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. No Claims have been canceled.
2. No new Claims have been added.
3. Claims 1-29 have been amended.
4. Remarks drawn to priority and rejections under 35 USC 112, 103 and double patenting.
The following objection(s)/rejection(s) has/have been overcome:
5. The rejection of Claims 1-2, 4-7, 11, 15, 22 and 29 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of the amendments and applicant’s remarks.
Claims 1-29 are pending in the case.
Priority
This application is a 371 of PCT/EP2021/071727 filed 08/04/2021. This application claims foreign priority to GERMANY DE 102020120605.4 filed 08/05/2020 and to GERMANY DE 102020125034.7 filed 09/25/2020, under 35 U.S.C. 119(a)-(d). Applicant has filed an English translation and statement of translation accuracy of both foreign documents. Therefore, the effective filing date accorded the instant application 08/05/2020.
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.
Claim(s) 1-4, 7, 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Daly et al (WO 2011/041384 A2; of record) in view of Schmidt et al (DE 19815547 C1, machine English translation, pages 1-5; of record) and further in view of Christiansen et al (US 2008/0166465 A1; of record).
Daly teaches that pectin can be made water soluble by adjusting the ratio of the amide to acid groups (page 2, last para through page 3; page 12, second para). Daly teaches the use of low-methoxy pectin for making a drug-pectin combination, for encapsulating drugs, and for making pesticide and nutraceuticals (page 16, Example 4; limitation of claim 1-medical products; limitation of claim 3-carrier; release agent; part of the limitation of claim 28 regarding low-methoxy pectin and drugs/medical products). Daly also teaches the application of pectins in the agricultural market like fertilizers (page 7, third para below sub-title: General Discussion; fertilizers as in claims 1-2, 27 and 28; page 10, third full para, nutritional supplements as in claim 7). The pectins can be obtained from fruit peels (page 6, para 3). According to Daly both high methoxyl and low methoxyl pectins are used in food production and drug delivery systems (page 6, second full paragraph). The water solubility of pectin can be adjusted (page 7, second para below General Discussion). Daly may not expressly teach the use of fruit fiber. However, its teaching that the low methoxyl pectins (degree of esterification of less than 50%) which can be obtained from fruit peels is a suggestion that the claimed products can be made using the fruit fibers having low methoxyl directly instead of the isolated pectin.
Daly does not expressly teach the use of fruit fiber that has a content of water-soluble pectin between 2 and 8 wt% as in claims 1-2, the percentages as in claim 29, some of the products in claims 1-2, and 7-28, and the functions and properties as in claims 3 and 5-6.
Schmidt et al teaches adhesive for dental prostheses consisting mainly of pectins which are low-esterified pectins (Abstract; page 2, para 4 below subtitle: “Particularly noteworthy are”; and page 5, claim 1 of Schmidt; limitation of claim 1-adhesives, low methoxyl pectin; part of the limitation of claim 28 regarding low-methoxyl pectin in a denture adhesive as required by claim 4).
Christiansen teaches the use of low methoxyl pectins in bakery jams. The gel structure is stronger and bake stable (Abstract; para 0002, 0007, 0009, 0011-0012, 0031-0032 and claims 1-4; limitation of claim 1-commodity goods, low methoxyl pectin; limitation of claim 3-improving agent for baking stability; part of the limitation of claim 28 regarding low-methoxyl pectin in food product).
In view of the teachings of the prior art, one of ordinary skill in the art will use an activatable de-esterified citrus fiber and apple fiber and adjust the content of water-soluble pectin as in claims 1-2, 4 and 28.
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, there is a suggestion to use pectins including low-methoxyl pectins in a method of preparing products like adhesives, jams and pharmaceuticals. Adjusting the water solubility of the pectins is also known in the art.
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 make the products via the claimed method, and the products as in claims 28 and 29 since the prior art teaches the advantages of using pectins in such products (Christiansen-para 0010). Moreover, Christiansen teaches that there is need in the art for a pectin material that imparts performance characteristics for its application (para 0010). Therefore, one of ordinary skill in the art will substitute fruit fibers with the claimed pectin, which is a pectin material, as an alternative with properties ideal for the uses taught in the prior art. Such is well within the skill level of the artisan to recognize and perform.
One of ordinary skill in the art can use the amounts disclosed in the prior art to adjust the percentage of the fruit fiber content as in claims 1-4, 7, 28 and 29 depending on the type of product in which it is used through routine optimization.
