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 .
Claim Warning
Applicant is advised that should claim 9, 11, 13, and 16 be found allowable, claims 23, 25, 26, and 27, respectively, will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
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.
Claims 13-15 and 26 are 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.
Claims 13-15 and 26 recite the limitation of “wherein the high-pressure homogenization is performed by applying at least 800 bar to force the aqueous slurry through the nozzle” Claims 13, 14, 15, and 16, are dependent on claims 9, 10, 11, and 23 respectively. Claims 10 and 11 depend from claim 9, and claims 9 and 23 recite the limitation, “subjecting the aqueous slurry to high pressure homogenization by applying at least 800 bar to force the aqueous slurry through a nozzle”. Therefore, the limitation recited in claims 13-15 and 26 fail to further limit the claims upon which they depend.
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
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9-18 and 23-27 are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. (WO 2010/065790 A1) in view of Jaiswal et al. (Food Processing Technologies - Impact on Product Attributes, Retrieved from Knovel.com).
With respect to Claim 9 and 23, Brown et al. teaches a non-dairy creamer product comprising protein hydrolysate composition and a process for preparing the composition. [0032] Brown et al. teaches that the protein may be derived from a non-animal source, such as garbanzo, also known as chickpea. [0043] Brown teaches that the protein used in the invention can comprise about 1-20% of a slurry comprising the protein and water. [0054] Brown teaches the method of preparing the product comprises combining a variety of ingredients including the non-animal protein, fats, sugars, water, and more, mixing the ingredients using moderate to high speeds, then homogenizing the slurry using a 2-stage homogenizer at 2500psi. [0092]
Additionally, Brown et al. teaches another slurry formation method comprising the protein and water, wherein the slurry is homogenized in a blender with a shear rate of 14,000rpm. [0080] The blender reads on a high shear mixer comprising a rotor and a stator.
Brown et al. teaches the use of a nozzle in the method for producing the protein composition [0109], but is silent to the nozzle on the homogenizer having a diameter between 10-10,000 nm and the pressure of the system reaching 800 bar or more.
Jaiswal et al. teaches the history and application of high pressure and ultra high-pressure homogenization techniques as they apply to modern food processing technologies. [Pg. 373, Par. 2] Jaiswal et al. teaches that the main pressure intensifier of any given homogenizer system is in the relationship between the opening of the valve and a convergent section, [Pg. 373, Par. 2] which is interpreted as the nozzle. Jaiswal et al. teaches that the homogenization process is common for milk [Pg. 373, Par. 3] and increases the shelf stability and life of milk. [Pg. 374, Par. 1] Jaiswal et al. teaches that some common high-pressure systems can reach pressures of up to 400MPa, or 4000 bar, and have gap sizes as small as 2-5 µm, or 2000-5000 nm. [Pg. 374, Par. 2] These values read on the values of pressure and nozzle size recited in claim 9 and 23.
Additionally, Jaiswal et al. teaches that UHPH is used for non-dairy milks as well, the non-dairy milk is processed at 2000-3000 bar, [Pg. 378, Par. 3] and the resulting product is shelf stable for up to 6 months. [Pg. 380, Par. 3]
Brown et al. and Jaiswal et al. exist within the same field of endeavor in that they teach non-dairy milk alternatives and the methods of processing. Where Brown et al. teaches a specific embodiment of non-dairy milk comprising chick pea protein with greater than 10% protein that is homogenized with a two stage high-pressure homogenizer, Jaiswal et al. teaches some well-known parameters for the processing of non-dairy milk, including the technical features of the equipment used such as nozzle diameter and pressure.
The amount of protein taught in Brown et al. reads on the limitation in claims 9 and 23, and the pressure and nozzle diameter taught in Jaiswal et al. lies within the ranges recited in claims 9 and 23. Additionally, one of ordinary skill in the art would have been motivated to apply Jaiswal et al. in order to achieve a more shelf stable non-dairy milk product.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Brown et al. in view of Jaiswal et al. in order to produce a chickpea protein containing product having at least 10% chick pea protein, through a method comprising using a high shear mixer to create a slurry comprising chickpea protein and an aqueous medium and subjecting the slurry to high pressure homogenization by applying at least 800bar to force the slurry through a nozzle with a diameter of between 10-10,000nm, thereby rendering claims 9 and 23 obvious.
With respect to Claims 10-12 and 24-25, Brown et al. in view of Jaiswal et al. teaches an invention that reads on the limitations of claim 9 and 23, as described above. Additionally, Brown et al. teaches that the high shear mixer can apply up to 14,000 rpm, [0080] and that the homogenization can occur in 2 steps. [0092]. Therefore, Brown et al. in view of Jaiswal et al. reads on the limitations recited in claims 10-12 and 24-25.
