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 .
This office action is in regard to the application filed on September 21, 2021 and in response to Applicant’s Amendments and Arguments/Remarks filed on March 31, 2026.
Status of Application
The amendment filed March 31, 2026 has been entered. Claims 16, 19-30, 32, 33, and 34 are currently pending in the application. Claims 19-30 are withdrawn; claims 1-15, 17, 18, and 31 are canceled; claims 16 and 33 have been amended; claim 34 is new. Claims 16 and 32-34 are hereby examined on the merits.
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 16, 33, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Sosulski et al. (“Functionality of Flours, Protein Fractions and Isolates from Field Peas and Faba Bean,” Journal of Food Science, vol. 52, issue 4, pp. 1010-1014, July 1987; cited on PTO-892 dated Nov. 12, 2024) in view of Schwenke et al. (“Functional properties of plant proteins. Part 2. Selected physicochemical properties of native and denatured protein isolates from faba beans, soybeans, and sunflower seed,” Molecular Nutrition and Food Research, vol. 25, issues 1, pp. 59-69, 1981) and Vioque et al. (“Nutritional and functional properties of Vicia faba protein isolates and related fractions,” Food Chemistry,” vol. 132, issue 1, pp. 67-72, May 2012; cited on PTO-892 dated Nov. 12, 2024), herein after referred to as Sosulski, Schwenke, and Vioque, respectively.
Regarding claims 16 and 34, Sosulski teaches a faba bean protein isolate (i.e., a field bean protein composition) having:
a color that comprises a components L of 69.1 according to measurement L*a*b (Table 3),
a water holding capacity (i.e., water retention) of 2.16-2.34 grams of water per gram of isolate (p. 1012 Table 4),
a protein content of 86.3 wt.% on a dry basis (Table 1), and
a pH of 6.6 (Table 4).
Given Sosulski teaches a protein content of 86.3 wt.% protein on a dry basis, the dry protein composition must necessarily comprise at least 86.3 wt.% solids.
Sosulski does not teach that the water retention value is found according to test A, however, the patentability of a product does not depend on a method of measurement, rather the determination of patentability is based on the product itself. Both the instant claim and the product taught by Sosulski measures water retention as gram of water per gram of protein, and as such, the measurement is the same. The method of measurement is not patentable where the measured value and units are the same.
The water retention taught by Sosulski is under the claimed limit of greater than 3.5 grams of water per gram of isolate. Sosulski also teaches that the isolate is prepared via isoelectric precipitation (Table 1) and is denatured (p. 1013, second to last sentence in paragraph above “Functional properties”).
Schwenke, in the same field of invention, teaches a denatured faba bean protein isolate that is prepared via isoelectric precipitation and that has a water retention of 799 grams of water per 100 grams of isolate (equivalent to 7.99 g water per g isolate) at a pH of 7 (Table 1). Schwenke offers the motivation that increasing the pH increases the water retention (p. 63 “Water adsorption capacity”). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the isolate of Sosulski to have the pH (which is within the claimed pH limitation) and thus water retention of Schwenke, thereby arriving at the claimed invention. One would have been motivated to make this modification for the benefit of increasing the water retention of the protein isolate.
The component L taught by Sosulski is below the claimed limit of greater than 80.
Vioque, in the same field of invention, teaches a field bean protein isolate that has a white color (i.e., an L component greater than 80) that is achieved by removing polyphenols during the production of the protein isolate (p. 69, right column, first paragraph; Fig. 1). Vioque offers the motivation that removing polyphenols is desirable because the polyphenols cause an undesirable darkening of the product and that they are considered antinutritional components (p.69, right column, third paragraph). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the protein isolate of Sosulski by incorporating the removal of polyphenols of Vioque, thereby creating a protein isolate having a white color (i.e., an L component greater than 80) and thus arriving at the claimed invention. One would have been motivated to make this modification for the benefit of removing the undesirable effects caused by polyphenols in the protein isolate.
