DETAILED ACTION
Background
Claims 1-12 as filed with the instant application on October 31, 2024 have been examined. No amendments have been filed.
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 .
Information Disclosure Statement
The references cited in the parent case (US application serial no. 17/336866) including those made of record via an information disclosure statement (IDS) are not automatically made of record in this continuation application. Unless the Office has cited an art reference, the art cited in the IDS dated June 02, 2021 and in the IDS dated December 10, 2021 has not been made of record in accordance with Applicants duty of disclosure under 37 CFR 1.56.
Claim Objections
Claims 3 and 4 are objected to because of the following informalities:
In claim 3, at line 4 after “to the” insert – mass of the--; and,
In claim 4, at line 4 after “respect to the” insert – mass of the--.
Appropriate correction is required.
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 1-12 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 instant claims 1, 8 and 9, in claim 1, at lines 4-5, in claim 8 at lines 3-4 and in claim 9 at lines 4-5 the recited “starch content” in terms of dry mass is indefinite for lacking a clear denominator or basis. In each case, is the starch content a mass % of the starch, based on the total dry mass of a food or drink, or based on the total mass of a powdery food, or based on the total mass of some other thing?
The Office interprets the claimed starch content in claim 1 as being a mass % of the starch, based on the total dry mass of the powdery food; the Office interprets the claimed starch content in claim 8 as being a mass% of the starch, mass % of the starch based on the total dry mass of the dried plant; and the Office interprets the starch content in claim 9 as being a mass % of the starch, based on the total dry mass of the edible plant.
Regarding instant claims 1, 8 and 9, in claim 1, at lines 8-9, in claim 8 at lines 4-5 and in claim 9 at lines 5-6 the recited “dietary fiber content” in terms of dry mass is indefinite for lacking a clear denominator or basis. In each case, is the dietary fiber content a mass % of the dietary fiber, based on the total dry mass of a food or drink, or based on the total mass of a powdery food, or based on the total mass of carbohydrates, or based on the total mass of some other mass?
The Office interprets the claimed dietary fiber content in claim 1 as being a mass % of the dietary fiber, based on the total dry mass of the powdery food; the Office interprets the claimed dietary fiber content in claim 8 as being a mass% of the dietary fiber, mass % of the starch based on the total dry mass of the dried plant; and the Office interprets the dietary fiber content in claim 9 as being a mass % of the dietary fiber, based on the total dry mass of the edible plant.
Regarding instant claims 1, 8 and 9, in claim 1, at lines 5-7 and 10-22 (two instances, in claim 8 at lines 7-8 and in claim 9 at lines 8-9 the recited “dry mass” which is “an equivalent value to the mass when the water content is 0 mass%” is indefinite for lacking a clear denominator or basis. In each case, to what mass is the dry mass equivalent? The mass of a dry food or drink, the mass of a powdery food or some other equivalent mass? And, further, is the water content a mass % of the water, based on the total dry mass of a food or drink, or based on the total mass of a powdery food, or based on the total mass of starch, or based on the total mass of some other mass?
The Office interprets the claimed dry mass in claim 1 as being a dry mass that is an equivalent value to the mass of the powdery food when the water content of the powdery food is 0 mass%; the Office interprets the claimed dry mass in claim 8 as being a dry mass that is an equivalent value to the mass of the dried plant when the water content of the dried plant is 0 mass%; and the Office interprets the dry mass in claim 9 as being a dry mass that is an equivalent value to the mass of edible plant when the water content of the edible plant is 0 mass%.
Regarding instant claims 1, 2, 8 and 9, in claim 1 at lines 14-15, in claim 2 at lines 2-3, in claim 8 at lines 9-10 and in claim 9 at lines 10-11, the recited “ppb of 2,3-butanediol” is” indefinite for lacking units and is indefinite for lacking a proper basis or denominator. In each case, is the ppb of 2,3-butanediola ppb by mass, by weight, by volume or is it determined according to some other units? Further, is the ppb of 2,3-butanediol based on the total parts of a food or drink, or based on the total parts of a powdery food, or based on the total parts of starch, or based on the total parts of some other thing?
