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 in response to the application filed on October 14, 2022. The earliest effective filing date of the application is October 16, 2015.
Priority
The present application is a 371 National Stage Application of PCT/IN2016/050353 which has a filing date of October 17, 2016.
Status of Application
The amendment filed July 6, 2026 with the Remarks has been entered. The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 27, 28, and 30 – 32
Withdrawn claims: None
Amended claims: 27 and 30 – 32
Previously cancelled claims: 1 – 26
Newly cancelled claims: 29 and 33 – 55
New claims: None
Claims currently under examination: 27, 28, and 30 – 32
By not repeating the previously presented objection/rejection(s), it is sufficiently clear that said objection/rejection(s) are withdrawn.
Claim Objections
Claim 27 is objected to because of the following informalities:
Claim 27 recites steps for preparing jackfruit flour, which should be rewritten as
(i) obtaining jackfruit…
(ii) isolating the combination of jackfruit flesh…
(iii) cutting the jackfruit…
(iv) placing the chunks…
(v) establishing a temperature gradient…
(vi) extracting the chunks…
(vii) grinding the chunks…
to properly enumerate the steps.
Appropriate correction is required.
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.
Claims 27, 28, and 30 – 32 are rejected under 35 U.S.C. 103 as being unpatentable over Slimak (U.S. Patent No. 5,789,012) in view of Adepeju et al. (Functional and pasting characteristics of breadfruit (Artocarpus altilis) flours. African Journal of Food Science. Vol 5. Iss 9. Pp 529 – 535. (2011) – IDS Filed on October 23, 2025), Patil et al. (Estimation of pectin content in Jackfruit (Artocarpus heterophyllus). The Asian Journal of Horticulture. Vol 6. Iss 2. Pp. 536 – 537. (2011)), Greensmith (4 – Dryers In: Practical Dehydration 2nd Edition. (1998)), and Sebastian et al. (Designing Dryers using Heat and Mass Exchange Networks: An Application to Conveyor Belt Dryers. Institution of Chemical Engineers. Vol 74. Pp. 934 – 943.(1996)).
Regarding claim 27, Slimak teaches methods of making hypoallergenic flours from fruits such as jackfruit and methods of making food comprising said flours (Abstract; col. 40, lines 8 – 60).
Flour
Slimak teaches a method of making breadfruit flour comprising the steps of:
(a) peeling firm, green breadfruit under running water, removing any spots, and other undesirable areas;
(b) rinsing briefly in distilled water; removing excess water; not soaking;
(c) shredding to desired size, place on glass or metal trays;
(d) air drying at 145 °F for 8 – 12 hours, preferably 10 hrs;
(e) comminuting shreds into a moderately fine flour product (col. 79, Example 163).
Slimak is silent with respect to precisely what portions of the breadfruit, aside from the undesirable peel, are included in the flour.
Adepeju also teaches about making breadfruit flour. Adepeju teaches the breadfruit used to make the whole flour was cleaned, peeled, and sliced, where no interior section was removed (p. 530, Preparation of breadfruit flour). This illustrates that the whole flour is flour made from all the internal components of the source, minus the inedible hull/husk (i.e. outer protective covering).
Slimak and Adepeju are combinable because they are concerned with the same field of endeavor, namely, flours made from fruits of the Artocarpus genus (i.e., jackfruit and breadfruit). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have prepared the breadfruit flour with the all of the internal components of the source, minus the hull or husk, as taught by Adepeju in the method of Slimak because Adepeju provides that it was known for all of the internal components of the breadfruit, minus the hull or husk, to have been used and published at the time of filing, which means it was within the general skill of a worker in the art to select the internal components of the breadfruit, minus the hull or husk, for use in making breadfruit flour because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP § 2144.07.
Slimak does not teach the breadfruit flour of Example 163 is made with jackfruit.
Adepeju provides a method of making whole flour from a fruit with a similar structure to jackfruit which is cleaned, peeled, and sliced, wherein none of the flesh, seed or strands are removed before making the flour with the entire interior section (p. 530, Preparation of breadfruit flour). The figure below illustrates the structural similarity of jackfruit (Artocarpus heterophyllus) and breadfruit (Artocarpus altilis).
