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 applicant’s submission dated December 2, 2025. Any objections and/or rejections made in previous actions and not repeated are hereby withdrawn.
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 36-41 and 43-50 are rejected under 35 U.S.C. 103 as being unpatentable over Itamar et al. (GB 1495194) in view of McMindes et al. (US 20100166940 A1).
With respect to Claim 36, Itamar et al. teaches a process for preparing a texturized vegetable protein product [Pg. 1, Ln. 48-50] derived from a mixture comprising greater than 20% vegetable protein, such as isolated potato protein, [Pg. 1, Ln. 36-42] potato pulp, and water [Pg. 1, Ln 54-56] between 20-50%. [Pg. 2, Ln. 2] Additionally, Itamar et al. teaches the mixture is extruded at a temperature between 100-210°C. [Pg. 2, Ln. 4-8] In a specific embodiment, a composition of 100 parts isolated potato protein, 60 parts potato pulp, and 50 parts water are extruded at about 170°C. [Example 2]
Itamar et al. is silent to adding an alkaline salt in the potato product.
McMindes et al. teaches a process for producing a structured plant protein product, [0005] comprising plant protein material [0027] between 40-100% [0028], such as potato derived protein, [0029] a moisture content of about 1-35% [0055] and a pH modifying agent, such as sodium carbonate, [0110] can be incorporated between 0.2-1.6%. [Table 2] Additionally, McMindes et al. teaches that the composition through a plurality of heating zones, ranging from 100-150°C. [0049] McMindes et al. is motivated to control the pH of the composition in order to more closely imitate the pH of real meat. [0039]
The instant specification discloses that the potato protein is subjected to thermocoagulation at low pH in order to prepare the denatured potato protein. [Pg. 20, Ln. 3-4] McMindes et al. teaches that the preconditioning stage of the process can include a preheating phase wherein the material can be heated to between 25-80°C [0054] and the mixture before extrusion can include a pH reducing agent such as acetic, lactic, hydrochloric or other acids, [0040] to a pH as high as 7 and as low as 4. [0039] The premixture composition of McMindes et al., wherein the composition is preheated and comprises an acid in order to lower the pH of the protein reads on a denatured potato protein wherein the denatured potato protein is acid-treated and thermocoagulated.
Itamar et al. and McMindes et al. exist within the same field of endeavor in that they are both concerned with the process of creating an extruded, plant protein-based, food product. Where Itamar et al. teaches a composition composed primarily of potato and potato derived products, McMindes et al. teaches controlling the pH of the vegetable composition through the addition of pH modifying alkaline salts, such as sodium carbonate.
According to the MPEP 2144.05 I, “In the case where the claimed ranges ‘overlap or lie inside the ranges recited in the prior art’ a prima facie case of obviousness exists”. The ranges of protein, water, and extrusion temperature in Itamar et al. and McMindes et al. overlap with the ranges recited in claim 36, and the amount of alkaline salt in McMindes et al. overlaps with the range recited in claim 36.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the application, to have used the teaching of Itamar et al. in combination with the teaching of McMindes et al. in order to produce an extruded potato product that renders obvious claim 36.
With respect to Claims 37 and 38, Itamar et al in view of McMindes et al. teach the process recited in claim 36, as detailed above. Additionally, McMindes teaches the desired pH for an imitation meat product is about 5.6. [0039] Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the application, to have used the teachings of Itamar et al. with McMindes et al. in order to produce an extruded potato protein composition from a mixture with a pH between 4.5-10 or 5-7, as recited in claim 37 and 38, respectively.
With respect to Claims 39-41, Itamar et al in view of McMindes et al. teach the process recited in claim 36, as detailed above. Additionally, McMindes teaches the incorporation of sodium carbonate in order to control the pH of the composition. [0110] Therefore, it would have been obvious, to one of ordinary skill in the art, before the effective filing date of the application to have used the teachings of Itamar et al. and McMindes et al. in order to produce an extruded potato protein composition, wherein the pH is controlled by an alkaline salt, specifically sodium carbonate, as recited in claims 39-41.
