DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 29 August 2025 is acknowledged.
Applicant has overcome the following by virtue of amendment of the claims: (1) the objections to the claims have been withdrawn; (2) the 112(b) rejection of claims 1-8 have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-13
Withdrawn claims: 9-13
Previously canceled claims: None
Newly canceled claims: None
Amended claims: 1-8
New claims: None
Claims currently under consideration: 1-8
Currently rejected claims: 1-8
Allowed claims: None
Claim Objections
Applicant is advised that should claim 1 be found allowable, claim 6 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 6 recites, “wherein the solid plant protein concentrate has a higher protein content than the plant protein composition”. Claim 6 is a substantial duplicate of claim 1, which recites, “wherein the plant protein concentrate is more palatable and has a higher protein content than the plant protein from which it is derived”. The “plant protein from which it is derived” of claim 1 equates to the plant protein composition recited in claim 1. Claim 6 therefore covers the same thing as claim 1, despite a slight difference in wording.
Claim Rejections - 35 USC § 112
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.
Claims 1-8 are rejected under 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 applicant regards as the invention.
Claim 1 recites the limitation, “wherein the plant protein concentrate is more palatable and has a higher protein content than the plant protein from which it is derived”. The claim is indefinite because a plant protein concentrate cannot have a higher protein content than the plant protein from which it is derived. A protein is 100% protein. A protein concentrate cannot physically exceed 100%. For purposes of examination, the limitation is construed to be, “wherein the plant protein concentrate is more palatable and has a higher protein content than the plant protein composition”.
Claim 4 recites the limitation, “wherein the concentration is carried out by ultrafiltration”. Simple sugars are understood to be mono- and di-saccharides. Since simple sugars pass through ultrafiltration membranes, it is unclear how one would arrive at a plant protein concentrate comprising water soluble and water insoluble proteins, simple sugars, and fungal biomass when performing the concentration by ultrafiltration. For purposes of examination, claim 4 is interpreted as an alternative concentration step by ultrafiltration, wherein simple sugars are removed.
Claims 2-8 are rejected due to their dependency from claim 1.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-3 and 6 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Confortin et al. (Confortin, F. G., Marchetto, R., Bettin, F., Camassola, M., Salvador, M. and Dillon, A. J. P. (2008). Production of Pleruotus sajor-caju strain PS-2001 biomass in submerged culture. J Ind Microbiol Biotechnol, 35, 1149-1155. https://doi.org/10.1007/s10295-008-0394-x) in view of Kim et al. (Kim, Y. R., Yettella, R. R., Kim, Y. S., et al. (2011). Meaty flavour compounds formation from the submerged liquid culture of Pleurotus ostreatus. Int J Food Sci Tech, 46, 2538-2543. https://doi.org/10.1111/j.1365-2621.2011.02778.x), and as evidenced by Tao et al. (Tao, A., Zhang, H., Duan, J., et al. (2022). Mechanism and application of fermentation to remove beany flavor from plant-based meat analogues: A mini review. Front Microbiol, 13, 1-11. https://doi.org/10.3389/fmicb.2022.1070773).
Regarding claims 1 and 6, Confortin teaches a method to produce a solid plant protein concentrate (Pleurotus sajor-caju mycelium, 32.1% protein (p. 1154, Table 4)), comprising the steps of:
mixing a plant-protein composition in water in the absence of yeast extract, wherein the plant protein composition is isolated from soybeans – The culture medium was formulated with glucose, soy oil, and mineral solution, and concentrations of soy protein, yeast extract, and ammonium sulfate were optimized (p. 1150, col. 1, ¶ 3). The culture medium is water-based and comprises soy protein. MPEP § 2144.04(IV)(C) states, “[S]election of any order of performing process steps is prima facie obvious in the absence of new or unexpected results” and “Selection of any order of mixing ingredients is prima facie obvious”. Therefore, it would have been obvious to add the soy protein to water and then add the yeast extract, thereby mixing a plant protein-composition in water in the absence of yeast extract as claimed.
