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 .
Election/Restrictions
Species ii (claims 6-7) is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/12/2025.
Response to Amendment
The amendment filed on 4/21/2026 has been entered. Claim(s) 15 and 32 is/are currently amended. Claim(s) 1, 8-10, 14, 16-30 and 34 has/have been cancelled. Claims 2-7, 11-13 and 31-33 are depending on claim 15. Claim(s) 2-7, 11-13, 15 and 31-33 is/are pending with claim(s) 6-7 withdrawn from consideration. Claim(s) 2-5, 11-13, 15 and 31-33 is/are under examination in this office action.
Response to Arguments
The Declaration under 37 CFR 1.132 filed 4/21/2026 is insufficient to overcome the rejection of claims 2-5, 11-13, 15 and 31-33 based upon 35 USC § 102 as set forth in the last Office action because:
According to MPEP 717.01(a)(1), “Some factors to consider are the following:
(1) Where the authorship of the prior art disclosure includes the inventor or a joint inventor named in the application, an "unequivocal" statement from the inventor or a joint inventor that he/she (or some specific combination of named joint inventors) invented the subject matter of the disclosure, accompanied by a reasonable explanation of the presence of additional authors, may be acceptable in the absence of evidence to the contrary. See In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982).
(2) A mere statement from the inventor or a joint inventor, without any accompanying reasonable explanation, may not be sufficient where there is evidence to the contrary, such as a contrary statement from another named author that was filed in another application on behalf of another party. See Ex parte Kroger, 219 USPQ 370 (Bd. App. 1982) (affirming rejection notwithstanding declarations by the alleged actual inventors as to their inventorship in view of a non-applicant author submitting a letter declaring the non-applicant author’s inventorship).”
The declaration seems to be lacking the “unequivocal” statement accompanied by a reasonable explanation of the presence of additional authors (inventor Levin from the Garcia PG Pub). It includes a mere statement without any accompanying reasonable explanation why Aviad Levin is an author but did not contribute to the conception of the subject matter in the Garcia PG Pub (see points 5-6 in the declaration).
Additionally, there is a contrary statement from another named author in the file wrapper of application 17/436,475 (for the Garcia PG Pub). Application 17/436,475 includes an oath signed by Aviad Levin on August 17, 2021 (document is dated 10/15/2021 in DAV). The oath states that Levin believes they are the original inventor or an original inventor of a claimed invention in the application. Additionally, many of the concepts described in the portions of Garcia applied in the 102 rejection are also described in the claims of the PG Pub. The declaration lacks sufficient explanation regarding the presence of Levin particularly given the inventor’s oath in 17/436,475.
Therefore, the Declaration is not sufficient to invoke 102(b)(2)(A) exception.
Applicant's argument filed on 4/21/2026, with respect to 102 rejection has been fully considered but is not persuasive. Applicant’s argument is relied on the Declaration, and is addressed above.
Claim Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 2-5, 11-13, 15 and 31-33 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Garcia et al (US 20220169858 A1).
Regarding claims 15 and 2-5, Garcia teaches a method for preparing a soy protein hydrogel comprising adding the plant-based protein into a solvent system, wherein the solvent system comprises two or more miscible co-solvents as defined herein [0077]. The first co-solvent increases solubility of the plant based protein(s) and includes an organic acid [0078-0080]. The second co-solvent has decreased solubility of the plant based protein(s) and includes water [0081-0082]. The protein solution is heated such that the liquid solution is held above the sol-gel transition for the protein(s) [0087], and then reduced to a second temperature below the sol-gel transition temperature to facilitate formation of the hydrogel [0090].
The examiner submits that the above process reads on the claimed steps (a) and (b) in step (1).
Garcia teaches that by applying mechanical agitation, the protein gels return to liquid form, enabling unique manufacturing capabilities [0113]. The soy protein hydrogel prepared in Example 2 was re-suspended in a 50% v/v ethanol-aqueous solution and left under constant agitation [0213]. The mechanical agitation disrupts large colloidal protein aggregates into smaller ones, and the size of the protein aggregates can be significantly reduced to particle sizes below 100 nm [0100]. This reads on the claimed high-shear treatment step (c) in step (1), as evidenced by the applicant [P3L32-34, spec.].
Garcia further teaches that the solvent of the hydrogel can be exchanged [0119] or evaporated [0120]. This will reduce the level of at least one and likely both solvents, thus meeting claimed step (2).
Regarding claim 11, Garcia teaches adjusting the pH of the hydrogel from pH=2 to pH=10 with NaOH [0207, 0244, 0250]. NaOH meets the pH-modification material in the instant application as evidenced by the applicant [P19L27, spec.].
Regarding claim 12, Garcia teaches that the composition comprises plasticizer [0122].
Regarding claim 13, The recited viscosity is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claims 31-32, Garcia teaches a plant-based structured material which can be a food or pharmaceutical film or coating [0023, 0136].
Regarding claim 33, Garcia teaches that the plant based materials have a protein secondary structure with at least 40% intermolecular β-sheet [0104].
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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