FINAL 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 .
Status of the Claims
This action is in response to papers filed 09/08/2025 in which claims 1-10 were canceled; and claim 11 was amended. All the amendments have been thoroughly reviewed and entered.
Claim 11 is under examination.
Withdrawn Rejection
The Examiner has re-weighted all the evidence of record. Any rejection and/or objection not specifically addressed below is hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
New Rejections
Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 112 – NEW MATTER
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 11 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 11 introduces new matter as the claim recites the limitations: “an encapsulating material comprising modified starch and a molding agent” and “a fragrance material”. There is no support for said limitations in the specification.
With respect to “an encapsulating material comprising modified starch and a molding agent,” it is noted that this amendment is interpreted as the encapsulating material contains both modified starch and molding agent. However, the specification only discloses modified starch as an encapsulating material, and the molding agent is not disclosed in the specification as an encapsulating material. Per at least paragraphs [0007], [0021], and [0035] of the specification, modified starch was disclosed as the encapsulating material, and paragraph [0011] of the specification disclosed that the molding agent is a separate component from the encapsulating material. Thus, while Applicant has support for “an encapsulating material comprising modified starch,” Applicant does not have support for the amendment of “an encapsulating material comprising modified starch and a molding agent” in the specification. To obviate this new matter issue, it is suggested that the claimed recitation of “step 1: taking an encapsulating material comprising modified starch and a molding agent; stirring and uniformly mixing” be amended to:
“step 1: stirring and uniformly mixing an encapsulating material comprising modified starch with a molding agent”.
The above suggested amendment would not only address the new matter issue above, but also put proper active steps language for step 1.
With respect to “a fragrance material,” there is no support anywhere in the specification for the generic limitation of “a fragrance material.” Applicant does not have support in the specification for the broadly claimed genus of “a fragrance material,” which encompasses laundry list of fragrances including fragrances such as peppermint, Hexyl cinnamic aldehyde, geraniol, and gamma-undecalactone, which are clearly not supported by Applicant’s specification.
MPEP §2163.06 states: “Applicant should therefore specifically point out the support for any amendments made to the disclosure.” Applicant has not directed the Examiner to the support in the specification for the amendments.
As such, the disclosure does not reasonably convey that the inventor had possession of the subject matter of claim 11 as amended at the time of filing of the instant application.
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.
Claim 11 is 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 11, the recitation of “its temperature” renders claim 11 indefinite because it is unclear what “its” is referencing to. Is the “its” temperature referencing to the temperature of the mixed material, the mold frame, or another component of the method claim. Clarification in claim 11 is required.
As a result, claim 11 does not clearly set forth the metes and bounds of patent protection desired.
Maintained-Modified Rejection
Modification Necessitated by Applicant’s Claim 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) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Glenn et al (US 2007/0021515 A1) in view of Clark et al (US 2022/0295862 A1) in view of Heinze et al (US 2020/0216572 A1).
Regarding claim 11, Glenn teaches a method of producing starch-based beads comprising (i) mixing a starch derivative (a modified starch) and celluloses to form a mixed material; (ii) adding the mixed material into a twin screw extruder and then adding water and glycerol, then heated above the softening point of the plasticized starch (starch + glycerol) to form a thermoplastic melt; (iii) extruding the thermoplastic melt through a die opening to yield extruded strand; (iv) cooling the extruded strand; (v) and cutting the cooled strand into beads (Abstract; [0009]-[0061]; Examples 1 and 2; claims 1-10). Glenn teaches the heating temperature ranges from about 80°C to about 240°C ([0056], [0064] and Examples 1 and 2). Thus, the starch-based beads produced or obtained by the method from Glenn are beads having a melting temperature greater than 50°C because the thermoplastic melt obtained in Glenn was made via heating (melting) the mixed material above the softening point of the plasticized starch (starch + glycerol), which is a temperature that is greater than 50°C, as the heating temperature was particularly indicated in Glenn as a temperature in range from about 80°C to about 240°C.
Glenn further teaches the extruded strand can be cooled before being pelletized, in which the cooling of the extruded strand is at temperature of less than 35°C ([0049]), thereby meeting the claimed “transporting the mixed material to an extrusion mold frame, reducing its temperature below the melting temperature of the encapsulating material.”
