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 .
This office action is in response to the application filed on September 15, 2023. The earliest effective filing date of the application is April 7, 2021.
Priority
The present application is a 371 National Stage Application of PCT/JP2022/016554 which has a filing date of March 31, 2022.
Status of Application
The preliminary amendment filed December 10, 2025 with the Remarks has been entered. The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1 – 3, 5, and 6
Withdrawn claims: None
Amended claims: 1 and 2
Newly cancelled claims: 4
Claims currently under consideration and examination: 1 – 3, 5, and 6
The status of the objections and rejections regarding the disclosure upon entry of the present amendment stands as follows:
Objections: The previous objections of claims 1 and 2 are withdrawn in light of applicant’s amendments. A new objection to claim 1 is presented below.
Withdrawn Rejections: The rejection under 35 U.S.C. § 101 of claims 1 – 3 has been withdrawn. The rejection under 35 U.S.C. § 102(a)(1) of claims 1 – 3 over Ontario Bean Growers has been withdrawn. The rejections claim 4 have been withdrawn due to the cancellation of claim 4.
35 U.S.C. § 102 Rejections: The rejection under 35 U.S.C. § 102(a)(1) of claims 1 and 2 over Bijoux & Bits is maintained.
35 U.S.C. § 103 Rejections: The rejection under 35 U.S.C. § 103 of claims 1 – 3 and 6 over Rodriguez is maintained.
Claim Interpretation
Claim 1 recites “an extracted protein of a white Phaseolus vulgaris bean or a Vigna mungo bean”. The instant specification states the extracted protein of a bean according to the present invention refers to a protein extracted from a bean ([0015]). The instant specification also states an extracted protein of a bean of the species white Phaseolus vulgaris or the species Vigna mungo is prepared by a method such as purchasing a commercially available extracted protein of a bean or extracting a protein from a bean raw material in accordance with a conventional method ([0025]). While an extracted protein of a bean may be obtained or prepared by a certain method, in product claims, the protein resulting from the process is considered, not the method of making the protein. See MPEP § 2113.I. There is no material difference between an extracted protein as described by the instant disclosure and proteins naturally present in a bean. Therefore, “an extracted protein of a white Phaseolus vulgaris bean or a species Vigna mungo bean” is interpreted broadly to mean any protein any white Phaseolus vulgaris bean or Vigna mungo bean may have, regardless of its original source.
Claims 1 – 3, 5, and 6 recite “egg-substitute”. MPEP § 2111.02.II teaches, “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” In the instant case, the term “egg-substitute” merely states the purpose or intended use of the claimed composition. Therefore, the term “egg-substitute” does not limit the claim.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “3 mass% or 15 mass% of less of a lipid”, which appears to be a misspelled recitation from cancelled claim 4, given the previous claim language, and Applicant’s arguments filed on December 10, 2025. For the purpose of examination, the recitation is interpreted to be “3 mass% or more and 15 mass% or less of a lipid”.
Appropriate correction is required.
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 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bijoux & Bits (Easy garlic white bean puree. Bijoux & Bits. (2018) Retrieved from: https://www.bijouxandbits.com/2018/01/easy-garlic-white-bean-puree/) as evidenced by The Spruce Eats (Simple Guide: 50g Butter in Tablespoons. The Spruce Eats. (2025) Retrieved from: https://www.thespruceeats.com/butter-conversion-gram-tbsp-256217), The Kitchen (Unraveling the mystery: The weight of a single garlic clove. The Kitchen. (2024) Retrieved from: https://www.thetrough.ca/how-much-does-a-clove-of-garlic-weigh/), Serious Eats (Can I Substitute Dried Beans for Canned? Serious Eats (2023) Retrieved from: https://www.seriouseats.com/is-there-a-ratio-for-converting-between-dried), and Nutritionix (Cooked Cannellini Beans. (n.d.) Retrieved from: https://www.nutritionix.com/food/cooked-cannellini-beans).
Regarding claims 1 and 2, Bijoux & Bits teaches a garlic and white bean puree (i.e., liquid) comprising:
3 Tbsp unsalted butter (42 g, as evidenced by The Spruce Eats (p. 1, Image));
3 garlic cloves, minced (9 g, as evidenced by The Kitchen (p. 4, Table: One raw garlic clove));
1/2 tsp dried thyme;
1/2 tsp garlic powder;
Two 15-ounce cans cannellini (i.e., white kidney beans, which are Phaseolus vulgaris beans), drained and rinsed (510 g, as evidenced by Serious Eats (p. 3, paragraph 5));
1 cup low-sodium vegetable broth (i.e., 237 g); and
Salt and black pepper (p. 5, Ingredients).
