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 .
DETAILED ACTION
Status of Claims
Note: The amendment of January 28th 2026 has been considered.
Claims 26, 38 and 54 have been amended.
Claims 1-25 are cancelled.
Claims 26-54 are pending and examined in the current application.
Any rejections not recited below have been withdrawn.
Claim Rejections - 35 USC § 112
In light of the amendment filed on January 28th 2026, the rejection of claims 26 and 38 under 35 USC §112(a) has been withdrawn.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35 of the U.S. Code not included in this action can be found in a prior Office action.
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 26-54 are rejected under 35 U.S.C. 103 as being unpatentable over Gao et al. (USPatPub. 2008/0305235 A1).
Regarding claims 26-33, 38, 43 and 46-50: Gao discloses an acid gellable whey protein powder composition (acid WPC) and a method of attaining the acid gellable whey protein powder composition (see Gao abstract; paragraphs [0016]-[0039]; Examples 1 and 2; Figure 2). Gao also disclose of forming the protein aggregates that will not gel at high pH, (see Gao paragraph [0026] and [0032]; examples 1 and 2; figure 2) and comprise 80% denatured protein (see Gao paragraph [0031]). In example 2, Gao discloses the denatured whey protein composition comprising 86.45wt% protein and 81% protein denaturation (see Gao example 2, table 1; figure 2). Accordingly, Gao reads on claim 26: “acid-gellable whey protein powder composition having a total amount of protein of at least 60% (w/w) relative to the dry weight of the powder composition and comprising at least 40% (w/w) denatured whey protein particles relative to the total amount of protein, wherein at least 50% (w/w) of the denatured whey protein particles are acid-gellable whey protein aggregates”, Claim 27: “total amount of protein of 80-99% (w/w) relative to the dry weight of the powder composition”, claim 28: “the amount of denatured whey protein particles in the powder composition is 50-95% (w/w) relative to the total amount of protein”, claim 29: “the amount of denatured whey protein particles in the powder composition is 60-95% (w/w) relative to the total amount of protein”, claim 30: “the amount of denatured whey protein particles in the powder composition is 70-95% (w/w) relative to the total amount of protein”, claim 31: “the amount of denatured whey protein particles in the powder composition is at least 90% (w/w) relative to the total amount of protein”, claim 32: “the amount of acid-gellable whey protein aggregates in the powder composition is at least 60% (w/w) of the denatured whey protein particles”, claim 33: ” the amount of acid-gellable whey protein aggregates in the powder composition is at least 60% (w/w) of the denatured whey protein particles”.
Regarding the acid-gel strength (i.e., storage modulus) value of between 10 and 1000 pascals recited in claims 26 and 38: Gao discloses an acid gellable whey protein powder composition (acid WPC) and a method of attaining the acid gellable whey protein powder composition where the protein aggregates that will not gel at high pH (see Gao abstract; paragraphs [0016]-[0039]; examples 1 and 2; figure 2), but fails to disclose the gel strength of the acid gellable whey protein powder composition; However, given the fact the acid gellable whey protein powder composition is attained through the same or similar process contemplated by Applicant (see Specification page 2, line 31 to page 4, line 22 and Gao paragraphs [0016]-[0039]; examples 1 and 2; figure 2) it is examiner’s position that the gel strength of the acid gellable whey protein powder composition recited in claims 26 and 38 is inherently present in the acid gellable whey protein powder composition in Gao. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claim 34: Gao discloses an acid gellable whey protein powder composition (acid WPC) (see Gao abstract; paragraphs [0016]-[0039]; examples 1 and 2; figure 2), but fails to disclose the content of insoluble matter; However, given the fact the acid gellable whey protein powder composition is attained through the same or similar process contemplated by Applicant (see Specification page 2, line 31 to page 4, line 22 and Gao paragraphs [0016]-[0039]; examples 1 and 2; figure 2) it is examiner’s position that the powdered, acid gellable whey protein powder composition in Gao inherently comprises the insoluble matter in claim 34. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claims 35-37: Gao discloses an acid gellable whey protein powder composition (acid WPC), but fails to disclose the bulk density; However, given the fact discloses an acid gellable whey protein powder composition is attained through the same or similar process contemplated by Applicant (see Specification page 2, line 31 to page 4, line 22 and Gao paragraphs [0016]-[0039]; examples 1 and 2; figure 2) it is examiner’s position that the bulk density of the acid gellable whey protein powder composition in Gao inherently meets the bulk density in claims 35-37. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claim 38: Gao discloses an acid gellable whey protein powder composition to be added to foods, to modify the protein content without modifying the texture of product (see Gao paragraphs [0016]-[0039]; examples 1 and 2; figure 2). While Gao fails to disclose the contents of the whey protein, denatured whey protein and gellable whey protein recited in claim 38. Given the fact the contents of whey protein, denatured whey protein and gellable whey protein impact the texture of the final product, it would have been obvious to a skilled artisan at the time the application was filed to have modified Gao and to have adjusted the relative contents of the denatured whey protein and gellable whey protein in the composition in order to attain desired texture, and thus arrive at the claimed limitations. As set forth in MPEP §2144.05 discovering an optimum value of a result effective variable, involves only routine skill in the art.
Regarding claims 39-42 and 51-54: Gao discloses an acid gellable whey protein powder composition to be added to foods, to modify the protein content without modifying the texture of product (see Gao paragraphs [0016]-[0039]; examples 1 and 2; figure 2). While Gao fails to disclose the nutritional profile, the sweetener content, or the lactose content of the food product to include the acid gellable whey protein powder composition, Gao does not limit the nutritional profile, the sweetener content, or the lactose content of the food the acid gellable whey protein powder composition can be added to. Accordingly, it would have been obvious to a skilled artisan at the time the application was filed to have incorporated to foods with the nutritional profile, sweetener level and lactose content recited in claims 39-42 and 51-54 the acid gellable whey protein powder composition in order to adjust the protein content without modifying the texture of the food product, and thus arrive at the claimed limitations.
Regarding claims 44 and 45: Gao discloses an acid gellable whey protein powder composition, but fails to disclose the relative content of beta lactoglobulin in the whey protein; However, given the fact the acid gellable whey protein powder composition is attained through the same or similar process contemplated by Applicant (see Specification page 2, line 31 to page 4, line 22 and Gao paragraphs [0016]-[0039]), it is examiner’s position that the relative content of beta lactoglobulin recited in claims 44 and 45 are inherently present in the acid gellable whey protein powder composition in Gao. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Response to Arguments
In view of the amendment filed on January 28th 2026, the rejection of claims 26 and 38 under 35 USC §112(a) has been withdrawn.
Applicant's arguments filed on January 28th 2026, regarding the prior rejections, have been fully considered but they are not persuasive.
Applicant argues in the “Remarks” that the prior art references fail to render the claimed invention obvious, because Gao discloses in Example 2, Table 1 “% protein denaturation” of 40% and 80% does not meet the clamed composition “comprising at least 40% (w/w) denatured whey protein particles relative to the total amount of protein”. The examiner respectfully disagrees.
The disclosure in Example 2, Table 1 of Gao pf a % protein denaturation of 40% and 80% meets the claimed limitations.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASSAF ZILBERING whose telephone number is (571)270-3029. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at (571) 270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASSAF ZILBERING/Examiner, Art Unit 1792
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