See, In re Boesch and Slaney (CCPA) 204 USPQ 215. In addition, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”). This is what research chemists do, optimization of result-effective variables through routine experimentation (MPEP 2144.05 IIA and B).
Response to Applicant’s Remarks
Applicant has traversed the rejection of claims 1-4, 7, 28-29 under 35 U.S.C. 103 as being unpatentable over Daly et al (WO 2011/041384 A2) in view of Schmidt et al (DE 19815547 C1, machine English translation, pages 1-5) and further in view of Christiansen et al (US 2008/0166465 A1) arguing that claim 1 is drawn to a method of preparing a product comprising providing an activatable, de-esterified, pectin-converted fruit fiber. Daly fails to teach at least this feature of claim 1. Daly teaches a composition comprising a pectin compound. The present invention relates to a completely different biomaterial, namely a fruit fiber that is isolated form the non-lignified plant cellular wall, which mainly consists of cellulose, with hemicellulose and pectin. The claimed fiber is a multicomponent structural material.
Schmidt teaches only use of isolated pectins. It is silent regarding the use of fruit fibers. Schmidt requires amidation of pectin, whereas claim 1 relates to de-esterified pectin. Christiansen relates to use of pectin for heat-stable bakery jams. Christiansen is also silent regarding the use of fruit fibers. For these reasons the rejection should be withdrawn (Remarks, pages 16-19).
Applicant’s arguments are not persuasive. Daly teaches that pectin can be made water soluble by adjusting the ratio of the amide to acid groups. Daly teaches the use of low-methoxy pectin for making a drug-pectin combination, for encapsulating drugs, and for making pesticide and nutraceuticals. Daly also teaches the application of pectins in the agricultural market like fertilizers. The pectins can be obtained from fruit peels. Daly may not expressly teach the use of fruit fiber. However, its teaching that the low methoxyl pectins (degree of esterification of less than 50%) which can be obtained from fruit peels is a suggestion that the claimed products can be made using the fruit fibers having low methoxyl directly instead of the isolated pectin.
Schmidt and Christiansen also teach the use of low methoxyl pectins in the claimed products. Therefore, in view of Daly, Schmidt and Christiansen, the artisan would get the suggestion that a fruit fiber having the low methoxyl water-soluble pectin can be used directly instead of the isolated pectins for making the claimed products. Amidation is just for reducing the percentage of methoxylation to get to the low methoxyl pectin. This will be understood by the artisan as using fruit fiber having low methoxyl pectin having degree of esterification of less than 50% in view of Daly. One of ordinary skill in the art will also know that in order to get low methoxyl pectin the high methoxyl pectin in the fruit fiber has to be de-esterified to get the degree of esterification less than 50%. The artisan can adjust the content of water-soluble pectin to be in the range of 2 and 8 wt% according to the use in the products taught in the prior art since Daly teaches that pectin from citrus has a DE of 8.9% (low methoxyl pectin) and that from apple is 9.9% which is close to the percentage range recited in claim 1 (Daly page 18).
The artisan will use fruit fibers having low methoxyl pectin with a degree of esterification of less than 50% for making the claimed products because the teachings of the cited prior art indicate that it is the property of the pectin that is mainly important for its use in so many different applications. The artisan would have a reasonable expectation of success in using fruit fibers containing the water-soluble low methoxyl pectin for preparing the claimed products. Moreover, Christiansen teaches that there is need in the art for a pectin material that imparts performance characteristics for its application. Therefore, one of ordinary skill in the art will substitute fruit fibers with the claimed pectin, which is a pectin material, as an alternative with properties ideal for the uses taught in the prior art. Such is well within the skill level of the artisan to recognize and perform.
Claim(s) 1-29 are rejected under 35 U.S.C. 103 as being unpatentable over Clark et al (WO 2019/048715 A2; of record) in view of Schmidt et al (DE 19815547 C1, machine English translation, pages 1-5; of record) and further in view of Christiansen et al (US 2008/0166465 A1; of record).
