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 5-13, 15 and 17 are under examination.
Claim 1-4, 14 and 16 are cancelled.
Claim 5-13, 15 and 17 are rejected.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/18/2026 was filed after the mailing date of the Non-Final Rejection on 07/28/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawn Rejections
The 112 second paragraph rejection over claim 5-17 as set forth in previous office action has been withdrawn in light of Applicants’ amendments submitted on 02/18/2026.
The 35 U.S.C. 102(a)(1) rejection over claim 5-17 as being anticipated by Liu et al. (US 2005/0249865 A1) has been withdrawn in light of Applicant to recite new limitations in claim 5.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1-13, 15 and 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant recite new limitation of “…absent any emulsifier to remove alpha-galactosides…” in claim 5, which is not supported in the original specification as file. The new limitation of “…absent any emulsifier to remove alpha-galactosides…” is considered a negative limitation. See MPEP 2173.05(i) wherein,
Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) ("[the] specification, having described the whole, necessarily described the part remaining."). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984). In describing alternative features, the applicant need not articulate advantages or disadvantages of each feature in order to later exclude the alternative features. See Inphi Corporation v. Netlist, Inc., 805 F.3d 1350, 1356-57, 116 USPQ2d 2006, 2010-11 (Fed. Cir. 2015). The mere absence of a positive recitation is not basis for an exclusion…Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement.
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.
Claim 13 is 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 13 depended upon claim 11, recites the limitation of “…wherein said steps b) and c) are repeated at a higher pH than 9…” is confusing, for instant it is no clear if step b) is repeated, then how is the pH which is at a higher pH level of 9 than the pH range 7 to 9 as recited in claim 11? Additionally, step c) does not recite a pH range hence it is not clear what Applicant intend to repeat again at a higher pH than 9 in step c), since step c) does not recite a pH range. The claim is indefinite.
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) 5-13, 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Edwards et al. (US 4,060,203) in view of O’Connor (US 3,586,662).
Regarding claim 5, 6, 7, 8, 10 and 17, Edwards et al. (Edwards) discloses a process of extracting protein from decoated protein bearing seeds (plant parts/dehulled seeds (‘203, col. 2, ln. 50-55) from legumes including chick peas, English peas (‘203, claim 3) which are not soybean and not subject to defatting steps. Edwards discloses the process comprising multiple steps of washing and contacting (‘203, col. 2, ln. 60-67, Fig. 1, step 16 and 32) with a wet-milled decoated protein bearing seeds (flour) in a slurry (solution) in alkaline and acid region (‘203, claim 2). Edwards discloses water without any emulsifiers (‘203, col. 2, ln. 50-68; col. 3, 1-50) hence meet the limitation of “…absent of any emulsifier to remove alpha-galactosides…”. Edward discloses recovering the protein as an isolate with 60 to 90% protein content on a dry matter basis (‘203, col.3, ln. 50-53).
Edwards discloses different pH extracting combinations can be used in successive extraction combinations in the alkaline and acid region (‘203, col. 3, ln. 3-5). Edwards does not explicitly the acidic region then the alkaline step. However, O’Connor discloses a process of preparing protein isolate from plant material, sunflower seeds meal (‘662, col. 2, ln. 44-46). O’Connor discloses the process of multi-stage process comprising washing solution in a pH range of 4-5 (‘662, col. 3, ln. 5-16) (acidic condition) then to alkali extraction (‘662, col. 3, ln. 43-50). O’Connor and Edwards are of the same field of endeavor of process plant material, seeds with extracting steps to obtain a protein isolate. It would have been obvious to one of ordinary skill in the art to use O’Connor’s multi-stage process comprising washing solution in the pH range of 4-5 (acidic condition) then to the alkali extraction in Edwards’ process as motivated by Edwards’ teaching successive extraction combinations in the alkaline and acid region (‘203, col. 3, ln. 3-5). With respect to claim 6 and 8, modified Edwards disclose the pH range of 4-5 (‘662, col. 3, ln. 5-16) which is in range with the cited range.
With respect to the permeable, when reading the preamble in the context of the entire claim, the recitation “…a legume protein isolate…having improved digestive comfort…”, 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 the limitation of “…having a reduced alpha-galactoside content…”, as modified Edwards uses like materials, decoated protein bearing seeds (plant parts/dehulled seeds (‘203, col. 2, ln. 50-55) in a like manner as discussed above as claimed; it would therefore be expected that modified Edwards’ fraction will have the same characteristics claimed, particularly having a reduced alpha-galactoside content, absent evidence to the contrary.
Regarding claim 9 and 10, modified Edwards discloses the process comprising the successive extraction combinations in the alkaline and acid region. With respect to claim 10, as Edwards uses like materials, decoated protein bearing seeds (plant parts/dehulled seed) in a like manner as claimed, it would therefore be expected have the pH range of 4 to 5 (‘662, col. 3, ln. 5-16) after the contracting (rinsing), absence a showing of unexpected results.
Regarding claim 11 and 13, modified Edwards discloses the alkaline in a pH range of 7 to 11 (‘203, col. 2, ln. 63-64), which overlaps the cited range of claim 11 and 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. 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 12, modified Edwards discloses the process comprising washing protein curd with water (liquid fraction) (‘203, col. 3, ln. 48-50).
Regarding claim 15, modified Edwards disclose the process comprising drying step to obtain the protein isolate (‘203, col. 3, ln. 50-53).
Response to Arguments
Applicant’s arguments with respect to claim(s) 5-13, 15 and 17 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 5-17 as being anticipated by Liu et al. (US 2005/0249865 A1) has been withdrawn in light of Applicant to recite new limitations in claim 5.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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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.
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/HONG T YOO/Primary Examiner, Art Unit 1792
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