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 .
The amendment filed November 26, 2025, has been entered. Claims 1-3 and 6 are pending in the application. Claims 4 and 5 have been cancelled. All previous rejections of claims 4 and 5 have been withdrawn in view of the cancellation of claims 4 and 5. The previous objections to claims 2 and 3 have been withdrawn in view of applicant’s claim amendments. Any previous prior art rejections not repeated below have been withdrawn in view of applicant’s claim amendments.
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.
Claim 6 is 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 6 recites the limitation "the hemp protein" in 4. There is insufficient antecedent basis for this limitation in the claim. Claim 6 depends from claim 1. Claim 1 recites adding a protease to hemp milk, but there is no specific mention of hemp protein.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Spickermann et al. (WO 2020/169553) with evidence provided by Gregory et al. (WO 2019/060851).
Regarding claims 1-3, Spickermann et al. teaches a method for producing a processed hemp food or drink or food ingredient, the method comprising a step of treating hemp milk (i.e., ground hemp seed in water) with a protease (p. 3, paragraph starting “Thus, in a first aspect”).
Regarding the preamble “for imparting umami to a hemp milk,” this is considered a statement of intended use. Where the steps of the method of the prior art are the same as the claimed step of “treating the hemp milk with a protease derived from a filamentous fungus,” the method of the prior art is considered to meet the instant claim.
Proteases taught by Spickermann et al. for use in their invention include the filamentous fungal derived proteases Sumizyme LPL-G and ProteAX (p. 9, paragraph starting “The enzyme”).
ProteAX is an Aspergillus oryzae derived protease according to the instant specification at [0020].
Gregory et al. teach Sumizyme LPL-G is an Aspergillus oryzae derived protease [0084].
Therefore, given the small number of proteases taught by Spickermann et al., one of ordinary skill looking to the teachings of Spickermann et al. would have at once clearly envisaged the claimed invention, where a hemp milk was treated with a protease derived from a filamentous fungus to anticipate instant claims 1-3.
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Spickermann et al. (WO 2020/169553) with evidence provided by Gregory et al. (WO 2019/060851).
Spickermann teaches a method of treating a hemp milk with a protease derived from a filamentous fungus as detailed above with regard to claim 1.
The protease treatment is taught to be performed at a temperature preferably between about 40 to 60°C, which overlaps the claimed temperature range, and for a time between 1-36 hours (p. 9 last paragraph), which overlaps the claimed time, thereby rendering the claimed treatment time and temperature obvious.
Proteases taught by Spickermann et al. for use in their invention include the filamentous fungal derived proteases Sumizyme LPL-G and ProteAX (p. 9, paragraph starting “The enzyme”).
ProteAX is an Aspergillus oryzae derived protease according to the instant specification at [0020].
Regarding the amount of protease to be included, Spickermann et al. teach the protease is included in an amount ranging from 0.1% to 5% protease preparation per dry matter. Spickermann et al. do not report the amount of protease as U/g of hemp protein. However, one of ordinary skill would have recognized that the amount of enzyme to be included in the preparation could be adjusted based on the desired amount of proteolysis to occur and the conditions (e.g., time and temperature) under which the reaction was occurring. Thus, arriving at an enzyme amount as claimed would have required no more than routine experimentation, and would have been expected to provide a desired result of a sufficient amount of proteolysis.
Regarding the inactivation step, after the proteolysis, Spickermann et al. teach that the hemp seed extract (i.e., hemp milk) is sterilized (p. 11, 2nd full paragraph). This sterilization step is considered to meet the claimed inactivation of the protease because the heat from the sterilization would inactive the enzyme.
Response to Arguments
Applicant's arguments filed November 26, 2025, have been fully considered but they are not persuasive.
Applicant argues that the method of present claim 1 imparts umami to hemp milk itself by subjecting the hemp milk to a protease, while the prior art of Spickermann removes the lipophilic components and is therefore a “hemp seed extract” and not a “hemp milk” as claimed (Remarks, p. 4).
This argument is not persuasive. Nowhere in the claims examined, nor in the instant specification, does the examiner find a requirement that “hemp milk” must include some level of fats or oils such that the starting material of Spickermann et al. would be excluded. Looking to the last sentence of [0012] in the instant specification as originally filed, it is stated that hemp milk is an aqueous dispersion of crushed hemp seed nuts. Further, in Table 1 at the instant specification, the Table shows only the protein content of “hemp milk” where the hemp milk is treated with either bacterial or fungal protease.
Given that Spickermann et al. teach treating a solution of ground hemp seed in water with a protease, as detailed in the rejection above, the instant claims continue to be anticipated by, or obvious over, the teachings of Spickermann et al. as detailed above.
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 NIKKI H. DEES whose telephone number is (571)270-3435. The examiner can normally be reached 10:00 am-5:00 pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yvonne (Bonnie) Eyler can be reached at 571-272-1200. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Nikki H. Dees
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791