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 Group I, 1, 3-6, and 8-10 in the reply filed on 11/11/2025 is acknowledged.
Applicant argues the cited document does not teach the starch is a thermally inhibited starch as the newly amended claims require.
Applicant is reminded that the instant case is a 371 of a PCT and thus subject to restriction under PCT rule 13.1, as the examiner provided prior art and broke unity showing the technical feature of the instant claims is ‘common’ and not special (see page 4 of the restriction for the explanation made of Kubo et al).
Per Annex B Unity of Invention, (b) technical feature, Rule 13.2 states:
The expression "special technical features" is defined in Rule 13.2 as meaning those technical features that define a contribution which each of the inventions, considered as a whole, makes over the prior art.
As stated in the restriction/election requirement, the groups lack unity of invention because even though the inventions of these groups require the same technical feature, this technical feature is not a special technical feature as it does not make a contribution over the prior art. Therefore, the groups lack unity of invention.
Overall, Applicant’s argument is not found persuasive because unity was broken based off of the originally filed claims. Furthermore, over Lane in view of Dejmek and additionally over Lane in view of Dejmek in view of Wright, the prior art below in the USC 103 rejections teaches the same issue with the amended claims, thus unity remains broken. Thus, the requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/29/2023 is being considered by the examiner.
Abstract
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
In the instant case, Applicant’s abstract fails to meet the 50 to 150 word length requirement and fails to be presented on a separate sheet. Furthermore, the abstract uses language that should be avoided: “The present disclosure provides”.
Claim Interpretation
In regards claim 1, specifically the transitional phrase “having”, Examiner has taken into account the instant specification and the MPEP 2111.03(IV) definition for “having”. Examiner broadly interprets “having” to be open ended, equivalent to “comprising”, thus allowing for additional components.
In regards to claim 8, the MPEP 2113 states "[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) (citations omitted). Therefore, since claim 8 are dependent upon a composition, the method of inhibiting using conditions that provide a sedimentation volume in the range of 5-50 mL/g to a corresponding un-fragmented starch is given no patentable weight and any prior art teaching a fragmented corn starch with the limitations of the instant claim 1 will be sufficient in meeting the limitations of this claim.
Claim Objections
Claim 8 is objected to because of the following informalities: Claim 8 recites “according to claims 1” which should recite “according to claim 1”. Appropriate correction is required.
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.
Claims 1, 3, 5-6, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Lane et al. (US20200207877A1, published 07/02/2020, hereafter Lane) in view of Dejmek et al. (US20150125498A1, published 05/07/2015, hereafter Dejmek).
Lane teaches an thermally inhibited starch and the process of making (title; according to the claim limitations of the instant claim 1). Lane teaches the thermally inhibited starch has a sedimentation volume of about 10 to about 50 ml/g ([0106]; according to the claim limitations of the instant claim 1). Lane teaches that the starch includes less than 1% protein ([0013] and [0184]; according to the claim limitations of the instant claims 1 and 10). Lane teaches the starches can be made from: one or more of the following base materials corn, waxy corn, high amylose corn, tapioca, waxy tapioca, potato, waxy potato, rice, waxy rice, sago, arrowroot, legume (seeds from plants of the family leguminosae, including peas, chick peas, lentils, fava beans, lupin bean, and mung bean), sorghum, barley, waxy barley, and wheat ([0019]; according to the claim limitations of the instant claims 1 and 3). Lastly, Lane teaches the starch is used in industrial products, cosmetic products, household products, pharmaceutical product, and edible products, and combinations thereof ([0058]).
Lane fails to teach the particle size of the instant claims 1 and 5-6.
Dejmek teaches a particle that is stabilized and has uses in foods, cosmetic, and pharmaceutical products (title, claim 14, and [0004]). Dejmek provides sample patents demonstrating the use of thermally inhibited starch and teaches an advantage of thermal modification is that no specific labeling is required when used in food modifications ([0007-0008] and [0050]). Dejmek teaches the preferred particle size to be in the range of approximately 0.2-20 micron, preferably 0.2-8 micron (claim 16 and [0051]).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention would claim an thermally inhibited starch with a sedimentation volume of about 10 to about 50 ml/g and a protein content of less than 1% as outlined by Lane with the ready for improvement with the known technique of the particles being in the range of 0.2-20 microns or preferably 0.2-8 microns as outlined by Dejmek. Adding the forementioned components of a thermally inhibited starch composition as claimed by instant claims 1 and 5-6 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan.
Claims 4, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Lane et al. (US20200207877A1, published 07/02/2020, hereafter Lane) in view of Dejmek et al. (US20150125498A1, published 05/07/2015, hereafter Dejmek) in view of Wright (Wright, K. H. (2005). (thesis). Starch fragmentation in relation to processing conditions and sensory quality of conventional processed grit corn flakes, hereafter Wright).
As outlined above Lane in view of Dejmek teaches a thermally inhibited starch having a sedimentation volume of about 10 to about 50 ml/g, a particle size of 0.2-20 micron, and a protein content of less than 1%. However, both Lane and Dejmek fail to teach the use of fragmented starch as in instant claims 4 and 8.
Wright teaches starch fragmentation in relation to corn flakes (title). Wright teaches that starch fragmentation was positively correlated with water uptake and increased leaching of starch fragments into water (abstract, page xix).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention would modify a thermally inhibited starch having a sedimentation volume of about 10 to about 50 ml/g, a particle size of 0.2-20 micron, and a protein content of less than 1% as outlined by Lane in view of Dejmek by the utilization of fragmented starch as outlined by Wright under TSM, see MPEP 2143(G). As outlined by Wright, fragmented starch was positively correlated with better water uptake and increased leaching of starch fragments into water which would motivate someone skilled in the art to advantageously combine fragmented starch with the composition of Lane in view of Dejmek as it would have a reasonable expectation of success.
Conclusion
No claims allowed.
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/A.N.I./Examiner, Art Unit 1611
/CRAIG D RICCI/Primary Examiner, Art Unit 1611