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 of the Response and Amendment after Non-Final Office Action filed 02/27/2026 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment or cancellation of the claims and/or persuasive remarks: the 35 U.S.C. §112(b) rejections of claims 12 and 15-17 have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1, 3-7, 10-12, 14-17, 19-24
Withdrawn claims: None
Previously cancelled claims: 2, 8-9, 13, 18, 25-27
Newly cancelled claims: None
Amended claims: 1, 12, 15-17
New claims: None
Claims currently under consideration: 1, 3-7, 10-12, 14-17, 19-24
Currently rejected claims: 1, 3-7, 10-12, 14-17, 19-24
Allowed claims: None
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, 3, 14-17, and 19-23 are rejected under 35 U.S.C. 103 as being unpatentable over Janow (US 2022/0151260; previously cited).
Regarding claims 1 and 14, Janow teaches a method of preparing a protein composition (corresponding to method of isolating protein) from protein powder [0048], wherein the protein powder is isolated from peas [0010]. Therefore, Janow teaches a method of preparing a pea protein composition. Janow teaches that the method comprises the steps of: (a) adding pea protein and water to a first vessel to form a first mixture [0010], [0048]; (b) adding hydrogen peroxide to the first mixture to form a second mixture; (c) heating the second mixture to a temperature of 130-200°F for a period of 10-20 minutes; and (d) isolating purified pea protein from the second mixture (corresponding to drying the mixture and/or removing fat from the mixture) [0010], [0048]-[0051]. The temperature range and time range for step (c) of the method of Janow fall within the claimed temperature and time ranges. Janow teaches that in step (a), the concentration of pea protein in the first mixture is 15-17 wt.% [0048], which falls within the claimed concentration recited by present claim 1. Janow teaches that in step (b), the concentration of hydrogen peroxide in the second mixture is 0.1 wt.% [0048], which falls within the claimed concentration recited by present claims 1 and 14.
Janow also teaches that the second mixture is agitated for 10-20 minutes after the addition of hydrogen peroxide [0048]. Although Janow discloses batch addition of the hydrogen peroxide in [0048], it would have been obvious before the effective filing date of the claimed invention to make the addition continuous over the 10-20 minutes timeframe as making a batch operation a continuous operation is a common practice which is held normally to require only ordinary skill in the art and hence is considered a routine expedient. MPEP 2144.04.V.E. Therefore, the claimed addition of the hydrogen peroxide over the recited period of time in present claim 1 is rendered obvious.
Janow further teaches that the flavor profile of the initial pea protein (i.e., the pea protein that has not been treated with hydrogen peroxide) makes the initial pea protein inferior to animal-based protein sources and that the compositions produced by the disclosed method having a unique flavor [0018]-[0019]. These disclosures at least suggest that the purified pea protein of Janow has an improved taste relative to pea protein that has not been treated with hydrogen peroxide as presently claimed, especially wherein Janow discloses using claimed steps (a)-(d) to produce its purified pea protein with the exception of batch addition of the hydrogen peroxide to the first mixture which is a step that was not shown to be critical to the claimed method. When the method steps recited in the prior art reference are substantially identical to those of the claims, claimed properties of the resulting composition are presumed to be present in the composition of the prior art. The burden of proof is shifted to the applicant to provide objective evidence (i.e., test data) to the contrary. See In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). MPEP §2112.02.I.
Regarding claim 3, Janow teaches the invention as described above in claim 1, including the concentration of protein in the first mixture is 15 wt.% [0048], which falls within the claimed concentration.
Regarding claims 15 and 16, Janow teaches the invention as described above in claim 1, including the amount of protein in the first mixture is 16-17 wt.%. [0048]; therefore, the amount of water in the first mixture is 83-84 wt.%. These values provide a range of mass ratios of water to protein of 5.25:1 to 4.9:1, which fall within the claimed mass ratio ranges recited in present claims 15 and 16.
Regarding claim 17, Janow teaches the invention as described above in claim 1, including the amount of protein in the first mixture is 15-17 wt.% and the concentration of hydrogen peroxide in the second mixture is 0.1 wt.% [0048]. These values provide mass ratios of protein to hydrogen peroxide which fall within the claimed range (e.g., a protein amount of 15 wt.% and a hydrogen peroxide amount of 0.1 wt.% provides a ratio of protein to hydrogen peroxide of 150:1).