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Jackfruit (Artocarpus heterophyllus) Breadfruit (Artocarpus altilis)
In the case of jackfruit, the outer shell would be the rind, whereas the internal components would be the seeds, avrils/flesh, and rags/strands, as shown above. These interior parts are similar to those in the breadfruit, as shown above.
Since Slimak teaches making whole flours from starchy fruit from the Artocarpus genus (i.e., jackfruit and breadfruit), it would be reasonable to expect that jackfruit flour would consist of all the interior parts of the fruit: flesh (avrils), jackfruit seeds and jackfruit strands, as claimed, because Adepeju teaches that all the interior parts of fruit from the Artocarpus genus are used to make whole flour.
It would have been obvious to one of skill in the art, before the effective filing date of the invention, to further modify the method of making breadfruit flour to replace the breadfruit with jackfruit because Adepeju teaches the use of all the interior parts of fruit from the Artocarpus genus (i.e., jackfruit and breadfruit) as being suitable for similar intended uses, including methods of making whole flours from fruit of the Artocarpus genus (i.e., jackfruit and breadfruit). See § MPEP 2144.07. Furthermore, MPEP § 2144.06.II states an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). One of ordinary skill in the art would have substituted breadfruit with jackfruit before the effective filing date of the application because jackfruit, like breadfruit, is a fruit of the Artocarpus genus, with similar anatomy. Additionally, it would have been obvious to try substituting breadfruit with jackfruit because Slimak explicitly states the flours of the instant invention may be made from jackfruit (Abstract; col. 40, lines 8 – 60).
By following the modified method of Slimak, the resulting jackfruit flour consists of:
i) particles of jackfruit flesh,
ii) particles of jackfruit seeds,
iii) particles of jackfruit strands, and
iv) moisture.
Nutritional Value and Properties of Whole Jackfruit Flour
Slimak and Adepeju are silent with respect to the nutritional composition of the jackfruit flour.
Patil teaches as a jackfruit ripens, the pectin content decreases as it converts to sugar (p. 536, paragraph 7; p. 537, paragraph 1; Table 1). Patil teaches the ripeness of a jackfruit is a significant indicator to the specific nutritional content of a jackfruit. Therefore, it would have been within the one of ordinary skill in the art’s ability before the effective filing date of the invention to have selected a jackfruit with a specific ripeness to produce a jackfruit flour with the desired sweetness and pectin (i.e., soluble fiber) content.
The instant specification concurs that jackfruit ripeness affects its nutritional content ([00187]). Furthermore, the instant specification shows that flours produced from jackfruit fruits, seeds, and strands alone are able to achieve the precisely claimed nutritional profile, indicating jackfruit at a certain ripeness may produce such flours ([00188], Tables 1 and 2).
While Slimak and Adepeju do not teach the flour comprises the precisely claimed nutritional profile, one of ordinary skill in the art would have adjusted the ripeness of the jackfruit used to produce the flour in the modified method of Slimak during routine optimization to find the jackfruit flour with the desired sweetness and soluble fiber (i.e., pectin) content. MPEP §2144.05(II) states where 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). The precisely claimed nutritional composition of:
about 0.3-1.5 w/w% total fats only from the jackfruit flesh, jackfruit seeds, jackfruit strands or combinations thereof; wherein total fats do not comprise detectable levels of saturated fats;
about 7-9 w/w% protein only from the jackfruit flesh, jackfruit seeds, jackfruit strands or combinations thereof, and
about 78-82 w/w% of carbohydrates only from the jackfruit flesh, jackfruit seeds, jackfruit strands or combinations thereof, consisting of:
about 12-16 w/w% of dietary fibers only from the jackfruit flesh, jackfruit seeds, jackfruit strands or combinations thereof, consisting of: about 3 to 6 w/w% soluble fiber only from the jackfruit flesh, jackfruit seeds, jackfruit strands or combinations thereof, about 8 to 12 w/w% insoluble fiber only from the jackfruit flesh, jackfruit seeds, jackfruit strands or combinations thereof;
about 3 to 11 w/w% of sugar only from the jackfruit flesh, jackfruit seeds, jackfruit strands or combinations thereof; and
other carbohydrates, only from the jackfruit flesh, jackfruit seeds, jackfruit strands or combinations thereof;
would thus be obvious.
