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 Objections
Claim 2 is objected to because of the following informalities: the scientific name of dates should be capitalized and italicized. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 13 is rejected under 35 U.S.C. 102a1 as being anticipated by Farahnaky et al., made of record by Applicant.
Regarding Claim 13, Farahnaky teaches a date syrup comprising water and date sugar of at least 70̊ Brix in the water (Page 658, Column 1, Paragraph 2 and Column 2, “Materials and Methods”).
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 1-7, 10, 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Anand (WO 2021/094816) in view of El Sharnouby, et al. (2014).
Regarding Claims 1-7 and 10, Anand teaches a method of generating a date product, comprising adjusting the viscosity of a date syrup by diluting it with water (Paragraph 41), therefore meeting the limitation of forming a first solution by mixing a supply of dates with a supply of water. Anand teaches filtering the diluted date syrup through a pre-filter having mesh size between 300 and 400, sequentially filtering the filtrate obtained in the previous step through a micro-filtration membrane, filtering the filtrate obtained in the previous step through a ultrafiltration membrane to get transparent date syrup and concentrating the transparent date syrup by evaporating excess water (Paragraph 41). Anand teaches a method step of removing soft material of the dates, as Anand teaches removing fibers of the dates by centrifugal filtration (Paragraphs 51 and 52). The method step of removing soft material of date fiber with centrifugal filtration also meets the limitation of removing heavy material in light of Claim 5 and the limitation of removing “heavy particles” with centrifugal separator or filtration. Anand teaches using microfiltration to remove any particulate matter in a size range of 0.1 to 10 microns and ultrafiltration to remove particles of more than 103 to 106 Da (Paragraphs 47-49), where the pre-filter and filtration steps remove suspended particles, dirt, dust fibers, pollen, wax, (Paragraphs 44-50). Therefore, Anand teaches removing over-sized material comprising removing microfibers larger than 1 micron using a pass through filter, and removing suspended non-soluble solid comprising removing at least one of the claimed using a network of membrane fitted tubing, or ultrafiltration, as Anand teaches removing sub-micron particles, as set forth above. It is noted that Applicant’s relative size limitations recited in Claims 1-7 are met by the removal of the claimed components recited in the particular claims.
Anand does not specifically teach Step 3 of removing hard material of the dates comprising removing at least one of the following using a destoner, as Anand starts with a date syrup. Anand also does not teach where the supply of dates comes from fruit from Phoenix dactylifera, or specifically teach removing soft material such as fibers, flesh or calyxes of dates using a filter press.
El Sharnouby teaches methods of making date syrup and teaches date fruit from Phoenix dactylifera, (Page 2, Column 1, “Materials and Methods”), were pitted, therefore destoned using a destoner of some kind, and sliced to pieces, mixed with a certain amount of water, to make a slurry, then filtered through a cheese cloth with a hand press to remove large impurities and insoluble matters, then centrifuged (Page 2, Column 1, “Materials and Methods”). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used date fruits from the claimed Phoenix dactylifera, as taught by El Sharnouby, and to have started with dates that were then destoned and then filtered using a filter-press in order to remove large impurities and insoluble matters, and then continuing with centrifugal filtration as taught by Anand. One of ordinary skill in the art would have been motivated to use the known filtration methods for making a date syrup that is eventually transparent.
While the prior art does not specifically teach the successive method steps of filtering each consecutive solution in the specific order as recited in the claims, since the final product as taught and motivated by the prior art is a date syrup that has been filtered, evaporated and decolorized to a transparent date syrup, it is maintained that the particular method steps recited would not have resulted in a materially different product than what is taught in the prior art. Furthermore, it has been found that “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.” See MPEP 2144.04 IV C.