Clark’s invention deals with pectin-containing compositions and its uses (page 1 lines 5-7). The pectin fibrils are water -soluble (page 2, line 29 through page 3, line 8). The pectin includes pectin fibers obtained from apple and is activatable (page 8, line 31 through page 9, line1; and page 9, lines 7-14). The activatable pectin can be used can be used in formulations and can be present in an amount of about 5wt% based on the weight of the formulation (page 22, lines 30-32; part of the limitation of claim 1 regarding water-soluble pectin; percentage as required by claim 28 since it uses the pectin according to claim 4, and percentage as in claim 29). The pectin can be used for preparing several formulations (page 4, line 15 through page 7, line 10; page 23, line 15 through page 24, line 8; and page 33-48; products as in claims 1-4, 7-8, 11-12, 28). 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 between 2 and 8wt% of the activated water-soluble pectin (as in claims 1-2). Since the pectin is used in several formulations as claimed it should have the functions recited in claim 3. The activated pectin of Clark has an apparent viscosity of from about 150mPas to about 3500mPas when measured in aqueous solution (page 3, lines 16-18). In view of this the artisan can adjust the viscosity as in claim 5, part h and as in claim 6, part h, depending on the product in which the fiber is used. This can be done to obtain the fiber having the properties as in claims 5 and 6, parts a-g and i-o depending on the product in which the fiber is used. In view of the teachings of Clark regarding the various uses of pectin containing fruit fiber, one of ordinary skill in the art would also use it in a method of preparing the products as in claims 1-2 and 7-28.
Clark does not expressly teach the use of a low methoxyl pectin containing fruit fiber as in claim 1, and apple fiber in the claimed products as required by claim 28 since claim 28 uses the pectin according to claim 4.
Schmidt et al teaches adhesive for dental prostheses consisting mainly of pectins which are low-esterified pectins (Abstract; page 2, para 4 below subtitle: “Particularly noteworthy are”; and page 5, claim 1 of Schmidt; part of the limitation of claims 1-2 regarding low methoxyl pectin and claim 28 regarding low-methoxyl pectin in a denture adhesive).
Christiansen teaches the use of low methoxyl pectins in bakery jams. The gel structure is stronger and bake stable (Abstract; para 0002, 0007, 0009, 0011-0012, 0031-0032 and claims 1-4 of Christiansen; limitation of claim 1-commodity goods according to definition in specification; part of the limitation of claims 1-2, and 28 regarding low-methoxyl pectin in food product).
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, there is a suggestion to use water soluble pectins in the claimed products and in the claimed percentage (Clark), and low methoxyl pectins are also known in the art to be used in some of the claimed products (Schmidt and Christiansen).
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 make the products as in the instant claims since the prior art teaches the advantages of using pectins in such products (Christiansen-para 0010). Clark also teaches the benefits of using the claimed pectins in various formulations (see pages 33-48 where Clark teaches the benefits obtained in each formulation). Moreover, Christiansen teaches that there is need in the art for a pectin material that imparts performance characteristics for its application. Therefore, one of ordinary skill in the art will substitute fruit fibers with the claimed pectin, which is a pectin material, as an alternative with properties ideal for the uses taught in the prior art. Such is well within the skill level of the artisan to recognize and perform.
One of ordinary skill in the art can use the amounts disclosed in the prior art as a starting point to adjust the percentage of the fruit fiber as in claims 28-29 through routine optimization.
See, In re Boesch and Slaney (CCPA) 204 USPQ 215. In addition, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”). This is what research chemists do, optimization of result-effective variables through routine experimentation (MPEP 2144.05 IIA and B).
Response to Applicant’s Remarks
Applicant has traversed the rejection of Claim(s) 1-29 under 35 U.S.C. 103 as being unpatentable over Clark et al (WO 2019/048715 A2) in view of Schmidt et al (DE 19815547 C1, machine English translation, pages 1-5) and further in view of Christiansen et al (US 2008/0166465 A1) arguing that claim 1 is drawn to a method of preparing a product comprising providing an activatable, de-esterified, pectin-converted fruit fiber. Clark is directed to pectin-containing biomass composition and therefore toa complex fiber matrix comprising, inter alia, recoverable pectin. Clark does not disclose or contemplate a pectin-converted fruit fiber. The present invention relates to a completely different biomaterial, namely fruit fiber consisting mainly of cellulose, with hemicellulose and pectin. Clark contains no teaching or suggestion to use such a material.
Clark teaches a fundamentally different activation process. Clark’s activating solution includes not only acid but also alcohol. The present invention does not require alcohol and relies on different conversion concept. Clark teaches an already activated pectin-containing biomass, not an activatable fiber. Clark does not provide a clear or independent disclosure of the pectin recovery as such, nor does it teach controlling or selecting a defined content of water-soluble pectin within the biomass as required by the present claims. Clark teaches that the pectin present in the biomass is a high-methoxy pectin (page 21, lines 17-19), not low-methoxy pectin as required. Therefore, Clark teaches away from the claimed invention.