According to the amounts taught by Bijoux & Bits, the total composition weighs about 798g. As evidenced by Nutritionix, cooked cannellini beans (i.e., white kidney beans, which are Phaseolus vulgaris beans) comprise 9.5 wt% protein. Based on the proportions of ingredients taught by Bijoux & Bits, the garlic and white bean puree comprises 6 wt% bean protein. Based on the proportions of ingredients taught by Bijoux & Bits, the garlic and white bean puree comprises 5 wt% butter (i.e., lipid).
Bijoux & Bits also teaches the puree has the consistency of a creamed soup (p. 7 – 8, Jan’s comment). Therefore, the puree of Bijoux & Bits is a liquid.
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, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Rodriguez (US 20150313269 A1) in view of Sathe et al. (Functional Properties of the Great Northern Bean (Phaseolus vulgaris L.) Proteins: Emulsion, Foaming, Viscosity, and Gelation Properties. Journal of Food Science. Volume 46. (1981)).
Regarding claims 1 and 2, Rodriguez teaches a liquid egg-substitute composition (Abstract; [0048]). Rodriguez teaches the liquid egg-substitute composition comprises from about 5 to 20 wt% protein ([0053]). Rodriguez teaches the protein may be from legumes such as pulses and lentils ([0054]). Rodriguez teaches the plant-based proteins may be provided as a concentrate or fraction – [0055]). Rodriguez teaches the liquid egg-substitute composition comprises 0.1 – 30 wt% fat (i.e., lipid – [0059]).
The range of protein weight percent in the liquid egg-substitute, 5 to 20 wt%, as disclosed by Rodriguez, overlaps with the claimed range of 6 to 17 wt%. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
The range of fat weight percentage in the liquid egg-substitute, 0.1 – 30 wt%, as disclosed by Rodriguez, overlaps with the claimed range of 3 – 15 wt%. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Rodriguez does not teach the protein is a white Phaseolus vulgaris bean protein.
Sathe teaches a Great Northern bean globulin isolate (i.e., an extracted protein of a white bean of a Phaseolus vulgaris – p. 1, paragraph 4). Sathe teaches the Great Northern bean globulin isolate (i.e., an extracted protein of a white bean of a Phaseolus vulgaris) has significant whipping volume compared to other Great Northern bean protein compositions at low concentrations (Figure 6). Sathe also teaches while none of the protein compositions show greater whipping stability than egg albumin, the Great Northern bean globulin isolate (i.e., an extracted protein of a white bean of a Phaseolus vulgaris) had the greatest stability among the other bean protein compositions (p. 4, paragraph 1). Sathe teaches the Great Northern bean protein concentrate (i.e., an extracted protein of a white bean of a Phaseolus vulgaris) is most comparable to egg albumin (p. 4, paragraphs 1 – 2).
Rodriguez and Sathe are combinable because they are concerned with the same field of endeavor, namely, bean proteins suitable for egg substitution. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used Great Northern bean globulin isolate (i.e., an extracted protein of a white bean of a Phaseolus vulgaris) as the plant-protein in the composition of Rodriguez, as taught by Sathe, because Great Northern bean globulin isolate (i.e., an extracted protein of a white bean of a Phaseolus vulgaris) is a legume protein that provides whipping properties comparable to egg albumin while remaining vegan.
Regarding claim 6, Rodriguez teaches the liquid egg-substitute composition is poured into a skillet and cooked on each side for 35 seconds to produce an omelet ([0151]). The instant specification states a heat-coagulated product of the liquid egg-substitute composition according to the present invention is obtained by heating the liquid egg-substitute composition by a frying pan, a hot water bath, or another appropriate method to solidify (be made gelled – [0013]). Therefore, the omelet of Rodriguez is a heat-coagulated product of the liquid-egg substitute composition
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Rodriguez (US 20150313269 A1) in view of Sathe et al. (Functional Properties of the Great Northern Bean (Phaseolus vulgaris L.) Proteins: Emulsion, Foaming, Viscosity, and Gelation Properties. Journal of Food Science. Volume 46. (1981) as applied to claim 2 above, and further evidenced by Hooper et al. (Single Varietal Dry Bean (Phaseolus vulgaris L.) Pastas: Nutritional Profile and Consumer Acceptability. Plant Foods for Human Nutrition. Vol 74. Pp. 342–349 (2019)) and Rui et al. (Comparative study of the composition and thermal properties of protein isolates prepared from nine Phaseolus vulgaris legume varieties. Food Research International. Vol 44. Pp. 2407 – 2504. (2011)).
