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 .
Claim Status
The amendment of 11/30/2025 has been entered. Claim 1 is pending (claim set as filed on 11/30/2025). Claim 1 is currently under examination and was examined on its merits.
Withdrawn Objections/Rejections
The rejection of claims 1-10 under 35 U.S.C. 112(b) as being indefinite
as set forth in the previous Office action is withdrawn in light of the amendment filed on
11/30/2025.
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.
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 factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
Claim 1 is newly rejected as necessitated by amendment under 35 U.S.C. 103 as being unpatentable over Wen et al. (CN105647227A, published on 06/08/2016), hereinafter ‘Wen’, in view of Inagaki et al. (JPS62115068A, published on 05/26/1987), Kanner et al. (US 2004/0166199 A1, published on 08/26/2004), Tepic et al. (“Pigment content and fatty acid composition of paprika oleoresins obtained by conventional and supercritical carbon dioxide extraction”, published in Aug 2009, CyTA – Journal of Food Vol. 7, No. 2, page 95-102), hereinafter ‘Tepic’, Millipore Sigma (“A clarifying guide to Membrane Filtration”, published in 09/2017, downloaded from https://www.sigmaaldrich.com/deepweb/assets/sigmaaldrich/product/documents/370/375/membrane-filtration-guide-br1133en-ms.pdf?srsltid=AfmBOoofB_LqGoFMW_gS6ibaWJduRup6EmDuxZZeun3j98e2V8jzvhEZ, pages 1-32), hereinafter ‘Millipore Sigma’, and Hostettmann et al. (“Medium-pressure liquid chromatography”, published in 2000, Wilson ID (Chief ed) Encyclopedia of separation science, Academic, San Diego, pages 3296-3303), hereinafter ‘Hostettmann’, as evidenced by Phenomenex (“Introduction to GPC Method Development”, published in 2014, downloaded from blob:https://www.phenomenex.com/b235374b-52c5-4edd-9f9b-f8c2ed75c64f, one page), hereinafter ‘Phenomenex’.
Wen’s general disclosure relates to a method for separating red pigment from yellow pigment of paprika red pigment (see entire document, including abstract).
Regarding claim 1, pertaining to a method for isolating a beta-carotene from pepper pigment, Wen teaches a method for isolating beta-carotene from pepper pigment (“method for separating yellow and red capsanthin”, “to obtain a capsicum yellow pigment eluate, which contains orange and yellow pigments such as β-carotene and zeaxanthin”; paragraphs [0002], [0051]); comprising:
(2) extraction: dissolving a paprika red pigment in an alkane solvent, standing for layering, and collecting the supernatant to obtain a paprika red pigment solution (“Paprika red pigment is a natural red pigment extracted from the peel of ripe red peppers. Its main components are capsanthin, capsorubin, β-carotene and zeaxanthin”, “during the transportation of the pepper granules, they are uniformly mixed with an extraction solvent sprayed from a pre-spray pipe of the extraction solvent … the extraction solvent extracts the capsanthin to obtain a capsanthin pigment leachate”,; “The extraction solvent of the present invention can be an alkane containing 4 to 7 carbon atoms, and preferably a 6# solvent is used as the extraction solvent, ”, “the pigment leachate and the alcohol de-spiciness agent are mixed in a liquid-liquid continuous extractor”, “The upper layer of the liquid-liquid continuous extractor is the pigment leachate, and the lower layer is the alcohol solvent”, “depigmented pigment leachate and saturated salt water are mixed”, “upper layer is the pigment leachate, and the lower layer is the saturated salt water”, “pigment leachate is mixed with saturated salt water at 200 r/min to remove residual ethanol”, “The pigment leaching solution obtained after removing the alcohol solvent contains red pigment components such as capsanthin and capsorubin and yellow pigment components such as beta-carotene, zeaxanthin and lutein”; paragraphs [0004], [0034], [0041], [0047]-[0049], [0050], [0058]).
