DETAILED ACTION
Amendments made June 1, 2026 have been entered.
Claims 1, 3-5, and 7-16 are pending;
Claims 10-15 have been withdrawn.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 1, 2026 has been entered.
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 claim 3 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or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement has been withdrawn in light of applicant’s amendments and remarks made June 1, 2026. Specifically, as noted in the remarks, the rejection contained a typographical error and should have been directed to claim 2, and not claim 3. Regardless, as claim 2 has been canceled the rejection is moot.
The rejection of claim 3 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112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement has been withdrawn in light of applicant’s amendments and remarks made June 1, 2026. Specifically, as noted in the remarks, the rejection contained a typographical error and should have been directed to claim 2, and not claim 3. Regardless, as claim 2 has been canceled the rejection is moot.
The rejection of claim 3 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 has been withdrawn in light of applicant’s amendments and remarks made June 1, 2026. Specifically, as noted in the remarks, the rejection contained a typographical error and should have been directed to claim 2, and not claim 3. Regardless, as claim 2 has been canceled the rejection is moot.
Claim 16 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 16 recites, wherein at least 50% of the potato protein isolate includes tuberine, and wherein the potato protein isolate comprises protease inhibitors. 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 is disclosed as providing a high molecular weight protein (see instant specification page 6 line 30 through page 7 line 7), and the protein isolate comprising protease inhibitor is distinctly disclosed as an alternative option which provides for low molecular weight protein (see instant specification page 7 lines 6-10).
Claims 5 and 16 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.
Claim 5 requires the nougat comprise 65-95% sugar syrup, however, claim 1 from which it depends requires the nougat comprise greater than 15% and less than 20% protein and thus the claim is unclear as it conflicts with itself. As percentages are based on 100 parts, it is unclear as to how the percentages of the claimed ingredients can be over 100%. For example, it is unclear as to how the nougat can comprise 19% protein in combination with 95% sugar syrup.
Claim 16 recites a plant-based nougat comprising both 86% of a whip solution and 1-20% of a flavoring component, and thus the claim is unclear as it conflicts with itself. As percentages are based on 100 parts, it is unclear as to how the percentages of the claimed ingredients can be over 100%. For example, it is unclear as to how the nougat can comprise 15% flavoring in combination with 86% whip solution.
Claim 5 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. In the instant case, claim 5 requires the nougat comprise 65-95% sugar syrup, however, claim 1 from which it depends requires the nougat comprise greater than 15% and less than 20% protein. As percentage is based on 100 parts, and the total claimed amount encompasses values over 100 parts, the claimed product cannot have both limitations at the same time. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 previous prior art rejections have been withdrawn in light of applicant’s amendments made June 1, 2026 which require the nougat comprise greater than 15% and less than 20% potato protein.
Claims 1, 3, 5, 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) and Pandey et al (US 7,700,144).
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 nougat as comprising greater than 15% and less than 20% potato protein and the potato protein as in the form of protein isolate including at least 50% tuberine as recited in claim 1, wherein 50% of the protein has a molecular weight of more than 30kDa as recited in claim 3, or wherein the nougat comprises 65-95% sugar syrup as recited in claim 5.
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 more than 30kDa as recited in claim 3, as discussed above, Vital teaches of a nougat comprising potato protein but is silent to the form of the protein.
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).
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.
Regarding the potato protein as from greater than 15% and less than 20% as recited in claim 1, and the sugar syrup as from 65-95% as recited in claim 5, as discussed above, Vital teaches of a nougat comprising sugar syrup and protein but is silent to the compositional amounts of each component.
Pandey et al (Pandey) teaches of a process of making aerated foods including nougat type confections (abstract and column 8 lines 41-46). Pandey teaches that consumers are desperately looking for healthy snacks that have pleasant organoleptic properties/textures, that proteins provide health benefits, and that such a food includes from about 50-80% carbohydrates and 4-45% proteins (column 1 line 57 through column 2 line 5, column 3 lines 34-41, column 4 lines 39-44, and column 5 lines 27-31). Pandey further teaches that the protein may be isolated from a vegetable or egg albumin (column 5 lines 1-11 and column 5 line 65 through column 6 line 1), and that the carbohydrate includes sugar syrups (column 7 lines 54 through column 8 line 11 and column 10 lines 26-31).
It would have been obvious for the aerated confection of Vital to comprise known amounts of the disclosed components, such as and including about 50-80% carbohydrates selected from the group including sugar syrups and 4-45% vegetable, i.e. potato, protein in view of Pandey. 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. Furthermore, it would have been particularly obvious to use the percentages of carbohydrates and proteins disclosed by Pandey in order to form a healthy snack that has the pleasant organoleptic properties and textures that consumers are looking for. Additionally, as Pandey teaches of protein for health benefits, to use a specific percentage within the disclosed range would have been obvious based on the desired nutritional properties in the final product.
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) and Pandey et al (US 7,700,144), 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 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) and Pandey et al (US 7,700,144), 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 with respect to the prior art rejections have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching for matter specifically challenged in the argument. The previous rejections were withdrawn in light of applicant’s amendments which is the same limitation argued and addressed with newly cited prior art Pandey.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2014/0314934 teaches potato protein as a whipping agent for food products, wherein the protein is low molecular weight and comprises a protease inhibitor, or is high molecular weight (abstract and paragraphs 54-57).
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KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792
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