With respect to Claims 13-15 and 26, Brown et al. in view of Jaiswal et al. teaches the invention that reads on the limitations of claims 9-11 and 23, as described above. Brown et al. teaches that the homogenization can occur in 2 steps [0092]. Additionally, Jaiswal et al. teaches that UHPH is used for non-dairy milks as well, the non-dairy milk is processed at 2000-3000 bar, [Pg. 378, Par. 3] and the resulting product is shelf stable for up to 6 months. [Pg. 380, Par. 3] 2000-3000 bar is greater than 800 bar.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Brown et al. in view of Jaiswal et al. in order to produce a chickpea protein containing product having at least 10% chick pea protein, through a method comprising using a high shear mixer to create a slurry comprising chickpea protein and an aqueous medium and subjecting the slurry to two step high pressure homogenization by applying at least 800bar to pass the slurry through a nozzle, thereby rendering claims 13-15 and 26 obvious.
With respect to Claims 16-18 and 27, Brown et al. in view of Jaiswal et al. teaches the inventions recited in claims 9, 10, 11 and 23, respectively, as described above. Additionally, Brown et al. teaches that the invention can be a non-dairy creamer, [0032] which reads on the limitation that the product be a drink. Therefore, Brown et al. in view of Jaiswal et al. teaches the limitations of claims 16-18 and 27.
Claims 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. (WO 2010/065790 A1) in view of Jaiswal et al. (Food Processing Technologies - Impact on Product Attributes, Retrieved from Knovel.com), as applied to claim 9, in further view of Liu et al. (Flow Properties of Chickpea Protein, Journal of Food Science).
With respect to Claim 19, Brown et al. in view of Jaiswal et al. teaches the method according to claim 9, as described above. Additionally, MPEP 2113 states, “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. Brown et al. teaches that the composition comprising chick pea protein may comprise up to 20% non-animal protein, [0054] wherein up to 99% of the protein is a protein other than soy protein [0053] and that protein may be derived from garbanzo, [0050] also known as chick pea.
Brown et al. and Jaiswal et al. do not teach the thixotropic properties of the chickpea protein product or the mean volume particle size.
Liu et al. teaches the flow properties of aqueous chickpea dispersions at a variety of concentrations, pH values, and temperatures. [Abstract] The protein dispersions were prepared with a shear mixer at 20,000 rpm, at concentrations up to 20%. [Pg. 230, Col. 1, Par. 2] Liu et al. teaches that the viscosity of a chickpea protein concentration of 20% possesses a viscosity of about 35 mPa at 500s-1. [Fig. 3] Liu et al. does not teach the viscosity of the composition at a shear rate of 0.1s-1, particle size, or the thixotropic effect value of the chickpea dispersion.
Brown et al., Jaiswal et al., and Liu et al. exist within the same field of endeavor in that they teach non-dairy compositions and their properties and processing methods. Where Brown et al. teaches a specific composition and a method of preparing, Jaiswal et al. teaches a method of high-pressure homogenization and Liu et al. teaches the viscosity values of chickpea protein dispersions at different shear rates.
The composition prepared by the method according to the teaching of Brown et al. in view of Jaiswal et al. is substantially identical to the composition recited in claim 19. Additionally, Liu et al. teaches that a chickpea dispersion of about 20% protein would have a viscosity value within the range recited in claim 19 with respect to a shear rate of 500s-1.
According to MPEP 2112 I, “The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation of the prior art’s functioning, does not render the old composition patentably new to the discoverer”. MPEP 2112.01 I continues, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established”.
The substantially identical composition produced by a substantially identical process would comprise identical properties and functions. Therefore, the composition taught by the method of Brown et al. in view of Jaiswal et al. would be expected to possess the same particle size, thixotropic effect, and viscosity at a shear rate of 0.1s-1 as the composition recited in claim 19, especially in light of the teaching of Liu et al. of the viscosity at a shear rate of 500s-1 having a value that falls within the range recited in claim 19.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Brown et al. in view of Jaiswal et al. in order to produce a composition according to the method recited in claim 9 wherein the chickpea protein product comprises at least 20% chickpea protein and the properties of the composition have the same viscosity values at a shear rate of 500 and 0.1s-1, thixotropic effects, and mean particle diameter as those recited in claim 19 in light of the teaching of Liu et al., thereby rendering claim 19 obvious.
With respect to Claim 20, Brown et al. in view of Jaiswal et al., in further view of Liu et al. teaches the composition recited in claim 19 as described above. Additionally, Brown et al. teaches the composition may contain fats, phosphate, and corn syrup solids. [Table 2] Therefore, Brown et al. in view of Jaiswal et al., in further view of Liu et al., renders obvious the composition recited in claim 20.
With respect to Claim 21 and 22, Brown et al. in view of Jaiswal et al., in further view of Liu et al. teaches the compositions recited in claim 19 and 20 as described above. Additionally, Brown et al. teaches that the invention can be a non-dairy creamer, [0032] which reads on the limitation that the product be a drink. Therefore, Brown et al. in view of Jaiswal et al., in further view of Liu et al. renders obvious the composition recited in claims 21 and 22.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH CULLEN MERCHLINSKY whose telephone number is (571)272-2260. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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/J.C.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791