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 in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/28/2026 has been entered.
Status of the Claims
Receipt of Remarks/Amendments filed 4/28/2026 is acknowledged. Claims 2, 12, and 17 are cancelled. Claims 13-16 and 18 are non-elected claims, and remain withdrawn. Claims 22-23 are new. Claims 1, 3-11, and 19-23 are presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
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.
Claims 1, 3-5, and 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by He et al. (CN 111227074 A, machine translated in IP.com), hereinafter He.
He discloses a processing method of a matcha product, which comprises the steps of pretreatment, pulping, primary enzymolysis, grinding, secondary enzymolysis and post-treatment to improve the solubility, dispersibility, nutrient absorption, and flavor of the matcha (Abstract). The matcha product can also be used as an additive for processing various foods, beverages and cosmetics (Abstract).
Regarding Claim 1, He relates that its method comprises the steps of: 1) crushing ground tea serving as a raw material of matcha to obtain ground tea powder; 2) adding an aqueous liquid into the obtained ground tea powder for pulping to further crush the ground tea powder to obtain a pulping residue liquid; 3) performing enzymolysis on the liquid by using cellulase, hemicellulase and pectinase to obtain primary enzymolysis liquid; 4) grinding the primary enzymolysis liquid to further reduce the degree of fragmentation to obtain grinding slurry; 5) performing a secondary enzymolysis on the obtained grinding slurry by using protease, tannase and glutaminase to obtain secondary enzymolysis liquid; 6) and post-treatment on the obtained secondary enzymolysis liquid to obtain a matcha product (p. 2, bottom half; Claim 1). Typically, the post-processing steps include degassing, homogenization and sterilization; homogenization is performed twice at pressure of 18-19MPa to make the slurry system more uniform and stable (p. 9, 2nd paragraph). By Examiner’s calculation, 18-19 MPa is equivalent to 180-190 bar, which is within the claimed pressure.
Regarding Claims 3-4 and 8-9, He teaches expressly teaches sequential treatment with enzymes cellulase, treating the pulping residue liquid with cellulase first, followed by glutaminase (Examples 1-3).
Regarding Claim 5, He teaches using 0.8 g glutaminase per kg of the tea and/or of the liquid slurry, which is within the claimed range (Example 1).
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.
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 7 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over He, as applied to Claim 1 above.
Regarding Claim 7, He teaches homogenization is performed twice at pressure of 18-19MPa to make the slurry system more uniform and stable (p. 9, 2nd paragraph). By Examiner’s calculation, 18-19 MPa is equivalent to 180-190 bar, which is near the claimed pressure.
Regarding Claim 20, He teaches using 0.8 g glutaminase per kg of the tea and/or of the liquid slurry, which is outside but near the claimed range (Example 1).
A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05. One of ordinary skill in the art would find it obvious to adjust the pressure or the ratio of the protein composition to the deamidase as a matter of experimentation and optimization. The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Regarding Claim 21, He does not expressly teach the pressure between 270-330 bar. However, while the exact pressure range is not disclosed by He, it is generally noted that differences in pressure do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such pressure range is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Given that applicant did not point out the criticality of the pressure range claimed, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine where in a disclosed set of ranges is the optimum pressure range. NOTE: MPEP 2144.05.
Claims 1, 3-5, 7-11 and 19-21, are rejected under 35 U.S.C. 103 as being unpatentable over Maningat et al. (US 2018/0295857 A1, cited in the IDS), and in view of Alting (Of record), and Rinas et al. (Of record), hereinafter Rinas.
Maningat discloses the preparation of high-protein food additives by reacting a protein material with L-cysteine, or a derivative thereof, with homogenization and heating, preferably carried out on an aqueously slurry of the protein material and L-cysteine (Abstract).
Regarding Claims 1 and 4, Maningat teaches examples wherein plant protein is added to an aqueous solution, which is treated with glutaminase and homogenized (Examples 5 and 9).
Maningat does not expressly teach the homogenization pressure and the carbohydrate-hydrolyzing enzyme in Claim 1.