(4) adsorption: carrying out chromatographic separation of the paprika red pigment with a silica gel chromatographic column, and collecting an effluent from the chromatographic column (“The pigment leaching solution obtained after removing the alcohol solvent contains red pigment components such as capsanthin and capsorubin and yellow pigment components such as beta-carotene, zeaxanthin and lutein”, “directly applying the pigment leachate after the alcohol solvent is removed to a silica gel column for adsorption separation, and collecting the effluent from the port;”; paragraphs [0050], [0051]).
(5) elution of beta-carotene: after loading onto the chromatographic column is completed, eluting with a first eluent, and collecting and concentrating the eluate to obtain beta-carotene oleoresin (“(b) after adsorption saturation, eluting the silica gel column with an alkane eluent, and combining the eluate with the port collected in step a) to obtain a capsicum yellow pigment eluate, which contains orange and yellow pigments such as β-carotene and zeaxanthin.”, The alkane elution solvent of the present invention can be an alkane containing 4 to 7 carbon atoms, preferably a 6# solvent”, “The 6# solvent eluate was concentrated under reduced pressure to obtain 59.1 kg of dark yellow chili butter paste”; paragraphs [0051], [0056]);
wherein in the step (2) the alkane solvent is an alkane containing 4-7 carbon atoms (“The extraction solvent of the present invention can be an alkane containing 4 to 7 carbon atoms”; paragraph [0047]).
wherein in the step (4) the stationary phase of the medium-pressure silica gel chromatographic column is 300 mesh chromatographic silica gel (“The silica gel used in the present invention can have a specification of 100 mesh to 200 mesh, 200 mesh to 300 mesh”; paragraph [0050]), and a mass ratio of the amount of silica gel to the paprika oleoresin is 1:0.2 (“The weight ratio of the pigment extract after removing the alcohol solvent to the silica gel is preferably 1:5 to 10”; paragraph [0050]);
wherein the first eluent is an alkane containing 4-7 carbon atoms (“The alkane elution solvent of the present invention can be an alkane containing 4 to 7 carbon atoms, preferably a 6# solvent”; paragraphs [0051], [0056]), an elution volume is 2-4 BV (“The volume ratio of 6# solvent to silica gel is preferably 2-4:1”; paragraph [0051]), and an elution flow rate is 0.5 BV/h (“First, use 1800L6# solvent at a flow rate of 0.5 Bv/h for elution”; paragraph [0058]).
wherein an eluent is acetone (“c) the silica gel column is then eluted with acetone to obtain an acetone eluate”; paragraph [0051]), wherein the elution volume is 2-4 BV (“the volume ratio of acetone to silica gel is preferably 2-4:1”; paragraph [0051]), and the elution flow rate is 0.5 Bv/h (“2400 L of acetone was used to elute the silica gel column at a flow rate of 0.5 Bv/h”; paragraph [0058]).
Additionally, Wen teaches an elution step comprising the elution of red pigments: after the elution of yellow pigments including beta-carotene is completed, eluting with an eluent, and concentrating the eluate to obtain reddish paprika red pigment (“c) the silica gel column is then eluted with acetone to obtain an acetone eluate, which contains red pigments such as capsanthin and capsorubin. The acetone eluate is concentrated to obtain a dark red oily substance”, “The acetone eluate was concentrated under reduced pressure to obtain 109.7 kg of dark red capsicum ointment.”; paragraphs [0051], [0056]).
Wen further discloses “The capsanthin and capsanthin prepared in the examples and comparative examples were tested, and the absorbance, arsenic content, lead content, total organic solvent residue, hexane residue, and acetone residue were all tested,” (paragraph [0063]), further indicating that the alkane used in Wen’s method is hexane.
Pertaining to the color values, absorbance ratios (A470nm/A454nm), and yields of beta-carotene, reddish paprika red pigment, and orange paprika red pigment, it is noted that the recited beta-carotene color value of 489.23-540.76, the recited beta-carotene absorbance ratio (A470nm/A454nm) of 0.848-0.855, the recited beta-carotene yield of 8.01%-89.03%, the recited reddish paprika red pigment color value of 411.89-466.92, the recited reddish paprika red pigment absorbance ratio (A470nm/A454nm) of 1.080-1.083, the recited reddish paprika red pigment yield of 53.38%-56.03%, the recited orange paprika red pigment color value of 324.44-361.77, the recited orange paprika red pigment absorbance ratio (A470nm/A454nm) of 0.949-0.957, and the recited orange paprika red pigment yield of 21.79%-23.42%, naturally result from performing the instantly claimed method steps, and therefore, the recited color values, absorbance ratios (A470nm/A454nm), and yields are inherent to the method.
