DETAILED ACTION
Status of the Application
Receipt is acknowledged of Applicants’ response to the Requirement for Restriction, filed 27 August 2026, in the matter of Application N° 18/759,542. Said documents have been entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
No additions, amendments, or cancellations have been made to the claims filed 16 October 2024. No new matter has been added.
Applicants’ election of Group I (claims 1-15, 18, and 19), without traverse, is acknowledged.
Applicants’ election is made FINAL. The claims of Group II (claims 20 and 21) are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim. Applicants timely traversed the restriction requirement between the composition and methods.
Thus, claims 1-15, 18, and 19 are presented and represent all claims currently under consideration.
Information Disclosure Statement
One Information Disclosure Statement (IDS) filed 28 June 2024 is acknowledged and has been considered.
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 3-7 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.
The claims, as currently presented, each recite the transitional phrases “comprises” and “consists of” as alternatives.
Herein, for the purposes of consideration on the merits, the Examiner will interpret the claims as reciting “comprising”.
However, the claims are also rendered indefinite since the two transitional phrases are on the opposite ends of the spectrum in terms of scope. It is thus unclear what scope of composition is being recited by each of the claims. See MPEP §2111.03.
Claim Rejections - 35 USC §102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4-10, 18 and 23 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Huynh et al. (US Pre-Grant Publication Nº 2008/0160084 A1; ISR/IDS reference of record).
The instantly claimed invention is directed to an opacity-modifying agent in dry particulate form comprising a calcium salt encapsulated in a water-insoluble protein matrix and wherein the opacity of the encapsulated calcium salt is greater than that of the unencapsulated salt.
The claim additionally recites that the composition is formed via extrusion encapsulation. The Examiner submits that this limitation is directed to a process by which the composition is made rather than the composition itself. See MPEP §2113. As such, the limitation is not considered to contribute to the overall patentability of the claimed composition.
Additionally, the claim is noted as reciting both the transitional phrases “comprising” and “consisting essentially of” in the alternative. Unlike the above opposing transitional phrases, the Examiner here broadly and reasonably interprets “consisting essentially of” as “comprising” as discussed by MPEP §2111.03(III).
Therein, MPEP §2111.03(III) states that “[t]he transitional phrase ‘consisting essentially of’ limits the scope of a claim to the specified materials or steps ‘and those that do not materially affect the basic and novel characteristic(s)’ of the claimed invention.” The passage also states that “For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, ‘consisting essentially of’ will be construed as equivalent to ‘comprising.’”
Applicants’ use of the term ‘consisting essentially of’ is noted as stating that “in the context of opacity modifying agents refers to the principal ingredients in the opacity modifying agents that provide the main functionality and utility of the agents as an opacifiers and/or whitening agents, but does not exclude the inclusion of other components (e.g., additives, stabilizers, preservatives) in lesser relative quantities so long as the other components do not abrogate the functionality imparted by the principal ingredients.”
Thus, as Applicants’ definition fails to define what is included or excluded by ‘consisting essentially of’, the term is broadly and reasonably interpreted as carrying the definition of “comprising”.
Huynh discloses a dry particulate encapsulation composition comprising a water-insoluble matrix comprising at least 70% by weight of proteins and an encapsulate (see e.g., claim 1). Said encapsulate is further defined as being a coloring agent such as a flavonoid (see e.g., claims 11-14). The composition is further taught as comprising a calcium salt (see e.g., claim 35). The calcium salt is further defined as being calcium chloride. See ¶[0040]. Claim 35 and ¶[0040] also indicate that the addition of calcium salt (i.e., chloride salt) changes the color of the flavonoid. Additionally, since the calcium slat is encapsulated in the practiced invention by the water-insoluble protein matrix, the Examiner submits that the opacity of the particulate composition is greater since the calcium salt is not able to be dissolved in an aqueous environment.
Claim 5 discloses that the protein matrix comprises soy protein isolate in an amount greater than 87% by weight of the matrix component. Claim 4 discloses that the water-insoluble matrix is a rice protein concentrate with a protein content greater than about 77% by weight of the matrix.
The foregoing is considered to teach the limitations recited by instant claims 1, 2, and 8-10.
Regarding the limitations recited by instant claims 8 and 10, the Examiner submits that the compositional merits recited by claim 1 are anticipated by the reference. As neither claims 8 nor 10 recite any additional compositional limitations, these claims are similarly considered to be met. Following on the definition provided by the instant specification for claim 10, the Examiner observes that this is directed at the rice protein option for the matrix, a limitation which is also shown to be met above.