inoculating the mixture with a fungal culture – The inoculum consisted of 5% (v/v) of working volume of the bioreactor of Fungal strain Pleurotus sajor-caju PS-2001 (p. 1150, col. 1, ¶ 2);
culturing the inoculated mixture for a sufficient time and concentrating the mixture to produce a plant protein concentrate comprising water soluble and water insoluble proteins, simple sugars, and fungal biomass – Mycelial biomass reached a maximum after culturing the inoculated mixture for 112 h (p. 1153, col. 1, ¶ 2 and Figure 2A). The mycelial biomass contained 32.1% protein (p. 1154, col. 1, Table 4). It is noted that any amount of time wherein biomass is produced is considered to be “a sufficient time” as claimed.
The biomass is filtered, washed, and dried (p. 1150, col. 2, ¶ 3), thereby concentrating the biomass. After filtering, and before washing, the concentrated mixture would comprise fungal biomass and residual water soluble and water insoluble proteins, and simple sugars. Such a credible intermediate reads on the concentrated mixture as claimed.
wherein the plant protein concentrate is more palatable and has a higher protein content than the plant protein from which it is derived – As evidenced by Tao, soy protein is known to have an unpleasant “beany” flavor (p. 2, col. 1, ¶ 3) that can be removed by fermentation with microorganisms (p. 2, col. 2, ¶ 2). Confortin discloses that mushrooms are considered to have a pleasant flavor (p. 1149, col. 2, “Introduction” ¶ 1). Therefore, it stands to reason that conversion of the soy protein to mushroom mycelium would reduce the “beany” flavor, and result in a pleasant flavor, thereby increasing palatability.
Regardless, the clause, “wherein the plant protein concentrate is more palatable […] than the plant protein from which it is derived” does not further limit the claim. MPEP § 2112(I) states, “‘[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.’ Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In the instant case, the clause is merely directed at recognizing that the plant protein concentrate is more palatable than the plant protein from which it is derived. Where the prior art teaches the claimed method, the resulting product necessarily has the same features, including increased palatability.
Confortin also teaches that the plant protein concentrate has a higher protein content than the plant protein composition:
The plant protein composition may be considered to be the culture medium comprising the plant protein. Therefore, in T8 (p. 1152, Table 3), the plant protein composition of Confortin comprises 10 g/L glucose, 1 mL/L soy oil, 4.31 g/L minerals (p. 1150, col. 1, ¶¶ 2-3), 2.3 g/L soy protein, 1.86 g/L yeast extract, and 1.58 g/L of ammonium sulfate (p. 1152, Table 3, “T8”), totaling about 21 g of solids in the culture medium. Of these solids, at most 4.16 g is protein (generously considering soy protein and yeast extract as 100% protein). This amounts to at most 19.8% protein in the culture medium. Confortin teaches that the protein content of the mycelium (high-protein food product) is 32.1%. Therefore, Confortin teaches that the high-protein food product has a higher protein content than the plant protein composition.
Confortin does not discuss that the fungal culture comprises Pleurotus ostreatus.
However, Kim teaches a production of meaty flavor compounds in a submerged liquid culture of Pleurotus ostreatus mycelium in a base medium comprising defatted soybean powder (Abstract).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the Pleurotus ostreatus of Kim for the Pleurotus sajor-caju of Confortin by simple substitution of one known element for another to obtain predictable results, see MPEP § 2143(I)(B). Since Confortin discloses submerged culturing of one Pleurotus species in a soy protein containing medium and Kim discloses submerged culturing of another Pleurotus species in a soy protein containing medium, one of ordinary skill in the art would have expected similar results in terms of mycelial growth and protein content from the two related species.
Therefore, claims 1 and 6 are rendered obvious.
Regarding claim 2, Confortin and Kim teach the method of claim 1.
Confortin also teaches that the concentrating is selected from the group consisting of drying, filtering, and combinations thereof – Confortin teaches that the biomass is filtered, washed, and dried (p. 1150, col. 2, ¶ 3), thereby concentrating the biomass at least by filtration.