The Office interprets the claimed ppb of 2,3-butanediol in claims 1, 2, 8 and 9 as being a ppb by mass of the 2,3-butanediol, based on the total mass of the powdery food.
Regarding instant claims 1, 8 and 9, in claim 1 at lines 15-17, in claim 8 at lines 10-11 and in claim 9 at lines 11-12, the recited “ppb of diethylene glycol monoethyl ether” is” indefinite for lacking units and is indefinite for lacking a proper basis or denominator. In each case, is the ppb a ppb by mass, by weight, by volume or is it determined according to some other units? Further, is the ppb of diethylene glycol monoethyl ether based on the total parts of a food or drink, or based on the total parts of a powdery food, or based on the total parts of starch, or based on the total parts of some other thing?
The Office interprets the claimed ppb of diethylene glycol monoethyl ether in claims 1, 2, 8 and 9 as being a ppb by mass of the diethylene glycol monoethyl ether, based on the total mass of the powdery food.
Regarding instant claim 7, at lines 3-4 the recited “moisture content” is indefinite for lacking a clear denominator or basis. Is the moisture content a mass % based on the total mass of the dietary fiber, based on the total mass of a food or drink, or based on the total mass of a powdery food, or based on the total mass of starch, or based on some other total mass?
The Office interprets the claimed moisture content as being a mass % of moisture, based on the total dry mass of a starch-containing dried plant.
Claim 9 recites the limitation "starch-containing plants" in line 13. There is insufficient antecedent basis for this limitation in the claim. Is the recited starch-containing plant the same thing as the recited edible-plant?
Regarding instant claim 12, at lines 3-4 the recited content of the “powder derived from the starch-containing plant” is indefinite for lacking a clear denominator or basis. Is the content of the powder of a starch-containing plant a mass % of the dietary fiber, based on the total dry mass of a food or drink, or based on the total mass of a powdery food, or based on the total mass of starch, or based on the total mass of some other mass?
The Office interprets the claimed content of a powder of starch-containing plant as being a mass % of the powder, based on the total mass of a powdery food.
Claims 3-6 and 10-11 are rejected as depending from a rejected base claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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.
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. Applicant is 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 1-5 and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0136845 A1 to Hoffman et al. (Hoffman) in view of US 2017/0119032 A1 to Patron et al. (Patron), as evidenced by Buttery et al., “Studies on Flavor Volatiles of Some Sweet Corn Products”, J. Agric. Food Chem. 1994, 42, 791-795 (Buttery).
Unless otherwise indicated, all percentages disclosed without units are interpreted as mass percentages, and mass% is interpreted as interchangeable with weight % (wt%).
The Office interprets the claimed dietary fiber content and starch content as being a mass % of the dietary fiber or starch, as appropriate, based on the total dry mass of the powdery food, dried plant or edible plant having a water content of 0 % by mass based on the same powdery food, dried plant or edible plant as recited, respectively, in claims 1, 8 and 9.
Regarding instant claims 1, 4, 7-10 and 12, Hoffman at Abstract discloses a dry food-grade corn germ flour (“derived from a starch-containing plant”) as a powdery food and methods for dry-milling the corn germ flour. Corn is a starch-containing plant and is a vegetable and/or a pulse (claims 1 and 8-9); and the dry-milling of corn germ flour disclosed in Hoffman comprises crushing a starch-containing dried plant (claim 7), dried plant (claim 8) or edible plant (claim 9). See for example, the instant specification at [0016] on page 11. In addition, at page 5, Table 5 Hoffman discloses that its corn germ flour comprises 21 mass% of dietary fiber, based on the total mass of the powdery food and, at page 6, Table 5 discloses that white corn flour has 8% dietary fiber (claims 1 and 8-9). Further, Hoffman at [0027] discloses that milled corn germ, as a dried plant material comprises 30 (mass) % starch, based on the total dry mass of the powdery food, dried plant or edible plant having a water content of 0 % by mass based on the same powdery food, dried plant or edible plant as, respectively, in claims 1, 8 and 9. Further, it appears that the starch of Hoffman is preserved during the processing of the corn germ flour. In addition, Hoffman at [0033] discloses its milled dry corn germ as having 7.15 mass% moisture, based on the total mass of the starch-containing dried plant as corn germ (claim 7) and at [0035] discloses defatted corn germ flour as a powdery food consisting essentially of its milled corn germ flour (claim 10) as 100% of the powdery food (claim 12).
