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 without traverse of Group I, claims 1-3, 5-9, 11, 13 and 20 in the reply filed on 07/16/2026 is acknowledged. Claims 21-23, 28-32, 34, 36-37 and 42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
The examiner notes that applicant has amended claim 21 to include the composition of claim 1 and has requested that claims 21-23, 28 and 42 are examined together with Group I for the reason that “examination of claims 21-23, 28 and 42 would not require a material different search from that conducted for the elected Group I claims”. The request is considered but found unpersuasive since the instant application is a national stage of a PCT application thus the doctrine of materially same search across groups does not apply, rather, since Group I and II share the common technique feature of a composition of claim 1 and such a common feature does not make a contribution over the prior art of Korenevski (see 35 USC 103 rejection below), the restriction is maintained.
Claim status
The examiner acknowledged the amendment made to the claims on 07/16/2026.
Claims 1-3, 5-9, 11, 13 ,20-23, 28-32, 34, 36-37 and 42 are pending. Claims 1-3, 5-9, 11, 13 and 20 are previously presented. Claims 21-23, 28-32, 34, 36-37 and 42 are withdrawn without traverse in response to the restriction requirement. Claims 1-3, 5-9, 11, 13 and 20 are hereby examined on the merits.
Claim Objections
Claim 9 is objected to because of the following informalities: “a portion or an isolate” should read “ the portion or the isolate”. Appropriate correction is required.
Claim 13 is objected to because [[ food]] in line 3 should not be there (e.g., there is no amendment to the claim).
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 1-3, 5-9, 11, 13 and 20 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 1, 3 and 5-6 recites the percent for phytoglycogen, soluble proteins, saccharides, and/or starch. It is unclear whether they are weight percent. Claims 2-3, 5-9, 11, 13 and 20 depend from claim 1 and therefore necessarily incorporate the indefinite subject matter therein. Appropriate correction is required.
Claim 11 depends from claim 1 and recites that the wall material or emulsifier encapsulating one or more core materials or emulsifying one of more of oils, fat, or lipophilic materials. However, since claim 1 is merely directed to the wall material or emulsifier per se as opposed to a composition comprising the wall material or emulsifier, it's not clear what needs to be present to meet claim 11. For the purpose of examination, the encapsulating or emulsifying limitation is construed to be part of the use of the wall material or emulsifier. Claim 13 is rejected and construed the same way. Clarification is required.
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.
Claims 1-3, 5-7, 9, 11, 13 and 20 rejected under 35 U.S.C. 103 as being unpatentable over Korenevski US Patent Application Publication No. 2017/0369597 A1 (cited in the IDS submitted on 02/24/2024, hereinafter referred to as Korenevski).
Regarding claims 1-3, 5-6, 11 and 13, Korenevski teaches a portion or an isolate from sugary-1 cereal (e.g., monodisperse phytoglycogen nanoparticles having an average particle diameter of 30-150 nm, the monodisperse phytoglycogen nanoparticles are from corn kernel of a stand type su sweet corn) (0017-0018; 0048), wherein the portion or isolate comprises at least 80% phytoglycogen (0053), and 2-3% proteins (0026, the protein is necessarily soluble protein since they are from the water extract, see 0017). Further, Korenevski teaches that the portion or the isolate is substantially free of other polysaccharide besides phytoglycogen, for example, the portion or the isolate contains less than 10% (or narrowly less than 5% or 1%) other polysaccharides (0054), thus meeting claims 5-6 since starch is a polysaccharide.
Regarding the limitation that the portion or the isolate comprises less than about 60% disaccharide and monosaccharides (e.g., saccharides with a DP of 2 or lower), it is known that the kernel of sweet corn contains four types mono- and di- saccharides: glucose, fructose, sucrose and maltose with sucrose being the main dominant one. To this end, Korenevski teaches that the portion or the isolate (e.g., the phytoglycogen nanoparticles) comprises less than 0.15% reducing sugars (0098). Given that each of maltose, fructose and glucose is a reducing sugar, it is recognized that the portion or the isolate as disclosed by Korenevski comprises less than 0.15% monosaccharide plus maltose.
As for sucrose, Korenevski teaches that the phytoglycogen nanoparticles are made by subjected ground or milled sweet corn kernel to water extraction followed by adjusting pH and solid-liquid separation to obtain an aqueous extract, and subjecting the aqueous extract to ultrafiltration to remove impurities having a MW of less than 500 kDa (0074-0078). Further, Korenevski teaches that the impurities include salts, protein, and sugar including glucose, sucrose, or maltose (0091). As such, a sugar such as sucrose belongs to the undesired impurities/contaminants in the phytoglycogen nanoparticles, and such an impurity/contaminant can be appropriately removed by ultrafiltration. Therefore, one of ordinary skill in the art would have been motivated to manipulate the conditions of ultrafiltration so as to efficiently remove the undesired impurity including sucrose. As such, the amount of saccharides as recited in claim 1 or claim 3 is merely an obvious variant of the prior art.
The limitation about wall material or emulsifier as recited in the preamble of claim 1 is not considered to further limit the composition. It is the examiner’s position that the intended use recited in the present claims do not result in a structural difference between the presently claimed composition and the prior art composition and further that the composition of the prior art is capable of performing the intended uses. Given that Korenevski teaches the same portion or isolate (e.g., phytoglycogen nanoparticles) as that recited in the claim and that the portion or isolate of Korenevski can be used in a wide range of food and medical application including film forming, stabilizer for vitamin, drug deliver agent, etc. (0126-0127)., it is clear that the phytoglycogen nanoparticles of Korenevski would be capable of performing the intended uses, i.e., as a wall material for encapsulating a core material or as an emulsifier to emulsify an oil, fat or lipophilic materials such as those listed in claims 11 and 13.
Regarding claim 7, Korenevski teaches that the corn kernel is milk stage or dent stage (0018) thus reading on the limitation that the sugar-1 cereal is not subjected to germination treatment.
Regarding claim 9, Korenevski teaches extracting phytoglycogen moiety present in the endosperm (0072), thus reading on the limitation about endosperm fractions.
Regarding claim 20, Given that Korenevski as modified arrives at the composition of claim 1, it logically follows that the viscosity property as recited in the claim is met by prior art. See MPEP 2112.01 I, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Korenevski as applied to claim 1 above, and further in view of Powell, “Extraction, isolation and characterisation of phytoglycogen from su-1 maize leaves and grain”. Carbohydrate Polymers 101 (2014) 423– 431 (hereinafter referred to as Powell).
Regarding claim 8, Korenevski as recited above teaches using the corn kernel that is at milk stage or dent stage as the phytoglycogen-containing material for extracting phytoglycogen (0017-0018) thus failing to teach that the sugar-1 corn kernel is subjected germination treatment.
Powell in the same field of endeavor teaches that fine powder of germinated kernel (e.g., leaf powder) contains phytoglycogen thus can be used as a raw phytoglycogen-containing material for extracting phytoglycogen like disintegrated kernel (e.g., ground kernel or kernel powder) (Abstract; page 424; 2.1; 2.2; Conclusion).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Korenevski by substituting the fine powder of germinated kernel (e.g., leaf powder) for ground or milled kernel as the raw material for extracting phytoglycogen with reasonable expectation of success, for the reason that prior art has established that both are suitable raw materials for extracting phytoglycogen therefrom thus substituting one for another is prima facie obvious. See MPEP 2144.06 II.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANGQING LI whose telephone number is (571)272-2334. The examiner can normally be reached 9:00-5:00.
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/CHANGQING LI/Primary Examiner, Art Unit 1791
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