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 .
Status of Claims
Claims 1, 4, 7-8 and 11-20 are pending in this application. Claims 1, 4 and 11 are under examination. Claims 7-8 and 12-20 are withdrawn. Any objections or rejections not repeated below have been withdrawn.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in People’s Republic of China on January 19, 2024. It is noted, however, that applicant has not filed a certified copy of the CN 2024100816992 application as required by 37 CFR 1.55.
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.
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.
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 1 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. CN 110301650 (cited on IDS dated 11/14/2024), in view of Zhang et al. CN 107125558 (cited on IDS dated 11/14/2024), and in view of Sharpe, Sea Rice Boosts Food Security in China, The Borgen Project, 2022.
Please note the rejection is based on page and/or paragraph numbers added to Huang, Zhang, and Sharpe references and supplied with the rejection.
Regarding claim 1, Huang teaches a processing method for improving a glucose absorption capacity of rice puffing powder (preparation method of modified rice bran which can enhance the absorption capacity for glucose; [0003]).
Huang teaches performing steam explosion processing on rice bran, wherein the pressure of the steam explosion is 0.3-1.5 MPa [0003], [0006], [0009]. This overlaps the claimed range of 1.2-1.6 MPa. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Huang teaches the pressure of the steam explosion is maintained for 120 to 360 seconds [0029]. This is near the claimed range of 80-100 seconds. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779. See MPEP 2144.05(I).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Huang by processing the sea rice bran within the claimed time because Huang teaches the time for processing under pressure is not particularly limited but can be set to the desired time [0030].
Huang does not teach mixing a high-temperature resistant alpha-amylase and the amount of alpha-amylase, and is silent on mixing with water and the amount of water.
Zhang teaches a method for improving whole grain meal powder, where the whole grain can be rice that includes the bran (seed coat) [0002], [0006], [0007-0008], [0010]. Zhang discloses uniformly mixing the rice bran (whole grain) with water and a high-temperature resistant alpha-amylase before puffing [0007-0008], [0010]. Zhang teaches the addition of water is 10-20% of the weight of the sea rice bran (whole grain; [0012]). This overlaps the claimed range for water of 9-16% w/w of the sea rice bran. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). Zhang discloses a mixing ratio of the high-temperature resistant alpha-amylase to sea rice bran (whole grain) is 500-1500 U/g [0012]. The claimed range and Zhang’s range for the mixing ratio of alpha-amylase to sea rice bran touch and therefore, the claimed range would have been obvious per MPEP 2144.05(I). Zhang teaches when these processing methods are used, it produces a whole grain meal powder that has the advantages of a uniform powder with good solubility, improved quality and promotes health [0016].
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Huang to incorporate the teachings of Zhang by mixing the alpha-amylase with the sea rice bran at the ratio claimed and with the claimed amount of water before performing steam explosion because this produces a powder that has the advantages of a uniform powder with good solubility, improved quality and promotes health, as recognized by Zhang [0016].
Huang discloses a rice bran [0003], [0006] but does not teach that the rice bran is sea rice bran.
Sharpe teaches about the benefits of sea rice as a type of rice (pgs. 1-2 paragraph 1; pg. 3 Discovery of Sea Rice paragraphs 3-4). Sharpe discloses sea rice can be cultivated in heavily saline-alkali soil, improves the soil quality, can withstand three times the amount of salt than other strains, is more resistant to flooding, is less delicate and more resistant to natural disasters, pests and disease in comparison to regular rice varieties and is also more nutritious than other major rice strains (pg. 3 Discovery of Sea Rice paragraphs 3-4).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Huang in view of Zhang to incorporate the teachings of Sharpe by having the rice bran be sea rice bran because sea rice can be cultivated in heavily saline-alkali soil, improves the soil quality, can withstand three times the amount of salt than other strains, is more resistant to flooding, is less delicate and more resistant to natural disasters, pests and disease in comparison to regular rice varieties and is also more nutritious than other major rice strains, as recognized by Sharpe (pg. 3 Discovery of Sea Rice paragraphs 3-4).
