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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/14/2026 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 (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-4, 13-14 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Fujimake et al. (US 4,016,147) in view of Pyntikov et al. (US 2004/0038391 A1), Lynglev et al. (US 2011/0165305 A1), and Chervan et al. (US 4,443,540).
Regarding claim 1, Fujimake et al. teaches an enzymatic hydrolysis process (abstract), where the process can be applied to fish protein (column 2 lines 53-54 and 59), comprising hydrolyzing the protein with an endopeptidase to form hydrolysate II (column 2 lines 61-64), hydrolyzing with an exopeptidase in the form of carboxypeptidase to form hydrolysate III (column 3 lines 44-48; column 4 lines 15-24), separating the hydrolysate fraction from the remaining solid material by filtration (column 6 lines 54-63), and drying (necessarily concentrating since water is removed to increase the relative amount of hydrolysate within the composition) the hydrolysate fraction to yield fish protein hydrolysate powder (column 7 lines 3-11). Prior to hydrolyzation, the first protein is combined with water and pH adjusted to obtain a “homogeneous solution”, which suggests that at least some degree of mixing was performed (column 7 lines 50-55). Pepsin (endopeptidase) is then added, and the mixture is heated and stirred at 37oC to form hydrolysate II (column 7 lines 55-60). Hydrolysate II is then combined with Pronase (exopeptidase) and further incubated to form hydrolysate III (column 7 lines 61-66). The specific endopeptidase is chosen based on the desired location of the attack position (column 4 lines 15-18), and pure carboxypeptidases are known in the art (column 4 lines 23-24).
Regarding the exopeptidase added to the mixture in step ii undergoing enzymatic hydrolysis, Fujimake et al. teaches hydrolysate II, formed by enzymatic hydrolysis of the protein and endopeptidase mixture, is then subjected to further hydrolysis by adding the exopeptidase (column 3 lines 44-48; column 7 lines 50-66). The reference does not recite or otherwise indicate that the endopeptidase must be inactivated prior to further hydrolysis via the exopeptidase (see whole document). Since the endopeptidase is not required to be inactivated prior to further hydrolysis, one of ordinary skill in the art would have reasonably expected at least some degree of enzyme hydrolysis activity when the exopeptidase is added. Furthermore, the claim does not specify exactly at which point, during the endopeptidase hydrolyzation, the exopeptidase is added. Therefore, absent persuasive evidence to the contrary, the exopeptidase of Fujimake et al. is construed to be added while the protein and endopeptidase mixture is still undergoing enzymatic hydrolysis.
Fujimake et al. does not teach the fish protein material is grinded by-products from fish protein, heating the protein and water mixture prior to adding the endopeptidase, and stopping the hydrolysis by heat inactivation.
Pyntikov et al. teaches a method of enzymatic protein hydrolysis (abstract) comprising mixing ground fish waste products (paragraph 24) with water in a bioreactor, where the operating temperature of the reactor for hydrolysis is 45oC (paragraph 52). Once monitored conditions reach a desired point e.g., when amino nitrogen begins to level off, hydrolysis is discontinued by raising the temperature of the mixture to 95oC to in order to deactivate the enzymes catalyzing the reaction (paragraph 73).
Lynglev et al. teaches a method for preparing a protein hydrolysate (abstract), the process comprising sequential steps of enzyme hydrolysis (paragraph 47), the material to be hydrolyzed comprising protein that is mixed or dispersed in water to form a slurry (paragraph 51), and heating the slurry prior to hydrolysis in order to deactivate putative endogenous protease inhibitor and to denature or partly denature the protein material thereby making the substrate more accessible to the enzymes (paragraph 52). The hydrolysis process is discontinued by heating to a temperature high enough to inactivate the enzymes (paragraph 62).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Fujimake et al. to mix grinded fish by-products with water, to heat said mixture prior to the hydrolysis steps, and to stop the hydrolysis by heat inactivation since the features are recognized by the art for enzymatic hydrolysis of fish protein, to extract value out of waste products thereby minimizing waste and/or optimizing revenue sources, to ensure the hydrolysis process obtains a desired composition of degraded protein i.e., to prevent over-hydrolysis, to ensure optimal hydrolysis conditions by deactivating protease inhibitors while facilitating enzyme access to the protein substrate, and to minimize the risk of bacterial growth a excessive production of foam as taught by Pyntikov et al. (paragraph 52).
