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 .
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 after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.114 has been timely paid, the finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114.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 10/31/2025 has been entered.
Claim status
The examiner acknowledged the amendment made to the claims on 10/31/2025.
Claims 1-3, 5, 7-14 and 19-20 are pending. Claims 1-3, 5, 7, 9, 11-14 and 19-20 are currently amended. Claims 8 and 10 are previously presented. Claims 4, 6, and 15 44 remain cancelled. Claims 16-18 are newly cancelled. Claims 1-3, 5, 7-14 and 19-20 are hereby examined on the merits.
Examiner Note
Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.
Claim Objections
Claim 1 objected to because of the following informalities: step b, “fermenting the product of step a) a Lactobacillus helveticus and a peptidase” should read “fermenting the product of step a) with a Lactobacillus helveticus and a peptidase”. Appropriate correction is required.
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.
Claims 1, 2, 5, 8, 13, 14, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tsai TWI272912B (English translation relied upon for reference, hereinafter referred to as Tsai) in view of Ma CN108796018 A (English translation relied upon for reference, hereinafter referred to as Ma) and Abdualrahman, “Effects of ultrasound pretreatment on enzymolysis of sodium caseinate protein: Kinetic study, angiotensin-converting enzyme inhibitory activity, and the structural characteristics of the hydrolysates”, J. Food Process Preserv. 2017, 41, e13276, pages 1-11 (hereinafter referred to as Abdualrahman).
Regarding claims 1, 5, 8 and 13, Tsai teaches a method of producing an antihypertensive peptide composition (e.g., functional milk containing angiotensin converting enzyme inhibitor, ACE-I, see Abstract), comprising the steps of providing a milk composition (e.g., whole milk, low-fat milk, and skim milk etc. in reconstituted form or directly from animal; page 3. line 86 and 92-100); pasteurizing the milk composition (e.g., sterilizing the milk, page 4, line 140-142); fermenting the milk composition with a lactic acid bacteria (LAB) such as L. helveticus, and a peptidase such as an aminopeptidase for 3-10 hours (e.g., Flavourzyme, page 3, line 125) (page 3, line 86-88 and 121-122; page 4, line 132-133) which necessarily at least partially hydrolyzed the peptides present in the milk composition; heating the fermented milk composition so as to inactivate the L. helveticus and the peptidase (page 3, line 90, page 4, line 136-138). Tsai further teaches a step of centrifuging the heat treated fermented milk composition to remove a microorganism (e.g., L. helveticus) thus obtaining a supernatant which necessarily comprises antihypertensive peptides, and lyophilizing the supernatant into powders for analysis (page 4, line 153-154).
The duration of L. helveticus fermentation as disclosed by Tsai overlaps with the duration as recited in claim 13. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Tsai is silent regarding subjecting the milk composition to mechanical agitation at a rate of 100-600 rpm (or narrowly 100-225 rpm) before fermentation with L. helveticus and a peptidase as recited in claims 1 and 5.
Ma in the same field of endeavor of producing antihypertensive peptide composition from milk or casein (0008; 0010), comprising the steps of stirring milk or casein in water having a concentration of 7-10% such that the milk protein or casein is completely denatured, adding a peptidase (e.g., pepsin and trypsin) to cleave the milk protein or casein, raising the temperature to 95-110 °C for 10-25 min to inactive the enzymes to obtain an enzymatic hydrolysis solution, centrifuging the enzymatic hydrolysis solution to extract the supernatant, filtering the supernatant, homogenizing, and freeze-drying to obtain the antihypertensive peptide composition (0010-0016).
Abdualrahman in the same filed of endeavor teaches a method of producing an antihypertensive peptide composition (e.g., ACE inhibitory peptides, See Practical Application on page 1) from a casein (e.g., sodium caseinate) suspension (see Abstract), comprising the step of pretreating the casein suspension with either mechanical agitation at a rate of 100 rpm or ultrasound before contacting the casein suspension with a peptidase (e.g., Alcalase) (page 2, section 2.2 and 2.3). Further, Abdualrahman discloses that both mechanical agitation pretreatment and ultrasound pretreatment of the casein suspension before enzymatic treatment improves the conversion rate of the protein hydrolysate/ ACE inhibitory peptides (Table 1, page 5, section 3.2).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Tsai by stirring the milk composition of Tsai through mechanical agitation before fermentation/enzymatic hydrolysis so as to ensure the denaturation of the protein and higher conversion of the ACE inhibitory peptides upon enzymatic treatment.