Regarding the homogenization pressure, Alting discloses the preparation of aqueous dispersion of poorly dispersable plant proteins by preparing an aqueous dispersion comprising colloidal protein particles dispersed in an aqueous fluid, which colloidal protein particles comprise caseinate and one or more plant proteins, and food products comprising the same (Abstract). Alting recognizes other poorly soluble plant protein to be proteins from rice, oat, wheat etc. (p. 9, lines 1-4). Alting also teaches using deaminated sodium caseinate stirred with protein glutaminase prior to homogenization, which is compatible with Maningat (Example 5; p. 5). Alting expressly teaches an example wherein the dispersion is homogenized at a pressure of 35 MPa, which is equivalent to 350 bar, before spray-drying (Example 2). Thus, the high pressure homogenization range claimed in Claim 1 is obvious. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See MPEP 2144.05. The pressure in Claims 7 and 21 are also obvious
The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006). In the instant case, the references are compatible, and Alting provides the pressure value to perform the homogenization of Maningat.
Regarding the carbohydrate-hydrolyzing enzyme in Claim 1, Rinas is in a related field, teaching the production of enzymatic seasoning or seasoning from plant raw material where the substrate is finely distributed in water is hydrolyzed by proteases, peptidases, glutaminases, and maceration enzymes, i.e. cellulases, pectinases, or amylases (Abstract). The combination produces a seasoning with no bitter taste (Abstract). Rinas relates that seasonings are obtained by hydrolysis of amino acids obtained from vegetable protein, i. e. glutamic acid, increasing the individual taste of food (p. 5). The proteases hydrolyze and expose the amino acids; the glutaminases converts glutamine to glutamic acid; the starch, cellulose and other carbohydrates, which contributes to the aroma, are also cleaved by adding macerating enzymes, such as cellulase, pectinases, glucanases and amylases (pp. 3 and 5; Claims 4 and 7-8). The enzymes can be added as mixture to treat soy flour and wheat gluten (p. 3, 1st and 2nd paragraphs).
Maningat expressly teaches the production of high protein food additives (Claim 1). Rinas is in the seasoning field and teaches addition of maceration enzyme including cellulases (Abstract). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to use the cellulase maceration enzyme of Rinas combined with the glutaminase enzyme in the composition of Maningat to produce a food additive such as seasoning with the desired flavor and aroma, and with less bitter taste imparted to the food.
Regarding Claims 3, 8, and 10, Rinas expressly teaches the enzymatic wort production from soy flour comprising a step of enzyme hydrolysis with a mixture of glutaminase, cellulase, and amylase altogether (p. 3, 6th paragraph; p. 6, 2nd to last paragraph; Claim 16). Hence, one with ordinary skill in the art would have applied the known technique of mixing together cellulase with glutaminase to perform the hydrolysis of protein and carbohydrate at once per the teaching of Rinas, and apply it to the method of Maningat. Applying a known technique to a known method ready for improvement to yield predictable results is the rationale supporting obviousness. See MPEP § 2143 and KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007).
Regarding Claims 5 and 20, Maningat expressly teaches 1.35 lbs lentil protein and 10.55 lbs gluten dough is added with 10.22 g glutaminase, which by Examiner’s calculation is equivalent to 526:1 protein-containing composition to glutaminase, and is within the claimed range.
Regarding Claims 9-10, Rinas teaches that the various enzymes can be processed in a single step in a mixture, but that it is preferable that the enzymes are added in a multi-step process (p. 5). The first enzymatic reaction comprises the mixture of proteases; followed by deamination by adding glutaminase, and preferably with the macerating enzyme (p. 6).
Regarding the order of steps, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to add the various enzymes in a single step in a mixture, or in a multi-step process as taught by Rinas, depending on the hydrolysis yield and desired aroma.
The Examiner notes that the Applicant does not disclose the criticality of the steps. The instant situation is amenable to the type of analysis set forth in Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious). Thus the claimed variation of steps would have been obvious to a skilled artisan. Unless Applicant demonstrates the criticality of the order of addition and that the prior art is not the same product as the instant application, changes in sequence of adding ingredients has been rendered to be prima facie obvious Note MPEP § 2144.04 [R-1] In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious).
Regarding the solubility in Claim 11, Maningat teaches that the food additive may be prepared by first forming an aqueous slurry comprising the at least one protein material, wherein the slurry comprises from about 10% to about 90%, from about 20% to about 80%, from about 30% to about 70%, or about 40% to about 60% by weight of the at least one protein material [0075]. Maningat recognizes the use of homogenization and adjusting the pH to increase solubility, for example, for wheat gluten proteins [0075]. While Maningat does not expressly recite a protein in the plant-based protein-containing composition has a solubility of less than 41 %, the Examiner interprets the slurry comprising e.g. 20% protein material to mean that the protein is ess than 41 % in the slurry.
