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 2, 2026.
Status of Application
The amendment filed March 2, 2026 has been entered. Claims 14 and 16-26 are currently pending in the application. Claims 19-26 are withdrawn; claims 1-13 and 15 are canceled; claim 14 has been amended. Claims 14 and 16-18 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 14 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over 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 IDS dated June 3, 2024) as evidenced by Żmudziński et al. (“Functional and Rheological Properties of Vicia faba L. Protein Isolates.” Biomolecules, 2021; 11, 178; cited on PTO-892 dated Oct. 3, 2025), herein after referred to as Cepeda and Żmudziński, respectively.
Regarding claim 14, Cepeda teaches a faba bean protein isolate (i.e., a field bean protein composition) prepared by spray-drying (p. 305) having:
a whiteish color (i.e., a color that comprises a component L greater than 70 according to the measurement L*a*b, since a white color is L=100) (p. 306 first paragraph), and
a solubility of ~45 to ~25% of the total weight (Fig. 2) at a pH of 7 (p. 305, second paragraph under “Protein isolate preparation”).
The solubility range for pH 7 taught by Cepeda overlaps with the claimed range of less than 25% of the total weight. Where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.I.
Cepeda is silent as to that the protein composition has a solubility of less than 25% of the total weight according to test A at pH 8.
However, faba bean protein isolate, as evidenced by Żmudziński, has a solubility of less than 25% of the total weight at a pH of 8 (Table 2). Therefore, Cepeda as evidenced by Żmudziński is considered to teach the instant claim limitation.
Neither Cepeda nor Żmudziński teach that the solubility is measured 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 products taught by Cepeda and Żmudziński measures solubility of the total weight at a certain pH, and as such, the measurement is the same. The method of measurement is not patentable where the measured value and units are the same.
Regarding claim 16, Cepeda is silent as to that the protein composition has a solubility of less than 25% of the total weight according to the test A at pH 3. However, faba bean protein isolate, as evidenced by Żmudziński, has a solubility of less than 25% of the total weight at a pH of 4, with the solubility increasing as the pH increases (Table 2). It is thereby reasonably expected that a faba bean protein isolate at a pH of 3 would also have a solubility of less than 25%. Therefore, Cepeda as evidenced by Żmudziński is considered to teach the instant claim limitation.
Regarding claim 17, Cepeda teaches that the protein composition has a protein content of ~100 wt.% based on dry matter (p. 306 third paragraph).
Regarding claim 18, Cepeda teaches that the protein composition is a spray-dried powder (p. 306 first paragraph), which necessarily has a dry matter content greater than 80% by weight.
Response to Arguments
Applicant's arguments filed March 2, 2026 have been fully considered but they are not persuasive.
Applicant argues that the cited prior art does not teach or suggest the claimed solubility at pHs of both 7 and 8, or for the entire pH range of 7 to 8 (Remarks, p. 5-6).
This argument is not persuasive. Cepeda teaches the claimed solubility at pH 7 and Żmudziński offers evidence for the claimed solubility of faba bean protein isolate at pH 8. As set forth above in the rejection, Cepeda as evidenced by Żmudziński thereby is considered to teach the claim limitations. Furthermore, as the amended claim is written, the solubility need only be present for pHs of both 7 and 8, not for the entire range of 7 to 8.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (571)-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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