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
The status of the claims stands as follows:
Pending claims: 39-58
Canceled claims: 1-38
Currently rejected claims: 39-58
Allowed claims: None
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.
Claim 43 is 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 43 recites the limitation “the permeate” in line 9. There is insufficient antecedent basis for this limitation in the claim. Note the claim recites multiple subsequent instances of permeates already defined as “a permeate” and “a second permeate”.
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 39 and 51-54 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Defaix et al. (WO 2019/096862 A1).
Regarding claim 39, Defaix et al. discloses a method for extracting a plurality of target materials from oil seeds (p. 3, ll. 15-17), the method comprising:
performing an extraction on an oil seed material to form an aqueous phase and a solid phase, wherein the extraction is performed in an organic solvent-free extraction at a pH of 5-8 (p. 3, ll. 23-27; p. 4, ll. 18-28);
separating the insoluble solids from the aqueous phase (p. 3, l. 28);
filtering the aqueous phase into a retentate and a permeate (p. 4, ll. 8-9; p. 9, ll. 25-31); and
drying the retentate (p. 4, l. 10).
Regarding claim 51, Defaix et al. discloses a composition comprising a first component comprising a protein extract that is isolated from oil seeds after at least one extraction process at a pH of 5-8 and a second component comprising phytic acid (p. 3, ll. 20-28), where the oil seed may be sunflower seed (p. 16, ll. 16-19).
As for claim 52, Defaix et al. discloses the first component as comprising 91.7-99 wt.% of the composition (p. 14, ll. 10-14).
As for claim 53, Defaix et al. discloses the second component as comprising 0.28-7.7 wt.% of the composition (p. 3, ll. 21-23).
As for claim 54, Defaix et al. discloses the second component as comprising 2.6 wt.% of the composition (p. 3, ll. 21-23).
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.
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.
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.
Claims 40-49 and 55-58 are rejected under 35 U.S.C. 103 as being unpatentable over Defaix et al. (WO 2019/096862 A1).
As for claims 40-42, Defaix et al. disclose the method of claim 39.
Defaix et al. does not disclose the retentate as having the claimed sweetness.
However, MPEP 2112.01 I states: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” Since Defaix et al. discloses producing the material by a substantially identical process as that claimed, the obtained retentate would have the same properties as those presently claimed, which renders the claimed limitations requiring the retentate to have a sweetness that is (i) sweeter than that of sucrose (claim 40); (ii) 2-10 times sweeter than that of sucrose (claim 41), or (iii) 2-5 times sweeter than that of sucrose (claim 42) obvious to a skilled practitioner. Further, the present claims do not require (i) the sweetness of the retentate to be due exclusively to whatever material is harvested from the oil seed material, or (ii) any concentration of the sweet-tasting material in the retentate. To the extent a retentate may potentially be obtained that does not exhibit the claimed sweetness, the retentate may simply be sweetened via the addition of a high-potency sweetener to obtain the claimed sweetness as is well-known in the art.
Regarding claim 43, Defaix et al. discloses a method for extracting materials from oil seeds (p. 3, ll. 15-17), the method comprising:
mixing an extraction solution that includes water and a salt and has a pH of 5-8 (p. 3, ll. 23-27; p. 4, ll. 18-28) with a quantity of oils seeds that have been dehulled (p. 16, ll. 13-14), cold-pressed (p. 15, ll. 12-13), and milled (p. 15, ll. 3-4) to form a mixture (p. 4, ll. 33-36);
extracting the mixture at a temperature in the range of 10-93°C (p. 4, l. 33 – p. 5, l. 3) for 0.5-6 hours (p. 5, ll. 6-8) to form an extracted mixture having an aqueous phase;
separating the insoluble solids from the aqueous phase using a separation process (p. 3, l. 28; p. 5, ll. 23-28);
lowering the pH of a mixture comprising dissolved proteins to within the range of 4.0-4.5 (specifically, “from 1 to 4”) (p. 6, ll. 25-28, l. 37), which is presumed to create a precipitate;
sequentially filtering the insoluble solids material to obtain a protein target material in a retentate (p. 4, ll. 8-9; p. 9, l. 25 – p. 10, l. 5; p. 10, ll. 22-23, where filtration steps may be repeated); and
drying the retentate (p. 4, l. 10; p. 10, ll. 13-15).