While Rodriguez does not teach the white Phaseolus vulgaris bean is otebo, MPEP § 2144.06.II states an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). As evidenced by Hooper, otebo beans are white Phaseolus vulgaris beans, like the Great Northern bean (p. 345, Figure 1). As evidenced by Rui, the predominant proteins in beans, including white Phaseolus vulgaris beans, are salt-soluble globulins (p. 2497, paragraph 2; p. 2499, paragraph 8; p. 2500, Figure 1). Given globulin proteins are known to be present in Phaseolus vulgaris beans, which include otebo beans, globulin protein sourced from otebo beans are equivalent to globulin protein sourced from Grean Northern beans. Therefore, the invention of claim 3 is rendered obvious by Rodriguez over Sathe.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Rodriguez (US 20150313269 A1) in view of Sathe et al. (Functional Properties of the Great Northern Bean (Phaseolus vulgaris L.) Proteins: Emulsion, Foaming, Viscosity, and Gelation Properties. Journal of Food Science. Volume 46. (1981)) as evidenced by Healthline (Benefits of Beta Carotene and How to Get It. Healthline. (May 23, 2023) Retrieved from: https://www.healthline.com/health/beta-carotene-benefits).
Rodriguez teaches the liquid egg-substitute composition comprises coloring agent such as carotenoids such as beta-carotene ([0091]). As evidenced by Healthline, beta-carotene is a fat-soluble plant pigment (p. 1, paragraph 2).
Response to Arguments
Applicant's arguments filed December 10, 2025 have been fully considered but they are not persuasive.
Applicant argues claim 1 as amended recites a liquid egg-substitute composition, which is a non-naturally occurring formulation, comprising 6 to 17 mass% of an extracted protein of a specific bean species, i.e., a white Phaseolus vulgaris bean or a Vigna mungo bean, and 3 to 15 mass% of a lipid (p. 4, paragraph 3).
Applicant’s argument has been carefully considered and are persuasive. The rejection under 35 U.S.C. § 101 of claims 1 – 3 has been withdrawn.
Applicant argues the liquid egg-substitute composition of the present invention exhibits fluidity similar to liquid eggs, as well as a gelation property, color tone, and flavor upon heating that are comparable to heat-coagulated egg products, which cannot be achieved by raw beans alone or by merely mixing raw beans with water (p. 4, paragraph 4).
Applicant’s argument has been carefully considered however the argument is not persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., fluidity similar to liquid eggs, as well as a gelation property, color tone, and flavor upon heating that are comparable to heat-coagulated egg products) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues the liquid egg-substitute composition according to the present invention specifically recites the extracted protein, which is isolated from specific bean species rather than using whole or raw beans (p. 5, paragraph 2).
Applicant’s argument has been carefully considered however the argument is not persuasive. While an extracted protein of a bean may be obtained or prepared by a certain method, in product claims, the protein resulting from the process is considered, not the method of making the protein. See MPEP § 2113.I. There is no material difference between an extracted protein as described by the instant disclosure and proteins naturally present in a bean. Therefore, “an extracted protein of a white Phaseolus vulgaris bean or a species Vigna mungo bean” is interpreted broadly to mean any protein any white Phaseolus vulgaris bean or Vigna mungo bean may have, regardless of its original source.
Applicant argues the term "extracted protein" does not encompass the proteins naturally present in the bean material or in cooked beans that have not been isolated (p. 6, paragraph 4).
Applicant’s argument has been carefully considered however the argument is not persuasive. The instant specification states the extracted protein of a bean according to the present invention refers to a protein extracted from a bean ([0015]). The instant specification also states an extracted protein of a bean of the species white Phaseolus vulgaris or the species Vigna mungo is prepared by a method such as purchasing a commercially available extracted protein of a bean or extracting a protein from a bean raw material in accordance with a conventional method ([0025]). While an extracted protein of a bean may be obtained or prepared by a certain method, in product claims, the protein resulting from the process is considered, not the method of making the protein. See MPEP § 2113.I. There is no material difference between an extracted protein as described by the instant disclosure and proteins naturally present in a bean. Therefore, “an extracted protein of a white Phaseolus vulgaris bean or a species Vigna mungo bean” is interpreted broadly to mean any protein any white Phaseolus vulgaris bean or Vigna mungo bean may have, regardless of its original source.
