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 .
Application Status
Amended claim 1-14 are under examination.
Claim 1-14 are rejected.
No claims are allowed.
Withdrawn Rejections
The objection set forth in previous office action has been withdrawn in light of Applicant’s amendment.
The 112, first paragraph rejection set forth in previous office action has been withdrawn in light of Applicant’s remarks and notes the beta glucan fiber is an admixture (emphasis) comprising beta glucan and proteins as disclosed in the instant specification pg. 22, line 4-7.
The 112, second paragraph rejection over claim 1-14 has been withdrawn in light of Applicant’s amendments.
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 1-14 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.
Claim 1 recites the limitation "the mouthfeel" in line 2-3. There is insufficient antecedent basis for this limitation in the claim.
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, 4, 5, 7, 8, 9, 10, 12, 13 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lewis (EP 1649752A1) as evidenced by Muinos (Ref. U, Oat Flour Nutrition Facts and Health Benefits) and Rolled Oats Nutrition Facts – Eat This Much (Ref. V).
Regarding claim 1 and 2, with respect to “…for the use in a snack food…”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. With respect to the new recitation of “…wherein the additive is configured to improve the mouthfeel of the snack food…”, is considered a functional limitations of the claimed product, additive when consume with the snack food; hence it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or substantially identical process, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitation that stem from the claimed structure (product). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spade, 15 USPQ2d 655,1658 (Fed. Cir. 1990). Lewis discloses a food additive comprising a grain component containing beta-glucan (fiber) (‘752, [0001], [0006], [0008], claim 1). With respect to claim 2, Lewis discloses the grain component containing the beta-glucan (fiber), wherein the grain component includes oat flour (‘752, claim 3) and meets the limitation of oat beta glucan fiber.
Regarding claim 4, Lewis discloses food additive comprising the grain component containing the beta-glucan (fiber), wherein the grain component includes the oat flour (‘752, claim 3). Oat flour contains 14.7% wt. protein (15.3 g/ 104 g *100 = 14.7% wt.) as evidenced by Muinos (Ref. U), which is in range with the cited range.
Regarding claim 5, Lewis discloses the grain component containing the beta-glucan (fiber), wherein the grain component includes a mixture of the oat flour (‘752, claim 3) and rolled oats. Oat flour contains 14.7% wt. protein (15.3 g/ 104 g *100 = 14.7% wt.) as evidenced by Muinos (Ref. U) and rolled oats contains 11.3% wt. protein (9 g/ 80 g * 100 = 11.3% wt.) as evidenced by Rolled Oats Nutrition Facts – Eat This Much (Ref. V). Lewis’s grain component provide 26% wt. of protein, which is in range with the cited range.
Regarding claim 7, Lewis discloses the food additive comprising a soluble fiber humectant, maltodextrin (plant-derived non-beta glucan fiber) (‘752, claim 1, [0007]).
Regarding claim 8 and 9, the recitation of “derived from banana” in claim 8 and “green banana powder” in claim 9, wherein a particular derivation of the plant-derived non-beta glucan fiber is considered a product by process format, and as such, it is the novelty of the instantly claimed product that needs to be established and not that of the recited source in process step(s). In re Brown, 173 USPQ 685 (CCPA 1972); In re Wertheim, 191 USPQ (CCPA 1976). Since the product of claim 1 is shown by Lewis’ soluble fiber humectant, maltodextrin (plant-derived non-beta glucan fiber) (‘752, claim 1, [0007]), the product is met.
Regarding claim 10, it is noted the cited “…the at least one beta glucan fiber exhibits a zero shear viscosity exceeding 10000 mPas at a temperature of 85 degrees centigrade in a 5% w/w dispersion in water…” is considered a functional limitations of the claimed product when it’s at a temperature of 85 degrees centigrade in a 5% w/w dispersion in water; hence it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or substantially identical process, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitation that stem from the claimed structure (product). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spade, 15 USPQ2d 655,1658 (Fed. Cir. 1990).
Regarding claim 12, 13, and 14, Lewis discloses baked food composition (snack food) (‘752, claim 7-9) comprising the food additive.
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, 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.
Claim(s) 6 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Lewis (EP 1649752A1).
Regarding claim 6, Lewis discloses the grain component (oat beta glucan fiber) comprises at least 2.0 wt.% beta glucan, which overlaps the cited range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 11, Lewis discloses the food additive comprising the grain component (oat beta glucan fiber) in a range of about 85 to about 95 wt.% of the food additive and the soluble fiber humectant, maltodextrin (plant-derived non-beta glucan fiber) (‘752, claim 1, [0007]) in a range of about 5 to about 15 wt.% of the food additive (‘752, claim 5). Lewis’s weight range of the grain component (oat beta glucan fiber) to the soluble fiber humectant, maltodextrin (plant-derived non-beta glucan fiber), overlaps the cited range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Lewis (EP 1649752A1 as applied to claim 2 above, and further in view of Duss (WO2011/065880).
Regarding claim 3, Lewis discloses the claimed invention as discussed above. Lewis is silent on the grain component (oat beta glucan fiber) with a molecular weight as cited. However, Duss discloses a dietary fibre composition containing oat beta-glucan for foodstuff (‘880, Abstract; pg. 1, ln. 1-10; 19-22) with a peak molecular weight in a range of 40 kDa to 3000 kDa (‘880, pg. 2, ln. 26-29), which overlaps the cited range.
Lewis and Duss are of the same field of endeavor of oat beta glucan as supplement in a foodstuff. It would have been obvious to one of ordinary skill in the art to use Duss’ oat beta-glucan with the peak molecular weight in a range of 40 kDa to 3000 kDa (‘880, pg. 2, ln. 26-29) in Lewis’ food additive to provide a selection of those particular β-glucans having a combination of peak MW and solubility that will produce a sufficiently high viscosity to provide a beneficial effect at a comparatively low content of β-glucans in the fibre composition as taught by Duss (‘880, pg. 3, ln. 9-16).
