DETAILED ACTION
Response to Arguments
Applicant's arguments filed 12/9/2025 have been fully considered but they are not persuasive.
Applicant argues Chau does not disclose “a soluble fiber configured to dissolve faster than the mouth-soluble polymer to form channels in the porous matrix”. The Examiner disagrees. Chau teaches [col. 3, l. 65 to col. 4, l. 11] many different preferred mouth-soluble polymers of the instant invention, including HPMC, alginate, xanthan, HPC, HEC, and propylene glycol alginate) [instant claim 16; instant specification page 5, line 24 to page 6, line 7]. The instant specification discloses maltodextrin as a preferred soluble fiber of the instant invention [page 23, line 20-26]. Chao also teaches maltodextrin [col. 4, l. 7-9]. The maltodextrin of Chau is thus interpreted as a soluble fiber configured to dissolve faster than the mouth-soluble polymer to form channels in the porous matrix.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-11 and 16-19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Chau (US 5,637,313) in view of Wittorff (US 2009/0169677).
Regarding claims 1-2, 9, and 16, Chau teaches an oral product comprising: a matrix [col. 3, l. 13-19] including, a water-soluble bulking agent (mouth-soluble polymer) [col. 3, l. 65 to col. 4, l. 11], and a cellulosic material [col. 4, l. 12-20]; an additive including caffeine [col. 5, l. 30-31], a sweetener, and a flavorant [col. 4, l. 59-62]. As a result of mixing in forming the product [col. 3, l. 13-19], the matrix is expected to be porous with the additive in pores of the matrix. The oral product is free of tobacco plant tissue. Chau does not teach a triglyceride. Wittorff teaches a chewing gum comprising a medium chain triglyceride as a softener [0092]. As Chau desires a soft product [abstract], it would have been obvious to one of ordinary skill in the art to include a medium chain triglyceride in the oral product of Chau for softening purposes.
Chau teaches [col. 3, l. 65 to col. 4, l. 11] many different preferred mouth-soluble polymers of the instant invention, including HPMC, alginate, xanthan, HPC, HEC, and propylene glycol alginate) [instant specification page 5, line 24 to page 6, line 7]. The instant specification discloses maltodextrin as a preferred soluble fiber of the instant invention [page 23, line 20-26]. Chao also teaches maltodextrin [col. 4, l. 7-9]. Although Chao does not specifically teach using maltodextrin in combination with any of the above mouth-soluble polymers, Chao does disclose that these all fall under water soluble bulking agents. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would have been obvious to one of ordinary skill in the art to use maltodextrin in combination with any of the above mouth-soluble polymers (HPMC, alginate, xanthan, HPC, HEC, or propylene glycol alginate) to achieve predictable results. The maltodextrin of Chau is thus interpreted as a soluble fiber configured to dissolve faster than the mouth-soluble polymer to form channels in the porous matrix.
Regarding claims 3-4, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The caffeine of Chau is interpreted to read on either a synthetic caffeine or coffee bean-extracted caffeine as these are product-by-process limitations.
Regarding claim 5, Chau teaches including caffeine for the effect of appetite suppression [col. 5, l. 30-31]. It would have been obvious to one of ordinary skill in the art to optimize the amount of caffeine in the oral product through routine experimentation to achieve the desired effects.
Regarding claims 6-7, Chau teaches the oral product includes vitamin A [col. 9, l. 5-9].
Regarding clams 6 and 8, Chau teaches the oral product includes calcium carbonate [col. 5, l. 19-21].
Regarding claims 10-11, it would have been obvious to one of ordinary skill in the art to optimize the amount of triglyceride in the oral product through routine experimentation to achieve desired softening effects as suggested by Wittorff [0092].
Regarding claim 17, Chau teaches the water insoluble bulking agent (cellulosic material) is present in an amount of 15-40 weight percent and the mouth-soluble polymer is present in an amount of 30-60 weight percent [col. 4, l. 50-59].
