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 10/23/2025 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment or cancellation of the claims and/or persuasive remarks: (1) the objection to claim 14 has been withdrawn; (2) the 35 U.S.C. §112(b) rejections of claims 1-2 and 14 have been withdrawn; and (3) the 35 U.S.C. §102(a)(1) rejection of claims 1-2 and 14 over Saito have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-2, 8, 10, 12, 14-17
Withdrawn claims: 8, 10, 12
Previously cancelled claims: 9, 11
Newly cancelled claims: 3-7, 13
Amended claims: 1-2, 14
New claims: 15-17
Claims currently under consideration: 1-2, 14-17
Currently rejected claims: 1-2, 14-17
Allowed claims: None
Claim Warnings
Applicant is advised that should claim 15 be found allowable, claim 16 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 14 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural product without significantly more. Claim 14 is directed to a composition comprising natural products. The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Claim 14 recites a confectionary comprising 100 wt.% inulin fiber. Inulin fiber is a naturally-occurring substance. Therefore, the claimed product is not markedly different from its closest naturally-occurring counterpart because there is no indication that the preparation has caused the nature-based product to have any characteristics that are markedly different from the closest naturally-occurring product and the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Ingredients recited in the claims are natural products that would occur naturally; thus, the claims fall within judicial exceptions. There is no indication in the record of any markedly different characteristics (either structural or functional) of the composition as broadly claimed. For example, there is no evidence of record of a structural difference between the claimed product and that of its nature-based counterparts. Consequently, the claimed composition is structurally the same as their closest naturally-occurring counterparts.
Nor is there any difference in functional characteristics. To show a marked difference, the characteristic(s) must be changed as compared to its closest naturally-occurring counterpart. For example, an assertion of changed functionality must be accompanied with evidence of a comparison of the claimed composition with its closest naturally-occurring counterpart and should apply to the full scope of the claim. Furthermore, inherent or innate characteristics of the naturally-occurring counterpart cannot show a marked difference. Likewise, differences in the characteristics that came about or were produced independently of any effort or influence by Applicant cannot show a marked difference.
The requirement that the confectionary comprise a non-compressible, solid candy does not meaningfully limit the claim, especially wherein the non-compressible, solid candy may be made by applying pressure to inulin fiber powder until it forms a solid shape. Therefore, the claim does not amount to significantly more than a naturally-occurring product itself.
Thus, there is no evidence of record to indicate that the claimed product is markedly different, structurally, chemically, functionally, than its closest naturally-occurring counterpart and is not eligible subject matter under current 35 U.S.C. 101 standards.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 14 recites that the solid candy comprises 100 wt.% inulin fiber. However, claim 1, from which claim 14 depends, recites that the solid candy comprises 75 wt.% inulin fiber. Therefore, claim 14 fails to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
Claims 1-2, 14, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Saito (WO 2020/196518A1; English translation relied on for citations; previously cited).
Regarding claims 1, 2, 14, and 17, Saito teaches a confectionary comprising a non-compressible, solid candy (corresponding to hard candy) containing inulin and optionally other edible ingredients, wherein the other edible ingredients include flavors and/or food colors (abstract; page 5, 2nd paragraph; page 7, 1st and 5th paragraphs) as recited by present claims 1, 2, and 17.
Saito discloses that the candy may comprise a combination of soluble dietary fiber comprising inulin so that the concentration of inulin in the candy is 50-99 wt.% per solid content (page 5, 4th paragraph), which encompasses the concentration recited in present claim 1. Saito also discloses that the candy may comprise of inulin alone (page 5, 3rd paragraph), thereby providing a candy which contains 100 wt.% inulin as described in present claim 14. Saito also discloses that the amount of inulin in the candy may be at least 90 wt.% in the candy (page 5, 3rd paragraph), which encompasses the concentration recited by present claim 17. Wherein the candy of Saito comprises at least 90 wt.% inulin, the candy may also comprise a maximum of 10 wt.% of the flavors and/or food colors, which encompasses the concentration recited in present claim 17.
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.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Saito (WO 2020/196518A1; English translation relied on for citations; previously cited) as applied to claim 1 above, in view of Jones (Jones, D., “Essential Candy-Making Ingredients”, 2016, https://www.dummies.com/article/home-auto-hobbies/food-drink/recipes/sweets/essential-candy-making-ingredients-193745/).
Regarding claims 15 and 16, Saito teaches the invention as described above in claim 1, including the candy comprising other edible ingredients, wherein the other edible ingredients include flavors (abstract; page 5, 2nd paragraph; page 7, 1st and 5th paragraphs). Saito does not disclose that the candy comprises nuts, peanuts, seeds, or any combination thereof.
However, Jones teaches that nuts such as almonds are basic ingredients used in candy-making (page 1, paragraph; page 2, 2nd paragraph). Since almonds are also seeds, Jones also teaches that seeds are basic ingredients used in candy-making.
It would have been obvious for a person of ordinary skill in the art to have modified the candy of Saito to include nuts and/or seeds as taught by Jones. Since Saito discloses that the candy may comprise other edible ingredients include flavors (page 7, 1st and 5th paragraphs), but does not disclose flavors to include in the candy, a skilled practitioner would have been motivated to consult an additional reference such as Jones in order to determine a suitable flavor to add to the candy. Therefore, claims 15 and 16 are rendered obvious.
Response to Arguments
Claim Objections: Applicant amended the claim to fully address the objection; therefore, the objection is withdrawn.
Claim Rejections – 35 U.S.C. §112(b) of claims 1-2 and 14: Applicant amended the claims to fully address the rejections; therefore, the rejections are withdrawn.
Claim Rejections – 35 U.S.C. §102(a)(1) of claims 1-2 and 14 over Saito: Applicant’s amendments have been fully considered and are considered to overcome the 35 U.S.C. §102(a)(1) rejections over Saito. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection based on obviousness is made in view of Saito. Furthermore, Applicant’s arguments with respect to Saito have been fully considered and are considered unpersuasive.
Applicant amended claim 1 to recite that the candy comprises 75 wt.% inulin fiber. Applicant argued that Saito does not disclose using inulin fiber as the only type of fiber in its candy and thus, cannot disclose “a noncompressible, solid candy including fiber, wherein the fiber comprise 100 wt.% inulin fiber” as now recited in amended claim 1. Applicant argued that claims 2 and 14 are patentable by reason of dependency from claim 1 (Applicant’s Remarks, page 5, 1st-7th paragraphs).
However, the Examiner points out that the term “including” in the phrase “A noncompressible, solid candy including fiber, wherein the fiber comprises 100 wt.% inulin fiber” recited in claim 1 means that the noncompressible, solid candy may include any number of ingredients in addition to inulin fiber including additional fibers. As such, claim 1 merely requires a candy comprising 75 wt.% inulin fiber. As described above in the new grounds of rejection of claim 1, Saito teaches a non-compressible, solid containing inulin in an amount of 50-99 wt.% per solid content (page 5, 4th paragraph), which encompasses the concentration recited in present claim 1.
For these reasons, Applicant’s arguments are unpersuasive and the rejections of the claims stand as written herein.
New Claims: Applicant argued that new claims 15-17 are patentable by reason of dependency from claim 1. Applicant argued that Saito does not disclose a candy according to new claim 17 (Applicant’s Remarks, page 5, 8th paragraph – page 6, 1st paragraph).
However, Saito is shown to render claims 1 and 15-17 obvious as described in the rejections above. Therefore, Applicant’s arguments are unpersuasive and the rejections of the claims stand as written herein.
Conclusion
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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/K.P.K./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791