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
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 6 and 8 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 6, the limitation “a plant-base raw material” renders the claim indefinite because Claim 5 already recites “of a plant-base raw material”; therefore it is unclear if “a plant-base raw material” of claim 6 is the same or different element as the plant-base raw material recited in claim 5. This can be overcome by reciting “the plant-base raw material” in claim 6.
Regarding Claim 8, the limitation “act on a plant-base raw material” renders the claim indefinite because Claim 7 already recites “a plant-base raw material”; therefore it is unclear if “a plant-base raw material” of claim 8 is the same or different element as the plant-base raw material recited in claim 7. This can be overcome by reciting “the plant-base raw material” in claim 8.
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Triantafyllou (US 6,451,369) in view of Aizawa et al. (JP 2021193992 A- see machine translation).
Regarding Claim 1, Triantafyllou discloses an enzymatic agent for reducing a saccharide in a plant-base food or beverage (maltodextrin, Col. 6, ln. 50-54). The production of maltodextrin is construed to reduce saccharides such as glucose since maltodextrin is made of chains of glucose molecules. Triantafyllou is silent to wherein the enzymatic agent comprises a cyclodextrin-producing enzyme. However, Triantafyllou recognizes that combinations of enzymes and amounts of each specific enzymes results in suspensions that contains different sugars and varying amounts of each sugar (Col. 8, ln. 36-38). Therefore, Aizawa is relied on to teach a taste improver composition comprising a cyclodextrin-producing enzyme which is used to act on starch to produce cyclodextrin (Activity measurement of β-cyclodextrin-producing enzyme, see page 2 of the translations). Food beverages comprising the sugar composition made from the cyclodextrin-producing enzyme were shown to enhance the taste of fruit juice beverages (Example 4, page 5 of the translations) as well as soy milk (Example 5, page 5 of the translation).
Therefore, since Triantafyllou is directed to varying the combinations of enzymes to produce the desired combination of sugars and which enzymes react with starch, it would have been obvious to one of ordinary skill in the art to combine the enzymes of Aizawa for the purpose of imparting the flavor profiles of a cyclodextrin sugar composition. Furthermore, since both Triantafyllou and Aizawa recognizes the use of starch degrading enzymes to produce certain sugars for beverages, it would have been obvious to combine equivalents known for the same purpose (see MPEP 2144.06).
Regarding Claim 2, Triantafyllou discloses further comprising a maltotriose-producing enzyme (Col. 6, ln. 50-54).
Regarding Claims 3 and 4, Triantafyllou further teaches a plant-based beverage in which the enzymatic agent is used, wherein the plant base beverage is oat milk (Col. 2, ln. 48-56).
Regarding Claims 5 and 6, as discussed in the rejection of Claim 1, the combination of Triantafyllou and Aizawa suggest a method for manufacturing a plant-base beverage (oat milk, Col. 2, ln. 48-56 of Triantafyllou), comprising a step of allowing a cyclodextrin-producing enzyme (Activity measurement of β-cyclodextrin-producing enzyme, see page 2 of the translations of Aizawa) and a maltotriose-producing enzyme to act in a liquefaction process of a plant-base raw material (Col. 6, ln. 41-48 of Triantafyllou).
Regarding Claims 7 and 8, the claims are rejected for reasons discussed in the rejection of Claims 5 and 6. The production of maltodextrin and maltotriose is construed to reduce saccharides such as glucose and since cyclodextrin and maltotriose are made of glucose molecules.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 of copending Application No. 18/723,613 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 1 and 12 discloses a food product for use with a plant-based food comprising a cyclodextrin-producing enzyme, and a method of allowing a cyclodextrin-producing enzyme to act on a plant-based raw material.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 2, 4-6, and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 12 of copending Application No. 18/723,613 in view of Triantafyllou (US 6,451,369).
This is a provisional nonstatutory double patenting rejection.
Regarding Claims 2, 4-6 and 8, the copending claims are silent to comprising and allowing a maltotriose-producing enzyme to act on a plant-base raw material. Triantafyllou is relied on to teach a process of adding a maltotriose-producing enzyme (Col. 6, ln. 50-54) to oat milk (as per claim 4, see abstract) for the purpose of providing particular ratios of various sugars including maltotriose, maltose, and glucose. Therefore, since Triantafyllou is also directed to a sugar-producing enzyme in plant-based food products (oat milk), it would have been obvious to one of ordinary skill in the art to combine equivalents known for the same purpose (see MPEP 2144.06). Also, since copending claim 1 is directed to plant-based food, it would have been obvious to one of ordinary skill in the art to apply the starch degrading enzymes in the liquefaction of oat milk as taught by Triantafyllou based on product choice and to produce the desired ratios of cyclodextrin and maltotriose.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THANH H NGUYEN whose telephone number is (571)270-0346. The examiner can normally be reached 10am-6pm.
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/T.H.N/Examiner, Art Unit 1792
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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