Flour Particle Size
Slimak teaches the flour may have a particle size from 0.001 to 0.02 inches (i.e., 25.4 – 508 µm – col. 26, lines 21 – 33; col. 38, lines 40 – 45).
The range of jackfruit flour particle sizes, 25.4 – 508 µm, as disclosed by Slimak, overlaps with the claimed range of 200 – 1000 µm. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Contacting Flour with Food
Slimak teaches an exemplary method of making a sweet potato pancake mix comprising mixing 453g flour, 8.7g salt, and 10.7g sweet potato baking powder (col. 44, Example 6).
While Slimak does not teach the flour is the modified jackfruit flour of Slimak, MPEP § 2144.06.II states an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). One of ordinary skill in the art would have substituted the generically recited flour with the modified jackfruit flour of Slimak before the effective filing date of the application because the modified jackfruit flour of Slimak, like the generically recited flour, is a composition known to be suitable to use as a flour.
By mixing (i.e., contacting) 453g of the modified flour of Slimak (i.e., said flour or dough composition) with 8.7g salt and 10.7g sweet potato baking powder (i.e., food), the modified flour of Slimak (i.e., said flour composition) makes up 95.9 wt% of the pancake mix.
Method of Preparing Jackfruit Flour
The modified method of Slimak as taught above teaches a method of making jackfruit flour comprising the steps of:
(i) peeling firm, green jackfruit (i.e., obtaining jackfruit) under running water;
(ii) removing any spots, and other undesirable areas (i.e., isolating a combination of jackfruit flesh, seeds, and strands from undesirable areas such as jackfruit hull) and rinsing briefly in distilled water; removing excess water; not soaking;
(iii) shredding to desired size, place on glass or metal trays (i.e., cutting the jackfruit flesh, seeds, and strands into chunks):
(iv) drying; and
(v) comminuting shreds into a moderately fine flour product (i.e., grinding the combination of jackfruit flesh, seeds, and strands).
With respect to the limitation that the obtained jackfruit has seeds which will slip out of the fruit when cut by half, it would be reasonable to expect that similar components have similar functionality. MPEP § 2112.01.I states where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In this case, the jackfruit obtained by Slimak and the jackfruit obtained in claim 54 are substantially identical in structure, therefore they inherently have the same properties, including the functionality of having seeds which will slip out of the fruit when cut by half.
Furthermore, the instant specification states jackfruit parts for preparation of flour were physically assessed and selected based on maturity level when the fruit does not have a sweet taste, has a neutral aroma, and has hard seeds which will slip out of the fruit when cut by half ([00187]). Therefore, the precisely claimed seed behavior requires a certain maturity of the fruit based on ripeness, wherein the seeds will slip out of the fruit when cut in half.
Regarding the precisely recited limitations with respect to drying the jackfruit chunks on a multi pass conveyor, Slimak teaches use of conveyors is a conventional means of drying ([0499]).
Slimak does not teach the conveyor is a multi pass conveyor.
Greensmith teaches multi pass conveyors are known to be suitable for the dehydration (i.e., drying) of fruits (p. 14, Table 4.2). Greensmith teaches multi pass conveyors are known to have a top and bottom layer (p. 15, paragraphs 2 – 3).
Slimak and Greensmith are combinable because they are concerned with the same field of endeavor, namely, fruit drying methods. It would have been obvious to one of skill in the art, at the time of filing the invention to select a multi pass conveyor for the drying step (iv) in the method of making jackfruit flour, as claimed, because Greensmith provides that it was known for multi pass conveyors to have been successfully used and published at the time of filing, which means it was within the general skill of a worker in the art to select a multi pass conveyors as the dryer, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP § 2144.07.
While Greensmith is silent regarding whether the fruits and vegetables are fed on the top layer, Sebastian teaches multiple conveyor dryers (i.e., multi pass conveyors) are fed at the top layer (Figure 2).
