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 .
The amendment filed August 25, 2025 is acknowledged. Claims 23-48 are pending in the application. Claims 1-22 have been cancelled.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 34 and 44 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 34 recites “the activated pectin-containing biomass composition has a degree of esterification of the soluble pectin component of at or about 50 percent or higher” at lines 2-3, and this claim depends upon claim 23. It is unclear what is intended by this limitation. More specifically, a point in which the activated pectin-containing biomass composition comprises esterification of the soluble pectin component has not been set forth in claim 34 or claim 23. Therefore, the scope of claim 34 is indefinite. For the purpose of the examination, claim 34 is interpreted as “wherein the activated pectin-containing biomass composition comprises esterification of the soluble pectin component and has a degree of esterification of the soluble pectin component of at or about 50 percent or higher” (emphasis added).
Claim 44 recites “the activated pectin-containing biomass composition has a degree of esterification of the soluble pectin component of at or about 50 percent or higher” at lines 1-4, and this claim depends upon claim 37. It is unclear what is intended by this limitation. More specifically, a point in which the activated pectin-containing biomass composition comprises esterification of the soluble pectin component has not been set forth in claim 44 or claim 37. Therefore, the scope of claim 44 is indefinite. For the purpose of the examination, claim 44 is interpreted as “wherein the activated pectin-containing biomass composition comprises esterification of the soluble pectin component and has a degree of esterification of the soluble pectin component of at or about 50 percent or higher” (emphasis added).
Claim Rejections - 35 USC § 103
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 37-39 and 41-46 are rejected under 35 U.S.C. 103 as being unpatentable over Ehrlich US 5567462 (hereinafter “Ehrlich”).
With respect to claim 37, Ehrlich teaches a process of producing activated pectin-containing compositions (C1, L12-13; and C5, L40-41).
Regarding the limitation “for producing an activated pectin-containing biomass composition” in the preamble of claim 37, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the limitation of the method comprising: a) mixing a starting pectin-containing biomass material comprising an insoluble fiber component and an insoluble protopectin component with an aqueous solution of an alcohol to form a mixture; b) prewashing the mixture of step a) with nitric acid, citric acid, hydrochloric acid, or a combination thereof, to reduce a calcium content of the starting pectin-containing biomass material to less than or equal to about 6 mg per g dry matter of the starting pectin-containing biomass material to form a calcium-reduced pectin-containing biomass material; c) activating the calcium-reduced pectin-containing biomass material in the mixture of step b) to form an activated pectin-containing biomass composition comprising the insoluble fiber component and a soluble pectin component by subjecting the calcium-reduced pectin- containing biomass material to an activating solution formed by adding sulfuric acid and/or phosphoric acid to the mixture to adjust the pH of the mixture within the range from at or about 0.5 to at or about 2.5, and heating to a temperature greater than at or about 40 °C; d) applying mechanical energy (i) to the mixture of step a), (ii) during step b), (iii) during the activating of step c), or (iv) any combination thereof; and e) separating the activated pectin-containing biomass composition from the mixture as recited in claim 37, Ehrlich teaches the production of pectin-containing material with the addition of alcohols and acids (C1, L12-13; and C3, L34-36). The pectin-containing raw materials (pectin-containing biomass material) comprising cellulose (insoluble fiber component) and protopectin are combined with acidified aqueous alcohol to at least partially solubilize the pectin present in the raw material and remove calcium ions and other soluble salts. The acid in the acidified aqueous alcohol includes nitric acid, citric acid, or hydrochloric acid (step a and step b: C1, L64-C2, L8; C2, L48-55; C3, L65-C4, L13; C4, L32-54; C5, L11-15; C6, L50-51; and C7, L13-18). The slurry is further hydrolyzed at a temperature of below about 50⁰C or greater than about 65⁰C with appropriate acid, such as sulfuric acid or phosphoric acid, to achieve the desired pH level of about 1 to 2.5 and obtain an activated pectin containing material (step c: C4, L35-47 and 61-62; C5, L3-5, 8-11, and 37-41; and C7, L21-22). Ehrlich also teaches subjecting the starting material to physical shearing, pureeing the material using equipment during pH adjusting or solubilization/hydrolysis (step d: C2, L22-23 and 43-44; and C6, L19-26), and separating the activated pectin-containing material composition from the mixture (step e) (C3, L1-19; C5, L19-41; C6, L54-61; and C7, L8-11).
