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 .
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.
Claims 18, 19, 22-30 and 33 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Stiles USPGPub 20220079187.
Regarding claims 18, 19 and 26, Stiles teaches a method of mixing buckwheat plant milk treated with a protein deamidase with a heated liquid beverage (coffee). [0011,0014,0041]
Regarding claim 22, Stiles teaches plant milk having a protein concentration of 0.5-10 wt%. [0063]
Regarding claims 23 and 33, Stiles teaches that the dispersibility of the plant milk in the hot coffee beverage is improved by the treatment with deamidase. [0010]
Regarding claims 24, 25 and 30, the pH of heated liquid food or beverage of Stiles is approximately 5.15. [0175]
Regarding claim 27, the method of Stiles does not contain and emulsifier or thickening polysaccharide. (Ex. 2)
Regarding claims 28 and 29, the protein deamidase of Stiles is derived from Chryseobacterium proteolyticum. [0049-0050]
Regarding claim 32, Stiles teaches an embodiment where heating is used to sterilize the non-dairy analog followed by cooling in a controlled chilling system which is interpreted to read on a refrigerator. [0115]
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 31 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Stiles USPGPub 20220079187 as applied to claims 18 and 23 above.
Regarding claim 31, Stiles is silent regarding the temperature of the heated liquid food or beverage being 80°C or higher. The examples of Stiles disclose heating coffee to 65-70°C prior to mixing it with the non-dairy milk. Stiles also discloses that emulsification of the non-dairy milk is aided by heating to temperatures greater than 80°C. [0113] It would have been obvious to one of ordinary skill in the art at the time the application was filed to have employed heating temperatures of the beverage of Stiles greater than 80°C in order to aid in mixing of the non-dairy milk and the beverage. Therefore, the limitations of claim 31 merely reflect and obvious variant of the prior art.
Regarding claim 34, Stiles teaches using 0.1-1.0 wt% of glutaminase at 35-60°C for at least one hour. [0101] The temperature and time disclosed by Stiles overlap the ranges of temperature and time recited in claim 34. 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)
While Stiles is silent regarding adding the protein deamidase in units of U/g, Stiles uses the same glutaminase (Amano 500 [0173]) as disclosed by applicant for the same purpose of treating plant protein milk to improve its dispersibility in hot beverages. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have optimized the concentration of the enzyme used to deamidate the protein of Stiles in order to achieve the most beneficial properties of dispersibility. As such, the concentration of protein deamidase recited in claim 34 is merely an obvious variant of the prior art
Response to Arguments
Applicant's arguments filed 11 May 2026 have been fully considered but they are not persuasive.
Applicant asserts on pages 6-8 of the remarks one of ordinary skill would have no basis to select buckwheat from Stiles, despite Stiles explicitly disclosed buckwheat as a non-dairy plant milk suitable for the invention. A prior art reference which discloses the claimed species reads on a claim no matter how many other species of a genus are named. (MPEP 2131.02, Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) Therefore applicant’s assertion is not found persuasive.
Applicant asserts on page 8 of the remarks that the results obtained with buckwheat were unexpected, however, arguments directed to secondary considerations are not germane to the instantly pending anticipation rejection.
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 Michele L Jacobson whose telephone number is (571)272-8905. The examiner can normally be reached Monday through Friday from 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michele L Jacobson/Primary Examiner, Art Unit 1793
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