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 a Request for Continued Examination filed on September 9, 2025.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 9, 2025 has been entered.
Status of Application
The amendment filed September 9, 2025 has been entered. Claims 16-30, 32, and 33 are currently pending in the application. Claims 19-30 are withdrawn; claims 1-15 and 31 are canceled; claim 16 has been amended; claim 33 is new. Claims 16-18, 32, and 33 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 16-18 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Alu’datt et al. (“Preparation of mayonnaise from extracted plant protein isolates of chickpea, broad bean and lupin flour: chemical, physiochemical, nutritional and therapeutic properties,” Journal of Food Science and Technology, vol. 54, no. 6, pp. 1395-1405, March 2017; listed on IDS dated Sept. 21, 2021 and attached herewith), as evidenced by Żmudziński et al. (“Functional and Rheological Properties of Vicia faba L. Protein Isolates.” Biomolecules, 2021; 11, 178), and in view of 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; listed on PTO-892 dated Nov. 12, 2024), herein after referred to as Alu’datt, Żmudziński, and Vioque, respectively.
Regarding claim 16, Alu’datt teaches a broad bean protein isolate (i.e., a field bean protein composition) having:
a component L of 72.9 (Table 3) according to the measurement L*a*b (p. 1399, Colour value measurement), and
a water holding capacity of 44% (Table 3), which is equivalent to a water retention of 2.75 grams of water per gram of isolate as it is measured by adding 25 ml of water to 4 grams protein (p. 1396 right column).
Alu’datt 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 Alu’datt measures water retention as gram of water per gram of protein (or can calculate that value from the information given), 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 Alu’datt is under the claimed limit of greater than 3 grams of water per gram of isolate. However, as evidenced by Żmudziński, water retention (or water holding capacity) is a function of the pH of the protein isolate. Żmudziński provides evidence that when the pH of a field bean protein isolate is 6.8 or 8, the water retention is 3.5 g of water per gram of isolate (p. 8). Where Alu’datt is silent as to the pH of the isolate, it would have been reasonably expected that the protein isolate having a pH of 6.8 or 8 would have the water retention value as claimed.
The component L taught by Alu’datt 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 Alu’datt 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.
Regarding claims 17 and 18, Alu’datt teaches that the protein composition has a protein content of 81.16 wt.% on a dry basis (Table 2).
Given Alu’datt teaches a protein content of 81.16 wt.% protein on a dry basis, the dry protein composition must necessarily comprise at least 81.16 wt.% solids.
Regarding claim 33, Alu’datt teaches that the protein composition has a protein content of 81.16 wt.% on a dry basis (Table 2). Given Alu’datt teaches a protein content of 81.16 wt.% protein on a dry basis, the dry protein composition must necessarily comprise at least 81.16 wt.% solids. This amount is lower than the claimed range of greater than 85 wt.%, but is close. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05.I. The taught value is not expected to impart any unexpected results in the final product, and the difference between the two values is virtually negligible absent any showing of unexpected results or criticality.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Alu’datt et al. (“Preparation of mayonnaise from extracted plant protein isolates of chickpea, broad bean and lupin flour: chemical, physiochemical, nutritional and therapeutic properties,” Journal of Food Science and Technology, vol. 54, no. 6, pp. 1395-1405, March 2017; listed on IDS dated Sept. 21, 2021 and attached herewith) as evidenced by Żmudziński et al. (“Functional and Rheological Properties of Vicia faba L. Protein Isolates.” Biomolecules, 2021; 11, 178) in view of 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; listed 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), herein after referred to as Cepeda.
Modified Alu’datt teaches the field bean protein composition as set forth above with regard to claim 16.
Modified Alu’datt is silent as to that the protein composition is spray dried. Modified Alu’datt does teach that the protein composition is freeze dried (Alu’datt: p. 1396, top of right column).
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, has less denatured protein, 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 Alu’datt 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 improved properties of the field bean protein isolate.
Response to Arguments
Applicant's arguments filed September 9, 2025 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 evidence of Żmudziński cannot be applicable to Alu’datt since the two have different methods of acquiring the protein isolate, and that one of ordinary skill in the art would not have arrived at the claimed invention because Alu’datt does not teach the invention as claimed (remarks, p. 6-9).
This argument is not persuasive. Żmudziński is indeed applicable to Alu’datt since it is the composition that is claimed and that is used, not the method of making. The two isolates taught by the prior art are sufficiently the same, and as such, Żmudziński can be used as evidence for the composition of Alu’datt. Additionally, even though Alu’datt does not teach the invention as claimed on its own, the combination of Alu’datt as evidenced by Żmudziński and in view of Vioque does teach the invention as claimed, and thus, the claimed invention would have been obvious to one of ordinary skill in the art.
In response to applicant's argument that the invention has improved color and water retention values, as well as enabling aqueous formulations to have advantageous properties (remarks, p. 8-9), the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Additionally, the claim does not require “improved” color and water retention values, rather the claim merely requires certain color and water retention values. Such as long as the prior art meets these claim limitations, the claim is considered to be met; the prior art does not need to explicitly teach “improved” forms of these values.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, specifically Vioque into Alu’datt (remarks, p. 9-11), the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, there is sufficient motivation in Vioque to combine the references, as set forth above in the rejection.
Applicant also argues that Vioque teaches a lower water retention capacity than what is claimed, and as such Vioque does not teach a capable solution (remarks, p. 9-11).
This argument is not persuasive. Vioque is used only to teach the color, the water retention capacity has already been rendered obvious by Alu’datt as evidenced by Żmudziński.
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
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 8:00-5:00 EST.
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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791