Additionally, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Huang to use any rice bran cultivar, including sea rice bran, with the processing method to produce rice puffing powder as taught by Huang. See MPEP 2144.08.
Regarding claim 4, modified Huang teaches the processing method of claim 1, as discussed above. Huang teaches the steam explosion processing is performed on the mixture in a steam explosion machine (the specific process of the steam explosion is preferably to place the rice bran in a steam explosion cylinder to complete the blasting of the rice bran; [0030]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. CN 110301650, in view of Zhang et al. CN 107125558, and in view of Sharpe, Sea Rice Boosts Food Security in China, The Borgen Project, as applied to claim 4 above, and further in view of Hoke et al., Review Optimum Conditions of Rice Puffing, Czech Journal of Food Science Vol. 21, 2005.
Regarding claim 11, modified Huang teaches the processing method according to claim 4, as shown above. Huang is silent as to the filling rate of the mixture in the steam explosion machine.
Hoke discloses the optimum condition for processing rice using steam explosion (gun-puffing; pg. 1 Abstract). Hoke discusses the technical aspects of the steam explosion machine (gun-puffing machine), where the cylinder has a length of 1.2 m and the inner diameter is 200 mm, which when calculated is a volume of 38 L for the cylinder. Hoke teaches the cylinder is filled with 6-7 kg of white rice, which when calculated is about a volume of 7-10 L of rice (pg. 9 Technical Aspects of the Gun-Puffing of Rice paragraph 1). Thus, Hoke discloses for optimum processing the filling rate of the mixture (rice) in the steam explosion machine (gun-puffing machine) is about 18-26%. This is within the claimed range of less than 30%.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Huang in view of Zhang and Sharpe, to incorporate the teachings of Hoke by having the filling rate be within the claimed range because these are optimum conditions for processing when using steam explosion (gun-puffing), as recognized by Hoke (pg. 1 Abstract).
Response to Arguments
Applicant's arguments filed 08/05/2026 have been fully considered but they are not persuasive.
(I). The Distinguishing Technical Features of the Present Application are Interrelated.
Applicant argues, on pgs. 3-5 of their remarks, that enzymatic hydrolysis provides the basis for shortening the steam explosion time. Applicant states that enzymatic hydrolysis and steam explosion occur simultaneously in the same process step. Applicant contends that the steam explosion time of 80-100 seconds in the present application has criticality and is a preferred steam explosion time. Applicant notes that the shortest steam explosion time taught by Huang is 120 seconds, which is already 1.2 times longer than the claimed time of 100 seconds. Applicant indicates that the pressure and time must act synergistically. While Huang discloses a pressure range of 0.3-1.5 MPa and a time range of 120-360 seconds, it does not teach the synergistic matching of a specific pressure and a specific time to achieve the target modification effect of the present application. However, the Office disagrees for the following reasons.
As noted in the above rejection, Huang teaches the pressure of the steam explosion is maintained for 120 to 360 seconds [0029]. This is near the claimed range of 80-100 seconds. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779. See MPEP 2144.05(I). Thus, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Huang by processing the sea rice bran within the claimed time because Huang teaches the time for processing under pressure is not particularly limited but can be set to the desired time [0030].
Huang also teaches a pressure range for the steam explosion process, wherein the pressure of the steam explosion is 0.3-1.5 MPa [0003], [0006], [0009]. This overlaps the claimed range of 1.2-1.6 MPa. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). Moreover, Zhang teaches a method for improving whole grain meal powder, where the whole grain can be rice that includes the bran (seed coat) [0002], [0006], [0007-0008], [0010]. Zhang discloses uniformly mixing the rice bran (whole grain) with water and a high-temperature resistant alpha-amylase before puffing [0007-0008], [0010]. It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Huang to incorporate the teachings of Zhang by mixing the alpha-amylase with the sea rice bran before performing steam explosion because this produces a powder that has the advantages of a uniform powder with good solubility, improved quality and promotes health, as recognized by Zhang [0016].