Regarding step a and step b, Ehrlich does not expressly disclose mixing the starting pectin-containing biomass material with an aqueous solution of an alcohol to form a mixture (step a) and prewashing the mixture with nitric acid, citric acid, hydrochloric acid, or a combination thereof (step b). However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to switch the order in which the aqueous alcohol and acid are added in the method of Ehrlich with the expectation of successfully preparing an activated pecto-cellulosic composition (activated pectin-containing biomass composition) and arrive at the claimed invention. One of ordinary skill in the art would have been motivated to do so because Ehrlich teaches using acidified aqueous alcohol in the method to produce a product that is substantially similar to the prepared product as presently claimed as well as adding alcohols and acids in the method to produce pectin-containing material (C1, L12-13; C3, L34-36; and C5, L11-15), and the order in which the aqueous alcohol and acid are added is not seen as critical. There would have been a reasonable expectation of success. To switch the order of performing process steps, i.e. the order of the addition of the ingredients into the final mixture, would be obvious absent any clear and convincing evidence and/or arguments to the contrary (MPEP 2144.04 [R-1]). “Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.”
Regarding step b, Ehrlich does not expressly teach reducing the calcium content to less than or equal to about 6 mg per g dry matter of the starting material. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the calcium content in the treated materials of Ehrlich through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Ehrlich teaches removal of the undesirable calcium ions and soluble salts is useful to increase the solubility of the pectin (C7, L13-16), and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
Regarding step c, the temperatures of below about 50⁰C or greater than about 65⁰C (C4 L61-63; and C5, L3-5) as recited in Ehrlich overlap with the presently claimed temperature. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding the limitation of wherein during the method the alcohol present in the mixture in each step is at or greater than about 35 weight percent based on the total weight of the mixture in each step such that less than 1% of pectin in the starting pectin-containing biomass material is removed during the method as recited in claim 37, Ehrlich teaches the amount of alcohol present during the method is no greater than about 40% (C5, L11-16) which overlaps with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). While Ehrlich does not expressly disclose that less than 1% of pectin in the starting pectin-containing biomass material is removed during the method, this feature would naturally occur from said method since Ehrlich teaches an alcohol content that overlaps with the presently claimed range as addressed above, and the removal of less than 1% of pectin in the starting pectin-containing biomass material during the method is an intended result of the claimed process, absent any clear and convincing evidence to the contrary.
Regarding the limitation of wherein the activated pectin-containing biomass composition has a water binding capacity in a range from at or about 14 g/g to at or about 70 g/g as recited in claim 37, this limitation is a characteristic of the activated pectin-containing biomass composition produced by the claimed method. Absent any clear and convincing evidence to the contrary, the claimed water binding capacity would naturally occur from said method since all of the claimed process steps have been shown to be obvious view of Ehrlich as addressed above, Ehrlich teaches the activated pecto-cellulosic composition possesses enhanced activity as a gelling agent, the prepared compositions are useful in the gelling of an aqueous phase of various products, and the amount of activated pecto-cellulosic product required to obtain a desired level of gelling is less than the amount of commercial pectin required to obtain the same level of gelling (C3, L27-32 and 39-47; C5, L36-46; and C7, L25-35), and the water binding capacity of the prepared activated pectin-containing biomass composition is an intended result of the claimed process. As set forth in MPEP §2112.01, "where...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 USC 102, on "prima facie obviousness" under 35 USC 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. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claim 38, Ehrlich is relied upon for the teaching of the method of claim 37 as addressed above.
Regarding the limitation of wherein the prewashing is conducted at a prewashing temperature of at or greater than about 20⁰C to at or about 80⁰C as recited in claim 38, Ehrlich teaches a temperature of below about 50⁰C (C4 L61-63) which overlaps the presently claimed temperature. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 39, Ehrlich is relied upon for the teaching of the method of claim 37 as addressed above.
Regarding the limitation of wherein in step b) the mixture of step a) is prewashed with nitric acid, citric acid, hydrochloric acid, or the combination thereof, at a pH of the mixture within the range from at or about 0.5 to at or about 3; and at least a portion of the calcium and nitric acid, citric acid, hydrochloric acid, or the combination thereof, are removed from the mixture prior to step c) as recited in claim 39, Ehrlich teaches using nitric acid or hydrochloric acid to adjust the pH to about 1 to 2.5 or citric acid to adjust the pH to about 3.2 in order to remove calcium ions (step b), the liquid is removed from the mixture (step b), and the mixture is further hydrolyzed (step c) (C2, L48-55; C4, L32-54; C5, L11-15; and C7, L13-21).
Regarding claim 41, Ehrlich is relied upon for the teaching of the method of claim 37 as addressed above.
