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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-15 and 18-20 in the reply filed on October 29, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 16-17 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 2-7, 10, 13-15, and 19 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
Claim 2 recites the broad recitation 1-12%, and the claim also recites 3-9% and 5-7% which are the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 3-7 and 15 are rejected to for substantially the same reasons as claim 2, i.e. reciting broad and narrow limitations. It is noted that some claims recite several instances of broad and narrow limitations. It is suggested that applicant amend to only recite one range per component within each claim.
Claim 19 also recites the broad recitation of “sweetener” and the narrow limitation of “sugar”, which makes the claim unclear. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 10 which depends from claim 9 recites “wherein concentrating comprises…”. It is unclear as to if the concentrating referred to in claim 10 is the first concentrating or second concentrating, or both the first and second concentrating steps recited in claim 9.
Claim 13 recites the limitation "the second UF retentate fraction" in claim 1. There is insufficient antecedent basis for this limitation in the claim. It is unclear as to if the claim intends to recite “a second UF retentate fraction” or depend from claim 12 which has antecedent basis.
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.
Claims 1-7, 9-15, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Valle Costa Silva et al (US 2023/0232868) in view of Kasargode et al (WO 2013/126662).
Regarding claims 1, 2, 9-14, and 18-20, Valle Costa Silva et al (VCS) teaches a method for making an oat composition (title) comprising: providing an oat mixture, i.e. oat base, which is enzymatically pretreated and has a solids content of 10-25% (abstract and paragraph 50); separating insoluble fibers from the mixture (paragraph 65); performing membrane filtration, including microfiltration (step i) and ultrafiltration, wherein large molecules of proteins are retained in the retentate, i.e. MF retentate, and small molecules like hydrolyzed carbohydrates pass through the membrane and are collected in the permeate, i.e. MF permeate (paragraphs 70, 71, 76-78, and 80); adding additional ingredients, including flavorings and stabilizers to the retentate to produce oat based ready to drink beverages (paragraph 86); and heat treating and packaging the mixture (paragraph 90).
VCS is not explicit to ultrafiltering the MF permeate to produce an UF permeate fraction and UF retentate fraction, wherein the MF retentate is combined with the UF retentate as recited in claim 1, or to the method as further comprising concentrating the UF retentate fraction as recited in claim 9, with reverse osmosis, forward osmosis, or nanofiltration as recited in claim 10, wherein the concentrated UF retentate is combined with the MF retentate as recited in claim 11, or ultrafiltering the MF retentate to produce a second UF permeate and second UF retentate as recited in claim 12, or nanofiltering the UF permeate fraction to produce a NF permeate fraction as recited 13, wherein the MF retentate fraction is combined with the UF retentate and the NF retentate fraction as recited in claim 14.
VCS teaches that the protein/sugar ratio of the oat protein concentrate can be modulated by process control and/or combination of different streams during/by the present process (paragraph 83). VCS teaches the permeate, rich in carbohydrates and/or hydrolysates thereof can be obtained from the membrane filtration step and added to the retentate as an alternative sugar source (paragraph 88). Thus, suggesting combining at least some form or portion of the MF permeate to the MF retentate to provide sweetness.
Kasargode et al (Kasargode) teaches multistage membrane filtration methods wherein retentates and permeates are formed after each step, multiple filtration steps of the resulting permeates and/or retentates may be performed including microfiltration, ultrafiltration followed by nanofiltration, and reverse osmosis, and wherein concentrated products which are a combination of the retentates are formed (abstract, paragraphs 6, 12, 24, 25, 38, 42, 45, 46-51 56, 60, and 98, and claims 11 and 12). Kasargode teaches that the method allows the convenient and practical preparation of food products, including beverages, with improved or alternative formulations suitable to provide the desired nutritional characteristics, flavor, and shelf life (paragraphs 3, 5, 14, 24, 61, 64, 98). Kasargode teaches that the pore size typically dictates what size of components are retained (paragraph 31) and that a multi-stage process advantageously provides for recycling of the filtration permeate from one or more of the membrane filtrations to further recover solute from the one or more permeates that had not been rejected by the filtration membrane (paragraph 48). Kasargode teaches the method provides for little to no nutrient loss (paragraph 70). Kasargode specifically teaches that low Brix filtration permeate can be passed through a filtration membrane to increase the brix/sugar level to about 10 or higher prior to recycling with a high resistance membrane, such as a reverse osmosis membrane (paragraph 49). Kasargode teaches employing a combination of at least one high rejection membrane, as a third filtration, which prevents about 90-99.9% sugars from passing through after one or more low rejection membranes with a sugar rejection capacity of about 1-90% (paragraphs 53 and 54). Kasargode teaches successive filtrations of retentates produces a higher Brix (paragraph 58).
