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 .
The amendment filed March 5, 2026 is acknowledged. Claims 1-15 are pending in the application. Claims 8-15 are withdrawn from consideration (see below).
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7, in the reply filed on March 5, 2026 is acknowledged. Claims 8-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
Claim Objections
Claims 1, 6, and 7 are objected to because of the following informalities:
In claim 1 at line 2, it is suggested to insert “fresh cacao pod husk derived pectin” after “g” and before the comma “,”.
In claim 6 at line 6, it is recommended to insert a zero “0” after “4” and before the comma “,” (see claim 4, line 2 and the recitation of “at least 40”).
In claim 7 at the end of line 3, it is recommended to insert “of fresh cacao pod husk derived pectin” after “extract” and before the semi-colon “;”.
In claim 7 at line 4, it is recommended to insert “of fresh cacao pod husk derived pectin” after “extract” and before the semi-colon “;”.
In claim 7 at the end of line 5, it is recommended to insert “of fresh cacao pod husk derived pectin” after “matter”.
Appropriate correction is required.
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 2 and 6 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 2 recites “the dry extract” at line 2, and this claim depends upon claim 1. This recitation lacks antecedent basis as there is no recitation of a dry extract in claim 1. Therefore, the scope of claim 2 is indefinite.
For the purpose of the examination, the recitation of “of the dry extract” at line 2 of claim 2 (emphasis added) is interpreted as “of dry extract of fresh cacao pod husk derived pectin” (emphasis added).
Claim 6 recites “the following characteristics” at line 2, and this claim depends upon claim 1. This recitation in claim 6 lacks antecedent basis as there is no previous recitation of following characteristics. Therefore, the scope of claim 6 is indefinite.
For the purpose of the examination, the recitation of “having two or more of the following characteristics” at line 2 of claim 6 (emphasis added) is interpreted as “having two or more of:”.
Claim 6 also recites “the dry extract” at line 3, and this claim depends upon claim 1. This recitation lacks antecedent basis as there is no recitation of a dry extract in claim 1. Therefore, the scope of claim 6 is indefinite.
For the purpose of the examination, the recitation of “of the dry extract” at line 3 of claim 6 (emphasis added) is interpreted as “of dry extract of fresh cacao pod husk derived pectin” (emphasis added).
Claim Rejections - 35 USC § 102/103
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.
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.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nakamura et al. US 20100040734 (hereinafter “Nakamura”).
With respect to claim 1 and regarding the recitation of fresh cacao pod husk derived pectin, wherein the fresh cacao pod husk has a moisture content above 50 wt%, Nakamura teaches a cacao pod husk derived pectin. In the examples, 500 g, 50 parts, and 1 kg of cacao husk raw material was dispersed in 4000 g, 400 parts, and 8 kg of water, respectively (paragraphs [0037], [0047], [0049], [0057], [0062], [0068], and [0088]).
Regarding the recitation of having a water holding capacity of at least 20.0 g water/g in claim 1, it is noted that this recitation relates to a property of the claimed fresh cacao pod husk derived pectin. Where Applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102 and 103 rejection is appropriate for these types of claims as well as for composition claims.
Absent any clear and convincing evidence to the contrary, the product would naturally display the claimed water holding capacity since Nakamura teaches a product that is obtained from fresh cacao pod husks and identical to the presently claimed product as addressed above, and Nakamura teaches the cacao pod husk derived pectin has a wide variety of properties, has improved handleability, and may be used as concentration enhancers (paragraphs [0029], [0034], and [0039]). As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the processing parameters through routine experimentation in Nakamura with the expectation of successfully preparing a functional product with a desirable holding capacity. One of ordinary skill in the art would have been motivated to do so because Nakamura teaches the prepared product from cacao pod husks has a wide variety of properties and the conditions of the process, such as pH and temperature, may be adjusted to obtain a product that exhibits the expected function (paragraphs [0037] and [0047]-[0052]). There would have been a reasonable expectation of success. “[W]here 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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II).
With respect to claim 2, Nakamura is relied upon for the teaching of the product of claim 1 as addressed above.
