DETAILED ACTION
Amendments made September 4, 2025 have been entered.
Claims 1-2 and 5-9 remain 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.
Claim Rejections - 35 USC § 102 and 103
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
The rejection of claims 1, 5, and 8 under 35 U.S.C. 102(a)(1) as being anticipated by Schafer et al (US 2008/0241320) has been withdrawn in light of applicant’s amendments made September 4, 2025; specifically, Schafer does not teach the protease as derived from Aspergillus oryzae.
The rejection of claim 2 under 35 U.S.C. 103 as being unpatentable over Schafer et al (US 2008/0241320) has been withdrawn in light of applicant’s amendments made September 4, 2025; specifically, Schafer does not teach the protease as derived from Aspergillus oryzae.
The rejection of claims 1 and 5-8 under 35 U.S.C. 103 as being anticipated by, or alternatively as being unpatentable over Triantafyllou (WO 2014/123466 A1) has been withdrawn in light of applicant’s amendments made September 4, 2025; specifically, Triantafyllou does not teach the protease as derived from Aspergillus oryzae.
Claim 7 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wagner et al (WO 98/00029).
Wagner et al (Wagner) teaches treatment of dough with deamidase, optionally in admixture with other enzymes including protease which solubilize the proteins in the dough, such as those from soy, i.e. a plant protein (abstract, page 2 line 27 through page 3 line 1, and page 6 lines 27-28), and thus encompass a solubilizer for a plant protein comprising a protease and a protein deamidase. Wagner teaches that suitable protease include those derived from Aspergillus oryzae (page 6 lines 25-26). It is noted that the recitation of “a solubilizer for a plant protein- containing liquid composition” is intended use of the claimed product and only requires the ability of the product to perform. As Wagner teaches of a product comprising the same active ingredients as disclosed in the body of the claim, the product of Wagner would be able to function in the same manner as the instantly claimed product.
Claim 1-2, 5-6, and 8-9 are rejected 35 U.S.C. 103 as being unpatentable over Schafer et al (US 2008/0241320) in view of Blinkovskey et al (WO 98/51163).
Regarding claims 1, 5, and 8, Schafer et al (Schafer) teaches a method of producing a plant protein-containing liquid comprising treating a plant protein containing liquid composition, i.e. an aqueous solution with rice protein, with one or more alkaline, neutral, and/or acid proteases, preferably treating with two different proteases and protein deamidate (paragraphs 99, 100, 102, 119, 120, and 124, and claims 1, 5, and 6). Schafer further teaches the protease may be derived from fungi (paragraph 120).
Schafer is not specific to the protease as derived from Aspergillus oryzae as recited in claim 1, the treatment with protease followed by treatment with the protein deamidase as recited in claim 2, the liquid composition as a plant milk as recited in claim 6, and the process as suppressing the change in taste of the liquid composition as recited in claims 8 and 9.
Blinkovskey et al (Blinkovskey) teaches treatment of protein, including plant and rice proteins, with protease 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, and page 17 lines 13-17). Blinkovskey teaches that the protease is preferably derived from Aspergillus oryzae (page 14 lines 25-26 and page 16 line 2-3 and claim 20) which is a filamentous fungi.
Regarding the protease as derived from Aspergillus oryzae as recited in claim 1, it would have been obvious for the protease derived from fungi as taught by Schafer to be derived from Aspergillus oryzae, which is a filamentous fungus as Blinkovskey teaches it was a known and preferred fungi for deriving protease for the treatment of plant proteins including rice and/or because of the benefits taught by Blinkovskey.
Regarding claim 2, Schafer is not explicit as to the order of steps, however, as protease is an enzyme and Schafer teaches the use of multiple protease wherein deamidation may be effected with a protease (claim 5) and Schafer teaches subsequent addition of the enzymes (paragraphs 124 and 126), to provide one treatment to the aqueous protein solution, and then the other would have been an obvious suggestion to one of ordinary skill in the art. Furthermore, as there are a limited number of options, i.e. either treatment with the protease and then the deamidase, or treatment with deamidase and then protease, the claimed limitation is considered obvious. In other words, when carrying out the invention as disclosed by Schafer one of the finite number of treatment orders must be used, and thus the claimed order is considered an obvious choice of the process disclosed by the prior art. See MPEP 2143.