Response to Arguments
Applicant's arguments filed July 9, 2026, have been fully considered but they are not persuasive.
Applicant asserts “…to be construed consistent with "configured to" language, it requires that the structure must be "designed or configured to accomplish the specified objective, not simply that [it] can be made to serve that purpose.") The teachings of Lewis are not designed or configured to improve the mouthfeel of a snack food. Lewis is directed to cholesterol reduction and shelf-stability ([0001], [0005]), not mouthfeel…”.
Applicant’s remarks have been fully considered but they are not persuasive. First it is noted the claim is to a product, an additive. The new recitation of “…wherein the additive is configured to improve the mouthfeel of the snack food…”, is considered a functional limitations of the claimed product, additive when consume with the snack food; hence it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or substantially identical process, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitation that stem from the claimed structure (product). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spade, 15 USPQ2d 655,1658 (Fed. Cir. 1990). Lewis discloses a food additive comprising a grain component containing beta-glucan (fiber) (‘752, [0001], [0006], [0008], claim 1). Lewis discloses the grain component containing the beta-glucan (fiber), wherein the grain component includes oat flour (‘752, claim 3) and meets the limitation of oat beta glucan fiber.
Applicant asserts “…Lewis' "grain component" is a mixture of multiple oat products. The protein content of a mixture is a weighted average, not a sum of percentages. The claimed oat beta glucan fiber is a specific, concentrated ingredient (e.g., SWEOAT™ with ~23 wt.% protein), which is structurally distinct from Lewis' bulk "grain component".
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., SWEOAT™ with ~23 wt.% protein) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The instant claim is directed to a product, additive with recitation of “comprising” language, in other words open-ended and may include other ingredients and components in the additive.
Lewis discloses food additive comprising the grain component containing the beta-glucan (fiber), wherein the grain component includes the oat flour (‘752, claim 3). Oat flour contains 14.7% wt. protein (15.3 g/ 104 g *100 = 14.7% wt.) as evidenced by Muinos (Ref. U), which is in range with the cited range. Lewis discloses the grain component containing the beta-glucan (fiber), wherein the grain component includes a mixture of the oat flour (‘752, claim 3) and rolled oats. Oat flour contains 14.7% wt. protein (15.3 g/ 104 g *100 = 14.7% wt.) as evidenced by Muinos (Ref. U) and rolled oats contains 11.3% wt. protein (9 g/ 80 g * 100 = 11.3% wt.) as evidenced by Rolled Oats Nutrition Facts – Eat This Much (Ref. V). Lewis’s grain component provide 26% wt. of protein, which is in range with the cited range.
Applicant’s remarks have been fully considered but they are not persuasive with respect to the viscosity. As noted in the above rejection, the recitation “…the at least one beta glucan fiber exhibits a zero shear viscosity exceeding 10000 mPas at a temperature of 85 degrees centigrade in a 5% w/w dispersion in water…” is considered a functional limitations of the claimed product, the additive when it’s at a temperature of 85 degrees centigrade in a 5% w/w dispersion in water; hence it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or substantially identical process, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitation that stem from the claimed structure (product). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spade, 15 USPQ2d 655,1658 (Fed. Cir. 1990).
Lewis discloses a food additive comprising a grain component containing beta-glucan (fiber) (‘752, [0001], [0006], [0008], claim 1). Lewis discloses the grain component containing the beta-glucan (fiber), wherein the grain component includes oat flour (‘752, claim 3) and meets the limitation of oat beta glucan fiber. Oat flour contains 14.7% wt. protein (15.3 g/ 104 g *100 = 14.7% wt.) as evidenced by Muinos (Ref. U).
Applicant asserts “…the present application (page 22, lines 4-11) describes a specific material ('SWEOAT™) with about 28 wt.% beta glucans and about 23 wt.% proteins, underscoring that this is a distinct technical component, not a mere variation of Lewis' grain mixture…”.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., material ('SWEOAT™) with about 28 wt.% beta glucans and about 23 wt.% proteins) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The instant claim is directed to a product, additive with recitation of “comprising” language, in other words open-ended and may include other ingredients and components in the additive.
Lewis discloses the grain component (oat beta glucan fiber) comprises at least 2.0 wt.% beta glucan, which overlaps the cited range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Lewis discloses the food additive comprising the grain component (oat beta glucan fiber) in a range of about 85 to about 95 wt.% of the food additive and the soluble fiber humectant, maltodextrin (plant-derived non-beta glucan fiber) (‘752, claim 1, [0007]) in a range of about 5 to about 15 wt.% of the food additive (‘752, claim 5). Lewis’s weight range of the grain component (oat beta glucan fiber) to the soluble fiber humectant, maltodextrin (plant-derived non-beta glucan fiber), overlaps the cited range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In response Applicant’s remarks “…Applicant's invention solves the problem of creating a specific mouthfeel in a snack food, which requires selecting a beta-glucan with properties (including the very high Mw of 1500-3500 kDa) robust enough to survive harsh processing conditions and contribute to the final product's texture…”, is not persuasive. The recitation of “…wherein the additive is configured to improve the mouthfeel of the snack food…” in claim 1, is considered a functional limitations of the claimed product, additive when consume with the snack food; hence it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or substantially identical process, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitation that stem from the claimed structure (product). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spade, 15 USPQ2d 655,1658 (Fed. Cir. 1990).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG THI YOO whose telephone number is (571)270-7093. The examiner can normally be reached M-F, 7AM to 3PM.
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/HONG T YOO/Primary Examiner, Art Unit 1792
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