Applicant argues the composition comprising an extracted protein of a white Phaseolus vulgaris bean or a Vigna mungo bean should be understood as a formulation that includes a protein isolated from such beans as one of its components. It should not be interpreted as a naturally occurring product, such as the bean containing the inherent proteins that remain unextracted (p. 6, paragraph 5).
Applicant’s argument has been carefully considered however the argument is not persuasive. MPEP § 2111.01.II states "Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim.” In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the extracted protein of a white Phaseolus vulgaris bean or a Vigna mungo bean is formulation that includes a protein isolated from such beans as one of its components) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). It should also be noted that while an extracted protein of a bean may be obtained or prepared by a certain method, in product claims, the protein resulting from the process is considered, not the method of making the protein. See MPEP § 2113.I. There is no material difference between an extracted protein as described by the instant disclosure and proteins naturally present in a bean. Therefore, “an extracted protein of a white Phaseolus vulgaris bean or a species Vigna mungo bean” is interpreted broadly to mean any protein any white Phaseolus vulgaris bean or Vigna mungo bean may have, regardless of its original source.
Applicant argues the "liquid egg-substitute" composition according to the present invention has fluidity close to that of real liquid eggs and provides a gelation property, color tone, and flavor closely resembling those of heat- coagulated eggs upon heating, as clearly evidenced by experimental results illustrated in experimental results (Tables 1, 2, and 4) of the present specification (p. 7, paragraph 2).
Applicant’s argument has been carefully considered however the argument is not persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., fluidity close to that of real liquid eggs and provides a gelation property, color tone, and flavor closely resembling those of heat- coagulated eggs upon heating) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues Ontario Bean Growers does not disclose a composition as presently claimed. Ontario Bean Growers does not disclose a liquid egg-substitute composition comprising 3 mass% or more and 15 mass% or less of a lipid. Thus, Ontario Bean Growers does not anticipate claim 1 or claims 2 or 3 depending from claim 1 (p. 8, paragraph 4).
Applicant’s argument has been carefully considered and are persuasive. The rejection under 35 U.S.C. § 102(a)(1) of claims 1 – 3 over Ontario Bean Growers has been withdrawn.
Applicant argues Bijoux & Bits discloses bean purees, and not an extracted protein as presently claimed (p. 9, paragraph 3).
Applicant’s argument has been carefully considered however the argument is not persuasive. While an extracted protein of a bean may be obtained or prepared by a certain method, in product claims, the protein resulting from the process is considered, not the method of making the protein. See MPEP § 2113.I. There is no material difference between an extracted protein as described by the instant disclosure and proteins naturally present in a bean. Therefore, “an extracted protein of a white Phaseolus vulgaris bean or a species Vigna mungo bean” is interpreted broadly to mean any protein any white Phaseolus vulgaris bean or Vigna mungo bean may have, regardless of its original source.
Applicant argues The liquid egg-substitute composition as presently claimed exhibits no detectable beany flavor, or at most, a slight perception of beany flavor (p. 9, paragraph 5).
Applicant’s argument has been carefully considered however the argument is not persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., no detectable beany flavor) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues Sathe explicitly discloses that the Great Northern bean globulin isolate extracted from white Phaseolus vulgaris beans, exhibits poor gelation property (rated as "C") and is not suitable according to the requirements of the present invention (p. 11, paragraph 3).
Applicant’s argument has been carefully considered however the argument is not persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., gelation) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). With respect to the motivation to combine Rodriguez and Sathe, Sathe teaches the Great Northern bean globulin isolate (i.e., an extracted protein of a white bean of a Phaseolus vulgaris) has significant whipping volume compared to other Great Northern bean protein compositions at low concentrations (Figure 6). Sathe also teaches while none of the protein compositions show greater whipping stability than egg albumin, the Great Northern bean globulin isolate (i.e., an extracted protein of a white bean of a Phaseolus vulgaris) had the greatest stability among the other bean protein compositions (p. 4, paragraph 1). Sathe teaches the Great Northern bean protein concentrate (i.e., an extracted protein of a white bean of a Phaseolus vulgaris) is most comparable to egg albumin (p. 4, paragraphs 1 – 2). Therefore, there are alternative motivations to select Great Northern bean globulin isolate as the protein in the liquid egg substitute of Rodriguez, such as its whipping volume and stability.