Sosulski teaches that the protein composition has a protein content of 86.3 wt.% on a dry basis (Table 1). Given Sosulski teaches a protein content of 86.3 wt.% protein on a dry basis, the dry protein composition must necessarily comprise at least 86.3 wt.% solids.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Sosulski et al. (“Functionality of Flours, Protein Fractions and Isolates from Field Peas and Faba Bean,” Journal of Food Science, vol. 52, issue 4, pp. 1010-1014, July 1987; cited on PTO-892 dated Nov. 12, 2024) in view of Schwenke et al. (“Functional properties of plant proteins. Part 2. Selected physicochemical properties of native and denatured protein isolates from faba beans, soybeans, and sunflower seed,” Molecular Nutrition and Food Research, vol. 25, issues 1, pp. 59-69, 1981) and Vioque et al. (“Nutritional and functional properties of Vicia faba protein isolates and related fractions,” Food Chemistry,” vol. 132, issue 1, pp. 67-72, May 2012; cited on PTO-892 dated Nov. 12, 2024), as applied to claim 16 above, and further in view of Cepeda et al. (“Functional Properties of Faba Bean (Vicia faba) Protein Flour Dried by Spray Drying and Freeze Drying.” Journal of Food Engineering, vol. 36 issue 3, pp. 303-310; 1998; cited on PTO-892 dated April 9, 2025), herein after referred to as Sosulski, Schwenke, Vioque, and Cepeda, respectively.
Modified Sosulski teaches the field bean protein composition as set forth above with regard to claim 16.
Modified Sosulski is silent as to that the protein composition is spray dried. Modified Sosulski does teach that the protein composition is freeze dried (Sosulski: p. 1012, “Product colors”).
Cepeda, in the same field of invention, teaches a faba bean (i.e., field bean) protein isolate produced by spray drying (p. 305, “Protein isolate preparation”). Cepeda offers the motivation that when compared to a protein isolate produced by freeze drying, a protein isolate produced by spray drying is lighter in color, more uniform in size, and has a higher protein solubility (p. 306). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have substituted the freeze drying of modified Sosulski with the spray drying of Cepeda, thereby arriving at the claimed invention. One would have been motivated to make this modification for the benefit of improving properties of the field bean protein isolate.
Response to Arguments
Applicant's arguments filed March 31, 2026 have been fully considered but they are not persuasive.
The prior art rejection has been amended in light of Applicant’s amendments to the claims, however, the essential prior art rejection has been maintained by the Examiner for the following reasons.
Applicant argues that the instant invention possess unexpected results, citing Example 4 of the instant specification, where isolates according to the instant invention are compared to those of the prior art (Remarks, p. 6-7).
This argument is not persuasive. Applicant has not compared the instant invention to that of the cited prior art in the prior art rejection. Merely comparing an isolate of a general piece of prior art is not sufficient in overcoming the rejection of proving unexpected results, there must be a comparison to that of the cited prior art in the rejection. Additionally, the cited examples more so compare the methods of making the isolates, while the claims at hand are directed to the composition itself, not to the method of making the composition.
Applicant argues that Vioque fails to disclose a component L greater than 80 because the teaching of a “white color” by Vioque is not quantitative and one of ordinary skill in the art would consider a “white color” too vague. Furthermore, applicant argues that the method used by Vioque to obtain a white color causes a decrease in the water absorption between the flour starting product and the end product protein isolate (Remarks, p. 12-13).
This argument is not persuasive. One of ordinary skill in the art would recognize that an L value of 100 is quantitatively white, as in the L*a*b measurement, white is 100 and black is 0 (see also Table 3 of Sosulski). As such, one of ordinary skill in the art would be able to recognize that a composition described as having a “white color” would have an L value close to, if not exactly, 100. At the very least, one of ordinary skill in the art would have been able to recognize that a composition described as such would at least have an L value over 80, as the composition with an L value of 69.1, almost ten points lower than 80, is described merely as exhibiting “a degree of greyness” (Sosulski, p. 1012, “Product colors”).
Applicant’s argument with regard to the water absorption between the flour and the protein isolate is not persuasive because it does not matter what the water absorption of the flour is where the claims and invention are only concerned with and directed to the isolate. The fact that the process to obtain a white color reduces the water retention from the end to beginning product is irrelevant where the water retention of only the isolate pertains to the invention. In any case, Vioque is not used to teach water retention.
Applicant’s arguments with respect to the arguments concerning the Alu’datt and Zmudzinski references (sections B and C of the Remarks) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The prior art rejection now relies on a new primary and secondary reference and no longer relies on either Alu’datt or Zmudzinski.
In the absence of any further arguments with regard to the rejections of the additional dependent claims, the rejections of these dependent claims are maintained.
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 MAURA E SWEENEY whose telephone number is (571)272-0244. The examiner can normally be reached M-F 9:00-6:00 EST.
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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