Wen does not teach wherein the method comprises
step (1) enzymatic hydrolysis of paprika oleoresin to obtain a paprika red pigment hydrolysate, wherein the enzymatic hydrolysis in step (1) specifically comprises: adding membrane filtration water and lipase into the paprika oleoresin, stirring and reacting the mixture;
step (2) dissolving the paprika red pigment hydrolysate obtained in step (1) in an alkane solvent, wherein the alkane solvent in step(2) is added in an amount to adjust the color value of the paprika red pigment solution to 60-120;
step (3) refined filtration: filtering the paprika red pigment solution obtained in step (2) by a filter membrane to obtain a paprika red pigment filtrate;
pigment elution steps: step (6) elution of yellow pigments: after the elution of beta-carotene is completed, eluting with a second eluent, and concentrating the eluate to obtain a yellow pigment oleoresin; step (7) elution of red pigments: after the elution of yellow pigments is completed, eluting with a third eluent, and concentrating the eluate to obtain reddish paprika red pigment; and step (8) elution of orange pigments: after the elution of red pigments is completed, eluting the silica gel column with a fourth eluent, concentrating the eluate, and mixing the concentrated eluate with the yellow pigment oleoresin to obtain orange paprika red pigment;
wherein the silica gel chromatographic column is medium-pressure silica chromatographic column, wherein the mass ratio of the amount of silica gel to the paprika oleoresin is 1:(0.25-0.4);
step (9) solvent replacement and equilibrium: treating the medium-pressure silica gel chromatographic column by solvent replacement and equilibrium using a replacement solvent, to allow for separation production of another batch; wherein in step (9) the replacement solvent is an alkane containing 4-7 carbon atoms, the solvent replacement and equilibrium volume is 1.5-5 BV, and the flow rate is 0.5-3 BV/h;
wherein in the step (6), the second eluent is obtained by mixing an alkane containing 4-7 carbon atoms and acetone according to a mass ratio of (8-50):1; and in the step (7), the third eluent is obtained by mixing an alkane containing 4-7 carbon atoms and acetone according to a mass ratio of (8-50):1;
wherein in the step (8), the fourth eluent is acetone, the elution volume is 1-5 BV, and the elution flow rate is 0.5-3 BV/h;
wherein the beta-carotene has a color value of 489.23 - 540.76, an absorbance ratio (A470nm/A454nm) of 0.848 - 0.855, and a yield of 8.01 % - 89.03%;
wherein the reddish paprika red pigment has a color value of 411.89 - 466.92, an absorbance ratio (A470nm/A454nm) of 1.080 - 1.083, and a yield of 53.38% - 56.03%; and wherein the orange paprika red pigment has a color value of 324.44 - 361.77, an absorbance ratio (A470nm/A454nm) of 0.949 - 0.957, and a yield of 21.79% - 23.42%.
Inagaki’s general disclosure relates to “a method for separating paprika pigments” (see entire document, including paragraph 1 on page 1 of description).
Regarding claim 1, pertaining to step (1), Inagaki teaches enzymatic hydrolysis of paprika oleoresin to obtain a paprika red pigment hydrolysate (“paprika oleoresin, … can be freely used. These raw materials are then treated with lipase, and the resulting lipase-treated product is dissolved in an organic solvent.”, “1 g of lipase MY was dissolved in 200 g of water, and then 200 g of paprika oleoresin (Color Value 82,500) was added.”; see description, page 2, paragraphs 1-2). Inagaki further discloses “a method in which lipase is added to oleoresin, the hydrolyzed product is subjected to” (see description, page 1, paragraph 1), indicating that lipase treatment of the paprika oleoresin leads to hydrolysis of the oleoresin.
