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 applicant’s submission dated April 14, 2026. Any objections and/or rejections made in previous actions and not repeated below are hereby withdrawn.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 14, 2026 has been entered.
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 1, 3, 8, and 22 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.
The term “substantially free” in claim 1 is a relative term which renders the claim indefinite. The term “substantially free” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purposes of invention, “substantially free” will be interpreted as having none. Claims 3, 8, and 22 are rejected due to their dependency on claim 1.
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 1, 3, 8 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Blaak et al. (US 20190275076 A1).
With respect to Claim 1, Blaak et al. teaches a dietary fiber composition comprising a combination of one or more inulin-type fructans. [0022] Blaak et al. teaches that embodiments are envisaged wherein the inulin-type fructan comprises a combination, such as a combination of short and long chain inulin products. [0032] Blaak et al. also teaches that inulin can be derived from chicory roots. [0029] This teaching reads on the limitation of a plant-based texturizing fiber comprising a combination of long and short chain inulin.
Blaak et al. teaches a preferred embodiment of the invention, wherein the degree of polymerization of the long chain inulin is at least 20 and less than 60 [0028] and the degree of polymerization of the short chain inulin is within the range of 6-10. [0030] This reads on the limitation of the long chain inulin having a DP of greater than 20 and the short chain having a DP of less than 12, and a composition being substantially free of inulin polymers having an average DP between 12 and 20.
Additionally, Blaak et al. teaches that the short chain inulin can comprise at least 60% of the inulin composition [0028] and that the whole composition may contain resistant starch such that the ratio of inulin to starch is between 1/5 and 10/1. [0050] A composition comprising short and long chain inulin as taught by Blaak et al. wherein the short chain inulin is 60% of the composition and the ratio of inulin to starch is between 1/5 and 10/1 would comprise about 60% short chain inulin, 30% long chain inulin, and 10% starch, resulting in a short to long chain inulin ratio of 2:1.
According to the MPEP 2144.05 I, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” The ratio of short to long chain inulin taught by Blaak et al. overlaps with the ratio recited in claim 1, and therefore reads on the limitation of the ratio of short to long chain inulin being between 1:0.15-2:1.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Blaak et al. to produce a plant-based, texturizing fiber composition comprising short and long chain inulin at a ratio between 1:0.15 to 2:1, wherein the short chain inulin has a DP of less than 12 and the long chain inulin has a DP of greater than 20, and wherein the composition is substantially free of inulin polymers having an average DP between 12 and 20, thereby rendering claim 1 obvious.
With respect to Claim 3 and 8, Blaak et al. teaches the composition recited in claim 1, as detailed above. Additionally, Blaak et al. teaches a preferred embodiment of the invention, wherein the degree of polymerization of the long chain inulin is between 22-29 [0028] and the degree of polymerization of the short chain inulin is within the range of 6-10. [0030]. Therefore, Blaak et al. teaches the invention recited in claims 3 and 8.
With respect to Claim 22, Blaak et al. teaches the composition recited in claim 1, as detailed above. Additionally, 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”. The composition taught by Blaak et al. is substantially identical to the claimed composition and would therefore possess the same physical characteristics, specifically the coefficient of friction recited in the instant claim. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Blaak et al. in order to produce a composition according the limitation recited in claim 1, wherein the coefficient of friction is between 0.2-0.6 at 10 mm/s.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Blaak et al. (US 20190275076 A1) in view of Nguyen et al. (Tribological method to measure lubricating properties of dairy products, Journal of Food Engineering).
With respect to Claim 22, Blaak et al. teaches a fiber composition as set forth above with regard to claim 1. Blaak et al. teaches that the composition may be added to nutritional drinks and other fortified beverages [0101] and that the composition is beneficial for the treatment of weight conditions such as obesity. [0021]
Blaak et al. is silent to the friction coefficient of the composition.
Nguyen et al. presents a study of tribology motivated by the growing interest in its ability to ascertain the properties of food during consumption, [Abstract] specifically with respect to fluid viscosity and the coefficient of friction [Page 28, Col. 1, Par. 3] in dairy and non-dairy products. [Page 28, Col. 2, Par. 1] Nguyen et al. tests the viscosity and friction coefficient of milk with fats of 0.1%, 1.3%, 2.0%, 3.8%, and 4.9%. [Table 1] The results show that the friction of coefficient for all milk samples at 10mm/s are within 0.2 to 0.6. [Fig. 7]
Blaak et al. and Nguyen et al. exist within the same field of endeavor in that they are both related to food compositions. Wherein Blaak et al. teaches a fiber composition comprising short and long chain inulin, Nguyen et al. teaches the physical properties of dairy milk, including the coefficient of friction.
