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 .
Information Disclosure Statement
The information disclosure statement filed 04/02/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 111, 162. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-10 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 1 recites “at least of one of a protein and a fiber” in the hydrolyzing step. It is unclear whether this is the same protein and/or fiber as that of the initial combining step. As this appears to be the only component of the final product, the examiner will assume them to be the same components for examination purposes. For proper antecedent continuity, in the hydrolyzing step it should be amended to read “at least of one of the insoluble protein or the insoluble fiber”. As claims 2-10 depend from claim 1 they are similarly rejected.
Claim 1 further recites “in an alkaline solution or an acidic solution” in the initial step, then “in an alkaline aqueous solution or an acidic aqueous solution” in the hydrolyzing step. It is unclear whether the solution is aqueous from the initial step or if water is added to the solution at some point between those steps. The examiner is assuming the initial solution is aqueous for examination purposes. If that is the case, the claims should be amended to include consistent terminology.
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 1, 4, 6, and 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by LaPlante (WO 2018/125920 A1).
Regarding claim 1, LaPlante teaches a method comprising: combining at least one of an insoluble protein or an insoluble fiber in an alkaline solution or an acidic solution (intact protein source whether in powder form or aqueous suspension form is added to extruder Par. 0028; oat protein concentrate Par. 0029; pH within 5 to 9 Par. 0038; KOH added to raise pH, HCl added to lower pH Par. 0039). It is noted that though LaPlante is silent regarding the solubility of the proposed proteins, as applicant teaches oat protein as the insoluble protein below in claim 10, one can assume the oat protein concentrate of LaPlante is similarly insoluble.
adding a divalent cationic compound that includes at least one of a magnesium containing divalent cationic compound and a manganese containing divalent cationic compound (minerals whether in liquid or powder form are added to extruder Par. 0041; minerals suitable include magnesium, manganese, chloride, and combinations thereof Par. 0044)
hydrolyzing at least of one of a protein and a fiber in an alkaline aqueous solution or an acidic aqueous solution using at least one of heat and pressure (the protease component catalyzes the hydrolysis reaction of the intact protein source such that the emulsion formed within the extruder comprises hydrolyzed protein Par. 0045; heating the slurry Par. 0051).
Regarding producing a hydrolysate having substantially improved organoleptic properties over a hydrolysate that does not include the at least one of the magnesium containing divalent cationic compound and the manganese containing divalent cationic compound, as the invention of LaPlante teaches the same method with the same components as the claimed invention, one having ordinary skill in the art would expect the inventions to have similar organoleptic properties.
Regarding claim 4, LaPlante further teaches an alkaline compound used to produce the alkaline solution is potassium hydroxide (KOH added to raise pH Par. 0039).
Regarding claim 6, LaPlante further teaches the magnesium containing divalent cationic compound is magnesium chloride (minerals suitable include magnesium, manganese, chloride, and combinations thereof Par. 0044).
Regarding claim 8, LaPlante further teaches the manganese containing divalent cationic compound is manganese chloride (minerals suitable include magnesium, manganese, chloride, and combinations thereof Par. 0044).
Regarding claim 9, LaPlante taught a protein in the above rejection of claim 1, as the protein and fiber were listed in the alternative in claim 1 and the fiber has not since been required (i.e. wherein the at least one of a protein and a fiber is a fiber) there is no further patentable weight regarding a fiber.
Regarding claim 10, LaPlante further teaches the protein is oat protein (oat protein concentrate Par. 0029).
Claim Rejections - 35 USC § 103
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 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 2-3, 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over by LaPlante (WO 2018/125920 A1) as applied to claim 1 above in further view of Lenderink (US 2,522,050) found in applicant’s IDS filed 04/02/2024.
Regarding claim 2, LaPlante teaches calcium as an added mineral (minerals suitable for use include calcium, phosphorus, magnesium, iron, zinc, manganese, copper, sodium, potassium, molybdenum, chromium, chloride, and combinations thereof Par. 0044), but does not teach it in the form of calcium hydroxide.
Lenderlink, in the same field of endeavor, teaches calcium hydroxide as an alkaline earth salt to raise the pH of a solution (Col. 2 lines 8-62). It would have been obvious to one having ordinary skill in the art at the time of filing to apply the calcium hydroxide of Lenderlink as an added mineral used to adjust pH in the invention of LaPlante. One would have been motivated to make this modification because calcium hydroxide is very cheap and results in an aluminous product (Lenderlink Col. 2 lines 8-23).
Regarding claim 3, LaPlante teaches sodium as an added mineral (minerals suitable for use include calcium, phosphorus, magnesium, iron, zinc, manganese, copper, sodium, potassium, molybdenum, chromium, chloride, and combinations thereof Par. 0044), but does not teach it in the form of sodium hydroxide.
Lenderlink teaches hydrolysis is assisted by bases such as alkaline earth hydroxides (Col. 2 lines 8-23). It would have been obvious to one having ordinary skill in the art to apply the alkaline earth hydroxides of Lenderlink to the sodium mineral of LaPlante. One would have been motivated to make this modification to produce a product with favorable albuminous properties (Lenderlink Col. 2 lines 8-23).
Regarding claim 5, LaPlante teaches magnesium as an added mineral (minerals suitable for use include calcium, phosphorus, magnesium, iron, zinc, manganese, copper, sodium, potassium, molybdenum, chromium, chloride, and combinations thereof Par. 0044), but does not teach it in the form of magnesium hydroxide.
Lenderlink teaches alkaline earth hydroxides (Col. 2 lines 8-23) as well as magnesium hydroxide (Claims 1-5). It would have been obvious to one having ordinary skill in the art to apply the alkaline earth hydroxide, magnesium hydroxide, of Lenderlink as the Magnesium mineral of LaPlante. One would have been motivated to make this modification to produce a product with favorable albuminous properties (Lenderlink Col. 2 lines 8-23).
Regarding claim 7, LaPlante teaches manganese as an added mineral (minerals suitable for use include calcium, phosphorus, magnesium, iron, zinc, manganese, copper, sodium, potassium, molybdenum, chromium, chloride, and combinations thereof Par. 0044), but does not teach it in the form of manganese hydroxide.
Lenderlink teaches alkaline earth hydroxides (Col. 2 lines 8-23). It would have been obvious to one having ordinary skill in the art to apply the alkaline earth hydroxides of Lenderlink to the manganese mineral of LaPlante. One would have been motivated to make this modification to produce a product with favorable albuminous properties (Lenderlink Col. 2 lines 8-23).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Braun (US 20180368461 A1), discloses an invention in which an insoluble protein in an alkaline solution or an acidic solution is combined with a magnesium containing divalent cationic compound and is hydrolyzed using heat.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARIEL M RODGERS whose telephone number is (571)272-7857. The examiner can normally be reached Monday - Friday 9:00 am - 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at 5712703475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.M.R./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792