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 .
DETAILED ACTION
Status of the application
2. Claims 2-19 are pending in this application.
Claims 2-19 have been rejected.
Claim Rejections - 35 USC § 112
3. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
4. Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In this instance, claim 9 recites “wherein the initial quantity of sugar is about 0% by weight based on the total weight of the dough taken as 100%”. Claim 9 depends on claim 8 which depends on claim 2. Claim 2 recites “An initial quantity of sugar is about 4% by weight based on the total weight of the dough taken as 100%”. Therefore, claim 9 is failing to further limit the subject matter of the independent claim 2 upon which it depends Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
5. In the event the determination of the status of the application as subject to AIA 35 U.S.Q 102 and 103 (or as subject to pre-AIA 35 U.S.Q 102 and 103) is incorrect, any correction of the statutory basis 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.
6. The following is a quotation of 35 U.S.Q 103 which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
7. 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:
a. Determining the scope and contents of the prior art.
b. Ascertaining the differences between the prior art and the claims at issue.
c. Resolving the level of ordinary skill in the pertinent art.
d. Considering objective evidence present in the application indicating obviousness or nonobviousness.
8. Claims 2-19 are rejected under 35 U.S.C. 103 as being unpatentable over Rittig et al. US 2013/0209607 in view of Hirsh et al. USPN 4587215 in view of Cooper et al. USPN 6896916 and in view of Stone et al. USPN 2615810.
9. Regarding claims 2, 9, Rittig et al. discloses that raw starch degrading enzyme AMG 1100 ([0012], [0013], [0040]) e.g. in [0040], AMG 1100 from Novozyme can be used alone or in combination with other enzymes or other flour to improve the flour quality (in Abstract) and/or dough ingredients and additives added to the dough ([0008], [0010] , [0057] e.g. dough,) and degrade below starch gelatinizing temperature ([0012], [0013]). Rittig et al. also discloses that yeast can be 4% by weight of the flour (at least in [0126]) to meet “ yeast in an amount of 4% or less by weight of flour” as claimed in claim 2 It is evidenced by applicant’s own specification that the disclosed raw starch degrading enzyme AMG 1100 as disclosed by Rittig et al. ([0012], [0013], [0040]) e.g. in [0040], AMG 1100 from Novozyme) is identical to the same AMG 1100 amyloglocosidase of applicants raw starch degrading enzyme (at least in specification in PGPUB [0064]).
Rittig et al. is silent about
(i) Initial amount of sugar and yeast to make dough
(ii) Thermally stable amyloglucosidase that exhibits activity during baking at temperatures at which the starch gelatinizes and
(iii an initial quantity of sugar that is about less than 4% or less by weight of the total weight of dough taken as 100%
With respect to (i), Cooper et al. discloses a method of making a bakery product by baking yeast-fermented bread product from dough comprising flour as a major ingredient and, in combination, yeast, amylase enzymes, sweetener (sugar/dextrose) in an amount of 0.3-2.0 % by weight, ( Abstract; col 7 lines 25-50, See footnote, “Dextrose is the preferred sugar” col 11 lines 5-10 e.g. amylolytic enzyme and in claim 8 of Cooper et al. e.g. “Amylases”, sweeteners and sweetener is in an amount from 0.3-2.0 % by weight of the dough composition) to meet claim 2.
One of ordinary skill in the art before the effective filling date of the claimed invention would have been motivated to modify Rittig et al. to include the teaching of Cooper et al. to incorporate ‘sugar’ to provide food for yeast in order to make yeast fermented dough to accelerate gas production to create the desired volume and physical characteristics of a publicly perceived good loaf of bread both proportionally and gastronomically ( col 7 lines 1-5 and lines 12-25) to make final bakery product.
With respect to (ii), Hirsch discloses that the thermostable amyloglucosidase is produced by Talaromyces thermophilius (col 1 lines 55-60 and in claim 1 of Hirsch)
to meet claim 2. One of ordinary skill in the art would have been motivated to use thermostable amyloglucosidase produced by Talaromyces thermophilius in order to have its high temperature thermostability. It is understood that the thermostable amyloglucosidase enzyme would have the inherent property of enzyme activity at during baking at temperature at which starch gelatinizes as claimed in claim 2 and is also evidenced by applicants own specification (in PGPUB [0050], [0060] e.g. this prior art is applicants own disclosure in [0060]).