Regarding Claims 13-17, Anand teaches a transparent date syrup or date sugar concentrate that can be used as a substitution for granulated sugar and can be used in a sweetener where the transparent date syrup is 100% of the sweetener (Paragraphs 34-38). Since Anand teaches the transparent date syrup is evaporated to remove water, thereby forming the syrup, one of ordinary skill in the art would have reasonably expected the date sugar is in a higher proportion to the amount of water in the syrup, and where the turbidity of the date sugar concentrate is less than the claimed turbidity units, in light of the transparency of the date syrup or date sugar concentrate. In addition, in light of the ultrafiltration steps discussed above, one of ordinary skill in the art would have reasonably expected the date syrup or concentrate to be free of the claimed components of ash or minerals. It is also understood that a sugar content of 81-83% would also meet the limitation of a date syrup as claimed comprising water and date sugar of at least 70̊ Brix in the water.
Regarding Claim 15 in particular, while Anand does not specifically teach the exact ratio of date sugar to water in the date sugar concentrate as claimed, El Sharnouby teaches sugar contents of date syrup are from 81-83% (Page 3, Column 2), which meets the limitation for the amount of date sugar in the concentrate, but with a water content less than claimed. However, since Anand teaches concentrating the transparent date syrup by evaporating excess water, it would have been well within the skill of one of ordinary skill in the art to have determine the most suitable extent of concentration, in order to prepare a date sugar concentrate or date syrup having the desired sugar content for a particular application. Determining the optimal sugar to water ratio in a date sugar concentrate would have been well within the skill of one of ordinary skill in the art, in light of the teachings of the prior art.
The specific turbidity claimed in Claims 14 and 16 is not met by any reference here because Applicant has chosen to describe his product with physical characteristics that are beyond measurement by this Office and as a practical matter, the Patent Office is not equipped to manufacture products and then obtain prior art products and make physical comparisons therewith. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972) at 59 CCPA 1041. Since the above reference teaches a date sugar concentrate that is transparent, it would be expected, absent any evidence to the contrary, that the composition would meet the claimed limitations.
Furthermore, it has been found that “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). MPEP 2112.V.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Anand (WO 2021/094816) in view of El Sharnouby, et al. (2014), and further in view of Bocci (EP 1038975).
Regarding Claim 8, Anand in view of El Sharnouby are relied upon as above in the rejection of Claim 1 and teach a method of making a date product or a date syrup, and teach specifically making a transparent date syrup, but do not teach removing minerals from a sixth solution comprising removing at least one of the following using an adsorbent resin filter.
Bocci teaches a method of making a date product and teaches using adsorbent decoloring resins to remove color from the date juice (Paragraphs 31-33). One of ordinary skill in the art would have reasonably expected that removing color from the date product using an adsorbent resin filter would also result in a remaining minerals to also be removed from the syrup. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used a known method of removing color from date products using an adsorbent resin filter, in light of the teachings of Bocci. While the prior art does not specifically teach the successive method steps of filtering each consecutive solution in the specific order as recited in the claims, since the final product as taught and motivated by the prior art is a date syrup that has been filtered, evaporated and decolorized to a transparent date syrup, it is maintained that the particular method steps recited would not have resulted in a materially different product than what is taught in the prior art. Furthermore, it has been found that “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.” See MPEP 2144.04 IV C.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Anand (WO 2021/094816) in view of El Sharnouby, et al. (2014), and further in view of Weaver et al. (2020).
Regarding Claim 9, Anand in view of El Sharnouby are relied upon as above in the rejection of Claim 1 and teach a method of making a date product or a date syrup, and teach evaporating water to make the date syrup as set forth above, but do not specifically teach removing at least a portion of the water comprising removing at least some pure water using reverse osmosis. The recitation of “pure water” is deemed to be met by Anand and the teaching of using purified water in the methods disclosed (Paragraph 30).
Weaver teaches of conventional methods to make maple syrup where it is traditionally made by using open pan evaporation until the concentration is high enough to be considered maple syrup, however, due to the fact that traditional evaporation processes require a large energy input, in recent years reverse osmosis has been used to do preliminary concentration of maple sap to reduce the overall energy requirement (Page 1, Column 1, Paragraph 1). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have another more energy efficient method to remove water from the date product in order to prepare the date syrup, and to have looked to another sugar-syrup making industry, such as the maple syrup industry, for other more energy efficient concentration methods, such as reverse osmosis.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Anand (WO 2021/094816) in view of El Sharnouby, et al. (2014), and further in view of Bertuzzi (2019).
