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 .
Priority
The instant application is a 371 of PCT/KR2021/020382 filed on 12/31/2021 and claims foreign priority to Korean application no. KR10-2020-0189951 filed on 12/31/2020. The certified copy of the foreign priority applications filed on 06/16/2023 is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/30/2026 and 05/28/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Status of the Claims
The claim amendments and remarks filed on 05/28/2026 are acknowledged. Claims 1, 9, 21, and 26 are amended. Claims 3-5, 7, 10-11, 20, 24-25, and 29 are cancelled.
Accordingly, claims 1-2, 6, 8-9, 12-19, 21-23, and 26-28 are pending and being examined on the merits herein.
Withdrawn Objections/Rejections
The objection to the specification is withdrawn because an abstract for the disclosure is now included.
The 35 USC 112(b) rejection over claims 1-2, 6-8, 12-19, 21-23, and 25-28 are withdrawn because the “improved turbidity” limitation was removed from the claims. Furthermore, claim 21 recites a low-molecular fraction comprising 50% by weight or more of saccharides having a degree of polymerization (DP) of 3 to 9, and a high-molecular fraction corresponding to a fraction other than the low-molecular fraction. The specification discloses the low-molecular fraction corresponds to an oligosaccharide fraction, and the high-molecular fraction corresponds to the recited dextrin (page 17 lines 1-5). Furthermore, Tables 1-3 (pages 17-19) show that the dextrin fraction (high-molecular fraction) has a majority of DP10+ percent by weight content, whereas the oligosaccharide fraction (low-molecular fraction) contains no or very little (<0.5) DP10+ percent by weight content. Therefore, the ordinary skilled artisan would be able to ascertain what constitutes a low-molecular fraction and a high-molecular weight fraction in light of the specification.
The 35 USC 102 rejection over KR’411 for claims 1-2, 6, 8-9, and 12-19 is withdrawn because claim 1 is now amended to require the dextrin to have a content of saccharides with DP10 or more at 60% by weight or more, and a content of maltooligosaccharides of DP3 to DP9 saccharides at 40% by weight or less, based on 100% by weight of the total solid content, which was not previously considered this rejection.
The 35 USC 103 rejection over WO’312 in view of KR’411 and Heikkila for claims 1, 21-23, and 26-28 is withdrawn because claim 1 is now amended to require the dextrin to have a content of saccharides with DP10 or more at 60% by weight or more, and a content of maltooligosaccharides of DP3 to DP9 saccharides at 40% by weight or less, based on 100% by weight of the total solid content, which was not previously considered this rejection.
The following grounds of rejection are new as necessitated by Applicant's amendments.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-23 and 26-28 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Instant claim 21-23 and 26-28 recite a method for producing the dextrin according to claim 1, comprising a step of liquefying starch and reacting DE of 15-30 and a step of obtaining a high-molecular fraction and a low-molecular fraction.
MPEP 2163 II.A.3.(a).ii. states that “[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention”, “The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice (see i)(A) above), reduction to drawings (see i)(B) above), or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus … Satisfactory disclosure of a "representative number" depends on whether one of skill in the art would recognize that the inventor was in possession of the necessary common attributes or features possessed by the members of the genus in view of the species disclosed. For inventions in an unpredictable art, adequate written description of a genus which embraces widely variant species cannot be achieved by disclosing only one species within the genus”, and “The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 "merely by clearly describing one embodiment of the thing claimed." … The issue is whether a person skilled in the art would understand inventor to have invented, and been in possession of, the invention as broadly claimed. In LizardTech, claims to a generic method of making a seamless discrete wavelet transformation (DWT) were held invalid under 35 U.S.C. 112, first paragraph, because the specification taught only one particular method for making a seamless DWT and there was no evidence that the specification contemplated a more generic method. Id.; see also Tronzo v. Biomet, 156 F.3d at 1159, 47 USPQ2d at 1833 (Fed. Cir. 1998)(holding that the disclosure of a species in a parent application did not provide adequate written description support for claims to a genus in a child application where the specification taught against other species”.
