DETAILED ACTION
Background
Claims 1-23 stand pending in the instant application. Claims 1-13 as filed with the instant application on October 17, 2023 have been examined. No amendments have been filed. Claims 14-23 are withdrawn from consideration.
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 the invention of Group I, claims 1-13 in the reply filed on December 29, 2025 is acknowledged. The traversal is on the ground(s) that there would not be a serious search and/or examination burden on the Examiner if restriction were not required. This is not found persuasive because a search of the non-elected food product and method of making would include all relevant food areas, not limited to baked goods and bread, but anything with a sweetener including spices and seasonings, sauces, meat analogues, dairy products, beverages of any kind and fermented products of any kind. A search of such scope would involve a massive effort far beyond a search of a “cookie or muffin” or even a baked good.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The withdrawn process claims 21-23, if they include all the limitations of allowable product/apparatus claims will be considered for rejoinder. See MPEP §821.04(b).
Claim Objections
Claims 4-5 are objected to because of the following informalities:
In claim 4, at line 2 before “of two to twelve” replace [[DP]] with --degree of polymerization (DP)--;
In claim 5, at line 3 after “greater % w/w” insert -- of the biomass--
Appropriate correction is required.
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.
Claims 1-13 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.
In claim 1, at line 5, the amount of insoluble saccharide component lacks a basis or denominator and is indefinite. Is the amount of the insoluble saccharide component based on the total weight of the sweetener composition, based on the total weight of the soluble saccharide component and the insoluble saccharide component, or based on some other total weight?
The Office interprets the recited amount of insoluble saccharide component as being based on the total weight of the sweetener composition.
In claim 4, at line 2 the recited % soluble oligosaccharides is indefinite because it lacks units. Is recited % a weight %, a volume % or a % in some other units?
The Office interprets the recited % of soluble oligosaccharides as being a weight % (wt%).
In claim 5, at lines 2-3 the phrase “wherein the partially hydrolyzed biomass comprises cellulose and hemicellulose at a greater % w/w than the unhydrolyzed biomass” is indefinite. How can a hydrolyzed biomass comprise more cellulose and hemicellulose than the same unhydrolyzed biomass?
The Office interprets the claim as reciting a partially hydrolyzed biomass having a higher ratio of cellulose to hemicellulose than the unhydrolyzed biomass as disclosed at [0008] of the instant specification.
In claim 9, at line 2, the recited % w/w of glucose, fructose, galactose, sucrose, maltose or lactose is indefinite because it lacks a basis or denominator. Is the % of glucose, fructose, galactose, sucrose, maltose or lactose based on the total weight of the sweetener composition, the total weight of the soluble saccharide component, or the total weight of something else?
The Office interprets the recited wt% of glucose, fructose, galactose, sucrose, maltose or lactose as being based on the total weight of the sweetener composition.
In claim 10, at line 2 the recited % w/w of monosaccharides is indefinite because it lacks a basis or denominator. Is the % of monosaccharides based on the total weight of the sweetener composition, the total weight of the soluble saccharide component, or the total weight of something else?
The Office interprets the recited wt% of monosaccharides as being based on the total weight of the sweetener composition.
Claims 2-3, 6-8 and 11-13 are rejected as depending from a rejected base claim.
Claim Rejections - 35 USC § 103
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 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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over US2019/0345265 A1 to Richard et al. (Richard) in view of US2015/0352140A1 to Pylkkanen (Pylkkanen).
Regarding instant claims 1, 7 and 8, Richard at [0013] discloses a sweetener composition comprising glucose mixed with purified hemicellulose that comprises xylose, xylo-oligosaccharides (a “soluble saccharide component”), and xylan (“hemicellulose” as an “insoluble saccharide component”). In addition, at [0026], Richard discloses that its purified hemicellulose comprises glucomannan (“mannan-oligosaccharides” as a “soluble saccharide component”). Further, at [0025] Richard discloses that the purified hemicellulose can comprise from 5 to 95 wt% of the sweetener composition, wherein the hemicellulose can comprise about 20 to 95 wt% of the xylan (“hemicellulose”) as the main insoluble saccharide component (claim 8), for a total of 2 to about 90 wt% of insoluble saccharide component as hemicellulose, which the claimed at least 10 wt% to less than 5:1 w/w (or less than 83.33 wt%) of the insoluble saccharide component, based on the total weight of the insoluble saccharide component and the soluble saccharide component overlaps, and which the claimed 7.5 to 30 of hemicellulose in claim 7 overlaps. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. The ordinary skilled artisan would have found it obvious in Richard to include the claimed insoluble saccharide component in the amount of from 10 to 83.33 w% based on the total weight of the insoluble saccharide component and the soluble saccharide component because Richard discloses that the claimed amount of insoluble saccharide component provides a desirable sweetener composition.
