DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-2, 5, 11-12 and 14-15 in the reply filed on 18 May 2026 is acknowledged. Claims 3, 4, 6-10 and 13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
New claims 16-20 have been added and are grouped with elected claims 1-2, 5, 11-12 and 14-15.
Claim Objections
Claims 1, 2, 16 and 17 are objected to because of the following informalities:
Claim 1, line 6: “(a) and (b)” should read “(a) to (b)”
Claim 2, lines 1-2: “(a) and (b)” should read “(a) to (b)”
Claim 16, line 6: “(a) and (b)” should read “(a) to (b)”
Claim 17, line 1: “(a) and (b)” should read “(a) to (b)”
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 1-2, 5, 11-12 and 14-20 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.
Claim 1, line 6, recites “wherein: the ratio of (a) and (b) is in a range from 1:9 to 9:1” without specifying if the ratio is a weight:weight ratio, volume:volume ratio or a weight:volume ratio. Paragraph [0007] of the instant specification indicates the ratio is a mass ratio. For the purpose of examination, claim 1 will be interpreted as: .. wherein: the mass ratio of (a) and (b) is in a range from 1:9 to 9:1.
Claim 1, line 7, recites “the total amount of (a) and (b) is in a range of between 0.01 and 30 mass %” without specifying what the mass % is relative to. Is it relative to the total weight of the liquid composition? Or is it relative to the liquid of the composition? Paragraph [0044] of the instant specification indicates “the portion of the powdered cooked-rice improver is preferably determined from the range of between 0.01 and 30 mass% with respect to the whole liquid cooked-rice improver as the sum of the low-decomposition starch and the dextrin.” For the purpose of examination, claim 1 will be interpreted as: … the total amount of (a) and (b) is in a range of between 0.01 and 30 mass % with respect to the whole liquid cooked-rice improver.
Claim 16, line 6, recites “wherein: the ratio of (a) and (b) is in a range from 1:9 to 5:5” without specifying if the ratio is a weight:weight ratio, volume:volume ratio or a weight:volume ratio. Paragraph [0007] of the instant specification indicates the ratio is a mass ratio. For the purpose of examination, claim 16 will be interpreted as: .. wherein: the mass ratio of (a) and (b) is in a range from 1:9 to 5:5.
Claim 16, line 7, recites “the total amount of (a) and (b) is in a range of between 1 and 10 mass %” without specifying what the mass % is relative to. Is it relative to the total weight of the liquid composition? Or is it relative to the liquid of the composition? Paragraph [0044] of the instant specification indicates “the portion of the powdered cooked-rice improver is preferably determined from the range of between 0.01 and 30 mass% with respect to the whole liquid cooked-rice improver as the sum of the low-decomposition starch and the dextrin.” For the purpose of examination, claim 16 will be interpreted as: … the total amount of (a) and (b) is in a range of between 1 and 10 mass % with respect to the whole liquid cooked-rice improver.
Claims 2, 5, 14 and 15 are rejected here because they depend from claim 1.
Claims 17, 19 and 20 are rejected here because they depend from claim 16.
Claims 11 and 12 are rejected here because they incorporate all of the limitations of claim 1.
Claim 18 is rejected here because it incorporates all of the limitations of claim 16.
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.
Claims 1,2, 5, 11, 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Takezaki (JP 2002354992A) evidenced by Albert (Albert et al, (2015). Microencapsulation Analysis Based on Membrane Technology: Basic Research of Spherical, Solid Precursor Microcapsule Production. Periodica Polytechnica Chemical Engineering. 60. 49-53. 10.3311/PPch.8500).
All citations to Takezaki are to the English translation attached.
Regarding claims 1 and 2, Takezaki discloses a cooked rice improving composition comprising dextrin or a soluble starch [0004]. Takezaki discloses the composition may take the form of a solution or suspension in an appropriate liquid, such as water, which meets the claim limitation of a liquid composition [0010]. Takezaki discloses the dextrin has a DE value of 2-10 which falls within the claimed range of 1 to 15 [0006].