One would have been motivated to combine these references in order to produce a plant-based fiber composition that would be able to deliver the health benefits provided by long and short chain inulin as taught by Blaak et al. comprising the desirable properties of dairy milk as taught by Nguyen et al.
Additionally, a plant-based dairy composition comprising the fiber taught by Blaak et al. would have a coefficient of friction taught by Nguyen et al. of between 0.2 and 0.6 at 10 mm/s, which reads on the limitation recited in claim 15. According to the MPEP 2144.05 I, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have produced a plant-based, texturized fiber composition comprising short and long chain inulin, as taught by Blaak et al., wherein the coefficient of friction is between 0.2 and 0.6 at 10 mm/s by utilizing the teaching Nguyen et al.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 8, and 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 27, 33, and 38 of copending Application No. 19/234,950. Although the claims at issue are not identical, they are not patentably distinct from each other.
With respect to Claim 1, Claim 1 of the instant application recites the limitation, “A plant-based texturizing fiber composition comprising a combination of long chain and short chain inulin, wherein the long chain inulin has an average degree of polymerization (DP) greater than 20 and the short chain inulin has a DP less than 12, wherein the composition is substantially free of inulin polymers having an average DP between 12 and 20, and wherein the ratio of the short chain inulin to the long chain inulin present in the composition on a w/w basis is between 1:0.15 and 2:1”.
Claim 27 of the reference application recites, “A plant-based dairy milk alternative composition formulated to resemble organoleptic properties of dairy milk in friction coefficient, the composition comprising: a) 80-99% w/w water; b) 0.0001-4% w/w a vegetal fat; c) 0.0001-5% w/w a plant protein; d) 0.0001%-5% w/w a texturizing fiber comprising a combination of long chain and short chain inulin, wherein the long chain inulin has an average degree of polymerization (DP) greater than 20 and the short chain inulin has a DP less than 12; wherein the ratio of the short chain inulin to the long chain inulin present in the composition on a w/w basis is between 1:0.15 and 2:1; and e) 0.0001%-5% w/w a buffering agent; f) optionally, 0.001-1% w/w a hydrocolloid agent; g) optionally, 0.0001%-5% w/w a sweetening agent; h) optionally, 0.0001% to 5% w/w a flavor modification agent, wherein the friction coefficient of the composition is 0.2 - 0.6 at 10 mm/s sliding speed”
The recitation of “0.0001%-5% w/w a texturizing fiber comprising a combination of long chain and short chain inulin, wherein the long chain inulin has an average degree of polymerization (DP) greater than 20 and the short chain inulin has a DP less than 12; wherein the ratio of the short chain inulin to the long chain inulin present in the composition on a w/w basis is between 1:0.15 and 2:1” in the reference claim 27 teaches all limitations recited in claim 1 of the instant application, except “wherein the composition is substantially free of inulin polymers having an average DP between 12 and 20”. The reference application makes no suggestion to polymers between the ranges recited, instead presenting the DP of the short and long chain inulin as maximum and minimum respectively. Therefore, claim 27 of the reference application renders obvious claim 1 of the instant application.
With respect to Claim 3, both Claim 33 of the reference application and Claim 3 of the instant application recite the composition taught in claim 1 of the instant application, wherein the long chain inulin has an average degree of polymerization (DP) within the range of 21 to 60.
With respect to Claim 8, both Claim 38 of the reference application and Claim 8 of the instant application recite the composition taught in claim 1 of the instant application, wherein the short chain inulin has an average degree of polymerization (DP) within the range of 3 to 11.
With respect to Claim 22, both Claim 27 of the reference application and Claim 22 of the instant application recite the composition taught in claim 1 of the instant application, wherein the coefficient of friction at 10 mm/s of the composition is about 0.2 to about 0.6.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed May 14, 2026 have been fully considered but they are not persuasive.
Applicant draws attention to Examiner’s assertion in the Action dated November 14, 2025 on Page 3, Lines 27-28, that, “the instant invention is used to modify the organoleptic properties of dairy milk (Office Action pg. 6, #23)”, and clarifies on Page 4, Lines 1-2, that, “the present invention uses a specific ratio blend of short to long chain inulin to replicate the mouthfeel and friction profile of dairy milk”.