Further, at [0095] Richard discloses that its sweetener composition comprises at least some lignin (claims 1 and 7). In addition, Richard at [0020] discloses sweetener compositions wherein the proportion of ingredients is selected to provide a desired degree of sweetness, DE value, viscosity, bulk, dietary fiber, soluble fiber, or calories that (at [0105]) approximate the sweetness of commercially available dextrose or starch syrup. The Office considers the claimed sweetener composition that provides a smell, a flavor, and/or a texture when added to a foodstuff, which is comparable to a smell, a flavor, and/or a texture provided by sucrose to include the sweetener composition of Richard that approximates the sweetness of commercially available dextrose syrup.
Still further, and regarding instant claims 3 and 7, Richard does not disclose a sweetener composition comprising sweetener composition comprising at least 50% cellulose by dry w/w of the insoluble saccharide component; and does not disclose a particle size for its insoluble saccharide component wherein the partially hydrolyzed fiber has a D50 particle size value of 30 microns to 300 microns; further, Richard does not disclose a sweetener composition wherein the D50 particle size value of the insoluble saccharide component is 50 microns to 200 microns as in claim 3; and Richard does not disclose a sweetener composition comprising an insoluble saccharide component from 50 to 91% by dry w/w of cellulose, based on the total weight of the insoluble saccharide component as in claim 7. However, at [0566] Richard discloses its product as a syrup or a powder; at [0042], Richard discloses its purified hemicellulose as having a molecular weight of less than 4,000; and, at [0152] Richard discloses milling its lignocellulosic feedstock to improve processing.
Because the claimed sweetener composition does not recite any form, the Office considers the recited D50 particle size of an insoluble saccharide component as including any of a powder particle size or a fluid domain particle size in water. Accordingly, the Office considers the insoluble saccharide component of the Richard partially hydrolysed and purified hemicellulose and the claimed insoluble saccharide component to be substantially the same thing. Accordingly, absent a clear showing as to how the D50 particle size of the insoluble saccharide component of Richard differs from that as claimed, the Office considers the insoluble saccharide component of Richard as a partially hydrolyzed fiber to have a D50 particle size value of 30 microns to 300 microns as in claim 1 and to have a D50 particle size value of 50 microns to 200 microns as in claim 3. See MPEP 2112.01.I.
Pylkkanen at Abstract a dietary supplement comprising an acetate salt, a hemicellulose-derived sweetener, and cellulose, wherein (at [0003]) the composition is aimed at addressing a growing obesity and diabetes problem. At [0044], Pylkkanen discloses an amount of cellulose that ranges from 50 to 99 wt% of the composition, which the claimed amount at least 50 wt% of an insoluble saccharide component that comprises from 10% to 5 out of 6 parts w/w (83.33 wt%) of a composition or from 5% to nearly 83.33 wt% in claim 1 overlaps, and which the claimed 50 to 91 wt% of cellulose based on the insoluble saccharide component as 10% to 83.33 wt% of the sweetener composition as cellulose, or 5 to about 75 wt% of the sweetener composition as in claim 7 overlaps. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. The ordinary skilled artisan in Pylkkanen would have found it obvious to include or make its dietary composition to have the claimed amount of cellulose as an insoluble saccharide component because Pylkkanen discloses that the claimed amount of cellulose makes a desirable sweetener composition.