Slimak and Sebastian are combinable because they are concerned with the same field of endeavor, namely, conveyor drying methods. It would have been obvious to one of skill in the art, at the time of filing the invention to feed the jackfruit into the multi pass conveyor at the top layer, as claimed, because Sebastian provides that it was known for top layer feeding into multi pass conveyors to have been successfully used and published at the time of filing, which means it was within the general skill of a worker in the art to feed the jackfruit into the multi pass conveyor at the top layer, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP § 2144.07.
While the modified method of Slimak is silent with respect to a temperature gradient between the top and bottom layer being the precisely claimed 75 – 50 °C, Greensmith teaches the temperatures of the multi pass conveyor can be infinitely varied on the different levels (p. 13, paragraph 6). Greensmith also provides an exemplary temperature gradient which spans 86 – 50 °C for dehydrating onions (p. 15, paragraphs 2 – 3).
While the modified method of Slimak does not teach the temperature gradient between the top and bottom layers of the multi pass conveyor is 75 – 50 °C, one of ordinary skill in the art would have adjusted the temperature gradient between the top and bottom layers of the multi pass conveyor during routine optimization to find the jackfruit chunks with the desired moisture content. MPEP §2144.05(II) states where 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). The claimed temperature gradient between the top and bottom layers of the multi pass conveyor, 75 – 50 °C, would thus be obvious.
Greensmith teaches after dehydrating through the multipass conveyor, the fruits are removed (i.e., extracted) with a lower moisture level than they had when they entered the conveyor (p. 14, Table 4.2; p. 15 Table 4.3).
The modified method of Slimak does not discuss the ripeness of the jackfruit, however, in this case, the teaching of the use of jackfruit encompasses jackfruit that is ripe or unripe.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have selected a jackfruit with the specifically claimed type of ripeness, wherein the seeds will slip out of the fruit when cut in half, as claimed, in the method of Slimak because in this specific case the various permutations of types of jackfruit in the generic are so small (ripe or unripe) that the teaching is as comprehensive and fully as if it had written the name of each permutation. See MPEP § 2144.08.II.4 and MPEP § 2143.I.E.
With respect to the particle size to which the jackfruit flour is ground, Slimak teaches the flour may have a particle size from 0.001 to 0.02 inches (i.e., 25.4 – 508 µm – col. 26, lines 21 – 33; col. 38, lines 40 – 45).
The range of jackfruit flour particle sizes, 25.4 – 508 µm, as disclosed by Slimak, overlaps with the claimed range of 200 – 1000 µm. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Therefore, the modified method of Slimak teaches a method of preparing jackfruit flour comprising the steps of:
(i) peeling firm, green jackfruit (i.e., obtaining jackfruit, wherein said jackfruit seeds which will slip out of the fruit when cut by half) under running water;
(ii) removing any spots, and other undesirable areas (i.e., isolating a combination of jackfruit flesh, seeds, and strands from undesirable areas such as jackfruit hull) and rinsing briefly in distilled water; removing excess water; not soaking;
(iii) shredding to desired size, place on glass or metal trays (i.e., cutting the jackfruit flesh, seeds, and strands into chunks):
(iv) placing the shredded jackfruit (i.e., chunks) on a multi pass conveyor comprising a top and bottom layer;
(v) establishing a temperature gradient between the top and bottom layers of the multi pass conveyor for drying the shredded jackfruit (i.e., chunks), wherein the temperature gradient is 75-50 °C;
(vi) removing the shredded jackfruit from the conveyor when they are dried (i.e., extracting the chunks when the moisture content decreases);
(vii) comminuting shreds into a moderately fine flour product with particle size in the range of 200 – 508 µm (i.e., grinding the combination of jackfruit flesh, seeds, and strands in the range of 200 – 508 µm to prepare jackfruit flour).
Preamble
Finally, with respect to the preamble of the claim “A method of reducing the glycemic load of food”, MPEP § 2111.02.II teaches, “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” In the instant case, the noted preamble merely states the purpose or intended use of the claimed method.
Regarding claim 28, Slimak teaches the flour has a moisture content of 3 – 5% (col. 38, lines 40 – 45).