Regarding the limitation of wherein: during the method the alcohol present in the mixture in each step is at or greater than about 40 weight percent based on the total weight of the mixture in each step; and the calcium content is reduced to less than or equal to about 5 mg/g as recited in claim 41, Ehrlich teaches the amount of alcohol present during the method is no greater than about 40% (C5, L11-16) which overlaps with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Ehrlich does not expressly teach reducing the calcium content to less than or equal to about 5 mg/g. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the calcium content in the treated materials of Ehrlich through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Ehrlich teaches removal of the undesirable calcium ions and soluble salts is useful to increase the solubility of the pectin (C7, L13-16), and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
With respect to claims 42 and 43, modified Ehrlich is relied upon for the teaching of the method of claim 37 as addressed above.
Regarding the limitations of wherein the starting pectin-containing biomass material is obtained from citrus fruit as recited in claim 42 and wherein the starting pectin-containing biomass material comprises alcohol washed citrus fruit peels or citrus fruit vesicles as recited in claim 43, Ehrlich teaches the pectin-containing raw material may be alcohol washed citrus fruit peels or pulp (C2, L16-17 and 43-44; C3, L34-36; C3, L65-C4, L15; and C6, L56).
Regarding claim 44, Ehrlich is relied upon for the teaching of the method of claim 37 as addressed above.
Regarding the limitation of wherein the activated pectin-containing biomass composition has: a degree of esterification of the soluble pectin component of at or about 50 percent or higher; and a Quick viscosity (Qvisc) in a range from about 50 mPa s to about 300 mPa s as recited in claim 44, Ehrlich teaches the degree of methylation (DM), which is the percentage of total carboxyl groups in the methyl ester form, is 65.4% to 79.4% in the examples (C8, Table 1; and C9, L34-37).
Ehrlich does not expressly disclose the Quick viscosity of the activated pecto-cellulosic composition. However, the Quick viscosity is a characteristic of the activated pectin-containing biomass composition produced by the claimed method. Absent any clear and convincing evidence to the contrary, the claimed Quick viscosity would naturally occur from said method since all of the claimed process steps have been shown to be obvious view of Ehrlich as addressed above, Ehrlich teaches the activated pecto-cellulosic composition possesses enhanced activity as a gelling agent, the prepared compositions are useful in the gelling of an aqueous phase of various products, and the amount of activated pecto-cellulosic product required to obtain a desired level of gelling is less than the amount of commercial pectin required to obtain the same level of gelling (C3, L27-32 and 39-47; C5, L36-46; and C7, L25-35), and the Quick viscosity of the prepared activated pectin-containing biomass composition is an intended result of the claimed process. As set forth in MPEP §2112.01, "where...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 USC 102, on "prima facie obviousness" under 35 USC 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. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
With respect to claims 45 and 46, modified Ehrlich is relied upon for the teaching of the method of claim 37 as addressed above.
Regarding the limitations of wherein the water binding capacity is in a range from at or about 18 g/g to at or about 27 g/g as recited in claim 45 and wherein the water binding capacity is in a range from at or about 20 g/g to at or about 27 g/g as recited in claim 46, this limitation is a characteristic of the activated pectin-containing biomass composition produced by the claimed method. Absent any clear and convincing evidence to the contrary, the claimed water binding capacity would naturally occur from said method since all of the claimed process steps have been shown to be obvious view of Ehrlich as addressed above, Ehrlich teaches the activated pecto-cellulosic composition possesses enhanced activity as a gelling agent, the prepared compositions are useful in the gelling of an aqueous phase of various products, and the amount of activated pecto-cellulosic product required to obtain a desired level of gelling is less than the amount of commercial pectin required to obtain the same level of gelling (C3, L27-32 and 39-47; C5, L36-46; and C7, L25-35), and the water binding capacity of the prepared activated pectin-containing biomass composition is an intended result of the claimed process. As set forth in MPEP §2112.01, "where...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 USC 102, on "prima facie obviousness" under 35 USC 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. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Claims 23-36, 40, and 47-48 are rejected under 35 U.S.C. 103 as being unpatentable over Ehrlich US 5567462 (hereinafter “Ehrlich”), as applied to claim 37 above, and further in view of Rautschek et al. US 20060160908 (hereinafter “Rautschek”).
With respect to claim 23, Ehrlich teaches a process of producing activated pectin-containing compositions (C1, L12-13; and C5, L40-41).
