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 4 February 2026 is acknowledged.
Applicant has overcome the following by virtue of amendment of the claims: (1) the 112(b) rejections of claims 1-5 have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-11
Withdrawn claims: 6-11
Previously canceled claims: None
Newly canceled claims: None
Amended claims: 1-5
New claims: None
Claims currently under consideration: 1-5
Currently rejected claims: 1-5
Allowed claims: None
Claim Objections
Claims 2 and 4 are objected to because of the following informalities:
Claim 2 should end with a period as each claim should be a single sentence. See MPEP § 608.01(m), which states, “Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations.”
In claim 4, it appears that “wherein the plant proteins are legume proteins obtained from legumes selected from…” should read, “wherein the legume proteins are obtained from legumes selected from…” based on the amendments to claim 1 to recite “legume proteins” instead of “plant proteins”.
Appropriate correction is required.
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.
Claim 3 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 3 recites the limitation “wherein the plant proteins which have not undergone any drying step are prepared using the following method” in lines 1-2. There is insufficient antecedent basis for “the plant proteins” in this limitation in the claim. Applicant can overcome this rejection by amending the claim to instead recite, “wherein the legume proteins which have not undergone…”. For purposes of examination, the claim is construed as suggested for amendment.
Claim Rejections - 35 USC § 102
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 and 3-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by An et al. (CN 105410329 A, see translation provided).
Regarding claim 1:
Claim Interpretation:
It is noted that the claim language, “wherein at least 30% by dry weight of the dry mass of total proteins has undergone no drying step during its extraction process” does not positively recite an active method step, and refers to a protein product, resulting from a separate extraction process, that is used as an ingredient in the claimed method. As such, the recited claim language is a product-by-process limitation.
MPEP § 2113(I) states, “Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. ‘[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process’, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983).
The claimed method requires providing a wet composition comprising legume proteins. The claimed method does not recite a step of preparing the wet composition or extracting legume proteins. As such, any wet composition comprising legume proteins reads on the claimed step of “providing a wet composition comprising legume proteins”. The clause, “wherein at least 30% by dry weight of the dry mass of legume proteins has undergone no drying step during its extraction process” does not limit the method as claimed.
The broadest reasonable interpretation of the claimed method is:
A method for producing a plant protein composition comprising the following steps:
1) providing a wet composition comprising plant proteins; and,
2) texturing the composition from step 1 by extrusion cooking.
Claim Rejection:
An teaches a method for producing a plant protein composition comprising the following steps:
1) providing a wet composition comprising legume proteins – An teaches a method for preparing high-moisture textured protein using gluten puree as raw material without drying the raw material and adding water (Abstract). 50-70 wt% of wheat gluten powder puree (generally with a water content of 60-70% (p. 2, ¶ 8)) and 30-50 wt% of vegetable protein powder are mixed to a water content of 45-60%, and then added to the feeder barrel of a twin-screw extruder (claim 1). The vegetable protein powder is low-temperature defatted soybean powder, pea protein powder, soybean protein concentrate powder, soy protein isolate powder (claim 2). Soy and peas are legumes. Therefore, An teaches a wet composition comprising legume protein.
2) texturing the composition from step 1 by extrusion cooking – “(2) The wheat gluten powder puree and vegetable protein powder mixed in step (1) are mixed for the second time in the feeder barrel of the twin-screw extruder, and then added to the twin-screw extruder for extrusion.” (Claim 1). Extrusion cooking temperatures are defined in claim 4 of An.
Claim 1 is therefore anticipated by An.
Regarding claim 3:
Claim Interpretation:
It is noted that the claim language, “wherein the plant proteins which have not undergone any drying step are prepared using the following method:…” does not recite a positive method step adding to the method of claim 1, and refers to the plant proteins, resulting from a separate extraction process, that are used as an ingredient in the claimed method. As such, the recited claim language is a product-by-process limitation. See MPEP § 2113(I) as applied to claim 1 above.
