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 the Application
Receipt of the Request for Continued Examination (RCE under 37 CFR 1.114) and the Response and Amendment filed 6 March 2026 is acknowledged.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-3, 5-7, 9-12, and 14-23
Withdrawn claims: 15-21
Previously canceled claims: 4, 8, and 13
Newly canceled claims: None
Amended claims: 1 and 10
New claims: 22-23
Claims currently under consideration: 1-3, 5-7, 9-12, 14, and 22-23
Currently rejected claims: 1-3, 5-7, 9-12, 14, and 22-23
Allowed claims: None
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6 March 2026 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 7 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Gil-Martinez et al. (WO 2019/158755 A1) in view of Connolly et al. (Connolly, A., Piggott, C. O., & FitzGerald, R. J. (2013). Characterisation of protein-rich isolates and antioxidative phenolic extracts from pale and black brewers' spent grain. International Journal of Food Science and Technology, 48(8), 1670-1681. https://doi.org/10.1111/ijfs.12137), Sadaranganey et al. (US 4,919,952), and Mackay et al. (US 2018/0014555 A1), and as evidenced by Clark et al. (Clark, M.A., Douglas, M., and Choi, J. (2018). Biology 2e. OpenStax. Retrieved on August 20, 2026 from https://openstax.org/books/biology-2e/pages/7-5-metabolism-without-oxygen).
Regarding claim 1, Gil-Martinez teaches a method of preparing protein isolate from brewers' spent grain (BSG) – “A process of extracting or purifying proteinaceous material and/or fibrous material from brewer’s spent grain (BSG)” (claim 1).
comprising: preparing a mixture of BSG in water – “In a process according to the present invention, BSGs, preferably as produced during the brewing process (in the range of 25% total solid content), and more preferably collected just after their production, are mixed with distilled water, or preferably hot product water…” (p. 8, lines 11-18).
digesting starch in the BSG using an enzyme, wherein the only enzyme used is an alpha amylase, or a combination of alpha amylases, and wherein the starch is digested at a temperature of from 120 °F to 200 °F – “Performing enzymatic treatment of the brewer’s spent grain and a fermentation of the enzymatically treated brewer’s spent grain with lactic acid bacteria and/or acetic acid bacteria and/or probiotics to obtain a fermented broth” (claim 1). The enzyme treatment of the brewer’s spent grain preferably includes the addition of one or more enzymes with following enzymatic activity to the brewer’s spent grain: alpha-amylase, gluco-amylase, cellulase, xylanase, protease, Beta-glucanase and/or admixtures thereof.” (p. 3, lines 18-22; claim 3). Where Gil-Martinez teaches the addition of one or more enzymes, including alpha-amylase, and where alpha-amylase is well-known to digest starch, Gil-Martinez teaches embodiments wherein alpha-amylase is the only enzyme used in digesting starch in the BSG. Gil-Martinez further teaches, “Hydrolysis of the BSG is performed…at a temperature in function of the enzyme(s) used (typically about 55°C)…” (p. 12, lines 5-12). About 55 °C is about 131 °F. The disclosed temperature lies inside the claimed range of 120 °F to 200 °F.
chemical breakdown of carbohydrates by oxidation – Gil-Martinez teaches a fermentation of the enzymatically treated brewer’s spent grain with lactic acid bacteria and/or acetic acid bacteria and/or probiotics to obtain a fermented broth” (claim 1). As evidenced by Clark, lactic acid fermentation comprises the step of oxidation of glucose to pyruvate (p. 3, Figure 7.16). As such, chemical breakdown of carbohydrates by oxidation occurs during the fermentation process.
solubilizing the protein to provide a protein solution with insoluble fiber – Gil-Martinez teaches that at the end of fermentation, the fermentation broth is high in fiber content and high in protein content (p. 12, line 22 – p. 13, line 2). Gil-Martinez teaches hydrolyzing the proteins (p. 13, lines 5-9), which is well-known to increase protein solubility.
removing insoluble fiber from the protein solution with insoluble fiber to provide a protein solution – Gil-Martinez teaches “Subsequently, proteinaceous material can be recovered (extracted, purified and/or separated) from the fermentation broth…A first step in the protein recovery process is the separation of solid particles…The insoluble solids containing stream…can be dried.” (p. 13, lines 10-20). The insoluble fibers present in the BSG (p. 4, lines 1-22) would be present in the insoluble solids fraction. The remaining solution is a protein solution.
