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 .
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 XXX 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.
Regarding claim 1, the recitation of step c. “leaving the pieces for 60-500 seconds to release a bitter tasting exudate and yielding debittered pieces” renders the claim indefinite. It is not clear where the pieces are left. Are the pieces left on a table under ambient conditions or in a bath of water?
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance:
- claim 3 recites the broad recitation “thickness of the pieces ranges between 2.5 and 7.5 cm”, and the claim also recites “preferably between 3 and 7 cm” and “more preferably between 3.5 and 6.5 cm” which are the narrower statements of the range/limitation.
- claim 4 recites the broad recitation “wherein at least 80 wt% of the pieces have a thickness between 2.5 and 7.5 cm”, and the claim also recites “more preferably between 3 and 6.5 pr between 3.5 and 6 cm which is the narrower statement of the range/limitation.
- claim 6 recites the broad recitation “wherein the amount of bitter components in the washed pieces is preferably less than 0.12 wt%”, and the claim also recites “preferably less than 0.05 wt%” , “less than 0.03 wt%” and “most preferably less than 0.025 wt%” which are the narrower statements of the range/limitation.
-claim 8 recites the broad recitation “the heat treatment in step f is carried out such that the temperature of the particles ranges between 47 and 90⁰C”, and the claim also recites “more preferably between 50 and 58⁰C” which is the narrower statement of the range/limitation.
- claim 9 recites the broad recitation “wherein the particles have a particle size of at least 1.5 and less than 10 mm” and the claim also recites “preferably a particle size between 1.7 and 8 mm” which is the narrower statement of the range/limitation.
-claim 14 recites the broad limitation “wherein the thickness of the pieces ranges between 2,5 and 7.5 cm” and the claim also recites “preferably between 3 and 7 cm” and “more preferably between 3.5 and 6.5 cm” which are the narrower statements of the range/limitation.
-claim 15 recites the broad limitation ““wherein the amount of bitter components in the washed pieces is preferably less than 0.12 wt%”, and the claim also recites “preferably less than 0.05 wt%” , “less than 0.03 wt%” and “most preferably less than 0.025 wt%” which are the narrower statements of the range/limitation.
-claim 16 recites the broad limitation “wherein the heat treatment in step f is carried out such that the temperature of the particles arrives at a temperature between 45 and 95⁰C” and the claim also recites “wherein the heat treatment in step f is carried out such that the temperature of the particles ranges between 47 and 90⁰C” and “more preferably between 50 and 88⁰C” which are the narrower statements of the range/limitation.
-claim 17 recites the broad limitation “wherein the particles have a particle size of at least 1.5 and less than 10 mm” and the claim also recites “preferably a particle size between 1.6 mm and 8 mm” which is the narrower statement of the range/limitation.
The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claims 6 and 15, the recitation “wherein the amount of the bitter components in the washed pieces is preferably less than 0.12 wt%” renders the claim indefinite. It is not clear if the bitter components must be less than 0.12 wt% in the washed pieces or it is just preferred.
Regarding claim 14, the recitations “wherein at least 80 wt% of the pieces have a thickness between 2.5 and 7 cm, more preferably between 3 and 6.5 or between 3.5 and 6 cm renders the claim indefinite. It is not clear if the pieces could (preferred) have a thickness of between 3 and 6.5 cm or if Applicant’s intend to claimed is between 2.5 and 7 cm, between 3 and 6.5 cm or between 3.5 and 6 cm.
Regarding claim 18, the recitation “wherein the dried chicory particles have a residual water content of less than 10 wt% water” and “wherein the dried chicory particles have a residual water content between 5 and 8 wt%” renders the claim indefinite. It is not clear what water content the dried chicory particles must have to meet the limitations of claim 18.
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.
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.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kaper (WO 2014/172486 A1- cited on IDS filed May 7, 2024).
Regarding claims 1-4, 9, 14 and 15, Kaper discloses a method of manufacturing a high fiber chicory root product comprising the steps of: (a) obtaining chicory root ([0037]); (b) wounding (i.e., slicing) the chicory root ([0043]); (b)waiting 1 to 45 minutes; (c) rinsing the chicory root with water wherein the water includes an antioxidant and is used to heat the chicory root to a temperature of 40⁰C or less (wherein the steps of bathing, dipping or rinsing and wounding are conducted in any order; wherein the temperature may be less than any one of the foregoing values) (d) drying the sliced and rinsed chicory root by hot air at a temperature of 50⁰ -100⁰C; and (e) griding and/or milling the dried chicory root slices to produce a fiber rich powder (([0018]-[0020], [0039], [0042], [0045]-[0046], [0060], Fig. 2, 4 and 6).