Fujimake et al. does not specify the exopeptidase is in the form of a carboxypeptidase and not in the form of an aminopeptidase, which is construed to recite a negative limitation with respect to the presence of aminopeptidase.
Lynglev et al. further teaches hydrolysis with carboxypeptidase reduces the bitterness of a protein hydrolysate (paragraph 42), where the protein material can be treated with an endoprotease (endopeptidase) that specifically cleaves the protein material on the carboxy terminal side of the internal hydrophobic amino acid residues, prior to contacting the resulting material with the carboxypeptidase (paragraph 48). The method discloses a preference for the carboxypeptidase C group (paragraph 27), where enzymes from said group have activity towards hydrophobic amino acid residues i.e., cleaves the protein material on the amino terminal side of a C-terminal hydrophobic amino acid residue, to obtain polypeptide fragments having improved characteristics in terms of reduced bitterness (paragraph 41).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Fujimake et al. such that the exopeptidase is only carboxypeptidase since the reference already acknowledges that pure carboxypeptidase is known in the art and, while not preferred, nonetheless contemplates their use (column 4 lines 23-25) see also MPEP 2123 II, in order to use an exopeptidase based on the composition of hydrolysate II, and in order to use a specific enzyme having preferential activity towards specific amino acid residues such that the final product has reduced bitterness.
Fujimake et al. does not teach stirring in steps ii and iii, wherein the duration of enzymatic hydrolysis for said steps is about 10 minutes to about 30 minutes.
Lynglev et al. further teaches optimizing conditions such as pH and temperature for endoprotease and carboxypeptidase activity (paragraphs 53), and under optimal conditions, the protein is contacted with the carboxypeptidase for a desired length of time to obtain a desired degree of hydrolysis, where the reaction can be performed for 15-30 minutes (paragraph 56). The amount of carboxypeptidase used or added can be varied depending on the desired degree of removal of C-terminal hydrophobic residues and the duration of the hydrolysis reaction (paragraph 58). The duration of the hydrolysis can vary from a few minutes to several hours (paragraph 60). The protein and enzyme mixture are stirred during hydrolysis (paragraphs 110 and 124) for the purpose of mixing (paragraph 97).
Chervan et al. teaches a method for hydrolyzing protein material with proteolytic enzymes (abstract), the protein material including fish (column 4 lines 43-44), where the hydrolysis step is conducted in a continuous stirred-tank reactor employing an enzyme to protein substrate weight ratio selected to obtain the desired level of conversion within a time period of about 10-60 minutes, preferably 30 minutes, at a temperature of about 25-60oC (column 5 lines 43-47).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Fujimake et al. to stir during hydrolysis and to perform the hydrolysis for the claimed durations since the prior art recognizes stirring during hydrolysis, since “stirring” a mixture is a commonly used practice in the art to facilitate distribution of components, which is expected to facilitate reactions such as hydrolysis through increasing surface area contact between reactants, since the prior art recognizes adjusting the weight ratio of enzyme to substrate in order to obtain a desired degree of hydrolysis within a desired time period, since the evidence of record does not indicate criticality or unexpected results associated with the claimed stirring and hydrolysis duration, to ensure proper distribution and activity of the enzymes within the mixture, and since the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as pH, temperature, and enzyme concentration.
Regarding claim 3, Fujimake et al. teaches the fish protein material originates from fish (column 2 lines 58-59), and Pyntikov et al. as applied to claim 1 teaches the same (paragraph 24).
Regarding claim 4, Fuijmake et al. teaches pepsin (column 2 lines 10-12).
Regarding claims 13-14, Fujimake et al. does not teach the fish protein material originates from a salmonoid (claim 13) or Salmo salar i.e., salmon (claim 14).
Pyntikov et al. teaches salmon (paragraph 46).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Fujimake et al. to use salmon since the reference teaches fish meat but does not limit the type of fish (see whole document), where the prior art teaches salmon can be subjected to enzymatic hydrolysis, and therefore to combine prior art elements according to known methods to yield predictable results, and as a matter of manufacturing preference for the specific type of fish.
Regarding claim 16, the combination applied to claim 1 teaches the steps recited by said claim. The same combination is applied to claim 16 and would have been obvious for the same reasons.