Therefore, as shown by the above paragraphs, Huang does recognize adjusting the pressure and the time. Huang also discusses in their disclosure that the process allows a person of ordinary skill to set a time and a pressure for the steam explosion [0030] and Huang in view of Zhang discloses adding an enzyme for a uniform powder with good solubility and improved quality (Zhang [0016]). In the rejection dated 05/05/2026, the prior art cited in the conclusion but not relied upon for the rejection, Wang et al., The Principle of Steam Explosion Technology and Its Application in Food Porcessing By-Products, evidences that the pressure and residence time are two factors that influence the effectiveness of steam explosion. Wang explains that the explosion pressure and residence time are regulated and adjusted based on the materials to be processed, e.g. rice bran and enzyme mixture (pg. 4, section 4 Factors Influencing the Effectiveness of Steam Explosion). Thus, it is recognized in the art and a person of ordinary skill in the art would be familiar with the concept of adjusting the time and pressure. Additionally, a person of ordinary skill would recognize that these two adjustable parameters work together in processing specific material, or in other words act synergistically together during processing of a specific mixture/ingredients.
Applicant argues, on pgs. 5-6, that water content control is the technical prerequisite for the synergistic effect of enzymatic hydrolysis and steam explosion. Applicant explains that in Comparative Example 2, shown on pg. 7 Table 1 of the instant specification, when the water was reduced to 3% from 9%, the soluble dietary fiber of the rice bran was reduced from 7.62%, as seen in Example 1, to 4.61%, as seen in Comparative Example 2. Applicant states that Huang does not mention water content or its role in steam explosion and that while Zhang relates to water addition adjustments, its purpose is to merely ensure pre-enzymatic hydrolysis is carried out with a very small amount of water. Applicant contends that Zhang does not teach the role of water content in steam explosion, nor relates water content to the improvement of glucose absorption capacity. Applicant concludes that Zhang does not teach the dual role of the claimed water content range of providing a moisture environment for enzymatic hydrolysis and satisfying the requirements of steam explosion processing. However, the Office disagrees for the following reasons.
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., water content control being a technical prerequisite for the synergistic effect of enzymatic hydrolysis and steam explosion or water contents role in the improvement of glucose absorption capacity) 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).
In response to applicant's argument that water content control is a technical prerequisite for the synergistic effect of enzymatic hydrolysis and steam explosion, and that water content has a role in the improvement of glucose absorption capacity, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
The office appreciates the effect water has on the content of soluble dietary fiber as shown in pg. 7 Table 1 of the instant specification. However, it is noted that Zhang does recognize that processing bran using the claimed amount of water and the claimed amount of enzyme does promote health. Additionally, even though Huang is silent on mixing with water and the amount of water, the invention of Huang is concerned with a preparation method of modified rice bran which can enhance the absorption capacity for glucose [0003].
Moreover, as shown in the rejection above, modified Huang in view of Zhang teaches the claimed amount of water and the claimed amount of enzyme. Zhang teaches the addition of water is 10-20% of the weight of the sea rice bran (whole grain; [0012]). This overlaps the claimed range for water of 9-16% w/w of the sea rice bran. See MPEP 2144.05(I). Zhang discloses a mixing ratio of the high-temperature resistant alpha-amylase to sea rice bran (whole grain) is 500-1500 U/g [0012]. The claimed range and Zhang’s range for the mixing ratio of alpha-amylase to sea rice bran touch and therefore, the claimed range would have been obvious per MPEP 2144.05(I). Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Huang to incorporate the teachings of Zhang by mixing the alpha-amylase with the sea rice bran at the ratio claimed and with the claimed amount of water before performing steam explosion because this produces a powder that has the advantages of a uniform powder with good solubility, improved quality and promotes health, as recognized by Zhang [0016].