Regarding the claim language of having a molecular weight >200 kDa for at least 40% of dry extract of fresh cacao pod husk derived pectin in claim 2, Nakamura teaches the product has a molecular weight of 215,000 (moisture content of 5.3%), 240,000 (moisture content of 5.5%), and 248,000 (moisture content of 5.0%) Da in the examples (P6, Table 4).
With respect to claim 3, Nakamura is relied upon for the teaching of the product of claim 1 as addressed above.
Regarding the recitation of having a storage modulus of 70 to 120 Pa measured in an emulsion consisting of 15 g pectin, 200 g oil, 285 g water at 20⁰C and a strain amplitude of 1% in claim 3, it is noted that this recitation relates to a property of the claimed fresh cacao pod husk derived pectin. Where Applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102 and 103 rejection is appropriate for these types of claims as well as for composition claims.
Absent any clear and convincing evidence to the contrary, the product would naturally display the claimed storage modulus and strain amplitude since Nakamura teaches a product that is obtained from fresh cacao pod husks and identical to the presently claimed product as addressed above in claim 1, and Nakamura teaches the cacao pod husk derived pectin has a wide variety of properties, has improved handleability, prevents gradual textural alteration of foodstuff, and improves shelf-life (paragraphs [0029], [0034], [0035], and [0039]-[0040]). As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the processing parameters through routine experimentation in Nakamura with the expectation of successfully preparing a functional product with a desirable storage modulus and strain amplitude. One of ordinary skill in the art would have been motivated to do so because Nakamura teaches the prepared product from cacao pod husks has a wide variety of properties and the conditions of the process, such as pH and temperature, may be adjusted to obtain a product that exhibits the expected function (paragraphs [0037] and [0047]-[0052]). There would have been a reasonable expectation of success. “[W]here 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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II).
With respect to claim 4, Nakamura is relied upon for the teaching of the product of claim 1 as addressed above.
Regarding the recitation of having a luminosity parameter L of at least 40 in claim 4, it is noted that this recitation relates to a property of the claimed fresh cacao pod husk derived pectin. Where Applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102 and 103 rejection is appropriate for these types of claims as well as for composition claims.
Absent any clear and convincing evidence to the contrary, the product would naturally display the claimed luminosity since Nakamura teaches a product that is obtained from fresh cacao pod husks and identical to the presently claimed product as addressed above in claim 1, and Nakamura teaches the cacao pod husk derived pectin has a wide variety of properties (paragraphs [0029], [0034], [0035], and [0039]). As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the processing parameters through routine experimentation in Nakamura with the expectation of successfully preparing a functional product with a desirable luminosity. One of ordinary skill in the art would have been motivated to do so because Nakamura teaches the prepared product from cacao pod husks has a wide variety of properties and the conditions of the process, such as pH and temperature, may be adjusted to obtain a product that exhibits the expected function such as color (paragraphs [0037] and [0047]-[0052]). There would have been a reasonable expectation of success. “[W]here 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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II).
With respect to claim 5, Nakamura is relied upon for the teaching of the product of claim 1 as addressed above.
Regarding the recitation of having a viscosity of 4000 to 7000 cP at 20⁰C in a 5% mixture with water at a shear rate of 1/s in claim 5, it is noted that this recitation relates to a property of the claimed fresh cacao pod husk derived pectin. Where Applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102 and 103 rejection is appropriate for these types of claims as well as for composition claims.
Absent any clear and convincing evidence to the contrary, the product would naturally display the claimed viscosity since Nakamura teaches a product that is obtained from fresh cacao pod husks and identical to the presently claimed product as addressed above in claim 1, and Nakamura teaches the cacao pod husk derived pectin has a wide variety of properties as well as there is no particular restriction on the viscosity of the product (paragraphs [0029], [0034], [0035], [0039], and [0056]). As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the processing parameters through routine experimentation in Nakamura with the expectation of successfully preparing a functional product with a desirable viscosity. One of ordinary skill in the art would have been motivated to do so because Nakamura teaches the prepared product from cacao pod husks has a wide variety of properties, the conditions of the process, such as pH and temperature, may be adjusted to obtain a product that exhibits the expected function, and there is no particular restriction on the viscosity of the product (paragraphs [0037], [0047]-[0052], and [0056]). There would have been a reasonable expectation of success. “[W]here 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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II).