In this case, the disclosure does not provide sufficient description such that the ordinary skilled artisan would have understood the Applicant had possession of the entire scope of the recited methods to produce the claim 1 dextrin because the disclosure does not provide enough guidance to support producing the recited dextrin comprising just the two recited steps of liquefying starch and separating the molecular fractions as recited in the claims and any other unrecited method steps.
Applicant has demonstrated in Examples 1-3 (pages 16-19) the production of the recited dextrin product. Applicant discloses that the process involved treating corn starch with a liquefying enzyme (alpha-amylase – LpHera Novozymes) under certain conditions and then further hydrolyzing using exo-maltotetrahydrolase (Amylo-G4, Samyang). Then, the product was filtered/concentrated and a SMB separation technique was performed to separate and obtain a high-molecular fraction from a low-molecular fraction, in which the high-molecular fraction is the recited dextrin product, and the low-molecular fraction is the oligosaccharide fraction (page 16 lines 9-23 through page 17 lines 1-7).
Tables 1-3 (pages 17-19) show that the dextrin fraction (high-molecular fraction) has a majority of DP10+ percent by weight content, whereas the oligosaccharide fraction (low-molecular fraction) contains no or very little (<0.5) DP10+ percent by weight content and majority of DP3-9 percent by weight content.
Applicant has only demonstrated in the disclosure that the recited dextrin product was produced by using a specific liquefying enzyme (alpha-amylase – LpHera Novozymes), further hydrolyzing using a specific exo-maltotetrahydrolase (Amylo-G4, Samyang), and then separating the molecular fractions to obtain the dextrin product. While the claims recite a liquefying starch and molecular fraction separation steps, the claims do not recite the use of the two specific enzyme (alpha-amylase and exo-maltotetrahydrolase) treatment steps to produce the recited dextrin, and Applicant has not demonstrated or provided guidance that the recited dextrin product can be formed without these two specific enzyme (alpha-amylase and exo-maltotetrahydrolase) treatment steps.
Furthermore, the state of the art also does not provide guidance to predictably determine which types of enzymes or additional steps alongside the recited steps are required in order to produce the recited dextrin in claim 1.
For example, WO’312 demonstrates in Example 1 (paragraphs 0063-0094) the preparation of the maltotetraose syrup, in which corn starch was liquefactioned at high temperature using termamyl enzyme (Novozyme) and a maltotetraose generating enzyme (paragraphs 0064-0065). The enzyme reaction was stopped, filtered, and concentrated to 70-72 wt% (paragraph 0065).
However, WO’312 discloses the maltotetraose content and the sugar composition of the final product, as shown in Table 1 as % of solids weight (paragraph 0065), did not have the structural properties as recited for the dextrin product in instant claim 1, and there is no additional guidance or suggestions in the prior art to determine how the recited dextrin product can be formed comprising the two recited steps of liquifying starch and separating the molecular fractions.
Therefore, it is not evident by the disclosure or the prior art, that the Applicant was in possession of producing the recited dextrin according to instant claim 1 comprising just the two steps of liquefying starch and separating the molecular fractions as recited in the claims and any other unrecited method steps. Furthermore, as described above, there is no disclosed and/or art recognized guidance for what types of enzymes or additional steps are needed in order to produce the dextrin product according to instant claim 1, and Applicant has only demonstrated the production of the recited dextrin by using a specific liquefying enzyme (alpha-amylase – LpHera Novozymes), further hydrolyzing using a specific exo-maltotetrahydrolase (Amylo-G4, Samyang), and then separating the molecular fractions to obtain the dextrin product
Therefore, instant claims 21-23 and 26-28 do not meet the written description requirement under 35 USC 112(a)
Allowable Subject Matter
Claims 1-2, 6, 8-9, and 12-19 are allowable.
The following is an examiner’s statement of reasons for allowance:
The instant claims are drawn to a dextrin, in which a content of carbohydrates having a molecular weight of 100,000 or more is 8% by weight or less, a content of saccharides with DP10 or more is 60% by weight or more, and a content of maltooligosaccharides of DP3 to DP9 saccharides is 40% by weight or less, based on 100% by weight of the total solid content, and methods of making thereof.