Claim 2 is therefore rendered obvious.
Regarding claim 3, Confortin and Kim teach the method of claim 2.
Confortin also teaches that the concentration is carried out by drying – Confortin teaches that the biomass is filtered, washed, and dried (p. 1150, col. 2, ¶ 3). MPEP § 2144.04(IV)(C) states, “[S]election of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”. Therefore, it would have been obvious to filter and dry the composition of Confortin.
Claim 4 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Confortin et al. in view of Kim et al. as applied to claim 2 above, and further in view of Kiso et al. (Kiso, T., Fujita, K.I., Ping, X., Tanaka, T., & Taniguchi, M. (2004). Screening for Microtubule-Disrupting Antifungal Agents by Using a Mitotic-Arrest Mutant of Aspergillus nidulans and Novel Action of Phenylalanine Derivatives Accompanying Tubulin Loss. Antimicrob Agents Chemother, 48(5), 1739-1748. http://doi.org/ 10.1128/AAC.48.5.1739-1748.200).
Regarding claim 4, Confortin and Kim teach the method of claim 2.
Confortin does not discuss an alternative concentration step by ultrafiltration, wherein simple sugars are removed.
However, Kiso teaches capture of undisrupted mycelia and large mycelial fragments by ultrafiltration (p. 1740, col 2, ¶ 3). Therefore, ultrafiltration is a suitable, known technique for performing the operation of filtering described in Confortin.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the ultrafiltration of Kiso for the filtration of Confortin by simple substitution of one known element for another to obtain predictable results, see MPEP § 2143(I)(B). Since Confortin discloses separating/concentrating the biomass from the culture medium by filtration (p. 1150, col. 2, ¶ 3) and Kiso discloses capture of undisrupted mycelia and large mycelial fragments by ultrafiltration (p. 1740, col 2, ¶ 3), one of ordinary skill in the art would have expected similar results in terms of obtaining a concentrated biomass.
Claim 4 is therefore rendered obvious.
Claim 5 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Confortin et al. in view of Kim et al. as applied to claim 3 above, and further in view of Kuo et al. (Kuo, M.C., Weng, C.Y., Ha, C.L., & Wu, M.J. (2006). Ganoderma lucidium mycelia enhance innate immunity by activating NF-κB. J Ethnopharmacol, 103(2), 217-222. https://doi.org/10.1016/j.jep.2005.08.010).
Regarding claim 5, Confortin and Kim teach the method of claim 3.
The cited prior art does not discuss that drying is spray drying.
However, Kuo teaches that mycelia produced by submerged cultivation is spray dried (p. 218, col. 1, ¶ 5). Therefore, spray drying is a suitable, known technique for performing the operation of drying described in Confortin.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, substitute the spray drying taught by Kuo for the drying of Confortin by simple substitution of one known element for another to obtain predictable results, see MPEP § 2143(I)(B). Since Confortin discloses drying the filtered biomass produced by submerged cultivation (p. 1150, col. 2, ¶ 3), and Kuo discloses spray dried mycelia from submerged cultivation (p. 218, col. 1, ¶ 5), one of ordinary skill in the art would have expected similar results in terms of obtaining a concentrated, dried biomass.
Claim 5 is therefore rendered obvious.
Claim 7 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Confortin et al. in view of Kim et al. as applied to claim 1 above, and as evidenced by Panoff et al. (Panoff, L. & Goodson, A. (2025, November 26). What Is Soy Protein? All You Need to Know. Healthline.com. Retrieved December 10, 2025 from https://www.healthline.com/nutrition/soy-protein-good-or-bad#types-of-soy).
Regarding claim 7, Confortin and Kim teach the method of claim 1.
The cited prior art does not specifically teach that the water mixture comprises the plant-protein composition at 10% solid loading (w/w) and at least 6.5% protein (w/w) and wherein the plant protein composition has a protein content of at least 65% on a dry matter basis.
