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 .
DETAILED ACTION
The Amendments filed on 4/7/2026 has been received and entered.
Claims 1-2, 9, 11-12, 14, 20, 22, and 36-40 are pending. Claims 1-2, 9, 11-12, and 14 are examined on the merits. Claims 20, 22, and 36-40 are withdrawn.
Election/Restrictions
Applicant’s election of Group I (Claims 1-19), the species inulin, type 2 resistant starch in the reply filed on 4/2/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant argues that the intended use is not anticipated by Tezza. In response to Applicant’s argument to the lack of unity of invention, Tezza still applies and claims are withdrawn because the claims lack of unity. The intended use of a composition does not change that composition, which was disclosed in the prior art, and therefore does not make a contribution over the prior art. Thus, the claims lack unity of invention.
Election was made without traverse in the reply filed on 4/2/2026.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 5/1/2025, 1/16/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claim 21 is missing from the canceled claims.
Claims 20, 22, and 36-38 are withdrawn claims, which need to be listed in its entirety. Applicant is referred to 37 CFR 1.121 (c). If Applicant wants to cancel them, then they need to be listed as canceled.
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.
Claim 2 is 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.
Regarding claim 2, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2, 9, 11-12, and 14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claim(s) 1-2 are directed to a composition comprising natural products. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
MPEP § 2106 sets forth the Subject Matter Eligibility Test to determine if a claim is directed to patent eligible subject matter. Step 1 asks if a claim is directed to a statutory category of invention. Applicant’s claims are directed to a product; thus, the answer to Step 1 is Yes.
Step 2A, Prong One, asks if a claim recites to a product of nature. In this case, applicant’s claims starch, alpha-linked glucan, cereal bran, and inulin, which are from plants. Thus, the claims do recite products of nature. MPEP § 2106.04(b) states that “When a claim recites a nature-based product limitation, examiners should use the markedly different characteristics analysis discussed in MPEP § 2106.04(c) to evaluate the nature-based product limitation and determine the answer to Step 2A.”
MPEP § 2106.04(c)(I) states that “if the nature-based product limitation is not naturally occurring, for example due to some human intervention, then the markedly different characteristics analysis must be performed to determine whether the claimed product limitation is a product of nature exception…”. To perform the markedly different characteristic analysis, MPEP § 2106.04(c)(II) states “The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product’s structure, function, and/or other properties…”.
In this case, in claims 1-2, 9, and 12 the homogenized form the ingredients mixed together would still be a product of nature because as long as there are nature-based molecules found in the composition, the composition contains a mixture of products that are found in nature (the individual natural molecules) and thus must be evaluated as per the described analysis. Mixing together various natural molecules doesn’t change those molecules per se; they are simply mixed together and thus would have the same characteristics as the same molecules prior to being mixed together.
In this case, claim 14, the form of a powder does not make the plant ingredients have markedly different characteristic. Powder form is found in nature when the plant dries and become ground by gravity or animals.
Therefore, the answer to Step 2A, Prong One, is Yes.
Thus, the analysis must move to Step 2A, Prong Two, which asks if the claim recites additional elements that integrate the judicial exception into a practical application. As discussed in MPEP § 2106.04(d)(2) this evaluation is performed by identifying whether there are additional elements recited in the claim beyond the judicial exception and evaluating these additional elements to determine whether the claim as a whole integrates the exception into a practical application.
The homogenized composition of the different plants together are non-natural. However, a composition can be used in many different ways and thus not integrate the judicial exception into a practical application. Thus, the answer to Step 2A, Prong Two, is No.
The analysis must then move to Step 2B which asks if claims recite additional elements that amount to significantly more than the judicial exception. MPEP § 2106.05 states that this evaluation is performed by “Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself.” In this case, the amounts of Claim 11 are amounts that can be found in plants. The mixing of homogenized plants are well understood, routine, and conventional method of making a product for supplementing nutrition such as a fruit juice or powder (see rejection below). Thus, the answer to Step 2B is No. Therefore, the claims are not directed to patent eligible subject matter.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 9, 11-12, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ubbink et al. (EP1344458 A1).
Ubbink et al. teaches a composition of ingredients selected from the group of digestible starches, resistant starches, other fibre, milled cereals, dried and milled vegetables, cellulose and cellulose derivatives, pet food, maltodextrin, and mixtures thereof (Claim 6). The functional food includes prebiotics [0004]. A micro-organism exerting beneficial effects on health and welfare on humans or animals [0055]. Fibres may be differentiated in soluble and non-soluble fibre. Examples of soluble fibers comprise inulin, pectin, 6-glucans (small cellulose-type branched glucose polymers), gumarabic, tragacanth, mucilages, guar and locust bean gum, agar, carageenans, alginates, xanthan and the like. Most of these soluble fibres are fermentable for the largest part. Examples of insoluble fiber comprises cellulose (for example derived from oat hull, soy-beans, cereal bran) and hemicellulose (mostly branched arabino-xylans or galactans, e.g. from cereals, potatoes or soybeans). Most of these insoluble fibres are partly fermentable or non-fermentable [0069]. The inner matrix may comprise potato starch or other ingredients. This inventive concept may be extended to any food product [0083]. The food product may be any food product to which the beneficial function of probiotics is wished to be added. For example, it may be a pet food, including treats. However, it may be any food, intended for any animal. For example, the food product may be a particulate food or food ingredient, such as certain semi-dry pet foods, breakfast cereals, breakfast flakes, -crisps, or -puffs, snacks, chips, dips, biscuits, candies, confectionary, chocolate, bars, muesli, instant beverages in tablet or pellet form, bouillon cubes, instant soup and sauces in tablet or pellet form, oral cosmetics [0113]. Inulin would include agave branched inulin because inulin would be the same from any source.
However, Ubbink et al. does not teach about 30% type 2 resistant starch, about 30% resistant maltodextrin, about 30% rice bran, and about 10% agave branched inulin.
The reference does not specifically teach adding the ingredients in the amounts claimed by applicant for food composition. However, the reference does teach the ingredients for making a prebiotic function al food. The amount of a specific ingredient in a composition that is used for a particular purpose (the composition itself or that particular ingredient) is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, optimization of general conditions is a routine practice that would be obvious for a person of ordinary skill in the art to employ. It would have been customary for an artisan of ordinary skill to determine the optimal amount of each ingredient to add in order to best achieve the desired results. Thus, absent some demonstration of unexpected results from the claimed parameters, this optimization of ingredient amount would have been obvious at the time of applicant’s invention.
Conclusion
No claim is allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERYNE CHEN whose telephone number is (571)272-9947. The examiner can normally be reached on Monday-Friday 9-5:30 PM.
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Catheryne Chen Examiner Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
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