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 regard to the application filed on March 10, 2023 and in response to a Request for Continued Examination filed on June 17, 2025.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 17, 2025 has been entered.
Status of Application
The amendment filed June 17, 2025 has been entered. Claims 1-6, 9, 10, 12-14, and 16-19 are currently pending in the application. Claims 7, 8, 11, 15, and 20 are canceled; claims 1-4 are withdrawn; claims 5, 6, 10, and 12 have been amended. Claims 5, 6, 9, 10, 12-14, and 16-19 are hereby examined on the merits.
The 112(b) rejection of claim 10 has been maintained and an additional ground of rejection for claim 10 under 112(b) has also been made.
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.
Claim 10 is 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 10 is rendered indefinite for failing to further limit the subject matter of the claim upon which it depends, as well as not being clearly defined. Claim 10 recites that the cofactor is a “particular” calcium salt, while claim 5, upon which claim 10 depends, recites that the cofactor is “at least one of calcium, magnesium, manganese, chloride, calcium hydroxide, calcium acetate, calcium gluconate, calcium lactate, or calcium citrate.” While claim 10 limits the cofactor to calcium, the claim broadens the cofactor to a “particular” calcium salt, instead of one of the specific calcium salts recited in claim 5, wherein the “particular” calcium salt is not clearly defined and could be any calcium salt. It is unclear if the cofactor is only limited to the six salts recited in claim 5, or if the cofactor can be any calcium salt as long as it is a “particular” calcium salt. It is also unclear as to what makes a calcium salt a “particular” calcium salt. For these reasons, claim 10 is rendered indefinite.
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 5, 6, 9, 10, 12-14, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Jing et al. (CN 102224960; all citations refer to the machine English translation) in view of López (ES 2304285; cited on PTO-892 dated July 11, 2023; all citations except Examples refer to the English translation) and Hoersten et al. (US Patent 4,988,530; cited on PTO-892 dated July 11, 2023), herein after referred to as Jing, López, and Hoersten, respectively.
Examiner’s note: The English translation of Jing writes various forms of the Cyperus plant used in the invention (e.g., Cyperus esculentus, Cyperus rotundus, Cyperus oleifera, Cyperus juncea). This is considered to be a translation issue, and all cited Cyperus plants will be considered to be Cyperus esculentus, as the original document discloses this specific species in English.
Regarding claims 5, 6, 10, and 12, Jing teaches a method comprising:
mixing a tiger nut substrate (i.e., Cyperus esculantus flour) with water to form a tiger nut beverage,
wherein the tiger nut substrate and water has a weight ratio of 1:15;
filtering the tiger nut beverage to form a filtered tiger nut beverage (i.e., Cyperus esculantus slurry) [0018];
combining the filtered tiger nut beverage with an enzyme to form an unhydrolyzed tiger nut beverage,
wherein the enzyme is an amylase,
wherein the enzyme is present at a quantity of 0.05% by weight of the unhydrolyzed tiger nut beverage;
stirring the unhydrolyzed tiger nut beverage for a sufficient time and temperature to form an enzyme-hydrolyzed beverage; and
heating the enzyme-hydrolyzed beverage at a sufficient temperature to inactivate the enzyme [0019] and form a final beverage (i.e., botanical beverage) [0023].
The amount of tiger nut substrate taught by Jing is 6.7% by weight of the tiger nut beverage [0018], which is less than the claimed range. However, Jing offers the motivation that tiger nut contains a great quantity of nutrient components (Abstract; [0009]). Therefore, one of ordinary skill in the art would have been motivated to adjust, through no more than routine experimentation, the amount of tiger nut to obtain a desired nutrient quality in the beverage.
Jing does not teach that the filtered tiger nut beverage is combined with a cofactor, wherein the cofactor comprises at least one of calcium, magnesium, manganese, chloride, calcium hydroxide, calcium acetate, calcium gluconate, calcium lactate, calcium chloride, or calcium citrate, wherein the cofactor is present at a quantity of 280 ppm to 325 ppm by weight of the unhydrolyzed tiger nut beverage.
López, in the same field of invention, teaches a method of making a tiger nut beverage wherein calcium chloride (a calcium salt) is added to the tiger nut beverage (i.e., base mix prior to enzyme treatment) in an amount of 0.012%, which is equivalent to 120 ppm (Example 2 – Cloruro cálcico). The calcium chloride of López is considered to be a cofactor since the instant claims recite calcium chloride (and a calcium salt) as a suitable cofactor. López offers the motivation that calcium chloride is a prebiotic element (p. 17, d Final symbiotic product) that has positive nutritional effects and contributes to the physiological and psychological benefits of consuming prebiotic foods (p. 12). 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 modified the method of Jing by incorporating the calcium chloride at the taught amount of López. One would have been motivated to make this modification for the benefit of improving the nutritional benefits of the final tiger nut beverage.
The amount of calcium chloride taught by López is slightly less than the claimed amount of cofactor. However, where both the prior art and the instant method teach the inclusion of calcium chloride in tiger nut beverages, the slight difference in concentration of the calcium chloride is not considered to provide a patentable distinction in the absence of evidence of unexpected results arising from the claimed amount. One of ordinary skill would have been able to have adjusted the amount through no more than routine experimentation and with the reasonable expectation that the claimed amount would continue to provide a suitable tiger nut beverage having a higher calcium content.
