DETAILED ACTION
Amendments made January 5, 2026 have been entered.
Claims 1-15 are pending;
Claims 10-15 have been withdrawn.
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 Objections
The objection to claims 8 and 9 has been withdrawn in light of applicant’s amendments made January 5, 2026.
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 previous rejection of claims 5, 6, 8, and 9 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inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention have been withdrawn in light of applicant’s amendments made January 5, 2026.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 3 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 3, which depends from claim 1 recites, wherein at least 50% of the potato protein isolate contain potato proteins having a molecular weight of less than 30kDa. Claim 1, has been amended however to require at least 50% tuberine in the potato protein isolate Although both limitations were disclosed distinctly, the combination as claimed does not find support in the disclosure as originally filed (see instant specification page 6 line 30 through page 7 line 10). It is additionally noted that tuberine has a molecular weight of 43kDa (Giusenppin et al, WO 2008/069650 A1, page 2 lines 19-20), and thus the combination claimed is not possible.
Claim 3 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 3, which depends from claim 1 recites, wherein at least 50% of the potato protein isolate contain potato proteins having a molecular weight of less than 30kDa. Claim 1, has been amended however to require at least 50% tuberine in the potato protein isolate. As tuberine has a molecular weight of 43kDa (Giusenppin et al, WO 2008/069650 A1, page 2 lines 19-20), one of ordinary skill in the art would not be able to make a product as claimed which has both at least 50% tuberine and at least 50% potato proteins having a molecular weight of less than 30kDa.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3, which depends from claim 1 recites, wherein at least 50% of the potato protein isolate contain potato proteins having a molecular weight of less than 30kDa. Claim 1, has been amended however to require at least 50% tuberine in the potato protein isolate. As tuberine has a molecular weight of 43kDa (Giusenppin et al, WO 2008/069650 A1, page 2 lines 19-20), claim 3 would not include all the limitations of claim 1 from which it depends, because it could not have at least 50% tuberine as recited in claim 3, and at least 50% potato proteins having a molecular weight of less than 30kDa as recited in claim 1, from which it depends.
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.
Notes: The term “plant-based” refers to a product which is formulated without ingredients derived from animals (instant specification page 5 lines 4-5).
The rejection of claims 1 and 3-6 under 35 U.S.C. 103 as being unpatentable over Kunst et al (US 2004/0131744 A1) in view of Rabinovitch et al (US 2003/0152678 A1) has been withdrawn in light of applicant’s amendments made January 5, 2026, specifically Kunst does not teach the potato protein isolate includes at least 50% tuberine.
The rejection of claims 7-9 under 35 U.S.C. 103 as being unpatentable over Kunst et al (US 2004/0131744 A1) in view of Rabinovitch et al (US 2003/0152678 A1), further in view of Zamudio-Tena et al (WO 99/48379) has been withdrawn in light of applicant’s amendments made January 5, 2026 specifically Kunst does not teach the potato protein isolate includes at least 50% tuberine.
Claims 1-3, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Vital (September 2020 page 1- cited by applicant on IDS 10/11/23) in view of Giusenppin et al (WO 2008/069650 A1).
Vital teaches of a plant-based nougat comprising: potato protein which replaced chicken egg whites; maple syrup, which is a sugar syrup; and roasted almonds which are a flavoring component, nut derived component, and nut inclusion (page 1). As Vitan teaches a vegan product (page 1), and gelatin was made from animals, one of ordinary skill in the art would understand the nougat of Vital contain less than 0.5% gelatin.
Vital is silent to the potato protein as in the form of protein isolate including at least 50% tuberine as recited in claim 1, or wherein 50% of the protein has a molecular weight of less than 30kDa as recited in claim 2, or more than 30kDa as recited in claim 3.
Giusenppin et al (Giusenppin) teaches potato protein isolates, including native patatin (also known as tuberine) isolate and/or those with molecular weights above and below 30kDa are pure in form and free from undesired contaminants (abstract, page 1 lines 19-27, page 2 lines 27-28, page 5 lines 6-11). Giusenppin teaches that the potato protein isolates can be used in food products including whipped products like meringues and whipped cream, and are comparable to egg protein (page 11 lines 14-18, claim 2, and Figure 12). Giusenppin teaches the presence of protease inhibitor and other contaminants with a surface-active function in the patatin fraction has a negative effect on the good emulsification, gelling, and foaming properties of the patatin (page 4 lines 25-29). Giusenppin teaches that the patatin isolates are useful in high fat and/or high sugar compositions, and may be used as stabilizing agents in foams and aerated desserts where it shows high effectiveness (page 13 lines 11-26).
Regarding the form of protein isolate comprising at least 50% tuberine as recited in claim 1, or wherein 50% of the protein has a molecular weight of less than 30kDa as recited in claim 2, or more than 30kDa as recited in claim 3, it would have been obvious for the potato protein of Vital to be one which was pure in form and free from undesirable components, i.e. containing greater than 50% of the desired protein, including the potato protein isolates with a molecular weight above and below 30kDa, i.e. patatin isolates or protease inhibitor isolates as Giusenppin teaches that they are a pure form of potato protein free of undesirable contaminants which are comparable to egg whites. To select from the limited number of protein isolates disclosed by Giusenppin, including those above and below 30kDa would have been obvious. Furthermore, the Examiner takes official notice that nougat is a high sugar confection which was aerated or whipped. It would have been particularly obvious for the potato protein isolate to be tuberine (also known as patatin) as Giusenppin teaches that the patatin isolates had negative effects with protease inhibitors and other contaminants, and were useful in high fat and/or high sugar compositions, and showed high effectiveness in foams and aerated desserts. Thus, to use a potato protein isolate with at least 50% tuberine would have been obvious over the teachings of the prior art.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Vital (September 2020 page 1- cited by applicant on IDS 10/11/23) in view of Giusenppin et al (WO 2008/069650 A1), further in view of Rabinovitch et al (US 2003/0152678 A1).
