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 .
Applicants’ election without traverse of Group I, claims 1-3 in the reply filed on 13 August 2026 is acknowledged. The election/restriction requirement is deemed proper and is therefore made FINAL. An Action on the merits of claims 1-3 is contained herein.
Group II, claims 4-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim.
Priority
This application is a 371 of PCT/CN2022/141261 filed 12/23/2022. This application claims foreign priority to CHINA 202111620836.8 filed 12/28/2021, under 35 U.S.C. 119(a)-(d). The certified copy of the priority document has been filed in the instant application.
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) 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN108095054 A, Machine English Translation, pages 1-10; of record and used in this rejection) in view of Sorndech et al (Starch/Starke, 2018, 70, 1-11; of record and used in this rejection).
Zhang teaches a method of making slowly digestible starch comprising (i) mixing starch with distilled water to get weight percentage concentration of 20-40% and heating the mixture, (ii) adding amylase and performing enzymolysis at 55oC for 3hrs, (iii) heating the aqueous mixture to inactivate the enzyme to get a resulting solution which is then cooled, centrifuged to get a precipitate. The precipitate is then washed with water, dried and crushed through a sieve to obtain slowly digestible starch (page 9, claim 2 of Zhang; part of step 2 and steps 3 and 5 as in claim 1).
Zhang does not teach using Pueraria montana var. thomsonii edible plant as raw material as in step 1, reducing pressure as in step 2, step 4 and does not teach the limitations of claims 2-3.
Sorndech et al teaches that slowly digestible starch is defined as one that releases glucose between 20 and 120 minutes. If glucose is released after 120 minutes, it is resistant starch (page 1, part 1.1). Slowly digested starch has been demonstrated to have potential health benefits including the stimulation of beneficial gut microbes such as lactobacillus and bifidobacteria (page 2, left col, first para)
From the teachings of Zhang one of ordinary skill in the art will recognize that to obtain slowly digested starch from Pueraria montana var. thomsonii starch one has to adjust the process parameters like temperature, time, etc. of Zhang, and it can be done starting with Pueraria montana var. thomsonii edible plant.
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, Zhang teaches the main steps of heating starch slurry, performing enzymolysis and collecting the starch precipitate, drying, sieving to get the starch. Slowly digestible starch is one that releases glucose between 20 and 120 minutes and has health benefits (Sorndech). Thus, it is obvious to arrive at the claimed method of preparing slowly digested Pueraria montana var. thomsonii starch from the combined teachings of the prior art.
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. The artisan can adjust the process parameters of Zhang like temperature, concentration and pressure starting with Pueraria montana var. thomsonii plant to obtain slowly digested starch. Step (1) in the claimed process can be performed on the plant, and the two concentrate compositions can be obtained which can be combined and further processed to get the slowly digested starch as in claims 1 and 2 in view of Zhang. Processing additional supernatant to obtain more product is routinely done in such processes and is general knowledge in the art. Ratios of the two concentrate compositions can be adjusted as in claim 3 for the purpose of optimization.
One of ordinary skill in the art will be motivated to use the claimed process since Sorndech teaches that slowly digested starch has been demonstrated to have potential health benefits including the stimulation of beneficial gut microbes such as lactobacillus and bifidobacteria (page 2, left col, first para), and Zhang teaches a method of making slowly digestible starch. Zhang’s process parameters can be adjusted to get slowly digested starch. Therefore, the artisan would be motivated to use the claimed steps, which is also taught by Zhang, to make Pueraria montana var. thomsonii starch by adjusting the process parameters of Zhang.
It is well established that merely selecting proportions and ranges and modifying the process conditions such as temperature, reaction time and concentration is not a patentable modification absent a showing of criticality (In re Aller, 220 F.2d, 454, 105 U.S.P.Q 233 C.C.P.A, 1995 and In re Becket, 33 U.S.P.Q 33, C.C.P.A, 1937 and In re Russell, 439 F. 2d 1228, 169 U.S.P.Q. 426, C.C.P.A 1971).
Conclusion
1. Elected claims 1-3 (Group I) are rejected.
2. Group II, claims 4-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GANAPATHY KRISHNAN whose telephone number is (571)272-0654. The examiner can normally be reached M-F 8.30am-5pm.
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/GANAPATHY KRISHNAN/Primary Examiner, Art Unit 1693
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