Regarding the speed of mechanical agitation, Abdualrahman teaches an rpm of 100 which falls within the range as recited in claims 1 and 5. Further, one of ordinary skill in the art would have been motivated to manipulate the speed of stirring or mechanical agitation so as to ensure the complete denaturation of the protein.
Regarding claim 2, Tsai teaches that the milk composition can be whole milk, low-fat milk, and skim milk etc. in reconstituted form or directly from animal (page 3. line 86 and 92-100). Further, Tsai teaches that the concentration of the raw milk prepared by reconstitution of milk powder with water is not particularly limited in the present invention. However, in order to make the product have a better flavor, it is preferably that the amount of milk powder is 6 to 15 parts by weight relative to 100 parts by weight of water, which is expressed as 6 to 15% (w/w) (page 3, line 96-99). Thus assuming a density of 1 g/ml for the milk composition (e.g., the suspension of milk powder contains a large amount of water and a small amount of milk powder), Tsai teaches a weight volume concentration that overlaps with range as recited in claim 2. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Regarding claim 14, Tsai teaches a heat treatment in a 100 °C water bath for 10 min (page 4, line 153). It is noted that prior art teaches a temperature that is very close to the upper bound of the temperature as recited in the claim and a duration that is very close to the lower bound of the time range that one of ordinary skill in the art would have expected them to have the same properties, given that both prior art and the claimed invention are directed to heat inactivation of a LAB and protease in a fermented substate. It has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP 2144.05).
Further, knowing that the heating is to inactivate the protease and the LAB temporarily or permanently (Tsai, page 4, line 136-137), one of ordinary skill in the art would have been motived to manipulate the temperature and time of heating so as to ensure the effective inactivation of the LAB and the protease. As such, the temperature and the time as disclosed by prior art are merely obvious variants of the prior art.
Regarding claims 19-20, Tsai teaches a step of centrifuging the heat treated fermented milk composition to separate a microorganism (e.g., L. helveticus) to obtain a supernatant which necessarily comprises antihypertensive peptides, and lyophilizing the supernatant into powders for analysis (page 4, line 153-156).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Tsai in view of Ma and Abdualrahman as applied to claim 1 above, and further in view of Chen, “Antihypertensive effect of bioactive peptides produced by protease-facilitated lactic acid fermentation of milk”, Food Chemistry, 2008, 106, pages 552-558 (hereinafter referred to as Chen).
Regarding claim 3, Tsai teaches a pasteurization (sterilization) temperature of 95 °C for 10 min (page 4, line 140-141) thus being silent regarding a duration of 15-18 min.
Chen in the same field of endeavor teaches a method of producing an antihypertensive peptide composition comprising the steps of providing a milk composition (e.g., reconstituted whole milk or skim milk); pasteurizing the milk composition at a temperature of 95 °C for 30 min.; fermenting the milk composition with a lactic acid bacteria (LAB) and an aminopeptidase (e.g., Flavourzyme) for 5 hours; heating the fermented milk at a temperature of 98 °C for 10 min; centrifuging to obtain a supernatant, filtering, and lyophilizing the filtrate to obtain the antihypertensive peptide composition (page 553, section 2.2).
As such, prior art has established that a milk composition as the substrate for making an antihypertensive peptide composition can be pasteurized at a temperature of 95 °C for 10-30 min before fermentation with a LAB and a peptidase. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Tsai by pasteurizing the milk composition at 95 °C for 10-30 min with reasonable expectation of success, for the reason that prior art has established such a condition is suitable for prepare a pasteurized milk composition for fermenting to obtain an antihypertensive peptide composition.
