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 .
Status of Claims
Claims 1-5, 7-9 and 12-20 are pending. Claims 6, 10 and 11 are canceled. Claim 1 is amended.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Rejections Maintained
Claim Rejections - 35 USC § 103
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 of this title, 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.
The rejection of claims 1, 5, 7-9 and 12-19 under 35 U.S.C. 103 as being unpatentable over Zhang et al. Synthesis of long-chain fatty acid starch esters in aqueous medium and its characterization. European Polymer Journal, 2019, Vol. 119, pp 136-147 in view of Takano et al. EP0736545 (10/9/1996) and JP 2017-071588 (4/13/2017)(“Ohara”) as evidenced by https://www.sciencedirect.com/topics/chemical-engineering/stearic-acid (accessed 9/8/2025) is maintained.
Zhang et al. (Zhang) teaches that long-chain fatty acid starch esters are prepared by esterification of stearic acid or lauric acid with corn starch in urea/NaOH aqueous solution. (See Abstract). Zhang teaches that the starch esters had better performance than starch including lower crystallinity, better thermostability, emulsibility, freeze-thaw stability and moisture absorption. (See Abstract). Zhang’s long-chain fatty acid starch esters and preparation method reads on a saccharide fatty acid ester which is a reaction product of a saccharide polymer (starch) and a straight chain fatty acid (stearic acid or lauric acid) which consists of one or more straight chain fatty acids that are saturated or unsaturated as called for in instant claim 1. The aqueous solution is the carrier phase called for in instant claim 1.
This is also the obtaining of the reaction product of the saccharide polymer in the presence of water and a hydroxide base as called for in instant claim 12. The reaction product is a fatty ester saccharide polymer reaction product as called for in instant claim 13. Starch is the saccharide polymer. Stearic acid is a straight chain fatty acid having 18 carbon atoms as evidenced by https://www.sciencedirect.com/topics/chemical-engineering/stearic-acid (accessed 9/8/2025). 18 carbon atoms falls within the straight chain fatty acid having 8 to 22 carbon atoms in the fatty acid called for in instant claim 5. Stearic acid itself is called for in instant claim 7. (See [0021]). Zhang teaches that the fatty acid is only stearic acid (stearic acid or lauric acid), thereby satisfying the consisting of only straight-chain fatty acids called for in instant claim 1.
Zhang does not teach dextrin, cocamide diethanolamine surfactant, a zwitterionic surfactant or a fatty acid carboxylate. Zhang also does not teach a product that is a stick, a product that is a foam or an emulsified product. These deficiencies are made up for with the teachings of Takano and O’Hara.
Takano et al. (Takano) teaches compositions comprising water solvent and dextrin esters of fatty acids that have excellent thixotropic property and are also excellent in moisture retaining property, emulsifiability and dispersibility. (See Abstract and [0039-0040] and Example 1). Takano teaches that its composition can comprise a non-ionic surfactant and a liquid solvent. (See Example 1 and Takano claim 10). This reads on a neutral surfactant (a non-ionic surfactant) that is combined with the carrier phase and a dextrin fatty acid ester which is a reaction product of a dextrin and a fatty acid called for in instant claim 1. The amount of the dextrin ester of fatty acids taught by Takano is from 0.1 to 90 % by weight. (See [0037]). The Takano composition may also be an emulsified product as called for in instant claim 15. (See Example 1). The composition can also be in the form of a cream or a gel as called for in instant claim 17. (See Example 1).
O’Hara discloses a shampoo composition comprising an aqueous medium such as purified water, a non-ionic surfactant and a dextrin fatty acid ester. (See Abstract, claims 1 and 8). The dextrin fatty acid ester is a reaction product of a dextrin and a fatty acid derivative such as a fatty acid halide or fatty acid anhydride. (See [0039]-[0042], [0044], [0058], [0070], [0094]). The shampoo composition comprises a non-ionic surfactant in the amount of 0.1 to 10% and a dextrin fatty acid ester 0.005-1% and a non-ionic surfactant can promote the dissolution of the dextrin fatty acid ester in the shampoo composition. (See [0018], [0024], [0044], [0058]). O’Hara teaches a saccharide polymer that is maltose. In [0056] O’Hara teaches coconut oil fatty acid diethanolamide which reads on a fatty acid alkanolamide such as cocamide diethanolamine as called for in instant claim 9. This is a fatty acid alkanolamide as called for in instant claim 8. (See [0056]).