Examiner concedes the typographical error in the previous Office Action and clarifies that the statement should read “the instant invention is used to modify the organoleptic properties of non-dairy milk”. Examiner reasserts the sentiment that the limitation of modifying the organoleptic properties of non-dairy milk is not commensurate in scope with the claim as stated in the previous action.
Applicant asserts on Page 4, Lines 9-10, that Blaak et al. “expressly characterizes these materials by average DP values and distributions, not by binary cut offs or discrete mass fractions at DP =20” and continues on lines 12-13, “Blaak et al., discloses only a distribution of chain lengths and expressly includes intermediate-length inulin species”. Applicant concludes, on lines 16-18, “The Examiner’s calculation improperly collapses the three-component distribution into a two-component system and therefore does not compute the true short-chain-to-long-chain weight ratio of the compositions disclosed by Blaak et al.”.
Examiner directs applicant to MPEP 2145 X. D, 1, which states, “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternative because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed”. Applicant cites a single embodiment of the invention taught by Blaak et al. in the prior assertion, but fails to account for the embodiment comprising a combination of short and long chain inulin. [0032] Additionally, the disclosure of Blaak et al. not only teaches a range of short and long chain inulin ranging from 2-60 DP, as asserted by applicant, but also discrete lengths desired within the categories of short [0030] and long [0028] that overlap with the ranges recited in claim 1 and exclude the intermediate chain lengths.
For these reasons, applicant’s assertion is found to be unpersuasive.
Applicant asserts on Page 4, Lines 19-22, that “Blaak et al., does not disclose the weight-average DP of its ‘long-chain’ fraction, and therefore does not establish that the material constituting the remainder of the inulin composition (i.e., the non-short chain inulin fraction) satisfies the requirement of the currently pending claim 1 of long chain inulin having an ‘average DP greater than 20’”.
Applicant is directed to MPEP 2144.01, which states, “[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would be reasonably expected to draw therefrom”. It would have been reasonable for a skilled artisan in the field of endeavor to envisage a composition of short and long chain inulin comprising the ranges recited in the instant claim 1 using the teaching of Blaak et al. by extrapolating the amount of long chain inulin in a composition comprising short and long chain inulin and starch, from the embodiment taught comprising 60% short chain inulin and 10% starch.
For this reason, applicant’s assertion is found to be unpersuasive.
Applicant asserts on Page 5, Lines 5-6, that, “Nguyen measures friction coefficients for dairy products”, explaining on lines 9-10, that, “the reported values (approximately 0.2-0.6 depending on fat content and normal load) arise from fat-mediated lubrication mechanisms”, concluding on lines 13-15, “Nguyen neither discloses nor suggests inulin, dietary fiber, or polymer chain-length-dependent lubrication, and therefore is not reasonably pertinent to the problem addressed by currently pending claim 22”. Applicant also asserts on Page 5, Lines 20-21, that, “The Office Action further provides no articulated rationale or reasonable expectation of success” and again on Page 6, Lines 2-4, that, “it is incumbent upon the Examiner to provide a reasoned explanation of a POSITA’s motivation to combine the cited references and what or how a POSITA would have had a reasonable expectation of successfully combining the references to obtain the claimed composition”.
Applicant is directed to MPEP 2145 III, which states, “It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements”. Additionally, relevance to MPEP 2145 II, “Mere recognition of properties in the prior art does not render nonobvious an otherwise known invention” and IV, “One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references”.
Regardless of the mechanism, Nguyen et al. teaches the physical properties of dairy milk, including the limitation recited in claim 22. Additionally, the invention of Blaak et al. is directed to non-dairy beverages designed to imitate the organoleptic properties of dairy milk. One of ordinary skill in the art would have been motivated to develop a non-dairy composition according to Blaak et al. with the physical properties of dairy milk taught in Nguyen et al. in order to more closely imitate the beverage that is being imitated. Finally, the composition taught by Blaak et al. comprises all the limitations recited in the independent claim 1, the claim upon which claim 22 depends. Therefore, the composition would be reasonably expected to possess the same latent properties as the invention recited in claim 1.
For these reasons, and those stated in the above response, applicant’s assertions are found to be unpersuasive and the rejections of claims 1, 3, 8, and 22 are maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH CULLEN MERCHLINSKY whose telephone number is (571)272-2260. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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/J.C.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
Prosecution Insights