DETAILED ACTION
This Office Action is in response to Applicant’s Amendment and Remarks filed on 24 April 2026 in which claims 13 and 16 were canceled, and claims 1, 3, 4, 5, 8-12, 14 and 15 were amended to change the scope and breadth of the claims.
Claims 1-12, 14 and 15 are pending in the current application and are examined on the merits herein.
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 .
Terminal Disclaimer
The terminal disclaimer filed on 24 April 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 18/553,129 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Withdrawn Rejections
Applicant’s amendment, filed 24 April 2026, with respect to the rejection of claims 10 and 16 under 35 U.S.C. § 102(a)(1) as being anticipated by Wang et al., has been fully considered and is persuasive because claim 10 has been amended to recite the steps of “neutralizing…; and crosslinking…”. These features are not expressly disclosed by Wang et al.
The rejection is hereby withdrawn.
Applicant’s amendment, filed 24 April 2026, with respect to the rejection of claims 10, 14, 15 and 16 under 35 U.S.C. § 103 as being unpatentable over Wang et al. in view of Boonna et al., has been fully considered and is persuasive because claim 10 has been amended to recite the steps of “neutralizing…; and crosslinking…”. These features are not expressly disclosed by Wang et al., or taught by Boonna et al.
The rejection is hereby withdrawn.
Applicant’s amendment, filed 24 April 2026, with respect to the rejection of claims 8, 11 and 13 under 35 U.S.C. § 103 as being unpatentable over Yoshimura et al. in view of Karim et al., has been fully considered and is persuasive because claim 8 has been amended to recite “to obtain a partially degraded starch having a weight average molecular weight (Mw) of 7,500,000 or less”. These features are not taught or suggested by Yoshimura et al. and/or Karim et al.
The rejection is hereby withdrawn.
Applicant’s amendment and arguments, filed 24 April 2026, with respect to the rejection of claims 9 and 12 under 35 U.S.C. § 103 as being unpatentable over Yoshimura et al. in view of Karim et al., and further in view of Boonna et al., has been fully considered and is persuasive because claim 9 has been amended to depend from claim 8, and claim 8 has been amended to recite “to obtain a partially degraded starch having a weight average molecular weight (Mw) of 7,500,000 or less”. These features are not taught or suggested by Yoshimura et al. and/or Karim et al.
With respect to Boonna et al., Applicant argues one of ordinary skill in the art would not be able to predict or ascertain a trend in Mw of enzymatically-treated starch. Notably, Applicant has pointed to Table 2 of Boonna et al., wherein the Mw of cassava starch is reduced by β-amylase treatment from 216 Mg/mol to 41 Mg/mol, is further reduced by combining the β-amylase treatment and an AM treatment for 5 minutes to 21.7 Mg/mol, but increases to 69.5 Mg/mol when said AM treatment combined with the β-amylase treatment was increased to 4 hours. Applicant argues “the AM treatment in Boonna appears to have different effects depending on the conditions. Accordingly, the molecular weight Mw is not simply a result-effective variable that depends on the enzyme used and the amount of time treated with said enzyme, as suggested by the rejection” (see p.9, last paragraph of Remarks filed 24 April 2026).
Applicants arguments have been considered, and are persuasive. The effect of enzyme and time on the Mw of starch is not predictable. Furthermore, there is no teaching, suggestion or motivation to prepare a starch having a Mw of 7,500,000 or less.
The rejection is hereby withdrawn.
Applicant’s amendment and arguments, filed 24 April 2026, with respect to the rejection of claims 1-4, 7, 8, 11 and 13 under 35 U.S.C. § 103 as being unpatentable over Yoshimura et al. in view of Karim et al., and further in view of Lawal et al., has been fully considered and is persuasive because claims 1 and 8 have been amended to recite “to obtain a partially degraded starch having a weight average molecular weight (Mw) of 7,500,000 or less”. Furthermore, there is no teaching, suggestion or motivation to prepare a starch having a Mw of 7,500,000 or less.
The rejection is hereby withdrawn.
Applicant’s amendment and arguments, filed 24 April 2026, with respect to the rejection of claims 5 and 6 under 35 U.S.C. § 103 as being unpatentable over Yoshimura et al. in view of Karim et al., and further in view of Lawal et al., has been fully considered and is persuasive because claims 1 and 8 have been amended to recite “to obtain a partially degraded starch having a weight average molecular weight (Mw) of 7,500,000 or less”. Claims 5 and 6 depend from claim 1. Furthermore, there is no teaching, suggestion or motivation to prepare a starch having a Mw of 7,500,000 or less.
The rejection is hereby withdrawn.
Applicant’s amendment and arguments, filed 24 April 2026, with respect to the rejection of claims 1-4, 7, 8, 9, 11, 12 and 13 under 35 U.S.C. § 103 as being unpatentable over Yoshimura et al. in view of Karim et al., and further in view of Boonna et al. Lawal et al., has been fully considered and is persuasive because claims 1 and 8 have been amended to recite “to obtain a partially degraded starch having a weight average molecular weight (Mw) of 7,500,000 or less”. Applicant’s arguments against Boonna et al., as discussed above, are persuasive to overcome the rejection. Furthermore, there is no teaching, suggestion or motivation to prepare a starch having a Mw of 7,500,000 or less.
The rejection is hereby withdrawn.
New Rejections
The following are new ground(s) or modified rejections necessitated by Applicant's amendment, filed on 24 April 2026, where the limitations in pending claims as amended now have been changed and claims 1, 3, 4, 5, 8-12, 14 and 15 have been newly added. Therefore, rejections from the previous Office Action, dated 26 January 2026, have been modified and are listed below.
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 12 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.
The recitation “wherein the resulting water-soluble polymer has a weight average molecular weight (Mw) of 500,000 to 50,000,000 as determined by aqueous size exclusion chromatography” in claim 12 renders the claim herein indefinite.
It is unclear if the Mw limitation of claim 12 is in reference the polymer obtained after the first step, or the second step. If it’s in reference to the polymer obtained after the first step, then the Mw range of claim 12 lacks antecedent basis from claim 8.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
It is unclear if the Mw limitation of claim 12 is in reference the polymer obtained after the first step, or the second step. If it’s in reference to the polymer obtained after the first step, then the Mw range of claim 12 is broader than the range of claim 8.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Conclusion
Claims 1-11, 14 and 15 are in condition for allowance. Claim 12 remains rejected.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/BAHAR CRAIGO/
Primary Examiner
Art Unit 1699
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