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 .
Status of Application
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/15/2026 has been entered.
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 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.
Claim(s) 43-45, 48, 51-61, 63-65 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent No. 7,172,784 (RAO) in view of United States Application Publication No. 2009/0311407 (LUCEY).
As to claim 43, RAO teaches a baked good with an emulsifier (col. 10, lines 20-30) that helps lower the batter density (see col. 9, lines 10-20 calculating batter density and batter density of 93 g/l at col. 10, lines 35-40). This reads on that claimed. It would have been obvious to vary the amount of emulsifier based on the desired density.
As to the amount of emulsifier added, the incorporation of emulsifier composition in the batter produced a decrease in batter density and an increase in fine, uniform and evenly distributed air cells resulting in cakes with an increased specific loaf volume and a decreased crumb firmness value (col. 1, lines 50-60). In this regard, it would have been obvious to vary the amount of emulsifier based on the desired density, specific loaf volume, and decreased crumb firmness value.
However, RAO does not teach the type of claimed emulsifier.
LUCEY teaches a protein polysaccharide conjugate. The conjugate is an emulsifier [0011].
The protein can be casein [0039].
It is also taught that the protein can be hydrolyzed to reduce the size/molecular weight of the protein to reduce the allergenicity of the composition. in [0132], LUCEY clearly states that hydrolyzed proteins of various extents can be used. In [0133], hydrolyzed proteins are referenced and in [0137] is concluded that the conjugation of partially hydrolyzed whey proteins can improve hypoallergenicity. It would have been obvious to one skilled in the art to vary the extent (i.e., molecular weight of the conjugates) of hydrolysis based on the level of improvement needed in terms of hypoallergenicity.
In this regard, the size/molecular weight is a result effective variable and it would have been obvious to reduce the size/molecular weight of the proteins to reduce the allergenicity of the particles.
Ribose, xylose, galactose, glucose, mannose and fructose can be used and are reducing sugars [0039].
In [0133], hydrolyzed proteins are referenced and in [0137] is concluded that the conjugation of partially hydrolyzed whey proteins can improve hypoallergenicity. It would have been obvious to one skilled in the art to vary the extent (i.e., molecular weight of the conjugates) of hydrolysis based on the level of improvement needed in terms of hypoallergenicity.
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Thus, it would have been obvious to one skilled in the art that the conjugates are at least 90% soluble. Moreover, it would have been obvious to increase/vary the solubility as desired given that LUCEY teaches conjugates may significantly decrease the interfacial tension, and improve the solubility at severe heat treatments, lower pH, and higher salt concentration than whey protein [0055]. The ratio of sugar to peptide is 1:3 to 1:9. Thus, the claimed range falls within that claimed. Moreover, given that LUCEY teaches that a higher level of solubility is desired and that solubility is linked to the degree of conjugation, it would have been desirable to have a high degree of conjugation (i.e., at least 10%).
As to 44, LUCEY teaches that the protein is casein (i.e., an animal protein) [0041].
As to claim 45, RAO teaches a baked good with an emulsifier (col. 10, lines 20-30) that helps lower the batter density to below 90 g/l (see col. 9, lines 10-20 calculating batter density and batter density of 93 g/l at col. 10, lines 35-40). This reads on that claimed.
As to claim 48, LUCEY teaches that the protein can be hydrolyzed to reduce the size/molecular weight of the protein to reduce the allergenicity of the composition [0133]. In this regard, the size/molecular weight is a result effective variable and it would have been obvious to reduce the size/molecular weight of the proteins to reduce the allergenicity of the particles.
As to claim 51, RAO teaches a baked good with an emulsifier (col. 10, lines 20-30). As to the amount of emulsifier added, the incorporation of emulsifier composition in the batter produced a decrease in batter density and an increase in fine, uniform and evenly distributed air cells resulting in cakes with an increased specific loaf volume and a decreased crumb firmness value (col. 1, lines 50-60). In this regard, it would have been obvious to vary the amount of emulsifier based on the desired density, specific loaf volume, and decreased crumb firmness value.
As to claim 52, RAO is silent as to an enzymatically produced protein hydrolysate. LUCEY teaches that the protein can be hydrolyzed to reduce the size/molecular weight of the protein to reduce the allergenicity of the composition [0133]. In this regard, the size/molecular weight is a result effective variable and it would have been obvious to reduce the size/molecular weight of the proteins to reduce the allergenicity of the particles. It would have been obvious to vary the amount of protein based on the desired level of emulsification. Additionally, the hydrolysis is enzymatic (see [00133]-[0134]).
As to claim 53, while LUCEY teaches that the hydrolyzed proteins can be dialyzed to concentrate, there is no teaching that filtration is required in the overall teachings of the reference. In this regard, filtration is a preferred embodiment. In other words, one skilled in the art would the option of not filtering.
As to claim 54, RAO is free of lecithin. There is no mention of the recited emulsifiers in LUCEY
As to claim 55, RAO teaches a baked good (e.g., cake)with an emulsifier (col. 10, lines 20-30) that helps lower the batter density to below 90 g/l (see col. 9, lines 10-20 calculating batter density and batter density of 93 g/l at col. 10, lines 35-40). The claimed amount of mono and di-glycerides is below 1 g/kg. This includes zero. Thus, such emulsifiers are optional.
As to claim 56, RAO teaches a baked good (e.g., cake) with an emulsifier (col. 10, lines 20-30) that helps lower the batter density to below 90 g/l (see col. 9, lines 10-20 calculating batter density and batter density of 93 g/l at col. 10, lines 35-40). It would have been obvious to vary the volume based on the density of batter and desired texture.