Regarding the liquid composition as a plant milk as recited in claim 6, although Schafer teaches treating a plant protein containing liquid composition, i.e. an aqueous solution with rice protein, Schafer does not call the liquid composition “milk” as recited in claim 6. Regardless, as Schafer teaches that the liquid composition can be formed by adding water to a rice flour (see at least paragraphs 99-106, 108, 114, 119, 124, 173, and 184), and 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 teachings of Schafer are considered to encompass or alternatively make obvious a plant milk as claimed.
Regarding the process as suppressing the change in taste of the liquid composition as recited in claims 8 and 9, as discussed above, Schafer teaches a method of producing a plant protein-containing liquid comprising treating a plant protein containing liquid composition, i.e. an aqueous solution with rice protein, with proteases and protein deamidate, wherein it would have been obvious for the protease to be derived from a filamentous fungus in view of Blinkovskey. Thus, as the prior art teaches of the same claimed and disclosed method steps, including treatment of a liquid containing rice protein with a protease derived from a filamentous fungus, 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 rice (paragraphs 14, 15, 42, and 105), and the prior art teaches treatment of rice 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. It is noted that the claims do not recite a benchmark for comparison, nor do the claims prevent any change in taste, rather, the claims recite “a change in taste is suppressed”. Thus, some degree of suppression for a taste (not all tastes) would be required in the process.
Response to Arguments
Applicant's arguments filed September 4, 2025 regarding the remaining rejections have been fully considered but they are not persuasive.
Applicant argues that in view of the amendments, which amend the limitations of claim 4 into claims 1 and 7, and the fact that claim 4 was not rejection over Wagner, the rejection to claim 7 over Wagner should be withdrawn. This argument is not convincing as claim 4 was not dependent upon claim 7, and as Wagner teaches of the newly added limitations. The amendment to claim 7 presents new limitations that were not considered together previously.
Applicant argues that Schafer does not teach deamidase to deamidate. This argument is not convincing at least because it is not commensurate in scope with the claims which recite a treatment with protein deamidase, and Schafer teaches treating with protein deamidate through deamidating of protein (paragraphs 99, 102, and claim 1).
Applicant argues that the process of Schafer in view of Blinkovskey would change the taste and thus does not teach suppressing a change in taste as recited in claims 8 and 9, because Blinkovskey teaches desirable organoleptic properties; and that protein hydrolysates have excellent flavor because glutamic acid, whether free or bound plays an important role in flavor. This argument is not convincing as it is not commensurate in scope with the claims and does not consider all factors.
Claims 8 and 9 recite a change in taste is suppressed. The claims do not require that there is no change in taste, nor do they require all changes in taste are suppressed, but rather that “a change in taste of the plant protein-containing liquid composition is suppressed”. It is noted that this interpretation is consistent with the instant disclosure which shows in the examples that creaminess and lightness were not reduced (see paragraphs 87 and 88). The disclosure does not appear to indicate that there was not an increase in taste, nor that other taste attributes remained constant. It is additionally noted that the claims do not recite a benchmark for comparison of change.
The teaching of “excellent flavor” simply requires a good flavor, and does not necessarily require a change in flavor as argued. It is noted that the term “excellent” is used by the reference as opposed to the “improved” (see Blinkovesky page 17 lines 13-17). Additionally, it may be that an excellent flavor is one which is enhanced or improved because it does not change through processing.
The teachings of Blinkoveskey which refer to enhanced or improved flavor refer to the food product to which the protein is added, and not to the plant protein containing liquid itself. See for example page 18 lines 27-30.
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).
As discussed above, because 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 rice (paragraphs 14, 15, 42, and 105), and the prior art teaches treatment of rice with a protease derived from filamentous fungi, a suppression in taste would be expected through the process of the prior art. 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.
Applicant argues that suppression of a change in taste is unexpected in view of the examples in the instant specification. This argument is not convincing as it is not commensurate in scope with the claims (i.e. it is limited to only two strains of Aspergillus oryzae, is limited to a milk taste not decreasing, is limited to certain percentages and method steps, etc.). The scope of the claims is significantly broader than the examples shown. Additionally, the evidence is not convincing as it does not compare the closest prior art of record which teaches protease derived from Aspergillus oryzae is preferred.
Conclusion
As the previous rejections were withdrawn in light of applicant’s amendments, 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 KELLY BEKKER whose telephone number is (571)272-2739. The examiner can normally be reached Monday-Friday 8am-3:30pm.
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KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792