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 .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed March 3, 2026 is acknowledged.
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
1, 7-12
Withdrawn claims:
None
Previously canceled claims:
3-6
Newly canceled claims:
2
Amended claims:
1, 7-10
New claims:
11, 12
Claims currently under consideration:
1, 7-12
Currently rejected claims:
1, 7-12
Allowed claims:
None
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Fujioka (CA 3130907).
Regarding claim 1, Fujioka teaches of a plant milk treated with deamidase ([0012]) where examples of plant milk include coconut milk ([0013]).
Although Fujioka does not teach the amount of protein deamidase added per 1 g of a soluble solid content of the coconut milk, Fujioka does teach that the conditions for treatment with protein deamidase are not limited as long as the treatment is effective, and that the optimum reaction conditions may be set by adjusting the amount of enzyme added ([0021]). Therefore, one of ordinary skill in the art would have adjusted the amount of protein deamidase added during routine optimization to determine the concentration that resulted in the optimum reaction conditions. MPEP §2144.05(II) states where 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). The claimed range would thus be obvious.
Regarding claims 7-10, Fujioka teaches of a plant milk treated with deamidase ([0012]) where examples of plant milk include coconut milk ([0013]).
The preamble recitation of “a flavor improving method”, as well as the limitations “to obtain a coconut milk with improved flavor” (claim 7), “enhanced sweetness” (claim 8), “enhanced milk feeling” (claim 9) and “enhanced coconut flavor” (claim 10), are directed towards the intended use of the claimed method based on a resulting property of the method. MPEP §2111.02(II) states if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). Furthermore, MPEP §2112.02(II) states “when the claim recites using an old composition or structure and the "use" is directed to a result or property of that composition or structure, then the claim is anticipated. In re May, 574 F.2d 1082, 1090, 197 USPQ 601, 607 (CCPA 1978)”. Therefore, because the instant claims are directed to a property of the coconut milk treated with protein deamidase, Fujioka discloses the claimed method.
Regarding claims 11 and 12, although Fujioka does not teach the amount of protein deamidase added per 1 g of a soluble solid content of the coconut milk, Fujioka does teach that the conditions for treatment with protein deamidase are not limited as long as the treatment is effective, and that the optimum reaction conditions may be set by adjusting the amount of enzyme added ([0021]). Therefore, one of ordinary skill in the art would have adjusted the amount of protein deamidase added during routine optimization to determine the concentration that resulted in the optimum reaction conditions. MPEP §2144.05(II) states where 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). The claimed ranges would thus be obvious.
Response to Arguments
Claim Rejections - 35 U.S.C. §112(b): Applicant has overcome the 35 U.S.C. § 112(b) rejections of claims 8-10 based on amendments to the claims and/or cancelation. Accordingly, the 35 U.S.C. § 112(b) rejections have been withdrawn.
Claim Rejections – 35 U.S.C. §102 of claims 1, 7-10 over Fujioka; 35 U.S.C. §103 of claim 2 over Fujioka: Applicant’s arguments filed March 3, 2026 have been fully considered but they are not persuasive.
Applicant argued Fujioka provides no basis to use such a high amount of protein deamidase, let alone specifically with coconut milk (Remarks, p. 4, ¶ 3, 5; p. 5, ¶ 1).
This argument has been considered. However, Fujioka teaches that the conditions for treatment with protein deamidase are not limited as long as the treatment is effective, and that the optimum reaction conditions may be set by adjusting the amount of enzyme added ([0021]). The Examiner maintains that one of ordinary skill in the art would have adjusted the amount of protein deamidase added during routine optimization to determine the amount of protein deamidase that was effective for use in coconut milk. MPEP §2144.05(II) states where 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). Although the examples of Fujioka disclose a maximum of 5 U per 1 g of protein, Fujioka states that treatment with protein deamidase are not limited as long as the treatment is effective, and that the optimum reaction conditions may be set by adjusting the amount of enzyme added ([0021]). Thus, one of ordinary would recognize that higher amounts of protein deamidase can be used to arrive at an effective treatment.
Applicant further argued that that the unique effect of the claimed method was unpredictable (Remarks, p. 4, ¶ 4, p. 5, ¶ 2).
This argument has been considered. However, MPEP §716.02(d) states that “Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)” and “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).”
The data provided in the experiments is not commensurate in scope with the claimed invention. Claim 1 presently recites “a protein deamidase”, whereas Experiments 1-5 are all performed using protein glutaminase, which is only a single type of protein deamidase. Furthermore, the enzyme dosing in not tested over the entirety of the claimed range. Thus, a showing of unexpected results has not been established.
The rejections of claims 1, 7-10 have been maintained herein.
Conclusion
THIS ACTION IS MADE FINAL. 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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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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