The following reference is considered to be the closest prior art:
WO2018169312A1 (in PTO-892 dated 01/28/2026, an English translation is also provided)
WO’312 discloses a powdered emulsifying composition containing oligosaccharides that improves the hygroscopicity, quality and storage stability of an emulsifying composition using a high maltotetraose content sugar syrup (see paragraph 0011).
WO’312 demonstrates in Example 1 (paragraphs 0063-0094) the preparation of the maltotetraose syrup, in whichcorn starch was liquefactioned at high temperature using termamyl enzyme (Novozyme) and maltotetraose generating enzyme (paragraphs 0064-0065). The enzyme reaction was stopped, filtered, and concentrated to 70-72 wt% (paragraph 0065).
WO’312 discloses the maltotetraose content and the sugar composition of the final product shown in Table 1 as % of solids weight (paragraph 0065). In Table 1 of WO’312 (see Table 1 in original document pages 12-13), sample 4 (fifth column from the left in original document pages 12-13) had a DE of 16.4. Furthermore, saccharides with DP10 are 37.2% (see fifth column, fourth row in original document pages 12-13), and the saccharides between DP3 to DP9 in sample 4 adds up to 58.7% (see fifth column, rows 5-11 in original document pages 12-13). The saccharides between DP3 and DP10 is 95.2% (see fifth column, rows 4-11 in original document pages 12-13). Lastly, the content of monosaccharides and disaccharides are 4.4% (see fifth column, rows 12-13 in original document pages 12-13).
WO’312, however, does not disclose a content of carbohydrates having a molecular weight of 100,000 or more is 8% by weight or less and a content of maltooligosaccharides of DP3 to DP9 saccharides of 40% by weight or less. Furthermore, WO’312 does not disclose a step of obtaining high-molecular fraction by separating reacting product in a high-molecular fraction and low-molecular fraction as recited in instant claims 21 and 26.
Furthermore, the prior art does not teach a composition with the recited molecular weight content and saccharide contents in instant claim 1.
Applicant has demonstrated in Examples 1-3 (pages 16-19) the production of the recited dextrin product. Applicant discloses that the process involved treating corn starch with a liquefying enzyme (alpha-amylase – LpHera Novozymes) under certain conditions and then further hydrolyzing using exo-maltotetrahydrolase (Amylo-G4, Samyang). Then, the product was filtered/concentrated and a SMB separation technique was performed to separate and obtain a high-molecular fraction from a low-molecular fraction, in which the high-molecular fraction is the recited dextrin product, and the low-molecular fraction is the oligosaccharide fraction (page 16 lines 9-23 through page 17 lines 1-7).
Tables 1-3 (pages 17-19) show that the dextrin fraction (high-molecular fraction) has a majority of DP10+ percent by weight content, whereas the oligosaccharide fraction (low-molecular fraction) contains no or very little (<0.5) DP10+ percent by weight content and majority of DP3-9 percent by weight content.
Therefore, the ordinary skilled artisan would not have been able to arrive at the claimed invention through routine experimentation with a predictable result in order to arrive at the claimed dextrin product and methods of making thereof. One of ordinary skill in the art would not have a reasonable expectation of success because the prior art does not disclose or suggest the use of an exo-maltotetrahydrolase to further hydrolyze the starch to form the recited dextrin product, and has only provided guidance of using enzymes with different activities to produce a dextrin product with different structural characteristics. Furthermore, the prior art also does not provide reasonable guidance to further perform a separation technique to a hydrolyzed starch solution and obtain the recited high molecular weight dextrin product.
Conclusion
Claims 21-23 and 26-28 are rejected. Claims 1-2, 6, 8-9, and 12-19 are allowable.
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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/D.H.C./Examiner, Art Unit 1693
/SCARLETT Y GOON/Supervisory Patent Examiner
Art Unit 1693
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