O’Hara teaches that the shampoo composition can be a foam as called for in instant claim 14. (See last paragraph before Examples). The shampoo may also be in solid form which reads on stick as called for in instant claim 16.
O’Hara teaches that the composition can comprise a zwitterionic surfactant as called for in instant claim 19. (See [0020], [0022]). O’Hara teaches that the composition can comprise an anionic surfactant such as sodium laurate or potassium laurate as called for in instant claim 18. (See [0020], [0022]). O”Hara also teaches fatty acid carboxylates as anionic surfactants as called for in instant claim 18. (See [0020],[0022]).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention making the Zhang compositions of stearic acid starch ester by esterification of stearic acid with corn starch in urea/NaOH aqueous solution to prepare the stearic acid esters by esterification of a stearic acid with dextrin as taught by Takano in order to have an emulsified product with 0.1 to 90 wt% dextrin fatty acid ester that is a cream with excellent thixotropic property and excellent in moisture retaining property, emulsifiability and dispersibility as taught by Takano. It would be obvious given these reaction conditions to manipulate the ratio of fatty acid to saccharide polymer in order to affect the outcome of the stearic acid maltodextrin esters as called for in instant claim 1.
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date of the invention making the Zhang compositions to prepare stick or foam compositions using such surfactants like fatty acid carboxylates or zwitterionic surfactants as taught by O’Hara in light of O’Hara’s teaching that such a useful cosmetic product can be made from this process with these ingredients.
The rejection of claims 2-4 and 20 under 35 U.S.C. 103 as being unpatentable over Zhang et al. Synthesis of long-chain fatty acid starch esters in aqueous medium and its characterization. European Polymer Journal, 2019, Vol. 119, pp 136-147 in view of Takano et al. EP0736545 (10/9/1996) and JP 2017-071588 (4/13/2017)(“Ohara”) as evidenced by https://www.sciencedirect.com/topics/chemical-engineering/stearic-acid (accessed 9/8/2025) as applied to claims 1, 5, 7-9 and 12-19 and further in view of Malle et al. WO 2016/005250 (1/14/2016) and Kocsisova et al. Hydrolysis of fatty acid esters in subcritical water, Eur. J. Lipid. Sci. Technol. 108 (2006) 652-658 as evidenced by Snoch et al. Physicochemical studies of novel sugar fatty acid esters based on (R)-3-hydroxylated acids derived from bacterial polyhydroxyalkanoates and their potential environmental impact. DOI 10.3389 fbioe 2023 112053 and the instant specification is maintained.
Zhang in view of Takano and O’Hara teaches maltose but does not teach maltodextrin with a dextrose equivalent value or glycerol or the formation of fatty acids from fatty esters. These deficiencies are made up for with the teachings of Malle et al. and Kocsisova et al.
Malle et al. (Malle) teaches anhydrous solid particle-based compositions encapsulating a benefit agent. The presence of a polysaccharide provides advantages in terms of ameliorating the odor of the compositions. (See Abstract, page 1, Example 2 and claim 23.) Malle teaches that water soluble carbohydrates and more preferably dextrans and maltodextrins with dextran equivalent values ranging 4 to 20 are the most preferred. (See claims 7-9). A maltodextrin is called for in instant claim 3 and a dextrose equivalent of 4 to 20 overlaps with the dextrose equivalent of about 3 to about 25 called for in instant claim 4. Malle teaches that its compositions can comprise glycerol as a perfuming substance. (See page 31, lines 21-35). Glycerol is called for in instant claim 20.
Kocsisova et al. (Kocsisova) teaches the hydrolysis of ester of higher fatty acid by subcritical water produces free fatty acids. (See Abstract). Kocsisova teaches that the hydrolysis of fatty esters produces fatty acids in a yield exceeding 95%. The production of fatty acids from fatty esters in situ is called for in instant claim 20.
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date of the invention making the Zhang in view of Takano and Ohara emulsified compositions of stearic acid dextrin ester by esterification of stearic acid with maltodextrin in urea/NaOH aqueous solution to have the maltodextrin have a dextrose equivalent of about 4 to about 20 in light of Malle’s teaching that a maltodextrin with a dextrose equivalent of 4 to 20 is the most preferred polysaccharide in terms of ameliorating odor in its compositions.
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention making the Zhang in view of Takano and Ohara emulsified compositions of stearic acid dextrin ester by esterification of stearic acid with maltodextrin in urea/NaOH aqueous solution to add glycerol in order to have a perfuming substance as taught by Malle.