However, Confortin does teach plant protein in the form of soy protein at 2.3 g/L (i.e., 0.23 %) (p. 1152, Table 3, “T8”), and that increasing the amount of protein (soy protein and yeast extract, another source of protein) in the culture increases the amount of biomass in the culture (p. 1152, col. 1, ¶ 2; p. 1152, col. 2, Fig. 1, “T8”); Confortin states, “It was observed that when increasing soy protein and yeast extract in the culture medium there were small increase in the average biomass production values. Thus, if there were a further nutrient increase in the culture medium, it would be possible to obtain higher mycelial concentrations.” (p. 1152, col. 1, ¶ 2). As such, Confortin discloses at least 0.23% solids loading. As a culture medium ingredient, soy protein as disclosed by Confortin is considered to be highly pure soy protein, such as soy protein isolate. As evidenced by Panoff, “soy protein isolate typically contains around 90% protein” (p. 2, final ¶). Therefore, Confortin discloses a protein content of around 90%. The disclosed range of at least 0.23% overlaps with the claimed range of at least 10%. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Additionally, Confortin teaches that the amount of protein is a known result-effective variable. That is, as the amount of protein in the medium is increased, the mycelial biomass increases. Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to determine the optimal value for the amount of protein solids to add to the plant protein and water composition used in the process of Confortin in view of Kim, through routine experimentation, to produce a culture medium capable of producing a high mycelial concentration, including a 10% solids loading (w/w) and at least 6.5% protein, as claimed.
Claim 7 is therefore rendered obvious.
Claim 8 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Confortin et al. in view of Kim et al. as applied to claim 7 above, and further in view of Papaspyridi et al. (Papaspyridi, L.M., Katapodis, P., Gonou-Zagou, Z., et al. (2010). Optimization of biomass production with enhanced glucan and dietary fibers content by Pleurotus ostreatus ATHUM 4438 under submerged culture. Biochem Eng J, 50(3), 131-138. https://doi.org/10.1016/j.bej.2010.04.008).
Regarding claim 8, Confortin and Kim teach the method of claim 7.
The cited prior art does not specifically teach that that the solid plant protein comprises soybean meal.
However, Papaspyridi teaches that soybean meal is comparable to yeast extract as a nitrogen source in producing Pleurotus ostreatus mycelium in short term cultivation, but outperforms yeast extract over the course of 16 days (p. 135, Fig. 3).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the soybean meal of Papaspyridi for the yeast extract of Confortin. One of ordinary skill in the art would have been motivated to do so in order to increase the amount of mycelium produced. One of ordinary skill in the art would have had a reasonable expectation of success in doing so because Papaspyridi demonstrates that soybean meal outperforms yeast extract as a nitrogen source in producing Pleurotus ostreatus mycelium (p. 135, Fig. 3).
Therefore, claims 8 is rendered obvious.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11,147,292.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 of the ‘292 patent teaches a method to produce a high-protein product from distiller’s grain (i.e., cereal grain). As the distiller’s grains have been extracted of sugars in the distilling process, it is considered that the plant protein has been effectively isolated as compared to an intact cereal grain. The dried distiller’s grains are made to produce a mash, which requires water, and the mash is inoculated with a microbe selected from a group that includes Pleurotus ostreatus. The microbe converts plant materials into biomass, which requires sufficient time, with a higher protein content than the starting plant material.
The clause, “wherein the high-protein food product is more palatable than the plant protein from which it is derived” in the instant claim 1 does not further limit the claim. MPEP 2112 I. states, ““[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In the instant case, the wherein clause is merely directed at recognizing that the high protein food product is more palatable than the plant protein from which it is derived.
Therefore, claim 1 is rendered obvious.
Response to Arguments
Claim Objections:
Applicant has overcome the objections to the claims by amendment. Accordingly, the objections have been withdrawn.
Claim Rejections – 35 U.S.C. § 112:
Applicant has overcome the 35 U.S.C. § 112(b) rejections of claims 1-8 based on amendment to the claims. Accordingly, the 35 U.S.C. § 112(b) rejections have been withdrawn. Upon further consideration, the 35 U.S.C. § 112(b) rejection of claim 7 has been withdrawn.