Regarding claim 30, the instant specification states "fortified flour" refers to flour (such as wheat for instance) to which various nutrients or other flours are added to improve its nutritive value ([0029]).
Slimak teaches any of the flours described may generally be mixed with each other as well as any other more conventional flours such as wheat, corn, millet, milo, soy, lentil, and the like (col. 38, lines 64 – 67; col. 39, lines 1 – 4).
Regarding claim 31, the modified pancake mix of Slimak as described above is interpreted to be a fortified flour.
Regarding claim 32, Slimak teaches any of the flours described may generally be mixed with each other as well as any other more conventional flours such as wheat, corn, millet, milo, soy, lentil, and the like (col. 38, lines 64 – 67; col. 39, lines 1 – 4). One of ordinary skill would have combined jackfruit flour with any of the recited flours above, including wheat flour, while mixing the ingredients for the modified pancake mix of Slimak to form a pancake mix (i.e., fortified flour) comprising wheat flour and 10 – 95.9 wt% jackfruit flour.
Response to Arguments
Applicant's arguments filed July 6, 2026 have been fully considered but they are not persuasive.
Applicant argues the combination of Slimak, Adepeju, and Patil alone does not teach the amended method of the instant invention (p. 8, paragraph 2; p. 9, paragraphs 2 – 3).
Applicant’s argument has been fully considered and is persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of Slimak, Adepeju, Patil, Greensmith, and Sebastian.
Applicant argues the references do not teach a method of reducing the glycemic load of food (p. 8, paragraphs 3 – 4).
Applicant’s argument has been carefully considered however the argument is not persuasive. As stated above, MPEP § 2111.02.II teaches, “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” In the instant case, the noted preamble merely states the purpose or intended use of the claimed method. Therefore, while the cited references are silent regarding the ability of the jackfruit flour to reduce glycemic load of food, such a recitation in the claims is not considered to be limiting.
Applicant argues the claimed flour possesses high fiber content, reduced glycemic load, and can be used as a substitute or additive in conventional food preparations while maintaining desirable binding, consistency, texture, and palatability (p. 9, paragraph 1).
Applicant’s argument has been carefully considered however the argument is not persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the flour can be used as a substitute or additive in conventional food preparations while maintaining desirable binding, consistency, texture, and palatability) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues the specification further demonstrates that utilization of jackfruit flesh, seeds, and strands enables increased utilization of the fruit while maintaining the desired nutritional properties and functionality (p. 9, paragraph 1).
Applicant’s argument has been carefully considered however the argument is not persuasive. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues a person of ordinary skill in the art seeking to maximize pectin content may have been motivated to select the rind and core portions of the jackfruit, as those portions exhibit comparatively higher pectin content (p. 10, paragraph 2).
Applicant’s argument has been carefully considered however the argument is not persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., jackfruit flour with maximized pectin content) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues Patil does not direct a person of ordinary skill in the art toward the presently claimed flour composition and, if anything, would have led the person of ordinary skill in the art away from the specific combination of components recited in claim 27 (p. 10, paragraph 2; p. 14, paragraph 1).
Applicant’s argument has been carefully considered however the argument is not persuasive. MPEP § 2145.X.D.1 states “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 this case, Patil does not outright disparage the omission of the rind and core portions of the jakcfruit. Additionally, neither Patil nor the instant claims appreciate a requirement to maximize pectin in jackfruit flour. Therefore, the entire disclosure of Patil does not discourage one of ordinary skill of the art from selecting only the jackfruit flesh, seeds, and strands to produce flour.
Applicant argues Slimak and Adepeju do not provide any teaching that would allow a skilled person to obtain the claimed method with a reasonable expectation of success because neither Slimak nor Adepeju in fact teach jackfruit and are instead directed to breadfruit (p. 11, paragraph 3).
Applicant’s argument has been carefully considered however the argument is not persuasive. While Adepeju does not explicitly teach jackfruit, Adepeju teaches methods of making whole flours from fruits of the Artocarpus genus (of which breadfruit is also a member). MPEP § 2144.06.II states an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
Applicant argues Adepeju neither discusses jackfruit nor teaches preparation of a flour consisting of jackfruit flesh particles, jackfruit seed particles, and jackfruit strand particles, as required by claim 27 (p. 12, paragraph 2).