Gil-Martinez does not discuss precipitating a protein fraction from the protein solution; treating the protein fraction with hydrogen peroxide to provide a protein isolate, wherein the treatment increases the Protein Digestibility Corrected Amino Acid Score (PDCAAS) by at least 2.5% relative to untreated protein, or that the protein isolate has a Protein Digestibility Corrected Amino Acid Score (PDCAAS) of equal to or at least about 0.85.
However, Connolly teaches protein-enriched isolates and co-product fractions obtained from BSG using sequential aqueous alkaline extraction, followed by isoelectric precipitation at pH 3.8 (Abstract). Connolly teaches that alkaline solutions are widely recognized as the most effective GRAS solvents for extraction of proteins from plants and cereals, and may seed storage proteins such as barley glutelins are solubilized by weak alkali (p. 1674, col. 2, ¶ 2). Therefore, Connolley teaches that BSG proteins can be solubilized by alkaline pH, and precipitated by isoelectric precipitation at pH 3.8. Connolly further teaches that isoelectrically precipitated protein can be retrieved by centrifugation, further separating it from a supernatant co-product (p. 1674, col. 1, ¶ 2) comprising phenolic compounds (p. 1679, col. 1, ¶ 2 – col. 2).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Gil-Martinez with the teachings of Connolly to perform protein solubilization and precipitation by pH adjustment. One of ordinary skill in the art would have been motivated to do so in order to simplify the method by removing an additional enzyme (protease) treatment as used by Gil-Martinez to hydrolyze/solubilize the proteins, and to allow easy precipitation of the protein for further separation from co-products such as phenolic compounds. One of ordinary skill in the art would have had a reasonable expectation of success in arriving at the claimed invention because such modification allows the proteins to be solubilized for separation from insoluble fiber,and then precipitated as required by the claim.
Regarding treating the protein fraction with hydrogen peroxide thereby providing a protein isolate, Sadaranganey teaches a process for preparing bleached purified stable protein concentrate from grain millfeed, comprising the steps of: combining grain millfeed of reduced particle size with an alkali solution to produce a slurry having pH in the range of pH 9-11; separating the alkali liquid from the millfeed residue to isolate alkali extract; removing starch and fat from the alkali extract; ultrafiltration of the alkali extract to form a retentate using a semi-permeable membrane; bleaching the retentate by adding hydrogen peroxide and heating; cooling and drying the retentate to provide a light colored protein concentrate. (col. 3, lines 41-54).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to further modify Gil-Martinez to incorporate a step of treating the protein fraction with hydrogen peroxide as disclosed by Sadaranganey to lighten the color of the protein isolate. One of ordinary skill in the art would have been motivated to do so to obtain a desired level of color bleaching to prepare a protein product that is visually appealing to consumers. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Sadaranganey teaches treating purified protein with hydrogen peroxide.
The phrase, “wherein the treatment increases the Protein Digestibility Corrected Amino Acid Score (PDCAAS) by at least 2.5% relative to untreated protein” is directed to a property of the protein composition after treatment with hydrogen peroxide. When the method steps recited in the prior art reference are substantially identical to those of the claims, claimed properties of the resulting composition are presumed to be present in the composition of the prior art. The burden of proof shifts to the applicant to provide objective evidence (i.e., test data) to the contrary. See In re Best, 562, F.2d 1252, 1254, 195 USPQ 403, 433 (CCPA 1977). MPEP § 2112.01(I).
In the present case, the prior art teaches the claimed method steps. Therefore, the property of increasing the Protein Digestibility Corrected Amino Acid Score (PDCAAS) by at least 2.5% relative to untreated protein is presumed to be present.