Takezaki discloses the soluble starch is a degradation product of potato starch [0006]. As evidenced by Albert potato starch has an average molecular weight of 1020 kDa (1,020,000 Daltons) (p50, section 2.3 and p51 section 3.1.2). Therefore the degradation product of potato starch of Takezaki has an average molecular weight of less than 1,020,000 Daltons, which falls within the claimed range of 500,000-4,000,000 Daltons.
Takezaki discloses the cooked rice improving composition comprises 90-97% (w/w) of dextrin or soluble starch in terms of dry matter [0004].
Takezaki does not disclose the cooked rice improving liquid composition comprising dextrin and a soluble starch, however, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. MPEP 2144.06 I. In the instant case Takezaki discloses both soluble starch and dextrin for use as a rice improving composition, therefore it would be prima facie obvious to combine soluble starch and dextrin to form a rice improving composition.
The combination of dextrin and soluble starch to form the cooked rice improving composition of Takezaki would result in dextrin and soluble starch each from greater than 0 to 97 wt% of the composition on a dry matter basis, which encompasses the claimed ratio of starch to dextrin of 1:9 to 9:1 of claim 1 and the ratio of starch to dextrin of 2:8 to 6:4 for claim 2. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As to the quantity of dextrin and soluble starch in a liquid composition. Takezaki does not disclose the quantity of dextrin and soluble starch in a liquid composition, however Takezaki discloses the cooked rice improving composition changes the color of the final rice product, and the dryness and softness of the final product [0014]. Therefore the quantity of dextrin and soluble starch in the liquid composition is a result effective variable. Change the quantity of dextrin and soluble starch and you change the color, dryness and softness of the final rice product. It has long been settled to be no more than routine experimentation for one of ordinary skill in the art to discover an optimum value of a result effective variable. Additionally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. MPEP 2144.05 II A. As such, the quantity of dextrin and starch recited in claim 1 is merely an obvious variant of the prior art.
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Regarding claim 5, Takezaki discloses the composition may take the form of a solution or suspension in an appropriate liquid, such as water, which meets the claim limitation of wherein the liquid is an oil and emulsification free liquid [0010].
Regarding claim 14, the claim language “wherein said starch is obtained by subjecting non-processed starch to a molecular weight-reducing treatment through one or more treatments selected from the group consisting of enzymatic treatment and a physical processing treatment.” is product by process claim language. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. MPEP 2113 I. Additionally, where 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. MPEP 2112.01 I.
In the instant case, the soluble starch of Takezaki is considered to meet the claim limitations of claim 14. Additionally, Takezaki discloses the soluble starch is an acid, alkali or enzymatic degradation product of starch [0006].
Regarding claim 15, the claim language “wherein said dextrin is obtained by subjecting starch or processed starch to a molecular weight-reducing treatment” is product by process claim language. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. MPEP 2113 I. Additionally, where 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. MPEP 2112.01 I.
In the instant case, the dextrin of Takezaki is considered to meet the claim limitations of claim 15. Additionally, Takezaki discloses the dextrin is an acid, alkali or enzymatic decomposition product of starch [0006].
Regarding claim 11, Takezaki discloses a cooked rice improving composition comprising dextrin or a soluble starch [0004]. Takezaki discloses the composition may take the form of a solution or suspension in an appropriate liquid, such as water, which meets the claim limitation of a liquid composition [0010]. Takezaki discloses the dextrin has a DE value of 2-10 which falls within the claimed range of 1 to 15 [0006].
Takezaki discloses the soluble starch is a degradation product of potato starch [0006]. As evidenced by Albert potato starch has an average molecular weight of 1020 kDa (1,020,000 Daltons) (p50, section 2.3 and p51 section 3.1.2). Therefore the degradation product of potato starch of Takezaki has an average molecular weight of less than 1,020,000 Daltons, which overlaps with the claimed range of 500,000-4,000,000 Daltons. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Takezaki discloses the cooked rice improving composition comprises 90-97% (w/w) of dextrin or soluble starch in terms of dry matter [0004].
