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 .
Application Status
Amended claim 1-3, 7 and 12 are under examination.
Claim 4-6, 8-11 and 13 are cancelled.
Claim 1-3, 7 and 12 are rejected.
Withdrawn Rejections
The 112 second paragraph rejection over claim 1-4, 6-7 and 12-13 has been withdrawn in light of Applicants’ amendment.
The 35 U.S.C. 102(a)(1) rejection over Claim(s) 1-4, 6-7 and 12 as being anticipated by Suppavorastit et al. (Ref. U, Optimization of the Enzymatic Deamidation of Soy Protein by Protein-Glutaminase and Its Effect of the Functional Properties of the Protein, 2011) have been withdrawn in light of Applicant’s amendment to recite new limitation of “reacting the soybean protein contained in soy milk” in claim 1; and “to soy milk” in claim 12.
The 35 U.S.C. 102(a)(1) rejection over Claim(s) 1-4, 6-7, 12 and 13 as being anticipated by Triantafyllou (WO 2014/123466 A1) have been withdrawn in light of Applicant’s amendment to recite new limitation of “reacting the soybean protein contained in soy milk” in claim 1; and “to soy milk” in claim 12.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-3, 7 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miwa et al. (US 2011/0064847).
Regarding claim 1-3 and 7, Miwa et al. (Miwa) discloses a method of denaturing protein (‘847, abstract) in soya milk (‘847, [0076], [0077]) with enzyme solution which includes protein glutaminase (protein deamidase) (‘847, [0047], [0077]) incubated for a time period (‘847, [0077]). With respect to the limitation of “…so that a coefficient of friction generated between the protein and a solid surface in saliva is reduced by at least 90% compared to a coefficient of friction of the protein that is not reacted with the protein deamidase…”, as Miwa uses like materials, (soy) protein (‘847, abstract) in the soya milk (‘847, [0076], [0077]) with protein glutaminase (protein deamidase) in a like manner, under conditions and time in an enzymatic deamination, it would therefore be expected that the protein will have the same characteristics claimed, particularly the coefficient of friction generated between the protein and a solid surface in saliva is reduced by at least 90% compared to a coefficient of friction of the protein that is not reacted with the protein deamidase; absence a showing of unexpected results.
With respect to the claim 1, when reading the preamble in the context of the entire claim, the recitation “for improving a texture of a protein”, is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
With respect to claim 7, the limitation of “…smoothens a feeling of the protein on a tongue…”, is considered a functional limitations of the claimed product when it’s at the protein deamidase is allow to act on the protein; hence it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or substantially identical process, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitation that stem from the claimed structure (product). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spade, 15 USPQ2d 655,1658 (Fed. Cir. 1990).
Regarding claim 12, the limitation is considered measurement of properties of the protein in the claimed process; when it’s at when protein is mixed with artificial saliva compared to a coefficient of friction; hence it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or substantially identical process, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitation that stem from the claimed structure (product). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spade, 15 USPQ2d 655,1658 (Fed. Cir. 1990). Miwa discloses the claimed invention as discussed above in claim 1 and encompass the limitation set forth in claim 12.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3, 7 and 12 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The 35 U.S.C. 102(a)(1) rejection over Claim(s) 1-4, 6-7 and 12 as being anticipated by Suppavorastit et al. (Ref. U, Optimization of the Enzymatic Deamidation of Soy Protein by Protein-Glutaminase and Its Effect of the Functional Properties of the Protein, 2011) have been withdrawn in light of Applicant’s amendment to recite new limitation of “reacting the soybean protein contained in soy milk” in claim 1; and “to soy milk” in claim 12.
The 35 U.S.C. 102(a)(1) rejection over Claim(s) 1-4, 6-7, 12 and 13 as being anticipated by Triantafyllou (WO 2014/123466 A1) have been withdrawn in light of Applicant’s amendment to recite new limitation of “reacting the soybean protein contained in soy milk” in claim 1; and “to soy milk” in claim 12.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fujioka Hiroki (WO 2020/171105) discloses a method of treating protein deamidase, glutaminase (‘105, Abstract, pg. 3, 6th paragraph) with nut milk. Hiroki does not disclose the nut milk is soybean milk.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG THI YOO whose telephone number is (571)270-7093. The examiner can normally be reached M-F, 7AM to 3PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ERIK KASHNIKOW can be reached at (571)270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HONG T YOO/Primary Examiner, Art Unit 1792
Prosecution Insights