Regarding instant claims 2 and 11, the Office considers the sweetener composition as disclosed in Richard as modified by Pylkkanen to be substantially the same thing as the claimed composition. Accordingly, absent a clear showing as to how the cookie baking properties and the nature of the insoluble saccharide component in saccharide component of Richard as modified by Pylkkanen differs from that as claimed, the Office considers the sweetener composition of Richard at [0013], [0025]-[0026] and [0095] as modified by Pylkkanen at [0044] to be a composition wherein replacement of sucrose in a control raw cookie composition with the sweetener composition, results in a cookie composition having a comparable water loss or a lesser water loss after 10 minutes of baking the sucrose-replaced raw cookie composition to a control cookie composition made by baking the control raw cookie composition for 10 minutes as in claim 2; and to be a composition wherein the insoluble saccharide comprises a multimolecular complex of cellulose and hemicellulose as in claim 11. See MPEP 2112.01.I.
Regarding instant claim 4, at [0105] Richard discloses its purified hemicellulose composition when combined with glucose as having in some cases a DE of from 35-75, which converts to a degree of polymerization of 100/35 to 100/75 or about 1.4 to 3, which the claimed DP of two to twelve overlaps. See MPEP 2144.05.I. Further, Richard at [0105] discloses varying the DE and thus the DP of its sweetener composition as desired to influence sweetness and viscosity. The ordinary skilled artisan would have found it obvious in view of Richard to modify the DP of its insoluble saccharide component within the claimed range, either to raise the DP of its soluble saccharide component to lower its sweetness and increase its viscosity or vice-versa to raise its sweetness and lower its viscosity as desired.
Regarding instant claim 5, the Office interprets the claim as reciting a partially hydrolyzed biomass having a higher ratio of cellulose to hemicellulose than the unhydrolyzed biomass as disclosed at [0008] of the instant specification. Be advised that the recited partially hydrolyzed biomass is a product by process. The patentability of a product does not depend on its method of production. See MPEP 2113.I. Further, once a product appearing to be substantially identical is found and a prior art rejection is made, the burden shifts to the applicant to show an nonobvious difference over the art. See MPEP 2113.II. Accordingly, absent a clear showing that the product made by the claimed method differs from the product disclosed in the art it matters not whether the product of Richard as modified by Pylkkanen at [0044] comprises added cellulose or a product solely of partial hydrolysis of a lignocellulosic material. The Office considers the composition of Richard at [0013], [0025]-[0026] and [0095] as modified by Pylkkanen at [0044] to be a composition or product having a higher ratio of cellulose to hemicellulose than the unhydrolyzed biomass in Richard as claimed and as disclosed at [0008] of the instant specification.
Regarding instant claim 6, Richard at [0103] discloses that its sweetener composition is obtained from corn stover or wheat straw that is (at [0023]) partially hydrolyzed.
Regarding instant claims 9-10, at [0025] Richard discloses that its composition comprises 5 to 95 wt% of glucose, based on the total weight of the sweetener composition, which overlaps the claimed less than 20% w/w of glucose, fructose, galactose, sucrose, maltose or lactose as in claim 9; and (at [0055]) discloses that its purified hemicellulose comprises 1 to 25 wt% of xylose based on the total weight of the hemicellulose (representing 5 to 95 wt% of the total sweetener composition - as at [0025] of Richard), which xylose when added to the 5 to 95 wt% of glucose or monosaccharides adds to about 6 to about 96 wt% of the composition and overlaps the claimed range of less than 20 wt% of monosaccharides, based on the total weight of the sweetener composition. See MPEP 2144.05.I. The ordinary skilled artisan in Richard would have found it obvious to limit the amount of glucose and monosaccharides in its sweetener composition to the claimed amount because Richard discloses that the claimed amount of glucose and monosaccharides provides a desirable sweetener composition.
Regarding instant claims 12 and 13, at [0055] Richard discloses its partially hydrolyzed biomass as a biomass hydrolyzed by enzyme hydrolysis (claim 12) and steam treatment (non-enzymatic hydrolysis) as in claim 13.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW E MERRIAM whose telephone number is (571)272-0082. The examiner can normally be reached M-H 8:00A-5:30P and alternate Fridays 8:30A-5P.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki H Dees can be reached at (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREW E MERRIAM/ Examiner, Art Unit 1791
Prosecution Insights