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 .
The amendment filed January 7, 2026 is acknowledged. Claims 1-21 are pending in the application. Claim 7 has been withdrawn from consideration.
Claim Rejections - 35 USC § 102/103
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.
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 8-13 and 19-21 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Shima et al. CN 107105723 (hereinafter “Shima”) (refer to corresponding machine translation).
Claims 8-13 and 19-21 relate to a pulse protein composition obtained by a method. Applicant is reminded that “[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, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113).
Additionally, "[t]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
With respect to independent claim 13 and dependent claims 8-12 and 19-21, it is Examiner’s position that the broadest reasonable interpretation of the product encompassed by these product-by-process claims includes a milled, pulse protein composition, and the steps of hydrating, leaving, and removing as claimed do not appear to impart distinctive structural characteristics to the final product. Shima teaches a protein powder made from beans, peas, and mung beans (paragraphs [0060]-[0061]). Thus, it is reasonable to assert that the powder protein of Shima is substantially similar to the presently claimed pulse protein composition, absent any clear and convincing evidence to the contrary. Applicant is reminded that the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979).
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 1-6 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Shima et al. CN 107105723 (hereinafter “Shima’) (refer to the corresponding machine translation).
With respect to claim 1, Shima teaches a proteins from beans, peas, and mung beans (paragraph [0060]).
Regarding the limitation of a protein content of at least 60 wt% based on dry matter as recited in claim 1, Shima teaches the protein material on dry basis is at least 60 wt% (paragraph [0063]).
Regarding the limitation of a nitrogen solubility index at a pH ranging from 4.5 to 5.5 of at most 20% and a nitrogen solubility index at pH of 3.5 of at least 20% as measured on an aqueous composition comprising 3 wt% of said pulse protein composition based on the total weight of the aqueous composition as recited in claim 1, Shima teaches the protein has a nitrogen solubility index of 10% to 70% at a pH of 3 to 5 (paragraphs [0068]-[0069]), and the ranges of Shima overlap with those as presently claimed. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding the limitation of and an enthalpy of at least 4.5 (∆H J/g) measured by Differential scanning calorimetry as recited in claim 1, Shima does not expressly disclose this limitation. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the enthalpy of the protein of Shima through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because the enthalpy of a composition is a variable that can be modified by adjusting the temperature of the composition, Shima teaches the proteins are used as physical property improving materials (paragraph [0004]), and the claimed enthalpy is not seen as critical in absence of unexpected results. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
With respect to claim 2, Shima is relied upon for the teaching of the pulse protein of claim 1.
Regarding the limitation of characterized in that by having a nitrogen solubility index at a pH of at least 7 of at least 70% as recited in claim 2, Shima teaches the protein has a nitrogen solubility index of 10% to 80% in water (pH 7) (paragraphs [0067] and [0077]), and the ranges of Shima overlap with the presently claimed ranges. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 3, Shima is relied upon for the teaching of the pulse protein of claim 1.
Regarding the limitation of characterized in that by having an enthalpy of at least 5.5 measured by Differential scanning calorimetry as recited in claim 3, Shima does not expressly disclose this limitation. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the enthalpy of the protein of Shima through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because the enthalpy of a composition is a variable that can be modified by adjusting the temperature of the composition, Shima teaches the proteins are used as physical property improving materials (paragraph [0004]), and the claimed enthalpy is not seen as critical in absence of unexpected results. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
With respect to claim 4, Shima is relied upon for the teaching of the pulse protein of claim 1.
Regarding the limitation of having a viscosity below 2000 cP at pH 6.5 as recited in claim 4, Shima does not expressly disclose this limitation. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the viscosity of the protein of Shima through routine optimization with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because the viscosity of a composition is a variable that can be modified by adjusting the moisture content of the composition, Shima teaches the proteins are maintained at a low viscosity (paragraph [00045]), and the claimed viscosity is not seen as critical in absence of unexpected results. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
With respect to claim 5, Shima is relied upon for the teaching of the pulse protein of claim 1.
Regarding the limitation of characterized in that the pulse protein composition has an emulsion capacity of at least 600 g oil/g protein as recited in claim 5, Shima does not expressly disclose this limitation. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the emulsion capacity of the protein of Shima through routine optimization with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because the emulsion capacity of a composition is a variable that can be modified by adjusting the temperature or pH of the composition, Shima teaches the protein has excellent emulsification properties with oils and fats (paragraph [00045]), and the claimed emulsion capacity is not seen as critical in absence of unexpected results. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
With respect to claim 6, Shima is relied upon for the teaching of the pulse protein of claim 1.
Regarding the limitation of has a gel strength of at most 150 g as recited in claim 6, Shima does not expressly disclose this limitation. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the gel strength of the protein of Shima through routine optimization with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because the gel strength of a composition is a variable that can be modified by adjusting the temperature or pH of the composition, Shima teaches the proteins are used as physical property improving materials (paragraph [0004]), and the claimed gel strength is not seen as critical in absence of unexpected results. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
With respect to claim 14, Shima teaches an edible composition (paragraph [0002]).
Regarding the limitation of comprising the pulse protein composition according to claim 1 as recited in claim 14, Shima teaches a foodstuff comprising protein (paragraph [0002]). Additionally, Shima is relied upon for the teaching of the pulse protein composition of claim 1 as addressed above. Thus, the teachings of Shima meet the presently claimed invention.