Regarding claim 18, Chau does not teach the claimed sweeteners. Wittorff teaches saccharine, sucralose, or aspartame as a sweetener [0160], which would have been obvious to one of ordinary skill in the art to as the sweetener of Chau to achieve the predictable result of sweetening.
Regarding claim 19, Chau teaches spearmint flavorant [Example 1].
Claim 12 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Chau and Wittorff as applied to claim 1 above, and further in view of Duffield (US 2012/0208773).
Modified Chau is silent to the claimed pore sizes. Duffield teaches a pharmaceutical composition wherein the release rate from a matrix can be modified by the porosity of the matrix [0145]. It would have been obvious to one of ordinary skill in the art to optimize the pore sizes of the matrix of modified Chau through routine experimentation to achieve the desired release rate of the additive.
Claims 13-15 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Chau and Wittorff as applied to claim 1 above, and further in view of Gin (US 2004/0247669).
Modified Chau is silent to levels of springiness. Gin teaches an oral product wherein the body is comfortable to retain in the mouth due to its soft (i.e. compressible) and rubbery (i.e. springy) consistency [0017]. In view of Gin, one of ordinary skill in the art would have found it obvious at to provide a oral product in modified Chau that has a relatively high degree of compressibility or springiness within the claimed ranges, or would have found it obvious to optimize the compressibility and springiness through routine experimentation to achieve the desired level of comfort in the mouth of the user.
Claim 20 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Chau in view of Wittorff and Duffield.
Chau teaches an oral product comprising: a matrix [col. 3, l. 13-19] including, a water-soluble bulking agent (mouth-soluble polymer) [col. 3, l. 65 to col. 4, l. 11], and a cellulosic material [col. 4, l. 12-20]; an additive including caffeine [col. 5, l. 30-31], a sweetener, and a flavorant [col. 4, l. 59-62]. As a result of mixing in forming the product [col. 3, l. 13-19], the matrix is expected to be porous with the additive in pores of the matrix. The oral product is free of tobacco plant tissue. Chau teaches the water insoluble bulking agent (cellulosic material) is present in an amount of 15-40 weight percent and the mouth-soluble polymer is present in an amount of 30-60 weight percent [col. 4, l. 50-59].
Chau does not teach a triglyceride. Wittorff teaches a chewing gum comprising a medium chain triglyceride as a softener [0092]. As Chau desires a soft product [abstract], it would have been obvious to one of ordinary skill in the art to include a medium chain triglyceride in the oral product of Chau for softening purposes. It further would have been obvious to one of ordinary skill in the art to optimize the amount of triglyceride in the oral product through routine experimentation to achieve desired softening effects as suggested by Wittorff [0092].
Modified Chau is silent to the claimed pore sizes. Duffield teaches a pharmaceutical composition wherein the release rate from a matrix can be modified by the porosity of the matrix [0145]. It would have been obvious to one of ordinary skill in the art to optimize the pore sizes of the matrix of modified Chau through routine experimentation to achieve the desired release rate of the additive.
Chau teaches [col. 3, l. 65 to col. 4, l. 11] many different preferred mouth-soluble polymers of the instant invention, including HPMC, alginate, xanthan, HPC, HEC, and propylene glycol alginate) [instant specification page 5, line 24 to page 6, line 7]. The instant specification discloses maltodextrin as a preferred soluble fiber of the instant invention [page 23, line 20-26]. Chao also teaches maltodextrin [col. 4, l. 7-9]. Although Chao does not specifically teach using maltodextrin in combination with any of the above mouth-soluble polymers, Chao does disclose that these all fall under water soluble bulking agents. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would have been obvious to one of ordinary skill in the art to use maltodextrin in combination with any of the above mouth-soluble polymers (HPMC, alginate, xanthan, HPC, HEC, or propylene glycol alginate) to achieve predictable results. The maltodextrin of Chau is thus interpreted as a soluble fiber configured to dissolve faster than the mouth-soluble polymer to form channels in the porous matrix.
Conclusion
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/ERIC YAARY/Examiner, Art Unit 1755