However, Glenn does not teach the fragrance material, bacteriostatic agent and pigment of claim 11.
Regarding the spice of claim 11, Clark teaches a thermally stable aromatic bead comprising an enzyme modified starch (an encapsulating material), a botanical extract such as Angelica root, caraway seed, cinnamon, clove, coriander seeds, elderberry, elderflower, ginger, jasmine, lavender, lilac, peppermint (Mentha piperta) or quince (a fragrant material), water, glycerol, and a cellulose binder (Abstract; [0006]-[0038], [0042]-[0102], [0117], [0136]-[0181] and [0193]). Clark teaches the aromatic bead is produced by (i) mixing the starch, botanical extract, and cellulose binder and then adding water and glycerol to form a slurry; (ii) extruding the slurry using a screw extruder to extrudate shape that is then cut or spheronized into rounded beads; and drying the beads at a temperature of 65°C to obtain the aromatic beads (Examples 1-7).
Regarding the bacteriostatic agent and pigment of claim 11, Heinze teaches an encapsulated product in the form of a pellet comprising an enzyme modified starch, binder, fragrances, colors (pigment), and preservatives (bacteriostatic agent) ([0008]-[0093], [0127]-[0167] and [0357]-[0371]).
It would have been obvious to one of ordinary skill in the art to include a botanical extract such as Angelica root, caraway seed, cinnamon, clove, coriander seeds, elderberry, elderflower, ginger, jasmine, lavender, lilac, peppermint (Mentha piperta) or quince (a fragrant material), colors, and preservatives in the mixed material of Glenn that is used for producing starch-based beads, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Clark and Heinze provided the guidance for including known additives such as a botanical extract including Angelica root, caraway seed, cinnamon, clove, coriander seeds, elderberry, elderflower, ginger, jasmine, lavender, lilac, peppermint (Mentha piperta) or quince (a fragrant material), colors, and preservatives, which are commonly used in the production of starch-based beads. One of ordinary skill in the art would have reasonable expectation of success in including a botanical extract such as Angelica root, caraway seed, cinnamon, clove, coriander seeds, elderberry, elderflower, ginger, jasmine, lavender, lilac, peppermint (Mentha piperta) or quince (a fragrant material), colors, and preservatives in the starch-based beads of Glenn because Glenn indicated the mixed material used in forming the starch-based beads can contain additional components known to be combinable with the mixed material (Glenn: [0038] and [0041]). Thus, an ordinary artisan seeking to provide an aromatic starch-based bead that has a desired color and preserved properties during storage would have looked to include known additives for production of starch-based beads including colors, preservatives, and aromatic flavor (fragrant material) such as Angelica root, caraway seed, cinnamon, clove, coriander seeds, elderberry, elderflower, ginger, jasmine, lavender, lilac, peppermint (Mentha piperta) or quince, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the in art the before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 09/08/2025 have been fully considered but they are not persuasive.
Applicant argues Glenn failed to “teach or suggest the claimed fragrance bead preparation method that produces bead capable of withstanding melting at temperatures above 50°C.” (Remarks, page 4, 3rd paragraph).
In response, the Examiner disagrees. The claimed method is not drawn to producing bead capable of withstanding melting at temperatures above 50°C, which implies that the bead withstand melting or resist from melting at temperatures above 50°C, or in other words, the bead is still a solid at a temperature higher than 50°C. Rather, the claimed method as stated in the preamble is drawn to preparing fragrance bead having a melting temperature greater than 50°C, which is temperature to which the bead melts or in other words the melting temperature of the bead is greater than 50°C. Thus, Applicant’s argument pertaining to “withstanding melting at temperatures above 50°C” is inapposite to the claimed “a melting temperature greater than 50°C”.
As to the claimed “fragrance bead having a melting temperature greater than 50°C”as recited in the preamble of the method of claim 15, as discussed in the pending 103 rejection, Glenn teaches the heating temperature ranges from about 80°C to about 240°C (see 103 rejection, page 6-7 of this office action). Thus, the starch-based beads produced or obtained by the method from Glenn are beads having a melting temperature greater than 50°C because the thermoplastic melt obtained in Glenn was made via heating (melting) the mixed material above the softening point of the plasticized starch (starch + glycerol), which is a temperature that is greater than 50°C, as the heating temperature was particularly indicated in Glenn as a temperature in range from about 80°C to about 240°C.