Applicant argues although Rodriguez discloses the protein weight percent in the liquid egg- substitute composition in a range of 5 to 20 wt%, overlap with the claimed range of 6 to 17 mass% of the present application, the protein contents disclosed in the range of 5 to 20 wt% are not suitable to achieve the technical effects of the present invention (p. 11, paragraph 4).
Applicant’s argument has been carefully considered however the argument is not persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., gelation) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues no cited references disclose achieving properties with respect to fluidity, color, and flavor comparable to those of the liquid egg-substitute composition of the present invention (p. 12, paragraph 2).
Applicant’s argument has been carefully considered however the argument is not persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., fluidity, color, and flavor comparable to those of the liquid egg-substitute composition) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues none of the cited references discloses or mentions the use of protein extracted from Vigna mungo beans to achieve a liquid egg-substitute composition having the desired properties, including fluidity similar to that of liquid egg, as well as gelation, color, and flavor properties comparable to heat-coagulated egg products upon heating, as achieved in the present invention (p. 12, paragraph 3).
Applicant’s argument has been carefully considered however the argument is not persuasive. Claim 1, which is the only claim reciting Vigna mungo, recites protein extracted from Vigna mungo beans or protein extracted from Phaseolus vulgaris beans as an alternative. By rejecting the claims over protein extracted from Phaseolus vulgaris beans, the claims are properly rejected over an encompassed embodiment without the need to reject over inventions comprising a protein extracted from Vigna mungo beans. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., protein extracted from Vigna mungo bean) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues, the liquid egg- substitute composition as presently claimed has the unexpected features disclosed in [0015] and [0019] of the present specification (p. 13, paragraph 4; p. 14, paragraph 1).
Applicant’s argument has been carefully considered however the argument is not persuasive. The results presented in the instant specification are not commensurate with the claims.
Table 1 (Page 13) only evaluates the behavior of water comprising 10 wt% protein extracted by pulverization of a given bean, performing an alkali extraction at pH 10, then an acidic precipitation at pH 4.5, then neutralization (p. 11 – 12). While the composition containing protein extracted from Vigna mungo (black gram), white Phaseolus vulgaris (Otebo beans and Alubia beans) demonstrated gelation property, fluidity, color tone, and flavor rated as "A" or "B," indicating suitability as a liquid egg substitute, the superior black gram, otebo and alubia bean compositions are only three examples, which narrowly comprise 10 wt% protein and water, and do not describe with sufficient breadth the subject matter of the claims.
Table 2 (Page 17) only evaluates the behavior of water comprising 5 – 20 wt% protein extracted by pulverization of otebo beans, performing an alkali extraction at pH 10, then an acidic precipitation at pH 4.5, then neutralization (p. 16). While the experimental results in this table can prove that a liquid egg-substitute composition with extracted protein content between 6-17 mass% exhibited favorable fluidity and gelation properties ("A" or "B" ratings). Compositions outside this range (e.g., 5 mass% or 20 mass%) showed poor performance, confirming the importance of the specified content range for achieving the desired properties, the superior compositions comprising 6 – 17 wt% protein and water, are only made with otebo protein, ignoring the broad range of beans encompassed by Vigna mungo and Phaseolus vulgaris and do not describe with sufficient breadth the subject matter of the claims.
Table 4 (Page 19) only evaluates the behavior of water comprising 10 wt% protein extracted by pulverization of otebo, alubia, black-eyes pea, mung, black-eyed bean (without shell), or soy beans, performing an alkali extraction at pH 10, then an acidic precipitation at pH 4.5, then neutralization, and a precise array of additives as described in Example 1 (p. 18 – 19). While the results presented in this table demonstrate that the liquid egg-substitute compositions from Examples 1 and 2, evaluated as "A" or "B" for gelation property, fluidity, color tone, and flavor, significantly outperformed the compositions from Comparative Examples 1 to 4 as substitutes for preparing heat-coagulated eggs, the superior otebo and alubia bean compositions of Examples 1 and 2 are only two examples, which narrowly comprise 10 wt% protein and water, and do not describe with sufficient breadth the subject matter of the claims.
Because the examples in the specification are not commensurate with the claims, the evidence relied upon has not established that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. See MPEP 716.02(b).
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/L.J.M./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793