Takezaki does not disclose the cooked rice improving liquid composition comprising dextrin and a soluble starch, however, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. MPEP 2144.06 I. In the instant case Takezaki discloses both soluble starch and dextrin for use as a rice improving composition, therefore it would be prima facie obvious to combine soluble starch and dextrin to form a rice improving composition.
The combination of dextrin and soluble starch to form the cooked rice improving composition of Takezaki would result in dextrin and soluble starch each from greater than 0 to 97 wt% of the composition on a dry matter basis, which encompasses the claimed ratio of starch to dextrin of 1:9 to 9:1 of claim 1. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As to the quantity of dextrin and soluble starch in a liquid composition. Takezaki does not disclose the quantity of dextrin and soluble starch in a liquid composition, however Takezaki discloses the cooked rice improving composition changes the color of the final rice product, and the dryness and softness of the final product [0014]. Therefore the quantity of dextrin and soluble starch in the liquid composition is a result effective variable. Change the quantity of dextrin and soluble starch and you change the color, dryness and softness of the final rice product. It has long been settled to be no more than routine experimentation for one of ordinary skill in the art to discover an optimum value of a result effective variable. Additionally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. MPEP 2144.05 II A. As such, the quantity of dextrin and starch recited in claim 1 is merely an obvious variant of the prior art.
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which is cited above.
Takezaki discloses a process for cooking rice which comprises combining the cooked rice improving composition where the composition is dissolved in water and then added to the rice and the rice is cooked by steaming. Takezaki discloses the composition is added from 0.02-0.6% (w/w) in terms of dry matter with respect to the rice [0011], which falls within the claimed range of 0.001-1.0%
As to the claim language, “in which the flavor thereof has been improved,” this language is deemed to be an intended use in so far as the structure of the product is concerned. In article claims, a claimed intended use must result in structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. MPEP 2111.02. Given that the cooked rice improving composition of Takezaki is identical to that of the presently claimed in terms of structure and composition, it meets the intended use of the claimed article.
Regarding claims 16 and 17, Takezaki discloses a cooked rice improving composition comprising dextrin or a soluble starch [0004]. Takezaki discloses the composition may take the form of a solution or suspension in an appropriate liquid, such as water, which meets the claim limitation of a liquid composition [0010]. Takezaki discloses the dextrin has a DE value of 2-10 which falls within the claimed range of 1 to 15 [0006].
Takezaki discloses the soluble starch is a degradation product of potato starch [0006]. As evidenced by Albert potato starch has an average molecular weight of 1020 kDa (1,020,000 Daltons) (p50, section 2.3 and p51 section 3.1.2). Therefore the degradation product of potato starch of Takezaki has an average molecular weight of less than 1,020,000 Daltons, which overlaps with the claimed range of 500,000-4,000,000 Daltons. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Takezaki discloses the cooked rice improving composition comprises 90-97% (w/w) of dextrin or soluble starch in terms of dry matter [0004].
Takezaki does not disclose the cooked rice improving liquid composition comprising dextrin and a soluble starch, however, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. MPEP 2144.06 I. In the instant case Takezaki discloses both soluble starch and dextrin for use as a rice improving composition, therefore it would be prima facie obvious to combine soluble starch and dextrin to form a rice improving composition.
The combination of dextrin and soluble starch to form the cooked rice improving composition of Takezaki would result in dextrin and soluble starch each from greater than 0 to 97 wt% of the composition on a dry matter basis, which encompasses the claimed ratio of starch to dextrin of 1:9 to 5:5 of claim 16 and the ratio of starch to dextrin of 2:8 to 5:5 for claim 17. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As to the quantity of dextrin and soluble starch in a liquid composition. Takezaki does not disclose the quantity of dextrin and soluble starch in a liquid composition, however Takezaki discloses the cooked rice improving composition changes the color of the final rice product, and the dryness and softness of the final product [0014]. Therefore the quantity of dextrin and soluble starch in the liquid composition is a result effective variable. Change the quantity of dextrin and soluble starch and you change the color, dryness and softness of the final rice product. It has long been settled to be no more than routine experimentation for one of ordinary skill in the art to discover an optimum value of a result effective variable. Additionally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. MPEP 2144.05 II A. As such, the quantity of dextrin and starch recited in claim 16 is merely an obvious variant of the prior art.