Inagaki teaches wherein the enzymatic hydrolysis comprises: adding water and lipase into the paprika oleoresin, stirring and reacting the mixture (“1 g of lipase MY was dissolved in 200 g of water, and then 200 g of paprika oleoresin (Color Value 82,500) was added. Further, 200 g of n-hexane is added, and the mixture is reacted with stirring at room temperature for 4 hours”; see description, page 2, paragraphs 2-3).
Additionally, Inagaki teaches the use of different lipases (“Lipases of various origins are widely used, but commercially available enzymes of microbial origin, such as Lipase MY, Lipase AP, and Lipase (Saiken), can be advantageously used. If necessary, lipase containing substances such as cultures can also be used”; see description, page 2, paragraph 1).
Pertaining to step (2), Inagaki teaches step (2), extraction: dissolving the paprika red pigment hydrolysate obtained in the step (1) in an alkane solvent, standing for layering, and collecting the supernatant to obtain a paprika red pigment solution (“After the reaction is completed, 600 g of n-hexane is added, stirred to dissolve, and then allowed to stand to separate the lower layer. The nhexane layer (upper layer) containing paprika is partitioned”; see description, page 2, paragraph 3), wherein the alkane solvent is an alkane containing 6 carbon atoms (“hexane”; see description, page 2, paragraph 3), and wherein a color value of the extracted paprika red pigment is obtained (“ n-hexane was then recovered to obtain 48 g of concentrated paprika. The color value was 302,000”; see description, page 2, paragraph 3).
Pertaining to steps (4)-(8), Inagaki teaches step
(4) adsorption: carrying out chromatographic separation of the paprika red pigment filtrate obtained in the step (3) with a silica gel chromatographic column (“The present invention relates to a method for separating paprika pigments, which comprises subjecting a paprika pigment-containing material, such as a paprika pigment raw material, a processed product thereof, or a purified paprika pigment concentrate, to silica gel chromatography”; “A glass tube is filled with a mixture of silica gel and n-hexane, and then 5 to 70%, preferably 20 to 25%, of concentrated paprika is added to the silica gel.”; see description, page 1, paragraph 2, and page 2, paragraph 2).
(5) elution: after loading onto the medium-pressure chromatographic column is completed, eluting with a first eluent, and collecting the eluate (“ When the mixture is eluted with n-hexane, a black pigment is distilled out”; see description, page 2, paragraph 2).
(6) elution of yellow pigments: after step (5) is completed, eluting with a second eluent, and concentrating the eluate to obtain a yellow pigment oleoresin (“Then, when eluted with a mixed solvent of 5% isopropyl ether and 95% low-hexane, a yellow pigment is distilled off”; see description, page 2, paragraph 2).
(7) elution of red pigments: after the elution of yellow pigments is completed, eluting with a third eluent, and concentrating to obtain reddish paprika red pigment (“Thereafter, the mixture is eluted with a mixed solvent of 25% isopropyl ether and 75% n-hexane, whereby a red pigment is distilled off”; see description, page 2, paragraph 2).
(8) elution of orange pigments: after the elution of red pigment is completed, eluting the silica gel column with a fourth eluent, concentrating the eluate to obtain an orange paprika pigment (“Finally, when eluted with acetone, an orange pigment is distilled off.”; see description, page 2, paragraph 2).
Additionally, Inagaki teaches “Furthermore, each of these pigments can be used individually as a coloring agent, and they can also be freely mixed together. By combining these pigments at any time, a large number of natural coloring agents can be created, which can be used in a wide range of fields, including food, cosmetics, pharmaceuticals, and more.” (see description, page 2, paragraph 2),
Pertaining to step (6), Inagaki teaches wherein the second eluent is obtained by mixing an alkane containing 6 carbon atoms and a solvent more polar than the alkane according to a mass ratio of 19:1 (“mixed solvent of 5% isopropyl ether and 95% n-hexane”; see description, page 2, paragraph 2).