One of ordinary skill in the art before the effective filling date of the claimed invention would have been motivated to modify Rittig et al. with the teaching of Hirsch et al. to include thermostable amylo-glucosidase produced by Talaromyces thermophilius in order to have its high temperature thermostability to convert starch to glucose at high temperature during baking time.
With respect to (iii), Cooper et al. discloses that Initial sugar amount in the dough as disclosed by is from 0.3-2.0% by weight which can be preferred dextrose (in Cooper et al. col 7 lines 40-50), and no enzyme generates fructose to make final bakery product with no fructose. Therefore, it meets claim 2, 9. However, claim 9 has 112 fourth paragraph issue and discussed above.
Therefore, the end product will contain glucose and/or maltose.
Regarding “an anti-staling amylase” enzyme as claimed in claim 2, Rittig et al. also discloses that the raw starch degrading enzyme can be combined with other enzymes e.g. a maltogenic amylase to produce maltose (at least in [0021], [0026] in claim 31 of Rittig et al.). It is known that maltogenic enzyme is anti-staling enzyme as evidenced by the applicant’s own specification (in [0067] of PGPUB) to meet anti-staling amylase of claim 2. Therefore, it would have been obvious to one of ordinary skill in the art to add maltogenic amylase in combination with the raw starch-degrading enzyme, if maltose is needed to be present in the final product.
However, Rittig et al., in view of Cooper et al. in view of Hirsh et al. are specifically silent about the function of this ‘anti-staling amylase enzyme’ to combine to make bakery product.
Stone et al. discloses that the bakery product is made from dough containing heat stable alpha amylase enzyme in an amount from 0.1 to 4 SKB unit in order to inhibit staling by providing its anti-staling property which is derived from B. mesentericus and Bacillus subtilis (in claims 1-3 of Stone et al.) and therefore, it meets claim 2. It is to be noted that the origin of the anti-staling amylase enzyme is from Bacillus spp. and is also evidenced by the applicants specification that enzyme is a protein from ‘Bacillus’ strain (in PGPUB [0067]). Therefore, the disclosed anti-staling amylase enzyme is identical to the Rittig’s maltogenic amylase and also identical to claimed anti-staling amylase of claim 2.
One of ordinary skill in the art before the effective filling date of the claimed invention would have been motivated to modify Rittig et al. in view of Hirsh et al. and Cooper et al. to include the teaching of Stone et al. to add anti-staling amylase enzyme to provide maltose conversion during high temperature because it is ‘heat stable’ ( in Stone et al. in claims 1-3 of stone) and, therefore, to protect the bakery product from staling during baking which will provide the cost -effective benefit with the quality product (at least on page 1 col 1 lines 1-20).
10. Regarding claims 2, 14, 15, 16, the claim limitations of “percent resilience of at least about 28% when measured shelf life day 7’, they are (modified Rittig et al.) , silent about the “percent resilience of at least about 28% when measured shelf- life day 7” as claimed in claim 2, “wherein the yeast-raised bakery product has an adhesiveness of from about 5 g*mm to about 25 g*mm when measured at shelf life day 7” as claimed in claim 14 and “wherein the yeast-raised bakery product has an adhesiveness of from about 10 g*mm to about 20 g*mm, a crumb firmness of less than about 160 g force, and a resilience of from about 32% to about 37%, each when measured at shelf life day 7” as claimed in claim 15 and “wherein the yeast-raised bakery product exhibits a decrease in crumb firmness of at least about 50%, an increase in crumb resilience of at least about 10%, and includes at least about 30% less yeast than a similar yeast-raised bakery product formed from a dough including the same ingredients but without the enzyme blend and with an initial sugar content of about 8% by weight, with the total weight of the dough taken as 100%” as claimed in claim 16, are considered as the properties of the final baked product.
It is to be noted that the combinations of prior arts of record address all the claim limitations with respect to the ingredients and their respective amounts used to make bakery product.
It is also to be noted that the percent resilience, firmness, and adhesiveness as claimed in claims 2, 14,15 and 16 are the physical characteristics of the final baked product. It is also to be noted that all the disclosed enzymes e.g. raw starch degrading enzyme, thermally-stable amylo-glucosidase and anti-staling amylase enzymes are the identical enzymes as disclosed by the respective prior arts of record and which is evidenced as applicants admitted prior art as evidenced by the applicant’s own disclosure in the specification (in PGPUB at least in [0050], [0057], [0060], [0067]).