Christiansen and Schmidt are directed to isolated pectins and their functional modifications to achieve specific properties, whereas Clark operates within the conceptual framework of a biomass or a fiber matrix, where pectin is only one structural component among several. The combination of the cited references is based on impermissible hindsight and the combination fails to teach each and every limitation of claim 1.
Independent claim 2 is also drawn to a method of preparing a product comprising providing an activatable, de-esterified, pectin-converted fruit fiber, wherein the activatable, de-esterified, pectin-converted fruit fiber has a content of water-soluble pectin of 10 to 35wt% and wherein the pectin has a degree of esterification of less than 50%. For the reasons presented above for claim 1, the art cited fails to teach the features of claim 2. For these reasons claims 1-29 are not obvious (Remarks-pages 20-22).
Applicant’s arguments are not persuasive. Clark’s invention deals with pectin-containing compositions and its uses. The pectin fibrils are water-soluble. The pectin includes pectin fibers obtained from apple and is activatable. The activatable pectin can be used can be used in formulations and can be present in an amount of about 5wt% based on the weight of the formulation and several formulations are taught. Clark teaches the use of fibrils which are water soluble, which can be obtained from apple. In view of this teaching the artisan would find it obvious to use the fruit fibrils or fibers which contain the pectin. The activation process using acid and alcohol of Clark is not of patentable importance since the claims are not drawn to the process of activation.
Even though Clark does not teach low methoxyl pectin, Christiansen and Schmidt teach the use of low-methoxyl pectins. According to the instant specification, a low methoxyl pectin is one which has a degree of esterification of less than 50% (page 10, last para). Therefore, pectin taught by Christiansen and Schmidt should have a degree of esterification of less than 50%. Clark teaches the use of biomass containing pectin and cellulose. This teaching is an indication to the artisan that a fruit fiber containing the same low methoxyl pectin as in Christiansen and Schmidt can also be used to prepare the claimed products. Clark’s teaching suggests selecting a defined content of water-soluble pectin within the biomass as required by the present claims. According to Clark the activatable pectin can be used can be used in formulations and can be present in an amount of about 5wt% based on the weight of the formulation. This falls within the range recited in claims 1 and 2. Therefore, the artisan can use fruit fibers having the same activatable de-esterified fruit fiber and pectin content and the degree of de-esterification as claimed.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time of filing of the claimed invention, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Simply because Clark teaches biomass containing pectin fibril does not discredit the claimed method as clearly fruit fiber is a selectable option. “The prior art’s mere disclosure of one alternative does not constitute a teaching away from any of the other alternatives because such disclosure does not criticize, discredit, or otherwise discourage the use of fruit fiber as claimed”… In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
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 1-29 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; of record), and as being unpatentable over claims 1-29 of copending Application No. 18/040429 (‘429; of record), and as being unpatentable over claims 2-23 of copending application No. 18/009,301 (‘301; of record), and as being unpatentable over claims 1-27 of co-pending application No. 18/009,296 (‘296; of record) in view of Clark et al (WO 2019/048715 A2; of record) in view of Schmidt et al (DE 19815547 C1, machine English translation, pages 1-5; of record) and further in view of Christiansen et al (US 2008/0166465 A1; of record). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant Claims 1 and 3-27 are drawn to a method of preparing various products by providing an activatable, de-esterified fruit fiber wherein the fruit fiber has a water-soluble pectin content of between 2 and 8 wt% and wherein the pectin is low methoxyl pectin having a degree of esterification of less than 50%, the fiber being citrus or apple fiber, its various functions and properties, and various products made. Claim 2 is drawn to the use of the said fiber in construction area, in extraction by drilling boreholes and in agriculture. Claims 28-29 products which have the fruit fiber according to claim 4 and the percentage of the fruit fiber in the said products.
The copending claims of ‘165, ‘429, ‘301 and ‘296 are also drawn to the use of activated pectin-containing fibers for preparing the same products, its various functions and properties.
The teachings of the secondary references are set forth above.
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; ‘301 and ‘296 teach 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 since Clark teaches the benefits of using them in various products as claimed.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Response to applicant’s Remarks
Regarding the double patenting rejection(s) of record applicant has requested that they be held in abeyance until the resolution of the remaining issues associated with prosecution of the Subject Application. The filing of a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s/patents claims is necessary. Since neither has been made of record the rejection(s) are being maintained.
Conclusion
Pending Claims 1-29 are rejected
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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