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 without traverse of Group I (claims 74-93) in the reply filed on 30 January 2026 is acknowledged.
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 87 is 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 87 recites the limitation "the saccharides" in line 2. There is insufficient antecedent basis for this limitation in the claim. In this case “saccharide” is unclear because it does not clearly point out which saccharide, one or all, or a specific subset, the claim is referred to. The claims are specific to cell-oligosaccharides and oligosaccharides and thus by the claim merely stating “the saccharide” it would be unclear to one with ordinary skill in the art which component of the invention to the claim is referencing.
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.
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 74-93 is/are rejected under 35 U.S.C. 103 as being unpatentable over Simmons (WO 2020035599 A1)
With regard to Claim 74, Simmons teaches compositions comprising polysaccharides and oligosaccharides (abstract). Simmons teaches the oligosaccharide component comprises at least 5% cello-oligosaccharides with a degree of polymerization of from two to six w/w ([0012]) and at most 50% cello-oligosaccharides with a degree of polymerization of from two to six w/w ([0014]). See MPEP 2144.05(I) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Simmons teaches The composition may also comprise at least one more type of oligosaccharide selected from: xylo-oligosaccharides with a degree of polymerization of from two to twelve ([0006], [0007]). Simmons teaches the xylo-oligosaccharide mixture comprises at least 50% of xylo- oligosaccharides with a degree of polymerization of two w/w ([0037]).
Simmons does not explicitly teach wherein a 20% w/w solution of the oligosaccharide component in water has a freezing point of lower than -4℃. However, Simmons teaches substantially the same composition as claimed. Therefore, if the compositions are the same they cannot have mutually exclusive properties. See MPEP 2112.01(II) "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
The examiner would like to note that Simmons does not explicitly teach the composition is a non-colligative freezing point modulator as stated in the preamble of the claim. However, per MPEP 2112.02(II) The claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "‘extraneous’ limitations from the specification." Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. In this case, the claim merely states the intended use of the composition. Simmons teaches the claimed composition and therefore would inherently be able to act as a non-colligative freezing point modulator as stated in the preamble. See MPEP 2112.01(I) Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
With regard to Claim 75, Simmons teaches The amounts of each of the oligosaccharides may be varied depending on the desired properties of the resulting foodstuff, cosmetic, or nutraceutical. Preferably the two oligosaccharides may be present in a ratio of 1 :9 to 9:1, preferably 1 :2 to 2:1, more preferably 2:3 to 3:2, in relation to each other ([0246]).
It would have been obvious to one with ordinary skill in the art to modify the ratio of the oligosaccharides to achieve the desired properties of the resulting foodstuff, cosmetic, or nutraceutical. See MPEP 2144.05(II)(A) Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature 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 (CCPA 1955)
With regard to Claim 76, Simmons teaches wherein the one or more oligosaccharide(s) comprises xylo-oligosaccharides ([0007]).
With regard to Claim 77, Simmons does not explicitly teach wherein a 20% w/w solution of the oligosaccharide component in water has a freezing point of lower than -5℃. However, Simmons teaches substantially the same composition as claimed. Therefore, if the compositions are the same they cannot have mutually exclusive properties and therefore a 20% w/w solution of the oligosaccharide component as taught by Simmons in water would have a freezing point of lower than -5℃. See MPEP 2112.01(II) "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
With regard to Claim 78, Simmons teaches greater than 1% by dry w/w of the cello-oligosaccharides have a degree of polymerization of 3 or more ([0024]-[0031]). See MPEP 2144.05(I) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
With regard to Claim 79, Simmons teaches wherein the composition further comprises one or more insoluble polysaccharide(s) ([0249]).
With regard to Claim 80, Simmons teaches the compositions comprises a mixture of xylo-oligosaccharides ([0007]), cello- oligosaccharides ([0012]), and insoluble polysaccharides ([0249]). Simmons teaches the addition of polysaccharides to oligosaccharide mixtures can be done to improve the gastrointestinal tolerance of the oligosaccharide mixtures ([0306]). Simmons teaches the ratio between the first oligosaccharide (i.e. cello-oligosaccharides), the second oligosaccharide (i.e., xylo-oligosaccharides), and the polysaccharide may be from 2:2:1 to 30:30:1, preferably about 3:3:1 ([0249]). See MPEP 2144.05(II)(A) Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature 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 (CCPA 1955). Therefore it would have been obvious to one with ordinary skill in the art to optimize the ratio of xylo-oligosaccharides, cello- oligosaccharides, and insoluble polysaccharides to 75:10:15 to achieve the desired properties such as improved gastrointestinal tolerance.
With regard to Claim 81, Simmons teaches the one or more oligosaccharide(s) comprise at least 10% by dry w/w oligosaccharides with a degree of polymerization of between 3-12 ([0032]-[0033]). See MPEP 2144.05(I) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
With regard to Claim 82, Simmons teaches a chilled confection (example 22, [0448]) comprising a homogenous mixture wherein the mixture comprises a base medium component comprising fat-based composition wherein the base medium component is a liquid or semi-solid phase at 0℃ (example 22, [0448], Simmons reads such that the base is cream, cream inherently is a liquid at 0℃).