Therefore, the disclosed bakery product made from the disclosed identical claimed enzyme would have the claimed bakery product which will have identical claimed physical property including the properties of “percent resilience of at least about 28% when measured shelf- life day 7” as claimed in claim 2, “wherein the yeast-raised bakery product has an adhesiveness of from about 5 g*mm to about 25 g*mm when measured at shelf life day 7” as claimed in claim 14 and “wherein the yeast-raised bakery product has an adhesiveness of from about 10 g*mm to about 20 g*mm, a crumb firmness of less than about 160 g force, and a resilience of from about 32% to about 37%, each when measured at shelf life day 7” as claimed in claim 15 and “wherein the yeast-raised bakery product exhibits a decrease in crumb firmness of at least about 50%, an increase in crumb resilience of at least about 10%, and includes at least about 30% less yeast than a similar yeast-raised bakery product formed from a dough including the same ingredients but without the enzyme blend and with an initial sugar content of about 8% by weight, with the total weight of the dough taken as 100%” as claimed in claim 16.
The courts have held that 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 the claimed product. Whether the rejection is based on "inherency" under 35 USC § 102, on prima facie obviousness" under 35 USC § 108, 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." In re Best, 562 F2d 1252, 1255, 195 USPQ 430,433-4 (CCPA 1977).
11. Regarding claims 3- 7, regarding the amounts of the three enzymes, as discussed above, the disclosed enzymes e.g. raw starch degrading enzyme, thermally-stable amylo-glucosidase and anti-staling amylase enzymes are the identical enzymes as disclosed by the respective prior arts of record and which is evidenced as applicants admitted prior art as evidenced by the applicant’s own disclosure in the specification (in PGPUB at least in [0050], [0057], [0060], [0067]).
Therefore, it would have been obvious that the enzyme blends of the three enzymes would have the combined identical property of claimed enzyme blends containing the three enzymes e.g. thermally stable amyloglucosidase, raw starch degrading enzyme anti-staling enzyme.
The amounts of the enzymes are also optimizable. Rittig et al. also discloses that the effective amount of raw starch degrading enzyme to be used can be determined by routine experimentation ([0054]) by the skilled artisan ([0054-[0056]) including 0.2-70 AGU/kg flour ([0057]).
Stone et al. discloses that the bakery product is made from dough containing heat stable alpha amylase enzyme in an amount from 0.1 to 4 SKB unit in order to inhibit staling by providing its anti-staling property which is derived from B. mesentericus and Bacillus subtilis (in claims 1-3 of Stone et al.)
It is within the skill of one of ordinary skill in the art to optimize the amount and ratio of these three enzymes together from the disclosed amounts which meet claimed range amounts in order to allow starch degradation continued to higher temperature with the “anti-staling’ enzyme, in combination, in a way so that the final bakery product will have desired resilience with the desired shelf life when initial sugar is less than 4% as claimed in claim 2.
As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the type and amounts of enzymes, in modified Rittig et al. to amounts, including that presently claimed, in order to obtain the desired effect e.g. at least the property of “ percent resilience of at least about 28% when measured shelf life day 7’, as claimed in claim 2 (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
12. Regarding claims 8, 10, 11 and 12, final quantity of sugar present is
(a) greater than the initial quantity of sugar as claimed in claim 8
(b) ‘greater than 5% by weight of sugar’, as claimed in claim 10,
(c ) “wherein the initial quantity of sugar in the dough comprises less than about 0.2% by weight of fructose and less than about 0.2% by weight of glucose, based on the total weight of the dough taken as 100%, and wherein the final quantity of sugar in the yeast-raised bakery product comprises less than about 1% by weight fructose, at least about 5% by weight of glucose and maltose, based on the total weight of the yeast-raised bakery product taken as 100%” as claimed in claim 11 and
(d) ‘at least about 10 times greater than initial amount of sugar in the dough as claimed in claim 12, it can be addressed by considering the disclosures from the combinations of prior arts of record as discussed below:
(i) Cooper et al. discloses that the type of sugar to be used is based on the degree of sweetness and dextrose is preferred sugar and having balanced sweetness compared to high sweetener e.g. fructose (col 7 lines 30-50: see footnote "Dextrose is the preferred sugar” and is used in an amount from 0.3-2.0 % by weight of the flour in dough composition. One of ordinary skill in the art would also include the initial sugar dextrose as ‘preferred sugar’ over fructose as taught by Cooper et al. (in Cooper et al. col 7 lines 40-50). Therefore, final baked product will not contain any residual fructose from the initial sugar used in the dough composition. In addition, there is no disclosure from the combined teaching of the prior arts of record by modified Rittig et al. that the disclosed enzyme(s) used for making bakery product generates fructose.
