DETAILED ACTION
Amendments made April 21, 2026 have been entered.
Claims 1-2 and 10 are pending.
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 .
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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 21, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
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, 2, and 10 are rejected under 35 U.S.C. 112(b) or 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 inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the term “effective amount”. It is unclear as to what the amount must be effective for, and as to how much of a result would be required in order for “effectiveness” to be achieved. Thus, the metes and bounds of the claimed term are unclear.
Claim 2 recites the limitation "the plant protein-containing liquid composition" in claim 1. There is insufficient antecedent basis for this limitation in the claim. It is unclear as to if the term refers to the plant milk, or some other plant protein composition.
Claim 10 recites the protease value based on the “g-protein”. It is unclear as to if the protein being used for the calculation is the total protein including a plant or non-plant protein that may be present, the plant protein alone, or some other fraction of protein.
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.
The rejection of claims 1 and 2 under 35 U.S.C. 103 as being unpatentable over Schafer et al (US 2008/0241320) in view of Blinkovskey et al (WO 98/51163) has been withdrawn in light of applicant’s amendments made April 21, 2026 which limit the plant material to oat milk, pea milk, chickpea milk, or almond milk.
Note: One of ordinary skill in the art would understand “plant milk” broadly as disclosed to be any fluid composition containing a plant element. See for example, the instant specification discloses “milk” obtained by adding flour to water (see page 33, Test Example 1, as well as the additional examples disclosed). The term is not limited to specific processing and/or a specific composition.
Claims 1 and 10 are rejected 35 U.S.C. 103 as being unpatentable over Ohike (WO 2020/208734) in view of Blinkovskey et al (WO 98/51163).
Ohike teaches a method of producing a plant protein product including a plant milk, with excellent taste which is maintained during treatment, comprising: treating the plant material with a proteolytic enzyme, i.e. protease, derived from Aspergillus, wherein the plant material is selected from peas and/or chickpeas, and the composition may also include almond milk (abstract and paragraphs 1-2, 6, 8, 11, 13, 50, 54, 57, 58, and 60). As discussed above, the term “effective amount” is unclear. Regardless, as Ohike teaches that the protease provides a desired result, the method of the prior art would necessarily use “an effective amount” as claimed.
Ohike is not specific to the protease as derived from Aspergillus oryzae and the method as comprising treatment with an effective amount of protein deamidase, wherein the pea milk, chickpea milk, and almond milk do not undergo a change in taste compared to the plant milk treated solely with protein deamidase as recited in claim 1, and wherein the protease is used in an amount of 0.005-70U/g- protein as recited in claim 10.
Blinkovskey et al (Blinkovskey) teaches treatment of protein, including plant proteins, such as oat and pea, with at least two enzymes to produce desirable organoleptic qualities and improved functionality including improved solubility (abstract, page 2 lines 31-32, page 5 lines 9-10 and 14-16, page 17 lines 13-17, page 18 lines 27-30, and page 19 lines 16-18, and claim 23). Blinkovskey teaches that one of the enzymes for treatment is protease used in an effective amount which is preferably in the range of about 0.1-100,000 units per 100 grams of protein (0.001-1,000U/g protein) (page 4 lines 6-8 and page 5 lines 20-30). Blinkovskey teaches the protease is preferably derived from Aspergillus oryzae (page 14 lines 25-26 and page 16 line 2-3, Example 17, and claims 6 and 20). Blinkovskey teaches the protein is also enriched by treating with an effective amount of a protein deamidase, including transglutaminase, to provide an enrichment of free glutamic acid and excellent flavor, improved functionality, and/or improved solubility (page 17 lines 9-23, page 18 lines 10-11, and Example 19).
Regarding the protease as derived from Aspergillus oryzae as recited in claim 1 and used in an amount of 0.005-70U/g- protein as recited in claim 10, it would have been obvious for the protease derived from Aspergillus as taught by Ohike to be derived from Aspergillus oryzae and used in an amount of 0.001-1,000U/g protein as Blinkovskey teaches it was a known and preferred fungi for deriving protease and an effective amount for the treatment of plant proteins including pea and/or because of the benefits taught by Blinkovskey.
Regarding the method as comprising treatment with an effective amount of protein deamidase as recited in claim 1, as discussed above the term “effective” is unclear. Regardless, it would have been obvious for the protein milk of Ohike to be treated with an effective amount of protein deamidase to further enrich the product and to provide enriched free glutamic acid and excellent flavor, improved functionality, and/or improved solubility in view of Blinkovskey.