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which is cited above
Regarding claim 19, the claim language “wherein said starch is obtained by subjecting non-processed starch to a molecular weight-reducing treatment through one or more treatments selected from the group consisting of enzymatic treatment and a physical processing treatment.” is product by process claim language. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. MPEP 2113 I. Additionally, where 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. MPEP 2112.01 I.
In the instant case, the soluble starch of Takezaki is considered to meet the claim limitations of claim 19. Additionally, Takezaki discloses the soluble starch is an acid, alkali or enzymatic degradation product of starch [0006].
Regarding claim 20, the claim language “wherein said dextrin is obtained by subjecting starch or processed starch to a molecular weight-reducing treatment” is product by process claim language. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. MPEP 2113 I. Additionally, where 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. MPEP 2112.01 I.
In the instant case, the dextrin of Takezaki is considered to meet the claim limitations of claim 20. Additionally, Takezaki discloses the dextrin is an acid, alkali or enzymatic decomposition product of starch [0006].
Regarding claim 18, Takezaki discloses a cooked rice improving composition comprising dextrin or a soluble starch [0004]. Takezaki discloses the composition may take the form of a solution or suspension in an appropriate liquid, such as water, which meets the claim limitation of a liquid composition [0010]. Takezaki discloses the dextrin has a DE value of 2-10 which falls within the claimed range of 1 to 15 [0006].
Takezaki discloses the soluble starch is a degradation product of potato starch [0006]. As evidenced by Albert potato starch has an average molecular weight of 1020 kDa (1,020,000 Daltons) (p50, section 2.3 and p51 section 3.1.2). Therefore the degradation product of potato starch of Takezaki has an average molecular weight of less than 1,020,000 Daltons, which overlaps with the claimed range of 500,000-4,000,000 Daltons. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Takezaki discloses the cooked rice improving composition comprises 90-97% (w/w) of dextrin or soluble starch in terms of dry matter [0004].
Takezaki does not disclose the cooked rice improving liquid composition comprising dextrin and a soluble starch, however, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. MPEP 2144.06 I. In the instant case Takezaki discloses both soluble starch and dextrin for use as a rice improving composition, therefore it would be prima facie obvious to combine soluble starch and dextrin to form a rice improving composition.
The combination of dextrin and soluble starch to form the cooked rice improving composition of Takezaki would result in dextrin and soluble starch each from greater than 0 to 97 wt% of the composition on a dry matter basis, which encompasses the claimed ratio of starch to dextrin of 1:9 to 5:5 of claim 16. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As to the quantity of dextrin and soluble starch in a liquid composition. Takezaki does not disclose the quantity of dextrin and soluble starch in a liquid composition, however Takezaki discloses the cooked rice improving composition changes the color of the final rice product, and the dryness and softness of the final product [0014]. Therefore the quantity of dextrin and soluble starch in the liquid composition is a result effective variable. Change the quantity of dextrin and soluble starch and you change the color, dryness and softness of the final rice product. It has long been settled to be no more than routine experimentation for one of ordinary skill in the art to discover an optimum value of a result effective variable. Additionally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. MPEP 2144.05 II A. As such, the quantity of dextrin and starch recited in claim 16 is merely an obvious variant of the prior art.
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which is cited above.
Takezaki discloses a process for cooking rice which comprises combining the cooked rice improving composition where the composition is dissolved in water and then added to the rice and the rice is cooked by steaming. Takezaki discloses the composition is added from 0.02-0.6% (w/w) in terms of dry matter with respect to the rice [0011], which falls within the claimed range of 0.001-1.0%
As to the claim language, “in which the flavor thereof has been improved,” this language is deemed to be an intended use in so far as the structure of the product is concerned. In article claims, a claimed intended use must result in structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. MPEP 2111.02. Given that the cooked rice improving composition of Takezaki is identical to that of the presently claimed in terms of structure and composition, it meets the intended use of the claimed article.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Takezaki (JP 2002354992A) evidenced by Albert (Albert et al, (2015). Microencapsulation Analysis Based on Membrane Technology: Basic Research of Spherical, Solid Precursor Microcapsule Production. Periodica Polytechnica Chemical Engineering. 60. 49-53. 10.3311/PPch.8500) as applied to claim 11 above, and further in view of Nakamura (JP 2000236825A).