Regarding claim 17, Fujimaki et al. teaches hydrolysis with pepsin at 37oC (column 7 lines 56-58), but does not teach the temperature for exopeptidase hydrolysis.
Lynglev et al. further teaches optimizing conditions such as pH and temperature for enzyme activity as stated for claim 1. The reference teaches a preferred range of 45-55oC during carboxypeptidase hydrolysis (paragraph 55).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Fujimake et al. such that the temperature for the hydrolysis steps is between 35-60oC since the prior art recognizes the range as optimal temperatures for endo- and carboxypeptidase hydrolysis of protein, since there is no evidence of criticality or unexpected results associated with the temperature range, and since the claimed value would have been used during the course of routine experimentation and optimization procedures due to factors such as pH, duration and degree of hydrolysis, and enzyme concentration as taught by Lynglev et al.
Regarding claim 18, Fujimaki et al. teaches the amount of enzyme depends on the activity thereof, and the “appropriate concentration thereof in the substrate may be around 0.06 to 0.2 % by weight” (column 3 lines 32-37).
Lynglev et al. further teaches the amount of endo- and carboxypeptidase added will vary depend on the desired degree of hydrolysis and duration of the reaction, where the prior can be from about 1-1,500 mg/kg protein, and the latter can be about 1-1,000 mg/kg protein (paragraphs 58-59).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Fujimake et al. to use the claimed amounts of enzymes since the prior art recognizes the range as optimal temperatures for endo- and carboxypeptidase hydrolysis of protein, since there is no evidence of criticality or unexpected results associated with the amount of enzyme used, and since the claimed value would have been used during the course of routine experimentation and optimization procedures due to factors such as the type of enzyme, pH, duration, and degree of hydrolysis.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Fujimake et al. in view of Pyntikov et al., Lynglev et al., and Chervan et al. as applied to claim 1 above, and further in view of Freeman et al. (US 4,473,589).
Regarding claim 2, the combination applied to claim 1 does not teach prior to step iv) adding protease enzyme derived from A. oryzae to the mixture of step iii) and stirring.
Lynglev et al. further teaches the carboxypeptidase is obtained from A. oryzae (paragraph 35). The process includes treatment with one or more carboxypeptidases after treatment with the endopeptidase (paragraph 61).
Freeman et al. teaches hydrolysis of fish protein (abstract), where enzyme hydrolysis liberates increasing amounts of carboxylic groups, thereby lowering the pH, and where a plurality of enzymes can be successively introduced as hydrolysis progresses, with each successive enzyme added being selected for its activity at the successively lowered pH of the slurry (column 3 lines 14-24).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Fujimake et al. to add, prior to stopping the reaction, protease from A. oryzae to the mixture of step iii) since the prior art teaches it is known to source proteases from the microorganism, and to provide a plurality of enzymes which have optimal activity at different pH levels, thereby ensuring similarly optimal proteolytic action as the reaction progresses and pH is changed by the reaction. It would have been further obvious to add the enzyme prior to inactivation in order to ensure the enzyme performs the desired action, as well as obvious to stir after adding for the same reason stated for claim 1.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Fujimake et al. in view of Pyntikov et al., Lynglev et al., and Chervan et al. as applied to claim 1 above, and further in view of Delest et al. (US 2004/0067279 A1).
Regarding claim 19, Fujimaki et al. does not teach the endopeptidase comprises trypsin.
Delest et al. teaches enzymatic hydrolyzation of protein (abstract), where the protein substrate includes fish protein and fish meal (paragraph 46), where suitable endopeptidases include trypsin and chymotrypsin (paragraph 50), and exopeptidases include carboxypeptidase (paragraph 51). The peptidases are chosen to be selective towards a specific set of amino acid(s) or preferentially release the amino acid(s) which is/are intended to be enriched in the protein hydrolysate (paragraph 49).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Fujimake et al. such that the endopeptidase comprises trypsin since the reference does not exclude the use of other endopeptidases and recites chymotrypsin as an example (column 2 line 12), where the prior art recognizes trypsin and chymotrypsin as equivalents for cleaving near desired amino acids, and thus as a substitution of art recognized equivalents, see MPEP 2144.06 II., and to provide further control over the amino acid composition of the hydrolysate.
