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 status
The examiner acknowledged the amendment made to the claims on 07/15/2026.
Claims 7 and 11 are pending in the application. Claims 1-6 and 8-9 are previously cancelled. Claim 7 is currently amended. Claim 10 is currently cancelled. Claim 11 is newly presented. Claims 7 and 11 are hereby examined on the merits.
Examiner Note
Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.
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.
Claims 7 and 11 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.
Claim 7 recites that the chickpea milk with improved flavor has a shorter duration of the initial taste. The examiner does not find any support for such a limitation in the disclosure as originally filed. Nowhere in the instant disclosure discusses the duration of the initial taste. Claim 11 depends from claim 7 and therefore necessarily incorporates the written description deficiency therein.
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 7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Fujioka CA 3130907 A1 (hereinafter referred to as Fujioka) in view of Gugger US Patent Application Publication No. 2016/0309732 A1 (cited in the IDS submitted 03/16/2023, hereinafter referred to as Gugger).
Regarding claims 7 and 11, Fujioka teaches a method comprising treating a plant milk such as chickpea milk with a protein glutaminase that is derived from Chryseobacterium proteolyticum to improve the dispersibility of the chickpea milk such that when the treated chickpea milk is added to a high temperature liquid beverage, it will not cause aggregation (0010; 0012-0013). Further, Fujioka teaches that the amount of enzyme added to the plant milk is in a range of 0.01- 500 U/g protein (0022). In the 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).
Fujioka is silent regarding that the chickpea milk is obtained by treating a chickpea slurry with an alpha-amylase.
Gugger in the same field of endeavor teaches that chickpea belongs to legumes that have comparatively high starch, and further teaches a method of reducing the amount of the starch in a chickpea slurry by treating the chickpea milk with an alpha-amylase (Abstract; 0006-0008; 0017-0018; Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Fujioka by including the step of treating the chickpea slurry with an alpha-amylase so as to reduce the starch content of the chickpea milk.
Fujioka in view of Gugger is silent regarding the dosage of the alpha-amylase in term of the unit of the enzyme per 100 gram of the soluble in the chickpea slurry, however, Gugger teaches that the purpose of treating the chickpea slurry with alpha-amylase is to reduce the amount of starch in the chickpea slurry. Further, dosage of an enzyme in an enzymatic reaction is the general condition known by one of ordinary skill in the art to affect the amount of the substrate that is cleaved, and the enzymatic reaction time. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have optimized the dosage of the enzyme through routine experimentation so as to effectively reduce the content of the starch in the chickpea slurry in given time. Therefore, the dosage of the enzyme recited in the claim is merely obvious variants of the prior art. Generally, differences in concentration or temperature will not support the patentability of the subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 “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”. (See MPEP 2144.05 II).
The language about “improving flavor of the chicken milk ” and “chickpea milk with improved flavor” as recited in the preamble and body of claim 7 recite the purpose of the claim, and the recited purpose does not result in a manipulative difference between the claim and prior art because the actual steps recited in Fujioka in view of Gugger and the instant claim are the same (e.g., treating a chickpea slurry with alpha-amylase followed by treating with a protein glutaminase) thus will necessarily provide the purpose of improving the flavor of the chickpea milk. Note that claim 7 does not quantify the degree of flavor improvement.
Further, where Fujioka as modified with Gugger arrives at the method as claimed, it logically follow that prior art method will result in a chickpea milk with improved flavor, e.g., enhanced richness of initial taste and a shorter duration of the initial taste. Note that claim 7 does not quantify the degree that the richness of initial taste is increased or how much the duration of the initial taste is decreased. See MPEP 2112.01 I, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Claims 7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Wang CN107751390 A (cited in the IDS submitted 03/16/2023, hereinafter referred to as Wang) in view of Fujioka CA 3130907 A1 (hereinafter referred to as Fujioka).
Regarding claims 7 and 10, Wang teaches a method of making a chickpea milk comprising the step of obtaining a chickpea slurry followed by treating the chickpea slurry with alpha-amylase to obtain the chickpea milk (0017-0022). Wang teaches that the alpha-amylase is for hydrolyzing most the starch in chickpea (0020).
