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 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 (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.
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.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chun CN 109287843 (machine translation provided herewith relied on for reference).
Regarding claim 1, Chun teaches a method for producing a rice protein-containing liquid comprising treating a rice protein-containing liquid with a protein glutaminase. [0011]
Regarding claim 2, the rice protein-containing liquid of Chun is a dispersion of rice protein and therefore comprises “crushed rice” and is interpreted to be homogenized as recited in claim 2. It is noted that the claim does not positively recite crushing rice, but instead recites a product-by-process limitation regarding how the ingredient used in the method was produced. The rice-protein containing is materially indistinguishable from one produced by the product-by-process limitations of claim 2 and therefore there is no manipulative difference between claim 2 and the method disclosed by Chun.
Regarding claims 3 and 4, Chun does not teach saccharification or fermentation.
Regarding claims 5-7, Chun discloses the rice protein treated with glutaminase has a smooth texture and light milk aroma. Given that Chun teaches the same process as presently claimed and disclosed, as well as the same benefits, it logically follows that the method of Chun yields the functional limitations recited in claims 5-7.
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.
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Chun CN 109287843 as applied to claim 1 above.
Regarding claim 8, Chun teaches what has been recited above. Chun is silent regarding measuring the amount of protein glutaminase in units of “U” as defined in [0024] and [0043] of applicant’s specification. However, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.) Given that Chun discloses the same process as presently claimed, no criticality for the amount of glutaminase used has been demonstrated, and enzyme concentration is well understood to affect the rate of reaction, the concentration of glutaminase recited in claim 8 is merely an obvious variant of the prior art.
Response to Arguments
Applicant's arguments filed 11 May 2026 have been fully considered but they are not persuasive.
Applicant asserts on pages 3-4 of the remarks that despite the explicit disclosure of glutaminase, Chun does not actually teach glutaminase as presently claimed. Applicant further asserts on page 4 of the remarks that “there has been no report whatsoever, including in light of modern genomic analysis, that [Bacillus amyloliquefaciens] produces protein glutaminase and that “there is no reasonable basis to interpret” the glutaminase disclosed by Chun as glutaminase. Applicant has provided no evidence to support this assertion. It is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding the disclosure of glutaminase in Chun, applicant’s expertise and the state of the prior art must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Applicant’s assertions on page 4 of the remarks regarding items (i)-(iii) are not persuasive as applicant has failed to establish (i) with evidence and (ii) and (iii) are not germane to the instantly pending claims because they do not identify any patentable distinctions between Chun and the scope of the instantly pending claims.
Applicant assertions on page 5 of the remarks regarding claim 2 are not found persuasive as applicant’s amendment did not introduce any positively recited method limitations and the description of how the crushed rice was obtained does not provide a manipulative difference between the claims and the prior art.
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 Michele L Jacobson whose telephone number is (571)272-8905. The examiner can normally be reached Monday through Friday from 10-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michele L Jacobson/Primary Examiner, Art Unit 1793
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