Regarding claim 19, Janow teaches the invention as described above in claim 1, including the second mixture is agitated for 10-20 minutes [0048], which falls within the claimed time range.
Regarding claims 20 and 21, Janow teaches the invention as described above in claim 1, including the second mixture is heated to a temperature of 160°F or 180°F [0049], which fall within the claimed temperature ranges recited in present claims 20 and 21.
Regarding claims 22 and 23, Janow teaches the invention as described above in claim 1, including the second mixture is agitated [0048]. Janow discloses several methods of agitating a mixture [0033], including sonication [0027]. Therefore, agitating the second mixture by sonication as recited by present claim 22 is rendered obvious. Janow also discloses that the second mixture is agitated for 10-20 minutes [0048], which falls within the claimed time range recited by present claim 23.
Claims 1 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Janow II (US 2020/0138054; previously cited).
Regarding claim 1, Janow II teaches a method of preparing protein composition (corresponding to hydrolyzed protein product) from peas [0032], [0073]. Janow II teaches that the method comprises the steps of: (a) adding protein and water to a first vessel to form a first mixture [0074]; (b) adding hydrogen peroxide to the first mixture to form a second mixture [0078]; (c) heating the second mixture to a temperature of 190-200°F for 5-15 minutes; and (d) isolating purified protein from the second mixture (corresponding to spray drying the solution) [0081]. The temperature range and time range for step (c) of the method of Janow falls within the claimed temperature and time ranges. Janow II teaches that in step (a), the concentration of pea protein in the first mixture is 15 wt.% [0074], which falls within the claimed concentration.
Janow II teaches that in step (b), the weight ratio % of 50% hydrogen peroxide to dry weight solids (i.e., pea protein) in the second mixture may be 0.01-0.5 wt.% [0078]. These values provide concentrations of hydrogen peroxide in the second mixture that at least overlap the claimed hydrogen peroxide concentration. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.I.
Janow II also teaches that the second mixture is agitated for 10-20 minutes after the addition of the hydrogen peroxide [0078]. Although Janow discloses batch addition of the hydrogen peroxide in [0048], it would have been obvious before the effective filing date of the claimed invention to make the addition continuous over the 10-20 minutes timeframe as making a batch operation a continuous operation is a common practice which is held normally to require only ordinary skill in the art and hence is considered a routine expedient. MPEP 2144.04.V.E. Therefore, the claimed addition of the hydrogen peroxide over the recited period of time is rendered obvious.
Janow II discloses using claimed steps (a)-(d) to produce its purified pea protein with the exception of batch addition of the hydrogen peroxide to the first mixture which is a step that was not shown to be critical to the claimed method. When the method steps recited in the prior art reference are substantially identical to those of the claims, claimed properties of the resulting composition are presumed to be present in the composition of the prior art. The burden of proof is shifted to the applicant to provide objective evidence (i.e., test data) to the contrary. See In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). MPEP §2112.02.I. Therefore, Janow II is considered to at least encompass embodiments of a pea protein composition wherein the purified pea protein has an improved taste relative to the initial pea protein (i.e., pea protein that has not been treated with hydrogen peroxide) as present claimed, thereby rendering this feature obvious.
Regarding claim 4, Janow II teaches the invention as described above in claim 1, including the first mixture is agitated (corresponding to the protein powder is added to the water using a recirculating shear pump blender or other powder blending equipment) [0074].
Regarding claims 5, 6, and 7, Janow II teaches the invention as described above in claim 1, including the first mixture is heated to a temperature of 160°F or 180°F [0075], which falls within the claimed temperature ranges recited in present claims 5, 6, and 7.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Janow (US 2022/0151260; previously cited) as applied to claim 1 above, as evidenced by Lab (“Hydrogen Peroxide, Thirty Five Percent Food Grade (diluted to 34%), From Kosher”, 2024, Lab Alley, https://www.laballey.com/products/hydrogen-peroxide-34-food-grade#:~:text=Hydrogen%20Peroxide%20Thirty%20Five%20Percent%20%
28Diluted%20to%2034%25%29,34%25%20hydrogen%20peroxide%20%28H2O2%29%20and%2066%25%20water%20%28H2O%29; previously cited).