As discussed above, Vital teaches of a plant-based nougat. Vital is silent to the nougat density as 600-1100kg/m3 as recited in claim 4.
Rabinovitch teaches that the degree of nougat aeration will depend upon the desired texture and that more aeration yields a softer fluffier texture (paragraph 27). Rabinovitch teaches nougats typically have a density of less than 1g/cm3 (1000kg/m3) (Paragraph 8).
It would have been obvious to one of ordinary skill in the art for the nougat of Vital to be aerated to a density based on the desired texture, wherein more aeration, and thus a lower density would result in a softer texture as taught by Rabinovitch. It would have been further obvious for the density of the nougat taught by Vital to be around 1000kg/m3 as Rabinovitch teaches if was a known density for nougats, and Vital teaches of a nougat product, i.e. so the product of Vital would have the traditional properties known for its type.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Vital (September 2020 page 1- cited by applicant on IDS 10/11/23) in view of Giusenppin et al (WO 2008/069650 A1), further in view of Kunst et al (US 2004/0131744 A1).
As discussed above, Vital teaches of a plant-based nougat comprising potato protein, flavoring, and sugar syrup.
Vital is silent to the sugar syrup as from 65-95% as recited in claim 5 and to the potato protein as from 0.5-20% as recited in claim 6.
Kunst et al (Kunst) teaches aerated confectionery products including nougats (abstract and paragraphs 1 and 15) comprising: higher than 10%, preferably higher than 50% carbohydrates selected from a group including sugar syrups (paragraph 16 and claim 7); and 0.01-10% protein, including potato protein from isolate (paragraphs 9, 14, 36, and 55).
Regarding the sugar syrup as from 65-95% as recited in claim 5 and to the potato protein as from 0.5-20% as recited in claim 6, it would have been obvious for the aerated confection of Vital to comprise known amounts of the disclosed components, such as and including, higher than 10%, preferably higher than 50% carbohydrates selected from a group including sugar syrups and 0.01-10% potato protein in view of Kunst. To use known compositional amounts of the disclosed components would have been obvious and well within the purview of one of ordinary skill in the art.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Vital (September 2020 page 1- cited by applicant on IDS 10/11/23) in view of Giusenppin et al (WO 2008/069650 A1), further in view of Zamudio-Tena et al (WO 99/48379). It is noted that the rejection of claim 7 is an alternative to that presented above.
As discussed above, Vital teaches of a plant-based nougat comprising potato protein, nuts, and sugar syrup.
Vital is silent to the flavoring as selected from cocoa, honey, and a nut derived component as recited in claim 7, or to the flavoring component as 1-20% nut butter as recited in claim 8.
Zamudio-Tena et al (ZT) teaches of a nougat, wherein additional materials, including flavoring, may be added to enhance appearance, taste, texture, and other perceptions of the consumer. ZT teaches that flavorings can be added from about 0-20% and include whole or partial nuts, i.e. nut inclusions, peanut butter, i.e. nut butter, and chocolates which are cocoa containing components. Refer to abstract and page 7 lines 8-14 and 19-20.
It would have been obvious for the nougat of Vital to comprise about 0-20% flavorings, including peanut butter, i.e. a nut derived component, in order to impart further nut flavor into the nougat in view of ZT which teaches the use of flavorings to enhance appearance, taste, texture, and other perceptions of the consumer.
Response to Arguments
Applicant's arguments filed January 5, 2026 regarding the remaining rejections have been fully considered but they are not persuasive. It is noted that in the interview, it appeared that the amendments overcame all prior art rejections. However, after further consideration, and additional citations within the secondary reference Giusenppin identified, the claimed invention remains obvious over the prior art references.
Applicant argues that neither Vital nor Giusenppin teach the potato protein isolate includes at least 50% tuberine and the plant-based nougat contains less than 0.5% gelatin. This argument is not convincing.
As stated above, as Vitan teaches a vegan product (page 1), and gelatin was made from animals, one of ordinary skill in the art would understand the nougat of Vital contain less than 0.5% gelatin. Furthermore, as stated above, in the further citations to Giusenppin benefits of patatin were known, and thus, the use thereof was obvious. Giusenppin teaches the presence of protease inhibitor and other contaminants with a surface-active function in the patatin fraction has a negative effect on the good emulsification, gelling, and foaming properties of the patatin (page 4 lines 25-29). Giusenppin teaches that the patatin isolates are useful in high fat and/or high sugar compositions, and may be used as stabilizing agents in foams and aerated desserts where it shows high effectiveness (page 13 lines 11-26). Thus, the use of the potato protein of Vital as isolated tuberine, i.e. an isolate with at least 50% tuberine would have been obvious in view of Giusenppin as stated above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Amy, Unveiled: The Shocking Truth About How Much Sugar Lurks in Nougat, pages 1-9, July 2024 shows evidence that nougat was a high sugar food.
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 KELLY BEKKER whose telephone number is (571)272-2739. The examiner can normally be reached Monday-Friday 8am-3:30pm.
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KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792