DETAILED ACTION
Background
The amendment dated September 15, 2025 (amendment) amending claims 6-7, 10, 12-14 and 18 has been entered. Claims 6-20 have been examined. In view of the amendment all outstanding claim objections have been withdrawn.
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 Objections
Claim 10 is objected to because of the following informalities:
In the next to last line, remove the quotation mark [[“]] at the beginning of the line starting with “the Brookfield” and, in the last line remove the quotation mark [[“]] at the end of the line after “90 °C”.
Appropriate correction is required.
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 6-9, 13-16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over JPH05146278 A to Ujimaru et al. (Ujimaru)
All refences to Ujimaru refer to a Clarivate machine translation, a copy of which is provided with this Office action.
Unless otherwise indicated, all amounts disclosed without units are weight % (wt%) and wt% is considered interchangeable with mass %.
Regarding instant claims 6-7, 13-14 and 19, Ujimaru at Abstract on page 1 discloses a starch composition for use in soup (“for food products”) which at page 6, 2nd to last paragraph delays starch absorption in the digestive tract. At Example 4 on page 10 discloses making a soup granule comprising potato starch 20kg (“raw potato starch” as a “raw material starch”), glycerin fatty acid ester 0.23 kg (1.15 mass parts glycerin fatty acid ester per 100 mass parts raw potato starch (claims 7 and 14) by treating the mixture with a twin-screw extruder having a maximum temperature of 125 °C (“subjecting the ingredient mixture to a heat treatment of 100 °C or higher” in claim 13) at a pressure of 64 Kg/cm2 or about 6.4 MPa (“under a pressure condition of 0.5 MPa or higher but lower than 100 MPa” in claims 6 and 13) and then drying to form the food additive for a soup (“starch composition for food product” in claims 6 and 13 and a “food product comprising” it as in claim 19).
Further regarding instant claims 6 and 13, the starch composition for food products of Example 4 of Ujimaru appear to be substantially the same thing as the claimed starch composition for food products. Accordingly, absent a clear showing as to how the physical form of the Ujimaru starch composition for food products differs from that of the starch composition as claimed, the Office considers the starch composition for food products of Example 4 of Ujimaru to form a starch-lipid complex. See MPEP 2112.01.I.
Still further regarding instant claims 6 and 13, and regarding claims 9 and 16 Ujimaru does not say that its glycerin fatty acid ester is a polyglycerol fatty acid ester in claim 6 and 13; and, Ujimaru does not disclose a worked example wherein its polyglyceryl fatty acid ester has an HLB value of not lower than 1 and not higher than 13 and an average degree of polymerization of not less than 2 and not more than 9 as in claims 9 and 16. However, Ujimaru at page 4, 2nd and 3rd full paragraphs discloses various suitable glycerin fatty acid esters including decaglyceryl monolaurate, decaglyceryl monomyristate, hexaglyceryl monostearate, decaglyceryl monostearate, decaglyceryl. distearate, decaglyceryl tristearate, and hexaglyceryl monooleate. The ordinary skilled artisan would have found it obvious in Ujimaru to make its starch composition using a polyglyceryl fatty acid ester and to use one that has an HLB value of not lower than 1 and not higher than 13 and an average degree of polymerization of not less than 2 and not more than 9 because Ujimaru discloses such polyglyceryl fatty acid esters like hexaglyceryl monostearate as desirable for making its starch composition. Further, the Office considers the claimed polyglyceryl fatty acid esters having an HLB value of not lower than 1 and not higher than 13 as including the various polyglyceryl fatty acid esters disclosed at page 4 of Ujimaru.
Regarding instant claims 8 and 15, the Office has considered the optional claim limitation of a modified raw potato starch that has been subject to one or more modification treatments selected from the group consisting of cross-linking, hydroxypropylation, and esterification; however, the claims themselves do not require them.
Claims 6-16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over JPH0463559A to Watabe (Watabe), of record, in view of US6017388 to Yuan (Yuan).
