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 .
Election/Restrictions
Applicant's election with traverse of claims 14-16 in the reply filed on 9/15/2025 is acknowledged. The traversal is on the ground(s) searching for group II would automatically uncover the process of group I and that one requires the method of claim 1 in order to meet the product of claim 14. This is not found persuasive because claim 14 recites that the product is “obtainable by the method according to claim 1” and not that it is required to be made by claim 1. Furthermore, even if the term “obtained” was recited, claim 14 is a product claim and not a method claim. The method of making is not directly required but rather the properties associated with said method.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-13 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected method, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/15/2025.
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 15 and 16 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 15 recites the broad recitation “at least 7”, and the claim also recites “preferably at least 8%” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 15 has broad narrow limitations in parts a), b) and c).
Regarding claim 16, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fuentes(US 2005/0159329).
Fuentes teaches a branched starch hydrolysate wherein said composition
has a percentage of α-1,6, linkages between 13 and 17%(abstract, example 1)
Fuentes does not specifically teach that product is formed by the method recited in claim 1. However, claim 14 does not require that the product by obtained by the method but rather is “obtainable” by the method of claim 1. Therefore, since Fuentes teaches a branched hydrolysate and the method of claim 1 forms a branched hydrolysate, Fuentes is considered to meet the claim.
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.
Claim(s) 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fuentes(US 2005/0159329).
Regarding claims 14,15, Fuentes teaches a branched starch hydrolysate wherein said composition
b) has a percentage of α-1,6, linkages between 13 and 17%(abstract, example 1)
c)comprises
70 to 85% of branched chains with a DP of less than 15 [0073]
10 to 16% branched chains having with a DP of between 15 and 25(para 74),
8 to 13% branched chains having with a DP greater than 25(para 75).
Therefore, the hydrolysate comprises 18-29% of branches of the branched starch hydrolysate with a DP equal to or greater than 15. Furthermore, it would have been obvious for some of the 70 to 85% of branches to have a DP of 10-15(i.e. still less than 15 as disclosed). Therefore, the total amount of branches of the branched starch hydrolysate with a DP equal to or greater than 10 would reasonably comprise at least 30% by weight as claimed.
Regarding limitation a). Fuentes teaches that 70 to 85% of branches has a DP of less than 15(para 73). Therefore, the average DP of the composition would be around 10, based on the large number of branches with a DP of 1-15. DE is defined as 100/DP. Therefore, the DE of the composition would be expected to be around 10.
The instant spec identifies the method of claim 1 as producing branched starch hydrolysates have the properties of a)-c)(instant spec, p.3). Therefore, Fuentes is considered to be “obtainable” by the method of claim 1.
Regarding claim 16, Fuentes teaches that the hydrolysates according to the invention can be used in a diabetic diet(para 146). Therefore, it would have been obvious to form products such as diabetic meals with the hydrolysate of claim 14.
Conclusion
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/KATHERINE D LEBLANC/Primary Examiner, Art Unit 1791