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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/5/26 has been entered.
Claims 4,5-7 are amended. Claims 1-8 are pending.
Part of the 112 second paragraph rejection is withdrawn due to the amendment.
Claim Rejections - 35 USC § 112
Claim 5 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.
In claim 5, step (vi) is vague and indefinite because it is unclear what is being claimed. The step recites “ resuspending the thermally inhibited starch”; however, it’s unclear what resuspending entails because there is no parameter defining resuspending. The step “ correcting the pH to 5.5-6” is vague and indefinite because the pH overlaps. The only pH in the claim is in step ii which recites the range of between 4-6 which overlaps with the range in step vi. If the pH is 6, or 5.5, or 5.6 etc.., then what does the correcting pH in step vi means.
Claim Rejections - 35 USC § 103
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shah ( WO 2020/139997).
For claim 1, Shah discloses a thermally modified starch. ( see abstract)
For claim 2, Shah discloses the thermally modified starch having a sedimentation volume of 10-50 ml. Shah discloses desired hot peak viscosity and high level of inhibition. How the peak swelling is analyzed is a processing step which does not determine the patentability of the product.( see paragraphs 0023, 0104)
For claim 3, Shah discloses the thermally modified starch having an L value of greater than 93, about 94-95. ( see paragraph 0020)
For claims 4,6, Shah discloses the starch selected from corn, waxy corn, potato, waxy potato etc.. ( see paragraph 0019)
For claim 5, Shah discloses a method for preparing a thermally modified starch. The method comprises the steps of preparing a starch slurry comprising 30-60% starch, adding into the slurry sodium citrate and citric acid powder to obtain pH of from about 5 to about 6.5, soaking the starch slurry with the citrate and citric acid for about 15 minutes to 24 hours, drying the starch to a moisture content of less than about 5% and heating the dried starch to temperature above 120 degrees C, about 120-200 degrees C. for a time of about .05-4 hours. Shah discloses that the starch may be washed in water or aqueous solution prior to a starch slurry or after thermally inhibiting for one or more cycles ( see paragraph 0020,0029-0032,0035-0038, 0042, 0045).
For claims 7, 8 Shah discloses the use of the thermally modified starch as thickening agent in sauces. Since claim 7 does not define the amount, any amount to thicken is considered effective ( see paragraph 0061,0062)
Shah does not disclose the citrate content as in claim 1 and step (vi) as in claim 5.
Shah discloses treating the starch slurry with combination of sodium citrate and citric powder in an amount of time as recited in claim 5. Thus, it’s obvious inherent the amount of free citrate and fixed citrate are as claimed. It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. inre Best, 195 USPQ 430, 433 (CCPA1977), in re Spada, 15 USPQ2d 1655, 1658 ( Fed. Cir. 1990). As to step (vi), Shah discloses the starch can be washed in water after thermally inhibiting for one or more cycles. Thus, it would have been obvious to one of ordinary skill in the art to resuspend the treated starch in water to wash and to correct the pH if it’s affected by the washing and to dry again to obtain a dried thermally inhibited starch. Shah discloses in paragraph 0032 that starch commonly has a natural pH of about 5 to about 6.5. Thus, it would have been of to one of ordinary skill in the art to correct the pH of the thermally inhibited starch to this range when it’s desired to have the pH of the thermally inhibited starch to be the same as the natural starch.
Response to Arguments
Applicant's arguments filed 3/5/26 have been fully considered but they are not persuasive.
In the response, applicant argues the thermally modified starch of the invention has improved flavor and color because of the low free citrate. The examiner respectfully disagrees because the L value disclosed in Shah falls within the claimed range. There is no limitation in the claims on the flavor or any quantifiable parameter on flavor. Applicant argues that the citrate content is not inherent in the Shah process because Shah typically uses higher contents or provides no post-reaction quantification. This argument is not persuasive because it’s not clear what applicant means ty higher contents; higher contents of what? It’s also not clear what post-reaction quantification applicant refers to. The processing steps of Shah parallels the steps recited in claim 5 with the exception of step (vi). However, there is no parameters defining the resuspending, correcting the pH, washing and drying in the step. Shah discloses the starch can be subjected to one or more cycles of washing after thermally inhibiting. The step of washing would require resuspending the thermally inhibited starch in aqueous solution. Since the pH of the starch is adjusted before inhibiting, it would have been readily obvious to one of ordinary skill in the art to determine that the pH is as the appropriate level. The drying step is obvious if the starch is resuspended in aqueous solution for washing. Thus, the examiner maintains her position that the citrate content is inherent. It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA1977), in re Spada, 15 USPQ2d 1655, 1658 ( Fed. Cir. 1990). Applicant points to the result in table 5 to show that the citrate contents are not the same. However, there is no evidence showing that the products CLARIA, PLUS CLARIA, ELITE and CLARIA ESSENTIAL are the products produced by the method disclosed in Shah including the washing step after thermal inhibiting. Shah does not disclose any of the product mentioned in table 5. Applicant further asserts that the claimed starches yield higher whiteness and maintaining high thermal inhibition. However, Shah discloses L value within the range claimed and that the starch has high thermal inhibition and sedimentation within the range claimed. Applicant further argues Shah does not disclose the step (vi) of claim 5. This argument is not persuasive. There is no parameter defining the resuspending, correcting the pH, washing and drying in the step. Shah discloses the starch can be subjected to one or more cycles of washing after thermally inhibiting. The step of washing would require resuspending the thermally inhibited starch in aqueous solution. Since the pH of the starch is adjusted before inhibiting, it would have been readily obvious to one of ordinary skill in the art to determine that the pH is as the appropriate level. The drying step is obvious if the starch is resuspended in aqueous solution for washing. Applicant argues that the specification shows that the starches prepared by the claimed method outperformed both Shah’s alcohol-free thermally inhibited starches and leading commercial clean label product. However, there is no evidence showing that the products tested are produced exactly as disclosed in Shah. The properties such as L value, peak swelling and sedimentation rate claimed are disclosed in Shah. There is no limitation on flavor or any parameter defining flavor in the claims. Applicant argues that Shah’s processes employ much higher citrate loads and soaking up to 24 hours. The claims do not define any amount of citrate and time of soaking. The requirement is the pH and Shah discloses adjusting the pH with the citrate/citric acid to pH of about 5 to about 6.5 which is within the range claimed. The amount of soaking is up to 24 hours which indicate any time to 24 hours. Applicant argues that when washing is omitted, the process of Shah would inevitably leave residual citrate well above the present ceiling. This argument is not persuasive because Shah discloses washing the starch after thermally inhibiting for one or more cycles. Thus, washing is explicitly disclosed. The rejection sets forth reasonable factual basis for inherency based on the correlation of processing steps.
The new limitations in claim 5 is addressed in the rejection.
Conclusion
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May 29, 2026
/LIEN T TRAN/Primary Examiner, Art Unit 1793
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