DETAILED ACTION
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
Receipt is acknowledged of the amendment and response filed 2/23/3026. Claims 2,4 and 7-11 are pending in the application. Claims 2,4,7 and 8 were amended, claims 1,3,5 and 6 were canceled and new claim 11 was added.
Response to Arguments
Claim amendments render the previous rejection of claims under 35 USC 112(b) and 35 USC 103 moot.
Applicant’s arguments have been considered and are partially persuasive.
However, applicant’s arguments are not commensurate with the scope of the claimed invention.
The open-ended transitional phrase “comprising” in independent claim 2 does not preclude additional steps. The term “optionally” in e) is confusing, as subsequent steps require the limitation in step e).
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 2,11 and dependent claims are 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 2 recites a method “comprising the following steps”. The open-ended transitional phrase “comprising” does not preclude additional steps in obtaining pea protein fractions. There is subject matter within parentheses in line 2 and line 7. It is unclear whether this subject matter is a part of the claim limitations. Line 11 has the phrase “the precipitation” without antecedent basis. Line 15 has “optionally carrying out a nanofiltration process”. However, subsequent steps require the nanofiltration retentate. Line 20 recites “a more protein-rich” which is a relative term rendering the claim indefinite. One of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate correction is needed.
Claim 11 has subject matter within parentheses, and the term “obtainable” which only indicates a possibility. Further, the claim is a product by process claim. A product by process claim is not limited by manipulations of process steps, but by the structure implied by the steps, which in this case is a low molecular weight water soluble pea protein. The claimed product is only defined by molecular weight distribution and water solubility, and may therefore be produced by methods other than the claimed method. One of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate correction is required.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Subbalakshmi Prakash whose telephone number is (571)270-3685. The examiner can normally be reached Monday-Friday.
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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/SUBBALAKSHMI PRAKASH/Primary Examiner, Art Unit 1793
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