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
Claim 1-14 are under examination.
Claim 1-14 are rejected.
Claim Objections
Claim 7 and 11 are objected to because of the following informalities:
claim 7 line 1-2, recites “at least one beta glucan fiber”, should be “the at least one beta glucan fiber” since antecedent basis have been established in claim 1; and
claim 11, line 2 recites “the beta glucan fibre” should be “the beta glucan fiber” to be consistent with spelling set forth in claim 1 and 7. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 4, 5, and 6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 4 and 5 recites “the oat beta glucan fiber comprises at least 10 wt.% of proteins” in claim 4; and “the oat beta glucan fiber comprises at least 20 wt.% of proteins” in claim 5; however there is no support for the oat beta glucan fiber having a protein content. Additionally, it is well known that beta glucan fiber itself is a polysaccharide (complex carbohydrate) and does not inherently contain protein.
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.
The term “mouthfeel-improving” in claim 1 is a relative term which renders the claim indefinite. The term “mouthfeel-improving” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For examination purpose, an additive comprising at least one beta glucan fiber, meets the claim. Claim 2-14 are also rejected since the claims are depended upon claim 1.
Claim 11 recites the limitation "the weight ratio" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the range" in line 2. 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 169752A1) 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. 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 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 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 169752A1).
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 ratio 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 169752A1 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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Rajakaruna (US 10,946,58) discloses a food additive comprising banana stem powder (green banana powder) (‘058, col. 1, ln. 15-20) for baked food (‘058, col. 4, ln. 64-67; col. 5, ln. 1-13).
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/HONG T YOO/Primary Examiner, Art Unit 1792