Regarding the limitations recited by claims 8 and 9, the Examiner understands from the instant specification that Applicants define such water insoluble proteins as soy protein extract and rice protein extract as being definitive of the properties that are recited by the claims. Thus, where those defining proteins are disclosed in the prior art, the Examiner submits the recited properties are also met. See MPEP §2112.01(I) and (II), and §2173.05(g).
Paragraph [0122] and claim 37 disclose that the particles of the practiced compositions will have an average particle size of about 20 microns, thereby meeting the limitations recited by instant claim 15.
Claims 45 and 46 are considered to meet the limitations recited by instant claim 23. See also ¶[0016].
The limitations recited by claim 18 recite a method for increasing the opacity of a calcium salt comprising encapsulating said salt in a water-insoluble matrix via extrusion encapsulation. Claims 36-39 disclose that the practiced particulate composition is produced via extrusion. As established above, the resulting composition is the encapsulation of compounds such as calcium chloride within a water-insoluble protein matrix.
The reference is thus considered to meet each of the instantly claimed limitations.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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. Applicants are 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 3, 11-15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Huynh et al. (US Pre-Grant Publication Nº 2008/0160084 A1; of record) with respect to claims 1 and 18, further in view of Riziq et al. (USPN 11,446,327 B2).
The limitations recited by instant claims 1, 2, 4-10, 18 and 23 are discussed above.
Huynh discloses a dry particulate encapsulation composition comprising a water-insoluble matrix comprising at least 70% by weight of proteins and an encapsulate (see e.g., claim 1). Said encapsulate is further defined as being a coloring agent such as a flavonoid (see e.g., claims 11-14). The composition is further taught as comprising a calcium salt (see e.g., claim 35). The calcium salt is further defined as being calcium chloride. See ¶[0040]. Claim 35 and ¶[0040] also indicate that the addition of calcium salt (i.e., chloride salt) changes the color of the flavonoid. Additionally, since the calcium slat is encapsulated in the practiced invention by the water-insoluble protein matrix, the Examiner submits that the opacity of the particulate composition is greater since the calcium salt is not able to be dissolved in an aqueous environment.
Claim 5 discloses that the protein matrix comprises soy protein isolate in an amount greater than 87% by weight of the matrix component. Claim 4 discloses that the water-insoluble matrix is a rice protein concentrate with a protein content greater than about 77% by weight of the matrix.
The foregoing is considered to teach the limitations recited by instant claims 1, 2, and 8-10.
Regarding the limitations recited by instant claims 8 and 10, the Examiner submits that the compositional merits recited by claim 1 are anticipated by the reference. As neither claims 8 nor 10 recite any additional compositional limitations, these claims are similarly considered to be met. Following on the definition provided by the instant specification for claim 10, the Examiner observes that this is directed at the rice protein option for the matrix, a limitation which is also shown to be met above.
Regarding the limitations recited by claims 8 and 9, the Examiner understands from the instant specification that Applicants define such water insoluble proteins as soy protein extract and rice protein extract as being definitive of the properties that are recited by the claims. Thus, where those defining proteins are disclosed in the prior art, the Examiner submits the recited properties are also met. See MPEP §2112.01(I) and (II), and §2173.05(g).
Instant claim 3 recites that the calcium salt of claim 1 is calcium carbonate.
Huynh is noted as broadly teaching that its dry particulate encapsulation composition will comprise a calcium salt, and further exemplifies calcium chloride. It does not, however, expressly teach calcium carbonate as a species of calcium salt.
Riziq is considered to supplement the teachings of Huynh by disclosing the formation of a plurality of solid particles of encapsulated amorphous calcium carbonate (see e.g., claim 1). Like the particulate composition of Huynh, Riziq discloses using the particles in similar downstream applications such as food, cosmetics, or personal care compositions (see col. 7, lines 41-47).
The encapsulating matrix of Riziq’s particles is taught as further comprising such compounds as natural resins and proteins and they may include soy proteins (see e.g., col. 14, lines 61-65). The same passage also discloses that the amount of protein in the encapsulating particles may comprise between about 5-90 wt% protein.
Based on the foregoing teachings of Huynh and Riziq, the Examiner advances that a person of ordinary skill in the art would have had a reasonable expectation of achieving the instantly claimed invention composition of claim 3. Huynh leads the suggestion disclosing more broadly that a calcium salt is encapsulated within the protein matrix material of its practiced particles. While it suggests that other salts may be used, it does not expressly disclose other species as instantly claimed. Riziq bridges this gap in teaching disclosing a similar embodiment of solid particles that encapsulate calcium carbonate. The encapsulating material is further taught and suggested as containing a high percentage of protein such as soy protein.
Therefore, the invention of claim 3 as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
Paragraph [0122] and claim 37 disclose that the particles of the practiced compositions will have an average particle size of about 20 microns, thereby meeting the limitations recited by instant claim 15.
