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 .
This office action is in response to amendment filed on 7/15/26. Claims 1,4,5-11 are amended. Claims 1-11 are pending.
The previous 112 second paragraph rejection is withdrawn due to the amendment. The amendment necessitates new 112 rejections.
Claim Rejections - 35 USC § 112
Claims 6,9 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The temperature ranges and the times in claim 6 is not supported by the original disclosure. The claim recites “ adding a saccharifying enzyme and heating to 55-65 degrees C for 8-40 hours”. The temperature and time ranges are not disclosed. Applicant points to examples 1-3. However, the examples disclose specific 1 temperature and 1 time; there is no disclosure of ranges. Examples 1-2 discloses 60 degrees C for 10 hours and example 3 discloses 60 degrees C for 36 hours. The only temperature disclosed is 60 degrees and the hours are 10 and 36. The disclosure of two time points and 1 temperature does not support the ranges now claimed. There is no disclosure to show that applicant is possession of method at temperature 55, 56, 65 etc.. or times of 8, 15,16 etc.. The same problem is noted for “ adding activated carbon at 75-85 degrees C for 20-40 minutes. All the examples discloses 80 degrees for 30 minutes; this does not support the entire ranges of temperature and time claimed. In claim 9, the limitation of “ microwave vacuum drying equipment at a temperature below 60 degrees C” is not disclosed. Examples 1-3 disclose vacuum drying but there is no disclosure of the temperature of the vacuum drying.
Claims 1,10 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.
In claim 1: In step S3, the limitation of light phase and heavy phase is vague and indefinite because the term light and heavy are relative; it’s unclear what is considered as light or heavy. The claim recites light phase is a mixture of protein and starch and heavy phase is a mixture of protein and starch. Both of the phases contain the same components. The limitation “ the other part of the liquid phase is used for preparing the syrup” is vague and indefinite because it’s unclear what syrup the claim is referring to. The ” the syrup” seems to point to the syrup prepared from the light phase but that is unclear because that syrup is recited to be prepared from the light phase. In step S4, the limitation “ hydrolyzing residual starch present in the protein rich fraction” is vague and indefinite because it’s unclear what this fraction is; what is considered protein rich fraction because both the light phase and heavy phase contains protein.
In claim 10, the limitation “ protein rich fraction” has the same problem as in claim 1. Claim 10 is further vague and indefinite because it’s not clear what is intended. Claim 10 recites “ the protein rich fraction in the light phase is subjected to additional purification by diluting the light phase”. But, this step is already carried out as set forth in claim 1 and there is no recitation in claim 1 that only part of the light phase is used. The limitation “ performing centrifugation to separate the heavy phase and the light phase” is vague and indefinite. It’s unclear what is intended. The use of “ the” refers back to the light phase and heavy of claim 1 but the light phase and heavy phase in claim 1 are obtained by the slurry, not from additional purification of the light phase.
Allowable Subject Matter
Claims 1-11 are allowable over prior art because applicant’s argument is persuasive in that the prior art does not disclose or suggest all the steps recited in claim 1.
Response to Arguments
Applicant’s arguments filed 7/15/26 with respect to 1-11 have been fully considered and are persuasive. The 103 rejection has been withdrawn.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 LIEN THUY TRAN whose telephone number is (571)272-1408. The examiner can normally be reached Monday-Thursday.
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September 24, 2026
/LIEN T TRAN/Primary Examiner, Art Unit 1793
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