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 .
Election/Restrictions
Applicant's election with traverse of Group 1, the A species for meat type of reconstituted ham, the B species of method for drying of pneumatic, and the C species of moisture content of dried starch (mc 2-12%) in the reply filed on May 11, 2026 is acknowledged. The traversal is on the ground(s) that the groups of inventions are linked with a special technical feature because the cited reference, Liu does not teach drying under application of physical stress. This is not found persuasive because a method step of drying under physical stress is not required in elected Group I as argued, and thus, is not part of the shared features. Although Group I, does recite said method step in claim 1, the step is part of a product by process claim, and thus is considered only as it would affect the claimed product. “[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) When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. See In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113. In the instant case, the recited method would impart the properties to the claimed product recited in claim 1 of a gelatinization temperature which is more than 2.5C lower than the gelatinization temperature of the native starch prior to drying, and the product, which is obvious over the prior art for the reasons stated previously, and below, is the linking feature.
Applicant further argues that Liu does not teach a starch with the claimed gelatinization temperature because Table 2, shows that Tc-To increases with drying. This argument is not convincing as it is not commensurate in scope with the claims. Tc-To is the range of gelatinization temperatures and not “a gelatinization temperature” as claimed. As seen in Table 2 of Liu, the onset gelatinization temperature (To), the peak gelatinization temperature (Tp), and the conclusion gelatinization temperature (Tc) of the heated starch of Liu all encompass “a gelatinization temperature” of the dried starch which is more than 2.5C lower than the respective gelatinization temperatures of the starch prior to drying. This position is further supported as claim 2 identifies the gelatinization temperature of 59-65C, which overlaps the gelatinization temperatures of the dried starch shown in table 2 of Liu.
The requirement is still deemed proper and is therefore made FINAL. Claims 5-15 and 20-27 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and/or species.
Specification
The disclosure is objected to because of the following informalities: page 9 line 4 contains duplicate periods. This is believed to be a typographical error. Similarly, the period on page 15 line 26 is believed to be a typographical error as none of the other headings are followed by a period.
Appropriate correction is required.
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.
Claims 2, 17, and 18 are 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.
Claims 2, 17, and 18 recite “the standardized amylase degradation method”. It is unclear as to whom determines the standard, and if the standard can change over time, and thus the recited limitation is unclear.
Claims 2, 17, and 18 are further unclear as they recite broad and narrow limitations. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). For example, the claims recite an enzymatic digestibility of at least 8.5mg/g dry substance, and of 9-18mg/g dry substance, and thus it is unclear as to what digestibility the claimed product is limited to. Additionally, it is further unclear as to if the recited numerical range is even required since the claim also recites a digestibility higher than that of the native starch, which may or may not be within the other ranges recited. The limitations for breakdown and peak viscosity are unclear for substantially the same reasons. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 2, 17, and 18 recite “a gelatinization temperature”. It is unclear as to if this is the same gelatinization temperature recited in claim 1, from which claims 2, 17, and 18 depend, and thus which would be also limited by the restricted range recited in claim 1, or if it is a different gelatinization temperature of the starch, such as onset gelatinization temperature and peak gelatinization temperature.
Claim 18 recites a starch according to claim 1 having all of the following characteristics in the preamble, however in the body of the claim, the characteristics are listed with “and/or” between them, thus indicating that the starch may have one property and/or another. Thus, the claim is unclear as it conflicts with itself. If applicant intends to require all of the characteristics, it is suggested that the term “or” be delated. For the purpose of prior art comparison the claim will be considered encompassed in the broadest reasonable sense and thus, if one or more of the recited characteristics have been taught.
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.
Notes: While the term RVA would be understood in view of the disclosure, page 15 line 28, to be “Rapid Visco Analyzer”, it is suggested that applicant amend the claims so that the full term is first recited and identified with its acronym.
Claims 1-4 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al (Effects of dry heat treatment on the structure and physicochemical properties of waxy potato starch” International Journal of Biological Macromolecules, pages 1044-1050).
Regarding claims 1-4 and 16-19, the instant claims recite product by process limitations, and thus, the process limitations are considered only as they would affect the claimed product. “[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) When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. See In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113. In the instant case, as no specific drying parameters for time, temperature, shear, etc. have been given, the product resulting from the claimed method is broad and would require the final moisture content, as well as the specific properties identified in the claims. Thus, as Liu teaches a non-inhibited granular amylopectin, i.e. waxy, potato starch dried to a moisture content of below 10%, (abstract, Introduction paragraphs 1 and 2, and Sections 2.1-2.3, 3.1, 3.5 and 3.6) with a gelatinization temperature at 30% dry solids of more than 2.5C, including 5C lower than the native starch prior to drying (Table 2 and Sections 2.7 and 3.5; the onset gelatinization temperature (To), the peak gelatinization temperature (Tp), and/or the conclusion gelatinization temperature (Tc)), the teachings of Liu are considered to encompass or alternatively make obvious a product as claimed. It is noted that a moisture content of below 10% would encompass moisture content within the claimed ranges, and thus the claimed product is considered at least obvious over the teachings of Liu; and that regardless of the apparatus used for measuring a product property, the product would have that property.
Further regarding claims 2, 17, and 18, as discussed above, the claimed limitations are unclear. Regardless, it is noted that Liu teaches gelatinization temperatures within the range of 59-65C (Section 2.7 and 3.5 and Table 2, To), a higher digestibility compared to the native starch prior to drying (Section 2.9 and Table 3, RDS), and a higher peak viscosity compared to the native starch prior to drying (Conclusion). Thus, the product as claimed is considered to be encompassed or alternatively obvious over the teachings of the prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. https://www.creative-proteomics.com/services/gelatinization-temperature-determination.htm Creative Proteomics shows gelatinization temperatures at onset, peak, and completion can be measured.
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KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792
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