Applicant argues Clark failed to “disclose or suggest the claimed high-temperature-resistant fragrance bead having a melting temperature greater than 50°C.” Applicant alleges that the passages from Clark “recites mixing enzyme-modified starch, cinnamon, cellulose binder, water, and glycerol, extruding the slurry, and drying the beads at 65 °C.” Thus, Applicant alleges that “[r]eading Clark, a person of ordinary skill in the art would understand that Clark does not teach or suggest producing beads that remain stable at temperatures above 50 °C, dissolve within 4-10 minutes, or are moldable into star- or flower-shaped pellets.” As such, Applicant alleges that “the teachings in Clark are not directed to a high-temperature-resistant fragrance bead having a melting temperature greater than 50 °C.” (Remarks, page 4, 3rd paragraph to page 5).
In response, the Examiner disagrees. It is first noted that that the claimed method is not drawn to producing beads that “dissolve within 4-10 minutes” or “moldable into “star- or flower-shaped pellets.” Thus, it is noted that the features upon which applicant relies (i.e., “dissolve within 4-10 minutes” and “moldable into “star- or flower-shaped pellets”) are not recited in the rejected claim(s) 11. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
With respect to the claimed limitation of “high-temperature-resistant fragrance bead having a melting temperature greater than 50°C,” as discussed above, said bead having a melting temperature greater than 50°C was taught in Glenn. As discussed above, Glenn teaches the heating temperature ranges from about 80°C to about 240°C (see 103 rejection, page 6-7 of this office action). Thus, the starch-based beads produced or obtained by the method from Glenn are beads having a melting temperature greater than 50°C because the thermoplastic melt obtained in Glenn was made via heating (melting) the mixed material above the softening point of the plasticized starch (starch + glycerol), which is a temperature that is greater than 50°C, as the heating temperature was particularly indicated in Glenn as a temperature in range from about 80°C to about 240°C.
Applicant argues “the combination fails to teach the claimed process steps of extrusion, controlled cooling below the encapsulant melting temperature, and shape-controlled cutting to form stable beads.” (Remarks, top of page 5).
In response, the Examiner disagrees. As discussed above and in the 103 rejection, Glenn taught the steps of extrusion, cooling below the encapsulant melting temperature and cutting to form the beads. See 103 rejection, pages 6-7 of this office action, said pages being incorporated herein its entirety.
Applicant argues:
“[a]s demonstrated in Table 1 of the present application, the claimed method uniquely produces beads that remain stable at 50 °C, dissolve within 4-10 minutes, and can be molded into star- or flower-shaped beads. Comparative examples using unmodified starch, polyethylene glycol (PEG), or omitting the release/molding agent fail to achieve this combination of thermal stability, dissolution rate, and moldability. These unexpected results provide objective evidence of non-obviousness.” (Remarks, page 5, middle paragraph).
In response, the Examiner disagrees. Applicant’s alleged unexpected results as shown in Table 1 of the specification are considered, but found insufficient obviate the pending 103 rejection as set forth in this office action for the reasons below.
It is first noted that the claimed method is not drawn to producing beads “that remain stable at 50 °C, dissolve within 4-10 minutes, and can be molded into star- or flower-shaped beads,” as alleged by Applicant. Thus, it is noted that the features upon which applicant relies (i.e., “stable at 50°C,” “dissolve within 4-10 minutes,” and “moldable into “star- or flower-shaped pellets”) are not recited in the rejected claim(s) 11. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Second, the results from Table 1 are not unexpected results because the claimed method is drawn to producing “high-temperature-resistant fragrance bead” and contrary to Applicant’s allegation, Table 1 showed that Comparative Examples 3 and 4 having modified starch, met the claimed “beads having a melting temperature greater than 50°C,” as the fragrance beads of Comparative Examples 3 and 4 achieved the same “high-temperature resistance” property of “no melting phenomenon occurred,” as Examples 1-5, as well as, the fragrance beads of Comparative Examples 3 and 4 also have melting temperature of greater than 50°C (Comparative Example 3 = 74°C; Comparative Example 4 = 68°C). Thus, the results shown in Table 1 is truly not unexpected.