(ii) Rittig et al. also discloses that the effective amount of this enzyme to be used can be determined by routine experimentation ([0054]) by the skilled artisan ([0054-[0056]). It is also to be noted that Rittig et al. discloses that “raw starch degrading enzyme” generates sugar at around 40 degree C and maltogenic amylase may be combined to make maltose (if needed) (at least in [0021], [0059], in claim 31 of Rittig et al.).
(iii) Hirsch discloses that the thermostable amyloglucosidase is produced by Talaromyces thermophilus (col 1 lines 55-60 and in claim 1 of Hirsch) in order to have its high temperature thermostability and therefore, would inherently produce sugar e.g. glucose from the starch present in dough at the high temperature during baking.
Therefore, it is within the skill of one of ordinary skill in the art to optimize the amounts of enzymes to be used and also type of enzyme (e.g. maltoamylase if we need maltose to be present in the final product) in order to have the desired amounts of sugar (s) as desired to provide desired sweetness in the final bakery product.
Therefore, the precise amounts of sugar(s) would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the type and amounts of enzymes, in modified Rittig et al. to amounts, including that presently claimed, in order to obtain the desired effect e.g. desired amount of sugar(s) as claimed in the presently claimed invention of claims 8,10,11,12 (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
13. Regarding claim 13, it is to be noted that as combinations of prior arts of record meets the claim limitations of claim 2. As discussed above, the disclosed enzymes e.g. raw starch degrading enzyme, thermally-stable amylo-glucosidase and anti-staling amylase enzymes are the identical enzymes as disclosed by the respective prior arts of record and which is evidenced as applicants admitted prior art as evidenced by the applicant’s own disclosure in the specification (in PGPUB at least in [0050], [0057], [0060], [0067]). Therefore, the disclosed bakery product made from the disclosed identical claimed enzyme would have the claimed bakery product which will have identical claimed physical property including the properties of “wherein the amount of yeast present in the dough is at least about 15% less than the amount of yeast needed to prepare a similar yeast-raised bakery product from a dough formed from the same ingredients but without the enzyme blend and with an initial sugar content of about 8% by weight, with the total weight of the dough taken as 100%” as claimed in claim 13.
14. Regarding claims 17, 19, Hirsch discloses that a thermostable amyloglucosidase is produced by Talaromyces thermophilus (col 1 lines 55-60 and in claim 1 of Hirsch). It is also evidenced by the applicants own disclosure in the specification (in PGPUB [0050]).One of ordinary skill in the art would have been motivated to use thermostable amyloglucosidase produced by Talaromyces thermophilius in order to have its high temperature thermostability. It is to be noted that even if Hirsh et al. does not mention the half- life of the enzyme, however, it is considered as an inherent property of the enzyme. It is understood that the thermostable amyloglucosidase enzyme would have the inherent property of enzyme activity at during baking at temperature at which starch gelatinizes and having half -life.
15. Regarding claim 18, it is to be noted that even if Rittig et al. does not mention the half- life of the enzyme, however, it is considered as an inherent property of the enzyme and it is also evidenced by the applicant’s own disclosure in the specification (in PGPUB [0064], [0065]). It is to be noted that even if Rittig et al. does not mention the half- life of the enzyme, however, it is considered as an inherent property of the enzyme. It is understood that the disclosed raw starch degrading enzyme would have the inherent property of enzyme activity at during baking at temperature at which starch gelatinizes and having half -life. The rest of the claim limitations of T1/2 value from “1 to 20 minutes” etc. is the physical property of the raw starch degrading enzyme are not need to be addressed, however, also inherent property as discussed above.
Conclusion
16. Any inquiry concerning the communication or earlier communications from the examiner should be directed to Bhaskar Mukhopadhyay whose telephone number is (571)-270-1139.
If attempts to reach the examiner by telephone are unsuccessful, examiner’s supervisor Erik Kashnikow, can be reached on 571-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BHASKAR MUKHOPADHYAY/
Examiner, Art Unit 1792
Prosecution Insights