DETAILED ACTION
An amendment, amending claims 1 and 4-10, was entered on 11/25/25.
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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 1, 4, 5 and 6 each recite “methoxy pectin”. This term is not disclosed in the original specification, which only refers to “low methoxy pectin.”
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 1-11 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.
Claims 1, 4, 5 and 6 each recite “methoxy pectin”. It is not clear what these material refers to. For the purposes of this action, it is understood to mean a pectin compound having methoxy groups.
Given the prosecution history of this case surrounding “low methoxy pectin” and “methoxy pectin,” the examiner suggests providing evidentiary sources that show that “low methoxy pectin” is a term which has a well understood meaning in the art if such sources exist. If such sources are not available, the examiner suggests either filing a continuation in part which defines low methoxy pectin or removing it from the claims. It does not appear that the filed specification provides support for “pectin” broadly or “methoxy pectin” as currently claimed.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Tchakalova et al. (US 2020/0238244) in light of Jiang et al. (US 2017/0216159).
Claim 1: Tchakalova teaches a hydrogel bead composition (Abst.) comprising: pectin, sodium alginate, glycerin and a hydrophobic coating liquid (¶¶ 0057-0059, 0084, 0122).
Tchakalova fails to disclose if the pectin includes methoxy groups. Jiang teaches a composition for forming hydrogel beads (Abst.) and explains that low methoxy pectin is a suitable form of pectin to use (¶ 0039). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected low methoxy pectin as the pectin in Tchakalova with the predictable expectation of success.
Claim 2: Tchakalova teaches that the composition includes a pigment (i.e. claimed coloring agent) (¶ 0154). Tchakalova does not teach the amount of water included, but instead teaches that the amount of water used is proportional to the amount of solids (see, e.g., ¶ 0139). Therefore, the amount of water included is a result effective variable based on the amount of solids needed for the desired beads. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected 200 mL of water with the predictable expectation of success.
Claim 3: Tchakalova teaches that the composition includes a pigment (i.e. claimed coloring agent) (¶ 0154), but is silent regarding whether it is natural or synthetic. However, it has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is prima facie obvious. MPEP § 2143(I). In this case, it would have been obvious to one of ordinary skill at the time of filing to have selected either natural or synthetic dyes as the pigment with the predictable expectation of success.
Claim 4: Tchakalova is silent regarding exact amounts of each component, but teaches that different amounts of each component can be selected depending on the desired concentration in the beads (see, e.g., ¶¶ 0135-0144, claim 5). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected the claimed amounts depending on the desired concentration of each material in the final beads with the predictable expectation of success.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Tchakalova and Jiang in light of Podszun et al. (US 5,932,152).
Claim 5: Tchakalova teaches that the biopolymer (i.e. the pectin and alginate), the hydrophobic coating liquid and the emulsifier (i.e. the claimed glycerin) are mixed to form a first mixture (¶¶ 0057-0061, 0084, 0143-0144); and calcium chloride of 0.01-5% is mixed into the first mixture to form moist beads (¶¶ 0003, 0061, 0086). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected calcium chloride of 3% with the predictable expectation of success.
Tchakalova fails to teach a resting step to remove bubbles. Podszun teaches gel beads (Abst.; 1:5-16) and explains that it is desirable to remove entrapped air bubbles by resting the beads for a period of time (5:23-35, e.g.). Thus, it would have been obvious to one of ordinary skill at the time of filing to have rested the beads of Tchakalova in order to have removed any trapped bubbles with the predictable expectation of success.
Allowable Subject Matter
While all claims have been rejected under § 112, as discussed above, the concepts claimed in claims 6-11 are not disclosed in the prior art.
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 Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712