Applicant’s argument has been carefully considered however the argument is not persuasive. As stated above, the replacement of the breadfruit of Slimak with jackfruit is prima facie obvious. Given Adepeju provides a method of making whole flour from a fruit with a similar structure to jackfruit which is cleaned, peeled, and sliced, wherein none of the flesh, seed or strands are removed before making the flour with the entire interior section (p. 530, Preparation of breadfruit flour), it would have been obvious to one of ordinary skill in the art to have prepared a flour consisting of jackfruit flesh particles, jackfruit seed particles, and jackfruit strand particles.
Applicant argues a person of ordinary skill in the art would not reasonably have expected that merely substituting jackfruit for breadfruit would result in the specific flour composition and nutritional profile recited in claim 27 (p. 12, paragraph 3).
Applicant’s argument has been carefully considered however the argument is not persuasive. One of ordinary skill in the art would have had a reasonable expectation of success in substituting breadfruit with jackfruit, and the resulting nutritional profile therefrom would have naturally emerged from one of ordinary skill in the art adjusting the ripeness of the jackfruit to achieve the desired flavor profile of the flour.
Applicant argues the conclusion that a person of ordinary skill in the art would necessarily prepare a flour consisting of jackfruit flesh, jackfruit seeds, and jackfruit strands is therefore based upon impermissible hindsight reconstruction using Applicant's disclosure as a roadmap (p. 12, paragraph 4).
Applicant’s argument has been carefully considered however the argument is not persuasive. 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 the claimed invention was made, 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). In this case, Adepeju provides a method of making whole flour from a fruit with a similar structure to jackfruit which is cleaned, peeled, and sliced, wherein none of the flesh, seed or strands are removed before making the flour with the entire interior section. Therefore, Adepeju provides to one of ordinary skill in the art the motivation and reasonable expectation of success to utilize only the jackfruit flesh, seeds, and strands in the flour.
Applicant argues incorporation of breadfruit seed material into food products was not a routine or conventional practice, and a person of ordinary skill in the art would have exercised caution in including seed components when preparing flour intended for human consumption (p. 12, paragraph 5; p. 13, paragraph 1).
Applicant’s argument has been carefully considered however the argument is not persuasive. As evidenced by Pane et al. (Breadfruit. RXList. (2021) Retrieved from: https://www.rxlist.com/breadfruit/supplements.htm), breadfruit seeds are eaten as foods (p. 2, paragraph 1). Therefore, this argument is not persuasive.
Applicant argues Patil provides no teaching that ripeness predictably controls all of the claimed nutritional parameters, let alone the specific combination of parameters recited in claim 27, therefore the conclusion that routine optimization would have resulted in the presently claimed composition is based on impermissible hindsight reconstruction using the Applicant's disclosure as a blueprint rather than any teaching found in the cited prior art (p. 15, paragraph 2).
Applicant’s argument has been carefully considered however the argument is not persuasive. 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 the claimed invention was made, 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). In this case, Patil provides a jackfruit’s pectin/sugar content changes throughout its ripening process. Therefore, one of ordinary skill in the art would have adjusted the ripeness of the jackfruit used to produce the flour in the modified method of Slimak during routine optimization to find the jackfruit flour with the desired sweetness and soluble fiber (i.e., pectin) content. As stated in the rejection above, the instant specification concurs that jackfruit ripeness affects its nutritional content ([00187]). Furthermore, the instant specification shows that flours produced from jackfruit fruits, seeds, and strands alone are able to achieve the precisely claimed nutritional profile, indicating jackfruit at a certain ripeness may produce such flours ([00188], Tables 1 and 2). Therefore, by adjusting the ripeness of the jackfruit used to produce the flour, one would arrive at the precisely claimed nutritional profile via routine optimization.
Conclusion
No claims are allowed.
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 LARK JULIA MORENO whose telephone number is (571)272-2337. The examiner can normally be reached 6:30 - 4:30 M - F.
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.
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.
/L.J.M./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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