With respect to Claim 43, Itamar et al. teaches a process for preparing a texturized vegetable protein product [Pg. 1, Ln. 48-50] derived from a mixture comprising greater than 20% vegetable protein, such as isolated potato protein, [Pg. 1, Ln. 36-42] potato pulp, and water [Pg. 1, Ln 54-56] between 20-50%. [Pg. 2, Ln. 2] Additionally, Itamar et al. teaches the mixture is extruded at a temperature between 100-210°C. [Pg. 2, Ln. 4-8] In a specific embodiment, a composition of 100 parts isolated potato protein, 60 parts potato pulp, and 50 parts water are extruded at about 170°C. [Example 2]
Itamar et al. is silent to adjusting the pH of the composition to below 5.
McMindes et al. teaches a process for producing a structured plant protein product, [0005] comprising plant protein material [0027] between 40-100% [0028], such as potato derived protein, [0029] a moisture content of about 1-35% [0055] and a pH modifying agent, such as sodium carbonate, [0110] wherein the desired pH is less than 5.0 [0039] and the pH modifying agent can be incorporated between 1-5%. [0041] Additionally, McMindes et al. teaches that the composition through a plurality of heating zones, ranging from 100-150°C. [0049] McMindes et al. is motivated to control the pH of the composition in order to more closely imitate the pH of real meat. [0039]
The instant specification discloses that the potato protein is subjected to thermocoagulation at low pH in order to prepare the denatured potato protein. [Pg. 20, Ln. 3-4] McMindes et al. teaches that the preconditioning stage of the process can include a preheating phase wherein the material can be heated to between 25-80°C [0054] and the mixture before extrusion can include a pH reducing agent such as acetic, lactic, hydrochloric or other acids, [0040] to a pH as high as 7 and as low as 4. [0039] The premixture composition of McMindes et al., wherein the composition is preheated and comprises an acid in order to lower the pH of the protein reads on a denatured potato protein wherein the denatured potato protein is acid-treated and thermocoagulated.
Itamar et al. and McMindes et al. exist within the same field of endeavor in that they are both concerned with the process of creating an extruded, plant protein-based, food product. Where Itamar et al. teaches a composition composed primarily of potato and potato derived products, McMindes et al. teaches controlling the pH of the vegetable composition through the addition of pH modifying alkaline salts, such as sodium carbonate.
According to the MPEP 2144.05 I, “In the case where the claimed ranges ‘overlap or lie inside the ranges recited in the prior art’ a prima facie case of obviousness exists”. The ranges of protein, water, and extrusion temperature in Itamar et al. and McMindes et al. overlap with the ranges recited in claim 36, and the pH in McMindes et al. overlaps with the range recited in claim 43.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the application, to have used the teaching of Itamar et al. in combination with the teaching of McMindes et al. in order to produce an extruded potato product that renders obvious claim 43.
With respect to Claims 44-48, Itamar et al in view of McMindes et al. teach the process recited in claim 43, as detailed above. Additionally, McMindes teaches the incorporation of sodium carbonate in order to control the pH of the composition and [0110] the pH modifying agent can be incorporated between 1-5%. [0041] Therefore, it would have been obvious, to one of ordinary skill in the art, before the effective filing date of the application to have used the teachings of Itamar et al. and McMindes et al. in order to produce an extruded potato protein composition, wherein the pH is controlled by an alkaline salt, specifically sodium carbonate, as recited in claims 44-48.
With respect to Claim 49, Itamar et al in view of McMindes et al. teach the process recited in claim 43, as detailed above. Additionally, Itamar et al. teaches a composition wherein the water is between 20-50%. [Pg. 2, Col. 1, Ln. 2], falling within the claimed range. Therefore, Itamar et al. in view of McMindes et al. renders obvious claim 49.
With respect to Claim 50, Itamar et al in view of McMindes et al. teach the process recited in claim 43, as detailed above. Additionally, Itamar et al. teaches the texturized food product may be used in various food products, including snacks. [Pg. 2, Col. 1, Ln. 38-41] Therefore, Itamar et al. in view of McMindes et al. renders obvious claim 50.
Response to Arguments
Applicant's arguments filed December 2, 2025 have been fully considered but they are not persuasive.
