DETAILED ACTION
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-9 and 44, drawn to a method of producing a thickener.
Group II, claim(s) 10-14, drawn to an edible thickener.
Group III, claim(s) 15 and 16, and 24, drawn to a method of using a thickener in food.
Group IV, claim(s) 22 and 23, drawn to a storage and delivery system.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: The groups lack unity of invention because even though the inventions of these groups require the technical feature of a food grade thickener of claim 10, i.e. comprising a polysaccharide and gum, this technical feature is not a special technical feature as it does not make a contribution over the prior art as discussed below.
During a telephone conversation with Rob Schwartzman on September 17, 2025 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-9 and 44. Affirmation of this election must be made by applicant in replying to this Office action. Claims 10-16 and 22-24 have been withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 1-9 and 44 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.
Claim 1 recites “adding a polysaccharide to the aqueous phase thereby forming a gelled mixture”. The term “gel mixture” is unclear. As the claimed (claim 2) and disclosed polysaccharides include polysaccharides, such as agar, that do not gel, but rather thicken when added to water, unless additional steps are taken to promote gelling, it is unclear as to if the claimed term simply means “thicken” or is limited to a “gel” wherein additional, unnamed steps would be required. For the purpose of prior art comparison, the addition of one of the claimed and/or disclosed polysaccharides to an aqueous solution is considered to encompass the limitations as claimed. Claim 44 is rejected for substantially the same reasons. Additionally, it is noted that claim 44 supports the position of the office in that a first polysaccharide as disclosed can be added to the aqueous solution and not form a gel mixture, but rather a continuous phase.
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 1-9 and 44 are rejected under 35 U.S.C. 103 as being unpatentable over Tristram et al (WO 2018/045419) in view of Tristram et al (WO 2019/165506).
Tristram et al (Tristram) teaches a method of providing a food grade thickener (abstract). Tristram exemplifies the method of making the thickener as comprising: dissolving a first polysaccharide in water, i.e. providing an aqueous phase to which a polysaccharide is added, followed by the addition of citric acid and potassium sorbate; then adding xanthan gum, i.e. a second polysaccharide; then heating to 80C; and adding gellan gum (a thickener) (page 36, Example 1 and page 4 line 10 through page 5 line 3).
Regarding adding the polysaccharide to the aqueous phase thereby forming a gelled mixture as recited in claim 1(i), the polysaccharide added as recited in claim 2, and adding a first polysaccharide to establish an aqueous continuous phase and adding a second polysaccharide to form the gelled mixture as recited in claim 44, as discussed above, the limitations are unclear. Additionally, it is noted that the claimed limitation only recites the addition of the polysaccharide to form a “gelled mixture” and/or continuous phase. As Tristram teaches the first polysaccharide may also be gellan gum (page 11 line 19 through page 12 line 13), and the second as xanthan gum, both of which were known to gel or thicken in water, the teachings of Tristram at least make obvious adding a first polysaccharide, i.e. gellan or Larix polysaccharide extract to the aqueous phase to form an aqueous continuous phase, and adding a second polysaccharide, i.e. xanthan, to form a gelled mixture.
Regarding hydrolyzing the gelled mixture to reduce the viscosity as recited in claim 1 (ii), wherein the gel is hydrolyzed at a temperature of about 50-95C as recited in claim 4, or for a duration of about 2-72 hours as recited in claim 5, or with acid hydrolysis as recited in claim 6, as discussed above, Tristram teaches or at least makes obvious a thickening product made by forming a “gelled mixture” with a polysaccharide and then heating said mixture to 80C. Tristram is not specific to the heating as hydrolyzing the gelled mix or to other means of hydrolysis. Tristram et al WO2019/165506 (Tristram ‘506) teaches a stable thickening composition which is formed by hydrolyzing a polysaccharide containing solution (abstract, page 1 lines 4-6, page 5 line 16 through page 6 line 7, page 11 line 24 through page 12 line 3). Tristram ‘506 teaches that hydrolysis is preferably with heat or acid treatment (page 4 lines 9-14) for about 15 minutes to 48 hours (page 5 lines 10-12 and page 18 lines 7-10) and/or at a temperature of about 55-90C (page 5 lines 1-4). It would have been obvious to one of ordinary skill in the art for the polysaccharide thickening composition of Tristram to be hydrolyzed through known means, including for about 15 minutes to 48 hours with acid, or at a temperature of about 55-90C in order to produce a stable product as taught by Tristram ‘506.
Regarding adding a gum to the hydrolyzed gum mixture under conditions such that the gum only partially expresses its viscosity as recited in claim 1 (iii), and to the gum as one selected from the group including gellan gum as recited in claim 8, as discussed above, Tristram in view of Tristram ‘506 at least makes obvious adding a xanthan gum, a thickener, to the hydrolyzed gum mixture. Tristram further teaches that the water binding ability of the thickeners can be modulated and controlled to produce specific degrees of inhibition when used with polysaccharides, such as that their viscosity may be released upon dilution, and use (page 13 lines 9-15, page 29 lines 5-8 and 19-21, and page 32 lines 18-24). Thus, the teachings of Tristram encompass the limitations as claimed.
Regarding the polysaccharide as added to the aqueous phase from about 0.5-30% as recited in claim 3, Tristram teaches that the polysaccharide is added from about 3-30% (page 30 line 22 through page 31 line 2).
Regarding the hydrolyzed gel mixture as having a viscosity of between about 40-150cP measured at 20C using a Brookfield viscometer #1 spindle at 10rpm as recited in claim 7, Tristram is silent to the limitation as claimed. However, as Tristram teaches that the final thickener, which is the hydrolyzed gel mixture, plus an additional gum (thickener), has a viscosity of less than 2000cp (page 4 lines 10-13), preferably between about 500-1500cP (page 28 lines 7-14 and page 28 line 19 through page 29 line 2) and that the thickener preferably increases the viscosity of the food greater than 95cp (page 29 lines 3-5); and/or as Tristram teaches of forming the hydrolyzed gel mixture with the same steps as claimed and disclosed, including the addition of the same polysaccharides, in the same amounts, and hydrolysis with overlapping conditions, the method of Tristram is expected to produce an intermediate product overlapping the viscosity as claimed. Applicant has chosen to use an equation with parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facie case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different. Alternatively, Tristram ‘506 teaches that thickening compositions can have “suitable” flows (page 22 lines 17-19). It would have been obvious for the intermediate product of Tristram to have a viscosity that provided a suitable flow for the final product and/or further processing in view of Tristram ‘506.
Regarding the gum as added in a concentration of about 2-30% as recited in claim 9, as discussed above, Tristram teaches of adding a xanthan gum, i.e. a thickening agent, to the composition after heat treatment. Tristram teaches that the thickening agent is present from about 3-30% (page 30 lines 6-19).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELLY BEKKER whose telephone number is (571)272-2739. The examiner can normally be reached Monday-Friday 8am-3:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at 571-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792
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