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 .
DETAILED ACTION
Application Status
This application is a 371 of PCT/CN2021/139046, filed on 06/15/2023.
Claims 74, 79 and 80 are currently pending.
In response to a previous Office action, a Non-Final Rejection Office action (mailed on 06/10/2026), Applicants filed a response, a new IDS, and an amendment on 09/02/2026, amending claims 74, and 80, and canceling claims 75-78 is acknowledged.
Claims 74, 79 and 80 are present for examination.
Priority
Acknowledgement is made of applicants claim for foreign priority under 35 U.S.C. 119(a)-(d) to a foreign patent application WIPO PCT/CN2021/139046, filed on 12/17/2020 (EFD) with English translation.
New-Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 07/08/2026 is acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are considered by the examiner. The signed copies of 1449 are enclosed herewith.
Withdrawn-Specification Objection
The previous objection of the Specification for reciting an embedded hyperlink and/or other form of browser-executable code, is withdrawn in view of Applicant’s amendment to the Specification and persuasive arguments. See MPEP § 608.01.
Withdrawn-Claim Rejections - 35 USC § 112(b)
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 previous rejection of Claim 78 (depends on claim 74) 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the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention, is withdrawn, in view of Applicant’s amendment to the claims and persuasive arguments.
Withdrawn-Claim Rejections - 35 USC § 112(a)
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 previous rejection of Claims 74-80 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement, is withdrawn, in view of Applicant’s amendment to the claims and persuasive arguments.
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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Withdrawn-Claim Rejections - 35 USC § 102
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 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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
MPEP-2131 Anticipation — Application of 35 U.S.C. 102 [R-08.2017]
A claimed invention may be rejected under 35 U.S.C. 102 when the invention is anticipated (or is "not novel") over a disclosure that is available as prior art. To reject a claim as anticipated by a reference, the disclosure must teach every element required by the claim under its broadest reasonable interpretation. See, e.g., MPEP § 2114, subsections II and IV.
"A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001) Note that, in some circumstances, it is permissible to use multiple references in a 35 U.S.C. 102 rejection. See MPEP § 2131.01.
MPEP-2131.01 Multiple Reference 35 U.S.C. 102 Rejections [R-11.2013]
Normally, only one reference should be used in making a rejection under 35 U.S.C. 102. However, a 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to:
(A) Prove the primary reference contains an "enabled disclosure;"
(B) Explain the meaning of a term used in the primary reference; or
(C) Show that a characteristic not disclosed in the reference is inherent.
The previous rejection of Claims 74-79 are rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention as anticipated by Lanahan et al. (Thioredoxin and grain process. WO 2000/36126, publication 06/22/2000, see IDS), is withdrawn, in view of Applicant’s amendment to the claims and persuasive arguments.
New-Claim Rejections - 35 U.S.C. § 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
According to MPEP 2143:
“Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield
predictable results;
(B) Simple substitution of one known element for another to obtain predictable
results;
(C) Use of known technique to improve similar devices (methods, or products)
in the same way;
(D) Applying a known technique to a known device (method, or product) ready
for improvement to yield predictable results;
(E) “ Obvious to try ” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in
either the same field or a different one based on design incentives or other market
forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art
reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.”
Claims 74, 79 and 80 are rejected under 35 U.S.C. 103 as being unpatentable over Lanahan et al. (Thioredoxin and grain process. WO 2000/36126, publication 06/22/2000, see IDS), in view of Rubio et al. (Continuous enzymatic precooking for the production of an instant corn flower for snakes and tortilla. WO 2004/019701 A1, publication 03/11/2004).
Lanahan et al. teach an invention that provides methods of processing grain corn and soybeans, utilizing thioredoxin and/or thioredoxin reductase to enhance extractability and recovery of starch and protein, wherein method further provides transgenic plants expressing thermostable thioredoxin and/or thioredoxin reductase hyperthermophilic organism Archaeglobus fulgidus and Methanococcus jannaschii. Lanaham et al. also teach a method to increase efficiency of separation of starch and protein in a grain milling process, by steeping the grain at an elevated temperature in the presence of supplemental thioredoxin and/or thioredoxin reductase and separating the starch and protein components of the grain, wherein the grain includes grain from a transgenic plant wherein the transgene expresses thioredoxin and/or thioredoxin reductase enzyme, wherein the plant is selected from corn (Zea mays) and soybean, comprising a heterologous DNA sequence coding for a thioredoxin and/or thioredoxin reductase stably integrated into its nuclear or plastid DNA, wherein the thioredoxin and/or thioredoxin reductase is thermostable, wherein the thioredoxin and/or thioredoxin reductase is selected from the group consisting of SEQ ID NO: 1 , SEQ ID NO: 2, SEQ ID NO: 3, SEQ ID NO: 4, SEQ ID NO: 5, SEQ ID NO: 6, and SEQ ID NO: 7, wherein the plant is selected from corn and soybean, and a plant expressible expression cassette comprising a coding region for a thioredoxin and/or thioredoxin reductase operably linked to promoter and terminator sequences which function in a plant, wherein the thioredoxin and/or thioredoxin reductase is thermostable, wherein the thioredoxin and/or thioredoxin reductase is selected from the group consisting of SEQ ID NO: 1, SEQ ID NO: 2, SEQ ID NO: 3, SEQ ID NO: 4, SEQ ID NO: 5, SEQ ID NO: 6, and SEQ ID NO: 7. Lanaham et al. further teach a method of producing grain comprising high levels of thioredoxin and/or thioredoxin reductase comprising transforming plants with an expression cassette, and a method of producing grain comprising high levels of thioredoxin and/or thioredoxin reductase comprising pollinating a first plant comprising a heterologous expression cassette comprising a transactivation-regulated promoter regulated and operably linked to a DNA sequence coding for a thioredoxin and/or thioredoxin reductase, with pollen from a second plant comprising a heterologous expression cassette comprising a promoter operably linked to a DNA sequence coding for a trans activator capable of regulating said trans activator-regulated promoter; and recovering grain from the plant thus pollinated, and a method of use of plants or plant material as animal feed.
