DETAILED ACTION
Amendments made May 14, 2026 has been entered.
Claims 1-15, 18-20, and 23 are pending.
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 .
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.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The rejection of claims 2-7, 10, 13-15, and 19 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joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention has been withdrawn in light of applicant’s amendments made May 14, 2026.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5-7, 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, 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 about 10% (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).
Regarding the oat base as having a solids content of from 3-9% as recited in claim 1, as VCS teaches providing an oat mixture, i.e. oat base, which has a solids content of about 10% (abstract and paragraph 50), and the term “about” means near or close to, the teachings of VCS are considered to encompass the claimed range, such as and including 9% which is near or close to 10%. It is noted that 9% encompasses values such as 9.99%. Alternatively, it is apparent, however, that absent criticality, the instantly claimed amount of 3-9% and that taught by VCS of about 10% are so close to each other that the fact pattern is similar to Titanium Metals" Corp. of America v. Banner, 778 F.2d 775,227 USPQ 773 (Fed.Cir. 1985) where despite a "slight" difference in the ranges the court held that such a difference did not "render the claims patentable" or, alternatively, that "a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties". It is noted that the disclosure states that any suitable oat base can be used and there are no particular limitations (page 6, paragraph 2) there appears to be no criticality to the oat base composition.
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 2, as VCS teaches providing an oat mixture, i.e. oat base, which is enzymatically pretreated and has a solids content of about 10% (abstract and paragraph 50), and the term “about” means near or close to, the teachings of VCS are considered to encompass the claimed range, such as and including 7% which is near or close to 10%. It is noted that 7% encompasses values closer to 8%, such as 7.99%. Alternatively, it is apparent, however, that absent criticality, the instantly claimed amount of 3-9% and that taught by VCS of about 10% are so close to each other that the fact pattern is similar to Titanium Metals" Corp. of America v. Banner, 778 F.2d 775,227 USPQ 773 (Fed.Cir. 1985) where despite a "slight" difference in the ranges the court held that such a difference did not "render the claims patentable" or, alternatively, that "a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties". It is noted that the disclosure states that any suitable oat base can be used and there are no particular limitations (page 6, paragraph 2) there appears to be no criticality to the oat base composition.
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 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 4 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 as evidenced by USDA (“Flour, oat, whole grain” FoodData Central Food Details pages 1-3 printed July 2026 https://fdc.nal.usda.gov/food-details/2261421/nutrients).
As discussed above, VCS teaches a method for making an oat composition comprising: providing an oat base; 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 oat base as characterized by a soluble dietary fiber content of 40-100% based on the total dietary fiber and a low molecular weight soluble dietary fiber content of 10-100% based on the soluble dietary fiber as recited in claim 4.
Regarding the oat base as comprising a low molecular weight soluble dietary fiber content of 10-100% based on the soluble dietary fiber as recited in claim 4, as discussed above VCS teaches the oat base is formed from a raw oat material selected from the group including oat flour diluted with water (paragraphs 49 and 50). As evidenced by USDA page 1, oat flour contains on average, 1.24 grams of low molecular weight dietary fiber and 10.5 or 12.9 grams of total fiber. Thus, the low molecular weight of soluble dietary fiber in the oat base taught by VCS would be about 10%, which is considered to encompass, or at least be close enough to the claimed range. It is apparent, however, absent a showing of criticality that the instantly claimed amount of 10-100% and that taught by VCS of about 10% are so close to each other that the fact pattern is similar to Titanium Metals" Corp. of America v. Banner, 778 F.2d 775,227 USPQ 773 (Fed.Cir. 1985) where despite a "slight" difference in the ranges the court held that such a difference did not "render the claims patentable" or, alternatively, that "a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties". It is noted that the disclosure states that any suitable oat base can be used and there are no particular limitations (page 6, paragraph 2) there appears to be no criticality to the oat base composition.
Regarding the oat base as characterized by a soluble dietary fiber content of 40-100% based on the total dietary fiber as recited in claim 4, as discussed above VCS teaches the oat base is formed from a raw oat material selected from the group including oat flour diluted with water (paragraphs 49 and 50). VCS is silent to the amount of soluble versus insoluble dietary fiber in the oat base, however as VCS teaches that the process includes removal of the insoluble fibers (abstract), it would have been obvious for the starting material to have a minimized amount of insoluble fiber, and thus, to have an oat base with 40-100% soluble dietary fibers by weight of the total dietary fiber is considered obvious over the teachings of the prior art.
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.
Claim 23 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) and as evidenced by USDA (“Flour, oat, whole grain” FoodData Central Food Details pages 1-3 printed July 2026 https://fdc.nal.usda.gov/food-details/2261421/nutrients)
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 about 10% (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 and to the oat base as comprising 50-50% starch or starch-based products based on solids as recited in claim 23.
Regarding the oat base as comprising 50-50% starch or starch-based products based on solids as recited in claim 23, VCS teaches the oat base is formed from a raw oat material selected from the group including oat flour diluted with water (paragraphs 49 and 50). As evidenced by USDA pages 1-2, oat flour contains on average, 53.9g starch per 91.14g solids (about 59% starch based on solids). Thus, the oat base disclosed by VCS would encompass the oat base as claimed.
Regarding 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 23, 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 claim 23 are considered obvious over the teachings of the prior art.
Response to Arguments
Applicant's arguments filed May 14, 2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art does not teach the oat base as characterized by a solids content of from 3-9% as recited in claim 1, or 50-70% starch based on solids as recited in claim 23. This argument is not convincing for the reasons discussed above.
Regarding the oat base as having a solids content of from 3-9% as recited in claim 1, as VCS teaches providing an oat mixture, i.e. oat base, which is enzymatically pretreated and has a solids content of about 10% (abstract and paragraph 50), and the term “about” means near or close to, the teachings of VCS are considered to encompass the claimed range, such as and including 9% which is near or close to 10%. Alternatively, it is apparent, absent any evidence of criticality, that the instantly claimed amount of 3-9% and that taught by VCS of about 10% are so close to each other that the fact pattern is similar to Titanium Metals" Corp. of America v. Banner, 778 F.2d 775,227 USPQ 773 (Fed.Cir. 1985) where despite a "slight" difference in the ranges the court held that such a difference did not "render the claims patentable" or, alternatively, that "a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties". It is noted that the disclosure states that any suitable oat base can be used and there are no particular limitations (page 6, paragraph 2) there appears to be no criticality to the oat base composition.
Regarding the oat base as comprising 50-50% starch or starch-based products based on solids as recited in claim 23, VCS teaches the oat base is formed from a raw oat material selected from the group including oat flour diluted with water (paragraphs 49 and 50). As evidenced by USDA pages 1-2, oat flour contains on average, 53.9g starch per 91.14g solids (about 59% starch based on solids). Thus, the oat base disclosed by VCS would encompass the oat base as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
WO2014/123466 teaches a formed liquid oat base.
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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KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792
Prosecution Insights