Regarding claims 10, 11, and 12, Janow teaches the invention as described above in claim 1, including the hydrogen peroxide is 34% food grade hydrogen peroxide [0048], which contains 66% water as evidenced by Lab (page 1, paragraph under “About Hydrogen Peroxide 34% Percent Food Grade”). Therefore, the hydrogen peroxide of Janow is 34 v/v% food grade hydrogen peroxide solution in water as required by present claims 10, 11, and 12 as 34 v/v% falls within the claimed concentration ranges.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Janow (US 2022/0151260; previously cited) as applied to claim 1 above, in view of FSI (“Pasteurization”, 2018, Food Source Information (FSI), https://web.archive.org/web/20180628151625/http://fsi.colostate.edu:80/faq/pasteurization/; previously cited).
Regarding claim 24, Janow teaches the invention as described above in claim 1, including the second mixture is pasteurized by further heating the mixture to a temperature of at least about 190°F [0049], which overlaps the claimed temperature range. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.I. Janow does not specify a time for the pasteurization step.
However, FSI teaches that pasteurization at temperatures of at least about 190°F occur for at least 1 second (page 1, third row of table; paragraph above table). This time frame overlaps the claimed time frame and the selection of a value within the overlapping range renders the claim obvious. MPEP 2144.05.I.
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Janow to include heating the second mixture for a time frame of at least 1 second as taught by FSI. Since Janow discloses that the second mixture is pasteurized by further heating the mixture to a temperature of at least about 190°F [0049], but does not specify a time frame for heating, a skilled practitioner would have been motivated to consult an additional reference such as FSI in order to determine a suitable time frame for heating the second mixture for pasteurization. Therefore, the claimed time frame is rendered obvious.
Response to Amendment
The Declaration under 37 CFR 1.132 filed 03/13/2026 is insufficient to overcome the rejections of claim 1 based upon the primary references Janow and Janow II as set forth in the last Office action.
Applicant stated that claim 1 requires (i) about 12 wt.% to about 18 wt.% pea protein in the first mixture; (ii) 0.05-0.15 wt.% hydrogen peroxide in the second mixture; (iii) heating the second mixture to about 130°F to about 200°F; and (iv) heating the second mixture for about 2 minutes to about 20 minutes. Applicant stated that these parameters when taken together are critical to achieving an improved taste relative to the initial pea protein that was not treated with hydrogen peroxide. Applicant stated that parameters (i) and (iii) allowed for ease of control during the reaction with hydrogen peroxide. Applicant stated that parameters (ii) and (iii) is the range in which the hydrogen peroxide concentration and the timeframe improved the taste of the pea protein. Applicant argued that variation of one of these parameters outside of the claimed ranges would result in ineffective or undesirable results. Applicant argued that Janow and Janow II mention general ranges of reaction parameters but do not provide guidance on how to choose conditions that would reliably produce improved taste of pea protein (Declaration, paragraphs 8-14).
However, the Examiner points out that Janow specifically discloses: (i) a pea protein concentration of 15-17 wt.% [0048]; (ii) a hydrogen peroxide concentration of 0.1 wt.%; (iii) a heating temperature of 130-200°F; and (iv) a heating time of 10-20 minutes [0048]-[0051], which fall within the claimed ranges recited in present claim 1. Therefore, even if Janow discloses broader ranges of these parameters, Janow also discloses specific values within these ranges which fall within the claimed ranges. The motivation to select these specific values from the disclosure of Janow is merely because Janow discloses these values, thereby providing a finite number of identified, predictable solutions with a reasonable expectation of success. MPEP §2143.I.E. For at least these reasons, the Declaration is not considered to overcome the rejections over Janow.