Regarding that the protein isolate has a Protein Digestibility Corrected Amino Acid Score (PDCAAS) of equal to or at least about 0.85, Mackay teaches a brewer’s spent grain protein powder having a PDCAAS score of about 0.7 (claim 1), and adding a supplemental amount of lysine to the brewer’s spent grain-based protein powder such that the PDCAAS exceeds 0.7 (claim 19). Mackay teaches, “PDCAAS measures protein quality for human consumption by combining both digestibility characteristics (digestibility score) and amino acid qualities (amino acid score) with a combined PDCAAS value of 1.0 being the highest (highest protein quality for human consumption) and 0 being the lowest (lowest protein quality for human consumption)…The amino acid score for the brewer's spent-grain based protein powder is 0.7 (typically 0.4 to 0.5 for grains) and is generally limited by the lowest essential amino acid, which in the brewer's spent-grain based protein powder is lysine. In some embodiments, the brewer's spent-grain based protein powder of the present invention can include supplemental amounts of pure lysine…so as to elevate the amino acid score, and correspondingly, the PDCAAS score so as exceed 0.7 and approach 1.0” ([0020]).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the method of Gil-Martinez as modified by Connolly and Sadaranganey with the teachings of Mackay to add supplemental lysine to the isolated BSG protein to increase the PDCAAS to a value exceeding 0.7 and approaching 1.0, including at least about 0.85 as claimed. One of ordinary skill in the art would have been motivated to do so because Gil-Martinez teaches that the proteinaceous material obtained by the method is believed to be particularly well-suited for use as a food ingredient (p. 14, lines 12-18), and as such, one of ordinary skill in the art would want to ensure that the protein product is of high quality for human consumption, as determined by a PDCAAS approaching 1.0. One of ordinary skill in the art would have had a reasonable expectation of success in arriving at the claimed invention in doing so because Mackay teaches that adding lysine to a BSG protein product can increase the PDCAAS score so as to approach 1.0. The claimed range of at least about 0.85 overlaps with the disclosed range of 0.7 – 1.0. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Therefore, claim 1 is rendered obvious in view of the prior art.
Regarding claim 2, Gil-Martinez, Connolly, Sadaranganey, and Mackay teach the method of claim 1.
Modified Gil-Martinez also teaches that the protein fraction is dried after precipitation to provide the protein isolate – Gil-Martinez teaches preparing a protein powder by spray drying (p. 14, lines 1-6).
Claim 2 is therefore rendered obvious.
Regarding claim 3, Gil-Martinez, Connolly, Sadaranganey, and Mackay teach the method of claim 1.
Modified Gil-Martinez does not discuss that the protein fraction is precipitated from the protein solution by acidifying the protein solution.
However, Connolly teaches a method of producing protein isolates from BSG wherein the protein fraction is precipitated from the protein solution by acidification as described regarding claim 1 above.
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to precipitate the protein fraction from the protein solution by acidifying the protein solution for the same reasons as described regarding claim 1 above.
Claim 3 is therefore rendered obvious.
Regarding claim 7, Gil-Martinez, Connolly, Sadaranganey, and Mackay teach the method of claim 1.
Modified Gil-Martinez also teaches that the insoluble fiber is removed from the solution of solubilized protein by decanting – “A first step in the protein recovery process is the separation of the solid particles. Typically, disc stack centrifuges, scroll decanters or hydrocyclones can be used for this purpose.” ([0030]).
Claim 7 is therefore rendered obvious.
Regarding claim 22, Gil-Martinez, Connolly, Sadaranganey, and Mackay teach the method of claim 1.
Gil-Martinez does not discuss that the protein is not treated with a protease, and instead teaches using a protease to hydrolyze/solubilize the protein as discussed regarding claim 1 above.
However, Connolly teaches a method of producing protein isolates from BSG wherein the protein is solubilized under alkaline conditions as described regarding claim 1 above.
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Gil-Martinez with the teachings of Connolly to perform protein solubilization and precipitation by pH adjustment, thereby omitting the protease treatment step, for the same reasons as described regarding claim 1 above.
Claim 22 is therefore rendered obvious.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Gil-Martinez et al., in view of Connolly et al., Sadaranganey et al., and Mackay et al. (US 2018/0014555 A1), as applied to claim 1 above, and further in view of Mackay et al. (US 2018/0199594 A1, hereinafter “Mackay ‘594”).
Regarding claim 5, Gil-Martinez, Connolly, Sadaranganey, and Mackay teach the method of claim 1.
Modified Gil-Martinez does not discuss that the method further comprises sonicating the BSG in water mixture.
However, Mackay ‘594 teaches a method of preparing protein isolate from brewers' spent grain ([0006]). “In a preferred embodiment, the treated spent [g]rains be subjected to an effective amount of ultrasonic energy [i.e., is sonicated] to improve the efficiency of the protein extraction portion of the process.” ([0037]).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the base method of Gil-Martinez with the teachings of Mackay ‘594 to sonicate the BSG in water mixture to improve the efficiency of the protein extraction from the spent grain material. One of ordinary skill in the art could have applied this known improvement technique to the method of Gil-Martinez because both methods begin with preparing a mixture of BSG and water and enzyme treatment to produce protein isolates. In doing so, one of ordinary skill in the art would have found the results predictable because it is well known that sonication disrupts cells to liberate their contents, including proteins. See MPEP § 2143(I)(C).