Third, Examples 1-5 from Table 1 are drawn to particularly fragrance beads with a particular shape (five-pointed star-shaped sheet particles formed using potato starch or tapioca starch modified by thermophilic or thermotolerant maltose-transglucosylate as the modified starch in a particular amount; glycerol or a polymer of glycerin as the release agent in a particular amount; a combination of one or more of polyoxyethylene stearate, plant-based modified ester quaternary ammonium salt, plant-based modified imidazoline quaternary ammonium salt, plant-based modified amide salt, cationic modified starch, cationic modified cellulose or hemicellulose as the molding agent in a particular amount; spice (a “fragrance material”) in a particular amount, bacteriostatic agent in a particular amount, pigment in a particular amount, and water in a particular amount. However, the method of producing the fragrance bead of claim 11 is drawn generically using “modified starch” which broadly encompassed chemically modified starches, “molding agent” which broadly encompassed clays, polystyrene and epoxy resins; “releasing agent” which broadly encompassed petroleum jelly, mineral oil, and polyvinyl alcohol; and “fragrance material” which broadly encompassed peppermint, Hexyl cinnamic aldehyde, geraniol, and gamma-undecalactone. Thus, claim 11 is not commensurate in scope with the components and amounts thereof used in producing the fragrance bead of Examples 1-5. Given the enormously broad scope of claim 11, there is no predictability if a fragrance bead produced using starch sodium octenyl succinate (a modified starch), gamma-undecalactone (a fragrance material), polystyrene (a molding agent), and mineral oil (releasing agent) would exhibit the same results to the same extent as shown in Table 1 of Applicant’s specification. Thus, claim 11 is not commensurate in scope with the fragrance beads of Examples 1-5 of the specification. MPEP §716.02(d) states: [w]hether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100°C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110°C and 130°C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60°C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100°C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.).
Lastly, as discussed above, Glenn taught a method of producing high-temperature resistant bead having a melting temperature greater than 50°C (see 103 rejection, page 6-7 of this office action), and thus, with any alleged evidence of unexpected results, said alleged evidence of unexpected results must be compare to the closest prior art commensurate in scope with the claimed invention. MPEP §716.02(e) states: [a]n affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979).
For at least the reasons discussed above, Applicant’s alleged evidence of unexpected results as shown in the Specification are insufficient to obviate the pending 103 rejection as set forth in this office action.
Applicant argues “Heinze's pellets are prepared using processes such as spray drying, granulation, or coating, not by extrusion followed by controlled cooling and shape-controlled cutting as recited in claim 11.” Applicant further alleges “Heinze does not disclose high-temperature-resistant fragrance beads that withstand melting above 50 °C, dissolve within 4-10 minutes, or are moldable into star- or flower-shaped forms.” Applicant further alleges that Heinze’s “pigments and bacteriostatic agents are included for storage stability, not for producing structurally stable, moldable fragrance beads.” (Remarks, page 5, last paragraph).
In response, the Examiner disagrees. As discussed in the pending 103 rejection, the method steps including extrusion, cooling and cutting have been taught by Glenn (see 103 rejection, page 6-7 of this office action). Furthermore, as discussed above, it is reiterated that the claimed method is not drawn to producing beads that “dissolve within 4-10 minutes” or “moldable into “star- or flower-shaped pellets.” Thus, it is noted that the features upon which applicant relies (i.e., “dissolve within 4-10 minutes” and “moldable into “star- or flower-shaped pellets”) are not recited in the rejected claim(s) 11. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Additionally, as discussed above, it is reiterated that the claimed method is not drawn to producing bead capable of withstanding melting at temperatures above 50°C, which implies that the bead withstand melting or resist from melting at temperatures above 50°C, or in other words, the bead is still a solid at a temperature higher than 50°C. Rather, the claimed method as stated in the preamble is drawn to preparing fragrance bead having a melting temperature greater than 50°C, which is temperature to which the bead melts or in other words the melting temperature of the bead is greater than 50°C. Thus, Applicant’s argument pertaining to “withstanding melting at temperatures above 50°C” is inapposite to the claimed “a melting temperature greater than 50°C”.
