DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The status of the claims stands as follows:
Pending claims: 1-20
Withdrawn claims: 10-15, 20
Claims currently under consideration: 1-9, 16-19
Currently rejected claims: 1-9, 16-19
Allowed claims: None
Election/Restrictions
Applicant’s election of Group I (claims 1-9 and 16-19) in the reply filed on 02/02/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 10-15 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II and III, there being no allowable generic or linking claim.
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).
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.
Claim 3 is rejected under 35 U.S.C. 112(b) 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 3 recites that the composition comprises 50-80% of the carrier. However, the claim does not recite a unit associated with the percentage (e.g., wt.%, vol.%). Therefore, the claim is indefinite.
For the purpose of this examination, the percentage will be interpreted as being a weight percentage.
Claim Rejections - 35 USC § 102/103
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.
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 1-3 and 5-6 are rejected as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Goldstein (US 2021/0112833).
Regarding claims 1, 2, 3, and 5, Goldstein teaches a powdered composition (corresponding to spray dried soluble flours) [0013] comprising: (a) 54.997 wt.% of a carrier comprising soluble rice flour as recited by present claims 1 and 5; and (b) 10.69 wt.% of an active ingredient (corresponding to citric acid) (page 5, Table 10). These concentrations fall within the concentrations of carrier and active ingredient recited in present claims 1, 2, and 3. Therefore, Goldstein is considered to anticipate the claims. Goldstein also teaches that the soluble flour has a solubility of 81% as measured at 5% solids (page 3, Table 2); and that the soluble flour has a viscosity of less than 400 mPa/s at a temperature of 50°C at 10% solids (corresponding to the viscosity of the rice flour shown in Figure 2). The % solids used to measure the solubility and viscosity of the soluble flour in Goldstein and the temperature used to measure the viscosity of the soluble flour in Goldstein are outside of the % solids and temperature recited in (i) and (ii) of present claim 1. Despite this being the case, the solubility and viscosity of the soluble flour recited in Goldstein are still considered to fall within the solubility range recited in (i) of present claim 1 and fall within the viscosity range recited in (ii) of present claim 1, thereby rendering the claimed solubility and viscosity obvious.
Regarding claim 6, Goldstein teaches the invention as described above in claim 1, including the soluble flour is obtained by partial hydrolysis (corresponding to a dextrose equivalent (DE) of 8.3) of a non-soluble flour (corresponding to rice flour) (page 3, Table 2).
Claim Rejections - 35 USC § 103
Claims 1, 4, 7, 9, 16, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Goldstein (US 2021/0112833) in view of Porzio (US 7,488,503 B1).
Regarding claims 1 and 4, Goldstein teaches a powdered composition (corresponding to spray dried encapsulation formulation) [0019] comprising: (a) a carrier comprising soluble flour [0017]; and (b) an active ingredient comprising a flavor oil (corresponding to oil-based flavors) [0019] as recited in present claims 1 and 4. Goldstein also teaches that the soluble flour has a solubility of 81% as measured at 5% solids (page 3, Table 2); and that the soluble flour has a viscosity of less than 400 mPa/s at a temperature of 50°C at 10% solids (corresponding to the viscosity of the rice flour shown in Figure 2). The % solids used to measure the solubility and viscosity of the soluble flour in Goldstein and the temperature used to measure the viscosity of the soluble flour in Goldstein are outside of the % solids and temperature recited in (i) and (ii) of present claim 1. Despite this being the case, the solubility and viscosity of the soluble flour recited in Goldstein are still considered to fall within the solubility range recited in (i) of present claim 1 and fall within the viscosity range recited in (ii) of present claim 1, thereby rendering the claimed solubility and viscosity obvious.
Goldstein teaches that its soluble flour may replace maltodextrin in encapsulation of flavor oils [0019]. Goldstein does not teach that the composition comprises 40-95 wt.% of the carrier; and 5-60 wt.% of the flavor oil as recited in present claim 1.
However, Porzio teaches a powdered composition (corresponding to spray-dried encapsulation composition) (column 16, lines 44-45) that may comprise 5-95 wt.% maltodextrin (corresponding to maltodextrin being the first food polymer) (column 8, lines 19-36); and 8-12 wt.% flavor oil (column 16, lines 9-18). This concentration of flavor oil falls within the claimed concentration.
