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 .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 05/07/2026 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment or cancellation of the claims and/or persuasive remarks: the 35 U.S.C. §112(b) rejection of claim 3 has been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-20
Withdrawn claims: 10-15, 20
Previously cancelled claims: None
Newly cancelled claims: None
Amended claims: 3
New claims: None
Claims currently under consideration: 1-9, 16-19
Currently rejected claims: 1-9, 16-19
Allowed claims: None
Claim Format
Claim 18, which depends from claim 1, recites “the non-soluble flour”. However, claim 1 does not recite “non-soluble flour. Therefore, claim 18 may either be amended to depend from claim 6 which mentions “non-soluble flour”; or be amended to recite “a non-soluble flour” instead of “the non-soluble flour”.
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 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Goldstein (US 2021/0112833; previously cited).
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; previously cited) in view of Porzio (US 7,488,503 B1; previously cited).
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.
Further, the Office does not have laboratory facilities to test claim limitations drawn toward results of practicing the method as claimed. Accordingly, such flour solubility and viscosity as measured under the claimed conditions do not serve to distinguish the product as claimed from the prior art and are thus considered obvious to one having ordinary skill in the art.
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 encapsulation composition has a DE of less than 20 (Porzio, column 5, lines 3-4; column 10, lines 51-52). Goldstein teaches that its soluble flour may be used as a substitute for the maltodextrin in an encapsulation composition [0019]. 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 having a DE of less than 20 in the encapsulation 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; previously cited) 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; previously cited) as applied to claim 1 above, in view of Sugimoto (US 2009/0022848; previously cited) as evidenced by Sake (“About Koji”, 2021, Sake Experience Japan, https://sakeexperiencejapan.com/about-koji/; previously cited).
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.
Response to Arguments
Claim Rejections – 35 U.S.C. §112(b) of claim 3: Applicant amended the claim to fully address the rejection. Therefore, the rejection is withdrawn.
Claim Rejections – 35 U.S.C. §102/103 of claims 1-3 and 5-6 over Goldstein: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant argued that Goldstein discloses the solubility and viscosity of its soluble flour is measured under different conditions than the claimed conditions so that there is no direct and unambiguous disclosure that the soluble flour of Goldstein would have the claimed solubility and viscosity. Applicant argued that the claimed measurement conditions are critical to defining the claimed material. Applicant stated that soluble flours must be specifically processed for example by partial hydrolysis of starch and proteins to achieve the claimed properties. Applicant argued that, although Goldstein discloses enzymatically treated flours, Goldstein does not disclose a soluble flour having the solubility and viscosity as measured under the required conditions (Applicant’s Remarks, page 6, 1st paragraph – page 7, 2nd paragraph).
However, there is no demonstration of criticality of the claimed measurement conditions, especially wherein the soluble flour of the present invention could have just as easily been defined by other measurement conditions such as those conditions disclosed in Goldstein. Also, there is no reasoning or demonstration provided by the Applicant as to why the soluble flour of Goldstein cannot have claimed solubility and viscosity under the claimed measurement conditions as well as under the measurement conditions disclosed in Goldstein, especially wherein Goldstein discloses flours that are “specifically processed” using hydrolysis in order to increase their water solubility above the water solubility of the naturally-occurring flour [0009].
Since the prior art has been shown to render the claims obvious and Applicant’s arguments have been shown to be unpersuasive in overcoming the anticipation and obviousness rejections, the anticipation and obviousness rejections of the claims are maintained as written herein.
Claim Rejections – 35 U.S.C . §103 of claims 1, 4, 7, 9, 16, and 19 over Goldstein and Porzio: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant argued that Porzio does not remedy the deficiency of Goldstein in that Porzio also does not disclose the soluble flours have the viscosity and solubility as measured under the claimed conditions (Applicant’s Remarks, page 7, 3rd paragraph).
The arguments against Goldstein have been addressed above and thus the responses will not be repeated here. Goldstein is considered to render the claimed solubility and viscosity obvious. Porzio is continued to be relied on for its teachings regarding flavor oil encapsulation.
Applicant then argued that the proposed modification of replacing maltodextrin in Porzio with the soluble flour of Goldstein relies on a general statement of possible substitution and does not providing any teaching of the specific claimed composition. Applicant argued that the present application recognizes or addresses the same challenges addressed by the present application or providing teaching that would lead to the claimed solution (Applicant’s Remarks, page 7, 4th paragraph; page 8, 3rd paragraph).
However, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As described above in the rejection of claim 1 over Goldstein and Porzio, Porzio teaches a powdered composition 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), wherein the flavor oil is encapsulated in the maltodextrin (column 14, lines 61-64; column 15, lines 47-53). This concentration of flavor oil falls within the claimed concentration. Goldstein teaches a soluble flour that may serve as a partial replacement for maltodextrin in an encapsulation composition wherein flavor oil is encapsulated in maltodextrin [0019].
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. As such, the prior art provides teaching of the claimed composition, which means that the prior art also provides teaching toward the same solution of the challenges addressed by the Applicant.
Applicant then argued that the claimed composition allows for the preparation of a powdered composition comprising soluble flour, blends of soluble flour and common flours in a 1:1 mixture; and blends of soluble flour and pea protein (Applicant’s Remarks, page 8 1st paragraph).
However, the present claims are directed to a powdered composition comprising soluble flour, which is shown to be rendered obvious by the prior art; the claims are not directed to a method of making the soluble flour. The present claims are also not directed to blends of soluble flour and common flours in a 1:1 mixture; and blends of soluble flour and pea protein, Therefore, Applicant’s arguments regarding such blends are moot.
Applicant argued that the claim composition has a surprisingly high oil content and oil retention (Applicant’s Remarks, page 8, 2nd and 4th paragraphs).
However, the only claim which requires oil in the composition is claim 4. Therefore, Applicant’s arguments regarding oil are moot in relation to all other claims. Claim 4 does not require any particular level of oil content and oil retention in the composition. Therefore, Applicant’s arguments related to high oil content and oil retention are moot in regard to claim 4 as well.
Since the prior art has been shown to render the claims obvious and Applicant’s arguments have been shown to be unpersuasive or moot, the rejections of the claims are maintained as written herein.
Claim Rejections – 35 U.S.C. §103 of claim 8 over Goldstein; claim 17-18 over Goldstein and Sugimoto as evidenced by Sake: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant argued that Sugimoto and Sake do not remedy the aforementioned deficiencies of Goldstein and Porzio (Applicant’s Remarks, page 8, 5th-6th paragraphs).
However, Goldstein alone and the combination of Goldstein and Porzio were shown to render the claims obvious as described above. Therefore, Applicant’s arguments are unpersuasive and the rejections of the claims are maintained as written herein.
Conclusion
THIS ACTION IS MADE FINAL. 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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/K.P.K./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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