Claim 5 is therefore rendered obvious.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Gil-Martinez et al., in view of Connolly et al., Sadaranganey et al., and Mackay et al., as applied to claim 1 above, and further in view of Nickel (US 5,034,227).
Regarding claim 6, Gil-Martinez, Connolly, Sadaranganey, and Mackay teach the method of claim 1.
Gil-Martinez does not discuss that insoluble fiber is removed from the solution of solubilized protein using a sieve bend filter.
Gil-Martinez instead teaches this separation in stages by centrifugation, and filtration through filter bags or filter cartridges with a maximum pore diameter of 1-5 µm (p. 13, lines 10-20).
However, in an analogous art, Nickel teaches a method for isolating a protein product, a starch product, and a fiber product from peas or beans (Abstract). Nickel discloses, “The aqueous slurry is then pumped to a screening stage where the bulk of the fibrous material is removed without losing any appreciable quantity of the proteins and starches, either in solution or in suspension. This generally is achieved by using a suitable screen size dependent upon the relative particle size of the original flour and the particle size of the fibrous material. Generally, a screen size of about 100 microns is appropriate and a suitable screening device operated under pressure such as a Dorr Oliver DSM Screen, removes the fibrous material and thus leaves an aqueous slurry containing substantially all of the proteins and starches from the pea seeds.” (col. 8, lines 9-21). A DSM screen is synonymous with a sieve bend filter as evidence by the instant specification – “Dutch State Mines (DSM) filter screens are also known as sieve bends…” ([0042]).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the centrifugation of Gil-Martinez with the sieve bend filter as disclosed in Nickel to remove the bulk of the insoluble fiber from the solution of solubilized protein by simple substitution of one known element for another to obtain predictable results. See MPEP § 2143(I)(B). Since both centrifugation and sieve bend filtration are known in the art to remove fibrous material and leave behind proteins, the results of the substitution of these elements would have been predictable to one of ordinary skill in the art.
Therefore, claim 6 is rendered obvious.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Gil-Martinez et al., in view of Connolly et al., Sadaranganey et al., and Mackay et al., and further in view of Kishi et al (US 5,156,877).
Regarding claim 9, Gil-Martinez, Connolly, Sadaranganey, and Mackay teach the method of claim 1.
The cited prior art does not teach that the method further comprises treating the protein fraction with a lipophilic solvent to remove fat from the protein fraction thereby providing a reduced fat protein isolate.
However, Kishi teaches a method of obtaining protein-rich products from BSG by sieving and pressing BSG to arrive at a particulate protein product (col. 5, lines 11-38, “Example 1”) that is then dried and optionally defatted by ethanol extraction (col. 5, lines 41-49, “Example 2”).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to further modify Gil-Martinez to incorporate a step of treating the protein fraction with a lipophilic solvent to remove fat from the protein fraction as disclosed by Kishi. One of ordinary skill in the art would have been motivated to do so to produce a protein product of higher purity and to produce another product from the BSG, thereby reducing waste and gaining another source of revenue. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Kishi teaches that from 100 g of protein-rich product starting material, “[t]his extraction treatment yielded 85.6 g of defatted protein-rich product (dry product) and 14.4 g of a vegetable oil. This defatted protein-rich product contained 60.4% by weight of proteins, 2.5% by weight of fats, 4.9% by weight of fibrous materials, 2.0% by weight of ashes, and 30.2 % by weight of nitrogen-free solubles.” (col. 5, lines 41-49, “Example 2”).
Therefore, claim 9 is rendered obvious.
Claims 10-12 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Gil-Martinez et al. (WO 2019/158755 A1) in view of Connolly et al. (Connolly, A., Piggott, C. O., & FitzGerald, R. J. (2013). Characterisation of protein-rich isolates and antioxidative phenolic extracts from pale and black brewers' spent grain. International Journal of Food Science and Technology, 48(8), 1670-1681. https://doi.org/10.1111/ijfs.12137), and as evidenced by Clark et al. (Clark, M.A., Douglas, M., and Choi, J. (2018). Biology 2e. OpenStax. Retrieved on August 20, 2026 from https://openstax.org/books/biology-2e/pages/7-5-metabolism-without-oxygen).