Regarding the limitation “for producing an activated pectin-containing biomass composition” in the preamble of claim 23, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the limitation of the method comprising a) mixing a starting pectin-containing biomass material comprising an insoluble fiber component and an insoluble protopectin component with an aqueous solution of an alcohol to form a mixture; b) treating the mixture of step a) to reduce a calcium content of the starting pectin- containing biomass material to less than or equal to about 6 mg per g dry matter of the starting pectin-containing biomass material to form a calcium-reduced pectin-containing biomass material; c) activating the calcium-reduced pectin-containing biomass material in the mixture of step b) to form an activated pectin-containing biomass composition comprising the insoluble fiber component and a soluble pectin component by subjecting the calcium-reduced pectin- containing biomass material to an activating solution formed by adding sulfuric acid and/or phosphoric acid to the mixture to adjust the pH of the mixture within the range from at or about 0.5 to at or about 2.5, and heating to a temperature greater than at or about 40 °C; d) applying mechanical energy (i) to the mixture of step a), (ii) during step b), (iii) during the activating of step c), or (iv) any combination thereof, wherein the mechanical energy is at or about 800 kJ or greater per kg dry matter of the starting pectin-containing biomass material; and e) separating the activated pectin-containing biomass composition from the mixture as recited in claim 23, Ehrlich teaches the production of pectin-containing material with the addition of alcohols and acids (C1, L12-13; and C3, L34-36). The pectin-containing raw materials (pectin-containing biomass material) comprising cellulose (insoluble fiber component) and protopectin are combined with acidified aqueous alcohol to at least partially solubilize the pectin present in the raw material and remove calcium ions and other soluble salts. (step a and step b: C1, L64-C2, L8; C2, L48-55; C3, L65-C4, L13; C4, L32-54; C5, L11-15; C6, L50-51; and C7, L13-18). The slurry is further hydrolyzed at a temperature of below about 50⁰C or greater than about 65⁰C with appropriate acid, such as sulfuric acid or phosphoric acid, to achieve the desired pH level of about 1 to 2.5 and obtain an activated pectin containing material (step c: C4, L35-47 and 61-62; C5, L3-5, 8-11, and 37-41; and C7, L21-22). Ehrlich also teaches subjecting the starting material to physical shearing, pureeing the material using equipment during pH adjusting or solubilization/hydrolysis (step d: C2, L22-23 and 43-44; and C6, L19-26), and separating the activated pectin-containing material composition from the mixture (step e) (C3, L1-19; C5, L19-41; C6, L54-61; and C7, L8-11).
Regarding step a and step b, Ehrlich does not expressly disclose mixing the starting pectin-containing biomass material with an aqueous solution of an alcohol to form a mixture (step a) and prewashing the mixture with nitric acid, citric acid, hydrochloric acid, or a combination thereof (step b). However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to switch the order in which the aqueous alcohol and acid are added in the method of Ehrlich with the expectation of successfully preparing an activated pecto-cellulosic composition (activated pectin-containing biomass composition) and arrive at the claimed invention. One of ordinary skill in the art would have been motivated to do so because Ehrlich teaches using acidified aqueous alcohol in the method to produce a product that is substantially similar to the prepared product as presently claimed as well as adding alcohols and acids in the method to produce pectin-containing material (C1, L12-13; C3, L34-36; and C5, L11-15), and the order in which the aqueous alcohol and acid are added is not seen as critical. There would have been a reasonable expectation of success. To switch the order of performing process steps, i.e. the order of the addition of the ingredients into the final mixture, would be obvious absent any clear and convincing evidence and/or arguments to the contrary (MPEP 2144.04 [R-1]). “Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.”
Regarding step b, Ehrlich does not expressly teach reducing the calcium content to less than or equal to about 6 mg per g dry matter of the starting material. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the calcium content in the treated materials of Ehrlich through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Ehrlich teaches removal of the undesirable calcium ions and soluble salts is useful to increase the solubility of the pectin (C7, L13-16), and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
Regarding step c, the temperatures of below about 50⁰C or greater than about 65⁰C (C4 L61-63; and C5, L3-5) as recited in Ehrlich overlap with the presently claimed temperature. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding step d, Ehrlich does not expressly disclose the amount of mechanical energy applied to the starting pectin-containing biomass material.