All citations to Nakamura are to the English translation attached.
Regarding claim 12, Takezaki does not disclose the type of rice.
Nakamura, in the field of methods for cooking rice, discloses dissolving a cyclic starch in water and using it to cook rice which is easy to loosen without adding oil Nakamura discloses the rice may be sushi rice [0011]. Nakamura discloses an example where the cooked rice is prepared with a dextrin [0022].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the cooked rice improving composition of Takezaki with the sushi rice of Nakamura since both are drawn to starch based additives for cooking rice.
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 1-2, 5, 11-12 and 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 6, 13, 14, 16 and 17 of U.S. Patent No. 12,171,250 B2 (herein referred to as ‘250). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1 and 16, ‘250 claim 5 discloses a liquid composition comprising the composition of ‘250 claim 1 dissolved in water or a seasoning liquid.
‘250 claim 1 recites a composition comprising:
(a) a starch having a weight average molecular weight of 500,000 to 4,000,000 Daltons, in an amount of 20-60 wt % of the composition, and
(b) a dextrin having a dextrose equivalent (DE) value of from 1 to 15 in an amount of 40-80 wt % of the composition.
The starch of ‘250, claim 1(a) is the same as that of instant claim 1(a) and instant claim 16 (a).
The dextrin of ‘250, claim 1(b) is the same as that of instant claim 1(b) and instant claim 16 (b).
As to the instant claim 1 ratio of (a):(b) of 1:9 to 9:1 and the instant claim 16 ratio of 1:9 to 5:5, ‘250 claim 1 discloses starch (a) from 20-60 wt% and dextrin (b) from 40-80 wt%, which corresponds to the ratios of (a):(b) of 1:4-1:0.67, which overlaps with the instant claim 1 range of 9:1 to 1:9 and overlaps with the instant claim 16 range of 1:9 to 5:5. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As to the instant claim 1 and instant claim 16 total amount of (a) and (b) in the composition, the quantity of dextrin and soluble starch in the liquid composition is a result effective variable. Change the quantity of dextrin and soluble starch and you change the color, dryness and softness of the final rice product. It has long been settled to be no more than routine experimentation for one of ordinary skill in the art to discover an optimum value of a result effective variable. Additionally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. MPEP 2144.05 II A. As such, the quantity of dextrin and starch recited in claims 1 and 16 are merely an obvious variant of the prior art.
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein as discussed above.
Regarding claims 2 and 17, ‘250 claim 1 discloses starch (a) from 20-60 wt% and dextrin (b) from 40-80 wt%, which corresponds to the ratios of (a):(b)of 1:4-1:0.67, which falls within the instant claim 1 range of 2:8 to 6:4 and overlaps with the instant claim 17 range of 2:8 to 5:5. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 5, ‘250 claim 6 discloses wherein the liquid cooked-rice improver is an oil-and emulsification-free liquid.
Regarding claims 14 and 19, ‘250 claim 16 discloses wherein said starch is obtained by subjecting non-processed starch to a molecular weight reducing treatment through one or more treatments selected from the group consisting of enzymatic treatment and a physical processing treatment.
Regarding claims 15 and 20, ‘250 claim 17 discloses wherein said dextrin is obtained by subjecting starch or processed starch to a molecular weight reducing treatment.
Regarding claims 11 and 18, ‘250 claim 13 discloses cooked rice in which the flavor thereof has been improved, the cooked rice comprising: the cooked-rice flavor-improving composition of claim 1 dissolved in water or a seasoning liquid wherein a dry mass of a sum of the low-decomposition starch and the dextrin with respect to raw rice is within a range of 0.001 % to 1.0%.
Regarding claim 12, ‘250 claim 14 discloses the rice is sushi rice.
Conclusion
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/C.L.G./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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