
Although Simmons does not explicitly disclose comprising 5 % by weight or more of said Oligosaccharides DP 3-30, one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Simmons overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Regarding Claim 35: Simmons discloses a food or feed or nutritional supplement [col. 14, lines 28-43] and as discussed above in claim 19. Simmons discloses oligosaccharides as present from 5% to 80% of the composition [claim 1].
Although Simmons does not explicitly disclose a feed, food product, or nutritional supplement comprising from 0.5 to 99% by weight of the feed or food ingredient , one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Simmons overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Regarding Claim 38: Simmons discloses as discussed above in claim 19. Further regarding the process steps of the claim, since there is no evidence that the recited process produces a product that is materially different from what is disclosed in the prior art, claim 38 has been considered regarding its disclosure of the food or feed ingredient of claim 19.
“Even 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 art was made by a different process.” In re Thorpe, 777 F.2d 695, 698.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Simmons (US 11,006,658) in view of Abbas et al. (US 2006/0251764) as applied to claim 19 above and in further view of Vineyard (US 20160100610).
Regarding Claim 24: Simmons as modified discloses as discussed above in claim 19. Simmons does not disclose wherein the yeast is present at an amount of from 0.05 to 10 %.
Vineyard discloses animal feed and including 0.1 to 1% or 0.1 to 2% yeast [0020].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the composition of Simmons to include yeast at the amounts disclosed in Vineyard in order to provide an additional source of protein in the feed product.
Claims 20, 26, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Simmons (US 11,006,658) in view of Abbas et al. (US 2006/0251764) as applied to claim 19 above and in further view of Amicucci et al. (US 2018/0363016).
Regarding Claim 20: Simmons as modified discloses as discussed above in claim 19. Simmons does not disclose providing a prebiotic effect.
Amicucci discloses oligosaccharides having a DP of 3 to 20 as providing a prebiotic effect [0011]. Amicucci discloses including the oligosaccharides in human food and animal feed [0066].
At the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art that the composition of Simmons would have had a prebiotic effect as in Amicucci since Amicucci discloses oligosaccharides as having a prebiotic effect.
Regarding Claims 26 and 27: Simmons as modified discloses as discussed above in claim 19. Simmons does not disclose further comprising one or more selected from (1) one or more microorganisms and (ii) metabolic products of carbohydrate degradation of the soy hulls by the one or more microorganisms (claim 26); wherein the one or more microorganisms comprise lactic acid bacteria (claim 27).
Amicucci discloses an oligosaccharide containing composition that includes Lactobacillus [0073]. Amicucci discloses including the oligosaccharides in human food and animal feed [0066].
At the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the composition of Simmons to include Lactobacillus as in Amicucci in order to provide the beneficial effect of probiotic microorganisms.
Response to Arguments
The 103(a) rejections of claims 19, 21, 22, 23, 35, and 38 over Simmons (US 11,006,658) in view of JP 2004504043 Machine Translation have been withdrawn.
The Applicant asserts that Abbas, which was incorporated for its teaching of soy hulls, does not suggest that “enzyme-treated soy hulls would be a good source of” DP 3-30 oligosaccharides. The Applicant asserts that Abbas aims to produce ethanol and a modified animal feed. The Applicant asserts that the disclosure in Abbas of a treated biomass as “thermochemically, chemically, enzymatically treated physically treated… soybean hulls…” does constitute a suggestion for using soybean hulls and enzymatically treating them with a carbohydrase.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, Simmons discloses degrading fiber by treating with carbohydrases and producing oligosaccharides within the recited DP range. Abbas was used to modify Simmons for the specific teaching of soybean hulls. Abbas also disclosed that oligosaccharides are formed as a product of the treatment of cellulose containing fibers, including soybean hulls [0015; 0017]. Abbas discloses that the treatment of soybean hulls with enzymes results in the formation of oligosaccharides [0042]. Abbas also discloses carbohydrases for the treatment of fibers [0017; 0031; 0032].
The Examiner maintains that since Simmons discloses the DP of oligosaccharides derived from treating fiber with carbohydrases and since Abbas discloses treating soybean hull with a carbohydrase and that the treatment results in the formation of oligosaccharides, it would have been obvious to substitute out the type of fiber disclosed Simmons (corn stover, cob, wheat bran, wheat straw, cellulose, bean pods, seed coats [Simmons col. 2, lines 26-32; col. 37, lines 23-60], to include the soybean hulls in Abbas.
On page 8, the Applicants asserts that a critical flaw in the rejection is that nothing in Abbas indicates that the treatment of soybean hulls would produce oligosaccharides with a DP of 3-30.
The Examiner disagrees, Abbas discloses the general formation of oligosaccharides from materials including wheat bran, corn stover, wheat straw and soybean hulls. Wheat bran, corn stover, and wheat straw are also disclosed as starting materials in Simmons and are disclosed as providing oligosaccharides within the claimed DP. Simmons discloses that any substances that comprise appropriate polysaccharides can be used to produce oligosaccharides and that the profile for the feedstocks/substances may comprise cellulose, lignocelluose, chitan, xylan etc.… [col. 37, lines23-36].
The Examiner maintains that one of ordinary skill in the art would have been motivated to include soybean hulls as a usable substrate in the production of oligosaccharides via enzymatic treatment.
On page 9, the Applicant asserts that the disclosure of thermochemical treatments leads one away from the claimed subject matter and that it is the thermochemical treatment in Abbas which is attributed to oligosaccharide formation.
The Examiner disagrees. As discussed above, Simmons already discloses the formation of oligosaccharides from the enzymatic treatment of fibrous materials. Further, Abbas explicitly discloses the formation of oligosaccharides via enzymatic treatment [0042, last two sentences].
A prior art reference that "teaches away" from the claimed invention is a significant factor to be considered in determining obviousness; however, "the nature of the teaching is highly relevant and must be weighed in substance. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). Furthermore, "the prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
On pages 9-11, the Applicant asserts that the feed or food ingredients have unexpected advantageous properties. The Applicant asserts soy hulls as an advantageous starting material in that a larger amount of DP 3-30 oligosaccharides can be obtained from the enzymatic treatment of soy hulls as contrasted with wheat bran, sugar beet pulp, or rice bran.
The Examiner notes that the Applicant’s arguments are not commensurate with the scope of the claims. Further, it would have been obvious to one of ordinary skill in the art knowing the starting fiber composition of various fiber containing starting materials to utilize enzymes that would produce the desired oligosaccharide composition.
For the reasons above the rejections have been maintained.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FELICIA C TURNER whose telephone number is (571)270-3733. The examiner can normally be reached Mon-Thu 8:00-4:00 pm.
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, Emily Le can be reached at 571-272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Felicia C Turner/Primary Examiner, Art Unit 1793
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