Response to Amendment
The declaration under 37 CFR 1.132 filed 1/14/2026 is insufficient to overcome the rejection of claims 1-4, 13-14, and 16-19 based upon 35 USC 103 as set forth in the last Office action because:
One of ordinary skill in the art would not have been able to determine if the results (page 3 table) is actually attributed to the hydrolysis duration as argued, or some other confounding factor. Example 1 of the specification (page 12) uses 1 wt% of the endopeptidase and exopeptidase each (10 g enzyme / 1,000 g ground head and backbone), and further incorporates 5 grams of Flavourzyme with additional stirring for 10 minutes. In the declaration, example A1 uses 0.03 wt% of the endo and exopeptidase, example A2 uses 0.1 and 0.01 wt% respectively, example A3 uses 0.05 wt% each, and example A4 uses 0.3 wt% each. The declaration states hydrolysis with the respective peptidases for a duration of 60 minutes or more resulted in loss of biological activity as measured by FTH1 and TFRC gene expression changes, whereas the SPH of example 1 produced biological efficacy.
The varying concentrations of enzymes used in examples A1-A4 do not match the significantly higher amount of each enzyme used in example 1. Therefore, one of ordinary skill would not have been able to determine if the results obtained from examples A1-A4 are directly attributed to the hydrolysis duration as argued, or due to other factors such as the significantly lower enzyme content and/or the additional enzyme (Flavourzyme) used in example 1. The prior art recognizes that duration of hydrolysis is a result effective parameter based on the amount of enzyme used relative to the protein substrate (Lynglev and Chervon) as stated for claim 1 above. One of ordinary skill would have reasonably expected higher amounts of enzyme to facilitate the hydrolysis process, thereby reducing duration required to obtain a desired degree of hydrolysis. While Examiner recognizes differences in gene expression changes are present between example 1 and examples A1-A4, it is not clear from the presented data if the differences are actually due to hydrolysis duration alone.
Further, examples 1 and A1-A4 all require a certain amount of enzyme, but the amounts are not present in claims 1 and 16. Likewise, example 1 further requires Flavourzyme, which is also not present in said claims. It is not clear if the alleged results are independent of the enzyme content as stated above. While claim 18 recites “about 0.05 % wt/wt to about 1 % wt/wt”, it is not clear if the argued results are actually obtained when using enzyme amounts less than 1 wt%.
Response to Arguments
Applicant's arguments filed 1/14/2026 have been fully considered but they are not persuasive.
Applicant argues on pages 7-8 that Fujimaki has a fundamentally different objective to produce low-phenylalanine plastein, and one of ordinary skill would have no motivation to reduce the hydrolysis time from 48 hours to between about 10-30 minutes. Applicant argues the declaration shows a trend that the longer enzymatic hydrolysis of one or both of the enzymes affects gene regulation, where the hydrolysate having unexpected biological efficacy is achieved when the hydrolysis steps are sequentially performed using durations of between 10-30 minutes.
This is not persuasive since it is unclear if the observed results can be directly attributed to the duration of hydrolysis as stated above. The results shown in the declaration were obtained using processes in which the content of the enzymes is significantly lower than that of Applicant’s example 1 SPH. It is unclear if observed lack of gene expression changes would also be observed when using the same amount of each enzyme (1 wt%) for durations greater than 60 minutes.
Applicant argues Freeman and Delest do not cure the deficiencies of the combination applied to claims 1 and 16.
This is not persuasive since Freeman is relied on to teach the advantage of providing a plurality of enzymes throughout the reaction which have optimal activity at different pH levels, thereby ensuring similarly optimal proteolytic action as the reaction progresses and pH is changed by the reaction. Fujimake et al. teaches hydrolysis with pepsin followed by carboxypeptidase, and the combination applied to claims 1 and 16 renders obvious the recited methods as stated above.
Likewise, Delest et al. is relied on to teach enzymatic hydrolyzation of fish protein, where suitable endopeptidases include trypsin. The peptidases are chosen to be selective towards a specific set of amino acid(s) or preferentially release the amino acid(s) which is/are intended to be enriched in the protein hydrolysate.
Applicant’s argument against the dependent claims is not persuasive for the same reasons stated above.
Conclusion
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/BRYAN KIM/Examiner, Art Unit 1792
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