It would have been obvious for a person of ordinary skill in the art to have modified the composition of Goldstein to comprise 5-95 wt.% of a carrier and 8-12 wt.% of a flavor oil as taught by Porzio. Since Goldstein teaches its soluble flour may replace maltodextrin in encapsulation of flavor oils [0019], but does not disclose a composition wherein flavor oils are encapsulated in a carrier, a skilled practitioner would have been motivated to consult an additional reference such as Porzio in order to determine a suitable flavor oil encapsulated composition. In consulting Porzio, the practitioner would find that the encapsulation composition may comprise 5-95 wt.% of maltodextrin (column 8, lines 19-36). In consulting Goldstein, the practitioner would understand that up to 100 wt.% of the maltodextrin in Porzio may be replaced with the soluble flour of Goldstein so that the composition would contain up to 95 wt.% of soluble flour, which encompasses the claimed concentration of soluble flour. Therefore, the combination of Goldstein and Porzio teaches a concentration of soluble flour which encompasses the claimed range and a concentration of flavor oil which falls within the claimed range.
In regard to the encompassing range disclosed by the prior art, it would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.I.
Regarding claim 7, modified Goldstein teaches the invention as described above in claim 1, including the active ingredient is encapsulated within the carrier (Goldstein [0019]; Porzio, column 16, lines 9-18).
Regarding claim 9, modified Goldstein teaches the invention as described above in claim 1, including the carrier further comprises a food material selected from soluble fibers (corresponding to pectins), non-animal proteins (corresponding to seed proteins and cereal proteins), and gum Arabic (column 9, line 50- column 10, line 6).
Regarding claim 16, modified Goldstein teaches the invention as described above in claim 1, including the active ingredient is orange flavor oil (Porzio, column 15, lines 47-53).
Regarding claim 19, modified Goldstein teaches the invention as described above in claim 1, including the maltodextrin in the composition has a DE of less than 20 (Porzio, column 10, lines 51-52). Therefore, a skilled practitioner would readily understand that the soluble flour of Goldstein may also have a DE of less than 20 since the soluble flour may be used as a substitute for maltodextrin in the composition of Porzio. Although a DE of less than 20 does not overlap the claimed DE of greater than 20, 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). MPEP 2144.05.I.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Goldstein (US 2021/0112833) as applied to claim 1 above.
Regarding claim 8, Goldstein teaches the invention as described above in claim 1, including the soluble fraction of the soluble flour may have a DE of 5-18 [0014], which overlaps the claimed DE value. The selection of a value within the overlapping range renders the claimed concentration obvious. MPEP 2144.05.I.
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Goldstein (US 2021/0112833) as applied to claim 1 above, in view of Sugimoto (US 2009/0022848) as evidenced by Sake (“About Koji”, 2021, Sake Experience Japan, https://sakeexperiencejapan.com/about-koji/).
Regarding claims 17 and 18, Goldstein teaches the invention as described above in claim 1, including the soluble flour may be prepared by treating rice flour with an alpha-amylase enzyme and gluco- enzymes to achieve partial hydrolysis of starch (corresponding to achieving a DE of 5-18) [0010], [0013]. Therefore, Goldstein teaches that the soluble flour is obtained by partial enzymatic hydrolysis of starch within the non-soluble flour as recited in present claim 18.
Goldstein does not teach that the soluble flour is soluble koji flour as recited in present claim 17; or that the soluble flour is obtained by partial hydrolysis of proteins in the non-soluble flour as recited in present claim 18.
However, Sugimoto teaches an enzyme preparation [0132] comprising alpha-amylase and glucoamylase [0112], [0126] produced from the yellow koji mold Aspergillus oryzae [0119]. Koji mold also produces protease as evidenced by Sake (page 1, 2nd paragraph).
It would have been obvious for the person of ordinary skill in the art to have modified the soluble rice flour of Goldstein to be soluble koji rice flour containing partially hydrolyzed proteins as taught by Sugimoto as evidenced by Sake. Since Goldstein teaches that the enzymes used to produce the soluble rice flour may include a combination of an alpha-amylase enzyme and gluco- enzymes [0010], [0013], but does not disclose a source of such enzymes, a skilled practitioner would have been motivated to consult an additional reference such as Sugimoto in order to determine an enzyme preparation comprising an alpha-amylase enzyme and gluco- enzymes. Since the enzyme preparation of Sugimoto contains the koji mold Aspergillus oryzae (Sugimoto [0119]) and protease (Sake, page 1, 2nd paragraph), the soluble rice flour produced from the enzyme preparation of Sugimoto is a soluble koji rice flour containing partially hydrolyzed proteins as recited in present claims 17 and 18.
Conclusion
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/KELLY P KERSHAW/Examiner, Art Unit 1791