With respect to claim 15, Shima teaches a food or feed product (paragraph [0002]).
Regarding the limitation of comprising the pulse protein composition according to claim 1, wherein the food or feed product is one of the listed components in claim 15, Shima teaches an acid beverage comprising the protein (paragraph [0002]). Additionally, Shima is relied upon for the teaching of the pulse protein composition of claim 1 as addressed above. Thus, the teachings of Shima meet the presently claimed invention.
With respect to claim 16, Shima is relied upon for the teaching of the pulse protein of claim 1.
Regarding the limitation of characterized in that by having a nitrogen solubility index at a pH of at least 7 of at least 80% as recited in claim 16, Shima teaches the protein has a nitrogen solubility index of 10% to 80% in water (pH 7) (paragraphs [0067] and [0077]), and the ranges of Shima overlap with the presently claimed ranges. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 17, Shima is relied upon for the teaching of the pulse protein of claim 1.
Regarding the limitation of having a viscosity below 1800 cP at pH 6.5 as recited in claim 17, Shima does not expressly disclose this limitation. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the viscosity of the protein of Shima through routine optimization with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because the viscosity of a composition is a variable that can be modified by adjusting the moisture content of the composition, Shima teaches the proteins are maintained at a low viscosity (paragraph [00045]), and the claimed viscosity is not seen as critical in absence of unexpected results. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
With respect to claim 18, Shima is relied upon for the teaching of the pulse protein of claim 1.
Regarding the limitation of characterized in that the pulse protein composition has a gel strength of at most 130 g as recited in claim 18, Shima does not expressly disclose this limitation. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the gel strength of the protein of Shima through routine optimization with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because the gel strength of a composition is a variable that can be modified by adjusting the temperature or pH of the composition, Shima teaches the proteins are used as physical property improving materials (paragraph [0004]), and the claimed gel strength is not seen as critical in absence of unexpected results. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
Response to Arguments
Applicant’s remarks filed January 7, 2026 are acknowledged.
Due to the amendments to the claims, the 35 USC 112 rejection in the previous Office Action have been withdrawn (P6).
Applicant’s arguments have been fully considered but they are unpersuasive.
Applicant argues Shima does not anticipate or render obvious the protein product of claims 8-13. Shima explicitly indicates that the protein which is used is at least partially hydrolyzed. The claimed protein product is not hydrolyzed. It cannot be concluded that the Examiner has complied with the required rationale that the prior art discloses a product which reasonably appears to be either identical/similar with the claimed product-by-process. There is no indication in Shima that the characteristics of the invention are present or that they could even be achieved, let alone all combined (P6-P7).
Examiner disagrees. As addressed above, the broadest reasonable interpretation of the product encompassed by product-by-process claims 8-13 and 19-21 includes a milled, pulse protein composition, and the steps of hydrating, leaving, and removing as claimed do not appear to impart distinctive structural characteristics to the final product. Shima teaches a protein powder made from beans, peas, and mung beans (paragraphs [0060]-[0061]). Thus, it is reasonable to assert that the powder protein of Shima is substantially similar to the presently claimed pulse protein composition. Additionally, Applicant has failed to demonstrate that the product of Shima is not substantially similar to the milled, pulse protein composition of claims 8-13 and 19-21. Applicant is reminded that [e]ven though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patentability of a product does not depend on its method of production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a product-by-process claim is the same or obvious as the product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.). See MPEP 2113 and 2114. Additionally, the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979).
Applicant argues that the Examiner is not correct in their conclusion that each of the claimed parameters could be obtained by routine optimization. In Applicant’s opinion, the Examiner merely makes conclusory statements, without any indication how the skilled person would be able to achieve the claimed subject-matter in a “routine” manner. The Examiner’s reasoning at best is entirely based on hindsight. The cited prior art in no way teaches or suggests how to arrive at the claimed subject matter. It could not have been expected that a combination of several characteristics in a pulse protein composition is even achievable. It therefore cannot be concluded that the claimed combination is based on a reasonable expectation of success. Applicant maintains that the Examiner has not met the burden of proof for concluding that the claimed subject-matter results from mere routine operations. Even if theoretically the claimed subject-matter might be achievable, there is no motivation in the prior art to do so. The skilled person lacks any incentive to come to the claimed subject-matter, contrary to Examiner’s allegation (P7-P9).
Examiner disagrees. The claimed invention is obvious in view of Shima. Applicant is reminded that it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Additionally, the Examiner recognizes that obviousness may be established by modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the reference or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation to modify the teachings of Shima is found within the reference as well as in the knowledge generally available to one of ordinary skill in the art.
Contrary to Applicant’s assertion, Shima suggests to one of ordinary skill in the art how to arrive at the claimed subject-matter. As previously addressed, one of ordinary skill in the art would have been motivated to optimize the characteristics, including enthalpy, of the protein of Shima through routine experimentation with the expectation of success because the enthalpy of a composition is a variable that can be modified by adjusting the temperature of the composition, Shima teaches the proteins are used as physical property improving materials (paragraph [0004]), and the claimed enthalpy is not seen as critical in absence of unexpected results. “[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) (MPEP 2144.05 II).
Applicant is reminded that 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). However, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).
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 TYNESHA L. MCCLAIN whose telephone number is (571)270-1153. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM ET.
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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