Defaix et al. does not disclose lowering the pH of the permeate in particular or the specific filtration steps of (i) filtering the lowered pH material to form a retentate and a permeate; (ii) drying the retentate to form a dried retentate that comprises a first target material; (iii) filtering the permeate to form a second retentate and a second permeate; (iv) drying the second retentate to form a dried second retentate that comprises a second target material; (v) filtering the second permeate to form a third retentate; and (vi) drying the third retentate to form a dried third retentate that comprises a third target material.
However, the instruction in Defaix et al. that the liquid phase may be subject to “one or several membrane filtration(s) to obtain a protein isolate” (p. 4, ll. 8-9) and that the separation/filtration steps may be repeated (p. 10, ll. 22-23) renders the claimed repetition of filtration steps in order to obtain target materials obvious. Further, the material which is subjected to a lowered pH contains the target protein material (p. 6, ll. 25-28). Subjecting any fraction containing the target material to subsequent processing in order to further purify the material would be obvious. As such, the claimed step of lowering the pH of the permeate obtained after separating insoluble solids from an aqueous phase would be obvious due to comprising dissolved protein material.
As for claims 44 and 45, Defaix et al. discloses the target material includes protein (p. 9, ll. 25-27). Obtaining first or second target materials that comprise proteins from first or second retentates would thus be obvious.
As for claim 46, Defaix et al. discloses adding a precipitating material to the aqueous phase to form a precipitate (p. 8, ll. 15-28; p. 7, ll. 28-29; p. 8, l. 34 – p. 9, l. 2).
As for claim 47, Defaix et al. discloses removal of phytic acid via precipitation (p. 8, ll. 15-28; p. 7, ll. 28-29; p. 8, l. 34 – p. 9, l. 2), such that the precipitate is presumed to include phytic acid.
As for claim 48, Defaix et al. discloses adding calcium chloride to the aqueous phase as a precipitating material (p. 8, ll. 15-16; p. 7, ll. 28-29).
As for claim 49, Defaix et al. discloses adding calcium chloride to the aqueous phase as a precipitating material (p. 8, ll. 15-16; p. 7, ll. 28-29) in a molar concentration ranging from 0.01 M to 2 M, with a “concentration of around 0.5 M ± 10% ha[ving] shown particular efficacy” (p. 8, ll. 15-20). Such evidence of optimization suggests to a skilled practitioner that an optimized molar ratio between calcium chloride and phytic acid may be determined via routine experimentation. MPEP 2144.05 II.
As for claims 55-58, Defaix et al. discloses the composition of claim 51.
Defaix et al. does not disclose the composition as having the claimed sweetness.
However, MPEP 2112.01 I states: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” Since Defaix et al. discloses producing the material by a substantially identical process as that claimed, the obtained retentate would have the same properties as those presently claimed, which renders the claimed limitations requiring the composition to have a sweetness that is (i) substantially equal to a sweetness of sucrose (claim 55),; (ii) sweeter than that of sucrose (claim 56); (iii) 2-10 times sweeter than that of sucrose (claim 57), or (iv) 2-5 times sweeter than that of sucrose (claim 58) obvious to a skilled practitioner. Further, the present claims do not require (i) the sweetness of the composition to be due exclusively to whatever material is harvested from the oil seed material, or (ii) any concentration of the sweet-tasting material in the extracted material. To the extent a composition may potentially be obtained that does not exhibit the claimed sweetness, the composition may simply be sweetened via the addition of sucrose (claim 55) or a high-potency sweetener (claims 56-58) to obtain the claimed sweetness as is well-known in the art.
Claim 50 is rejected under 35 U.S.C. 103 as being unpatentable over Defaix et al. (WO 2019/096862 A1) in view of Pearce (U.S. 4,435,319).
As for claim 50, Defaix et al. discloses the method of claim 43.
Defaix et al. does not specifically disclose separation of chlorogenic acid as part of a filtration retentate.
However, Pearce discloses chlorogenic acid as being a polyphenol present in sunflower seed extract that contributes to dark, undesirable color characteristics (c. 1, l. 60 – c. 2, l. 2).
It would have been obvious to one having ordinary skill in the art to separate chlorogenic acid as part of a filtration retentate when practicing the method of Defaix et al. First, the reference indicates that filtration may be used to separate phenolic compounds without clarifying specific types of phenolic compounds (p. 9, ll. 28-30). A skilled practitioner would be motivated to consult Pearce for clarification of such types of compounds and would determine that chlorogenic acid in particular results in undesirable color characteristics (c. 1, l. 60 – c. 2, l. 2). As such, performing filtration in order to separate chlorogenic acid from the sunflower extract would be obvious to a skilled practitioner.
Conclusion
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793