Further and regarding instant claim 11, at [0031] Hoffman discloses milling or crushing a dry powdery food as corn germ to a flour (at [0032]) having a 200-mesh particle size or a d50 average particle size of 74 µm or less (claims 1, 8-9 and 11).
Still further and regarding instant claim 2, because Hoffman discloses (at [0004]) a dry fractionated corn germ starting material that (at [0029]) is de-oiled prior to milling and that is further dried (at [0028]) in a dryer-cooler, the Office considers the corn germ flour of Hoffman to comprise substantially all of the water-soluble volatiles, including 2,3-butanediol that are initially present in its corn germ starting material. Meanwhile, Buttery at page 793, Table 2 discloses that fresh kernels of corn comprise at least 3000 ppb of 2,3-butanediol. At page 794, left-hand column, 2nd full paragraph Buttery discloses that 2,3-butanediol is very water soluble. Thus, absent a clear showing as to how the 2,3-butanediol content of the Hoffman corn germ flour differs from that of the powdery food as claimed, the Office considers the dry milled corn germ flour of Hoffman to have the claimed 50 ppb to 40,000 ppb by mass of 2,3-butanediol, based on the weight of the powdery food as in claims 1 and 8-9. Further, given that Hoffman discloses at [0037] mixing its corn germ flour with wheat or other powdery food, absent a clear showing as to how the claimed powdery food differs from that of Hoffman, the Office considers it obvious in Hoffman to make a powdery food having the claimed 50 to 2,000 ppb by mass of the powdery food as in claim 2. See MPEP 2112.01.I.
Yet still further, Hoffman does not disclose a powdery food having a diethylene glycol monoethyl ether content of from 5 ppb to 40,000 ppb by mass, based on the total mass of the powdery food as in claims 1 and 8-9.
Patron at abstract discloses a sweetener including a sweetness enhancer. At [0206] the sweet flavor enhancing compound may contain inactive ingredients, wherein at page 148, bottom right hand column, the inactive ingredient comprises diethylene glycol mono ethyl ether. At [0260], Patron discloses the sweetener as finally divided particles having a particle size of between 200 and 500 µm. At [0182], Patron discloses that the sweetness enhancer composition and its ingredients are present in a concentration at or below its sweetness recognition threshold, including at [0179] about 0.1% or about 100,000 ppb by mass, within which range the claimed from 5 to 40,000 ppb by mass in claims 1 and 8-9 lies. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. The ordinary skilled artisan in Patron would have found it obvious to include the claimed amount of diethylene glycol monoethyl ether in its powdery sweetness enhancer because Patron discloses a desirable food product as sweetness enhancer or ingredient containing the claimed amount of diethylene glycol monoethyl ether.
Before the effective date of the present invention, the ordinary skilled artisan would have found it obvious in view of Patron for Hoffman to include from 5 to 40,000 ppb of diethylene glycol mono ethyl ether in its corn flour or masa flour. Both of the references disclose foods or food additives as particles or powders which contain flavor or odor enhancing polyols or glycol ethers. The ordinary skilled artisan in Hoffman would have desired to include up to 40,000 ppb of the diethylene glycol mono ethyl ether of Patron to enhance the sweetness of the corn germ flour of Hoffman.
Regarding instant claims 3-4, the Office considers the Hoffman corn germ flour to comprise a powdery food such as, for example, something one would sprinkle on breakfast cereal in the same manner as wheat germ or eat it by itself. The corn germ flour of Hoffman comprises 100 mass% of a powdery food, based on the mass of the powdery food as in claim 3 and more than 50 mass% of the starch contained in the powdery food, based on the total mass of the powdery food.
Regarding instant claim 5, Hoffman at [0037] discloses pasta, baked goods and tortillas comprising a corn germ flour powdery food.
