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 response to the application filed on August 2, 2022. The earliest effective filing date of the application is February 4, 2020.
Priority
The present application is a 371 National Stage Application of PCT/EP2021/052597 which has a filing date of February 4, 2021.
Election/Restrictions
Claims 1 – 3 and 8 – 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 30, 2026.
Applicant's election with traverse of Group II, claims 4, 5, and 7, in the reply filed on January 30, 2026 is acknowledged. The traversal is on the grounds that (i) Groups I and II have unity of invention because they are drawn to a process of making and a product made, and (ii) the claims of Group II depend of the claims of Group I. This is not found persuasive because a lack of unity of invention has been established in the Requirement for Restriction filed on December 15, 2025, as shown below:
Groups I – III lack unity of invention because even though the inventions of these groups require the technical feature of the precisely claimed ionic polymer of claim 8 filed on August 10, 2022 of the instant invention, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Siankevich et al. (WO 2019058270 A1 – IDS Filed on August 10, 2022).
Siankevich teaches an ionic polymer matching the precisely claimed ionic polymer of claim 8 filed on August 10, 2022 of the instant invention (Claim 1).
The requirement is still deemed proper and is therefore made FINAL.
Status of Application
The preliminary amendment filed on August 10, 2022 has been entered. The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1 – 5 and 7 – 10
Withdrawn claims: 1 – 3 and 8 – 10
Cancelled claims: 6
Currently amended claims: 1 – 5 and 7 – 10
Claims currently under examination: 4, 5, and 7
Claim Objections
Claim 5 is objected to because of the following informalities:
Claim 5 recites “The protein hydrolysate of claim 4, comprising peptides and free amino acids…” which should be “The protein hydrolysate of claim 4, further comprising peptides and free amino acids…”.
Claim 5 recites “10’000 Da” which should be “10,000 Da”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4, 5, and 7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 depends on a withdrawn claim, rendering it incomplete. It is unclear what limitations are included in claim 4. Given the claim which claim 4 depends upon is a process, the structure of the product implied by the process which claim 4 depends upon has been considered when determining the broadest reasonable interpretation of the product of claim 4. See MPEP § 2113.I. The instant specification defines the protein hydrolysate of the invention as comprising peptides and free animo acids (p. 36, lines 1 – 6); wherein the protein hydrolysate is water soluble and a degree of hydrolysis above 2.5% (p. 36, lines 9 – 11). Therefore, for the purpose of examination, claim 4 is interpreted broadly to claim a protein hydrolysate comprising peptides and free animo acids, wherein the protein hydrolysate is water soluble and has a degree of hydrolysis above 2.5%.
Claim 5 recites “having improved dissolving properties”. The term “improved” is a relative term which renders the claim indefinite. The term “improved” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear upon what basis the term “improved” is referring to when claiming “improved dissolving properties”. For the purpose of examination, any dissolving properties are considered to be “improved dissolving properties”.
Claim 7 is rejected as dependent on a rejected base claim.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 4, 5, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wong et al. (US 20110097448 A).
Regarding claim 4, Wong teaches a protein hydrolysate composition ([0004]). Wong teaches the protein hydrolysate composition has a degree of hydrolysis of at least about 2.5% ([0004]). Wong teaches during a hydrolysis reaction, large molecules are broken into smaller proteins, soluble proteins, oligopeptides, peptide fragments, and free amino acids ([0064]). Therefore, the protein hydrolysate composition of Wong comprises free amino acids. Wong teaches the protein hydrolysate composition is soluble at a pH of about 7 (the pH of water – Figure 2), therefore the protein hydrolysate composition is soluble in water.
While Wong does not teach the precisely claimed process of making the protein hydrolysate of claim 4, this recitation is directed toward a method of production of the product of claim 4. MPEP § 2113.I teaches even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. In this case, the instant specification defines the protein hydrolysate of the invention as comprising peptides and free animo acids (p. 36, lines 1 – 6); wherein the protein hydrolysate is water soluble and a degree of hydrolysis above 2.5% (p. 36, lines 9 – 11). The instant specification further states the protein hydrolysate is obtained by the method for hydrolyzing proteins and/or protein-containing feedstock of the present invention (i.e., the method of claim 1 – p. 36, lines 25 – 26). Therefore, the method of claim 1 is not interpreted to further limit the structure of the protein hydrolysate described above, because such a protein hydrolysate is inherently produced by the method of the present invention. In other words, the structure implied by claim 1 is interpreted to be a protein hydrolysate comprising peptides and free animo acids, wherein the protein hydrolysate is water soluble and has a degree of hydrolysis above 2.5%.
The protein hydrolysate composition is of Wong, is encompassed by claim 4. Therefore, the product of claim 4 is anticipated by Wong.
Regarding claim 5, Wong teaches the protein hydrolysate composition comprises a mixture of oligopeptides having an average size of less than 10,000 Daltons ([0004]). Wong teaches the term "polypeptide" encompasses oligopeptides ([0065]). Therefore the protein hydrolysate composition comprises oligopeptides and polypeptides having an average size of less than 10,000 Daltons.
Regarding claim 7, Wong teaches a food product comprising the protein hydrolysate composition ([0053]). Wong teaches the food or beverage product can further include an edible material ([0055]).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARK JULIA MORENO whose telephone number is (571) 272-2337. The examiner can normally be reached 6:30 - 4:30 M - F.
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/L.J.M./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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