Moreover, the applicant is also respectfully reminded that while food items are patentable, the culinary creativity of chefs is not the type of creativity which meets the standards for patentability. See General Mills v. Pillsbury Co.,378 F.2d 666 (8th Cir.1967) (first commercially successful one step mix for angel food cakes is not patentable because of nonobviousness standard since alleged invention is only the exact proportion of an already known leavening agent). In this regard, courts have 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 re Levin, 178 F.2d 945, 948 (C.C.P.A.1949) (butter substitute not patentable).
As to clam 57, LUCEY teaches using lyophilized protein hydrolysates in [0131].
As to claim 58, LUCEY teaches ratio of sugar to peptide is 1:3 to 1:9. Thus, the claimed range falls within that claimed. Casein is a milk protein.
As to clam 59, LUCEY teaches that the protein is casein (i.e., an animal protein) [0041].
As to claims 60-61, 63, RAO teaches a baked good with an emulsifier (col. 10, lines 20-30) that helps lower the batter density (see col. 9, lines 10-20 calculating batter density and batter density of 93 g/l at col. 10, lines 35-40). This reads on that claimed. It would have been obvious to vary the amount of emulsifier based on the desired density.
However, RAO does not teach the type of claimed emulsifier.
LUCY teaches a protein polysaccharide conjugate. The conjugate is an emulsifier [0011].
The protein can be casein [0041].
It is also taught that the protein can be hydrolyzed to reduce the size/molecular weight of the protein to reduce the allergenicity of the composition. In this regard, the size/molecular weight is a result effective variable and it would have been obvious to reduce the size/molecular weight of the proteins to reduce the allergenicity of the particles.
Ribose, xylose, galactose, glucose, mannose and fructose can be used and are reducing sugars [0039].
In [0114] of LUCEY, it is shown that the conjugates are soluble. FIG. 9 is a graph showing the solubility of conjugates (0.1% protein) at room temperature and heated 30 min at 80 C. within the pH range 3.5-7.5, in comparison with whey protein (0.1% WPI). The higher the absorbance at 500 nm, the lower the solubility is. The highest absorbance (i.e., lowest solubility) is for unconjugated wpi. LUCEY does not assign a level of solubility in terms of percentages but does teach that a desirable outcome of their conjugates is that they increase solubility [0055]. Moreover, Fig. 9 shows that the conjugates show little to no absorbance indicating that the conjugates are highly soluble, if not 100% soluble. Fig. 9 is as follows:
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Thus, it would have been obvious to one skilled in the art that the conjugates are at least 90% soluble. Moreover, it would have been obvious to increase vary the solubility as desired given that LUCEY teaches conjugates may significantly decrease the interfacial tension, and improve the solubility at severe heat treatments, lower pH, and higher salt concentration than whey protein [0055]. The ratio of sugar to peptide is 1:3 to 1:9. Thus, the claimed range falls within that claimed. Moreover, given that LUCEY teaches that a higher level of solubility is desired and that solubility is linked to the degree of conjugation. It would have been desirable to have a high degree of conjugation (i.e., at least 10%).
As to claim 61, RAO teaches a baked good with an emulsifier (col. 10, lines 20-30) that helps lower the batter density (see col. 9, lines 10-20 and col. 10, lines 35-40). It would have been obvious to lower the batter density based on desired consistency, as this impacts the taste and texture of product.
As to claim 63, LUCEY teaches a protein polysaccharide conjugate [0011]. The protein can be casein [0041]. In [0133], hydrolyzed proteins are referenced and in [0137] is concluded that the conjugation of partially hydrolyzed whey proteins can improve hypoallergenicity. It would have been obvious to one skilled in the art to vary the extent (i.e., molecular weight of the conjugates) of hydrolysis based on the level of improvement needed in terms of hypoallergenicity.
As to claim 64, LUCEY teaches that casein can be used as the protein [0039].
As to claim 65, LUCEY teaches that glucose can be the reducing sugar [0034].
Claim(s) 49 is/are rejected under 35 U.S.C. 103 as being unpatentable over RAO and LUCEY as applied to claims above, and further in view of United States Patent Application Publication No. 2012/0288533 (LIVNEY).
The references above are silent as to using wheat as the protein.
LIVNEY teaches that wheat can also be used for the protein for the conjugate and serves as an excellent emulsifier.
It would have been obvious to use wheat as the protein in the references above, as wheat conjugates serves as excellent emulsifiers.
Response to Arguments
Applicant's arguments filed 1/15/2026 have been fully considered but they are not persuasive.
The applicant argues that the paragraph cited by the examiner - paragraph [0133] of Lucey - discusses the impact of the molecular weight of polysaccharides (PS), rather than protein hydrolysates or hydrolysate conjugates, as the instant claims require. It is also argued that Lucey only contemplates the allergenicity of polysaccharides having a 10-500 kDa molecular weight.
However, [0029] of LUCEY teaches a method preparing protein-polysaccharide conjugates. The protein-polysaccharide conjugates may be used as emulsifiers. [0039] teaches that the conjugates can be casein.
Moreover, in [0132], LUCEY clearly states that hydrolyzed proteins of various extents can be used. In [0133], hydrolyzed proteins are referenced and in [0137] is concluded that the conjugation of partially hydrolyzed whey proteins can improve hypoallergenicity. It would have been obvious to one skilled in the art to vary the extent (i.e., molecular weight of the conjugates) of hydrolysis based on the level of improvement needed in terms of hypoallergenicity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached M-F, 9:30-6:00p.
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/PHILIP A DUBOIS/Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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