Pertaining to step (7), Inagaki teaches wherein the third eluent is obtained by mixing an alkane containing 6 carbon atoms and a solvent more polar than the alkane according to a mass ratio of 3:1 (“Further elution with 1.7Q 25% isopropyl ether-75% n-hexane was performed”; see description, page 2, paragraph 2).
The Examiner notes that both Inagaki’s isopropyl ether and the claimed acetone in the second and third eluent are more polar than the alkane hexane, and that acetone is more polar than isopropyl ether, as evidenced by Phenomenex (see solvent polarities in Solvent Miscibility Table, page 1, right column).
Pertaining to step (8), Inagaki teaches wherein the fourth eluent is acetone (“Finally, when eluted with acetone, an orange pigment is distilled off.”; see description, page 2, paragraph 2).
Kanner’s general dislosure relates to “[a] method of increasing a fraction of free carotenoids in a source of carotenoids in which at least some of the carotenoids are fatty acid esterified carotenoids” (see entire document, including abstract).
Regarding claim 1, pertaining to step (1) enzymatic hydrolysis, Kanner teaches wherein lipase increases the fraction of free carotenoids in paprika and red pepper oleoresin (“contacting the source of carotenoids with an effective amount of an esterase under conditions effective in deesterifying the fatty acid esterified carotenoids, thereby increasing the fraction of free carotenoids in the source of carotenoids.”, “the source of carotenoids is paprika.”, “source of carotenoids is red pepper oleoresin.”, “the esterase is selected from the group consisting of a lipase,”; paragraphs [0110], [0112]-[0113]; see abstract).
Tepic’s general disclosure relates to “the influence of conventional and supercritical extraction of ground paprika” (see entire document, including abstract)
Regarding claim 1, pertaining to step (1) enzymatic hydrolysis, Tepic teaches wherein carotenoids exist as free carotenoids and carotenoid esters, wherein carotenoids and the corresponding carotenoid esters elute at different times during chromatography using a silica column (“The HPLC analysis of the pigment profile showed that carotenoids in paprika occur as free form and esterified with fatty acids, i.e. mono- and di- esters.”, “HPLC analysis of carotenoid content … A reversed-phase column (Zorbax SB-C18, 5 mm, 3.0 6 250 mm2 i.d.), protected by guard column (Zorbax SB-C18, 5 mm, 4.6 6 12 mm2 i.d., Agilent, USA) was used throughout this research.”; page 97, right column, paragraph 3; page 99, left column, paragraph 1; see Fig. 2).
Additionally, Tepic discloses wherein carotenoids were extracted using hexane (“Soxhlet (Sx) extract of paprika was obtained using technical grade hexane”; page 96, right column, paragraph 4).
Millipore Sigma’s general disclosure relates to membrane filtration (see entire document, including abstract).
Regarding claim 1, pertaining to filtration in step (3), Millipore Sigma teaches the use of membrane filtration for removing particles or biological entities from fluid or gasses by passage through a microporous medium, such as a membrane filter (see page 6, left column, paragraph 1).
Additionally, Millipore Sigma teaches wherein “[f]iltration is the process of
separating solids from fluid states of matter (liquids and gases), and serves a vital role not only in making water safe for human use, but in chemical, biological, and
industrial applications.” (page 4, left column, paragraph 1).
Hostettmann’s general disclosure relates to medium pressure liquid chromatography (see entire document, including abstract).
Regarding claim 1, pertaining to chromatographic separation, Hostettmann teaches wherein “Medium-pressure liquid chromatography (MPLC) is one of the various preparative column chromatography techniques.” (page 3296, see introduction in left column), wherein “[s]implicity and availability of the instrumentation, together with recycling of packing materials and low maintenance costs, contribute to the attractiveness of this technique.” (page 3296, see introduction in right column).
Pertaining to step (9), Hostettmann teaches treating the medium-pressure silica chromatographic column by solvent replacement and equilibrium using a replacement solvent to allow for separation production of a next batch (“packing material is regenerated after each chromatographic separation. For silica gel supports, this can be performed by washing successively with methanol, ethyl acetate and n-hexane.”; page 3299, left column, paragraph 4), wherein the replacement solvent is an alkane containing 6 carbon atoms (“n-hexane”; page 3299, left column, paragraph 4).