Regarding claim 10, Gil-Martinez teaches a method of isolating protein and/or fiber from brewers' spent grain (BSG) – “A process of extracting or purifying proteinaceous material and/or fibrous material from brewer’s spent grain (BSG)” (claim 1).
digesting starch in the BSG using an enzyme, wherein the only enzyme used is an alpha amylase, or a combination of alpha amylases, and wherein the starch is digested at a temperature of from 120 °F to 200 °F – “Performing enzymatic treatment of the brewer’s spent grain and a fermentation of the enzymatically treated brewer’s spent grain with lactic acid bacteria and/or acetic acid bacteria and/or probiotics to obtain a fermented broth” (claim 1). The enzyme treatment of the brewer’s spent grain preferably includes the addition of one or more enzymes with following enzymatic activity to the brewer’s spent grain: alpha-amylase, gluco-amylase, cellulase, xylanase, protease, Beta-glucanase and/or admixtures thereof.” (p. 3, lines 18-22; claim 3). Where Gil-Martinez teaches the addition of one or more enzymes, including alpha-amylase, and where alpha-amylase is well-known to digest starch, Gil-Martinez teaches embodiments wherein alpha-amylase is the only enzyme used in digesting starch in the BSG. Gil-Martinez further teaches, “Hydrolysis of the BSG is performed…at a temperature in function of the enzyme(s) used (typically about 55°C)…” (p. 12, lines 5-12). About 55 °C is about 131 °F. The disclosed temperature lies inside the claimed range of 120 °F to 200 °F.
oxidizing carbohydrates – Gil-Martinez teaches a fermentation of the enzymatically treated brewer’s spent grain with lactic acid bacteria and/or acetic acid bacteria and/or probiotics to obtain a fermented broth” (claim 1). As evidenced by Clark, lactic acid fermentation comprises the step of oxidation of glucose to pyruvate (p. 3, Figure 7.16). As such, oxidation of carbohydrates occurs during the fermentation process.
solubilizing protein – Gil-Martinez teaches that at the end of fermentation, the fermentation broth is high in fiber content and high in protein content (p. 12, line 22 – p. 13, line 2). Gil-Martinez teaches hydrolyzing the proteins (p. 13, lines 5-9), which is well-known to increase protein solubility.
removing insoluble fiber from a solution of the solubilized protein – Gil-Martinez teaches “Subsequently, proteinaceous material can be recovered (extracted, purified and/or separated) from the fermentation broth…A first step in the protein recovery process is the separation of solid particles…The insoluble solids containing stream…can be dried.” (p. 13, lines 10-20). The insoluble fibers present in the BSG (p. 4, lines 1-22) would be present in the insoluble solids fraction.
Gil-Martinez does not discuss precipitating the protein.
However, Connolly teaches protein-enriched isolates and co-product fractions obtained from BSG using sequential aqueous alkaline extraction, followed by isoelectric precipitation at pH 3.8 (Abstract). Connolly teaches that alkaline solutions are widely recognized as the most effective GRAS solvents for extraction of proteins from plants and cereals, and may seed storage proteins such as barley glutelins are solubilized by weak alkali (p. 1674, col. 2, ¶ 2). Therefore, Connolley teaches that BSG proteins can be solubilized by alkaline pH, and precipitated by isoelectric precipitation at pH 3.8. Connolly further teaches that isoelectrically precipitated protein can be retrieved by centrifugation, further separating it from a supernatant co-product (p. 1674, col. 1, ¶ 2) comprising phenolic compounds (p. 1679, col. 1, ¶ 2 – col. 2).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Gil-Martinez with the teachings of Connolly to perform protein solubilization and precipitation by pH adjustment. One of ordinary skill in the art would have been motivated to do so in order to simplify the method by removing an additional enzyme (protease) treatment as used by Gil-Martinez to hydrolyze/solubilize the proteins, and to allow easy precipitation of the protein for further separation from co-products such as phenolic compounds. One of ordinary skill in the art would have had a reasonable expectation of success in arriving at the claimed invention because such modification allows the proteins to be solubilized for separation from insoluble fiber and then precipitated as required by the claim.
Therefore, claim 10 is rendered obvious in view of the prior art.
Regarding claim 11, Gil-Martinez and Connolly teach the method of claim 10.