With respect to the claimed limitation of “high-temperature-resistant fragrance bead having a melting temperature greater than 50°C,” as discussed above, said bead having a melting temperature greater than 50°C was taught in Glenn. As discussed above, Glenn teaches the heating temperature ranges from about 80°C to about 240°C (see 103 rejection, page 6-7 of this office action). Thus, the starch-based beads produced or obtained by the method from Glenn are beads having a melting temperature greater than 50°C because the thermoplastic melt obtained in Glenn was made via heating (melting) the mixed material above the softening point of the plasticized starch (starch + glycerol), which is a temperature that is greater than 50°C, as the heating temperature was particularly indicated in Glenn as a temperature in range from about 80°C to about 240°C.
Applicant argues that the Examiner “fails to provide the required evidence of a motivation for a person of ordinary skill in the art to perform such modification.” Applicant alleges “[w]hile Clark may provide a reason for including cinnamon in its aromatic beads, Clark fails to suggest why a person of ordinary skill in the art would be motivated to modify a device such as the one disclosed in Glenn, which already produces starch-based beads suitable for its intended purpose.” Applicant alleges “based on Clark's disclosure of extruding the starch-cinnamon-cellulose slurry and drying the beads at 65 °C (Examples 1-7), Clark's extrusion and drying process already achieves its goal of thermally stable aromatic beads without colors or preservatives.” Applicant goes on to allege “Clark do not suggest that adding colors or preservatives is needed to achieve its intended goal. Moreover, Clark does not suggest producing beads capable of withstanding melting at temperatures above 50 °C, nor does it teach or suggest the shape-controlled extrusion and cutting steps recited in amended claim 11.” Applicant alleges “Heinze teaches encapsulated pellets, but does not suggest adapting its additives to Glenn's extrusion process.” Thus, Applicant alleges “the record lacks an articulated reasoning with rational underpinning for the proposed combination.” (Remarks, page 6).
In response, the Examiner disagrees. As discussed in the pending 103, a motivation to combine the references of Glenn, Clark, and Heinze and a reasonable expectation of success in doing so have been adequately articulated in the obviousness analysis.
As discussed above in the pending 103 rejection, it is reiterated that it would have been obvious to one of ordinary skill in the art to include a botanical extract such as Angelica root, caraway seed, cinnamon, clove, coriander seeds, elderberry, elderflower, ginger, jasmine, lavender, lilac, peppermint (Mentha piperta) or quince (a fragrant material), colors, and preservatives in the mixed material of Glenn that is used for producing starch-based beads, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Clark and Heinze provided the guidance for including known additives such as a botanical extract including Angelica root, caraway seed, cinnamon, clove, coriander seeds, elderberry, elderflower, ginger, jasmine, lavender, lilac, peppermint (Mentha piperta) or quince (a fragrant material), colors, and preservatives, which are commonly used in the production of starch-based beads. One of ordinary skill in the art would have reasonable expectation of success in including a botanical extract such as Angelica root, caraway seed, cinnamon, clove, coriander seeds, elderberry, elderflower, ginger, jasmine, lavender, lilac, peppermint (Mentha piperta) or quince (a fragrant material), colors, and preservatives in the starch-based beads of Glenn because Glenn indicated the mixed material used in forming the starch-based beads can contain additional components known to be combinable with the mixed material (Glenn: [0038] and [0041]). Thus, an ordinary artisan seeking to provide an aromatic starch-based bead that has a desired color and preserved properties during storage would have looked to include known additives for production of starch-based beads including colors, preservatives, and aromatic flavor (fragrant material) such as Angelica root, caraway seed, cinnamon, clove, coriander seeds, elderberry, elderflower, ginger, jasmine, lavender, lilac, peppermint (Mentha piperta) or quince, and achieve Applicant’s claimed invention with reasonable expectation of success.