Additionally, Hostettmann teaches that “care has to be taken to adjust the sample
volume: a sample that is too dilute (injection of a large volume) results in decreased separation efficiency, while precipitation at the top of the column may be observed by injection of samples that are too concentrated.” (page 3300, left column, paragraph 5).
While Wen does not teach wherein the method comprises (1) enzymatic hydrolysis of paprika oleoresin to obtain a paprika red pigment hydrolysate, wherein the enzymatic hydrolysis specifically comprises: adding water and lipase into the paprika oleoresin, stirring and reacting the mixture, and wherein (2) paprika red pigment hydrolysate obtained in step (1) is dissolved in an alkane solvent, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Wen’s method with Inagaki’s teachings on lipase hydrolysis of a paprika oleoresin and extraction, with Kanner’s teachings on lipase hydrolysis of carotenoid esters, and with Tepic’s teachings on chromatographic properties of carotenoids to have created a method for isolating beta-carotene wherein the method comprises (1) enzymatic hydrolysis of paprika oleoresin to obtain a paprika red pigment hydrolysate, wherein the enzymatic hydrolysis specifically comprises: adding water and lipase into the paprika oleoresin, stirring and reacting the mixture, and wherein (2) paprika red pigment hydrolysate obtained in step (1) is dissolved in an alkane solvent. One would have been motivated to do so to improve the separation of beta-carotene from other carotenoids during chromatography by reducing the presence of carotenoid esters (see Tepic above) by using a lipase (see Inagaki and Kanner above). A skilled artisan would have reasonably expected success in combining Wen’s, Inagaki’s, Kanner’s and Tepic’s teachings, since all references are directed to paprika carotenoids (see above).
While modified Wen does not teach wherein the alkane solvent is added in an amount to adjust the color value of the paprika red pigment solution, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined modified Wen’s teachings with Inagaki’s teachings on color value of the extracted oleoresin to have created a method wherein the alkane solvent is added in an amount to adjust the color value of the paprika red pigment solution. One would have been motivated to do so to ensure optimal extraction of the paprika red pigments from the oleoresin.
While modified Wen does not teach wherein the adjusted color value of the paprika red pigment solution is 60-120, the instantly recited color value would have been within the realm of routine experimentation, since Inagaki teaches wherein 48 g of concentrated paprika pigments have a color value of 302,000 (see above). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized the color value of the paprika red pigment solution obtained by adding alkane solvent, in order to optimize extraction of the pigments from the hydrolyzed oleoresin. Further, Inagaki’s teachings are directed to the use of different lipases, therefore, manipulation of the color value of the paprika red pigment solution by modifying the amount of alkane extraction solvent would be within the purview of an artisan. Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. "[W]here 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 (CCPA1955). See MPEP § 2144.05 part II A.
While modified Wen does not teach step (3) refined filtration: filtering the paprika red pigment solution obtained in the step (2) by a filter membrane to obtain a paprika red pigment filtrate, and wherein the enzymatic hydrolysis in step (1) specifically comprises: adding membrane filtration water (instant claim 3), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have combined modified Wen’s teachings with Millipore Sigma’s teachings on membrane filtration, to have created a method for isolating beta-carotene wherein the method comprises step (3) refined filtration: filtering the paprika red pigment solution obtained in the step (2) by a filter membrane to obtain a paprika red pigment filtrate, and wherein the enzymatic hydrolysis in step (2) specifically comprises membrane filtration water. One would have been motivated to do so to remove particles from the paprika red pigment solution in step (3) for improved chromatography, and to remove biological entities or particles from water used in the enzymatic hydrolysis in step (1), to avoid introducing particles introduced into the oleoresin, and to ensure optimal oleoresin hydrolysis. A skilled artisan would have reasonably expected success in combining modified Wen’s teachings with Millipore Sigma’s teachings since both are directed to processing solutions in an industrial application.