The claimed method requires providing a wet composition comprising legume proteins. The claimed method does not recite a step of preparing the wet composition or extracting legume proteins. As such, any wet composition comprising legume proteins reads on the claimed step of “providing a wet composition comprising legume proteins”. The clause, “wherein the plant proteins which have not undergone any drying step are prepared using the following method:…” does not limit the method as claimed.
Therefore, this feature cannot be given patentable weight in the method as claimed and is not further limiting.
Where claim 1 is anticipated by An, so too is claim 3.
Regarding claim 4, An teaches the method according to claim 1, wherein the legume proteins are obtained from legumes selected from the list containing pea and faba bean – An teaches 50-70 wt% of wheat gluten powder puree (generally with a water content of 60-70% (i.e., 30-40% wheat gluten) (p. 2, ¶ 8)) and 30-50 wt% of vegetable protein powder are mixed to a water content of 45-60%, and then added to the feeder barrel of a twin-screw extruder (claim 1). The vegetable powder is low-temperature defatted soybean powder, pea protein powder, soybean protein concentrate powder, and/or soybean protein isolate powder (i.e., legume proteins) (claim 2; p. 3, Example 4).
An therefore teaches a wet composition comprising legume proteins obtained from peas.
Claim 4 is therefore anticipated by An.
Regarding claim 5, An teaches the method according to claim 1, wherein step 2 is carried out by extrusion cooking in an extruder – “(2) The wheat gluten powder puree and vegetable protein powder mixed in step (1) are mixed for the second time in the feeder barrel of the twin-screw extruder, and then added to the twin-screw extruder for extrusion.” (Claim 1). Extrusion cooking temperatures are defined in claim 4 of An.
Claim 5 is therefore anticipated by An.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over An et al. (CN 105410329 A, see translation provided).
Regarding claim 2:
Claim Interpretation:
It is noted that the claim language, “which have not undergone any drying step during their extraction process” does not recite a positive method step, and refers to the legume proteins, resulting from a separate extraction process, that are used as an ingredient in the claimed method. As such, the recited claim language is a product-by-process limitation. See MPEP § 2113(I) as applied to claim 1 above.
The claimed method requires providing a wet composition comprising legume proteins, wherein the wet composition contains between 30% and 50% legume proteins by dry weight of the dry mass of total proteins. The claimed method does not recite a step of preparing the wet composition or extracting legume proteins. As such, any wet composition comprising legume proteins, wherein the wet composition contains between 30% and 50% legume proteins by dry weight of the dry mass of total proteins reads on the claimed step. The clause, “which have not undergone any drying step during their extraction process” does not limit the method as claimed.
The broadest reasonable interpretation of claim 2 is:
The method according to claim 1, wherein the wet composition contains between 30% and 50% legume proteins by dry weight of the dry mass of total proteins.
Claim Rejection:
An teaches the method according to claim 1, wherein the wet composition contains between 30% and 50% legume proteins by dry weight of the dry mass of total proteins – An teaches 50-70 wt% of wheat gluten powder puree (generally with a water content of 60-70% (i.e., 30-40% wheat gluten) (p. 2, ¶ 8)) and 30-50 wt% of vegetable protein powder are mixed to a water content of 45-60%, and then added to the feeder barrel of a twin-screw extruder (claim 1). The vegetable powder is low-temperature defatted soybean powder, pea protein powder, soybean protein concentrate powder, and/or soybean protein isolate powder (i.e., legume proteins) (claim 2).
The dry weight of the wheat gluten is calculated as follows:
50 wt% puree x 30% wheat gluten = 15% dry weight wheat gluten
70 wt% puree x 40% wheat gluten = 28% dry weight wheat gluten
Legume protein powder is added in a range of 30-50 wt% of the wet composition. The amount of legume proteins by dry weight as a percent of the dry mass of total proteins is calculated as follows:
50% puree at 15% dry weight wheat gluten + 50% legume protein powder = wet composition is 65% total protein.
50% legume proteins ÷ 65% total protein = 77% legume proteins
70% puree at 28% dry weight wheat gluten + 30% legume protein powder = wet composition is 58% total protein.
