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 .
Election/Restrictions
Applicant's election with traverse of Group I, claim 1-16 in the reply filed on March 26, 2026 is acknowledged. The traversal is on the ground(s) that “…between Inventions I, II, and III is respectfully traversed, because no serious burden on the Examiner exists. If the search and examination of an entire set of claims can be made without serious burden, the full set of claims must be examined on the merits, even though it includes claims directed to distinct or independent inventions, as stated in MPEP § 803. Inventions I, II, and III are sufficiently related such that a thorough search for the subject matter of the elected invention would encompass a search for the subject matter of the non-elected inventions. Further, the inventions do not have materially different designs, modes of operation, function, or effect; they are not mutually exclusive; and they encompass overlapping subject matter…”.
This is not found persuasive because each group are directed to different inventions which are independent and distinct, each from the other. They have acquired a separate status in the art as a separate subject for inventive effect and require independent searches, as indicated by the different classification. Moreover, the search for each of the above inventions is not co-extensive particularly with regard to the literature search. Further, a reference which would anticipate the invention of one group would not necessarily anticipate or even make obvious another group. These inventions are distinct for the reasons given above and because the search required for one group is not required for the other groups, resulting in a serious burden for searching and examination of the claims. Thus, restriction for examination purposes as indicated is proper.
The requirement is still deemed proper and is therefore made FINAL.
Application Status
Claim 1-16 are under examination.
Claim 17-20 are withdrawn from examination.
Claim 1-16 are rejected.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/20/2024 and 5/29/2024, with the exception of NPL Cite No. 1. The NPL Cite No. 1, submitted 5/29/2024 IDS is not in the file wrapper, and not considered by the examiner. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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 1 recites in the preamble a “method of isolating prebiotic carbohydrates” however the body of the claim does not provide step(s) on when or how the prebiotic carbohydrates is obtained. It is not clear if the “source of water-soluble prebiotic carbohydrates” is the same element as the “prebiotics carbohydrates” in line 1; hence the claim is indefinite. Claim 2-16 are also rejected since the claims are depended upon rejected claim 1.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3 and 6-7 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Thavarajah et al. (US 2022/0125071 A1).
Regarding claim 1, Thavarajah et al. (Thavarajah) discloses a method of isolating and extracting plant proteins (’071, [0006]) which contains a source of prebiotic carbohydrates (‘071, [0026]). Thavarajah discloses the method comprising raw plant material as starting material with water to provide a solution (slurry) and separating the solution into a - and supernatant (‘071, [0009]) to provide a dry protein product (‘071, [0011]). The dry protein product provides the source the prebiotic carbohydrates, (‘071, [0026], [0041]) which includes oligofructose (water soluble).
Regarding claim 2 and 3, Thavarajah discloses the raw plant material including pulse crops, lentils, pea (‘071, [0032], [0036]).
Regarding claim 6, Thavarajah discloses soaking and stirring for a period of time between about 1 hour to about 12 hours (‘071, [0043]), which is within range with the cited range.
Regarding claim 7, Thavarajah discloses centrifuging the solution (slurry) at about 2500 rpm for about 10-20 minutes (‘071, [0046]) which is within range with the cited ranges.
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.
Claim(s) 4, 5, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Thavarajah et al. (US 2022/0125071 A1).
Regarding claim 4, Thavarajah discloses milling the raw plant material into fine powder (‘071, [0039])less than about 0.5 mm particle sizes which overlaps the range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 5, Thavarajah discloses combining the raw plant material as fine powder with water in a ratio of from about 1:2 to about 1:50 (w/v) (‘071, [0042]), which overlaps the cited range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 8, Thavarajah does not disclose an amount of the prebiotic carbohydrates, (‘071, [0026], [0041]) which includes the oligofructose (water soluble), however, as Thavarajah uses like materials, raw plant material including pulse crops, lentils, pea (‘071, [0032], [0036]) in a like manner as claimed of claim 1, it would therefore be expected that Thavarajah’s prebiotic carbohydrates, (‘071, [0026], [0041]) will have same amounts claimed.
Allowable Subject Matter
Claim 9-16 are allowed.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG THI YOO whose telephone number is (571)270-7093. The examiner can normally be reached M-F, 7AM to 3PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ERIK KASHNIKOW can be reached at (571)270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG T YOO/Primary Examiner, Art Unit 1792