All refences to Watabe refer to an Espace.net machine translation, a copy of which was provided in a prior Office action.
Unless otherwise indicated, all amounts disclosed without units are weight % (wt%) and wt% is considered interchangeable with mass %.
The Office considers any disclosed process that does not refer to a specific pressure or vacuum to comprise a process that occurs at atmospheric pressure or at about 10 MPa.
Regarding instant claims 6-12 and 19, be advise that the claimed starch-lipid complex is a product by process of heat treating under a pressure condition. The patentability of a product does not depend on its method of production. See MPEP 2113.I. Further, once a product appearing to be substantially identical is found and a prior art rejection is made, the burden shifts to the applicant to show an nonobvious difference over the art. See MPEP 2113.II. In the present case, the claimed process is disclosed in the art.
Regarding instant claims 6-7, 9, 13-14 and 16-17, Watabe at Abstract on page 1 discloses methods of making an antiobese food material and the resulting food (“starch composition for food product” as a “starch-lipid complex”) by binding a glycerin fatty acid ester to a starch in an ingredient mixture (claim 13) comprising (A) 2-20 pts. wt. of a glycerin fatty acid ester and (B) 100 pts.wt. of a starch. Further, at Example 3 at [0026]-[0027], Watabe discloses kneading a mixture of water, 10 kg flour (“raw material starch”) and 200 g glycerin monostearate (2 parts mass per 100 parts of raw material starch) under pressure at 130 °C (claims 6 and 13); the Office considers the claimed heat treatment by pressurizing and extruding the ingredient mixture of a raw material starch and a polyglyceryl fatty acid ester to include the kneading under heat and pressure in Example 3 of Watabe (claim 17). Still further, at [0007], Watabe discloses potato and sweet potato starch (“raw potato starch”) as suitable starches; and, at [0008] Watabe discloses preferred polyglycerol fatty acid esters having a polymerization degree of about 2 to 10, which the claimed not less than 2 and not more than 9 in claims 9 and 16 overlaps. At [0009], Watabe discloses that HLB of suitable polyglycerol fatty acid esters as including HLBs in any region. Further, the recited 0.1 to 4.8 mass parts polyglycerol fatty acid ester per 100 mass parts starch in claims 7 and 14 overlaps the 2-20 parts glycerol fatty acid ester per 100 pats starch as disclosed in Watabe at the Abstract. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.I.
Further regarding instant claims 9 and 16, the Office considers the polyglycerol fatty acid ester having from 2 to 10 glyceryl units as at [0008] of Watabe to be substantially the same thing as the claimed polyglycerol fatty acid ester having a degree of polymerization of not less than 2 and not more than 9. Absent a clear showing as to how the HLB of the polyglycerol fatty acid ester of Watabe from that of the polyglycerol fatty acid ester as claimed, the Office considers the polyglycerol fatty acid ester of Watabe at [0008] to have the claimed HLB of not lower than one and not higher than 13. See MPEP 2112.01.
Still further regarding instant claims 6, 9, 13 and 16, Watabe does not disclose an example wherein the raw material starch is a raw potato starch or a modified raw potato starch (claims 6 and 13); Watabe does not disclose an example wherein the glycerin fatty acid ester is a polyglycerol fatty acid ester (claims 6 and 13) or one such fatty ester have an average degree of polymerization of not less than two and not more than 9 as in claims 9 and 16. However, the ordinary skilled artisan would have found it obvious in Watabe to use a raw potato starch and a polyglycerol fatty acid ester having a degree of polymerization from 2 to 9 as in claims 9 and 16 to make its starch-lipid complex because at [0007] Watabe discloses that potato starches and at [0008] discloses that polyglycerol fatty acid esters having a degree of polymerization of not less than 2 and not more than 9 are suitable for use in making its starch-lipid complexes.
Watabe does not disclose a specific pressure in its Example 3 as a pressure condition of 0.5 MPa or higher but lower than 100 MPa.
