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 .
Applicant’s election with traverse of Group I claims1-12 in the reply filed on 31 March 2026 is acknowledged. In view of Applicant’s traversal, the restriction is withdrawn. Group II, claims 13-17, is rejoined with group I for examination.
Priority
This application is a 371 of PCT/CN2021/084993 filed 04/01/2021.
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.
Claim(s) 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Altuna et al (Food Hydrocolloids, 2018, 80, 97-110) in view of Steffolani et al (Starch/Starke, 2013, 65, 976, 983) and further in view of Glasing (WO 2020/148579 A1; cited in IDS filed 01/30/2024).
Altuna et al teaches starch esterified with octenyl succinic anhydride (Abstract; page 99, Fig. 1; part of the limitation of claim 1). The degree of substitution (DS) obtained was 0.008 for cassava starch, 0.022 for corn starch, 0.018 for wheat starch, 0.017 for potato starch (page 99, Table 1; degree of substitution as in claims 1-3, and the type of starch recited in claim 8). In view of the four different starches used by Altuna for the modification, one of ordinary skill in the art can obtain the modified starch using all the other starches recited in claims 8 and 9. Altuna teaches that the degree of substitution of starch generally increases with the percentage of octenyl succinic acid added (page 99, right col. last para through page 100 left col., line 2). Even though Altuna further teaches that increase in DS is not usually proportional to the increment in the reagent concentration, one can get DS as in claims 1-4 in view of the DS disclosed by Altuna.
According to Altuna the octenyl modified starch has been frequently used as an emulsifier in foods, pharmaceuticals (page 107, part 5; part of the limitations of claims 10-11).
Altuna et al does not teach nonenyl succinic anhydride modified starch as in claim 1, and does not teach the limitations of claims 5-7 and 12.
According to Steffolani et al quinoa starch has a mean diameter in the range of 1 and 3.5mm (page 979, part 3.2; limitation of claims 5-7 regarding diameter). This means that starch having the claimed diameters can be used to obtain modified starches.
Glasing’s invention is drawn to polysaccharide-based Pickering emulsifiers (Abstract). The emulsifier can be a modified polysaccharide wherein the modified polysaccharide is an esterified polysaccharide. The hydrophobic part of the modified polysaccharide comprises a hydrocarbyl group. For the esterified modification, an alkenyl succinic anhydride can be used and it can be nonenyl succinic anhydride (page 3, and page 14 through page15, line 1; as in claims 1-12, and Pickering composition as in claim 12). The modified starch can be used in pharmaceuticals and cosmetics (page 139, claims 95-96 of Glasing; limitation of claim 11). From this teaching of Glasing and that of Altuna and Steffolani one of ordinary skill in the art will recognize that a nonenyl succinic acid modified starch having the claimed degree of substitution and diameter can be made by substituting the octenyl succinic anhydride taught by Altuna with the nonenyl succinic anhydride taught by Glasing.
MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.'" KSR, 550 U.S. at, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention."
According to the rationale discussed in KSR above, the rationale in (G) above is seen to be applicable here since based on the prior art teachings, the modification of starch with nonenyl succinic anhydride is suggested (Glasing), and starch modified with the closely related octenyl succinic anhydride having the claimed DS is also known. Altoona also teaches process for making the related octenyl succinic acid modified starch. Thus, it is obvious to combine prior art teachings to arrive at the nonenyl succinic anhydride modified starch and the compositions comprising the nonenyl succinic anhydride modified starch as in claims 1-12.
Thus, the claimed invention as a whole would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention over the combined teachings of the prior art. One of ordinary skill in the art will be motivated to make the claimed nonenyl succinic anhydride modified starch and the compositions as claimed since Altuna teaches that octenyl succinic acid modified starch finds wide applications in food industry as an emulsifier and encapsulating agent. One of ordinary skill in the art will look for the nonenyl succinic anhydride modified starch as an alternative product for the uses taught by Altuna. The artisan will be motivated to look for alternatives with enhanced properties for the applications taught in the art.
Obviousness based on similarity of structure and function entails motivation to make the claimed compound in expectation that compounds similar in structure will have similar properties. Where prior art compound, octenyl succinic acid modified starch, essentially brackets the claimed compound, nonenyl succinic anhydride modified starch, and is well known emulsifying agent, one of ordinary skill in the art would be motivated to make the claimed compound in searching for new emulsifying agents. In re Payne, 606 F. 2d 303, 203, USPQ, 245, 254-55 (C.C.P.A. 1979).
Claim(s) 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Altuna et al (Food Hydrocolloids, 2018, 80, 97-110) in view of Glasing (WO 2020/148579 A1; cited in IDS filed 01/30/2024).
Altuna teaches a method for making octenyl succinic anhydride modified starch comprising suspending starch in water and adding octenyl succinic anhydride dropwise and maintaining pH around 8 with NaOH. After the reaction is complete the mixture can be centrifuged, washed and dried (page 99, Fig. 1, and left col., second para through right col., first para line 3; method as in claim 3, steps 1-4; water as in claims 15 and 16). Claim 14 requires the nonenyl succinic anhydride to be mixed with the solvent to form a mixture before adding to the suspension in step 1). The artisan would have a reasonable expectation of success in mixing the nonenyl succinic anhydride first with the solvent to form a mixture before adding to the suspension in step 1) as in claim 14, since the reaction would be expected to proceed if it is added directly or if it is added as a solution.
The difference between the claimed process and that of Altuna is that in Altuna octenyl succinic anhydride is used to modify starch, whereas the process in claim 13 uses nonenyl succinic anhydride. Altuna also does not teach the addition of a surfactant as in claims 16-17.
Glasing’s teachings are set forth above. In addition, Glasing teaches that emulsions may be stabilized by the presence of a surfactant (page 1, Background, lines 12-14). Even though Glasing teaches the use of its polysaccharide-based compounds as multifunctional emulsifiers, one of ordinary skill in the art will add a surfactant to the mixture as in claims 16 and 17 for enhancing the stability in view of Glaser.
In view of the combined teachings o the prior art it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to arrive at the claimed method of preparing the nonenyl succinic anhydride modified starch.
MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.'" KSR, 550 U.S. at, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention."
According to the rationale discussed in KSR above, the rationale in (G) above is seen to be applicable here since based on the prior art teachings nonenyl succinic anhydride modified starch is known to be prepared using the steps recited in claim 13. Therefore, method for preparing nonenyl succinic anhydride modified starch as claimed would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention over the combined teachings of the prior art. One of ordinary skill in the art would prefer to use the method steps taught in the prior art for making octenyl succinic anhydride for making the nonenyl succinic anhydride modified starch also since the steps are simple and easy to perform and requires only the substitution of the octenyl succinic anhydride with nonenyl succinic anhydride. There is reasonable expectation of success for making the nonenyl succinic anhydride modified starch using the same steps since the starting anhydride is an adjacent homolog of the one used in the prior art. Adjacent homologs are considered to be obvious absent unexpected results. In re Henze, 85 USPQ 261, 263 (CCPA 1950).
Conclusion
Pending claims 1-17 are rejected
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/GANAPATHY KRISHNAN/ Primary Examiner, Art Unit 1693
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