Applicant argues, on pgs. 6-7, that the data found in pg. 7 Table 1 of the instant specification shows that enzymatic hydrolysis and steam explosion produce a significant synergistic effect. Applicant contends that such a synergistic effect cannot be achieved by the purely physical method of Huang, nor can it be achieved by adding the enzymatic hydrolysis solution of Zhang into the steam explosion process of Huang. However, the Office disagrees for the following reason.
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., significant synergistic effect of enzymatic hydrolysis and steam explosion) 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).
As discussed above, Huang is a preparation method of modified rice bran which can enhance the absorption capacity for glucose [0003]. The soluble dietary fiber content and the glucose absorption capacity of the modified rice bran produced by the method of modified Huang, is viewed as a property of the modified rice bran (sea rice puffing powder). Therefore, since modified Huang is a substantially identical method to the claimed method and produces a substantially identical sea rice puffing powder, it is considered to possess all the same properties, including the soluble dietary fiber content and the glucose absorption capacity, absent convincing arguments or evidence to the contrary. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (MPEP §2112.01 (I)).
In response to applicant's argument that enzymatic hydrolysis and steam explosion produce a significant synergistic effect, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
(II). The Combination of Huang and Zhang cannot lead to the technical solution of the present application, and the technical effects thereof cannot be reasonably expected.
Applicant argues, on pgs. 7-9, that Huang and Zhang lack motivation for combination. Applicant states that Huang discusses advantages to their method of low cost, low energy consumption and no pollution, while being easier than enzymatic hydrolysis. Applicant contends that Huang does not point out any defects or deficiencies that need to be solved by adding enzymes. Applicant argues that a person skilled in the art would have no motivation to abandon the physical methods of Huang and introduce the enzymatic hydrolysis solution of Zhang, which would increase complexity and cost of the process. Applicant concludes that a person skilled in the art has no motivation to modify Huang in view of Zhang, because such a modification would not make Huang “more satisfactory” for its intended purpose, but would introduce additional process steps and uncertainties. However, the Office disagrees for the following reasons.
In paragraph [0019] of Huang it states that the invention “has the advantages of high speed, low pollution… and easy fermentation and enzymatic hydrolysis.” This paragraph is taken to mean that it is easy to enzymatically hydrolyze the modified rice bran dietary fiber of Huang. Not, like the applicant suggests, that the method of Huang is easier than performing an enzymatic hydrolysis method on the rice bran.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it would have been obvious for one of ordinary skill in the art to have modified Huang to incorporate the teachings of Zhang by mixing the alpha-amylase with the sea rice bran at the ratio claimed and with the claimed amount of water before performing steam explosion because this produces a powder that has the advantages of a uniform powder with good solubility, improved quality and promotes health, as recognized by Zhang [0016].
It is noted that the intended purpose, or object of the invention of Huang “is to provide a preparation method of modified rice bran dietary fiber, which can improve the content of soluble dietary fiber in rice bran dietary fiber… and enhance the absorption capacity of dietary fiber for glucose” [0003]. The modifications of Huang in view of Zhang are viewed as furthering the intended purpose or object of the invention of Huang. The modifications would make “more satisfactory” for its intended purpose, not less.
Applicant argues, on pg. 9, that the secondary reference Zhang performs an independent pre-enzymatic hydrolysis before further processing. Zhang states the high-temperature resistant alpha-amylase cannot completely hydrolyze the starch during the extrusion puffing process. Applicant states that steam explosion is a rapid high-temperature and high-pressure process and that under such extreme conditions, the activity of the amylase is unstable, and whether it can exert an enzymatic hydrolysis effect to improve the efficacy of sea rice powder is unknown. Applicant contends Zhang’s technical solution does not contain any technical suggestion regarding enhancing the glucose absorption capacity of rice bran powder and that a person of ordinary skill would not reasonably expect that after introducing Zhang’s enzymatic hydrolysis solution into the steam explosion system of Huange, the enzyme could maintain activity and exert an effect under such extreme conditions, let alone expect the technical effects described in the instant application. However, the Office disagrees for the following reason.