Yuan at Abstract discloses methods of producing starch-emulsifier complexes as gels. At col. 4, lines 23-36, Yuan discloses the methods comprising combining the starch and emulsifier and water in a jet cooker or in an extruder. Further, at Example 1 on col. 7, Yuan discloses treatment in a jet cooker comprising a pump at 150 °C and 120 psi (0.83 MPa). At the sentence bridging cols. 2 and 3, Yuan discloses that the heat and pressure treating disrupts starch granules and solubilizes them to provide a starch-emulsifier dispersion.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Yuan for Watabe to heat treat its mixture of starch and emulsifier under pressure at a pressure condition of 0.5 MPa or higher but lower than 100 MPa. Both references disclose forming complexes of aqueous starch and emulsifier under heat and under pressure by kneading. The ordinary skilled artisan in Watabe would have desired to treat its starch and emulsifier mixture under heat and the claimed pressure conditions to disrupt the starch granules and enable their dispersion into emulsifier containing water as in Yuan which, further will render a more resistant starch product. In addition, the ordinary skilled artisan in Watabe would have desired to knead its composition in an extruder as Yuan discloses extruding as a desirable way to mix materials under controlled heat and pressure.
Regarding instant claims 10-12, the Office considers the starch-lipid complex as in Example 3 of Watabe as modified by Yuan at Example 1 on col. 7 comprising the raw potato starch at [0007] of Watabe, the polyglycerol fatty acid ester at [0008] of Watabe and made by the heat treating at a temperature of 100 °C or higher under a pressure condition of 0.5 to 100 MPa as at [0013] of Watabe to be substantially the same thing as the claimed starch-lipid complex. Accordingly, absent a clear showing as to how the viscosity of the Watabe starch-lipid complex differs from that of the starch-lipid complex as claimed, the Office considers the Watabe Example 3 as modified by Yuan at Example 1 on col. 7 starch composition for food products comprising potato starch as a starch-lipid complex made as at [0013] of Watabe using its preferred polyglycerol fatty acid ester (at [0008]) to have the claimed Brookfield viscosity (Pa۰s) at 20 °C without heating of a slurry, which is obtained by mixing the starch composition for food products with a mass of an edible rapeseed oil that is twice as much as and a mass of water that is 7 times as much as the mass of the starch composition for food products in this the stated order at 20°C without heating, as measured at 30 rpm for 30 seconds that is not lower than 2 Pa۰s and not higher than 100 Pa۰s, and wherein the Brookfield viscosity (Pa۰s) of the slurry measured at 30 rpm for 30 seconds after cooling or heating the slurry satisfies the following condition: the Brookfield viscosity (Pa۰s) at 0°C is not less than twice and not more than 30 times the Brookfield viscosity at 90°C, as in claim 10; to have a Brookfield viscosity of the slurry at 0 °C of not lower than 5 Pa۰s and not higher than 300 as in claim 11; and to have a difference between the Brookfield viscosities (Pa۰s) of the slurry at the temperatures of 20 °C, 30 °C, 40 °C, 50 °C and 60 °C when a freeze-thaw cycle is repeated three times under the following conditions and the Brookfield viscosities (Pa۰s) at the corresponding temperatures before the freeze-thaw cycle is within 10.0 Pa۰s: for the first freeze-thaw cycle, the slurry prepared at room temperature is cooled to -10 °C at a cooling rate of -1 °C /min and kept in that state for at least 15 hours, then the slurry is heated to reach 60 °C at a heating rate of 45 °C/min, and then cooled again to -10°C at a cooling rate of -1 °C/min and kept in that state for at least 15 hours; and for the second freeze-thaw cycle and on, the slurry that went through the first cycle is heated to reach 60 °C at a heating rate of 45 °C/min and then cooled again to -10°C at a cooling rate of -1 °C/min and kept in that state for at least 15 hours, as in claim 12. See MPEP 2112.01.I.