Modified Gil-Martinez also teaches that the protein fraction is spray dried after precipitation – Gil-Martinez teaches preparing a protein powder by spray drying (p. 14, lines 1-6).
Claim 11 is therefore rendered obvious.
Regarding claim 12, Gil-Martinez and Connolly teach the method of claim 10.
Modified Gil-Martinez does not discuss that the protein is precipitated by acidifying the protein solution.
However, Connolly teaches a method of producing protein isolates from BSG wherein the protein is precipitated from the solution by acidification as described regarding claim 10 above.
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to precipitate the protein by acidifying the protein solution for the same reasons as described regarding claim 10 above.
Claim 12 is therefore rendered obvious.
Regarding claim 23, Gil-Martinez and Connolly teach the method of claim 10.
Gil-Martinez does not discuss that the protein is not treated with a protease, and instead teaches using a protease to hydrolyze/solubilize the protein as discussed regarding claim 10 above.
However, Connolly teaches a method of producing protein isolates from BSG wherein the protein is solubilized under alkaline conditions as described regarding claim 10 above.
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Gil-Martinez with the teachings of Connolly to perform protein solubilization and precipitation by pH adjustment, thereby omitting the protease treatment step, for the same reasons as described regarding claim 10 above.
Claim 23 is therefore rendered obvious
Claims 14 is rejected under 35 U.S.C. 103 as being unpatentable over Gil-Martinez et al. in view of Connolly et al. as applied to claim 10 above, and further in view of Nickel (US 5,034,227).
Regarding claim 14, Gil-Martinez and Connolly teach the method of claim 10.
Gil-Martinez does not discuss that insoluble fiber is removed from the solution of solubilized protein using a DSM filter.
Gil-Martinez instead teaches this separation in stages by centrifugation, and filtration through filter bags or filter cartridges with a maximum pore diameter of 1-5 µm (p. 13, lines 10-20).
However, in an analogous art, Nickel teaches a method for isolating a protein product, a starch product, and a fiber product from peas or beans (Abstract). Nickel discloses, “The aqueous slurry is then pumped to a screening stage where the bulk of the fibrous material is removed without losing any appreciable quantity of the proteins and starches, either in solution or in suspension. This generally is achieved by using a suitable screen size dependent upon the relative particle size of the original flour and the particle size of the fibrous material. Generally, a screen size of about 100 microns is appropriate and a suitable screening device operated under pressure such as a Dorr Oliver DSM Screen, removes the fibrous material and thus leaves an aqueous slurry containing substantially all of the proteins and starches from the pea seeds.” (col. 8, lines 9-21).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the centrifugation of Gil-Martinez with the DSM filter as disclosed in Nickel to remove the bulk of the insoluble fiber from the solution of solubilized protein by simple substitution of one known element for another to obtain predictable results. See MPEP § 2143(I)(B). Since both centrifugation and DSM filtration are known in the art to remove fibrous material and leave behind proteins, the results of the substitution of these elements would have been predictable to one of ordinary skill in the art.
Therefore, claim 14 is rendered obvious.
Response to Arguments
Claim Rejections – 35 U.S.C. § 103:
Applicant’s arguments filed on 6 March 2026 with respect to the pending claims (p. 5, ¶ 2 – p. 9, ¶ 1) have been considered but are moot because the new grounds of rejection do not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the arguments.
Applicant’s assertion of unexpected results regarding an improvement in PDCAAS (p. 6, ¶ 3) is acknowledged. Applicant’s argument has been considered, but it is not found to be persuasive.
In the present case, Applicant’s assertion of unexpected, superior characteristics is based on argument, and not on objective evidence. “Argument does not replace evidence where evidence is necessary”. MPEP § 2145(I). Objective evidence of unexpected results must be submitted in an appropriate affidavit or declaration. MPEP § 716.01(c) §§ (I)&(II). Therefore, Applicant’s assertion cannot be found persuasive.
Claims 1-3, 5-7, 9-12, 14, and 22-23 are rejected under 35 U.S.C. § 103 on the grounds presented hereinabove.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James Shellhammer whose telephone number is (703) 756-5525. The examiner can normally be reached Monday - Thursday 7:30 am - 5:00 pm ET.
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, Emily Le can be reached at (571) 272-0903. 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.
/JAMES P. SHELLHAMMER/Examiner, Art Unit 1793
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759
Prosecution Insights