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date of the invention making the Zhang in view of Takano and Ohara emulsified compositions of stearic acid dextrin ester by esterification of stearic acid with maltodextrin in urea/NaOH aqueous solution to generate fatty acids from fatty esters by hydrolysis in light of Kocsisova’s teaching that the hydrolysis of fatty esters produces fatty acids in good yield in order to have the ability to make the composition from fatty esters should fatty acids not be available.
With respect to claim 2 and the property of lowering surface tension, the prior art is silent as to this property. A composition having the same components as those claimed will necessarily have the same properties as those claimed. The prior art of Zhang in view of Takano and O’Hara and further in view of Malle and Kocsisova teaches 0.1 to 90 wt% stearic acid maltodextrin esters with cocamide diethanolamine surfactant in an emulsified cream that are prepared by the esterification of stearic acid with dextrin in urea/NaOH aqueous solution. These are the same components as those claimed in the same amounts (at the overlap of the ranges) that are prepared by the same preparation process. This composition, having the same components, would necessarily reduce the surface tension of solutions as evidenced by the specification at [0218].
See MPEP 2112.01[R-3]: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Additionally, it is known in the art that the presence of sugar fatty acid esters will reduce the surface tension of solutions, as evidenced by Snoch et al. (See Abstract).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
The rejection of claims 1-5, 7-9 and 12-20 as being unpatentable over claims 1-16 of U.S. Patent No. 11827844 in view of Takano et al. EP0736545 (10/9/1996), JP 2017-071588 (4/13/2017)(“Ohara”) and Malle et al. WO 2016/005250 (1/14/2016) is maintained.
Although the claims at issue are not identical, they are not patentably distinct from each other because in each case the claims recite a product containing a carrier phase, a neutral surfactant and a reaction product of a saccharide polymer comprising a dextran, a dextrin compound or a combination thereof by esterification of a fatty acid such as stearic acid with saccharide polymer in a hydroxide base aqueous solution.
Claims 1-16 of US Patent No. 11827844 are drawn to a process for making a product containing a carrier phase, a neutral surfactant and a reaction product of a saccharide polymer comprising a dextran, a dextrin compound or a combination thereof by esterification of a fatty acid such as stearic acid with saccharide polymer in a hydroxide base aqueous solution. Claims 1-16 of US Patent No. 11827844 differ from the instant invention in that they are directed to a method and do not recite a cream, gel or stick form and do not recite a dextrose equivalent of the maltodextrin. These deficiencies are made up for with the teachings of Takano, O’Hara and Malle.
The teachings of Takano are described supra. It would be prima facie obvious for a skilled artisan following the process of US Patent No. 11827844 to make an emulsion cream in light of Takano’s teaching that its compositions have excellent thixotropic, moisture retention and dispersibility qualities.
The teachings of O’Hara are described supra. It would be prima facie obvious for a skilled artisan following the process of US Patent No. 11827844 to make an emulsion shampoo that can be in the stick form that comprises a zwitterionic or fatty acid carboxylate surfactant in light of O’Hara’s teaching that such a useful cosmetic product can be made from this process with these ingredients.
The teachings of Malle are described supra. It would be prima facie obvious for a skilled artisan following the methods of US Patent No. 11827844 to have the saccharide polymer be a dextrin and the dextrin comprise a maltodextrin with a dextrose equivalent of about 4 to about 20 in light of Malle’s teaching that a maltodextrin with a dextrose equivalent of 4 to 20 is the most preferred polysaccharide in terms of ameliorating odor in its compositions.
The rejection of claims 1-5, 7-9 and 12-20 as being unpatentable over claims 1-21 of U.S. Patent No. 11542429 in view of Takano et al. EP0736545 (10/9/1996), JP 2017-071588 (4/13/2017)(“Ohara”) and Malle et al. WO 2016/005250 (1/14/2016) is maintained.
Although the claims at issue are not identical, they are not patentably distinct from each other because in each case the claims recite a product containing a carrier phase, a neutral surfactant and a reaction product of a saccharide polymer comprising a dextran, a dextrin compound or a combination thereof by esterification of a fatty acid such as stearic acid with saccharide polymer in a hydroxide base aqueous solution.
