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 .
Claim Objections
Claims 13 and 22-23 are objected to because of the following informalities:
Regarding claim 13, after “wherein the milk substitute comprises” delete “no protein and no starch derived from other sources than” and insert “starch derived from only potato” in order to place the claim in better form, and since claim 9 already requires the milk substitute “consists of only the emulsifying potato protein and the coagulated potato protein”.
Regarding claims 22 and 23, after “wherein the milk substitute comprises” delete “no protein and no starch derived from other sources than” and insert “starch derived from only potato” for the same reason stated for claim 13.
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.
Claim 21 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.
In line 2 the limitation “the potato-derived emulsifying starch” lacks antecedent basis. Claims 9 and 12 do not recite the emulsifying starch is “potato-derived”.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9, 14 and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Buddemeyer et al. (US 4,242,364) in view of Bohlscheid et al. (US 2018/0289036 A1), Johansson et al. (US 2018/0042265 A1) and Schmitt et al. (US 2016/0050950 A1).
Regarding claim 9, Buddemeyer et al. teaches a non-dairy milk substitute (column 1 line 8; column 2 lines 35-37) comprising 11.67 wt% corn oil and multiple emulsifiers, such as stearyl-2-lactylic acid, mono-diglycerides of fatty acids, triglycerol monostearate, etc., totaling to more than 0.5 wt% (columns 9-10 example 1 table 1).
Buddemeyer et al. does not teach potato protein comprising an emulsifying potato protein comprising native potato protease inhibitor.
Bohlscheid et al. teaches a native potato protein used in beverages (abstract; paragraphs 8-9), where the native protein includes protease inhibitors (paragraphs 41 and 70), and potato proteins are useful in beverages as emulsifying agents, including plant-based non-dairy beverages (paragraph 76). The proteins are also useful as heat stability, binding, and viscosity agents (paragraph 76).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the product of Buddemeyer et al. such that the composition comprises native potato protease inhibitor since the reference teaches protein from other sources such as plants can be added and does not particularly limit the composition of the protein sources (column 7 lines 3-5), since the reference teaches emulsifiers and the prior art recognizes native potato protease inhibitors as emulsifying agents, and therefore as a substitution of art recognized equivalents to yield predictable results of emulsification in a non-dairy beverage, and to provide heat stability, binding, and viscosity effects.
Buddemeyer et al. does not teach at least 40 wt% of the potato protein is coagulated.
Johansson et al. teaches a food grade coagulated potato protein (abstract) for use as a nutritional additive or ingredient in dairy products and beverages (paragraph 48), where the potato protein “has a satisfactory mouth feel and taste” (paragraph 15). The reference further discloses that use of coagulated potato protein as a food additive is well-known in the art (paragraph 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the product of Buddemeyer et al. such that the composition comprises coagulated potato protein in an amount of at least 40 wt% of the protein since the reference teaches adding protein from other sources, including plant proteins, and does not particularly limit the composition of the protein sources, to use a known protein additive, since there is no evidence of record indicating criticality or unexpected results associated with the claimed amount of coagulated potato protein, to provide additional protein to the composition without negatively impacting the characteristics thereof, and since the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as desired amino acid/peptide profile, nutritional profile, flavor, texture/mouthfeel, rheological properties, and stability.
Regarding the amount of potato protein being greater than 0.5 wt%, the combination above teaches native potato protease inhibitors for emulsifying and coagulated potato proteins for texture/mouthfeel. Buddemeyer et al. further teaches an overall emulsifier amount of 0.75-3 wt%, and suggests optimization of amount based on the type of emulsifier used (column 4 lines 32-38).
It would have been further obvious to use the claimed amount of potato protein for the same reasons stated above, particularly as routine optimization for texture/mouthfeel and desired rheological properties.
Buddemeyer et al. does not teach the protein in the milk substitute consists of only the emulsifying and coagulated potato protein.
Bohlscheid et al. teaches the importance of protein in a “complete and healthy diet” (paragraph 3), where many people choose plant-based protein as opposed to dairy-based powders due to lactose intolerance or sensitivity to dairy proteins (paragraph 4).
Schmitt et al. teaches a creamer composition comprising plant protein microparticles as whitening agents (paragraphs 11 and 24), where potato protein microparticles can be used alone in an amount of 2-4 wt% (paragraphs 30 and 50; table 1). The creamer includes another protein in addition to the microparticle protein, where the additional protein can be from potato and work as an emulsifier to provide texture and/or whitening effect (paragraph 31).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the product of Buddemeyer et al. such that protein consists of only the emulsifying and coagulated potato protein since the prior art recognizes potato proteins in various forms can be used to provide both whitening, emulsification, and texture effects to a milk substitute, and therefore to substitute the emulsifiers of Buddemeyer et al. to yield predictable results in obtaining characteristics similar to milk, thereby obtaining a milk substitute having desired proteins and suitability for individuals with dietary restrictions.
Regarding claim 14 and 25-27, Buddemeyer et al. teaches the product can also include organic acids, phosphate salts and minerals such as sodium chloride (column 7 lines 20-27; column 10 line 9).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Buddemeyer et al. in view of Bohlscheid et al., Johansson et al., and Schmitt et al. as applied to claim 9 above, and further in view of Woo et al. (US 2006/0286251 A1).
Regarding claim 11, Buddemeyer et al. teaches the composition can include stabilizers to “modify body and mouth feel”, the stabilizer including modified starches (column 7 lines 27-28 and 34-35).
Buddemeyer et al. does not specify the type of viscosifying modified starch.