Claim Rejections – 35 U.S.C. § 103: Applicant’s amendments have necessitated the new grounds of rejection of claims 1-8 as described hereinabove. Applicant’s arguments filed on 29 August 2025 with respect to the amended claims have been fully considered, but they are not persuasive.
Applicant first argued that because Confortin discloses washing the solids with distilled water, the resulting protein would not contain water-soluble protein and free sugars (p. 2, ¶¶ 4-5).
Applicant’s argument has been considered, but it is not persuasive. Confortin states that the biomass is filtered, washed, and dried (p. 1150, col. 2, ¶ 3), thereby concentrating the biomass. After filtering, and before washing, the concentrated mixture would comprise fungal biomass and residual water soluble and water insoluble proteins, and simple sugars. Such a credible intermediate reads on the concentrated mixture as claimed.
Applicant next argued that Tao teaches that beany flavor is reduced by lactic acid bacteria and yeast, which P. ostreatus is neither, and Kim teaches that a meaty flavor was only achieved with cysteine, ribose, and heat treatment, none of which are required for the claimed invention, and that since the protein concentrate of Confortin would lack water-soluble proteins, whether the secondary references teach or do not teach a reduction in beany flavor or produce a meaty flavor is immaterial (p. 2, ¶ 6 - p. 3, ¶ 4).
Applicant’s argument has been considered, but it is not persuasive. First, as discussed above, the filtered intermediate disclosed by Confortin reads on the concentrated mixture as claimed. Regarding the palatability, Tao is an evidentiary reference to demonstrate that soy protein is known to have a “beany” flavor, not to suggest adding lactic acid bacteria or yeast to the method of Confortin. Confortin itself discloses that mushrooms are considered to have a pleasant flavor (p. 1149, col. 2, “Introduction” ¶ 1). Therefore, it stands to reason that conversion of the soy protein to mushroom mycelium would reduce the “beany” flavor, and result in a pleasant flavor, thereby increasing palatability.
Additionally, the clause, “wherein the plant protein concentrate is more palatable […] than the plant protein from which it is derived” does not further limit the claim. MPEP § 2112(I) states, “‘[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.’ Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In the instant case, the clause is merely directed at recognizing that the plant protein concentrate is more palatable than the plant protein from which it is derived. Where the prior art teaches the claimed method, the resulting product necessarily has the same features, including increased palatability. Therefore, any argument regarding Tao and Kim with respect to the palatability is moot.
Regarding claim 7, Applicant argued that Confortin teaches away from increasing the soy protein (p. 4, ¶¶ 2-4).
Applicant’s argument has been considered, but it is not persuasive. While Confortin states, “However, this would compromise the economic feasibility of the medium, since the cost of soy protein and yeast extract can be significant, when in higher concentrations in the broth” (p. 1152, col. 1, ¶ 2). This does not constitute teaching away from adding more protein to the broth. MPEP §2123(II) states, “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). While increasing the amount of protein in the medium may be more costly (i.e., somewhat inferior), Confortin still discloses adding more protein results in increased mycelium yield.
Applicant’s arguments regarding the further teachings of Kim as evidenced by Makendi as applied to claim 7 (p. 4, ¶ 5 – p. 5, ¶ 2) are moot because the rejection no longer relies on these teachings.
Applicant’s argument regarding claim 8 (p. 5, ¶ 3 – p.6, ¶ 1) have been considered, but they are moot because the rejection of amended claim 8 does not rely on Petrenko.
Claims 1-8 are rejected under pre-AIA 35 U.S.C. 103(a) as presented hereinabove.
Double Patenting:
Applicant makes no substantive arguments concerning the double patenting rejections (p. 6, ¶¶ 2-3). Applicant’s request to hold in abeyance the outstanding nonstatutory double patenting rejection of the pending claims is granted.
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.
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/JAMES P. SHELLHAMMER/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793