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 § 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-21 are rejected under 35 USC §103. This rejection is set forth in the prior Office action mailed on December 30, 2025. Note that the reference still reads on the newly added claims, claims; see reason(s) in the response to arguments below.
Response to Arguments
Applicant's arguments filed on June 30, 2026, with regard to claims 1-21 have been fully considered but they are not persuasive.
Applicants argue that the cited reference does not explicitly teach 1) the blend of oxidated starch and dextrin, but a list of starches that can be used and that therefore, 2) the combination of such starches amounts to hindsight gleaned from the application/claims and 3) applicants also argue unexpected results in the use of the blend, the arguments are not persuasive for the following reasons:
With regard to 1), it was indicated in the previous office action that it is Prima facie obvious to combine 2 compositions each of which is taught by the prior art for same purpose to form a third composition for the same purpose. In re Kerkhoven, 205 USPQ 1079; In re Pintea, USPQ 801. Therefore, a blend of any combination of the starches on the list is within the levels of ordinary skill in the art.
With regard to 2), in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
With Regard to 3), while the examiner recognizes the unexpected results for ratio between 10/90-80/20, the claims are not commensurable in scope with the unexpected results, since it shown that such results are obtained by a specific ratio range of starch and dextrin and claims 1-14 and 19-21 recite ranges outside the range of the unexpected results, i.e., there is not enough data to support 5/95 through 95/5, since as shown above the data support 10/90-80/20. Note also that claims 15-18 are devoid of any ratio/amount. Applicants have not shown that any amount or ratio of the starches produce the same effect, i.e. the unexpected results. Applicants must also explain why the showing is commensurate in scope with the claimed subject matter. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). Applicants have not directed us to evidence that establishes why the relatively few examples presented in the specification would have been representative of the scope of the claimed invention. Applicants have not explained why the results achieved in the specification would have been unexpected by one of ordinary skill in the art, see In re Freeman, 474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972). This is especially significant in this case where the cited reference discloses the preparation of similar compositions that have related properties.
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 JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached MONDAY- FRIDAY 11:30 PM- 9:00 PM.
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, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
JAF
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