Claims 1-7 and 9-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 6068873 A to Delrue et al. (Delrue) in view of US 2017/0119032 A1 to Patron et al. (Patron), as evidenced by US 2013/0136845 A1 to Hoffman et al. (Hoffman) and Buttery et al., “Studies on Flavor Volatiles of Some Sweet Corn Products”, J. Agric. Food Chem. 1994, 42, 791-795 (Buttery).
Unless otherwise indicated, all percentages disclosed without units are interpreted as mass percentages, and mass% is interpreted as interchangeable with weight % (wt%).
The Office interprets the claimed dietary fiber content and starch content as being a mass % of the dietary fiber or starch, as appropriate, based on the total dry mass of the powdery food, dried plant or edible plant having a water content of 0 % by mass based on the same powdery food, dried plant or edible plant as recited, respectively, in claims 1, 8 and 9.
Regarding instant claims 1 and 7-9, Delrue at Abstract discloses a masa flour as a powdery food (claim 1); and, at col. 2, lines 59-67 Delrue discloses methods of drying and milling or crushing a cooked corn component comprising (at col. 1, line 67 to col. 2, line 5) whole grain corn mixed with corn flour. Corn is a starch-containing plant (claim 1); and milling corn comprises crushing a dried starch-containing dried plant, dried plant or edible plant (claims 7-9). See for example, the instant specification at [0016] on page 11. In addition, the Office considers corn to be a vegetable and/or a pulse (claims 1 and 8-9). Further, at column 3, and a table in the middle of the column Delrue discloses that whole grain corn comprises 71.6 mass% of starch (claims 1, 8 and 9) or starch content, based on the total mass of the starch-containing dried plant, dried plant or edible plant. Further, Hoffman at page 6, Table 5 discloses that the masa corn flour of Delrue has 8 mass% dietary fiber, based on the total mass of the starch-containing dried plant (claims 1 and 8-9).
Further and regarding instant claim 11, Delrue at Table I on col. 4 discloses milling or crushing corn flour to a size of 47% and less than 100 mesh or a d47 particle size of 149 µm, and in Table II discloses milling a masa product for tortillas to a particle size of 75% or less below 60 mesh or a d75 average particle size of 250 µm. Accordingly, Delrue discloses a powdery food and a method for crushing to make a powdery food having a d50 average particle size of 1000 µm or less (claims 7-9). Further, at Table II on col. 4, Delrue discloses chip, taco, tortilla and snack food applications wherein the d 50 particle size of the crushed corn is Less than 60 mesh size or less than 250 µm, within which range the claimed d50 of 100 µm or less in claim 11 lies. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. The ordinary skilled artisan in Delrue would have found it obvious to grind its powdery food to the claimed d50 particle size because Delrue discloses that a corn powdery food having the claimed particle size provides desirable snacks, chips, tacos and tortillas
Still further and regarding instant claim 2, because Delrue discloses a dried, milled corn flour or masa flour, the Office considers the corn flour or masa flour of Delrue to comprise substantially the same powdery food product as the dried, crushed starch-containing plant as claimed, including 2,3-butanediol naturally present in corn. Meanwhile, Buttery at page 793, Table 2 discloses that fresh kernels of corn comprise at least 3000 ppb of 2,3-butanediol. At page 794, left-hand column, 2nd full paragraph Buttery discloses that 2,3-butanediol is very water soluble. Thus, absent a clear showing as to how the 2,3-butanediol content of the Delrue corn flour or masa flour differs from that of the powdery food as claimed, the Office considers the dry milled corn flour or masa flour of Delrue to have the claimed 50 ppb to 40,000 ppb of 2,3-butanediol; and, further, given that Delrue at col. 4, lines 45-60 discloses mixing its corn flour with other powdery food to make snacks, chips, tacos or tortillas, the Office considers it obvious in Delrue to make a powdery food having the claimed 50 to 2,000 ppb by mass of the powdery food as in claim 2. See MPEP 2112.01.I.
Yet still further, Delrue does not disclose a powdery food comprising diethylene glycol monoethyl ether in a content of 5 to 40,000 ppb by mass, based on the total mass of the powdery food as in claims 1 and 8-9.