The duration as disclosed by prior art encompasses the range as recited in claim 3. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I). MPEP 2144.05 I also states that a range can be disclosed in multiple prior art references instead of in a single prior art reference depending on the specific facts of the case. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228 (Fed. Cir. 2004).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Tsai in view of Ma and Abdualrahman as applied to claim 1 above, and further in view of Ahtesh, “Effects of fermented skim milk drink by Kluyveromyces marxianus LAF4 co-cultured with lactic acid bacteria to release angiotensin-converting enzyme inhibitory activities”, International Journal of Dairy Technology. 2017, 70, pages 1-11 (cited in the IDS filed 09/30/2022, hereinafter referred to as Ahtesh 1) and Zhao CN110241046A (English translation relied upon for reference, hereinafter referred to as Zhao).
Regarding claim 7, Tsai teaches preparing L. helveticus but is silent regarding activating the L. helveticus.
Ahtesh 1 in the same field of endeavor teaches fermenting the milk composition with a combination (e.g., co-cultures) of a LAB such as L. helveticus and Kluyveromyces marxianus LAF4 to produce ACE-I peptides (Table 1; page 3b; page 8, left hand column, under “Angiotensin-converting enzyme inhibitory activity”). Ahtesh 1 further teaches that L. helveticus is transferred to MRS medium (e.g., MRS broth) and incubated for 24 hours for activation, and the strain is cultured three times, each time for 12 hours in reconstituted skim milk at 37 °C (page 2, right hand column, under “Experimental design and cultural propagation”).
Zhao teaches activating a L. helveticus strain in MRS medium at 37 °C for 18 hours, and the strain is continuously activated for three generations (page 3, 8th para.).
Tsai, Ahtesh 1 and Zhao are all directed to a L. helveticus strains. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Tsai by activating L. helveticus three iterations in MRS medium at 37 °C for 18 hours with reasonable expectation of success, for the reason that such a protocol of activation is known to properly activate and/or propagate the L. helveticus strain. Further, before the effective filling date of the claimed invention, one of ordinary skill in the art would have known that the duration of culturing of a strain in a medium/broth affects the amplification/propagation/multiplication of the strain, and the very skilled person would have been motivated to manipulate the duration of the activation to ensure the strain has been effectively amplified/propagated/multiplied.
Claims 9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Tsai in view of Ma and Abdualrahman as applied to claim 1 above, and further in view of Ahtesh, “Effect of Flavourzyme(® on Angiotensin-Converting Enzyme Inhibitory Peptides Formed in Skim Milk and Whey Protein Concentrate during Fermentation by Lactobacillus helveticus”, Journal of Food Science. 2016, 81(1), pages M135-43 (cited in the IDS filed 09/30/2022, hereinafter referred to as Ahtesh 2).
Regarding claim 9, Tsai teaches an aminopeptidase (e.g., Flavourzyme) but is silent regarding the enzyme activity being about 1000 LAPU/g. However, depending on the availability of the enzyme and considering the dose of the enzyme used in the fermentation (higher enzyme activity, lower dose), one of ordinary skill in the art would have been motivated to select a Flavourzyme the proteolytic activity of which is sufficient for cleaving the proteins/peptides in the milk composition into ACE-I peptides.
Further, Ahtesh 2 in the same filed of endeavor teaches a method of preparing ACE-I peptides comprising subjecting a reconstituted skim milk to fermentation with L. helveticus supplemented with Flavourzyme, wherein Flavourzyme has an activity of 1000 LAPU/g (page M136, under ‘Fermentation media, preparation, and procedure).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Tsai by using a Flavourzyme has an activity of 1000 LAPU/g with reasonable expectation of success, for the reason that a Flavourzyme with aforementioned enzyme activity is recognized to be proper in cleaving milk proteins to form ACE-I peptides.
Regarding claim 12, Tsai teaches an enzyme dose of 0.1-1.0% (w/w) (page 4, line 127), which overlaps with the range as recited in the claim. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I). Tsai further teaches a LAB inoculation size of 1x 105 to 1 x 107 cfu/ml considering production cost, possibility of contamination, and the time for fermentation (page 3, line 104-107). Given that claim 12 is not really clear on how much L. helveticus is used, prior art is interpret to render obvious the amount of L. helveticus as recited in the claim.
Further, Ahtesh 2 in the same filed of endeavor teaches a method of preparing ACE-I peptides comprising subjecting a reconstituted skim milk to fermentation with L. helveticus supplemented with Flavourzyme, wherein the dose of the enzyme is 0.14% and the inoculation size for the L. helveticus is 1% v/v (Abstract; Table 1).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Tsai by including the enzyme dose and the inoculation size as disclosed by Ahtesh 2 with reasonable expectation of success, for the reason that those amounts are recognized to be proper to produce ACE-I peptides.