The claims do not exclude any enzymatic hydrolysis steps or limit the amount of time that the mixing occurs when the enzyme and rice bran are mixed together. In the process of Zhang, the enzymatic hydrolysis step (pre-enzymolysis) occurs during the mixing step. Zhang states that alpha-amylase and water are uniformly mixed and then added to the whole grain in the form of spray. The spraying is carried out simultaneously with the stirring to ensure the ingredients are mixed well. Zhang then states that the stirring step is performed at the same time as the “pre-enzymolysis” step, at a temperature of 90-100°C for 15-30 minutes [0011-0013]. The instant specification does not state the amount of time they use to mix the alpha-amylase with the sea rice bran, or the amount of time to add water to adjust the water content, or the amount of time to fill the steam explosion machine and for the machine to reach the appropriate temperature and pressure. All of these steps take time and the enzyme hydrolysis performed by the alpha-amylase can be completed during these steps. The enzymatic hydrolysis in Zhang is essentially being completed during the mixing step of the water, alpha-amylase and the grain. While the instant specification doesn’t state the mixing time, Zhang does state the mixing time of between 15-30 minutes and mixing temperature, while giving the mixing step an additional name of “pre-enzymolysis” [0013].
Additionally, Zhang may not suggest enhancing glucose absorption capacity, but Zhang does state that the soluble dietary fiber content is increased [0010] and does give further motivation to a person of ordinary skill to combine its teachings of using a high temperature alpha-amylase with grain and water, before carrying out a puffing process. Thus, a person of ordinary skill in the art does have motivation to combine Huang with the teachings of Zhang to use the claimed amount of alpha-amylase and adding it to the rice bran before the steam explosion is performed.
Applicant argues, on pg. 10, what steps they believe a person of ordinary skill might expect when combining Huang in view of Zhang, specifically a stepwise process of “pre-enzymatic hydrolysis first, then steam explosion. Applicant contends that their process is a one-step process in which enzymatic hydrolysis and steam explosion are performed simultaneously, with the enzyme playing a role during the steam explosion process. Applicant argues that this simultaneous coupling process concept cannot be taught by the combination of Huang in view of Zhang. However, the Office disagrees for the following reasons.
Zhang teaches that “in the extrusion process, the material often quickly through the reaction chamber (ten seconds), in such a short period of time, coupled with the reaction chamber temperature, material viscosity, material shear stress, the impact of high temperature alpha-amylase does not completely decompose starch.” Zhang does not state that the alpha-amylase doesn’t have any effect when not given sufficient time to hydrolyze the starch, it states that it “does not completely decompose starch.” Meaning that it does decompose some starch in the short 10 second process, if not allowed the 15-30 minutes reaction time during the stirring process [0013]. No matter how many steps the claimed process is performed in, alpha-amylase will need time for the reaction to occur.
As shown by the method claims, the claimed method is not a “one-step process.” Claim 1 states that 1) alpha-amylase is mixed with the sea rice bran, 2) water is added to the mixture to adjust the water content, and 3) steam explosion processing is performed on the mixture. This is not a single step process but includes a step of mixing the ingredients, a step of adjusting the water, and finally a step of steam explosion processing. As stated in the above paragraphs, since the pre-enzymolysis step of Zhang occurs during the mixing step, even if the pre-enzymolysis step was used in the process of Huang in view of Zhang, modified Huang is still viewed as having substantially identical process steps to the claimed process steps.
Additionally, in response to applicant's argument that when incorporating the alpha-amylase of Zhang, a person of ordinary skill in the art would also incorporate the pre-enzymolysis step of Zhang, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant argues, on pgs. 11-12, that the combination of references cannot reasonably expect/achieve the synergistic effect of the present application. Applicant states that the claimed combination produces an unexpected result that exceeds the sum of the independent effects of each element, and as such the combination should not be deemed obvious. Applicant points to pg. 7 Table 1 in the instant specification, specifically noting Example 1 and comparative example 1, which have a 7.62% and 4.96% soluble dietary fiber content in the sea rice puffing powder, respectively; or as stated by the applicant “comparative data of Comparative Example 1 and Example 1 of the present application (SDF +53.6%, glucose absorption +67.3%) are direct evidence of such synergistic effect.” Applicant continues stating that introducing enzymatic hydrolysis into a steam explosion process in not predictable. Applicant argues that their technical features of the present application do not operate independently, but rather are interdependent and synergistic, noting that changing one parameter may destroy the balance of the entire system. However, the Office disagrees for the following reasons.