While Kaper discloses reducing the size of the chicory root slices after drying, selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results (MPEP §2144.04 IV C). It would have been obvious to one of ordinary skill to subject the reduced sized chicory root slices to drying with 10 minutes of grinding and/or milling to avoid oxidation and bacterial contamination of the chicory before the moisture is removed. Moreover, one of ordinary skill in the art would have been motivated to make the process continuous by drying immediately after reducing the size of the chicory root pieces.
While Kaper discloses slicing the chicory root and milling the dried slices to produce a fiber rich powder (i.e., particles), the reference is silent with respect to the thickness of the slices or the size of the particles. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the present invention to have (a) sliced the chicory root into any size thickness to effectively remove the bitter components and efficiently dry the slices; and (b) milled the slices into desired particles sizes based upon the intended use of the high fiber product.
Note, the present specification defines a heating step as the temperature when the solid chicory roots/pieces reaches a temperature of more than 44⁰C (p. 2/L16-20). A process in the prior art heating the chicory root to less than 44⁰C is not considered a heating step.
Regarding claims 5 and 13, Kaper discloses all of the claim limitations as set forth above. Kaper discloses the antioxidant in the rinse water is ascorbic acid and/or citric acid ([0039]).
Regarding claim 6, Kaper discloses all of the claim limitations as set forth above. While Kaper discloses debittering the chicory root, the reference does not explicitly disclose the bitter component content.
Given Kaper discloses a method of debittering the chicory root by rinsing wounded (i.e., sliced) chicory root with water comprising ascorbic and/or citric acid, a method substantially similar to the claimed method, inherently the fiber rich powder of Kaper would comprises less than 0.05 wt% bitter component content.
Regarding claim 7, Kaper discloses all of the claim limitations as set forth above. Kaper disclose drying the chicory root in hot air at a temperature of 50⁰ to 100⁰C ([0046]) to produce a fiber rich powder, inherently the pieces of chicory root would reach a temperature between 45⁰ and 95⁰C.
Regarding claims 8, 10, 16 and 17, Kaper discloses all of the claim limitations as set forth above. Kaper disclose drying the chicory root in hot air to remove moisture ([0046]). Kaper disclose drying in hot air at a temperature of 50⁰ to 100⁰C ([0046]) to produce a fiber rich powder, inherently the pieces of chicory root would reach a temperature between 45⁰ and 95⁰C.
Kaper is silent with respect to time. However, one of ordinary skill in the art prior to the effective filing date of the present application would have adjusted, in routine processing, the temperature and time of drying the chicory root to obtain a desired level of moisture.
While Kaper discloses milling the dried slices to produce a fiber rich powder (i.e., particles), the reference is silent with respect to the size of the particles. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the present invention to have (milled the slices into desired particles sizes based upon the intended use of the high fiber product.
Regarding claims 11 and 12, Kaper discloses all of the claim limitations as set forth above. While Kaper discloses debittering and drying the chicory root, the reference does not explicitly disclose the residual water content or the bitter component content.
Given Kaper discloses a method of debittering the chicory root by rinsing wounded (i.e., sliced) chicory root with water comprising ascorbic and/or citric acid, a method substantially similar to the claimed method, inherently the fiber rich powder of Kaper would comprises less than 0.05 wt% bitter component content.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the present application to have adjusted the temperature and time of the drying process to obtain a fiber rich product with a desired residual moisture content.
Regarding claim 18, Kaper discloses all of the claim limitations as set forth above. While Kaper discloses debittering and drying the chicory root, the reference does not explicitly disclose the residual water content or the bitter component content.
Given Kaper discloses a method of debittering the chicory root by rinsing wounded (i.e., sliced) chicory root with water comprising ascorbic and/or citric acid, a method substantially similar to the claimed method, inherently the fiber rich powder of Kaper would comprises less than 0.05 wt% bitter component content.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the present application to have adjusted the temperature and time of the drying process to obtain a fiber rich product with a desired residual moisture content.
Regarding claim 19, Kaper discloses all of the claim limitations as set forth above. Kaper discloses the antioxidant is ascorbic acid and/or citric acid ([0039]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A GWARTNEY whose telephone number is (571)270-3874. The examiner can normally be reached M-F: 9 a.m. - 5 p.m. EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ELIZABETH A. GWARTNEY
Primary Examiner
Art Unit 1759
/ELIZABETH GWARTNEY/ Primary Examiner, Art Unit 1759
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