30% legume proteins ÷ 58% total protein = 52% legume proteins
Therefore, An discloses a wet composition comprising legume proteins that contains between 52% and 77% legume proteins by dry weight of the dry mass of total proteins.
The claimed range of between 30% and 50% is close to the disclosed range of between 52% and 77%. MPEP § 2144.05(I) states, “A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.")”.
Absent any evidence of criticality of the claimed range, the disclosed 52% is sufficiently close to the claimed 50% such that one of ordinary skill in the art would have expected the compositions to have substantially the same properties.
Additionally, protein concentrates are generally accepted as having a protein content of as low as 80 wt%, and protein isolates are generally accepted as having a protein content as low as 90 wt%. Where An teaches that the vegetable protein is soybean protein concentrate powder (claim 2), An discloses a wet composition comprising legume proteins that contains between 0.8 x 52% = 41.6% and 0.8 x 77% = 61.6% legume proteins by dry weight of the dry mass of total proteins The claimed range of between 30% and 50% overlaps with the disclosed range of between 41.6% and 61.6%. 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).
Claim 2 is therefore rendered obvious.
Response to Arguments
Claim Objections:
The amendments to claim 2 fail to overcome all objections to the claim. Objection to claim 2 is maintained.
Claim Rejections – 35 U.S.C. § 102: Applicant’s arguments filed on 4 February 2026 have been fully considered, but they are not persuasive.
Applicant first argued that An fails to enable and disclose each and every element of the instantly claimed invention; An describes the addition of legume proteins but does not describe that these legume proteins have not been dried (p. 4, last ¶).
Applicant’s argument has been considered, but it is not persuasive. The claim language, “wherein at least 30% by dry weight of the dry mass of total proteins has undergone no drying step during its extraction process” does not positively recite an active method step, and refers to a protein product, resulting from a separate extraction process, that is used as an ingredient in the claimed method. As such, the recited claim language is a product-by-process limitation.
MPEP § 2113(I) states, “Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. ‘[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process’, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983).
The claimed method requires providing a wet composition comprising legume proteins. The claimed method does not recite a step of preparing the wet composition or extracting legume proteins. As such, any wet composition comprising legume proteins reads on the claimed step of “providing a wet composition comprising legume proteins”. The clause, “wherein at least 30% by dry weight of the dry mass of legume proteins has undergone no drying step during its extraction process” does not limit the method as claimed.
Applicant has failed to identify any materially distinguishing characteristics between the materials used in the prior art and those of claims. Therefore, where An teaches providing a wet composition comprising legume proteins, the positively recited active method step 1) of the claimed method is met by An.
Regarding the assertion by the Office that one of ordinary skill in the art would have been unable to ascertain whether or not the legume proteins in the already wet state of the composition provided in step 1 had undergone a drying step during the extraction process or how the proteins were extracted, Applicant argued that one of ordinary skill in the art who implements the claimed process knows perfectly well what he/she is using because the wet composition used to implement the process is provided by the same person (p. 5, ¶ 1). Applicant argued that one of ordinary skill in the art implementing the claimed process would know whether he/she is introducing a composition corresponding to the claimed limitation (at least 30% by dry weight of the mass of legume protein that has undergone no drying step during extraction) or not (p. 5, ¶ 2) Applicant asserted that ether 1) one of ordinary skill in the art introduces a commercial powdered protein, which has necessarily been dried as a whole to be obtained as a powder, or 2) one of ordinary skill in the art would use a composition that has been manufactured by the person themselves, and therefore would know whether at least 30% by dry weight of the dry mass of the legume protein composition has been subjected to a drying step during its extraction process (p. 5, ¶ 2).
Applicant’s arguments have been considered, but they are not persuasive. The instant claims require providing a wet composition comprising legume proteins. The claims do not require that the wet composition is prepared by the same person carrying out the claimed method. A third possibility exists where the person carrying out the claimed method receives a protein slurry comprising legume proteins and does not know the details of how it was prepared. Without a positively recited method step of preparing legume proteins which have not undergone any drying step, the clause, “wherein at least 30% by dry weight of the dry mass of legume proteins has undergone no drying step during its extraction process” does not limit the method as claimed.
