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
Response to Amendment
As a result of the amendments to the claim, the Objection over Claim 2 has been withdrawn.
Also, the 112(b) rejection over Claims 1-4 have been withdrawn.
The prior art has been maintained. See response to arguments below.
Claims 1-4, 12, 14-17, 19-20, 22-23, 26, 29-32, 34, and 36 are currently pending. Claims 12, 14-17, 19-20, 22-23, 26, 29-32, 34, and 36 have been withdrawn due to being drawn to the non-elected invention.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bhaskar et al. (US 2017/0164645 A1- cited in IDS filed 4/5/23) in view of Dyck (WO 2008/05592 A1).
Regarding Claims 1-3, Bhaskar discloses a calcium depleted milk protein concentrate (see abstract) that has between 15-45% of the calcium removed (see abstract), which overlaps with the ranges of Claims 1 and 2. While ‘milk protein concentrate’ includes both whey and casein proteins, Bhaskar does not specifically recite that about 50-100% of the whey protein is denatured. Dyck is relied on to teach a method of improving the taste of milk products (see abstract), where it has been experimentally determined that the taste is favorably influenced when the microparticulated whey proteins have a degree of denaturation of at least 80% (meets the limitation of Claim 3) and a particle size of 1-10 microns (see page 2, sixth paragraph).
Therefore, since both Bhaskar and Dyck are directed to milk protein products having whey protein, it would have been obvious to one of ordinary skill in the art to modify the whey component of the milk protein concentrate to have the structures taught by Dyck for the purpose of improving the taste of the milk product. . In the case 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding Claim 4, Bhaskar further teaches wherein the MPC over 50%w/w milk protein (paragraph 16).
Response to Arguments
Applicant’s arguments in the response filed 10/03/2025 has been considered, but is found not persuasive for the following reasons:
Applicant argues on the basis that the combination of Bhaskar and Dyck cannot be combined because Bhaskar is not concern with flavor and Dyck does not associate the level of whey protein denaturation with improved taste (page 7-8 of the remarks). However, the arguments are not persuasive because Bhaskar discloses an easily consumable dairy product (paragraph 7) that may further comprise flavourants (paragraph 31). Therefore, Applicant’s assertion that Bhaskar is not concerned with flavour is not persuasive. As to the Dyck reference, Dyck explicitly recites “It has been experimentally determined that the taste is particularly favorably influenced when the microparticulated whey proteins have a degree of denaturation of at least 80% and a particle size distribution of 1-10 μm.” (emphasis added, see page 2, sixth paragraph of the translations). Therefore, it is maintained that since Bhaskar comprises whey protein within its composition, it would have been obvious to provide whey protein having similar levels of denaturation and microparticulate as taught by Dyck to improve the taste of the composition overall.
In response to Applicant’s arguments that there would be no reasonable expectation of success (page 9 of the remarks), the argument is not persuasive because there is no evidence to suggest that one of ordinary skill in the art would be unable to substitute the whey protein of Bhaskar with the whey protein of Dyck. In this case, since both are directed to dairy products comprising whey protein, and Dyck discloses that whey protein having a particular level of denaturation and microparticulation would improve the taste of the dairy product, it would have been reasonable for one of ordinary skill in the art to modify the whey component of Bhaskar with the whey of Dyck for the same purpose. As indicated above, Bhaskar is directed to a consumable dairy product that may contain flavourants; therefore, it would have been obvious to one of ordinary skill in the art to seek an improvement in taste as taught by Dyck.
In response to Applicant’s argument that Dyck would render Bhaskar unsuitable for its purpose by changing its characteristics such that foods can be delivered readily by flow through a tube or by mouth, the argument is not persuasive because there are no evidence to suggest that the modification to a denatured whey protein as taught by Dyck would affect the characteristics beyond the requirements of Bhaskar. In this case, Bhaskar encompasses compositions for feeding by mouth. Dyck is also directed to a composition that is liquid and consumable by mouth (dairy product that resembles pasteurized milk); therefore, there is no evidence to suggest that the modification would render Bhaskar’s product unsuitable for being consumed by mouth. For these reasons, the prior art has been maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/T.H.N/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792