Regarding Claim 19, Alting teaches while aqueous colloidal dispersion may be used in the preparation of a food product etc., or the hybrid protein particles may be obtained from the colloidal dispersion by drying the aqueous dispersion via generally known drying techniques, e.g. drum drying, spray drying or freeze-drying to give a powder (p. 13, pp. 28-29). Spray drying is particularly useful in obtaining a powder of particles having a core-shell morphology, with increased dispersibility (pp. 13-14).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to improve upon the method of Maningat and use the spray-drying technique of Alting to obtain protein particles from the colloidal dispersion after the deamidase treatment if a core-shell morphology is desired and/or increase the dispersibility of the composition.
Claims 6 and 22-23 rejected under 35 U.S.C. 103 as being unpatentable over Maningat in view of Alting and Rinas, as applied to Claim 1 above, and further in view of Rommi et al. (Of record), hereinafter Rommi.
The teachings of Maningat have been set forth supra.
Regarding Claims 6 and 22, Maningat does not teach the press cake.
Maningat teaches that the proteins in its invention include rapeseed protein ([0068], [0130]). Rommi relates that rapeseed cold-pressed cake has gained growing interest as a potential plant-based protein source for use as animal feed, and noted how rapeseed protein has favorable features for human use, specifically food and cosmetics applications (Introduction, Conclusions). Rommi teaches that rapeseed press cake has high carbohydrate content, and phytates and phenolics negatively impacts its digestibility and sensory properties, but are resolved by use of proteases and/or cell wall-degrading enzymes (Introduction).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Maningat and Rommi to use the rapeseed press cake or other plant-based protein press cake as food additive in Maningat to obtain food products with better digestibility and sensory properties.
Regarding Claim 23, which depends from Claim 22, Maningat teaches the food additive may be prepared by first forming an aqueous slurry comprising the at least one protein material, and wherein the slurry is homogenized under acidic, alkaline, or neutral pH conditions [0075]. Maningat expressly teaches a different sample compositions treated at different pH, including a sample comprising lentil and pea proteins that are treated with protein glutaminase at pH 6.8; another sample comprises wheat gluten and sunflower protein treated with protein glutaminase at pH 7.3 (Table 1, sample X; Table 2, Sample 231). Sample 231 exhibited high emulsifying capacity, higher foaming stability, and the greatest number of improved functional properties compared to the other protein samples [0141].
Response to Remarks:
Applicant traversed the rejection over Yamaguchi based on the amended feature of the instant claim now reciting “aqueous mixture”.
Applicant’s arguments have been considered but are moot because the new ground of rejection necessitated by the amendment does not rely on Yamaguchi for any teaching or matter specifically challenged in the argument.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3-4, 7 and 9-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-12 of co-pending Application 18/246,455, hereinafter ‘455.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are drawn to the same subject matter and composition components.
Both the instant claims and ‘455 are drawn to processes of treating protein in plant-based products, and requires mixing a plant-based composition with aqueous solvent, followed by enzymatic treatment with glutamines and carbohydrate-hydrolyzing enzymes, and homogenization.
Therefore, the claims are drawn to the same subject matter and are not patentably distinct from the instant claims.
Claims 1, 3-7 and 9-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 11, and 18-20 of co-pending Application 18/002,542, hereinafter ‘542 (now US 12610961B2).
Although the claims at issue are not identical, they are not patentably distinct from each other because they are drawn to the same subject matter and composition components.
Both the instant claims and ‘542 are drawn to processes of treating protein in plant-based products, and requires mixing a plant-based composition with aqueous solvent, followed by enzymatic treatment with glutamines and carbohydrate-hydrolyzing enzymes, and homogenization. Further, the composition is in the form of press cake.
Therefore, the claims are drawn to the same subject matter and are not patentably distinct from the instant claims.
Response to Remarks:
With respect to the Double Patenting rejection, the rejections are maintained since applicant has not made any substantive arguments traversing the rejection. Applicant(s) is/are reminded that a request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 714.02 and CFR 1.111(b)).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached M-F, 10-6 EST.
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/J.Y.S./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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