Simmons teaches the mixture comprises an oligosaccharide component (example 22 [0448]) [0409] Simmons teaches that the oligosaccharide component is called Cell2/XOS wherein Cell2 is cellbiose which is a disaccharide and is a cello-oligosaccharide ([0409], [0363]) and XOS is xylo-oligosaccharide ([0409]). Simmons teaches an embodiment where the oligosaccharide component is 5g of cellbiose (i.e., cello-oligosaccharide) and 5g of xylo-oligosaccharide ([0407]). Thus Simmons reads such that the oligosaccharide component comprises 50% cello-oligosaccharides and 50% xylo-oligosaccharide. See MPEP 2144.05(I) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Continuing, Simmons teaches the consumable composition may comprise cello-oligosaccharides with a degree of polymerization of from two to six. The composition may also comprise at least one more type of oligosaccharide selected from: xylo-oligosaccharides with a degree of polymerization of from two to twelve ([0006]).
Simmons does not explicitly teach wherein a 20% w/w solution of the oligosaccharide component in water has a freezing point of lower than -4℃. However, Simmons teaches substantially the same composition as claimed. Therefore, if the compositions are the same they cannot have mutually exclusive properties. See MPEP 2112.01(II) "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
With regard to Claim 83, Simmons teaches the confection is an ice cream (Example 22, [0448]).
With regard to Claim 84, Simmons teaches substantially the same composition as Claim 82 (see above). Therefore the composition would inherently have a texture that is substantially indistinguishable from a reference confection wherein the non- colligative freezing point modulator is substituted for sucrose. See MPEP 2112.01(II) "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
With regard to Claim 85, Simmons teaches the chilled confection is substantially free of antifreeze proteins (example 22, [0448]).
With regard to Claim 86, Simmons teaches the chilled confection comprises ~15% premade Cell2/XOS mixture which contains cello-oligosaccharide and xylo-oligosaccharide (i.e. saccharides, example 22, [0448]. [0407] Simmons reads such that the composition contains 284g double cream, 300 g full fat milk, 115g premade Cell2/XOS mixture, and 60g egg yolks). See MPEP 2144.05(I) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
With regard to Claim 87, Simmons teaches the composition comprises an oligosaccharide component (i.e., saccharide) which is called Cell2/XOS wherein Cell2 is cellbiose which is a disaccharide and is a cello-oligosaccharide ([0409], [0363]) and XOS is xylo-oligosaccharide ([0409]). Simmons teaches an embodiment where the oligosaccharide component is 5g of cellbiose (i.e., cello-oligosaccharide) and 5g of xylo-oligosaccharide ([0407]). Thus Simmons reads such that the oligosaccharide component comprises 50% cello-oligosaccharides (i.e., at least 5%). See MPEP 2144.05(I) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
With regard to Claim 88, Simmons teaches the base medium component comprises a cream (example 22, [0448]).
With regard to Claim 89, Simmons teaches substantially the same composition as Claim 82 (see above). Therefore the firmness of the composition would inherently be less than the firmness of ice at 0 °C, and/or the springiness of the chilled confection would be greater than the springiness of ice at 0 °C. See MPEP 2112.01(II) "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
With regard to Claim 90, Simmons teaches the composition comprises an oligosaccharide component which is called Cell2/XOS wherein Cell2 is cellbiose which is a disaccharide and is a cello-oligosaccharide ([0409], [0363]) and XOS is xylo-oligosaccharide ([0409]). Simmons teaches an embodiment where the oligosaccharide component is 5g of cellbiose (i.e., cello-oligosaccharide) and 5g of xylo-oligosaccharide ([0407]). Thus Simmons reads such that the oligosaccharide component comprises 50% cello-oligosaccharides wherein 100% of the cello-oligosaccharides is cellbiose (i.e., greater than 30%) See MPEP 2144.05(I) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
With regard to Claim 91,Simmons teaches the chilled confection contains an oligosaccharide component called Cell2/XOS wherein Cell2 is cellbiose which is a disaccharide and is a cello-oligosaccharide ([0409], [0363]) and XOS is xylo-oligosaccharide ([0409]). Simmons teaches the composition does not contain xylobiose ([0448], whole document) and therefore reads such 0% (i.e., less than 60%) of the one or more oligosaccharides comprise xylobiose. See MPEP 2144.05(I) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
With regard to Claim 92, Simmons teaches the composition may comprise less than 5% monosaccharides w/w ([0095]). See MPEP 2144.05(I) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
With regard to Claim 93, Simmons teaches the composition comprises an oligosaccharide component which is called Cell2/XOS wherein Cell2 is cellbiose which is a disaccharide and is a cello-oligosaccharide ([0409], [0363]) and XOS is xylo-oligosaccharide ([0409]). Simmons teaches an embodiment where the oligosaccharide component is 5g of cellbiose (i.e., cello-oligosaccharide) and 5g of xylo-oligosaccharide ([0407]). Thus Simmons reads such that the oligosaccharide component comprises 50% cello-oligosaccharides which would equate to 50% disaccharides. Therefore the composition would comprises less than 60% disaccharides. See MPEP 2144.05(I) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARLA I DIVIESTI whose telephone number is (571)270-0787. The examiner can normally be reached Monday-Friday 7am-3pm (MST).
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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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/K.I.D./ Examiner, Art Unit 1792
/ERIK KASHNIKOW/ Supervisory Patent Examiner, Art Unit 1792
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