Rautschek relates to preparing a composition used in food. The composition is prepared by applying shearing forces with mechanical energy of at least 0.1 kJ/kg or 1 to 10,000 kJ/kg during the process (paragraphs [0078], [0083], and [0088]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select any portions of the disclosed ranges, including the instantly claimed range of mechanical energy, from the range disclosed in the prior art reference with the expectation of successfully producing a functional activated pectin-containing composition. One of ordinary skill in the art would have been motivated to do so because Ehrlich and Rautschek similarly teach applying physical shearing during a method of producing products used in food, Ehrlich teaches comminuting the raw material as well as pureeing the material with equipment to produce fine particle size in order for the final product to be added to food without an undesirable effect on texture (C3, L27-32; C4, L25-31; and C6, L14-16 and 19-27), and the use of the claimed quantity of mechanical energy in the preparation of compositions used in foodstuff was well known in the art before the effective filing date of the claimed invention as shown in Rautschek. There would have been a reasonable expectation of success. "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 percentage ranges is the optimum combination of percentages " In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
Regarding the limitation of wherein during the method the alcohol present in the mixture in each step is at or greater than about 35 weight percent based on the total weight of the mixture in each step as recited in claim 23, Ehrlich teaches the amount of alcohol present during the method is no greater than about 40% (C5, L11-16) which overlaps with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding the limitation of wherein the activated pectin-containing biomass composition has a Quick viscosity (Qvisc) in a range from about 50 mPas to about 300 mPas and a water binding capacity in a range from at or about 14 g/g to at or about 70 g/g as recited in claim 23, this limitation includes characteristics of the activated pectin-containing biomass composition produced by the claimed method. Absent any clear and convincing evidence to the contrary, the claimed Quick viscosity and water binding capacity would naturally occur from said method since all of the claimed process steps have been shown to be obvious view of modified Ehrlich as addressed above, Ehrlich teaches the activated pecto-cellulosic composition possesses enhanced activity as a gelling agent, the prepared compositions are useful in the gelling of an aqueous phase of various products, and the amount of activated pecto-cellulosic product required to obtain a desired level of gelling is less than the amount of commercial pectin required to obtain the same level of gelling (C3, L27-32 and 39-47; C5, L36-46; and C7, L25-35), and the Quick viscosity and water binding capacity of the prepared activated pectin-containing biomass composition is an intended result of the claimed process. As set forth in MPEP §2112.01, "where...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 USC 102, on "prima facie obviousness" under 35 USC 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. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
With respect to claim 24, modified Ehrlich is relied upon for the teaching of the method of claim 23 as addressed above.
Regarding the limitation of wherein an acid solution containing from about 5 wt. % to about 20 wt. % sulfuric acid is added to the mixture in step c) as recited in claim 24, modified Ehrlich does not expressly disclose the amount of sulfuric acid in the acidic aqueous solution.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the sulfuric acid content in the acidic aqueous solution of Ehrlich through routine experimentation to obtain the desired pH level during hydrolysis (C5, L8-11). One of ordinary skill in the art would have been motivated to do so because Ehrlich teaches the acid solution will comprise a sufficient amount of acid, such as sulfuric acid, to achieve the desired pH level (C4, L35-40; and C5, L8-11), and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
With respect to claim 25, modified Ehrlich is relied upon for the teaching of the method of claim 23 as addressed above.
Regarding the limitation of wherein the mechanical energy is at or about 1900 kJ or greater per kg dry matter of the starting pectin-containing biomass material as recited in claim 25, modified Ehrlich teaches this limitation since Ehrlich as modified by Rautschek teaches using a mechanical energy of at least 0.1 kJ/kg or 1 to 10,000 kJ/kg (paragraph [0083]) as addressed above in claim 23, and these ranges overlap with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 26, modified Ehrlich is relied upon for the teaching of the method of claim 23 as addressed above.
Regarding the limitation of wherein treating the mixture in step b) comprises prewashing the mixture with nitric acid to adjust the pH of the mixture to within the range from at or about 0.5 to at or about 3 and removing at least a portion of the nitric acid and calcium from the mixture prior to step c) as recited in claim 26, modified Ehrlich teaches this limitation since Ehrlich teaches using nitric acid to adjust the pH to about 1 to 2.5 in order to remove calcium ions (step b), the liquid is removed from the mixture (step b), and the mixture is further hydrolyzed (step c) (C2, L48-55; C4, L32-41 and 47-54; C5, L11-15; and C7, L13-21).
With respect to claim 27, modified Ehrlich is relied upon for the teaching of the method of claim 26 as addressed above.
Regarding the limitation of wherein the prewashing is conducted at a prewashing temperature of at or greater than about 20⁰C to at or about 80⁰C as recited in claim 27, modified Ehrlich teaches this limitation since Ehrlich teaches a temperature of below about 50⁰C (C4 L61-63) which overlaps the presently claimed temperature. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 28, modified Ehrlich is relied upon for the teaching of the method of claim 23 as addressed above.
Regarding the limitation of wherein treating the mixture in step b) comprises prewashing the mixture with citric acid to adjust the pH of the mixture to within the range from at or about 0.5 to at or about 3 and removing at least a portion of the citric acid and calcium from the mixture prior to step c) as recited in claim 28, modified Ehrlich teaches this limitation since Ehrlich teaches using citric acid to adjust the pH to about 3.2 in order to remove calcium ions (step b), the liquid is removed from the mixture (step b), and the mixture is further hydrolyzed (step c) (C2, L48-55; C4, L43-54; C5, L11-15; and C7, L13-21).