Regarding instant claims 8 and 15, although the Office has considered the optional claim limitation of a modified raw potato starch that has been subject to one or more modification treatments selected from the group consisting of cross-linking, hydroxypropylation, and esterification, the claims themselves do not require those limitations.
Regarding instant claim 19, Watabe at [0017] discloses food products comprising its starch composition.
Claims 8 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over JPH0463559A to Watabe (Watabe) in view of US6017388 to Yuan (Yuan) as applied to claims 6 and 13 above, and further in view of JP2010252758A to Kobayashi et al. (Kobayashi), of record.
All refences to Kobayashi refer to a Clarivate machine translation, a copy of which was provided in an earlier Office action.
Unless otherwise indicated, all amounts disclosed without units are weight % (wt%) and wt% is considered interchangeable with mass %.
As applied to claims 6 and 13, Watabe at Example 3, [0008] and [0013] as modified by Yuan at Example 1 and col. 4, lines 22-36 discloses a starch composition for food products comprising a starch-lipid complex and a method for making it by subjecting an ingredient mixture of raw or modified potato starch and a polyglycerol fatty acid ester to a heat treatment at 100 °C or higher under a pressure condition of 0.5 to 100 MPa.
Regarding instant claims 8 and 15, Watabe does not disclose a starch-lipid complex starch composition for food products or method of making one wherein the raw starch material comprises a modified raw potato starch obtained by subjecting the raw potato starch to one or more modification treatments selected from the group consisting of cross-linking, hydroxypropylation, and esterification. However, Watabe [0007] discloses suitable starches as including physicochemically synthesized starches. Further, Watabe at [0017] discloses uses for its starch-lipid complex in any food products that would comprise starch.
Kobayashi at Abstract on page 1 discloses a starch composition for food product such as curry sauce containing a combined starch, edible oil and fat and a polyglycerol fatty acid ester, in which the separation of the oil and fat caused by longtime heating and stirring is suppressed. At page 6, 3rd 4th and 5th full paragraphs, in [Production method] Kobayashi discloses making a roux composition (“starch-lipid complex”) by heat treating the mixture of starch, polyglycerol fatty acid ester and oil at 65 °C. Further, at the last full paragraph on page 3, 3rd full paragraph Kobayashi discloses starches modified by cross-linking, hydroxypropylation, and esterification as well as a raw potato starch.
Before the effective filing date of the present invention an ordinary skilled artisan would have found it obvious in view of Kobayashi for Watabe to use a modified raw potato starch which has been modified by cross-linking, hydroxypropylation, and esterification as in Kobayashi to make its starch-lipid complex. Both references disclose starch-lipid complex compositions made from the same starches and polyglycerol fatty acid esters by subjecting them to heat treatment and for use in the same food products comprising starch. The ordinary skilled artisan in Watabe would have desired to use the starches modified by cross-linking, hydroxypropylation, and esterification as in Kobayashi as a suitable physicochemically modified starch to make a starch-lipid complex that provides food products with improved resistance to separation of fats in those foods and insure proper thickening from the roux of Kobayashi.
Claims 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over JPH0463559A to Watabe (Watabe) in view of US6017388 to Yuan (Yuan) as applied to claims 6 and 19 above, and further in view of WO2021207869 A1 to Wang et al. (Wang), of record.
Unless otherwise indicated, all amounts disclosed without units are weight % (wt%) and wt% is considered interchangeable with mass %.
All refences to Watabe refer to a Clarivate machine translation, a copy of which was provided in an earlier Office action.
As applied to claims 6 and 19, Watabe at Example 3, [0008] and [0013] as modified by Yuan at Example 1 and col. 4, lines 22-36 discloses a starch composition for food products comprising a starch-lipid complex made by a method of subjecting an ingredient mixture of raw or modified potato starch and a polyglycerol fatty acid ester to a heat treatment at 100 °C or higher and under a pressure condition of 0.5 to 100 MPa. Further, at [0017] Watabe discloses use of the starch composition for food product in any food product that contains starch.
