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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04 September 2026 has been entered.
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.
Claims 1, 4, 6, and 8-15, are rejected under 35 U.S.C. 103 as being unpatentable over Akashe et al. (herein referred to as Akashe, WO 2008/088973 A2) in view of Baumer et al. (herein referred to as Baumer, US 20050220979 A1) and Coote et al. (herein referred to as Coote, US 20020044999 A1)
With regard to Claim 1, Akashe teaches a heat stable soymilk concentrate ([0001]) wherein the soymilk concentrate is a protein-containing oil-and-fat emulsion composition ([0013]). Akashe teaches the composition contains protein in an amount of 15 to about 20 percent hydrolyzed soy protein isolate having a molecular weight distribution between 5,500 and 30,000 daltons ([0013]). Thus, the soy protein isolate taught by Akashe satisfies the requirement of (a). Akashe teaches the composition does not contain a carbohydrate and thus reads on the claimed proportion of instant claim 1 ([0013]).
In addition, Akashe teaches the composition contains 5 to about 15% of an edible oil and 65 to about 75 percent water ([0013]). Adjusting the percentages above in accordance with the total amount of the protein, the oil and fat, and the carbohydrate being 100 mass %, the composition contains 50 to 80% protein and 14 to 50% edible oil.
However, the ranges for protein and oil/fat taught by Akashe are outside the instant claim ranges.
Coote teaches a composition suitable for preparing an oil in water emulsion ([0001]). Coote teaches the composition contains 0 to 20 parts by weight of a protein ([0022]). Further, with regard to the protein, Coote teaches the amount of protein in the composition according to the invention is from 0 to 20 parts by weight, preferably from 0.1 to 5 parts by weight, more preferred from 0.3 to 3 parts by weight. Even more preferred the amount of protein is from 1 to 6 wt. %, more preferred from 1.5 to 3 wt. % ([0062])
Coote teaches the composition contains 0-100 parts by weight of a fat or fat blend ([0022]). Coote teaches the terms "fat" and "oil" are used interchangeably ([0027]). Further Coote teaches the amount of fat or fat blend which is optionally present is from 0 to 100 parts by weight, preferably from 20 to 80 parts by weight, more preferably 30 to 70 parts by weight, even more preferred from 40 to 60 parts by weight. Even more preferred are fat levels of from about 60 to about 96 wt. % fat ([0059]). Coote teaches the relative amounts of the ingredients of the composition according to the invention are dependent on the type of final oil in water emulsion that is desired ([0063]). See MPEP 2144.05(I) In the case where the claimed ranges "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).
Coote teaches the composition is easily transported and not easily contaminated during storage ([0029]).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Akashe (the examiner would like to highlight that Akashe teaches the emulsion may be an oil-in-water emulsion) to include protein and a fat or fat blend in the amounts as taught by Coote to achieve the desired emulsion. In addition, achieve an advantageous compositions that is easily transported and not easily contaminated during storage.
However, Akashe is silent to the soy protein isolate being denatured.
Baumer teaches food materials containing a high concentration of vegetable protein and processes for their manufacture (abstract). Baumer teaches an emulsion product containing a soy protein product ([0111]). Baumer teaches for the soy protein product it is desired that at least one of the soy protein materials exhibits low viscosity and low gelling properties. Baumer teaches the viscosity and/or gelling properties of a soy protein isolate may be decreased by partial hydrolysis which partially denatures the protein materials ([0029], [0031]).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Akashe in view of Baumer to denature the protein isolate to decrease the viscosity and/or gelling properties of a soy protein isolate. It would have been obvious to one with ordinary skill in the art that, through routine experimentation, the amount of denatured protein can be modified to achieve the desired viscosity and/or gelling properties of a soy protein isolate. See MPEP 2144.05(II)(A) "[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).
With regard to limitation (b), it can be reasonably amused that because the above prior art references satisfies the claims limitations, the above art also satisfies limitation (b). See MPEP 2112.01(I) 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. And MPEP 2112.01(II) "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
With regard to Claim 4, Akashe teaches the composition contains protein in an amount of 15 to about 20 percent hydrolyzed soy protein isolate having a molecular weight distribution between 5,500 and 30,000 daltons ([0013]).
With regard to Claim 6, Akashe the protein-containing oil-and-fat emulsion composition is free of a milk protein (whole document). It is important to note Akashe teaches dairy oil or vegetable oil may be used as the oil and fat component, but Akashe does not teach using milk protein ([0013]).
With regard to Claim 8, Akashe teaches the protein-containing oil-and-fat emulsion composition is free of an animal protein (whole document).
With regard to Claim 9, Akashe teaches all the limitations of instant claim 1. In addition, Akashe teaches the solubility of the protein is directly related to how hydrolyzed the soy protein is ([0028]). One with ordinary skill in the art would recognize that solubility and OD have an inverse relationship being the more soluble the protein the lower the OD reading. Therefore, because the prior art teaches the product as claimed, the product taught by the prior art inherently has the OD claimed in the instant application. See MPEP 2112.01(II) "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
With regard to Claims 10 and 11, Akashe teaches all the limitations of instant claim 1. In addition, Akashe teaches the solubility of the protein is directly related to how hydrolyzed the soy protein is ([0028]). One with ordinary skill in the art would recognize that solubility and OD have an inverse relationship being the more soluble the protein the lower the OD reading. Therefore, because the prior art teaches the product as claimed, the product taught by the prior art inherently has the OD claimed in the instant application. See MPEP 2112.01(II) "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
With regard to Claim 12, Akashe teaches the protein-containing oil-and-fat emulsion composition for producing an emulsified food (title, [0061]-[0063] Akashe teaches an emulsified soy milk concentrate used in soymilk and creamers).
