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 without traverse of Group I, claims 1-10 and 22-25, in the reply filed on September 18, 2025 is acknowledged.
Claims 11-21 and 26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
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.
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.
Claims 1-10 and 22-25 are rejected under 35 U.S.C. 103 as being unpatentable over Goto et al. (JP H07274873 A; Oct. 24, 1995; See English Translation).
Regarding claim 1, Goto discloses a composition comprising 15-80% by weight insoluble corn fiber ([0006], [0011], [0046]), thus overlapping the claimed range of at least 50% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Goto further teaches that the composition has a water absorption capacity of 5 times the weight of the composition([0010], [0038]), thus falling within the claimed range of 2 to 6 times the weight of the composition.
With respect to the sulphur dioxide content being less than 40 ppm, Goto does not specifically teach the composition having a sulphur dioxide content, and therefore would meet the claimed range of less than 40 ppm.
Further, the instant specification recites that the composition is treated with a neutralizing agent for a period of time to reduce the sulphur dioxide content after the wet milling process. Goto teaches a similar process, where the corn is wet milled and further treated with a neutralizing agent ([0008]-[0021]). Therefore, the composition of Goto would be expected to have a sulphur dioxide content as claimed absent a showing otherwise.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
In the instant case, for the reasons stated above, the composition of Goto is expected to have the claimed sulphur dioxide content absent a showing otherwise.
Regarding claim 2, Goto teaches the composition as described above, comprising insoluble corn fiber, but fails to teach that the insoluble corn fiber comprises at least 50% by weight hemicellulose.
However, as Goto teaches insoluble corn fiber, which is known in the art to comprise hemicellulose, the insoluble corn fiber of Goto would necessarily comprise a content of hemicellulose. With respect to the exact amount, it would have been obvious to one of ordinary skill in the art to vary the processing conditions of the corn fiber to result in a fiber fraction having at least 50% by weight hemicellulose. This is merely routine experimentation that is well within the ordinary skill in the art.
Regarding claim 3, as stated above, Goto teaches that the composition has a water absorption capacity of 5 times the weight of the composition([0010], [0038]), thus falling within the claimed range of 3 to 5 times the weight of the composition.
Regarding claim 4, as stated above, Goto does not specifically teach the composition having a sulphur dioxide content, and therefore would meet the claimed range of less than 20 ppm.
Further, the instant specification recites that the composition is treated with a neutralizing agent for a period of time to reduce the sulphur dioxide content after the wet milling process. Goto teaches a similar process, where the corn is wet milled and further treated with a neutralizing agent ([0008]-[0021]). Therefore, the composition of Goto would be expected to have a sulphur dioxide content as claimed absent a showing otherwise.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
In the instant case, for the reasons stated above, the composition of Goto is expected to have the claimed sulphur dioxide content absent a showing otherwise.
Regarding claims 5-6, Goto does not specifically teach the composition having mycotoxin contaminants, such as zearalenone, and therefore would meet the claimed language of being substantially free of mycotoxins and having less than 100 ug/kg of zearalenone absent a showing otherwise.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
In the instant case, for the reasons stated above, the composition of Goto is expected to be substantially free of mycotoxins and have less than 100 ug/kg of zearalenone absent a showing otherwise.
Further, it would have been obvious to one of ordinary skill in the art to use corn and/or process it in such a way that is substantially free of mycotoxins so that it is safe for human consumption.
Regarding claim 7, Goto discloses the composition as described above, and further teaches that the insoluble corn fiber preferably passes through a 24-mesh sieve, which is about 707 um ([0008]-[0021], [0026]). Therefore, it would have been obvious for the particle size of the composition is Goto to be less than 24 mesh, or less than 707 um, thus falling within the claimed range of 50 um to 1.5 mm.
Regarding claim 8, Goto does not teach specifically that the composition comprises water. Goto, however, teaches that the composition comprises protein, fiber, oil, and 3 to 6% by weight of other ingredients ([0011]). Therefore, at most, if water were present, the water would be present in an amount of 3 to 6% by weight, which falls within the claimed range of less than 15% by weight.
Regarding claim 9, Goto discloses a composition comprising 15-80% by weight insoluble corn fiber ([0006], [0011], [0046]), thus overlapping the claimed range of at 50-80% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claim 10, Goto further teaches that the composition is obtained from a stream from the wet-milling processing of corn ([0008]-[0021]).
Further, the examiner notes that applicant is present process limitations in a product claim. As stated in MPEP 2113: “[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.”
Regarding claim 22, Goto discloses a composition comprising 15-80% by weight insoluble corn fiber ([0006], [0011], [0046]), thus overlapping the claimed range of at least 55% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Goto further teaches that the composition has a water absorption capacity of 5 times the weight of the composition([0010], [0038]), thus falling within the claimed range of 2 to 6 times the weight of the composition.
With respect to the sulphur dioxide content being less than 40 ppm, Goto does not specifically teach the composition having a sulphur dioxide content, and therefore would meet the claimed range of less than 40 ppm.
Further, the instant specification recites that the composition is treated with a neutralizing agent for a period of time to reduce the sulphur dioxide content after the wet milling process. Goto teaches a similar process, where the corn is wet milled and further treated with a neutralizing agent ([0008]-[0021]). Therefore, the composition of Goto would be expected to have a sulphur dioxide content as claimed absent a showing otherwise.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
In the instant case, for the reasons stated above, the composition of Goto is expected to have the claimed sulphur dioxide content absent a showing otherwise.
Regarding claim 23, as stated above, Goto does not specifically teach the composition having a sulphur dioxide content, and therefore would meet the claimed range of less than 10 ppm.
Further, the instant specification recites that the composition is treated with a neutralizing agent for a period of time to reduce the sulphur dioxide content after the wet milling process. Goto teaches a similar process, where the corn is wet milled and further treated with a neutralizing agent ([0008]-[0021]). Therefore, the composition of Goto would be expected to have a sulphur dioxide content as claimed absent a showing otherwise.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
In the instant case, for the reasons stated above, the composition of Goto is expected to have the claimed sulphur dioxide content absent a showing otherwise.
Regarding claim 24, Goto does not specifically teach the composition having mycotoxin contaminants, such as zearalenone, and therefore would meet the claimed language of being substantially free of mycotoxins and having less than 90 ug/kg of zearalenone absent a showing otherwise.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
In the instant case, for the reasons stated above, the composition of Goto is expected to be substantially free of mycotoxins and have less than 90 ug/kg of zearalenone absent a showing otherwise.
Further, it would have been obvious to one of ordinary skill in the art to use corn and/or process it in such a way that is substantially free of mycotoxins so that it is safe for human consumption.
Regarding claim 25, Goto does not teach specifically that the composition comprises water. Goto, however, teaches that the composition comprises protein, fiber, oil, and 3 to 6% by weight of other ingredients ([0011]). Therefore, at most, if water were present, the water would be present in an amount of 3 to 6% by weight, which falls within the claimed range of less than 12% by weight.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791