With respect to claim 29, modified Ehrlich is relied upon for the teaching of the method of claim 23 as addressed above.
Regarding the limitation of wherein treating the mixture in step b) comprises prewashing the mixture with hydrochloric acid to adjust the pH of the mixture to within the range from at or about 0.5 to at or about 3 and removing at least a portion of the hydrochloric acid and calcium from the mixture prior to step c) as recited in claim 29, modified Ehrlich teaches this limitation since Ehrlich teaches using hydrochloric acid to adjust the pH to about 1 to 2.5 in order to remove calcium ions (step b), the liquid is removed from the mixture (step b), and the mixture is further hydrolyzed (step c) (C2, L48-55; C4, L32-41 and 47-54;C5, L11-15; and C7, L13-21).
With respect to claim 30, modified Ehrlich is relied upon for the teaching of the method of claim 23 as addressed above.
Regarding the limitation of wherein during the method the alcohol present in the mixture in each step is at or greater than about 40 weight percent based on the total weight of the mixture in each step as recited in claim 30, modified Ehrlich teaches this limitation since Ehrlich teaches the amount of alcohol present during the method is no greater than about 40% (C5, L11-16) which overlaps with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 31, modified Ehrlich is relied upon for the teaching of the method of claim 23 as addressed above.
Regarding the limitation of wherein the mechanical energy is at or about 36 kJ or greater per kg of the mixture as recited in claim 31, modified Ehrlich teaches this limitation since Ehrlich as modified by Rautschek teaches using a mechanical energy of at least 0.1 kJ/kg or 1 to 10,000 kJ/kg (paragraph [0083]) as addressed above in claim 23, and these ranges overlap with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claims 32 and 33, modified Ehrlich is relied upon for the teaching of the method of claim 23 as addressed above.
Regarding the limitations of wherein the starting pectin-containing biomass material is obtained from citrus fruit as recited in claim 32 and wherein the starting pectin-containing biomass material comprises alcohol washed citrus fruit peels or citrus fruit vesicles as recited in claim 33, modified Ehrlich teaches these limitations since Ehrlich teaches the pectin-containing raw material may be alcohol washed citrus fruit peels or pulp (C2, L16-17 and 43-44; C3, L34-36; C3, L65-C4, L15; and C6, L56).
With respect to claim 34, modified Ehrlich is relied upon for the teaching of the method of claim 23 as addressed above.
Regarding the limitation of wherein the activated pectin-containing biomass composition has a degree of esterification of the soluble pectin component of at or about 50 percent or higher as recited in claim 34, modified Ehrlich teaches this limitation since Ehrlich teaches the degree of methylation (DM), which is the percentage of total carboxyl groups in the methyl ester form, is 65.4% to 79.4% in the examples (C8, Table 1; and C9, L34-37).
With respect to claim 35, modified Ehrlich is relied upon for the teaching of the method of claim 23 as addressed above.
Regarding the limitation of wherein the Quick viscosity (Qvisc) is in a range from about 100 mPa s to about 220 mPa s as recited in claim 35, modified Ehrlich does not expressly disclose the Quick viscosity of the activated pecto-cellulosic composition. However, the Quick viscosity is a characteristic of the activated pectin-containing biomass composition produced by the claimed method. Absent any clear and convincing evidence to the contrary, the claimed Quick viscosity would naturally occur from said method since all of the claimed process steps have been shown to be obvious view of modified Ehrlich as addressed above, Ehrlich teaches the activated pecto-cellulosic composition possesses enhanced activity as a gelling agent, the prepared compositions are useful in the gelling of an aqueous phase of various products, and the amount of activated pecto-cellulosic product required to obtain a desired level of gelling is less than the amount of commercial pectin required to obtain the same level of gelling (C3, L27-32 and 39-47; C5, L36-46; and C7, L25-35), and the Quick viscosity of the prepared activated pectin-containing biomass composition is an intended result of the claimed process. As set forth in MPEP §2112.01, "where...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 USC 102, on "prima facie obviousness" under 35 USC 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. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
With respect to claim 36, modified Ehrlich is relied upon for the teaching of the method of claim 23 as addressed above.