Claims 1-21 of US Patent No. 1152429 are drawn to a composition containing a carrier phase, a neutral surfactant and a reaction product of a saccharide polymer comprising a dextran, a dextrin compound or a combination thereof by esterification of a fatty acid such as stearic acid with saccharide polymer in a hydroxide base aqueous solution. Claims 1-21 of US Patent No. 1152429 differ from the instant invention in that they do not recite a cream or stick form and do not recite a dextrose equivalent of the maltodextrin. These deficiencies are made up for with the teachings of Takano, O’Hara and Malle.
The teachings of Takano are described supra. It would be prima facie obvious for a skilled artisan following the process of US Patent No. 1152429 to make an emulsion cream in light of Takano’s teaching that its compositions have excellent thixotropic, moisture retention and dispersibility qualities.
The teachings of O’Hara are described supra. It would be prima facie obvious for a skilled artisan following the process of US Patent No. 1152429 to make an emulsion shampoo that can be in the stick form that comprises a zwitterionic or fatty acid carboxylate surfactant in light of O’Hara’s teaching that such a useful cosmetic product can be made from this process with these ingredients.
The teachings of Malle are described supra. It would be prima facie obvious for a skilled artisan making the composition of US Patent No. 1152429 to have the saccharide polymer be a dextrin and the dextrin comprise a maltodextrin with a dextrose equivalent of about 4 to about 20 in light of Malle’s teaching that a maltodextrin with a dextrose equivalent of 4 to 20 is the most preferred polysaccharide in terms of ameliorating odor in its compositions.
The rejection of claims 1-5, 7-9 and 12-20 as being unpatentable over claims 1-13 of U.S. Patent No. 11299667 in view of Takano et al. EP0736545 (10/9/1996), JP 2017-071588 (4/13/2017)(“Ohara”) and Malle et al. WO 2016/005250 (1/14/2016) is maintained.
Although the claims at issue are not identical, they are not patentably distinct from each other because in each case the claims recite a product containing a carrier phase, a neutral surfactant and a reaction product of a saccharide polymer comprising a dextran, a dextrin compound or a combination thereof by esterification of a fatty acid such as stearic acid with saccharide polymer in a hydroxide base aqueous solution.
Claims 1-13 of US Patent No. 11299667 are drawn to a composition containing an aqueous carrier phase, a neutral surfactant and a reaction product of a saccharide polymer comprising a dextran, a dextrin compound or a combination thereof by esterification of a fatty acid such as stearic acid with saccharide polymer in a hydroxide base aqueous solution. Claims 1-13 of US Patent No. 11299667 differ from the instant invention in that they do not recite a cream or stick form and do not recite a dextrose equivalent of the maltodextrin. These deficiencies are made up for with the teachings of Takano, O’Hara and Malle.
The teachings of Takano are described supra. It would be prima facie obvious for a skilled artisan following the process of US Patent No. 11299667 to make an emulsion cream in light of Takano’s teaching that its compositions have excellent thixotropic, moisture retention and dispersibility qualities.
The teachings of O’Hara are described supra. It would be prima facie obvious for a skilled artisan following the process of US Patent No. 11299667 to make an emulsion shampoo that can be in the stick form that comprises a zwitterionic or fatty acid carboxylate surfactant in light of O’Hara’s teaching that such a useful cosmetic product can be made from this process with these ingredients.
The teachings of Malle are described supra. It would be prima facie obvious for a skilled artisan making the composition of US Patent No. 11299667 to have the saccharide polymer be a dextrin and the dextrin comprise a maltodextrin with a dextrose equivalent of about 4 to about 20 in light of Malle’s teaching that a maltodextrin with a dextrose equivalent of 4 to 20 is the most preferred polysaccharide in terms of ameliorating odor in its compositions.
Response to Arguments
Applicants’ comments of December 19, 2025 have been fully reviewed and are found to be mostly unpersuasive.
Applicants note the amendments to the claims.
Applicants assert that the prior art does not teach the feature recited in instant claim 1 of a reaction product in which a ratio of fatty acid to saccharide polymer ranges from about 0.2 to about 0.8 on a basis of moles fatty acid: moles glucose monomers. Zhang teaches starch stearate and starch laurate having a degrees of substitution of 0.065 and 0.074 and teaches that these DS values correspond to one ester group per 16 or 13 AGU (anhydroglucose units). In contrast the claimed ratio of 0.2 to 0.8 corresponds to 1 fatty acid per 5 glucose units to 1 fatty acid per 1.25 glucose units, a higher DS range than taught by Zhang. Applicants argue that because Figure 1a of Zhang shows decreasing DS values above a HCl/AGU ratio of 1.0, Zhang would not lead one of ordinary skill in the art to understand that higher DS values can be achieved. Therefore there would be no motivation for one having ordinary skill in the art to seek high DS values.
