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 .
Claims1-9 of 12/6/2023 are pending and examined
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 1-7 and 9 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 1-2, 4-5, 7 recites the term “high protein soy white flakes” and /or “high protein soybeans”
The term “high protein” in claims is a relative term which renders the claim indefinite. The term “high protein” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In the instant case, the recitation of “high protein” in relation to the soybeans and their products without any reference to a standard protein content or without any guidance to a typical proportion, or a percentage or a range of protein as present in soybeans renders the claim indefinite. Correction and/or clarification is required.
For the purposes of this office action the claimed term “high protein” will not be considered.
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 1-2, 6-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over IDS references to Anderson (US 20220213365A1), hereinafter D1.
Regarding claims 1 and 9, D1 teaches a method of processing soy (Para 4), comprising: providing high protein soy white flakes (Para 4 and abstract); milling the high protein soy white flakes to provide milled high protein soy white flakes(Para 6 and abstract); and processing the milled high protein soy white flakes using air classification (para 29) to directly provide a soy product comprising at least about 60 wt. % protein on a dry weight basis (Abstract , para 4 both teach about 50wt.% to 60 wt.% dry protein), which overlaps the claimed range.
Regarding the overlapping of ranges between the invention and prior art composition it is noted that in the case where the claimed ranges "overlap or lie inside the ranges disclosed by the prior art" a prima facie case of obviousness exists (In re Wertheim, 541 F2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)).
Regarding claim 2 D1 teaches a method of claim 1, wherein the high protein soy white flakes comprise at least about 55 wt.% protein on a dry weight basis Abstract , para 4 both teach about 50wt.% to 60 wt.% dry protein).
Regarding claim 6 D1 teaches a method of claim 1, wherein the soy product comprises less than 35 wt. % carbohydrates (Abstract , para 4 both teach less than 35 wt.% carbs).
Regarding claim 7 D1 teaches a method of claim 1, wherein processing the milled high protein soy white flakes using air classification does not comprise the use of a solvent wash (Para 29 where there is air classification without solvent wash).
Claims 3-5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over IDS references to Anderson (US 20220213365A1), hereinafter D1 in view of NPL to JE Van Eys “Manual of quality analysis”, hereinafter NPL.
Regarding claims 3 and 4 D1 teaches a method of claim 1, wherein providing the high protein soy white flakes comprises providing high protein soybeans and processing the high protein soybeans to provide high protein soy white flakes (Para 6 and 28-29 teach a process for extracting high protein white flakes). Further NPL page B2 teaches the method of making soybean based products including by milling to achieve soy white flake products like soy protein isolate and concentrates. NPL also teaches the availability of high quality soybean products that after removing most of the oil and water soluble non-protein constituents, contains not less than 65% protein on a moisture free basis (Page C-2, item # 12 and D2, Table 3), i.e., process for obtaining high protein soy product, like white flakes, soy protein concentrate or soy protein isolates wherein the protein content can be between about 60 wt. % and about 70 wt. % protein on a dry weight basis was known before the effective filing date of the invention as taught by NPL pages C-2 and D-2. Further, choosing an available high protein soybean variety was well within the purview of one of ordinary skill before the effective filing date of the invention to achieve a higher protein end product, i.e., white flake products having between about 60 wt. % and about 70 wt. % protein on a dry weight basis. One of ordinary skill in the art at the time of effective filing date of the invention would be motivated to modify Anderson and utilize a variety of soy that is known for its high protein content and make white flake products at least for the purpose of providing a vegetable based higher protein product.
Regarding claims 5 D1 teaches method of claim 4, wherein the high protein soybeans comprise at least about 48 wt. % protein on a dry weight basis (Abstract where about 50- about 60 wt.% protein is taught). Also see protein quality information in NPL page H6 onwards in section 8.4.
Regarding claim 8, D1 teaches a method of making a soy product, the method comprising: coarsely milling soy flakes to produce a milled soy powder; and fractionating the milled soy powder (Abstract, Para 29, where he dried soy flakes can be coarsely ground, by a grinder or milling process, and then fractionated out, such as by air classification or sieving) to produce the soy product comprising: less than 35.0 wt. % carbohydrates (abstract and para 4); and an increased amount of protein in a dispersible fraction of the soy product, compared to the amount of protein in a dispersible fraction of a defatted soy flake having the same starting protein dispersibility index (abstract).
Regarding the soy product comprising “from about 60 wt. % to about 70 wt. % protein on a dry weight basis”, Anderson teaches about 50 to about 60 wt.% soy protein and providing the high protein soy white flakes comprises providing high protein soybeans and processing the high protein soybeans to make a protein soy products in (abstract, Para 4, Para 6 and 28-29), where the protein content of soy product overlaps the range of about 60 wt.% part of the range.
Regarding the overlapping of ranges between the invention and prior art composition it is noted that in the case where the claimed ranges "overlap or lie inside the ranges disclosed by the prior art" a prima facie case of obviousness exists (In re Wertheim, 541 F2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)).
Further, regarding the higher protein soy product, reference is made to the NPL where the process for obtaining high protein white flake products like soy protein concentrate is taught (B-2, flowchart, C-2, item #12 and D-2 table 3) such that soy white flake products having between about 60 wt. % and about 70 wt. % protein on a dry weight basis protein content was known before the effective filing date of the invention as taught by NPL pages C-2 and D-2. Further, choosing an available high protein soybean variety was well within the purview of one of ordinary skill before the effective filing date of the invention to achieve a higher protein end product, i.e., white flake products having between about 60 wt. % and about 70 wt. % protein on a dry weight basis. One of ordinary skill in the art at the time of effective filing date of the invention would be motivated to modify Anderson and utilize a variety of soy that is known for its high protein content and make white flake products at least for the purpose of providing a vegetable based higher protein product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JYOTI CHAWLA whose telephone number is (571)272-8212. The examiner can normally be reached M-F 9:30- 5:30.
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/JYOTI CHAWLA/Primary Examiner, Art Unit 1791