While modified Wen does not teach pigment elution steps: step (6) elution of yellow pigments: after the elution of beta-carotene is completed, eluting with a second eluent, and concentrating the eluate to obtain a yellow pigment oleoresin; step (7) elution of red pigments: after the elution of yellow pigments is completed, eluting with a third eluent, and concentrating the eluate to obtain reddish paprika red pigment; and step (8) elution of orange pigments: after the elution of red pigments is completed, eluting the silica gel column with a fourth eluent, concentrating the eluate, and mixing the concentrated eluate with the yellow pigment oleoresin to obtain orange paprika red pigment, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined modified Wen’s method for isolating beta-carotene with Inagaki’s teachings on chromatographic isolation of yellow, red and orange pigments, and on mixing pigments, to have created a method for isolating a beta-carotene, a reddish paprika red pigment, and an orange paprika red pigment, wherein the method comprises step (6) elution of yellow pigments: after the elution of beta-carotene is completed, eluting with a second eluent, and concentrating the eluate to obtain a yellow pigment oleoresin, (7) elution of red pigments: after the elution of yellow pigments is completed, eluting with a third eluent, and concentrating the eluate to obtain reddish paprika red pigment, and step (8) elution of orange pigments: after the elution of red pigments is completed, eluting the silica gel column with a fourth eluent, concentrating the eluate, and mixing the concentrated eluate with the yellow pigment oleoresin to obtain orange paprika red pigment. One would have been motivated to further separate and isolate differently colored pigments, that can be mixed with each other to obtain specific colors for food, pharmaceutical, or cosmetic coloring (see Inagaki above).
While modified Wen does not teach wherein in the step (8) of instant claim 1, the fourth eluent is acetone, the elution volume is 1-5 BV, and the elution flow rate is 0.5-3 BV/h, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have combined modified Wen’s teachings with Inagaki’s and Wen’s teachings on acetone elution, in order to have created a method wherein in the step (8), the fourth eluent is acetone, the elution volume is 2-4 BV, and the elution flow rate is 0.5 BV/h. One would have been motivated to do so, to optimize pigment elution in the fourth elution step.
A skilled artisan would have reasonably expected success in combining modified Wen’s teachings with Inagaki’s teachings since both references are directed to paprika oleoresin und to silica-based chromatography for the separation of pigments (see above) using an alkane and acetone as eluents.
While modified Wen does not teach wherein the silica gel chromatographic column is medium-pressure silica chromatographic column, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have combined modified Wen’s teachings with Hostettmann’s teachings on medium-pressure liquid chromatography, to have created a method, wherein the silica gel chromatographic column is a medium-pressure silica chromatographic column. One would have been motivated to do so since medium pressure chromatography is simple to use, has low maintenance cost, and the packing material can be recycled (see Hostettmann above).
While modified Wen does not teach wherein the mass ratio of the amount of silica gel to the paprika oleoresin is 1:(0.25-0.4) (step 4), the instantly recited ratios would have been within the realm of routine experimentation since Wen teaches a mass ratio of the amount of silica gel to the paprika oleoresin of 1:0.2 (see above). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have determined the optimum ratio of silica gel to the paprika oleoresin, in order to obtain optimal separation efficiency (see Hostettmann above). Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. "[W]here 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 (CCPA1955). See MPEP § 2144.05 part II A.
While modified Wen does not teach wherein after step (8) is completed, the method further comprises a step (9) of solvent replacement and equilibrium: treating the medium-pressure silica gel chromatographic column by solvent replacement and equilibrium using a replacement solvent, to allow for separation production of a next batch, wherein the replacement solvent is an alkane containing 4-7 carbon atoms, the solvent replacement and equilibrium volume is 1.5-5 BV, and the flow rate is 0.5-3 BV/h, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined modified Wen with Hostettmann’s teachings on column regeneration with the alkane hexane and with Wen’s teachings on elution volume and elution flow rate, to have created a method for isolating beta-carotene wherein after step (8) is completed, the method further comprises a step (9) of solvent replacement and equilibrium: treating the medium-pressure silica gel chromatographic column by solvent replacement and equilibrium using a replacement solvent, to allow for separation production of a next batch, wherein the replacement solvent is an alkane comprising 4-7 carbon atoms (see Wen above), the solvent replacement and equilibrium volume is 2-4 BV, and the flow rate is 0.5 BV/h. One would have been motivated to do so to prepare the silica column for the next separation of paprika pigments for isolating a new batch of pigments.
