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 October 30, 2025. Any objections and/or rejections made in the previous action, and not repeated below, are hereby withdrawn.
Claims 1-2 and 5-6 are pending, and claim 5-6 remain withdrawn from consideration as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Pang et al. (CN 105166767 A) in view of Yan et al. (CN 102640933 A).
Citations in the rejection are to Espacenet translations of both CN 105166767 A CN 102640933 A, which were provided with the previous action.
With respect to Claim 1, Pang et al. teaches a taro ball composition [0004] comprising 200-300 parts taro [0011], 20-30 parts white sugar [0012], and 80-120 parts tapioca starch. [0013] Pang et al. is silent to the use of phycocyanin powder, acetic-acid chitosan solution, and sodium alginate solution.
Yan et al. teaches a method of suspending phycocyanin in sodium alginate and chitosan. [0009] Yan et al. teaches that the composition can be prepared by mixing equal parts 4-6% sodium alginate solution with 5-9% phycocyanin solution, resulting in a solution of 2-3% sodium alginate and 2.5-4.5% phycocyanin. [0032-33] The mixture is solidified using CaCl2 [0034] then transferred to a solution of 1% acetic acid with 1.5-2.5% chitosan, and subsequently freeze-dried into a powder. [0035]
Yan et al. teaches that phycocyanin can be used as a colorant in food and has many beneficial functions as an antioxidant, anti-mutagenic, anti-tumor, immunity enhancer, and more, providing phycocyanin with broad applicability and strong market value. [0004] Yan et al. teaches that the microencapsulation process described improves the stability and helps maintain the physiological activity of the phycocyanin, and allows it to be used as a natural food additive. [0018]
Where Pang et al. teaches a recipe for making taro balls, Yan et al. teaches a food additive comprising phycocyanin, known for its beneficial health properties, as well as its use as a colorant. Additionally, Yan et al. uses an acetic acid-chitosan solution and a sodium alginate solution in equal parts in order to increase the stability of the phycocyanin powder.
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 ranges of sugar, taro, and tapioca starch taught in Pang et al. overlaps with the ranges recited in claim 1.
Additionally, the amounts of chitosan in the acetic acid solutions and concentration of sodium alginate solutions used to create the phycocyanin powder, and the resulting phycocyanin powder used in the composition recited in claim 1 simply reflect the results of routine optimization in order to determine the amount of phycocyanin necessary to receive the purported health benefits and desired coloration. According to MPEP 2144.05 II, “[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”.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the application, to have produced a phycocyanin taro ball comprising the ingredients and within the respective ranges recited in claim 1 by combining the teaching of Pang et al. with the teaching of Yan et al.
With respect to Claim 2, Pang et al. in view of Yan et al. teaches the composition as recited in claim 1, as described in the preceding rejection. Additionally, Pang et al. teaches 200-300 parts taro [0011], 20-30 parts white sugar [0012], and 80-120 parts tapioca starch [0013], and Yan et al. teaches the production of phycocyanin powder [0035] through sodium alginate [0032] and acetic acid-chitosan solutions. [0035]
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 ranges of sugar, taro, and tapioca starch taught in Pang et al. overlaps with the ranges recited in claim 2.
Additionally, the amounts of acetic acid chitosan and sodium alginate solutions used to create the phycocyanin powder, and the resulting phycocyanin powder used in the composition recited in claim 2 simply reflect the results of routine optimization in order to determine the amount of phycocyanin necessary to receive the purported health benefits. According to MPEP 2144.05 II, “[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”.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the application, to have produced a phycocyanin taro ball comprising the ingredients and within the respective ranges recited in claim 2 by combining the teaching of Pang et al. with the teaching of Yan et al.
Response to Arguments
Applicant's arguments filed October 30, 2025 have been fully considered but they are not persuasive.
Applicant asserts on Page 8, Lines 1-8, that, “the phycocyanin taro ball [has] the effects to be regarded as health food more than a simple beverages and dessert ingredients. The phycocyanin taro ball increases the stability of phycocyanin by making the phycocyanin coated with chitosan and low temperature drying which can protect the active ingredients of phycocyanin from being destroyed. Furthermore, sodium alginate has a unique advantage in thickening taro balls, making the taro balls smoother after addition, with taste of no stickiness and stiffness compared to ordinary taro balls, achieving better palatability and preventing the phenomenon of viscosity decline during product sterilization, freezing processing and transportation”.
MPEP 2145 VI, “Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims.” Additionally, MPEP 2145 I states, “Arguments presented by applicant cannot take the place of evidence in the record”.
Applicant’s assertion that the phycocyanin taro ball of the instant invention possesses unique nutritional and organoleptic properties due to the combination of ingredients and method of production amounts to limitations not recited in the claims and an argument presented by the applicant produced without evidence. Therefore, applicant’s assertion is found to be unpersuasive.
Applicant asserts on Page 8, Lines 25-28, “the disclosure of Pang does not involve ‘phycocyanin powder, acetic acid-chitosan solution, sodium alginate solution, or tapioca starch’ or ‘a mass percentage concentration of the chitosan in the acetic acid being 1%’ or ‘a mass percentage concentration of the sodium alginate solution being 1.5%-2.5%’”.
MPEP 2145 IV, states “One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references”. Applicant’s assertion that Pang is insufficient by itself is an attack on the reference individually, and is, therefore, unpersuasive.
Applicant asserts on Page 9, Lines 25-30, “It can be also clearly seen that the components of sodium alginate, chitosan, phycocyanin, CaCl2 solution, and chitosan solution with a final concentration of 1.5-2.5% using acetic acid solution for preparation the phycocyanin microcapsule in Van [sic] are also different the components in parts by mass: 0.5-2 parts of phycocyanin powder, 45-55 parts of acetic acid-chitosan solution, 50-150 parts of sodium alginate solution, 200-300 parts of taro, 20-30 parts of granulated sugar, and 100-200 parts of tapioca starch”.
MPEP 2145 IV, states “One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references”. Applicant’s assertion that Yan is insufficient by itself is an attack on the reference individually, and is, therefore, unpersuasive.
Applicant asserts on Page 10, Lines 11-12, that, “claim 2 depends directly or indirectly on currently amended claim 1, it is also patentable over the cited prior art for at least the same reasons as claim 1. The rejection of claim 1 is maintained and applicant’s assertions are found to be unpersuasive, for this reason applicant’s assertions with respect to claim 2 are found to be unpersuasive.
In light of the above response, the rejections of claims 1 and 2 are maintained.
Conclusion
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.
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/J.C.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791