Wang is silent regarding the dosage of the alpha-amylase in term of the unit of the enzyme per 100 gram of the soluble in the chickpea slurry, however, Wang teaches that the purpose of treating the chickpea slurry with alpha-amylase is to hydrolyze most the starch in chickpea, and that a concentration of 0.4% alpha-amylase is added to the chickpea slurry (0020). Further, dosage of an enzyme in an enzymatic reaction is the general condition known by one of ordinary skill in the art to affect the amount of the substrate that is cleaved, and the enzymatic reaction time. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have optimized the dosage of the enzyme through routine experimentation so as to effectively hydrolyze the starch in the chickpea slurry in given time. Therefore, the dosage of the enzyme recited in the claim is merely obvious variants of the prior art. Generally, differences in concentration or temperature will not support the patentability of the subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 “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”. (See MPEP 2144.05 II).
Wang is silent regarding treating the chickpea milk with a protein glutaminase or the dose thereof.
In the same field of endeavor, Fujioka teaches a method comprising treating a plant milk such as chickpea milk with a protein glutaminase that is derived from Chryseobacterium proteolyticum to improve the dispersibility of the chickpea milk such that when the treated chickpea milk is added to a high temperature liquid beverage, it will not cause aggregation (0010; 0012-0013). Fujioka teaches that the amount of protein glutaminase added is in a range of 0.01- 500 U/g protein (0022).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Wang by treating the chickpea milk of Wang with a protein glutaminase and including the dose of enzyme as disclosed by Fujioka. Doing so would have delivered the benefit of improving the dispersabilty of the chickpea milk such that when the chickpea milk is added to a high temperature liquid beverage, it will not aggregate.
The dose of the enzyme as disclosed by prior art reasonably encompasses the amount of enzyme as recited in claim. In the 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).
The language about “improving flavor of the chicken milk ” and “chickpea milk with improved flavor” as recited in the preamble and body of claim 7 recite the purpose of the claim, and the recited purpose does not result in a manipulative difference between the claim and prior art because the actual step recited in Wang as modified by Fujioka and the instant claim are the same (e.g., treating a chickpea slurry with alpha-amylase followed by treating with a protein glutaminase) thus will necessarily provide the purpose of improving the flavor of the chickpea milk. Note that claim 7 does not quantify the degree of flavor improvement.
Further, where prior art arrives at the method as claimed, it logically follow that prior art method will result in a chickpea with improved flavor, e.g., enhanced richness of initial taste and a shorter duration of the initial taste. Note that claim 7 does not quantify the degree that the richness of initial taste is increased or how much the duration of the initial taste is decreased. See MPEP 2112.01 I, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Response to Arguments
Applicant's arguments filed 07/15/2026 have been fully considered but they are not persuasive.
Applicant argues on page 4 of the Remarks that “A beverage having a rich initial taste inherently has a long-lasting taste, and therefore its aftertaste tends to be sustained…..Surprisingly, the presently claimed methods ….. makes the initial taste richer while, at the same time, making the initial taste disappear more quickly (i.e., having a shorter duration)…… the combination of treatment with a specific amount of a- amylase and treatment with a specific amount of protein glutaminase achieves the unexpected effect, as demonstrated in Examples 4-6, of changing these mutually conflicting sensory characteristics (richness of initial taste and reducing the duration of the initial taste)”.
The arguments are considered but found unpersuasive because:
First, it is conclusive remarks for the applicant to assert that a beverage having a rich initial taste inherently has a long-lasting taste, since there is no support for such an assertion in the specification or outside evidence.
Second, it does not appear that the Examples have shown that the method as claimed has produced a chickpea milk that has the made the initial taste richer while, at the same time, making the initial taste disappear more quickly, rather, Table 2 merely shows that inventive samples (e.g., Examples 4-6) have enhanced initial taste and enhanced sharpness of aftertaste. There is no showing that the duration of the initial taste has decreased.
Third, the Examples 4-6 as applicant particular stressed are not commensurate in scope with the claims. For example, where Examples 4-6 are about 75.5 U protein glutaminase, the claim recites a range of 70-100 U. With just one enzyme unit in the showing, no trend can be ascertained. Similarly, an alpha amylase unit of 450 U as used in the showing (see 0042) can hardly enable a range of 400-500 U as recited in claim 7, much less that the claim is silent regarding alpha-amylase reaction time (0042 recites an alpha amylase treatment time of 20-30 min).
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 CHANGQING LI whose telephone number is (571)272-2334. The examiner can normally be reached 9:00-5:00.
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/CHANGQING LI/Primary Examiner, Art Unit 1791
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