Patron at Abstract discloses a sweetener including a sweetness enhancer. At [0206] the sweet flavor enhancing compound may contain inactive ingredients, wherein at page 148, bottom right hand column, the inactive ingredient comprises diethylene glycol mono ethyl ether. At [0260], Patron discloses the sweetener as finally divided particles having a particle size of between 200 and 500 µm. At [0182], Patron discloses that the sweetness enhancer may be present in a concentration at or below its sweetness recognition threshold, including at [0179] about 0.1% or about 100,000 ppb. The claimed from 5 to 40,000 ppb lies within the range of an inactive ingredient in an amount of 100,000 ppb or below disclosed in Patron. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I.
Before the effective date of the present invention, the ordinary skilled artisan would have found it obvious in view of Patron for Delrue to include from 5 to 40,000 ppb of diethylene glycol mono ethyl ether in its corn flour or masa flour. Both references disclose foods or food additives as particles or powders which contain flavor or odor enhancing polyols or glycol ethers. The ordinary skilled artisan in Delrue would have desired to include up to 40,000 ppb of the diethylene glycol mono ethyl ether of Patron to enhance the sweetness of the corn flour or masa flour of Delrue.
Regarding instant claims 3-5, 10 and 12, the Office considers the Delrue masa flour or corn flour to comprise a powdery food (claim 5). The masa flour of Delrue comprises 100 mass% of that powdery food (claims 3, 10 and 12) . Further, Delrue in the Table at the middle of col. 3 discloses that whole corn in masa has 71.6 mass% of starch and Hoffman in Table 5 on page 6 discloses that masa corn flour has substantially the same composition and content of “Carbs” as white corn or whole corn flour. Accordingly, Delrue discloses a powdery food as masa flour that comprises 50 mass% or more of starch in the powder derived from a starch-containing plant as in claim 4.
Regarding instant claim 7, at column 2, lines 59-63 Delrue discloses that its corn component starting material is dried before crushing or milling to a moisture content of not more than about 15 mass % moisture, based on the total mass of the starch-containing dried plant.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0136845 A1 to Hoffman et al. (Hoffman) in view of US 2017/0119032 A1 to Patron et al. (Patron) as evidenced by Buttery et al., “Studies on Flavor Volatiles of Some Sweet Corn Products”, J. Agric. Food Chem. 1994, 42, 791-795 (Buttery) as applied to claim 1 above, and further in view of CN 106174504 A to Tang (Tang).
All references to Tang refer to its Clarivate machine translation, a copy of which is included with this Office action.
As applied to claim 1, Hoffman at Abstract, page 5-6, Table 5, [0027], [0031]-[0033] and [0035] as modified by Patron at Abstract, [0179], [0182], [0206] and page 148, bottom right hand column and [0260], discloses a dry powdery food having a particle size d50 of 1000 µm or less after ultrasonication, wherein the powdery food comprise 10 mass % or more of starch, 1 mass % or more of dietary fiber, based on the total mass of the starch-containing dried plant and a 2,3-butanediol content of from 50 to 40,000 ppb by mass, based on the total dry mass of the powdery food and a diethylene glycol monoethyl ether content of from 5 to 40,000 ppb by mass, based on the total mass of the powdery food.
Hoffman at [0037] discloses several food products but does not disclose a drink made from its corn germ flour.
Tang at Abstract on page 1 discloses a buccal tablet which comprises corn dietary fiber from “maize peel”. Tang at page 2, 1st full paragraph discloses that dietary fiber preparations find use in beverage products containing fiber.
Before the effective date of the present invention, the ordinary skilled artisan would have found it obvious in view of Tang for Hoffman to include its corn germ flour in a buccal tablet as in Tang and dissolve the tablet in water, juice or milk to make a dietary fiber containing beverage. Both references disclose dry materials rich in corn dietary fiber. The ordinary skilled artisan working in Hoffman would have desired to incorporate its corn germ flour with the remainder of ingredients in Tang to make a material that disperses in liquids so that it can be used to make beverages containing dietary fiber.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW E MERRIAM whose telephone number is (571)272-0082. The examiner can normally be reached M-H 8:00A-5:30P and alternate Fridays 8:30A-5P.
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/ANDREW E MERRIAM/Examiner, Art Unit 1791
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