Watabe does not disclose an emulsified composition comprising the starch composition for food product and a mass of edible oil/fat that is not less than 0.5 times and not more than 10 times the mass of the starch composition for food products, and a mass of water that is not less than 0.5 times and not more than 10 times the mass of the starch composition for food products as in claim 18, and does not disclose the food product as a frozen dessert as in claim 20.
Wang at Abstract on pages 1-2 discloses a starch-lipid-protein complex formed by mixing a starch, a protein and a glycerol fatty acid ester made by heating the composition, wherein the composition is useful as a fat mimic in foods like ice cream (as a frozen dessert - claim 20). Further, at Example 1 on the last two lines of page 5 discloses an ice cream comprising 386 g water and 250 g of the fat simulant as a starch-lipid complex, wherein the amount of water is about 38.5 wt% of the composition. Further, in claim 7 on page 11 starting with “The application”, Wang discloses the food composition comprising 5 to 25 wt% cream and 10 to 40 wt% of the starch-lipid complex. The Office considers cream to comprise an edible oil or fat, wherein the disclosed ratio of the oil/fat to starch-lipid complex is 5:40 to 25:10 by mass or 1:8 to 5:2, which the claimed 0.5:1 to 10:1 overlaps. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.I.
Before the effective filing date of the present invention an ordinary skilled artisan would have found it obvious in view Wang for Watabe to use its starch-lipid complex to make an ice cream as a frozen dessert wherein the amount of oil/fat to the amount of starch-lipid complex is 0.5:1 to 10:1 by mass and the amount of water to the amount of starch-lipid complex is 0.5:1 to 10:1 by mass. Both references disclose starch-lipid complexes in dietetic foods that contain them to lower the amount of fat in the food. The ordinary skilled artisan in Watabe would have desired to make ice cream as in Wang because Wang shows that a food containing starch comprises ice cream as in Wang, and would have desired to use the proportions of the starch-lipid complex and water and oil as in Wang to insure that the starch-lipid complex thickens the mixture and provides a creamy texture to the frozen dessert.
Response to Arguments
Applicant’s arguments with respect to the Zhang reference have been considered but are moot because the new ground of rejection does not rely on Zhang or Lavoie for any teaching or matter specifically challenged in the argument.
In view of the amendment dated September 15, 2025, the following rejections are withdrawn as moot:
The rejections of claims 10-12 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite in regard to the claim 10 Brookfield viscosity conditions;
The rejections of Claims 6-8, 13-15 and 19 under 35 U.S.C. 102(a)(1) as being anticipated by CN1891081 A to Zhang et al.; and,
The rejection of claim 17 under 35 U.S.C. 103 as being unpatentable over JPH0463559A to Watabe in view of US2002/0189607 A1 to Lavoie et al.
The positions taken in the remarks accompanying the amendment dated September 15, 2025 (Reply) have been fully considered but are not found persuasive for the following reasons:
Regarding the positions taken in the Reply at pages 8-9 and again at page 10, that Watabe fails to disclose the claimed starch-lipid complex and that Watabe teaches away from heat treating at a temperature of 100°C or higher, respectfully the position does not take into account Watabe as a whole which (at Example 3 and Examples 1 and 4) discloses heat treatment well above 100 °C. The reason that Watabe discloses this is possible is that (at [0014]) the forming of its starch complex in which the starch is bound to a glyceryl fatty acid ester results in a compound that has a higher gelatinization temperature than that of starch. Accordingly, Watabe discloses the claimed starch-lipid complex and does not teach away from the claimed heat treating at 100 °C or higher.
The remaining positions in the Reply assert that the secondary references cannot be combined with Watabe or that the combinations of Watabe and other art do not meet the claims; however, these positions repeat positions already stated and addressed. Accordingly, the positions merely repeats positions already addressed and are taken as a general allegation of patentability. See 1.111(b).
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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/A.E.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791