A skilled artisan would have reasonably expected success in combining modified Wen’s teachings with Hostettmann’s teachings, since both references are directed to preparative chromatography.
While modified Wen does not teach wherein in step (6), the second eluent is obtained by mixing an alkane containing 4-7 carbon atoms and acetone according to a mass ratio of (8-50):1; and in the step (7), the third eluent is obtained by mixing an alkane containing 4-7 carbon atoms and acetone according to a mass ratio of (8-50):1, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have replaced isopropyl ether in modified Wen’s method with acetone. One would have been motivated to do so since acetone, like isopropyl ether, is a more polar solvent than the alkane hexane (see above), and since using acetone instead of isopropyl ether would simplify the pigment elution system in modified Wen’s method by using only the two solvents alkane and acetone, instead of three solvents alkane, isopropyl ether, and acetone.
While modified Wen does not teach wherein the second eluent has an alkane to acetone mass ratio of (8-50):1; and the third eluent has an alkane to acetone mass ratio of (8-50):1first, the instantly recited ratios would have been within the realm of routine experimentation since Inagaki teaches an alkane to isopropyl ether to ratio of the second and third eluent of 19:1 and 3:1, respectively (see above). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized the alkane to acetone ratios in order to optimize separation of the pigments. Further, one would have expected success in modifying the ratios since acetone is more polar than isopropyl ether, as evidenced by Phenomenex (see solvent polarities in Solvent Miscibility Table, page 1, right column), and therefore, manipulation of the solvent ratios would be in the purview of an artisan. Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. "[W]here 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 (CCPA1955). See MPEP § 2144.05 part II A.
Pertaining to the instantly recited color values, absorbance ratios (A470nm/A454nm), and yields of beta-carotene, reddish paprika red pigment, and orange paprika red pigment, the combination of Wen’s, Inagaki’s, Kanner’s, Tepic’s, Millipore Sigma’s and Hostettman’s teachings would implicitly result in the same or similar color values, absorbance ratios (A470nm/A454nm), and yields of beta-carotene, reddish paprika red pigment, and orange paprika red pigment. Since both, Wen and Inagaki teach alkane extraction of paprika pigments and the use of silica based chromatography for separating pigments from paprika oleoresin using an alkane as a first eluent, wherein according to Wen, the first elution step results in elution of beta-carotene, and Inagaki teaches lipase hydrolysis of the paprika oleoresin prior to extraction, and separation of yellow, red, and orange pigments, it is highly expected that the method taught by Wen, in view of Inagaki, Kanner, Tepic, Millipore Sigma, and Hostettman, would result in the same or similar, i.e. obvious, color values, absorbance ratios (A470nm/A454nm), and yields of beta-carotene, reddish paprika red pigment, and orange paprika red pigment.
Response to Arguments
Applicant has traversed the rejection of claim 1 under 35 U.S.C. 103 in the reply filed on 11/30/2025 (remarks, pages 7-9). Applicant's arguments have been fully considered but they are not persuasive.
Applicant states that “[t]he sheer number and variety of references relied upon in this rejection strongly suggest that claim 1 is no[t] obvious” (remarks, page 8).
The Examiner responds that reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).
Applicant states that “the present application achieves superior and unexpected results” (remarks, page 8).
The Examiner responds that the instant specification describes examples using different solvent systems for the extraction and separation of the claimed substances. However, no statistical evaluation of the different examples and the comparative examples is provided, and therefore proper interpretation of the presented results is not possible.
Conclusion
No claims are allowed.
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.
Correspondence Information
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/SANDRA ZINGARELLI/Examiner, Art Unit 1653
/SHARMILA G LANDAU/Supervisory Patent Examiner, Art Unit 1653