Regarding the limitation of wherein the calcium content is reduced to less than or equal to about 5 mg/g as recited in claim 36, modified Ehrlich does not expressly teach reducing the calcium content to less than or equal to about 5 mg per g. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the calcium content in the treated materials of modified Ehrlich through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Ehrlich teaches removal of the undesirable calcium ions and soluble salts is useful to increase the solubility of the pectin (C7, L13-16), and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
Regarding claim 40, Ehrlich is relied upon for the teaching of the method of claim 37 as addressed above.
Regarding the limitation of wherein: the mechanical energy is at or about 800 kJ or greater per kg dry matter of the starting pectin-containing biomass material; and/or the mechanical energy is at or about 36 kJ or greater per kg of the mixture as recited in claim 40, Ehrlich teaches subjecting the starting material to physical shearing and pureeing the material using equipment during pH adjusting or solubilization/hydrolysis (step d: C2, L22-23 and 43-44; and C6, L19-26
However, Ehrlich does not expressly disclose the amount of mechanical energy applied.
Rautschek relates to preparing a composition used in food. The composition is prepared by applying shearing forces with mechanical energy of at least 0.1 kJ/kg or 1 to 10,000 kJ/kg during the process (paragraphs [0078], [0083], and [0088]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select any portions of the disclosed range, including the instantly claimed range of mechanical energy, from the range disclosed in the prior art reference with the expectation of successfully producing a functional activated pectin-containing composition. One of ordinary skill in the art would have been motivated to do so because Ehrlich and Rautschek similarly teach applying physical shearing during a method of producing products used in food, Ehrlich teaches comminuting the raw material as well as pureeing the material with equipment to produce fine particle size in order for the final product to be added to food without an undesirable effect on texture (C3, L27-32; C4, L25-31; and C6, L14-16 and 19-27), and the use of the claimed quantity of mechanical energy in the preparation of compositions used in foodstuff was well known in the art before the effective filing date of the claimed invention as shown in Rautschek. There would have been a reasonable expectation of success. "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 percentage ranges is the optimum combination of percentages " In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
With respect to claim 47, modified Ehrlich is relied upon for the teaching of the method of claim 23 as addressed above.
Regarding the limitation of wherein the mechanical energy is in a range from at or about 800 kJ to at or about 14,000 kJ per kg dry matter of starting pectin-containing biomass material as recited in claim 47, modified Ehrlich teaches this limitation since Ehrlich as modified by Rautschek teaches using a mechanical energy of at least 0.1 kJ/kg or 1 to 10,000 kJ/kg (paragraph [0083]) as addressed above in claim 23, and these ranges overlap with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 48, modified Ehrlich is relied upon for the teaching of the method of claim 23 as addressed above.
Regarding the limitation of wherein a pump, a refiner, a homogenizer, an extruder, a lobe pump, a centrifugal pump, or any combination thereof, is used to apply the mechanical energy in step d) as recited in claim 48, Ehrlich as modified by Rautschek teaches this limitation since Ehrlich teaches standard equipment may be used (C6, L23-25) and Rautschek teaches homogenizers may be used (paragraphs [0078] and [0083]).
Response to Arguments
Applicant’s remarks filed August 25, 2025 are acknowledged.
Due to the amendments to claims 23 and 37, the 35 USC 112 rejection of claims 23-33, 35-43, and 45-48. However, the 35 USC 112 rejection of claims 34 and 44 are maintained.
Applicant’s arguments have been fully considered, but they are unpersuasive.
Applicant argues that it would be clear to one of skill in the art, in view of the as-filed application that claims 34 and 44 refer to the degree of esterification of the soluble pectin in the activated pectin containing biomass composition and the 35 USC 112 rejection has been overcome (P8).
Examiner disagrees. As previously indicated, a point in which the activated pectin-containing biomass composition comprises esterification of the soluble pectin component has not been set forth in claims 34, claim 23, claim 44, or claim 37. Additionally, Applicant has not provided any further clarification in their augments and fails to cite portions of the instant specification that clarify this limitation. Thus, the scope of claims 34 and 44 is indefinite.