Applicant asserts on Page 7, Line 31, that “the core of McMindes revolves around lowering the pH”, presenting evidence from claim 1, “‘combining a plant protein material with a pH-lowering agent to form a mixture, the mixture having a pH below approximately 6.0’” on Page 8, Lines 1-2. Applicant concludes on Lines 5-6, “that all tests in McMindes where sodium carbonate is used are controls used for imitating high pH”.
Claim 36 of the instant application recites “a composition comprising: denatured potato protein (DPP) in an amount of 43 to 94.9 w% of the total weight of the composition, wherein the denatured potato protein is acid-treated and thermocoagulated”. The recitation of an acid-treated potato protein is an obvious variant of the teaching of McMindes of a plant protein with a pH lowering agent, especially in light of the teaching of McMindes of acids [0040] for use in the pre-extrusion composition. McMindes teaches a range of pH for the resultant plant protein compositions from 5-8.54 [Table 1] and from 7.9-11.0, [Table 10] both of which present a range of pH which would account for an increase in pH during the extrusion process. Additionally, the pH range in Example 1 of McMindes overlaps with the pH range presented in the instant specification, Table 7, as well as teaches the amount of alkaline salt recites in claim 1.
For this reason, applicant’s assertions are found to be unpersuasive.
Applicant asserts on Page 8, Lines 9-10, that “when using denatured protein potato protein it is required to increase the pH to be able to extrude and prepare a textured product”, citing the instant specification of page 12, lines 5-9. “One advantage of using denatured protein in the process of the invention compared to e.g. native protein is that the production costs are lower.” Applicant proceeds, presenting Examples 3 and 4 of the instant specification as evidence, and concludes on Lines 30-31, that, in McMindes, “the purpose of the opposite pH adjustments appears fundamentally different, since the protein sources are fundamentally different”.
Examiner asserts that Examples 3 and 4 of the instant specification present a correlation between pH and hydration and fiber formation, respectively, but does not present evidence that a pH increase is required to make extrusion possible. Additionally, no evidence is presented by the applicant to support the assertion that the pH adjustments in McMindes are fundamentally different than the adjustments in the instant invention.
MPEP 2145 I states, “Arguments presented by applicant cannot take the place of evidence in the record”. For this reason, applicant’s assertions are found to be unpersuasive.
Applicant asserts on Page 9, Lines 25-26, that “even if the examiner asserts that features could be combined, there must be a reasoned motivation to do so. Applicant is directed to the rejection of Claim 36 which presents the teaching of McMindes et al., wherein the invention of McMindes et al. includes a method for producing a meat analog with a texture more akin to meat through the control of the pH. [0039]
Applicant continues on Page 10, Lines 16-17, that “McMindes specifically relates to lowering the pH, not raising the pH”. Applicant is directed to the examiner’s assertion that the date in McMindes et al. does teach a raising of the pH in the above rejection. Additionally, raising the pH of the composition is not a limitation that is recited in any of the pending claims. MPEP 2145 VI states “although claims are interpreted in light of the specification, limitation from the specification are not read in to the claims”.
For these reasons, applicant’s assertions are found to be unpersuasive.
Applicant asserts on Page 9, Lines 20-22, “the cited references fail to disclose or suggest multiple claim features for examples, neither of the cited documents disclose denatured potato protein”, and on Pages 10, Lines 29-30, and 11, Lines 27-29, “Applicant submits it has not been established that Itamar in view of McMindes discloses each and every one of the features of the claimed invention”. Applicant concludes on Page 11, Lines 5-6, “Applicant respectfully submits that independent claims 36 is in condition for allowance for the reasons discussed herein” and on Page 12, Lines 5-6, “Applicant respectfully submits that independent claim 43 is in condition for allowance for the reasons discussed herein”.
Applicant is directed to the rejection of claim 36 and 43 respectively, as well as the examiner’s response as laid out in the preceding paragraphs.
For these reasons and those stated above, applicant’s assertions are found to be unpersuasive, and the rejections of Claims 36-41 and 43-50 are upheld.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH CULLEN MERCHLINSKY whose telephone number is (571)272-2260. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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/J.C.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791