Jing and López are both silent as to combining the unhydrolyzed tiger nut beverage with at least one soluble fiber to control viscosity and form a soluble fiber-integrated unhydrolyzed tiger nut beverage, wherein the soluble fiber is present at a quantity of 0.1-8% by weight and wherein the soluble fiber is at least one of maple fiber, psyllium, tree fiber, crystalline cellulose, modified cellulose fiber, or resistant starch.
Hoersten, in the same field of invention, teaches a beverage that is combined with soluble fiber, the soluble fiber being gum arabic, the gum arabic of which is considered to be tree fiber as gum arabic is a soluble fiber that is sourced from an acacia tree, and the gum arabic in an amount of 1-4% by weight (col. 2 lines 12-19), which lies within the claimed range of 0.1-8% by weight. Hoersten offers the motivation that soluble fiber, when added to beverages, acts as an enrichment additive and/or a thickener replacement (col. 1 lines 6-9). 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 modified the method of Jing and López by incorporating the gum arabic, at the taught amount, of Hoersten. One would have been motivated to make this modification for the benefit of adding enrichment to the beverage.
The claim limitation of “at least one soluble fiber to control viscosity,” specifically the “to control viscosity” is considered to be a functional limitation of the claim and thus does not hold any patentable weight.
Jing, López, and Hoersten are all silent as to that the cofactor increases an activity of the enzyme in the unhydrolyzed tiger nut beverage, as well as being silent as to the botanical beverage having an intrinsic viscosity of 40-78 centipoise.
However, where the claimed and prior art products are produced by substantially identical processes, a prima facie case of obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Since the beverage of modified Jing is produced by a substantially identical method to that of the claimed method, the prior art beverage must necessarily possess the same properties and characteristics as the beverage claimed. Therefore, the cofactor in the beverage produced by the method of modified Jing is considered to increase an activity of the enzyme as claimed, and the beverage produced is considered to possess the intrinsic viscosity as claimed, because the beverage is produced by a substantially identical method and thus must necessarily exhibit the same properties.
Regarding claim 9, modified Jing teaches that the enzyme is an amylase (Jing [0019]), but is silent as to the enzyme being a bacterial-sourced amylase.
However, the source of the enzyme (fungal vs. bacterial) is not considered to provide a patentable distinction in the absence of convincing arguments or evidence to the contrary where the prior art teaches amylase treatment of a tiger nut composition.
Regarding claim 13, modified Jing teaches that the beverage comprises salt (Jing [0014]), which is considered to be a flavoring and is considered to meet the claimed “or other flavorant.”
Regarding claim 14, modified Jing teaches that the tiger nut substrate is in a form of tiger nut flour (i.e., Cyperus esculantus flour) (Jing [0018]).
Regarding claims 16 and 17, modified Jing teaches the unhydrolyzed tiger nut beverage (i.e., a composition comprising tiger nut, water, and enzyme) is stirred at a temperature of 60°C and for 40 minutes (Jing [0019]), the temperature of which affects the enzymatic hydrolysis process (Jing [0079] and [0090]). The stirring time falls within the claimed range of 20-40 minutes.
This temperature taught by modified Jing is lower than the claimed range of 70-85°C.
However, one of ordinary skill would have recognized that the degree of hydrolysis depends on the temperature and duration of the enzymatic treatment. One of ordinary skill, through no more than routine experimentation, would have been able to have arrived at the claimed temperatures and time for treating, depending on the extent of hydrolysis desired in the beverage. 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. "[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). See MPEP 2144.05.II.A.
Regarding claims 18 and 19, modified Jing teaches the enzyme hydrolyzed beverage is heated to a temperature of 95°C (Jing [0019]), falling within the claimed range of 85-105°C. Modified Jing also teaches that the enzyme hydrolyzed beverage is heated for 15 minutes (Jing [0019]), which is longer than the claimed range of 5-10 minutes.
Jing offers the motivation that heating the enzyme hydrolyzed beverage for this duration inactivates the enzyme/amylase (Jing [0019]). One of ordinary skill in the art would have recognized that inactivation of the enzyme depends on the temperature and duration of the treatment. One of ordinary skill, through no more than routine experimentation, would have been able to have arrived at the claimed temperatures and time for inactivating the enzyme.
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. "[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).
Response to Arguments
Applicant's arguments filed June 17, 2025 have been fully considered but they are not persuasive.
The prior art rejection has been amended in light of applicant’s amendments to the claims, however, the essential prior art rejection has been maintained by the examiner for the following reasons.
Applicant argues that the prior art fails to teach the features of newly amended claim 5, specifically the new limitation of “combining the unhydrolyzed tiger nut beverage with at least one soluble fiber to control viscosity and form a soluble fiber-integrated unhydrolyzed tiger nut beverage,” and that neither López nor Hoersten cure this deficiency of Jing (remarks, pp. 6-8).
This argument is not persuasive, as Jing in view of López and Hoersten teach the features of amended claim 5, and the new limitations, as set forth above in the rejection. Hoersten teaches a beverage with gum arabic, which is considered to be a tree fiber as claimed as gum arabic is a soluble fiber sourced from an acacia tree. Thus, the prior art does teach the newly amended claim limitations of amended claim 5.
In the absence of any further arguments with regard to the rejections of the additional dependent claims, the rejections of these dependent claims are maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAURA E SWEENEY whose telephone number is (571)272-0244. The examiner can normally be reached M-F 8:00-5:00 EST.
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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791