Rejection of claims 1 and 3-5 under 35 U.S.C. § 102(a)(1) is maintained.
Claim Rejections – 35 U.S.C. § 103: Applicant’s arguments filed on 4 February 2026 have been fully considered, but they are not persuasive.
Applicant argued that the present invention is directed to a method for producing legume protein compositions, and An is specifically directed to wheat gluten compositions, so a skilled artisan would not turn to a reference directed to wheat gluten if the intent was to produce a legume protein composition (p. 5, last ¶).
Applicant’s argument has been considered, but it is not persuasive. The present invention is “a method for producing a plant protein composition” comprising “providing a wet composition comprising legume proteins”. An discloses a method for producing a plant protein composition, and the method comprises providing a wet composition comprising legume proteins (see claim 1 of An and the rejection of clam 1 hereinabove).
Applicant next argued that the teachings of An regarding undried wheat gluten cannot be extrapolated to legume proteins, and at best, one of ordinary skill in the art would have modified a high-moisture extrusion process by using undried wheat gluten protein (p. 6, ¶ 1).
Applicant’s argument has been considered, but it is not persuasive. As described above, the clause, “wherein at least 30% by dry weight of the dry mass of legume proteins has undergone no drying step during its extraction process” does not limit the method as claimed. As such, there is no need to modify the teachings of An. The limitations of claim 2 are met by the legume protein content disclosed by An (see rejection of claim 2 hereinabove).
Applicant argued that the invention provides for a process for obtaining a composition comprising textured legume proteins, the process having satisfactory performance while reducing its energy and water consumption, and based on the teaching of An, one of ordinary skill in the art trying to obtain such an invention would not have implemented a process comprising extruding a legume protein that has not undergone any drying step during its extraction (p. 6, ¶ 2). This is because at the filing date of the instant application, the skilled artisan would have thought that a protein in a more native state was counterproductive to the effort to limit energy consumption because it led to a much higher Specific Mechanical Energy (SME) (p. 6, ¶¶ 6-7). Applicant asserted that the inventors have unexpectedly discovered that a completely native (i.e., never dried) legume protein allows non-negligible energy and water consumption savins when extruded according to the claimed method (p. 6, ¶¶ 7-8).
Applicant’s assertion of unexpected results is acknowledged. Applicant’s argument has been considered, but it is not persuasive. MPEP § 2145 states, “If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc)”, and “[r]ebuttal evidence may include evidence of ‘secondary considerations,’ such as ‘commercial success, long felt but unsolved needs, [and] failure of others.’ Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 4459, 467. See also, e.g., In re Piasecki, 745 F.2d 1468, 1473, 223 USPQ 785, 788 (Fed. Cir. 1984) (commercial success). Rebuttal evidence may also include evidence that the claimed invention yields unexpectedly improved properties or properties not present in the prior art. Rebuttal evidence may consist of a showing that the claimed compound possesses unexpected properties. Dillon, 919 F.2d at 692-93, 16 USPQ2d at 1901. A showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997)”. However, as provided by MPEP § 2145(II), “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979)”, and “‘[t]he fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.’ Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)”. Furthermore, “[e]vidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978).” See MPEP § 716.02(c)(I). “‘Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof.; In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967)”. See MPEP § 716.02(c)(II).
“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)”. See MPEP § 716.02(d).
In the present case, as described above, the clause, “wherein at least 30% by dry weight of the dry mass of legume proteins has undergone no drying step during its extraction process” does not limit the method as claimed. An teaches a wet composition comprising wheat gluten protein that has not undergone a drying step and an amount of legume protein that overlaps with the claimed range of between 30% and 50% by dry weight of the dry mass of total proteins as recited in claim 2. If undried native protein is a determining factor of reducing allowing non-negligible energy and water consumption savings during extrusion, then the undried native wheat gluten protein (and therefore the wet composition comprising legume proteins) of An may well confer the same effect. No evidence has been provided to support Applicant’s assertion in this or any regard.
Rejection of claim 2 under 35 U.S.C. § 103 is maintained.
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
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