Regarding the pea milk, chickpea milk, and almond milk as not undergoing a change in taste compared to the plant milk treated solely with protein deamidase as recited in claim 1, as discussed above, the prior art makes obvious a method of producing a plant milk comprising treating a plant milk with protease and protein deamidase, wherein it would have been obvious for the protease to be derived from Aspergillus oryzae. Thus, as the prior art teaches of the same claimed and disclosed method steps, including treatment of a liquid containing pea protein with a protease derived from a Aspergillus oryzae, the same result of suppressing a change in taste would be achieved. As the instant specification, discloses a change in taste is suppressed when a protease derived from filamentous fungi is used and/or when the protein is derived from pea (paragraphs 14, 15, 42, and 105), and the prior art teaches treatment of pea with a protease derived from filamentous fungi, a suppression in taste would be expected through the process of the prior art. Applicant has chosen to use an equation with parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. "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, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facie case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art result is different. Furthermore, as Ohike teaches of maintaining the natural flavor, i.e. taste, during treatment (paragraph 60) and Blinkovskey also teaches that the method provides for excellent flavor (page 17 lines 13), the position of the office is further supported.
Claim 2 is rejected 35 U.S.C. 103 as being unpatentable over Ohike (WO 2020/208734) in view of Blinkovskey et al (WO 98/51163), further in view of Kikuchi et al (US 3,796,633).
As discussed above, Ohike teaches a method of producing a plant milk, with excellent taste which is maintained during treatment, comprising: treating the plant material with protease, wherein it would have been further obvious for the plant material to be treated with an effective amount of protein deamidase to provide enriched free glutamic acid and excellent flavor, improved functionality, and/or improved solubility in view of Blinkovskey.
Ohike is not explicit to the plant protein containing liquid as treated with the protease and then treated with the protein deamidase as recited in claim 2.
Kikuchi et al (Kikuchi) teaches treatment of protein containing material for beverages and foods may markedly enhance palatability (abstract). Kikuchi teaches that the content of glutamic acid is important for palatability (column 2 lines 42-42), and that protein is first decomposed with enzymes such as protease to liberate glutamine and then the liberated glutamine is allowed to react with glutaminase to deamidate and yield the desired glutamic acid (column 1 lines 43-50).
It would have been obvious for the process as taught by Ohike in view of Blinkovskey which improved taste and increased glutamic acid to specifically comprise treatment with protease and then deamidase in order to first decompose with enzymes such as protease to liberate glutamine and then the allow the glutamine to react with glutaminase to deamidate and yield the desired glutamic acid in order to enhance palatability in view of Kikuchi. Furthermore, it is noted that as Blinkovskey also teaches that the proteinaceous material for treatment [with deamidase] can be pre-hydrolyzed (page 5 lines 5-8) and that protease is conventionally employed for protein hydrolysis (page 14 lines 27-29) one of ordinary skill in the art would have a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed April 21, 2026 have been considered but are not persuasive.
Applicant’s argument regarding the claim amendments and the pervious rejections have been considered but are moot as the previous rejections were withdrawn in view of the amendments, and newly relied upon prior art is used for the rejection herein.
Applicant’s arguments of unexpected results have been considered but are not convincing. Applicant argues that the claims have been amended so that they are commensurate in scope with the claims. This argument is not convincing to overcome the prior art rejection. First it is noted that the claims recite the change in taste is compared to “a plant milk treated solely with protein deamidase” and the prior art also teaches and makes obvious a treatment as claimed including treatment with a protease derived from Aspergillus oryzae and protein deamidase. Second, the prior art supports the position of improved taste, and thus the argued results do not appear unexpected. Third, the evidence remains not commensurate in scope with the claims. The claims are not limited to a specific amount or type of Aspergillus oryzae derived protease, nor to an amount of protein in the milk, and the evidence shown in the disclosure is specific to “Protease A “Amonao” SD” in an amount of 3U/g protein for oat milks with a relative concentration of protein around 1 (Table 1), 0.00036-0.05U for rice milk with a relative concentration of protein around 1 and 0.0098-0.05U for almond milk with a relative protein concentration of around 1 (Table 4), 0.001-0.05U for chickpea milk with a relative protein concentration around 1 (Table 5), and 3.95-5U for pea milk with a relative protein concertation around 1 (Table 6), and there is no reasoning to support that the argued result would be present over the entire scope of the method claimed. Furthermore, it is additionally noted that the instant specification paragraph 36 states that “The protease used in the present invention is not particularly limited as long as it is an enzyme that hydrolyzes a peptide bond of a protein”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. EP 0480104 teaches deamidation of vegetable protein solutions with proteolytic enzymes for use in water, i.e. vegetable milks.
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KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792
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