Woo et al. teaches starch-lipid composites useful as, inter alia, thickening (viscosifying) agents (paragraph 9), where the starch can be hydroxypropylated crosslinked starch sourced from e.g., potato (paragraph 20).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the product of Buddemeyer et al. to use hydroxypropylated crosslinked starch as a viscosifying starch since the reference does not specify a particular modified starch, since the prior art recognizes the starch to be suitable for the same purpose, and therefore to combine prior art elements according to known methods to yield predictable results of adjusting texture, mouthfeel, consistency, etc.
Claims 12-13 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Buddemeyer et al. in view of Bohlscheid et al., Johansson et al., and Schmitt et al. as applied to claim 9 above, and further in view of Buysse et al. (US 2010/0221386 A1).
Regarding claim 12, the limitation “emulsifying starch” is interpreted in view of the specification to be a starch capable of dissolving fat droplets in water, including starch octenyl succinate (page 5 lines 24-30).
Buddemeyer et al. teaches stabilizers including a modified starch as stated for claim 11, but does not teach the starch is an “emulsifying” starch having OSA modification.
Buysse et al. teaches a composition for use as a milk replacer comprising starch octenyl succinate as an emulsifying starch (abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Buddemeyer et al. to use starch octenyl succinate as an emulsifying starch since the prior art recognizes use thereof in milk-like beverages, and therefore to combine prior art elements according to known methods to yield predictable results and/or as a substitution of art recognized equivalents suitable for the purpose of providing emulsion properties to a milk-like beverage.
Regarding claim 13, the combination applied to claim 9 teaches plant-based lipid, emulsifying potato protein and coagulated potato protein, where the protein in the product consists of only the emulsifying and coagulated potato proteins.
Regarding the claimed amounts, modification of Buddemeyer et al. to have the claimed amounts of the respective components would have been obvious to one of ordinary skill in the art before the effective filing date of the invention for the same reasons stated for claim 9.
The combination applied to claim 9 does not teach at least 0.5 wt% potato derived viscosifying starch and/or at least 0.3 wt% of a potato derived emulsifying starch, and the starch derived from only potato. The limitation “and/or” is interpreted to recite alternatives, and for the sake of examination, the “emulsifying starch” alternative is chosen.
The combination applied to claim 12 teaches emulsifying starch such as OSA modified starch. The same combination is applied to claim 13 and would have been obvious for the same reasons.
Buysse et al. further teaches the composition can include 20-40 wt% OSA modified starch (paragraph 15). Starch sources include modified tuber starch (paragraph 21), where tuber is well known in the art to include potatoes.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Buddemeyer et al. to include at least 0.5 wt% potato derived emulsifying starch for the same reasons stated for claim 12, where the amount would have been used during the course of routine experimentation and optimization procedures due to factors such as obtaining desired texture, mouthfeel, and other rheological characteristics similar to milk.
It would have been further obvious to use only potato as the source of the starch in the product for the same reasons stated for using only potato protein in claim 9, where there is no evidence of unexpected results associated with the claimed feature, and therefore to provide consumers with a product based on dietary restrictions.
Regarding claim 21, the combination applied to claim 12 teaches starch octenyl succinate as stated for said claim, and the combination applied to claim 13 teaches using potato derived emulsifying starch. The same combination is applied to claim 21 and would have been obvious for the same reasons.
Claims 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Buddemeyer et al. in view of Bohlscheid et al., Johansson et al., and Schmitt et al. as applied to claim 9 above, and further in view of Woo et al. and Buysse et al.
Regarding claims 22-23, the combination applied to claim 9 teaches plant-based lipid, emulsifying potato protein and coagulated potato protein, where the protein in the product consists of only the emulsifying and coagulated potato proteins.
Regarding the claimed amounts, modification of Buddemeyer et al. to have the claimed amounts of the respective components would have been obvious to one of ordinary skill in the art before the effective filing date of the invention for the same reasons stated for claim 9.
The combination applied to claim 9 does not teach potato derived emulsifying and viscosifying starches, and the starch in the product is derived only from potato.
The combinations applied to claims 11 and 12 teach potato derived emulsifying and viscosifying starches. The same combinations are applied to claims 22-23 and would have been obvious for the same reasons.
The combination applied to claim 13 teaches the product using starch derived from only potato. The same combination is applied to claims 22-23 and would have been obvious for the same reasons.
Regarding the claimed amounts of the respective starches, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Buddemeyer et al. to include the claimed amounts of starches since the prior art recognizes the starches as result effective variables for texture, mouthfeel, and rheological properties in milk substitutes, since there is no evidence of criticality or unexpected results associated with the feature, where the amounts would have been used during the course of routine experimentation and optimization procedures due to factors such as obtaining desired texture, mouthfeel, and other rheological characteristics similar to milk, as well as water dilution factor when reconstituting a powder.
Response to Arguments
Applicant's arguments filed 2/2/2026 have been fully considered, but the amendment to claim 9 necessitated new grounds of rejection. The limitation “non-dairy” was not previously considered, nor the combination of “non-dairy” and “the protein in the milk substitute consists of only the emulsifying potato protein and the coagulated potato protein”. The amendment overcomes Niederreiter and Girsh as applied in the previous Office Action and the references are no longer relied upon.
Claim 9 and respective dependent claims are rejected as being unpatentable over Buddemeyer et al. in view of Bohlscheid et al., Johansson et al., and Schmitt et al. Specifically, Buddemeyer et al. teaches a non-dairy milk substitute comprising emulsifiers, where the emulsifiers are substituted for art recognized potato protein emulsifiers and coagulated potato protein.
Conclusion
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.
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/BRYAN KIM/Examiner, Art Unit 1792