Applicants assert that even if the Office maintains that there is sufficient motivation to combine the teachings of the references with Zhang, the combined teachings of the references still fail to teach or suggest the claimed range of 0.1 to 0.8. Takano teaches a substitution degree for dextrin esters of fatty acids of 1.0 to 3.0 fatty acids per glucose unit and Ohara teaches a similar range. The ranges of Takano and Ohara are above the claimed range of 0.2 to 0.8. Moreover, Takano teaches against lowering the substation degree further, since this reference indicates that when the substitution degree is less than 1.0, the dissolving temperature increases to 100 C and results in coloring and odors. Ohara against provides similar teachings that like wise discourage a lower substitution degree. Therefore, there is no motivation to lower the substitution degree.
Applicants refer to their arguments regarding Takano and Ohara with respect to the double patenting rejections and assert that these rejections are overcome for the same reasons.
Applicants arguments have been carefully reviewed and are not found to be persuasive.
Applicants’ argument that because Figure 1a of Zhang shows decreasing DS values above a HCl/AGU ratio of 1.0, Zhang would not lead one of ordinary skill in the art to understand that higher DS values can be achieved is not found to be persuasive. Respectfully, there is no suggestion that just because Figure 1a of Zhang shows decreasing DS values above a HCl/AGU ratio of 1.0, Zhang would somehow lead one of ordinary skill in the art to understand that higher DS values are not achievable. This assertion assumes a suggestion that is simply not made in the Zhang disclosure. Figure 1a simply discloses decreasing DS values above a HCl/AGU ratio of 1.0, without more. The absence of a teaching does not amount to a suggestion that something is not possible.
There is powerful motivation to combine the teachings of Zhang with those of Takano and Ohara. Specifically, there is motivation to combine the teaching of Zhang with Takano because it would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention making the Zhang compositions of stearic acid starch ester by esterification of stearic acid with corn starch in urea/NaOH aqueous solution to prepare the stearic acid esters by esterification of a stearic acid with dextrin as taught by Takano in order to have an emulsified product with 0.1 to 90 wt% dextrin fatty acid ester that is a cream with excellent thixotropic property and excellent in moisture retaining property, emulsifiability and dispersibility as taught by Takano. It would be obvious given these reaction conditions to manipulate the ratio of fatty acid to saccharide polymer in order to affect the outcome of the stearic acid maltodextrin esters as called for in instant claim 1.
There is motivation to combine the teaching of Zhang with Ohara because it would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date of the invention making the Zhang compositions to prepare stick or foam compositions using such surfactants like fatty acid carboxylates or zwitterionic surfactants as taught by O’Hara in light of O’Hara’s teaching that such a useful cosmetic product can be made from this process with these ingredients.
Applicants’ arguments that Takano and Ohara teach away from lowering the substitution degree below 1, when they both expressly teach that a substitution degree of 1 itself is suitable are not found to be persuasive because this is just a teaching of preferred embodiments, rather than a teaching away.
It is not persuasive that Takano expressly teaches a substitution degree for dextrin esters of fatty acids in which 1.0 fatty acids per glucose unit is expressly taught to be suitable, but 0.8 is taught against. The ranges of Takano and Ohara are above the claimed range of 0.8 by only 0.2!
Ohara makes this clear by teaching the degree of substitution of fatty acid with dextrin is 1.0 to 3.0 on average per glucose unit. O’hara teaches that if the degree of substitution is less than 1.0 the dissolution temperature can be as high as 100 degrees Celsius or higher and coloration or an odor due to the high temperatures may occur which is not preferable. (See page 12).
Just because a preferred embodiment is taught at a substitution level of 1.0 does not amount to a teaching against or a teaching away. A teaching away must be clear. See MPEP Sec. 2143.03 (VI). “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”. MPEP 2123. Additionally, the prior art’s disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit or otherwise discourage the solution claimed. In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
With respect to the double patenting rejection arguments, reference is made to the reasons why Applicants’ arguments regarding Takano and Ohara are unpersuasive.
Conclusion
Claims 1-5, 7-9 and 12-20 are rejected.
THIS ACTION IS MADE FINAL. 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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/SARAH CHICKOS/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619