DETAILED ACTION
Status of claim rejections
The objections to the specification and abstract are withdrawn in view of Applicant’s filing of a substitute specification in the response filed 01/30/2026.
The objections to the drawings are withdrawn in view of Applicant’s filing of substitute drawings in the response filed 01/30/2026.
The rejections of record under 35 USC 101 are withdrawn in view of Applicant’s cancellation of the claims in the response filed 01/30/2026.
The rejections of record under 35 USC 112(b) are withdrawn in view of Applicant’s cancellation of the claims in the response filed 01/30/2026.
The rejections of record under 35 USC 102/103 are withdrawn in view of Applicant’s cancellation of the claims in the response filed 01/30/2026.
This Action is FINAL, as necessitated by Applicant’s amendments.
Claim Interpretation
The examiner is interpreting the claims as follows:
New claim 14 recites “A dietary fiber composition obtained by a process comprising: contacting persimmon by-products with an acetone-containing solvent to remove sugars, phenolic compounds, and other soluble components; separating the resulting solid material from the solvent; freezing the solid material; and freeze-drying, grinding, and sieving the material to obtain a particulate fiber having a particle size of 0.5 mm or less, wherein the dietary fiber composition is not naturally occurring and has a reduced content of sugars and phenolic compounds relative to untreated persimmon by-products.” This claim has been interpreted to be a product-by-process. PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP 2113(I)). For purposes of applying prior art, claims 14-21 were interpreted herein to encompass only the dietary fiber product (e.g., persimmon fiber powder) and not a method of extracting the fiber (see also MPEP 2113(III).
Claim 14 also recites “contacting persimmon by-products with an acetone-containing solvent to remove sugars, phenolic compounds, and other soluble components”. The removal of the sugars, phenolic, compounds, etc. has been interpreted under broadest reasonable interpretation to encompass an intended result of the acetone addition to the persimmon by-products (see MPEP 2111.04).
Claim 20 recites that the “freeze-dried fiber exhibits increased porosity, increased water-holding capacity, and reduced tannin content relative to untreated persimmon fiber”. This has been interpreted as an inherent property of the persimmon dietary fiber. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977) (see MPEP 2112).
Claim 21 recites that the dietary fiber “exhibits enhanced fermentability by probiotic microorganisms”. This has been interpreted as an inherent property of the persimmon dietary fiber. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977) (see MPEP 2112).
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claim(s) 14-21 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Jang et al (Journal of Medicinal Plants Research Vol. 4(2), pp. 155-160, 18 January, 2010; hereinafter “Jang”) as evidenced by Bas-Bellver et al. ((2020). Valorisation of Persimmon and Blueberry By Products to Obtain Functional Powders: in vitro Digestion and Fermentation by Gut Microbiota. Journal of Agricultural and Food Chemistry. 68(30):8080-8090; hereinafter “Bas-Bellver”).
As discussed above, the claims have been interpreted to encompass only the persimmon fiber product, and not the method of extracting the fiber (see MPEP 2113(I)).
Jang teaches freeze-dried persimmon extracts derived from the flesh, peel, calyx, and seed of the persimmons (i.e., persimmon dietary powder from persimmon by-products) (see abstract, pg. 157, col 1-2). Jang teaches the freeze-dried fruit parts were ground in a mill and passed through a 25-mesh sieve. Each 5 g of dried parts (flesh, peel, calyx and seed) was extracted with 100 ml of four different solvents (acetone, ethanol, methanol and water) overnight at room temperature and filtered through a Whatman No. 1 filter paper. Solvents were then removed by evaporation in vacuo, and the dried extracts were obtained (see pg. 156, col 1). Jang teaches that each extract was centrifuged at 13,400 x g for 5 mins and that acetone was the most effective solvent to extract phenolics from the calyx, seed, and peel versus water extracts of TPCs in the fruit flesh (i.e., reduction of phenolic content in the persimmon byproducts as instantly claimed; see table 4, see Table 5). While Jang does not explicitly teach reduction in sugar content of the persimmon by-products, as discussed above, the limitation has been interpreted as an intended result of the addition of acetone (see MPEP 2111.04).
Jang teaches dietary fiber powder derived from persimmons, which anticipates the instantly claimed invention. In the alternative, it would have been prima facie obvious to one of ordinary skill at the time of filing to create and use persimmon dietary fiber as taught by Jang with reasonable expectation of success. One of ordinary skill would have been motivated to do so because Jang explicitly teaches that fiber/extracts from persimmons is advantageously capable of having beneficial effects on oxidant and protective effect against oxidative DNA damage (see, e.g., abstract).
Furthermore, MPEP 2113(II) states "[t]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. . . [W]hen the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Regarding claim 20, Jang does not explicitly teach the freeze-dried fiber exhibits increased porosity, increased water-holding capacity, and reduced tannin content relative to untreated persimmon fiber. However, as Jang teaches freeze-dried persimmon fiber powder extracted using acetone (i.e., the same as Applicant’s), the powder of Jang would, absent evidence to the contrary, exhibit these traits. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977) (see MPEP 2112).
Regarding claim 21, Jang does not explicitly teach that the dietary fiber “exhibits enhanced fermentability by probiotic microorganisms”. However, Bas-Bellver evidences that freeze-dried persimmon powders allows increased relative abundance in fermentations of bacterial consortia (Actinobacteria, Verumicrobia, lactic acid bacterias, etc.) in the presence of freeze-dried persimmon powders (see pg 21, see Fig. 2). Thus, absent evidence to the contrary, the freeze-dried persimmon products of Jang would be capable of enhancing fermentability by probiotic microorganisms.
As such, the teachings of Jang anticipate, or in the alternative, render prima facie obvious, the claimed invention, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant’s arguments with respect to the previous rejections under 35 USC 102/103 in view of Martinez have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Tejada-Ortigoza et al. In Vitro Fecal Fermentation of High Pressure-Treated Fruit Peels Used as Dietary Fiber Sources. Molecules. 2019 Feb 15;24(4):697. doi: 10.3390/molecules24040697: teaches “Fruit by-products are being investigated as non-conventional alternative sources of dietary f iber (DF). High hydrostatic pressure (HHP) treatments have been used to modify DF content as well as its technological and physiological functionality. Orange, mango and prickly pear peels untreated (OU, MU and PPU) and HHP-treated at 600 MPa (OP/55 ◦C and 20 min, MP/22 ◦C and 10 min, PPP/55 ◦C and 10 min) were evaluated. Untreated and treated fruit peels were subjected to fecal in vitro fermentations. The neutral sugar composition and linkage glycosidic positions were related to the production of short chain fatty acids (SCFA) resulting from the fermentation of the materials. After HHP-treatments, changes from multibranched sugars to linear sugars were observed. After 24 h of fermentation, OP yielded the highest amount of SCFA followed by PPU and MP (389.4, 282.0 and 204.6 µmol/10 mg DF, respectively). HHP treatment increased the SCFA concentration of orange and mango peel by 7 and 10.3% respectively, compared with the untreated samples after 24 h of fermentation. The results presented herein suggest that fruit peels could be used as good fermentable fiber sources, because they yielded high amounts of SCFA during in vitro fermentations” (see abstract, throughout document).
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/G.C.R./Examiner, Art Unit 1651
/THOMAS J. VISONE/Supervisory Patent Examiner, Art Unit 1672