Applicant asserts that Rautschek is not analogous art to Ehrlich or the present application. There is no disclosure nor contemplation within the four corners of Rautschek to apply mechanical energy to a pectin-containing biomass material, while treating a pectin-containing biomass material, and while activating a pectin biomass containing material. A skilled artisan in the field of pectin-containing biomass materials would find no advantage or benefit to the use of Rautschek, which is from a completely different field of endeavor: defoamer compositions. Rautschek is completely unrelated to food products. Rautschek is also not reasonably pertinent to the problem faced by the Applicant and instead addresses the preparation of defoamer compositions. Thus, Rautschek would not logically have commended itself to the Applicant’s attention when considering the present problem. The mechanical energy in claim 23 is applied directly to the foodstuff itself, not to a defoamer composition that can optionally be used in unspecified food-related applications. There is no reasonable basis to equate applying mechanical energy to a defoamer composition that might later be incorporated into a food-related process with a direct application of mechanical energy to a pectin-containing biomass material as claimed. One of skill in the art would readily recognize that the mechanical energy operations of Rautschek and the claimed method are fundamentally different in function, purpose, and result. Applying energy to mix a defoamer composition (as disclosed in Rautschek) does not and cannot achieve the unexpected structural and functional changes observed in the claimed method. Ehrlich and Rautschek make no recognition whatsoever to the unexpected benefits of apply mechanical energy to a pectin-containing biomass material, while treating a pectin-containing biomass material, and while activating a pectin-containing biomass material (P9-P11).
Applicant also argues absent impermissible hindsight in view of Applicant’s own disclosure, no motivation or rationale is presented in Rautschek and/or Ehrlich to first select the instantly claimed range of mechanical energy (i.e., at or about 800 kJ or greater) from the disclosed range in Rautschek (i.e., 1 to 10,000 kJ/kg) and subsequently apply the claimed mechanical energy process of Ehrlich. Rautschek and/or Ehrlich do not teach or suggest that applying the claimed mechanical energy would yield any benefit whatsoever, let alone the specific, unexpected benefits presented by the Applicant. Thus, absent impermissible hindsight, Applicant does not find any plausible motivation or rationale for modifying and combining Ehrlich with Rautschek. Given that the particle sizes of Rautschek are at least 15-times smaller than that or Ehrlich, a skilled artisan would have absolutely no reasonable expectation of success of applying any of the techniques of Rautschek to the processes of Ehrlich. (P11-P12).
Examiner disagrees. Ehrlich in view of Rautschek teaches the claimed invention. 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, the motivation to combine Ehrlich and Rautschek is found within the references themselves as well as in the knowledge generally available to one of ordinary skill in the art. Additionally, 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).
While Rautschek does not disclose all the features of the presently claimed invention, Rautschek is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). One of ordinary skill in the art would have been motivated to select any portions of the disclosed ranges, including the instantly claimed range of mechanical energy, from the range disclosed in the prior art reference with the expectation of successfully producing a functional activated pectin-containing composition because Ehrlich and Rautschek are analogous art since they both teach applying physical shearing during a method of producing products used in food, Ehrlich teaches comminuting the raw material as well as pureeing the material with equipment to produce fine particle size in order for the final product to be added to food without an undesirable effect on texture (C3, L27-32; C4, L25-31; and C6, L14-16 and 19-27), and the use of the claimed quantity of mechanical energy in the preparation of compositions used in foodstuff was well known in the art before the effective filing date of the claimed invention as shown in Rautschek. "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 percentage ranges is the optimum combination of percentages " In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
Further, as stated in MPEP 2145 III., “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]I is not necessarily that the inventions of the references be physically combinable to render obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve the ability to combine their specific structures.”).
Applicant argues Ehrlich does not teach or suggest the method as claimed wherein the alcohol present in the mixture in each step is at or greater than about 35 weight percent based on the total weight of the mixture in each step such that less than 1% of pectin in the starting pectin-containing biomass material is removed during the method. The claimed method is fundamentally different than the processes disclosed in Ehrlich because the claimed method does not remove natural pectic substances present in the starting pectin-containing biomass material – the protopectin is converted to its readily soluble form of pectin in situ (i.e., in the starting pectin-containing biomass material). Unexpectedly, during the claimed method, substantially no pectin (i.e. less than 1% of pectin) is extracted from the starting pectin-containing biomass material of the mixture during the activation step. There is no disclosure nor suggestion in the four corners of Ehrlich of a process in which the pectin does not solubilize and leach out of the cellulose matrix of the citrus peel (P12-P15).
Examiner disagrees. The claimed method is obvious in view of Ehrlich. As previously addressed, Ehrlich teaches the amount of alcohol present during the method is no greater than about 40% (C5, L11-16) which overlaps with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). While Ehrlich does not expressly disclose that less than 1% of pectin in the starting pectin-containing biomass material is removed during the method, this feature would naturally occur from said method since Ehrlich teaches an alcohol content that overlaps with the presently claimed range as addressed above, and the removal of less than 1% of pectin in the starting pectin-containing biomass material during the method is an intended result of the claimed process, absent any clear and convincing evidence to the contrary. Additionally, Applicant has not demonstrated that the method of Ehrlich is incapable of arriving at the presently claimed invention.
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 TYNESHA L. MCCLAIN whose telephone number is (571)270-1153. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM ET.
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793