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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-11 and 17 in the reply filed on October 21, 2025 is acknowledged.
Claims 12-16 and 18-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 21, 2025.
Claim Status
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
1-20
Withdrawn claims:
12-16, 18-20
Previously canceled claims:
None
Newly canceled claims:
None
Amended claims:
None
New claims:
None
Claims currently under consideration:
1-11, 17
Currently rejected claims:
1-11, 17
Allowed claims:
None
Claim Objections
Claims 3, 4, and 5 are objected to because of the following informalities:
Claim 3 should be amended to recite “wherein a portion of the dietary fiber is β-glucan, and the β-glucan is present in the composition in an amount of 2-9% by dry weight of the composition.”
Claim 4 should be amended to recite “wherein a portion of the carbohydrates are sugars, and the sugars are present in the composition in an amount of 3-20% or 5-15% by dry weight of the composition”.
Claim 5 does not specify what is present in the composition in an amount of 0-15%. However, the previous claim set recites 0-15% of ash. For the purposes of examination, it is presumed that “ash” was deleted from the claim in error.
Appropriate correction is required.
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 4, 6, 8, and 10 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 4 recites the broad recitation “3-20%”, and the claim also recites “or 5-15%” which is the narrower statement of the range/limitation.
Claim 6 recites the broad recitation “1-20%”, and the claim also recites “or 5-15%, or 5-10%” 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 10 is rejected due to dependency on claim 6.
Regarding claim 8, 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). For the purposes of examination, it is presumed that the ranged following “such as” are merely exemplary.
Claim 8 recites the limitation "the sugar" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, it is presumed that claim 8 depends from claim 4, where sugar is first introduced in the claims.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 6, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kvist (WO 2010/140963).
Regarding claim 1, Kvist teaches an oat dietary fiber composition comprising on a dry matter basis:
24% proteins (i.e., oat protein), which falls in the claimed range of “20-55%”;
9% fat, which falls in the claimed range of “5-20%”;
33% dietary fiber, which falls within the claimed range of “20-40%”; and
12% carbohydrates, which falls within the claimed range of “3-20%”. (p. 11, lines 5-7).
Regarding claim 6, Kvist teaches the final composition having a residual moisture content (i.e., water content) of around 5% (p. 11, lines 22-23), which falls in the claimed range of “1-20%”.
Regarding claim 17, Kvist teaches that the oat dietary fiber composition can be used in the present invention (p. 11, lines 23-25), and that the present invention is a food product (Abstract).
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 2, 3, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kvist (WO 2010/140963) in view of Decombaz (US 20020142026 A1).
Regarding claims 2 and 9, Kvist does not teach wherein a majority of the oat derived composition by dry weight of the composition is in a form of particles.
However, in the same field of endeavor, Decombaz teaches a dry mixture made from oat concentrate that is extruded into pieces (i.e., particles) ([0049]-[0050]). Although Decombaz does not explicitly teach that the particles are comprised of the content of the composition, the pieces are cut after mixing the composition together ([0050]). Thus, it logically follows that the pieces would be the content of the composition.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the composition of Kvist by making it into particles as taught by Decombaz. One of ordinary skill would be motivated to make this modification because Decombaz teaches that the dried food product has a pleasant texture ([0051]).
Regarding claim 3, Kvist does not teach wherein a portion of the dietary fiber is β-glucan, and wherein the β-glucan is present in an amount of 2-9% by dry weight of the composition.
However, in the same field of endeavor, Decombaz teaches a composition comprising oat fiber ([0018]) with a total β-glucan content of 10% by weight ([0053]), which lies close to the claimed range of “2-9%”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the composition of Kvist to use an amount of β-glucan as taught by Decombaz. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
With respect to the close range, MPEP §2144.05 states a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Claims 4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Kvist (WO 2010/140963) in view of Novozymes (“Oat-Based Beverages”, Novozymes, published October 2020 [accessed online December 16, 2025]).
Regarding claims 4 and 8, Kvist teaches mixing the oat dietary fiber fraction with non-deactivated amylase enzyme (p. 11, lines 18-20).
Kvist does not teach wherein 3-20% of the carbohydrates are sugars (claim 4) or wherein 50% or more of the sugar is maltose (claim 8).
However, in the same field of endeavor, Novozymes teaches of treating oat beverages with a saccharification step using a maltose producing enzyme (p. 1, ¶ 1) and that α-amylase can be used to produce maltose (i.e., sugar) for mild sweetness generation (p. 2, Table 1, row 2).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the composition of Kvist to use a maltose producing enzyme as taught by Novozymes to produce maltose in the oat composition. One of ordinary skill would have been motivated to make this modification because Novozymes teaches that using enzymes for maltose provides a milk sweetness (p. 2, Table 1, row 2).
Although the cited prior art does not teach the amount of maltose or sugar produced by the enzymes, Novozymes teaches that adding enzyme provides sweetness fine tuning and improved mouthfeel (p. 1, ¶ 1). Therefore, one of ordinary skill in the art would have adjusted the amount of enzyme added during routine optimization to find the amount of enzyme that resulted in an amount of sugar and maltose that gives the desired sweetness of the composition. MPEP §2144.05(II) states where 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). The claimed range would thus be obvious.
Claims 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kvist (WO 2010/140963).
Regarding claim 5, Kvist also teaches a different composition comprising 3% ash (p. 16, line 5, Table).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include 3% ash from examples 4 and 5 in the product of example 2 of Kvist. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
Regarding claim 7, Kvist teaches that the intermediate wet product comprises between 22% to 50% dry matter (p. 11, lines 18-20), which equates to a water content of 50-88%, which overlaps with the claimed range of “60-80% by weight”.
With respect to the overlapping ranges, MPEP §2144.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kvist (WO 2010/140963) in view of Alho-Lehto (US 20110159145 A1).
Regarding claim 10, Kvist does not teach wherein the oat composition is in the form of a powder.
However, in the same field of endeavor, Alho-Lehto teaches of an oat suspension that is in the form of a powder (Abstract).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the composition of Kvist by making is a powder as taught by Alho-Lehto. One would be motivated to make this modification because Alho-Lehto teaches that the powder is useful in various non-dairy products ([0062]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Kvist (WO 2010/140963) in view of Kourimska (Kourimska, Lenka, et al. “Lipid content, fatty acid profile, and nutritional value of new oat cultivars”, Journal of Cereal Science, Volume 84, p. 44-48, published September 19, 2018 [accessed online December 16, 2025]).
Regarding claim 11, Kvist does not teach that the fat comprises 15-25% saturated fat, 30-50% mono-unsaturated fat, and 30-50% poly-unsaturated fat.
However, in the same field of endeavor, Kourimska teaches that oats comprise (p. 46, col. 2, Table 5):
24.5-27.6% saturated fatty acids, which overlaps with the claimed range of “15-25%”;
33.9-35.4% monounsaturated fatty acids, which falls within the claimed range of “30-50%”; and
38.1-40.4% polyunsaturated fatty acids, which falls within the claimed range of “30-50%”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the composition of Kvist with the use of a fatty acid profile as taught by Kourimska. One of ordinary skill would have been motivated to make this modification because Kourimska teaches that the oats are a good source of nutritionally valuable oil that plays an important role in the prevent of cardiovascular disease (Abstract).
With respect to the overlapping ranges, MPEP §2144.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Amanda S Hawkins whose telephone number is (703)756-1530. The examiner can normally be reached Generally available M-Th 8:00a-5:00p, F 8:00-2:00[.
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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793