With respect to claim 6, Nakamura is relied upon for the teaching of the product of claim 1 as addressed above.
Regarding the claim language of having two of more of: (i) a molecular weight > 200 kDa for at least 40 wt% of dry extract of fresh cacao pod husk derived pectin; (ii) a storage modulus of 70 to 120 Pa measured in an emulsion consisting of 15 g pectin, 200 g oil, 285 g water at 20⁰C and a strain amplitude of 1%, (iii) a luminosity parameter L of at least 40, (iv) a viscosity of 4000 to 7000 cP at 20⁰C in a 5% mixture with water at a shear rate of 1/s in claim 6, it is noted that this recitation relates to properties of the claimed fresh cacao pod husk derived pectin. Where Applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102 and 103 rejection is appropriate for these types of claims as well as for composition claims.
Absent any clear and convincing evidence to the contrary, the product would naturally display the claimed molecular weight, storage modulus, strain amplitude, luminosity, and viscosity since Nakamura teaches a product that is obtained from fresh cacao pod husks and identical to the presently claimed product as addressed above in claim 1, and Nakamura teaches the cacao pod husk derived pectin has a wide variety of properties, has no restriction on its viscosity, has improved handleability, prevents gradual textural alteration of foodstuff, and improves shelf-life (paragraphs [0029], [0034], [0035], [0039]-[0040], [0056]). Nakamura also teaches the product has a molecular weight of 215,000 (moisture content of 5.3%), 240,000 (moisture content of 5.5%), and 248,000 (moisture content of 5.0%) Da in the examples (P6, Table 4). As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the processing parameters through routine experimentation in Nakamura with the expectation of successfully preparing a functional product with a desirable molecular weight, storage modulus, strain amplitude, luminosity, and viscosity. One of ordinary skill in the art would have been motivated to do so because Nakamura teaches the prepared product from cacao pod husks has a wide variety of properties, there is no particular restriction on the viscosity or molecular weight of the product, and the conditions of the process, such as pH and temperature, may be adjusted to obtain a product that exhibits the expected function, such as color and viscosity (paragraphs [0037], [0047]-[0052], [0054], and [0056]). There would have been a reasonable expectation of success. “[W]here 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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II).
With respect to claim 7, Nakamura is relied upon for the teaching of the product of claim 1 as addressed above.
Regarding the recitation of having: a degree of acetylation of 30 to 50 wt% of dry extract; a degree of methylation of 10 to 30 wt% of dry extract; and a galacturonic acid content of at least 40 wt% of ash-free dry matter in claim 7, it is noted that this recitation relates to a properties of the claimed fresh cacao pod husk derived pectin. Where Applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102 and 103 rejection is appropriate for these types of claims as well as for composition claims.
Absent any clear and convincing evidence to the contrary, the product would naturally display the claimed water holding capacity since Nakamura teaches a product that is obtained from fresh cacao pod husks and identical to the presently claimed product as addressed above in claim 1, and Nakamura teaches the cacao pod husk derived pectin has a wide variety of properties and includes galacturonic acid (paragraphs [0029], [0034], [0039], and [0055]). As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the processing parameters through routine experimentation in Nakamura with the expectation of successfully preparing a functional product with a desirable degree of acetylation, degree of methylation, and galacturonic acid content. One of ordinary skill in the art would have been motivated to do so because Nakamura teaches the prepared product from cacao pod husks has a wide variety of properties and the conditions of the process, such as pH and temperature, may be adjusted to obtain a product that exhibits the expected function, such as desired galacturonic acid and galacturonic acid methyl ester content (paragraphs [0037] and [0047]-[0052]). There would have been a reasonable expectation of success. “[W]here 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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TYNESHA L. MCCLAIN whose telephone number is (571)270-1153. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at 571-272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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