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 .
CONTINUING DATA
This application is a 371 of PCT/EP2022/073075 08/18/2022
FOREIGN APPLICATIONS
EP 21193170.4 08/26/2021
Claims 1-12 are pending.
Claim Rejections - 35 USC § 102
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 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)(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) 1-3, 5, and 8-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Adden (US2013/0193370 A1).
Adden teaches a cellulose ether wherein s23/s26 (-OMe) is 0.42 and s6(hydroxyalkyl) is (0.0118 +0.0030 + 0.0340 + 0.0019) = 0.0507. See Table 3, Example 15, page 11. The gelation temperature G’/G’’ is 71.5°C. Viscosity was 4916 mPa.s. G’ was 5.74 Pa. DS methyl is 1.92 and MS (hydroxypropyl) is 0.66. See Table 1, page 9, Example 15. The cellulose ether is used in a composition comprising inorganic materials that set as a result of baking or sintering (claim 11), and also includes water [0098]. Figure 4 shows that G’ increases from about 2 at 50°C to about 80 at 60°C, which is more than a 5x increase.
Adden measured gelation temperature and viscosity and G’ at a concentration of 1.5% instead of 2% and at 80°C instead of 85°C as claimed. Because the conditions used by Adden are so close to the conditions recited in the current claims, it is considered that the characteristics of Adden’s composition are substantially the same as they would have been if measured under the claimed conditions.
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.
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) 2-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adden (US2013/0193370 A1).
Adden teaches as set forth above. G’ in the Adden composition was 5.74 Pa, which is lower than the claimed 10-10000 Pa. Adden teaches that G’ can vary between 0.69-1810, as shown in Table 1. Adden teaches that G’ can be preferably up to 5,000 Pa [0029]. It would have been obvious to one of ordinary skill in the art at the time the application was filed to prepare Adden’s HPMC composition having G’ of at 10-10000 Pa as claimed because Adden teaches that G’ is preferably up to 5,000. See MPEP 2144.05: In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. The claimed 10-10000 Pa overlaps with the Table 1 range of 0.69-1810 and the preferred range of up to 5,000.
Adden teaches as set forth above. In Example 15, DS methyl is 1.92 and MS (hydroxypropyl) is 0.66, compared to the claimed DS 1.0-2.0 and MS 0.05-0.5 or DS 1.2-1.8 and MS 0.1-0.3. Adden also teaches that DS(methyl) ranges from 1.2-2.2 (claim 5) and MS(hydroxyalkyl) ranges from 0.18-0.60 (claim 6). It would have been obvious to one of ordinary skill in the art at the time the application was filed to prepare Adden’s HPMC wherein Ds is 1.2-1.8 and MS is 0.05-0.5 because the claimed ranges lie inside or overlap with the ranges taught by Adden. See MPEP 2144.05: In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. The claimed DS 1.2 to 1.8 lies inside the prior art range of 1.2-2.2. The claimed MS 0.1-0.3 overlaps with the prior art range 0.18-0.60.
Adden teaches as set forth above. As noted above, Adden measured the characteristics of the composition under slightly different conditions than are recited in the current claims. In the event that the change in conditions results in values outside the claimed ranges, it would have been obvious to one of ordinary skill in the art at the time the application was filed to prepare cellulose ethers having the claimed characteristics. Adden teaches that the viscosity may be more than 150 mPa.s or up to 100,000 mPa.s [0028], or in another aspect may be 2 to 200 mPa.s [0032]. G’ is at least 100 Pa, or up to 5,000 [0031]. See MPEP 2144.05: In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. Also, where 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. MPEP 2131.03 also states that A 35 U.S.C. 102 and 103 combination rejection is permitted if it is unclear if the reference teaches the range with “sufficient specificity,” which is why claims 2-3 and 5 are rejected as anticipated by Adden and obvious over Adden.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adden (US 20130236512A1) in view of Reibert (EP1171471B1, 2009).
Adden teaches a cellulose ether wherein s23/s26 (-OMe) is 0.42 and s6(hydroxyalkyl) is (0.0118 +0.0030 + 0.0340 + 0.0019) = 0.0507. See Table 4, Example 15. The cellulose ethers are used in capsules [0002].
Adden does not teach that the cellulose ethers are used in solid food products.
Reibert teaches that methylcelluloses are used in food products because they undergo a heat-catalyzed gelation similar to egg white [0002]. Methylcelluloses include hydroxypropylmethylcellulose [0019].
It would have been obvious to one of ordinary skill in the art at the time the application was filed to utilize Adden’s cellulose ether in a food product designed to be heat-treated because methylcelluloses are used in heated food products as taught by Reibert.
Conclusion
No claims are allowed.
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/LAYLA D BERRY/ Primary Examiner, Art Unit 1693
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