With regard to Claim 13, Akashe teaches the protein-containing oil-and-fat emulsion composition for producing an emulsified food (title, [0061]-[0063] Akashe teaches an emulsified soy milk concentrate used in soymilk and creamers).
With regard to Claim 14, Akashe teaches a heat stable soy milk concentrate ([0001]). Akashe teaches beverage concentrates are often utilized in a cartridge or pod to provide regular strength beverages when diluted by the beverage system ([0002]). Therefore, the concentrate taught by Akashe can be used in any amount to achieve the desired end product such as a “regular (i.e., desired) strength beverage. See MPEP 2144.05(II)(A) "[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).
With regard to Claim 15, Akashe teaches a heat stable soy milk concentrate ([0001]). Akashe teaches beverage concentrates are often utilized in a cartridge or pod to provide regular strength beverages when diluted by the beverage system ([0002]). Therefore, the concentrate taught by Akashe can be used in any amount to achieve the desired end product such as a “regular (i.e., desired) strength beverage. See MPEP 2144.05(II)(A) "[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).
Claims 3 are rejected under 35 U.S.C. 103 as being unpatentable over Akashe (WO 2008/088973 A2) in view of Baumer. (US 20050220979 A1), Coote (US 20020044999 A1) and Hiroshi et al. (herein referred to Hiroshi, WO 2019189810 A1)
With regard to Claim 3, Akashe teaches the composition contains protein in an amount of 15 to about 20 percent hydrolyzed soy protein isolate having a molecular weight distribution between 5,500 and 30,000 daltons ([0013]) but is silent to wherein the denatured protein material further satisfies that an area ratio of components having a molecular weight of less than 2000 Da to the total area is 45% or less.
Hiroshi teaches the area ratio of less than 2000 Da is preferably 15% or less, 13% or less, 9% or less, 8% or less, 7% or less wherein the lower limit is not particularly limited ([0020]). Having such a molecular weight distribution of the vegetable protein can contribute to the size of the emulsified particles of the present emulsified composition ([0020]). Hiroshi teaches the particle size is directly related to the emulsion stability ([0032])
Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Akashe in view of Hiroshi so the area ratio of components having a molecular weight of less than 2000 Da to the total area is 45% or less to have a molecular weight distribution of the vegetable protein that can contribute to the size of the emulsified particles of the present emulsified composition to achieve the desired emulsion stability.
With regard to Claim 5, Akashe teaches the composition contains protein in an amount of 15 to about 20 percent hydrolyzed soy protein isolate having a molecular weight distribution between 5,500 and 30,000 daltons ([0013]) but is silent to wherein the denatured protein material further satisfies that an area ratio of components having a molecular weight of less than 2000 Da to the total area is 45% or less and an area ratio of components having a molecular weight of 10000 Da or greater to the total area is less than 50%.
Hiroshi teaches the area ratio of the molecular weight distribution is 50 to 80% at 10,000 Da or more and the area ratio of less than 2000 Da is preferably 15% or less, 13% or less, 9% or less, 8% or less, 7% or less wherein the lower limit is not particularly limited ([0020]). Having such a molecular weight distribution of the vegetable protein can contribute to the size of the emulsified particles of the present emulsified composition ([0020]). See MPEP 2144.05(I) which 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)” and "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties." In addition, Hiroshi teaches the particle size is directly related to the emulsion stability ([0032])
Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Akashe in view of Hiroshi so the area ratio of components having a molecular weight of less than 2000 Da to the total area is 45% or less and 10000 Da or greater to the total area of 50% to have a molecular weight distribution of the vegetable protein that can contribute to the size of the emulsified particles of the present emulsified composition to achieve the desired emulsion stability. One with ordinary skill in the art would understand 50% and less than 50% (i.e., 49.9%) are so close that it would be reasonable to expect the same result.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
First, The information disclosure statement (IDS) submitted on 24 July 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Applicant amended claim 1 to recite “that the protein-containing oil-and-fat emulsion composition comprises 1 to 7.4 mass% of a protein; 92.6 to 99 mass% of an oil and fat; and 0 to 40 mass% of a carbohydrate, based on the total amount of the protein, the oil and fat, and the carbohydrate being 100 mass%.” As a result of the amendment, Hiroshi is no longer relied upon to teach the claimed ranges of the protein and the oil and fat. Now, Coote is relied upon to teach the claimed ranges. With regard to Akashe being outside the claimed range, Coote provides ample motivation to modify the ranges of Akashe to achieve the desired emulsion wherein the emulsion is easily transported and not easily contaminated during storage. Thus, any arguments with regard to Hiroshi are moot.
Thus, applicant’s arguments file 04 September 2026 are not found to be persuasive.
Conclusion
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/K.I.D./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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