The combination of the alpha-amylase enzyme with the steam explosion processing is not viewed as producing unexpected results. In Table 1 of the instant specification, Comparative example 1 can be viewed as modified Huang, when Huang has been modified for the time of the steam explosion process, as discussed in the rejection above. Comparative example 1 has 4.96% soluble dietary fiber content in the sea rice puffing powder and is about 2.66% lower in soluble dietary fiber content than Example 1. However, when Huang is further modified and the teachings of Zhang are incorporated, by adding the alpha-amylase enzyme before the steam explosion process, a person of ordinary skill in the art would expect the percentage of soluble dietary fiber content to increase. Zhang states that it increases the amount of soluble dietary fiber content [0010] or in other words improves quality of the product and promotes health [0016]. Therefore, a person of ordinary skill in the art would expect that when modifying Huang by incorporating the teachings of Zhang by having the alpha-amylase as claimed, a further increase to the soluble dietary fiber content would be expected. A 2.66% increase in soluble dietary fiber content between one sample and another, when one of the samples has been treated with an additional ingredient that is known to increase the soluble dietary fiber content, isn’t unexpected. Thus, the combination of references would reasonably be expected to achieve the effect of the present application and is predictable, and the claimed combination is not viewed as producing unexpected result.
Additionally, the combination of modified Huang in view of Zhang does not change any of the parameters of the claimed system. Rather modified Huang is viewed as being substantially identical to the claimed method and producing substantially identical results. Thus, the parameters are within the claimed ranges and the system is viewed as in balance.
Applicant argues, on pgs. 12-15, that the present application achieves technical effects that neither Huang nor Zhang have achieved. Applicant discusses the processes of Huang and states that their claimed process, with the simultaneous coupling of enzymatic hydrolysis and steam explosion, has significant advantages over Huang and produces a product with higher soluble dietary fiber and glucose absorption capacity. Applicant then discusses Zhang, stating that Zhang does not disclose or suggest how to improve the glucose adsorption effect of rice bran powder but is concerned with hydrolyzing part of the insoluble starch in whole grains into small molecule dextrin, glucose, maltose and other reducing sugars. Applicant discusses how their invention increases the soluble dietary fiber content, which achieves the effect of improving the glucose absorption capacity of sea rice bran. Applicant concludes that even combining Huang and Zhang would not produce the simultaneous coupling effect of the present application. However, the Office disagrees for the following reasons.
In response to applicant's arguments against the references individually, in looking at the process of Huang individually and then at the process of Zhang individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant stated that Zhang is concerned with hydrolyzing part of the insoluble starch in whole grains into small molecule dextrin, glucose, maltose and other reducing sugars. Zhang also states that the hydrolysis also increases the soluble dietary fiber. Zhang paragraph [0010] recites, “the inventors found that by the step of solid-state pre-enzymolysis… the content of reducing sugars and soluble dietary fiber in the final whole meal is increased.” Thus, Zhang is also concerned with increasing the soluble dietary fiber content, which as applicant explains, achieves the effect of improving the glucose absorption capacity of the product.
As stated above, modified Huang is viewed as producing a substantially identical method to the claimed method, which produces a substantially identical sea rice bran. Thus, modified Huang is considered to produce the same or substantially identical effects as the present application, which would include the simultaneous coupling effect.
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 STEPHANIE GERLA whose telephone number is (571)270-0904. The examiner can normally be reached Mon.-Wed. and Fri. 7-12 pm; Th. 7-2pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S.R.G./Examiner, Art Unit 1791
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759
Prosecution Insights