In relation to Janow II, the Examiner points out that Janow II specifically discloses: (i) a pea protein concentration of 15 wt.% [0048]; (iii) a heating temperature of 190-200°F; and (iv) a heating time of 5-15 minutes [0048]-[0051], which fall within the claimed ranges recited in present claim 1. Therefore, even if Janow II discloses broader ranges of these parameters, Janow II also discloses specific values within these ranges which fall within the claimed ranges. Janow II teaches the weight ratio % of 50% hydrogen peroxide to dry weight solids (i.e., pea protein) in the second mixture may be 0.01-0.5 wt.% [0078]. These values provide concentrations of hydrogen peroxide for parameter (ii) that at least overlaps the claimed hydrogen peroxide concentration. The selection of a value within the overlapping range renders the claimed hydrogen peroxide concentration obvious. MPEP 2144.05.I. The motivation to select these specific values from the disclosure of Janow II is merely because Janow II discloses these values, thereby providing a finite number of identified, predictable solutions with a reasonable expectation of success. MPEP §2143.I.E. For at least these reasons, the Declaration is not considered to overcome the rejections over Janow II.
Response to Arguments
Claim Rejections – 35 U.S.C. §112(b) of claims 12 and 15-17: Applicant amended the claims to fully address the rejections. Therefore, the rejections are withdrawn.
Claim Rejections – 35 U.S.C. §103 of claims 1, 3, 14-17, and 19-23 over Janow; claims 10-12 over Janow II as evidenced by Lab; claim 24 over Janow and FSI: Applicant’s arguments and amendments have been fully considered and are not considered to overcome the rejections.
Applicant pointed to the Declaration filed 02/27/2026 as demonstrating the criticality of the four parameters recited in present claim 1 when the parameters are taken together. Also pointed to Example 7 of the present specification for support of the claim amendment and in demonstrating that the claimed purified pea protein has an improved taste when compared to pea protein not treated with hydrogen peroxide due to the claimed pea protein being produced using the four parameters recited in present claim 1 (Applicant’s Remarks, page 5, 1st paragraph – page 6, 4th paragraph).
In response to arguments based on the Declaration, see the section labeled “Response to Amendment” written above.
In response to Applicant’s assertions that Example 7 of the present specification demonstrates that the claimed purified pea protein has an improved taste when compared to pea protein not treated with hydrogen peroxide due to the claimed pea protein being produced using the four parameters recited in present claim 1, “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).” MPEP §716.02(d)II.
Example 7 of the present specification only tests a pea protein concentration of 15 wt.% in the first mixture while present claim 1 recites a pea protein concentration from about 12 wt.% to about 18 wt.%. Therefore, not only does Example 7 not compare a sufficient number of tests both inside and outside the claimed pea protein concentration range, but Example 7 does not provide data to support the minimum and maximum endpoints of the claimed pea protein concentration range. As such, Applicant has not demonstrated criticality of the claimed pea protein concentration in the first mixture (i.e., parameter (i)). Example 7 of the present specification also only tests heating the second mixture to 180°F while present claim 1 recites a heating temperature from about 130°F to about 200°F. Therefore, not only does Example 7 not compare a sufficient number of tests both inside and outside the claimed temperature range, but Example 7 does not provide any data to support the minimum and maximum endpoints of the claimed temperature range. As such, Applicant has not demonstrated criticality of the claimed temperature for the second mixture (i.e., parameter (iii)). For at least these reasons, Applicant’s assertion regarding the criticality of the combination of the four parameters are not supported by the data.
Since the prior art has been shown to render the claims obvious and Applicant’s arguments have been shown to be unpersuasive, the rejections of the claims are maintained as written herein.
Claim Rejections – 35 U.S.C. §103 of claims 1 and 4-7 over Janow II: Applicant’s arguments and amendments have been fully considered and are not considered to overcome the rejections.
Applicant reiterated the arguments made with respect to the claim rejections over Janow II (Applicant’s Remarks, page 6, 5th paragraph – page 7, 3rd paragraph).
In response to arguments based on the Declaration, see the section labeled “Response to Amendment” written above.
In response to arguments regarding the Applicant demonstrating criticality of the four parameters recited in present claim 1 in Example 7 of the present specification, see the response to arguments written above in relation to rejections based on Janow.
Since the prior art has been shown to render the claims obvious and Applicant’s arguments have been shown to be unpersuasive, the rejections of the claims are maintained as written herein.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kelly Kershaw whose telephone number is (571)272-2847. The examiner can normally be reached Monday - Thursday 9:00 am - 4:00 pm.
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/KELLY P KERSHAW/Examiner, Art Unit 1791
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