Accordingly, a legal conclusion of obviousness of Applicant’s claimed method under KSR based on the combined teachings of Glenn, Clark, and Heinze, has been adequately established by the Examiner. It is noted that a teaching, suggestion, or motivation to combine references that is found in the prior art is an appropriate rationale for determining obviousness. KSR, 550 U.S. at 418, 82 USPQ2d at 1396.
Applicant argues “Glenn’s structure already achieves its goal of producing starch-based beads with satisfactory bead formation and stability.” Applicant alleges “Glenn does not suggest that further improvement is desired, nor that another feature should be added to further improve the beads. In particular, Glenn does not suggest to add cinnamon, pigments, or bacteriostatic agents, such as those disclosed in Clark. Thus, Applicant alleges “Glenn and Clark, therefore, do not provide the motivation to perform the proposed modification of Glenn. In other words, an attempt to bring in the isolated teaching of Clark’s spice, pigment, or bacteriostatic agent into Glenn would amount to improperly picking and choosing features from different references without regard to the teachings of the references as a whole.” Thus, Applicant alleges “[w]hile the required evidence of motivation to combine need not come from the applied references themselves, the evidence must come from somewhere within the record.” As such, Applicant alleges “there is nothing in the record supporting the Office Action’s proposed modification of Glenn.” (Remarks, page 6, last paragraph to page 7).
In response, the Examiner disagrees. As discussed above, Glenn, Clark and Heinze are properly combined to render obvious Applicant’s claimed method.
As discussed above, a motivation to combine the references of Glenn, Clark, and Heinze and a reasonable expectation of success in doing so have been adequately articulated in the obviousness analysis.
As discussed above in the pending 103 rejection, it is reiterated that it would have been obvious to one of ordinary skill in the art to include a botanical extract such as Angelica root, caraway seed, cinnamon, clove, coriander seeds, elderberry, elderflower, ginger, jasmine, lavender, lilac, peppermint (Mentha piperta) or quince (a fragrant material), colors, and preservatives in the mixed material of Glenn that is used for producing starch-based beads, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Clark and Heinze provided the guidance for including known additives such as a botanical extract including Angelica root, caraway seed, cinnamon, clove, coriander seeds, elderberry, elderflower, ginger, jasmine, lavender, lilac, peppermint (Mentha piperta) or quince (a fragrant material), colors, and preservatives, which are commonly used in the production of starch-based beads. One of ordinary skill in the art would have reasonable expectation of success in including a botanical extract such as Angelica root, caraway seed, cinnamon, clove, coriander seeds, elderberry, elderflower, ginger, jasmine, lavender, lilac, peppermint (Mentha piperta) or quince (a fragrant material), colors, and preservatives in the starch-based beads of Glenn because Glenn indicated the mixed material used in forming the starch-based beads can contain additional components known to be combinable with the mixed material (Glenn: [0038] and [0041]). Thus, an ordinary artisan seeking to provide an aromatic starch-based bead that has a desired color and preserved properties during storage would have looked to include known additives for production of starch-based beads including colors, preservatives, and aromatic flavor (fragrant material) such as Angelica root, caraway seed, cinnamon, clove, coriander seeds, elderberry, elderflower, ginger, jasmine, lavender, lilac, peppermint (Mentha piperta) or quince, and achieve Applicant’s claimed invention with reasonable expectation of success.
Accordingly, a legal conclusion of obviousness of Applicant’s claimed method under KSR based on the combined teachings of Glenn, Clark, and Heinze, has been adequately established by the Examiner. It is noted that a teaching, suggestion, or motivation to combine references that is found in the prior art is an appropriate rationale for determining obviousness. KSR, 550 U.S. at 418, 82 USPQ2d at 1396.
Applicant argues:
“it is not clear from the record how Clark's extrusion and drying process for starch-cinnamon-cellulose beads could be incorporated into Glenn. Under such a modification, Glenn's extruder and process parameters would have to be altered to accommodate the addition of cinnamon, pigments, and bacteriostatic agents while maintaining bead formation. However, such modification would require a substantial reconstruction or redesign of the elements of Glenn, and/or would change the basic principle of operation of Glenn. Similarly, incorporating Heinze's teachings into Glenn's extrusion process would require substantial redesign and would not reasonably be expected to yield beads having the claimed melting temperature, dissolution rate, and moldability. There is no evidence that a person of ordinary skill in the art would be motivated to perform such changes and redesign.10 Furthermore, it is not clear from the record whether such modification would actually produce high-temperature-resistant fragrance beads as claimed in amended claim 11.” (Remarks, page 7, last paragraph to page 8).