The limitations i) EC 5.3.4.1 recited in claim 74, mg amount of starch or gluten recited in claim 74, amount of protein release per gram dry solids recited in claim 74, are the inherent property of the PDI or Thioredoxin reductase polypeptide of Lanahan et al.
Because the PDI or Thioredoxin reductase polypeptide of the claimed invention and that of recombinant microorganism of the reference is one and the same, Examiner takes the position that the limitations of claims 74, and 79 are inherently associated with the PDI or Thioredoxin reductase polypeptide for producing starch from corn of Lanaham et al. Since the Office does not have the facilities for examining and comparing applicants' polypeptides for producing starch from corn the prior art, the burden is on the applicant to show a novel or unobvious difference between the claimed product and the product of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald et al., 205 USPQ 594.
While claims 74, and 79 recite products (degraded starch) in product by process form, patentability of a product by process claim is determined by the characteristics, of the product only. As there is no evidence that the degraded starch molecules product as recited in claims 74 and 79 would be any different from the degraded starch molecules recited by the Lanahan et al. see, MPEP 2113:
2113 Product-by-Process Claims [R-08.2017]
I. 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)
However, Rubio et al. teach a biochemical process for the continuous production of precooked and partially debranned corn flour, comprising precooking cleaned corn kernel with steep-water heated from a downstream wet conditioner to form a suspension of com and water, having a com to water ratio between 1:1 and 1:1.5, precooking the com kernel at a near neutral-pH with a solution comprising enzyme selected from the group consisting of an endoxylanase and an endoamylase and disulfide isomerase (PDI) to effect a partial hydrolysis of bran heteroxylans and starchy cell- walls during precooking, wet conditioning said precooked kernel to a predetermined moisture range with warm water from a downstream washer, washing said conditioned precooked kernel to remove soluble solids and denatured said at least one enzyme, stabilizing a moisture content of said washed precooked com kernel with water, milling said washed precooked com kernel and drying said milled com kernel for further pregelatinizing, cooling and further drying said ground and dried corn kernel, sifting said ground com to obtain a fine fraction, under 16 to 60 mesh to produce a com flour with fine particle size, and a coarse fraction, and aspirating said sifted coarse fraction to remove a corn bran, wherein said enzymatic precooking uses an endoxylanase and endoamylase mixture in an amount from 0.025% to about 0.25% by weight of the com kernel, wherein said com bran is a light fraction, representing a minimum yield from 2% to about 3% of the total weight of com kernel, wherein wastewater produced by the enzymatic precooking and washing steps comprises a com solids reduction in a range of 35% to about 45%, and further comprising rehydrating said com flour by mixing with warm water from a 1:0.8 to about 1:1.0 weight ratio to form a com dough, wherein enzyme is selected from microbially derived enzymes that are recognized as at least one of GRAS substances and used as processing aids, wherein the low-temperature precooking step is performed up to the denaturing temperature of said endoxylanase and endoamylase and disulfide isomerase (PDI), wherein in the milling and drying step, and the drying is performed with a high temperature-short time drier, and further comprising remilling the aspirated coarse fraction, wherein the remilled coarser fraction is recycled to the sifting step (see, title, abstract, pg. 6, para 3, and claims 1-14).
Therefore, it would have been obvious to one of ordinary skill in the art to arrive at the claimed invention as a whole before the at the time of the invention was made by combining the teachings of Lanahan et al. and Rubio et al. to optimize the process steps of corn to starch to flowers with enzymes and related process steps as taught by Rubio et al. and modify Lanahan et al. with the process steps to make flowers from corn to arrive the claimed invention.
One of ordinary skilled in the art would have been motivated to process grain corn to flowers and soybeans, utilizing thioredoxin and/or thioredoxin reductase to enhance extractability and recovery of starch and protein, and produce high quality flowers from corn, a cheap source of starch, which is commercially, industrially and financially beneficial.
One of ordinary skilled in the art would have a reasonable expectation of success because Lanahan and Rubio et al. could successfully produce high quality flowers from corn.
Thus, the above references render the claims prima facie obvious to one of ordinary skill in the art.
Conclusion
Status of the claims:
Claims 74 and 79 are rejected.
Claim 80 is free of prior art.
Claim 80 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Applicant's amendment (see, claim 74) necessitated the new ground(s) of rejection presented in this Office action.
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 extension fee 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 date of this final action.
00Any inquiry concerning this communication or earlier communications from the examiner should be directed to IQBAL H CHOWDHURY whose telephone number is (571)272-8137. The examiner can normally be reached on M-F, at 9:00-5:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Manjunath N. Rao, can be reached on 571-272-0939. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Iqbal H. Chowdhury, Ph.D.
Primary Patent Examiner
Art Unit 1656 (Recombinant Enzymes and Protein Crystallography)
US Patent and Trademark Office
Ph. (571)-272-8137 and Fax (571)-273-8137
/IQBAL H CHOWDHURY/
Primary Examiner, Art Unit 1656
Prosecution Insights