Claims 10-11 are is rejected under 35 U.S.C. 103 as being unpatentable over Tsai in view of Ma and Abdualrahman as applied to claim 1 above, and further in view of Chen CN107641637A (English translation relied upon for reference, hereinafter referred to as Chen).
Regarding claim 10, Tsai teaches an aminopeptidase (e.g., Flavourzyme) thus being silent regarding a serine endopeptidase.
Abdualrahman in the same field of endeavor teaches that it is suitable to use a serine endopeptidase (e.g., Alcalase) to treat a milk protein (e.g., caseinate) so as to make antihypertensive peptides (page 2, section 2.3; page 1, Practical Applications).
Chen in the same field of endeavor teaches that a serine endopeptidase (e.g., Alcalase) is suitable for cleaving skim milk to make antihypertensive peptides (abstract).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Tsai by substituting Alcalase for Flavourzyme with reasonable expectation of success, for the reason that prior art has established that the former is an art-recognized peptidase suitable for cleaving milk protein to form antihypertensive peptides. Substituting equivalents known for the same purpose is prima facie obvious. See MPEP 2144.06 II. In the instant case, prior art in its entirety has established that aminopeptidase (e.g., Flavourzyme) and serine endopeptidase (e.g., Alcalase) are functional equivalents in cleaving milk protein to produce antihypertensive peptides thus a skilled person would have been motivated to substitute one for another for the same purpose. Further, the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.07. In the instant case, prior art has established that serine endopeptidase (e.g., Alcalase) is an art-recognized peptidase suitable for cleaving milk protein to produce antihypertensive peptides thus one of ordinary skill in the art would have been motivated to use Alcalase to treat milk for the purpose of producing antihypertensive peptides.
Regarding claim 11, Abdualrahman teaches that the Alcalase has an activity of 2.4 x 105 U/g (page 2, section 2.1), thus reading on the limitation about the serine endopeptidase having an activity of 2.4 Anson per g, since 1 Anson is known to correspond to 550 U. Further, depending on the availability of the enzyme and considering the dose of the enzyme used in the fermentation (the higher enzyme activity will only need lower dose), one of ordinary skill in the art would have been motivated to select an Alcalase the proteolytic activity of which is sufficient for cleaving the proteins/peptides in the milk composition into ACE-I peptides.
Response to Arguments
Applicant's arguments filed 10/31/2025 have been fully considered and the examiner’s response is shown below:
Applicant asserts unexpected result on page 6 of the Remarks. In particular, applicant asserts that page 22, line 13-26 and Example 7 of the instant specification have shown that an agitation of the milk composition at a speed of 100-600 rpm prior to fermentation by L. helveticus and a peptidase has unexpectedly results in a higher yield of antihypertensive peptides.
The argument is considered but found unpersuasive because the instant disclosure lacks a comparison of pre-fermentation mechanical agitation with a control that skips the mechanical agitation to show the improved yield as a result of mechanical agitation. More importantly, Abdualrahman as cited in the instant office action has actually discovered that mechanical agitation pretreatment of aqueous milk protein suspension before enzymatic treatment improves the conversion rate of ACE inhibitory peptides, rendering applicant’s assertion more expected than unexpected.
Applicant argues on page 6 of the Remarks that Tsai does not teach the step of mechanical agitation.
The argument is considered but found moot over the new ground of rejection set forth in the instant office action.
Applicant argues on page 7 of the Remarks that Ahtesh 1 does not teach the step of mechanical agitation.
The argument is considered but found moot over the new ground of rejection set forth in the instant office action. Note that Ahtesh 1 is no longer relied upon in rejecting claim 1.
Similarly, any argument regarding Yoshiharu or Janzen on pages 7-10 of the Remarks is moot as well, since neither reference is relied upon in the instant office action.
For the reasons set forth above, the arguments on pages 10-11 of the Remarks regarding dependent claims 7 and 9-12 are not persuasive, either.
Conclusion
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/CHANGQING LI/Primary Examiner, Art Unit 1791