Claims 45 and 46 are considered to meet the limitations recited by instant claim 23. See also ¶[0016].
The limitations recited by claim 18 recite a method for increasing the opacity of a calcium salt comprising encapsulating said salt in a water-insoluble matrix via extrusion encapsulation. Claims 36-39 disclose that the practiced particulate composition is produced via extrusion. As established above, the resulting composition is the encapsulation of compounds such as calcium chloride within a water-insoluble protein matrix.
The limitations recited by claims 11-14 are directed to percent ranges for the particles in terms of the amount of calcium salt versus the amount of water-insoluble protein matrix.
Huynh discloses that the amount of water-insoluble matrix comprises at least 70% by weight of proteins (see e.g., claim 1). Such is considered to meet the protein concentration limitations recited by instant claims 11-14. The claim is also noted as disclosing that the resulting moisture content of the particles will range from about 5-10% by weight of the matrix.
That leaves about 20-25% by weight of the matrix for the remaining encapsulate. Said encapsulates are discussed above as being coloring agents such as calcium salts.
What this is conveys to the ordinarily skilled artisan is that about 20-25% by weight of the particles may be encapsulated coloring agents such as calcium chloride.
Such is considered to teach and suggest the limitations recited by instant claims 11-13.
Claim 4, for instance is noted as narrowing the teaching to rice protein concentrate, but also increasing the amount to at least about 77% by weight of the matrix. Each of the practiced Examples 11-16 form particles that employ higher amounts of rice protein concentrate.
MPEP §2123(I) states that “[a] reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments.” MPEP §2123(I) states that “[d]isclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.”
In the instant case, the Examiner submits that Huynh teaches and suggests dry particulate matrix compositions whereby the rice protein concentrate is present in an amount of about 70% by weight of the matrix.
The limitations of claim 14 recite calcium carbonate as the calcium salt. The teachings of Riziq are again relied upon to demonstrate that other calcium salt species that may be encapsulated in protein matrices include calcium carbonate.
Thus, based again on the foregoing teachings of Huynh and Riziq, the Examiner advances that a person of ordinary skill in the art would have had a reasonable expectation of achieving the instantly claimed composition of claim 14.
Therefore, the invention of claim 3 as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
Lastly, the limitations recited by claim 19 narrow the method recited by claim 18. Therein, the calcium salt is extrusion encapsulated within a water-insoluble protein matrix such that the resulting matrix comprises about 20-50 wt% of the calcium salt and about 50-80 wt% of the water-insoluble protein matrix.
The foregoing teachings of Huynh disclose that the dry particulate encapsulating composition of claim 1 comprises at least about 70 wt% of proteins in the matrix and about 5-10 wt% due to moisture content. This leaves about 20-25 wt% of the matrix particulate for the encapsulate component. As defined in the reference, the encapsulate comprises coloring agents such as calcium salts.
Such is considered to teach and suggest the compositional limitations of claim 19.
Huynh further discloses that the practiced particles will have a lightness value (L*) of greater than about 40, a color vividness or Chroma value (C*) lower than about 33, and a hue angle between about 70º and 90º. The foregoing teachings encompass the recited L*, C*, and hº ranges and values.
MPEP §2112.01(I) states that “[w]here the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”
Here, the Examiner acknowledges that the reference does not expressly teach the instantly claimed opacity values a* or b*. However, the Examiner reiterates that the composition formed by the method is taught and suggested by the reference, and would therefore present the ordinarily skilled artisan with a reasonably expectation that the practiced particles would possess values within the ranges for the aforementioned variables, absent a clear showing of evidence to the contrary.
Based on the foregoing teachings of the references, the Examiner submits that a person of ordinary skill in the art would have had a reasonable expectation of success at producing the instantly claimed opacity-modifying agent in dry particulate form and arriving at the recited methods associated therewith.
Huynh is on record as teaching and suggesting the compositional and structural limitations of the claimed composition. Where it is noted as being somewhat deficient is with respect to the encapsulated calcium salt being embodied by calcium carbonate. Riziq cures this deficiency as it is discloses accomplishing the same result producing solid particulates encapsulating calcium carbonate within a protein (e.g., soy protein) matrix component. The combination of teachings presents the skilled artisan with a reasonable expectation of producing the instant invention by modifying Huynh to be inclusive of the encapsulated calcium carbonate of Riziq.
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
All claims have been rejected; no claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jeffrey T. Palenik whose telephone number is (571) 270-1966. The Examiner can normally be reached on 9:30 am - 7:00 pm; M-F (EST).
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Robert A. Wax can be reached on (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jeffrey T. Palenik/
Primary Examiner, Art Unit 1615