Regarding Claims 11 and 12, Anand in view of El Sharnouby are relied upon as above in the rejection of Claim 1 and teach a method of making a date product or a date syrup, but do not specifically teach forming a tenth solution by heat sterilizing the ninth solution. Anand in view of El Sharnouby do teach removing the claimed over-sized materials by removing materials having a particle size larger than 1 micron, as set forth in the rejection of Claim 6, but do not further teach pasteurizing the result of removing the over-sized materials from the fourth solution.
Bertuzzi teaches of a method of preparing a date syrup and teaches that methods of making date syrup include sterilizing and pasteurizing steps depending on the specific steps of the application by a sterilizer/pasteurizer plate sterilizer/pasteurizer and once sterilized the product can be filled into aseptic bags in drums or boxes (Pages 1-4). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have included known method steps of sterilizing and/or pasteurizing the date syrup of Anand in view of El Sharnouby in light of the teachings of Bertuzzi. While the prior art does not specifically motivate a specific time in the method to pasteurize or sterilize, such as recited in Claim 12, since the final product as motivated by the prior art is a date syrup that has been filtered and pasteurized/sterilized, one of ordinary skill in the art would not have expected that performing the sterilizing/pasteurizing at a particular step in the filtration process would have resulted in a materially different product. Furthermore, it has been found that “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.” See MPEP 2144.04 IV C.
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Anand (WO 2021/094816) in view of El Sharnouby, et al. (2014), and further in view of Stevens (WO 2009/021968).
Regarding amended Claims 18-20, Anand in view of El Sharnouby are taken as cited above for the rejection of Claim 15 and teach or render obvious the date sugar concentrate but do not teach the claimed semi-solid form for oral administration comprising the date sugar concentrate in an amount of at least 60% by volume and a hydrophilic long-chain polymer, or where the semi-solid form is a marshmallow, where the date sugar concentrate is in at least 80% by volume and long-chain polymer in at least 10% by volume, where the semi-solid is a gummy with at least 75% date sugar concentrate and polymer in an amount of at least 5% by volume.
Stevens teaches that marshmallows are aerated confectioneries known to comprise water, sugars and gelatin (Page 2, lines 1-12) and are a sweet or candy having a spongy, resilient consistency based on gelatin and sugar (Page 3, lines 1-10). Stevens teaches the marshmallows typically have total amount of sugar, corresponding to an amount of sucrose/glucose syrup of 70-75% by weight of the finished product or confectionery (Page 7, lines 1-5) and an amount of gelatin of about 3-6% by weight (Page 5, lines 20-25), where gelatin meets the limitation of a hydrophilic long chain polymer in light of Applicant’s specification on Paragraph 22 of PG Publication). The marshmallow composition taught by Stevens comprising gelatin and having a spongy resilient consistency is also seen to meet the limitation of a “gummy”.
The teaching in Stevens of sugar in an amount of 70-75% by weight and gelatin in an amount of 3-6% by weight meets or is very close to the claimed ranges of at least 60% or at least 80% or at least 75% date sugar and at least 10% or at least 5% gelatin. However, given the guidelines taught by the prior art, it would have been well within the skill of one of ordinary skill in the art to have optimized the amount of sugar and gelatin by volume or weight in the marshmallow composition in order to arrive at a desirable marshmallow consistency and texture. Such optimization would have been well within the skill of one of ordinary skill in the art. Furthermore, it has been found that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I. Stevens does not specifically teach where the sugar can be date sugar.
However, since Anand teaches the transparent date sugar syrup can be used as a substitution for granulated sugar, it would have been obvious to one of ordinary skill in the art to have used the transparent date syrup of Anand as the sugar in the marshmallow of Stevens. It is prima facie obvious to substitute one composition for another that is taught in the prior art to be used for the same purpose, when their equivalency is established or acknowledged by the prior art. See MPEP 2144.06 II.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNA A WATTS whose telephone number is (571)270-7368. The examiner can normally be reached Monday-Friday. 9am-4:30pm.
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JENNA A. WATTS
Primary Examiner
Art Unit 1791
/JENNA A WATTS/Primary Examiner, Art Unit 1791 1/16/2026