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 § 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.
The previous 112(b) rejections are withdrawn due to applicant’s amendments.
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) 1,2,4-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Villagran(US 2002/0168463).
Regarding claims 1,2,5,6 Villagran teaches a process comprising
a)providing a potato(plant) material(example 1)
b)heating the material of (a) in an aqueous medium to a temperature of 93C to 121 C for about 12 to about 30 minutes(paragraph 72), which is identified in claim 6 as “sufficient time to solubilize intercellular pectin.”
c)physically disrupting the material of (b) by comminuting(paragraph 74)
-drying the material(paragraph 98)
-processing the dried material by sieving to obtains particles with a size of 30% maximum through a 40 US mesh(400 microns), i.e. at least 70% at larger than 400 microns(example 1, para 377).
Villagran teaches drying the physically disrupted material before processing the material to form flakes and does not teach processing the physically disrupted material via wet sieving, then drying.
However, Villagran teaches substantially the same product produced by substantially the same method as instantly claimed by applicant; where the claimed and prior art products are produced by substantially identical processes, a prima facie case of obviousness has been established. To switch the order of performing process steps, i.e. the order of the addition of the ingredients into the final mixture, would be obvious absent any clear and convincing evidence and/or arguments to the contrary (MPEP 2144.04 [R-1]). “Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”
Therefore, it would have been obvious to reverse the order to steps and use wet sieving then drying to achieve the same method as the claimed invention.
Regarding claim 4, Villagran is silent on the moisture content of the material being sieved. However, Villagran teaches drying to a final moisture content of about 5% to about 14%(para 108). Therefore, one of ordinary skill in the art would expect the moisture content of the wet mash being sieved to be higher than 14%, reasonably at least 50%. Villagran also teaches that the cooking step can be accomplished by submersion in water(para 69) and that the potatoes are cooked to a desired hardness value(para 70). Therefore, it would have been obvious to adjust the water content of the mash(material to be sieved) in order to achieved the desired hardness and particle size.
Regarding claims 7,8, Villagran teaches comminuting the potatoes to form a wet mash by “any suitable means”(para 74). It would have been obvious to comminute the potatoes using a blender since a blender/food processor is a common kitchen tool designed to comminute food materials to the desired particle size.
Regarding claim 9, Villagran teaches drying the potato product using any suitable method known in the art(para 99). Therefore, it would have been obvious to use roller drying as the drying method, since it is a known method suitable for drying food products.
Regarding claims 10,12, Villagran teaches drying to a final moisture content of about 5% to about 14%(para 108) at a temperature of 121C to about 191C(para 102) via air drying(para 100).
Regarding claim 11, Villagran teaches drying in a drum dryer wherein the wet potato mash is spread to a thickness of 0.005 to 0.1 inches and dried(0.0127 to 0.254cm)(para 102). Villagran does not teach drying in a deck oven. However, Villagran teaches drying the potato product using any suitable method known in the art(para 99). Therefore, it would have been obvious to use a deck oven as the drying method, since it is a known method suitable for drying food products.
Regarding claim 13, Villagran teaches drying to a final moisture content of about 5% to about 14%(para 108) at a temperature of 121C to about 191C(para 102) via air drying(para 100). “About 5%” would include values under 5% for a total moisture content of <5%.
Regarding claims 14-16, Villagran teaches processing the dried material by sieving to obtain particles with a size of 30% maximum through a 40 US mesh(400 microns), i.e. at least 70% at larger than 400 microns(example 1, para 377). A range of larger than 400 microns overlaps the claimed ranges and renders them obvious.
Regarding claims 17-19, Villagran teaches processing the dried material by sieving to obtain particles with a size of 30% maximum through a 40 US mesh(400 microns), i.e. some particles(up to 30%) would be less than 400 microns(example 1, para 377). A range of less than 400 microns overlaps the claimed ranges and renders them obvious.
Response to Arguments
Applicant's arguments filed 1/2/2026 have been fully considered but they are not persuasive.
The applicant argues that nothing in Villagran teaches the reader how to produce a plant material with a low glycemic index. However, nowhere in the claims does it recite that the composition is to have a low glycemic index.
The applicant argues that Villagran does not teach heating in an aqueous medium to a temperature of 75 to 105C. However, Villagran teaches that the potatoes can be boiled(100C) or steamed at temperature of 93C to 121 C for about 12 to about 30 minutes, which overlaps the claimed temperature range and renders it obvious(para 71-72).
The applicant argues that the claimed method produces unexpected results such as enhanced preservation of intact cells. However, this is not unexpected because Villagran teaches a large amount of intact cells(para 140). Furthermore, the applicant has not compared the closest prior art Villagran in order to show any unexpected difference.
The applicant argues that it wouldn’t have been obvious to switch the order of steps and perform wet sieving and then drying as claimed. However, the WAI test is merely done after sieving and it does not preclude wet sieving then drying. Switching the order of steps would produce the same final dried particle size as claimed, regardless of when drying took place.
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 KATHERINE D LEBLANC whose telephone number is (571)270-1136. The examiner can normally be reached 8AM-4PM EST M-F.
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/KATHERINE D LEBLANC/Primary Examiner, Art Unit 1791