It would have been obvious for the MF permeate of VCS, which VCS teaches is rich in carbohydrates and can be added to the retentate as an alternative sugar source (paragraph 88) to be further filtered, including by ultrafiltration followed by nanofiltration/concentration of the UF permeate as taught by Kasargode in order to further increase the Brix/sugar and further isolate the desired component which is added to the MF retentate for sweetening the beverage of VCS. As Kasargode teaches that multistep filtration, including with ultrafiltration followed by nanofiltration produces higher Brix/sugars and allows the convenient and practical preparation of food products with improved or alternative formulations suitable to provide the desired nutritional characteristics, flavor, and shelf life one would have been motivated to do so. One would have been further motivated to do so as VCS teaches that the protein/sugar ratio of the oat protein concentrate can be modulated by process control and/or combination of different streams during/by the present process (paragraph 83) and Kasargode teaches further filtration provides for further solute recovery.
In other words, it would have been obvious to have the further steps of filtration, i.e. multistage filtration, including nano filtered and/or ultrafiltered, and/or reverse osmosis to concentrate the desired components, including the sugar, with little to no nutrient loss and allow the convenient and practical preparation with improved or alternative formulations suitable to provide the desired nutritional characteristics, flavor, and shelf life in view of Kasargode. It would have been obvious for the MF permeate, or any sweet derivative thereof, including high resistance filtered retentates, such as nano filtered and/or ultrafiltered, and/or reverse osmosis retentates to be combined with the MF retentate or any filtered derivative thereof for sweetening as taught by VCS in view of Kasargode.
Thus, the claimed limitations recited in claims 1 and 9-14 are considered obvious over the teachings of the prior art.
Regarding claim 3, as VCS teaches that the oat flour used contains about 10-15% proteins, about 4-6% fats, about 8-11% fibers, and about 90-95% total solids (paragraph 50), wherein the oat flour is used with water to provide an oat mixture with 10-25% total solids, wherein no other component is require (paragraph 50), the oat mixture, i.e. oat base, would comprise about 10.5-27.8% flour which would provide 10-25% solids, about 1-3.75% proteins, 0.4-1.5% fat, and 0.8-2.75% total dietary fiber.
Regarding claim 4, as VCS teaches that insoluble fibers are separated out (paragraph 65), the fibers in the oat base would be up to 100% soluble, with 0-100% low molecular weight as claimed.
Regarding claim 5, VCS teaches after filtration, which includes microfiltration, the retentate can comprise 5-10% proteins, 2-7% fat, 1-2% total dietary fiber, and about 20-40% total solids (paragraphs 70, 71, 76, 78, and 80).
Regarding the UF retentate fraction as characterized by a solids content of 1-12% as recited in claim 6, or a protein content of 0.05-7%, a fat content of 0-1%, and a total dietary fiber content of 0.1-3% as recited in claim 7, as discussed above, it would have been further obvious to have the further steps of filtration, i.e. multistage filtration, including nano filtered and/or ultrafiltered, and/or reverse osmosis to concentrate the desired components with little to no nutrient loss and allow the convenient and practical preparation with improved or alternative formulations suitable to provide the desired nutritional characteristics, flavor, and shelf life in view of Kasargode. Thus, to form a retentate fraction with the claimed composition is considered obvious over the teachings of the prior art.
Regarding claim 15, VCS teaches that the pH of the oat hydrolysate, i.e. the oat base after enzyme treatment before separation, is adjusted to 7-10 to increase protein solubility, prevent protein precipitation, and increase oat protein recovery yield (paragraph 64), thus to have the pH of the oat base before microfiltering and ultrafiltering as 7-10 would have been obvious.
VCS discloses overlapping ranges. It would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Valle Costa Silva et al (US 2023/0232868) in view of Kasargode et al (WO 2013/126662), further in view of Frederix et al (WO 2021/028509).
As discussed above, VCS teaches a method for making an oat composition comprising: providing an oat base which is enzymatically pretreated; performing membrane filtration, including microfiltration (step i) and ultrafiltration; and adding additional ingredients to the retentate to produce oat based ready to drink beverages, wherein it would have been obvious to include multi-stage filtrations steps, including ultrafiltering of the MF permeate fraction in view of Kasargode.
VCS is silent to the ultrafiltering as comprising diafiltering as recited in claim 8.
Frederix et al (Frederix) teaches forming food and beverage products from grains, including oats, through multistep filtration methods (abstract, page 2 lines 15-27, page 8 lines 33-35, and page 17 lines 17-19). Frederix teaches the microfiltration, which has a pore size of 0.03-0.5um which also encompasses ultrafiltration, is preferably with a diafiltration step (page 12 lines 22-28).
Regarding the ultrafiltering as comprising diafiltering as recited in claim 8, it would have been obvious for the UF as taught by VCS in view of Kasargode to be with diafiltration as it was a preferred method in view of Frederix. Alternatively, to use known filtering wherein multistep filtering was disclosed would have been obvious to one of ordinary skill in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2023/0212219 teaches multi filtration of plant materials with recycling into the process stream.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELLY BEKKER whose telephone number is (571)272-2739. The examiner can normally be reached Monday-Friday 8am-3:30pm.
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, Erik Kashnikow can be reached at 571-270-3475. 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.
KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792