In response, the Examiner disagrees. As discussed above, the high-temperature-resistant bead having a melting temperature greater than 50°C was taught in Glenn. As discussed above, Glenn teaches the heating temperature ranges from about 80°C to about 240°C (see 103 rejection, page 6-7 of this office action). Thus, the starch-based beads produced or obtained by the method from Glenn are beads having a melting temperature greater than 50°C because the thermoplastic melt obtained in Glenn was made via heating (melting) the mixed material above the softening point of the plasticized starch (starch + glycerol), which is a temperature that is greater than 50°C, as the heating temperature was particularly indicated in Glenn as a temperature in range from about 80°C to about 240°C.
The addition of fragrance material, bacteriostatic agent, and pigment as guided by Clark and Heinze are to provide additional features/characteristics to the starch beads of Glenn, which as indicated in the pending 103 rejection, to provide an aromatic starch-based bead having a desired color and preserved properties during storage. These are known additives for production of starch-based beads and are permissible for addition to the production of the starch-based beads of Glenn.
As discussed above, it is obviously clear that Glenn, Clark and Heinze are properly combined to render obvious Applicant’s claimed method.
As discussed above, a motivation to combine the references of Glenn, Clark, and Heinze and a reasonable expectation of success in doing so have been adequately articulated in the obviousness analysis.
As discussed above in the pending 103 rejection, it is reiterated that it would have been obvious to one of ordinary skill in the art to include a botanical extract such as Angelica root, caraway seed, cinnamon, clove, coriander seeds, elderberry, elderflower, ginger, jasmine, lavender, lilac, peppermint (Mentha piperta) or quince (a fragrant material), colors, and preservatives in the mixed material of Glenn that is used for producing starch-based beads, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Clark and Heinze provided the guidance for including known additives such as a botanical extract including Angelica root, caraway seed, cinnamon, clove, coriander seeds, elderberry, elderflower, ginger, jasmine, lavender, lilac, peppermint (Mentha piperta) or quince (a fragrant material), colors, and preservatives, which are commonly used in the production of starch-based beads. One of ordinary skill in the art would have reasonable expectation of success in including a botanical extract such as Angelica root, caraway seed, cinnamon, clove, coriander seeds, elderberry, elderflower, ginger, jasmine, lavender, lilac, peppermint (Mentha piperta) or quince (a fragrant material), colors, and preservatives in the starch-based beads of Glenn because Glenn indicated the mixed material used in forming the starch-based beads can contain additional components known to be combinable with the mixed material (Glenn: [0038] and [0041]). Thus, an ordinary artisan seeking to provide an aromatic starch-based bead that has a desired color and preserved properties during storage would have looked to include known additives for production of starch-based beads including colors, preservatives, and aromatic flavor (fragrant material) such as Angelica root, caraway seed, cinnamon, clove, coriander seeds, elderberry, elderflower, ginger, jasmine, lavender, lilac, peppermint (Mentha piperta) or quince, and achieve Applicant’s claimed invention with reasonable expectation of success.
Accordingly, a legal conclusion of obviousness of Applicant’s claimed method under KSR based on the combined teachings of Glenn, Clark, and Heinze, has been adequately established by the Examiner. It is noted that a teaching, suggestion, or motivation to combine references that is found in the prior art is an appropriate rationale for determining obviousness. KSR, 550 U.S. at 418, 82 USPQ2d at 1396.
As a result, for at least the reasons discussed above, claim 11 remain rejected as being obvious and unpatentable over the combined teachings of Glenn, Clark, and Heinze in the pending 103 rejection as set forth in this office action.
Conclusion
No claim is allowed.
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 DOAN THI-THUC PHAN whose telephone number is (571)270-3288. The examiner can normally be reached 8-5 EST Monday-Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DOAN T PHAN/ Primary Examiner, Art Unit 1613
Prosecution Insights